Ex Parte Hunter et al

Patent Trial and Appeal Board

Sep 16, 2016

12877300 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/877,300 09/08/2010 Alastair J. Hunter
23548 7590 09/20/2016
LEYDIG VOIT & MA YER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
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.
442278 2938
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
DCpatent@leydig.com
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALASTAIR J. HUNTER and TIMOTHY J. WILKINSON
Appeal2015-005790
Application 12/877,300
Technology Center 1700
Before GEORGE C. BEST, ELIZABETH M. ROESEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 15, 18, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claimed Invention
The claimed subject matter relates to a method for reducing retrograde
contamination of water passing through a point of use shower including a
1 Pall Corporation is identified as the real party in interest. Br. 1.
Appeal2015-005790
Application 12/877,300
point of use shower attachment head, or passing through a point of use
faucet including a point of use faucet attachment head. Br. 10 (claim 18).
The Specification explains that the claimed subject matter prevents or
reduces contamination of water dispensed from a shower head or faucet by
reducing or eliminating the amount of residual filtered water remaining in
association with the external surface of the shower head or faucet after
dispensing. Spec. i-f 19.
Claim 18 is representative of the subject matter on appeal and is
reproduced below from Appellants' Claims Appendix:
18. A method for reducing retrograde contamination of
water passing through a point of use shower including a point
of use shower attachment head, or passing through a point of
use faucet including a point of use faucet attachment head, the
method comprising engaging a removable outlet comprising an
outlet housing comprising a polymeric shell comprising a shell
side wall having a shell side wall inner surface and a shell side
wall outer surface, a shell bottom wall having a shell inner face,
a shell outer face; and a plurality of outlet ports; each port
comprising an opening allowing water flow from the shell inner
face through the shell outer face, and an outlet cavity defined by
the shell side wall inner surface and the shell bottom wall shell
inner face, the outlet cavity receiving at least a portion of a
sterilizing grade water filter device, wherein both the shell side
wall outer surface and the shell bottom wall shell outer face
contact environmental air surrounding the point of use shower
attachment head or the point of use faucet attachment head,
and·
'
a hydrophobic porous disc contained in the outlet cavity
of the polymeric shell, the porous disc comprising a plurality of
pores and having an upstream surface and a downstream
surface, the downstream surface facing the shell bottom wall
shell inner face;
with a sterilizing grade water filter device attached to the
point of use shower attachment head or to the point of use
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Appeal2015-005790
Application 12/877,300
faucet attachment head, wherein engaging the outlet includes
providing a hermetic seal between the outlet and the sterilizing
grade water filter device, and also includes providing a tight
seal between the outlet and the point of use shower attachment
head or the point of use faucet attachment head;
wherein the point of use shower attachment head or the
point of use faucet attachment head comprises a display for
notifying a user as to when the sterilizing grade water filter
device was attached to the point of use shower attachment head
or the point of use faucet attachment head and/ or for notifying
the user as to when the outlet was engaged with the sterilizing
grade water filter device and the attachment head;
dispensing water through the point of use shower and
point of use shower attachment head or the point of use faucet
and the point of use faucet attachment head, and through the
sterilizing grade water filter device and outlet;
monitoring a changeout target for the sterilizing grade
water filter device and/ or the outlet; and,
replacing the sterilizing grade water filter device and the
removable outlet, or replacing the removable outlet, when the
changeout target is reached.
Br. 10-11.
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Appeal2015-005790
Application 12/877,300
Kramer et al.
Gelman2
T anizaki et al.
Isobe et al.
Tsai
References
us 4,463,880 Aug. 7, 1984
("Kramer")
GB 1499 347 Feb. 1, 1978
JP Hl 1 239740 A2 Sept. 7, 1999
(Tanizaki")
JP 2004 344888 A2 Dec. 9, 20043
("Isobe")
GB 2 437 279 A Oct. 24, 2007
Rejections
1. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsai, Gelman, Kramer, and Isobe. Final Action 6-9.
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tsai, Gelman, Kramer, Isobe, and Tanizaki. Id. at 9-11.
3. Claims 15, 18, and 19 are provisionally rejected under 35 U.S.C.
§ 101 as claiming the same invention as claims 3-9, 11, and 13-18 of co-
pending Application No. 13/217,622. Id. at 11.
ANALYSIS
Obviousness
Appellants' arguments are directed to independent claim 18 only.
Appellants present no separate substantive argument regarding the other
claims. See Br. 4--8. As a consequence, all appealed claims stand or fall
together, and we confine our discussion to claim 18.
2 Gelman Instrument Company ("Gelman") is the applicant. No inventors
are listed.
3 For each of Tanizaki and Isobe, an English language Abstract was
submitted by Applicant on April 4, 2013, and a machine English translation
was made of record January 17, 2014.
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Appeal2015-005790
Application 12/877,300
The Examiner finds that Tsai discloses a method for reducing
retrograde contamination of water passing through a point of use shower
including a point of use shower attachment head, including most of the
limitations of claim 18. Final Action 6-7. The Examiner finds that Gelman
discloses an outlet housing comprising a polymeric shell. Id. at 8. The
Examiner finds that Kramer discloses a hydrophobic porous disc. Id. The
Examiner finds that Isobe teaches a display and the monitoring and replacing
steps recited in the final paragraphs of claim 18. Id. The Examiner
concludes that it would have been obvious to incorporate each of these
features into the method of Tsai, providing a rationale for each proposed
modification. Id. at 8-9.
Appellants argue that the Examiner fails to establish a prima facie
case of obviousness, presenting arguments regarding each of Tsai, Gelman,
Kramer, and Isobe. Br. 4--7.
After reviewing Appellants' arguments, the Examiner's Answer, the
cited references, and the evidence cited by Appellants, we are not persuaded
that Appellants identify reversible error in the obviousness rejections. We
adopt the Examiner's factual findings, analysis, and legal conclusions as set
forth in the Answer as our own and add the following comments for
emphasis.
Appellants argue that, in contrast Tsai and Gelman, the present
invention "allows the water filter housing to remain attached to the faucet or
shower attachment head, while the outlet can be removed and replaced
without water accumulating." Br. 5, 6 (citing Spec., Figs. IA and 1 C).
Appellants reproduce Tsai Figure 6 and Gelman Figure 1 and indicate with
arrows where they contend water accumulates. Id. Regarding each of
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Application 12/877,300
Kramer and Isobe, Appellants argue there is "no suggestion ... of reducing
or eliminating the amount of residual filtered water remaining in association
with a filter after dispensing." Id. at 7.
We are not persuaded by Appellants' arguments. Appellants do not
identify where the assertedly distinguishing features are recited in the
claims. The appealed claims do not recite that the water filter housing
remains attached to the faucet or shower attachment head, when the outlet is
removed and replaced. Nor do the claims recite that water does not
accumulate or remain in association with a filter after dispensing.
The Examiner's burden to establish a prima facie case does not
require a showing that the prior art discloses features, functionality, or
advantages disclosed in Appellants' Specification, but not recited in the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(rejecting appellant's nonobviousness argument as based on limitation not
expressly recited in claim, stating "limitations are not to be read into the
claims from the specification"); Application of Golen, 352 F.2d 385, 389
(CCP A 1965) (affirming obviousness rejection and dismissing argument
distinguishing prior art based on feature that "is not supported by any
limitation in his claims"); In re Helgason, 136 F.2d 260, 263 (CCP A 1943)
(limitations not in the claims need not be considered in determining
patentability).
The weight of the evidence supports the Examiner's conclusion of
obviousness. Therefore, the§ 103(a) rejections are sustained.
Double Patenting
We exercise our discretion not to reach the provisional double-
patenting rejection. See Ex parte Jerg, No. 2011-000044, 2012 WL
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Application 12/877,300
1375142, at *3 (Apr. 13, 2012) (Informative Decision); see also Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having decided a single
dispositive issue, the ITC was not required to review other matters decided
by the presiding officer).
CONCLUSION OF LAW AND DECISION
The Examiner's decision 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).
AFFIRMED
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