Ex Parte Gorlov

Patent Trial and Appeal Board

Mar 30, 2016

13224400 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/224,400 09/02/2011
3705 7590 04/01/2016
ECKERT SEAMANS CHERIN & MELLOTT
600 GRANT STREET
44THFLOOR
PITTSBURGH, PA 15219
FIRST NAMED INVENTOR
Sergei Gorlov
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
302047-00002-1 9376
EXAMINER
VAN BUSKIRK, JAMES M
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
04/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGEI GORLOV
Appeal2014--004252
Application 13/224,400 1
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sergei Gorlov (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims 1 and 3-
7 under 35 U.S.C. § 103(a) as unpatentable over Warren (US 3,972,440, iss.
Aug. 3, 1976) and Dundas (US 4,717,036, iss. Jan. 5, 1988). 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is the Inventor. Appeal
Br. 2.
2 Claim 2 was canceled. Appeal Br. 2, Claim App.
Appeal2014--004252
Application 13/224,400
CLAIMED SUBJECT MATTER
Claim 1, the only independent claim, illustrates the claimed subject
matter.
1. A system for preventing liquid infiltration into a sump
having an opening defined by a sump collar, the system
compnsmg:
a ring member adapted to be disposed about the sump
collar, at least a portion of the ring member adapted to be in
communication with a drainable material disposed below; and
a lid member in engagement with the ring member,
wherein the ring member includes a number of apertures
disposed therein, each aperture of the number of apertures being
adapted to allow liquid to pass from a top surface of the ring
member to the drainable material below, and
wherein at least a portion of each aperture of the number
of apertures is disposed in a portion of the ring member radially
outward from the periphery of the lid member.
ANALYSIS
Obviousness of Claims 1and3-7 over Warren and Dundas
We are persuaded by Appellant's arguments that the Examiner fails to
establish a prima facie showing of obviousness in rejecting claims 1 and 3-7
over Warren and Dundas. See Appeal Br. 5-9; see also Reply Br. 2--4.
In rejecting claim 1, the Examiner first finds that Warren discloses a
system for preventing liquid infiltration into a sump having substantially all
the limitations recited by claim 1, but looks to Dundas for disclosing a "ring
member including a number of apertures disposed therein," and reasons that
"[i]t would have been obvious ... to use the plurality of apertures as taught
by Dundas to modify the ring member above the flow passage of Warren to
allow external liquid to pass into the ground where the liquids are permitted
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Application 13/224,400
to percolate away from the sump." Final Act. 3--4 (citing Dundas, col. 6, 11.
23-26). (emphasis added). See also Ans. 6. The Examiner also reasons that
"anything that falls below the ring member [of Dundas] is kept from
entering the containment vessel ... by exhausting it down the side of said
vessel or into the ground surrounding said vessel." Ans. 6 (citing Dundas,
Fig. 8).
In contesting the rejection, Appellants first explain that "the 'flow
passage' identified by the Examiner in Warren is not a passage whatsoever
but instead [is] particularly identified as a 'groove 23' which is formed
between two flanges 21 and 22 [that] extend from a surface 19," to "receive
an upper end portion of the side wall 8 there between for mounting cover 5
on the housing member 4." Appeal Br. 5---6 (citing Warren, col. 2, 11. 19-
24). Furthermore, Appellants point out that "the Examiner concedes that
Warren does not disclose a ring member that includes a number of apertures
disclosed therein." Id. at 6. (emphasis added).
Appellants also contend that Dundas "reveals no actual teaching or
suggestion whatsoever of a ring member which 'includes a number of
apertures disposed therein,"' explaining that "the 'Appertures' identified by
the Examiner are [spaces] between a portion of the containment vessel ( 112)
and an outer [unnumbered] member [of Dundas]," that are "not actually
disposed in a ring member" that "includes a number of apertures disposed
therein [as recited by claim 1]." Id. Furthermore, Appellants explain that
the apertures of Dundas "identified by the Examiner are spaced inward from
the periphery (outer edge) of the 'Lid' (cover 42) and thus are disposed
completely under the 'Lid,' so that "such features of Dundas do not disclose
or suggest 'at least a portion of each aperture of the number of apertures is
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Appeal2014--004252
Application 13/224,400
disposed in a portion of the ring member radially outward from the
periphery of the lid member' (emphasis added) as recited in claim 1."
Appeal Br. 7. See also Reply Br. 2-3.
In the Answer, the Examiner first repeats that "Warren disclose a ring
member," and then contends that Figure 8 of Dundas discloses that "when
the cover 42 is [] in position on top of the ring member [] that any liquid will
flow around the side of the [cover 42] and through the apertures [121]
allowing collection of precipitation and other liquids impinging on the top
surface of the cover." Ans. 5-7 (citing Dundas, col. 6, 11. 14--16). Without
appearing to respond to Appellants' arguments regarding the deficiencies of
Warren, the Examiner continues by reasoning that "the test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references," but that "the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." Id. at
8. (citation omitted).
The key to supporting any rejection under 35 U.S.C. 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 538,
418, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a
rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit
has stated that "rejections on obviousness cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Appeal2014--004252
Application 13/224,400
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006); see also
KSR, 550 U.S. at 418 (quoting Federal Circuit statement with approval).
The Examiner's rejection does not meet these requirements. In
Warren's structure, water flowing past lid 7 enters housing 4 by flowing
through recess 24 in cover 5. As best we understand the Examiner's
rejection, it would require that the apertures of Dundas be formed through
cover 5 between flanges 21 and 22 of Warren, i.e., that apertures as
purportedly taught by Dundas be used to modify cover 5 above side wall 8
of Warren, so that water would flow between flanges 21 and 22 into groove
23. However, even were such apertures to be formed through cover 5 of
Warren, flange 21 is disclosed as being inside of side wall 8, so that flange
21 would not cause "liquid to pass from a top surface of the ring member to
the drainable material below," as recited by claim 1.
Thus, the Examiner has not made sufficient findings of how Warren
would be modified in view of the teachings of Dundas "to allow external
liquid to pass into the ground." Ans. 6. "[T]he precise language of 35
U.S.C. § 102 that '(a) person shall be entitled to a patent unless,' concerning
novelty and obviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its rejection of an
application under sections 102 and 103." In re Warner, 379 F.2d 1011, 1016
(CCPA 1967). Accordingly, we agree with Appellants that, based on the
evidence before us, the Examiner has not demonstrated that the claimed
subject matter would have been obvious to one having ordinary skill in the
art.
For the foregoing reasons, we do not sustain the rejection of claims 1
and 3-7 as unpatentable over Warren and Dundas.
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Application 13/224,400
DECISION
We REVERSE the Examiner's rejection.
REVERSED
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