Ex Parte Glassheim

Board of Patent Appeals and Interferences

Jan 28, 2010

11110649 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT GLASSHEIM
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Appeal 2009-002163
Application 11/110,649
Technology Center 1700
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Decided: January 28, 2010
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Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1, 4-8, and 13-15 (Office Action, mailed May 17,
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2007), the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).1
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal, and is
reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”):
1. An apparatus for removing debris from water passing
through a storm drain, comprising:

a frame adapted to be positioned underneath a storm grate for
receiving said water, the frame having a solid bottom side, an open
top, minor sidewalls, and T-shaped support structures extending
between each of the minor sidewalls, for allowing water to pass; and

at least a first and a second filter removably insertable into
channels disposed along each of said first and second minor sidewalls,
and substantially parallel to at least a portion of each of said T-shaped
support structures for filtering debris from said water.

The Examiner relies upon the following references in rejecting the
subject matter on appeal:
Shyh 5,284,580 Feb. 8, 1994
Autry 5,480,254 Jan. 2, 1996
Boelter 5,855,774 Jan. 5, 1999
Morris U.S. 6,531,059 B1 Mar. 11, 2003
McClure U.S. 2004/0226869 A1 Nov. 18, 2004

1 In rendering this decision we have considered Appellant’s Brief dated
December 19, 2007.

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THE REJECTION
Claims 1, 4-8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shyh, Autry, Boelter, and McClure.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Shyh, Autry, Boelter, McClure, and Morris.
Appellant has not presented separate arguments for claims 4-8, 13,
and 14. (See App. Br. generally). Thus, in deciding this appeal we will
initially limit our discussion to independent claims 1 and 15.
ISSUE
Has Appellant shown reversible error in the Examiner’s determination
that it would have been obvious to one having ordinary skill in the art to
form a framed apparatus for removing debris from water refuse collecting
for sewers as described in independent claim 1? We answer this question in
the negative.
Appellant asserts that the refuse collecting frame of Shyh does
not describe: a solid bottom side; channels disposed along each of the
mirrors sidewalls; first and second removable filters substantially
parallel to major sidewalls; and T-shaped support structures having
removable filters parallel thereto. (App. Br. 10-11).
The Examiner found that Shyh discloses a framed apparatus for
removing debris from water refuse collecting for sewers that differs from the
claimed invention by failing to specify insertable channels for facilitating
securing and changing filter media and a T-shaped support structure.
(Office action dated May 17, 2007, page 3). Shyh discloses a framed
apparatus is structured to retain a filtering net (11) and/or porous board
(11’). (Shyh, col. 1, l. 63- col. 2, l. 16; Fgures 1 and 2). The Examiner
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relied upon Boelter and McClure for describing insertable channels for
securing filter media. (Office action dated May 17, 2007, page 3).
Regarding the T-shaped support structure, the Examiner took Official Notice
that such structures were well-known in the art to stabilize a structure or
reinforce structural members. (Office action dated May 17, 2007, page 2).
The Examiner also identified the Autry and Boelter references as describing
a framed apparatus comprising T-shaped support structure. (Office action
dated May 17, 2007, page 4). The Examiner asserts that the gravel
collecting basin (2) of Shyh is a solid member that corresponds to the bottom
portion of the claimed invention. (Ans. 9).2

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been

2 The Examiner’s Answer dated March 31, 2008, does not include page
numbering. We designate the title page of the Examiner’s Answer as page 1
with the remainder of the pages numbered sequentially.
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obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
ANALYSIS
Appellant has not shown reversible error in the Examiner’s
determination that it would have been obvious to one having ordinary
skill in the art to form a framed apparatus for removing debris from
water refuse collecting for sewers that comprises: a solid bottom side;
channels disposed along each of the minor sidewalls; first and second
removable filters parallel to major sidewalls; and T-shaped support
structures. As explained by the Examiner, Answer 7, Appellant’s
invention is based upon a combination of features known in the storm
sewer filtration art. The Examiner has identified the structural
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elements of the claimed invention in the cited prior art. Appellant has
not asserted that the elements identified by the Examiner were
unknown to persons of ordinary skill in the art. Appellant’s invention
of claim 1 is merely a predictable arrangement of known structural
elements utilized for their recognized function which yields
predictable results and would have been obvious to one of ordinary
skill. “[A] combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-16.
Appellant has not asserted in a responsive Brief that the gravel
collecting basin (2) of Shyh is not a solid element as asserted by the
Examiner in the Answer. Appellant has not asserted that it would
have been unknown to a person of ordinary skill in the art to utilize a
T-shaped structural element for supporting a framed apparatus.
Appellant also has not disputed that Boelter and Autry describe T-
shaped structural elements supporting a framed apparatus.
Shyh describes a framed apparatus comprising filter media on parallel
sides. Appellant has not disputed that insertable channels would have been
recognized by persons of ordinary skill in the art to be suitable for
facilitating the securing and changing of filter media to a framed apparatus.
The utilization of channels for their recognized purpose would have been
obvious to a person of ordinary skill in the art. As set forth above, a person
of ordinary skill in the art would recognize that a technique that has been
used to improve one device would improve similar devices in the same way.
KSR, 550 U.S. at 417.
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In rejecting the subject matter of claim 15, the Examiner
additionally relies upon the teachings of Morris for describing a
member to direct incoming fluid. Appellant has not specifically
refuted the Examiner's reliance upon Morris for describing the
additional features of claim 15. Rather, Appellant contends that these
claims are allowable for the reasons presented in response the
rejection of claim 1. (App. Br. 13-14). Consequently, the rejection is
maintained for the reasons set forth above.
Appellant has not directed us to evidence of secondary considerations
such as unexpected results to support a conclusion of nonobviousness.
Under these circumstances, we cannot conclude that the Appellant has
establish an error in the Examiner's determination that the appealed subject
matter would have been obvious under 35 U.S.C. § 103. Therefore, the
rejections of claims 1, 4-8, and 13-15 under § 103 is affirmed.
Accordingly, we affirm the rejections under 35 U.S.C. § 103(a) of
claims 1, 4-8, 13, and 14 over Shyh, Autry, Boelter, and McClure; claim 15
over Shyh, Autry, Boelter, McClure, and Morris.
CONCLUSION
The decision of the Examiner rejecting claims 1, 4-8, and 13-15 is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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