Ex parte Hall

Board of Patent Appeals and Interferences

Nov 30, 2000

08752445 (B.P.A.I. Nov. 30, 2000)

All references herein to appellant’s brief are to the1
Supplemental Appeal Brief filed on Sept. 3, 1999.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERALD W. HALL
____________
Appeal No. 2000-1622
Application No. 08/752,445
____________
ON BRIEF
____________
Before CALVERT, COHEN, and GONZALES, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 66
to 68, 70, 72 and 75 to 86, all the claims remaining in the
application.
The claims on appeal are drawn to a waste discharge
system, and are reproduced in the appendix of appellant’s
brief.1
Appeal No. 2000-1622
Application No. 08/752,445
2
The reference applied in the final rejection is:
Groeniger 2,340,323 Feb.
1, 1944
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 66 to 68, 70, 72, 75 and 78 to 85, unpatentable for
failure to comply with 35 U.S.C. § 112, second paragraph.
(2) Claims 66 to 68, 70, 72 and 75 to 86, anticipated by
Groeniger, under 35 U.S.C. § 102(b).
Rejection (1): 35 U.S.C. § 112, Second Paragraph
The essence of examiner’s position with regard to this
rejection is contained in the following quotation from page 6
of the examiner’s answer:
defining the water closet carrier, an
element of the waste discharge system, as
having a width approximately the distance
between the consecutive vertical studs
(claim 66) renders the width of the water
closet carrier indefinite because the studs
are not positively recited elements of the
claimed subject matter. They have merely
been presented as an intended use
environment.
Similarly, defining the width (claims 68,
75, 84, and 85), and height (claims 72, 78, 79,
80, and 85) of the water closet carrier as a
direct relationship to the off-the-floor water
closet as well as distance that the water closet
Appeal No. 2000-1622
Application No. 08/752,445
3
carrier extends to (claim 81), and that the
water closet provides support for (claim 82) the
off-the-floor water closet carrier, renders the
claims indefinite because the off-the-floor
water closet is not a positively recited element
of the claims.
Defining the width or other dimension of an
element of a subcombination with a direct
relationship to an element of a combination
where the claim is clearly intended to be drawn
to the subcombination renders the intended scope
of the claim indefinite. The claim then fails
to distinctly define the metes and bounds of the
subject matter that will be protected by the
patent grant as required in the second paragraph
of 35 U.S.C. 112.
Considering claim 66 as exemplary, it recites, inter
alia:
66. A waste discharge system for at least
one off-the floor water closet having waste
discharge conduit means connected to waste
conduit junction means, the at least one off-
the-floor closet being in at least one of
adjacent rooms, each having a wall comprised of
consecutive, vertical studs, the walls providing
a partition between the adjacent rooms, the
waste discharge system comprised of,
a water closet carrier comprised of front
and back structural means;
wherein said water closet carrier is
adapted to be disposed within the walls of the
adjacent rooms;
* * * * *
wherein the width of said water closet
carrier is approximately the distance between
the consecutive, vertical studs.
Appeal No. 2000-1622
Application No. 08/752,445
4
As the examiner notes, the stubs are not recited as part of
the claimed combination, and yet the width of the claimed
structure, the water closet carrier, is defined in relation to
the distance between the stubs.
We are not unsympathetic to the examiner’s position,
supra. Nevertheless, we consider that the present situation
is governed by the Court’s decision in Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1572, 1 USPQ2d
1081, 1085-86 (Fed. Cir. 1986). In that case, claim 1 of the
’867 patent read:
1. In a wheel chair having a seat portion, a
front leg portion, and a rear wheel assembly,
the improvement wherein said front leg portion
is so dimensioned as to be insertable through
the space between the doorframe of an automobile
and one of the seats thereof . . .
(806 F.2d at 1568, 1 USPQ2d at 1082; emphasis added). The
Court hold that the emphasized language was not indefinite
under
35 U.S.C. § 112, second paragraph, noting that witnesses
testified that measuring the space between a selected
automobile’s doorframe and its seat and then dimensioning the
front legs of the travel chair to fit that particular space in
Appeal No. 2000-1622
Application No. 08/752,445
5
that particular automobile was evident from the specification,
and that one of ordinary skill in the art would easily have
been able to determine the appropriate dimensions. The Court
then stated (806 F.2d at 1076, 1 USPQ2d at 1088):
The claims were intended to cover the use
of the invention with various types of
automobiles. That a particular chair on which
the claims read may fit within some automobiles
and not others is of no moment. The phrase "so
dimensioned" is as accurate as the subject
matter permits, automobiles being of various
sizes. See Rosemont, Inc. v. Beckman
Instruments, Inc., 727 F.2d 1540, 1547, 221 USPQ
1, 7 (Fed. Cir. 1984). As long as those of
ordinary skill in the art realized that the
dimensions could be easily obtained, § 112, 2d ¶
requires nothing more. The patent law does not
require that all possible lengths corresponding
to the spaces in hundreds of different
automobiles be listed in the patent, let alone
that they be listed in the claims.
By analogy, in the present case one of ordinary skill would
have been able to determine the distance between consecutive
studs, and to easily determine the dimensions of the water
closet carrier so that its width would be approximately that
distance, as claimed. Pursuant to the Orthokinetics decision,
that is sufficient to comply with the second paragraph of §
112.
Appeal No. 2000-1622
Application No. 08/752,445
Attachment A of the examiner’s answer apparently2
inadvertently show the lower right unit 10.
6
The same conclusion applies with regard to the claims
which recite the width of the water closet carrier in relation
to the width of the water closet (e.g., claim 68), or the
height of the water closet carrier in relation to the height
of the water closet (e.g., claim 72).
Accordingly, rejection (1) will not be sustained.
Rejection (2): 35 U.S.C. § 102(b)
Reading claim 66 on the unit 50 shown at the lower left
of Groeniger’s Fig. 1, as the examiner has done, there is a2
water closet carrier width front and back structural means
(walls) connected by independent structural means (side
walls), the carrier adapted to receive a waste conduit
junction, being of rigid construction, and having means 58 at
the front for attaching and supporting as off-the-floor water
closet 55. Groeniger does not disclose that the carrier 50 is
adapted to be disposed within the walls of adjacent rooms or
of a width approximately the distance between consecutive
studs, but the examiner asserts that Groeniger meets the claim
Appeal No. 2000-1622
Application No. 08/752,445
7
because it is "capable of being placed within the spacing of
studs of a generic wall" (answer, page 8).
"To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently." In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). However, the law
of anticipation does not require that the reference "teach"
what the applicant teaches, but only that the claim "read on"
something disclosed in the reference. Celeritas technologies,
Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361, 47 USPQ
1516, 1522 (Fed. Cir. 1998), cert denied, 119 S.Ct. 874
(1999).
Appellant in arguing that Groeniger does not suggest
putting his invention in a wall, asserts that Groeniger
teaches "providing the wall by four cabinets integrated
together "(brief, page 30). We do not agree. In Fig. 3 of
Groeniger, the kitchen (upper half of drawing) and bathroom
(lower half of drawing) are shown as being separated by a wall
(broken lines), and the patentee discloses on page 3, col. 2,
lines 45 to 50, that Fig. 3 shows as arrangement of "a kitchen
and a bath room in adjacency, wherein a partition of the
Appeal No. 2000-1622
Application No. 08/752,445
8
building is common to both bath room and kitchen." It is
evident that units 10 and 50 do not provide the wall between
the bath room and kitchen, for if they did, there would be no
wall between the bathtub (lower right of Fig. 3) and the
kitchen. Rather, Groeniger’s units 10, 520 are positioned
against the wall, as shown.
In any event, this issue is somewhat irrelevant to the
question of anticipate, as are appellant’s arguments that
Groeniger does not teach or suggest putting his invention in a
stud wall (brief, pages 30 and 41), since these arguments
relate to obviousness under § 103, rather than anticipate
under § 102. Claim 66 does not recite any particular distance
between consecutive studs, nor, as appellant emphasizes on
page 20 of the brief, are the studs included in claimed
combination. Also, the distance between consecutive stubs may
vary widely from the conventional 16-inch or 24 inch spacing,
depending on the circumstances; as appellant states in the
amendment (filed Sept. 3, 1998) to page 27, line 8 of the
specification
Studs are usually spaced 16 inches, center
to center. However, the spacing between
consecutive, or successive, studs may be greater
Appeal No. 2000-1622
Application No. 08/752,445
9
or less than 16 inches, center to center,
depending on desired spacing adjustments in
construction, as explained previously herein.
Therefore, since no distance between consecutive studs is
specified in the claim, and the distance between consecutive
studs is not an invariable quantity, an object such as the
cabinet 50 disclosed by Groeniger has a width which is
"approximately the distance between the consecutive, vertical
studs," as recited in claim 66. Whether Groeniger’s structure
is designed or intended to be placed between studs in a wall
is not germane to the question of anticipation, such being
simply an intended new use for an old product, which does not
make a claim to that old product patentable. In re Schreiber,
supra. Claim 66 is anticipated by Groeniger since the claimed
structure "reads on" Groeniger’s disclosed apparatus.
Celeritas Technologies, supra.
We reach the same conclusion with regard to the other
independent claims in which the width of the carrier is
claimed in relation to the stud spacing, i.e., claims 76, 83
and 86.
Appellant further argues that claim 66 distinguishes over
Groeniger in that it recites that the water closet carrier "is
Appeal No. 2000-1622
Application No. 08/752,445
The statement on page 38 of the brief that the angle3
irons are part of the wall structure is not understood, since
they are located in Groeniger’s carrier 50, not in the wall
behind it.
10
of rigid construction substantially independently of the wall
and the waste conduit junction" (brief, pages 36 to 40). This
argument is not well taken. The Groeniger carrier 50 is of
rigid construction, having, like cabinet 10, a framework of
angle irons 12, 14 (page 2, col. 2, lines 10 to 16, and see
Figs. 2 and 3) which is independent of the wall and waste
conduit junction, and rests on the floor (page 1, col. 2,
lines 48 to 51; Fig. 2). Whether or not carrier 50 of3
Groeniger is intended to be connected to the wall or other
structure (which Groeniger does not disclose) is not relevant
to whether the structure recited in the claim reads on
Groeniger.
The discussion in the foregoing paragraph is also
applicable to the other claims on appeal, including claim 82.
Accordingly, rejection (2) will be sustained as to claims
66, 76, 82, 83 and 86, and as to dependent claims 67 and 77,
which appellant has not argued separately from their parent
claims.
Appeal No. 2000-1622
Application No. 08/752,445
We do not find antecedent basis in the specification for4
this language, as required by 37 CFR § 1.75(d)(1).
11
The remaining claims on appeal contain limitation
relating the width and/or height of the water closet carrier
to the width and/or height of the off-the-floor water closet.
Claim 68, which is representative of the "width" claims,
recites, inter alia:
wherein said water closet carrier is
approximately the same width as the width of one
of the one or more off-the-floor water
closets.[ ]4
Looking at Fig. 3 of Groeniger, it is evident that carrier 50
is not "approximately the same width" as water closet 55. The
rejection under § 102(b) of claim 68, of dependent claims 70
and 80, and of claims 75, 84 and 85, which contain similar
limitations, therefore will not be sustained.
Claims 72, representative of the "height" claims,
recites, inter alia:
wherein said water closet carrier is
approximately of equal height with the one or
more off-the-floor water closets.
The carrier 50 of Groeniger is shown as extending a
considerable distance above the bowl of the water closet 55,
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Application No. 08/752,445
12
in order to accommodate the flush tank 52. While the flush
tank might well be considered part of the water closet, we
believe that one of ordinary skill in the art, reading claim
72 in light of appellant’s disclosure (i.e., page 26 and Fig.
4) would interpret the term "height," as it relates to the
off-the-floor water closet, to mean the height of the top of
the bowl which is supported by the attachment means on the
front and/or back of the carrier. As so construed, claim 72
is not anticipated by Groeniger, since Groeniger’s carrier is
not of "approximately equal height" with the top of the water
bowl 55. Likewise, claims 78, 79, 81 and 85 are not
anticipated, and rejected (2) will not be sustained as to
them.
Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 68, 70, 75 and 84
are rejected under 35 U.S.C. § 103(a) as unpatentable over
Groeniger. As discussed above, Groeniger meets all the
limitations of these claims, except that it does not disclose
that the carrier 50 is approximately the same width as water
closet 55. However, as far as Groeniger is concerned, carrier
50 will perform its function of supporting the water closet 55
Appeal No. 2000-1622
Application No. 08/752,445
13
as long as it is not least as wide as the water closet;
whether it is made any wider depends only on the space
available in the bathroom in which it is to be installed and
the distance which the designer wishes to have between the
lavatory (supported at 16) and the water closet. Thus, it
would have been obvious to make the carrier 50 of Groeniger
approximately the width of the water closet 55, this being a
matter of design choice dependent on the space available and
personal preference, not achieving a different purpose. Cf.
In re Gal, 980 F.2d 717, 719, 25 USPQ2d 1076, 1078 (Fed. Cir.
1992).
Conclusion
The examiner’s decision to reject claims 66 to 68, 70,
72, 75 and 78 to 85 under the second paragraph of § 112 is
reversed, and the reject claims 66, 68, 70, 72 and 75 to 86
under
§ 102(b) is affirmed as to claims 66 to 67, 76, 77, 82, 83 and
86, and reversed as to claims 68, 70, 72, 75, 78 to 81, 84 and
85. Claims 68, 70, 75 and 74 are rejected pursuant to 37 CFR
§ 1.196(b).
Appeal No. 2000-1622
Application No. 08/752,445
14
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, "[a]
new ground of rejection shall not be considered final for
purposes of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
Appeal No. 2000-1622
Application No. 08/752,445
15
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
Appeal No. 2000-1622
Application No. 08/752,445
16
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. GONZALES )
Administrative Patent Judge )
Appeal No. 2000-1622
Application No. 08/752,445
17
L. LEE HUMPHRIES, ESQ.
7821 TIBANA STREET
LONG BEACH, CA 90808
Shereece
Appeal No. 2000-1622
Application No. 08/752,445
APJ CALVERT
APJ
APJ
AFFIRMED-IN-PART; 37 CFR 1.196(b)
Prepared: December 20, 2001