Ex Parte Janesky

Board of Patent Appeals and Interferences

Jul 28, 2011

10978643 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/978,643 11/01/2004 Lawrence M. Janesky 257-011863-US(PAR) 2465
7590 07/28/2011
Thomas L. Tully
PERMAN AND GREEN
425 POST RD
FAIRFIELD, CT 06430
EXAMINER
DWIVEDI, VIKANSHA S
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
07/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE M. JANESKY
____________

Appeal 2009-012470
Application 10/978,643
Technology Center 3700
____________

Before LINDA E. HORNER, FRED A. SILVERBERG, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lawrence M. Janesky (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4, 5, and 11. The Examiner has
objected to claims 3 and 6-10 as being dependent upon a rejected base claim.
We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claims on appeal relate to a sump pump reservoir housing shaped
for the containment of a plurality of non-interfering pumps (Spec. 4: para.
[0010]). Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. Sump pump reservoir housing of oblong
cross-section arranged for housing at least two
level-activated water pumps supported on adjacent
floor areas thereof for non-interfering operation,
said housing having a top oblong reinforcing rim
and having a length substantially greater than its
width.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 4, 5, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Joseph (U.S. Pat. No. 6,530,495 B1, iss. Mar. 11, 2003) in
view of Reuter (U.S. Pat. No. 4,213,539, iss. Jul. 22, 1980).
Claims 1, 2, 4, 5, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Reuter in view of Joseph.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Obviousness based upon Joseph in view of Reuter
The Examiner finds that Joseph discloses the invention of independent
claims 1, 4, and 11 substantially as claimed, except that Joseph fails to
disclose a top reinforcing rim. Ans. 3. The Examiner finds that Reuter
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discloses a top reinforcing rim 21 in Figure 1. Id. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to modify
the housing of Joseph to have a top reinforcing rim as taught by Reuter in
order to properly seat the cover. Id.
With respect to independent claim 1, Appellant first contends that
Joseph and Reuter have been combined improperly because they are non-
analogous art as not being from the same field of endeavor as Appellant’s
claimed subject matter and not reasonably pertinent to the particular problem
with which Appellant was concerned. App. Br. 4-5. We are not persuaded
by Appellant’s argument that Joseph and Reuter are non-analogous art. The
analogous-art test requires that the Board show that a reference is either in
the field of the applicant's endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem. In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
In the instant case, although Joseph and Reuter are not from the same
field of endeavor as Appellant’s claimed subject matter, both Joseph and
Reuter appear to be reasonably pertinent to the particular problem with
which Appellant was concerned, that is they are related to containers,
housings, for containing items. In particular, Appellant’s problem is a
housing for items, that is, a housing for sump pumps. Since both Joseph and
Reuter relate to a housing for items, Joseph and Reuter would have logically
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commended themselves to an inventor's attention in considering the problem
of a housing for sump pumps. Therefore, we find that Joseph and Reuter are
analogous art.
Appellant also contends that the words “[s]ump pump reservoir”
modifying the preamble term “housing” are not just intended use, but instead
structurally define the housing as having openings for water to pass through
the housing, and neither Joseph nor Reuter have this structure. App. Br. 6.
We note at the outset that the question of whether a preamble constitutes a
limitation to a claim is a matter to be determined by the facts of each case in
view of the claimed invention as a whole. See In re Stencel, 828 F.2d 751,
754 (Fed. Cir. 1987). The preamble of a claim does not limit the scope of
the claim when it merely states intended use of the invention. In re Pearson,
494 F.2d 1399, 1403 (CCPA 1974). However, terms in a preamble are
construed as limitations when they give life and meaning to the invention
claimed. See Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683,
688 (Fed. Cir. 1990).
Here, the recitations in the body of the claim appear to define a
structurally complete invention and the preamble “[s]ump pump reservoir
housing” does not appear to give life and meaning to the invention claimed.
In response to Appellant’s argument that the words “sump pump reservoir”
modifies the word “housing” to structurally define that the housing includes
openings for water to pass through the housing, we disagree. We find that if
the container 10 of Joseph housed a water pump within each of its
compartments 26, 27, was placed in a hole in the ground without its lid 35
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being on1, and water poured into the hole until the water reached the top of
the container and began to flow over the wall 18, the container 10 would
function as a sump pump reservoir housing. In the aforementioned scenario,
the walls of Joseph’s container 10 would not require holes therein for the
water to pass through the housing in order for the housing to function as a
sump pump reservoir housing because the open top would allow water to
flow into the housing. Therefore, we agree with the Examiner that the claim
language of “[s]ump pump reservoir” and “arranged for housing at least two
level-activated water pumps supported on adjacent floor areas thereof for
non-interfering operation” are recitations of intended use, and the structures
disclosed in both Joseph and Reuter are capable of performing the recited
intended uses of housing a sump pump reservoir and being arranged for non-
interfering operation of the at least two level-activation pumps supported on
adjacent floor areas. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (A reference must be capable of performing the recited intended use).
Appellant states that it is not seen how the bottom of Joseph can hold
a sump pump at two levels when the bottom of Joseph’s two compartments
26, 27 are both at the same level or within the same plane. Reply Br. 6. The
claim language of “at least two level-activated water pumps supported on
adjacent floor areas thereof for non-interfering operation” does not require
that the water pumps be supported at two different levels or elevations.
Rather, this language merely recites that there are at least two water pumps
being housed within the housing and each of the water pumps is level-
activated, although both pumps may be activated by water at the same level.

1 Claim 1 does not recite a lid or cover and the container of Joseph is capable
of functioning as a trash can without the lid 35.
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Appellant also contends that Joseph and Reuter disclose containers
(i.e., defined as “‘anything that contains or can contain something’”2) which
merely prevent items from spilling out, whereas the present claims recite a
housing (i.e., defined as “‘anything that covers and protects’”3) which
protects what is inside from damage due to outside objects. App. Br. 6. We
do not agree with Appellant that Joseph and Reuter do not disclose housings.
The devices of both Joseph and Reuter have sidewalls and a bottom to hold
and protect an item contained therein, and thus meets the ordinary and
customary meaning of the term housing, as defined by Appellant.
Appellant also contends that Reuter teaches away from a sump pump
reservoir housing because at column 1, lines 26-34, Reuter discloses a
garbage can and cover that prevents entry of rainwater thereinto. App. Br. 7.
We do not agree with Appellant that Reuter teaches away from a sump pump
reservoir housing. Reuter in no way criticizes, discredits, or otherwise
discourages an oblong cross-section sump pump housing which houses at
least two level-activated water pumps supported on adjacent floor areas for
non-interfering operation. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (Prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed.).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1, and dependent claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Joseph in view of Reuter.

2, 3 Appellant cites the Random House Webster’s College Dictionary (1992).

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Turning to independent claims 4 and 11, the Examiner finds that
Joseph discloses a bilobular top comprising intersecting circular lobes of
similar diameter and cites to Figure 3 as support for this finding. Appellant
contends that Joseph does not disclose “a top bilobular reinforcing rim
comprising intersecting circular lobes of similar diameter” as required by
claims 4 and 114 because Joseph’s container 10 is kidney bean shaped
having first and second rounded ends, not intersecting circular lobes.
We agree with Appellant that Joseph fails to disclose intersecting
circular lobes in order to meet the claim language. Although Joseph has
rounded ends 12, 14 in Figure 3, any circles encompassing those rounded
ends 12, 14 would not intersect in order to meet the claim language of
“intersecting circular lobes.” In view of the foregoing, we do not sustain the
Examiner’s rejections of claims 4, 5, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Joseph in view of Reuter.
Obviousness based upon Reuter in view of Joseph
The Examiner finds that Reuter discloses the invention of independent
claims 1, 4, and 11 substantially as claimed, except that Reuter fails to
disclose an oblong cross-section where the length is substantially greater and
its width and a reinforcing bridge. Ans. 4. The Examiner finds that Joseph
discloses a housing of oblong cross-section having a length substantially
greater than its width and a reinforcing bridge 24 connecting across the
width thereof. Id. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to modify the housing of Reuter to have an

4 We note that claim 11 actually recites “intersection” circular lobes, but this
appears to be a typographical error and we are treating the claim as if it
recited “intersecting” circular lobes. Appellant should correct this
typographical error upon return of the application to the examining corps.
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oblong cross-section where the length is substantially greater and its width
and a reinforcing bridge as taught by Reuter for better storage and space
conservation. Id.
Appellant has supplied no additional arguments for the rejection of
claims 1, 2, 4, 5, and 11 under 35 U.S.C. § 103(a) as unpatentable over
Reuter in view of Joseph. Therefore, for the same reasons as set forth supra
regarding the rejection over Joseph in view of Reuter, we affirm the
Examiner’s rejection of claims 1 and 2 over Reuter in view of Joseph and
reverse the Examiner’s rejection of claims 4, 5, and 11 over Reuter in view
of Joseph. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“[W]here a
rejection is predicated on two references each containing pertinent disclosure
which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the rejection is stated to
be on A in view of B instead of on B in view of A, or to term one reference
primary and the other secondary.”).

DECISION
We affirm the Examiner’s rejections of claims 1 and 2 under
35 U.S.C. § 103(a) as unpatentable over Joseph in view of Reuter, and
Reuter in view of Joseph.
We reverse the Examiner’s rejections of claims 4, 5, and 11 under
35 U.S.C. § 103(a) as unpatentable over Joseph in view of Reuter, and over
Reuter in view of Joseph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART
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