Ex Parte Kurata

Board of Patent Appeals and Interferences

Jan 19, 2011

10565599 (B.P.A.I. Jan. 19, 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.
10/565,599 01/24/2006 Hideki Kurata TIP001 2414
32628 7590 01/19/2011
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
KARLS, SHAY LYNN
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
01/19/2011 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 HIDEKI KURATA
____________________

Appeal 2009-010113
Application 10/565,599
Technology Center 3700
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and
RICHARD TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010113
Application 10/565,599

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A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1 and 3-6. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

References Relied on by the Examiner
King 3,662,969 May 16, 1972
Mason 3,918,166 Nov. 11, 1975
Koizumi et al. (“Koizumi”) 5,406,715 Apr. 18, 1995

The Rejections on Appeal
The Examiner rejected claims 1 and 3 under 35 U.S.C. § 102(b) as
anticipated by Mason.
The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Mason and King.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Mason, King, and Koizumi.

The Invention
The invention relates to a device, termed a “drain cleaner” for
cleaning up water pooled on the floor of a location such as a construction
site or factory. (Spec. 1: ¶ 0001.) Claim 1 is representative and is
reproduced below:
1. A drain cleaner comprising:

an equal width strip body having two edges disposed along a
longitudinal direction of the strip body and a handle at a front end of
the strip body; and

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a reel body having a rotary member to which a rear end of the
strip body is attached and reeling in or playing out the strip body to or
from the rotary member by rotating this rotary member;

wherein the strip body is provided with flexible members
disposed on both edges of the strip body, the flexible members being
configured to make close contact with an abutting surface along the
long direction of the strip body.
B. ISSUES
1. Did the Examiner incorrectly find that Mason is an anticipating
reference as it discloses all the limitations of the Appellant’s claims 1 and 3?
2. Did the Examiner incorrectly determine that Mason is
analogous art and thus available as prior art in evaluating the obviousness of
the Appellant’s claims 4-6?
C. PRINCIPLES OF LAW
Whether or not a reference constitutes analogous art is not relevant in
an anticipation rejection. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). “A reference may be from an entirely different field of endeavor than
that of the claimed invention or may be directed to an entirely different
problem from the one addressed by the inventor, yet the reference will still
anticipate if it explicitly or inherently discloses every limitation recited in
the claims.” Id.
A reference qualifies as prior art in an obviousness determination only
when it constitutes analogous art with respect to the claimed invention. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
A reference constitutes analogous art if it is either (1) in the field of
the applicant’s endeavor, or (2) reasonably pertinent to the particular
problem with which the inventor was concerned. Id.
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A prior art reference is reasonably pertinent if it is one which 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).
D. FINDINGS AND ANALYSIS
Anticipation
The Examiner rejected claims 1 and 3 as anticipated by Mason. The
Appellant addresses each claim separately.
Claim 1
With respect to claim 1, the Appellant first contends that the
Examiner’s rejection is deficient because Mason, being directed to a head
circumference measuring device, is “totally unrelated” to the “drain cleaner”
set forth in its claim. (App. Br. 4:1-3.) We understand the argument as one
based on an assertion that Mason constitutes non-analogous art.
That argument is misplaced. The rejection is one of anticipation
under 35 U.S.C. § 102(b). Whether or not a reference constitutes analogous
art is not a relevant inquiry in an anticipation rejection. In re Schreiber, 128
F.3d at 1478. Even if a prior art reference is from an entirely different field
of endeavor than that of the claimed invention or is directed to an entirely
different problem from the one addressed by the inventor, the reference will
still anticipate if it explicitly or inherently discloses every limitation recited
in the claims. Id.
We recognize that claim 1 begins by reciting a “drain cleaner.” The
term sets forth only the intended function of the claimed invention and does
not require any structural limitation other than those appearing in the body
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of the claim. For instance, the term does not impose any size requirement.
Although Mason’s invention is described as a measuring device, the
Appellant does not explain why Mason’s measuring device would not also
function as a drain cleaner.
The Appellant contends that the claim feature of “flexible members”
which are disposed on both edges of a strip body and which are “configured
to make close contact with an abutting surface along the long direction of the
strip body” is missing in Mason. (App. Br. 4:4-10; Reply Br. 2:12-19.) We
disagree.
Mason is directed to a device for measuring the circumference of a
person’s head. (Mason Abstract.) In accounting for the above-noted claim
feature, the Examiner determined that Mason’s measuring tape 16
constitutes a strip body and the edges of elastic belt 14 located on either side
of tape 16 form flexible members. (Ans. 5:20-6:5.) The Examiner reasoned
that the edges of elastic belt 14 are configured to make contact with an
abutting surface as required by the Appellant’s claims.
In challenging the Examiner’s determination and reasoning, the
Appellant asserts that Mason does not disclose flexible members that are
“configured” as required by its claim because the reference does not itself
describe that any of the edges of its elastic belt are ever actually positioned
so as to abut a surface. (Reply Br. 2:15-21.)
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The Appellant’s argument is unpersuasive. That Mason does not
describe in words that the edges of its elastic belt abut a
surface does not mean the edges are not configured to do so.
In the context of the Appellant’s specification, a flexible
member along a strip body is configured to abut a surface,
such as a floor, when the flexible edges of the member are
arranged as components with a rectangular edge located at
each end of the strip body. The Appellant’s Figure 3
(reproduced on the right) depicts an embodiment of its invention having
flexible members corresponding to those required by its claim 1. The figure
illustrates a cross-section of strip body 2 having edges 20 formed of a
flexible material such as rubber. (Spec. 4: ¶ 0011.)
Similarly, Mason’s Figure 2 depicts a cross-section of its measuring
device. Figure 2 (reproduced on the left) shows an elastic
belt 14 made of rubber formed around measuring tape 16
and including ribs 20 as end edge portions disposed on both
edges of the tape. (Mason 2:42-66.) The structural
similarities between the flexible members of the Appellant’s
Figure 3 and the rubber ribs 20 of Mason’s Figure 2 are
notable. Those similarities support the Examiner’s
determination that Mason’s rubber ribs are reasonably
viewed as flexible members with end edges which are structured and
configured to make close contact with an abutting surface. The Appellant
does not meaningfully explain why or how that determination is in error.
In the alternative, we note that the claim does not require that it must
be the outermost edges of the flexible members which are configured to abut
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a surface. Rather, any portion of the flexible members may be so
configured. Mason’s measuring device is configured to fit tightly around a
person’s head (Mason 2:57-60) and the ribs 20 of the device are arranged to
prevent the edge of measuring tape 16 from cutting into a person’s skin (id.
at 3:5-6). The ribs are thus disclosed as flexible members that make close
contact with an abutting surface, i.e., a person’s head.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1 and 3 as anticipated by Mason.
Claim 3
Claim 3 is dependent on claim 1 and adds the feature that the “flexible
members are rubber members.” (App. Br. 9 Claims App’x.) The Examiner
rejected claim 3 as anticipated by Mason. According to the Appellant, claim
3 is patentable over Mason for the same reasons that were advanced for
claim 1. For the same reasons discussed above, we reject the Appellant’s
position.
The Appellant also asserts that claim 3 is patentable over Mason
because of the “additional features it recites.” (App. Br. 4:28-29.) The
Appellant’s assertion does not constitute an argument for the separate
patentability of claim 3. 37 CFR § 41.37(c)(1)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”) In any event, Mason discloses that
the elastic belt and its edges are made of rubber. (Mason 2:56-58.) The
Appellant does not explain why the rubber edges of Mason’s belt do not
reasonably constitute the “rubber members” set forth in claim 3.
We sustain the rejection of claim 3 as anticipated by Mason.
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Obviousness
The Examiner rejected claims 4 and 5 as unpatentable over Mason
and King and claim 6 as unpatentable over Mason, King, and Koizumi.
Claim 4 is an independent claim. Claims 5 and 6 depend from claim 4.
Claim 4
Claim 4 is drawn to a drain cleaner. As with claim 1, the Examiner
relied on the teachings of Mason in rejecting claim 4. The Appellant
contends that Mason is non-analogous art to its claimed invention directed to
drain cleaners. A reference qualifies as prior art in an obviousness
determination only when it is analogous to the claimed invention. In re
Bigio, 381 F.3d at 1325. A reference is analogous art if it either is; (1) in
the field of the applicant’s endeavor, or (2) reasonably pertinent to the
particular problem with which the inventor was concerned. Id.
The Appellant’s field of endeavor is that of water removal devices.
(Spec. 2:¶ 0006.) Mason discloses a device for measuring the circumference
of a person’s head. (Mason Abstract.) The measuring device is not
disclosed as being used for collecting water nor are the edges of its device
intended to operatively contact a surface, such as a floor, on which water
may potentially pool. Mason’s measuring device is simply mounted on a
person’s head and functions to measure its circumference. That is not a
device falling within the Appellant’s field of endeavor.
A prior art reference is reasonably pertinent if it is one which logically
would have commended itself to an inventor’s attention in considering his
problem. In re Clay, 966 F.2d at 659. In this case, the problem faced by the
inventor was in minimizing the number of workers required to operate a tool
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for conveying pooled water from a surface. (Spec. pp. 1-2.) The record
does not demonstrate any credible reason why a device which operates to fit
around and measure a person’s head, as in Mason, would have logically
commended itself to an inventor intent on minimizing the number of
required workers for moving pooled water on a surface. In our view, the
intended functions of the devices of Mason and the Appellant’s invention are
so dissimilar as to preclude a determination that Mason is “reasonably
pertinent” to the problem faced by the Appellant’s inventor. The Examiner
also has not articulated any rationale as to why Mason is reasonably
pertinent to that problem.
We thus conclude that Mason constitutes non-analogous art and is not
applicable as a prior art reference in evaluating the obviousness of the
Appellant’s claims. We do not sustain the rejections of claims 4-6 as
obvious based on the teachings of Mason taken with one or more of King
and Koizumi.
E. CONCLUSION
1. The Examiner did not incorrectly find that Mason is an
anticipating reference as it discloses all the limitations of the Appellant’s
claims 1 and 3.
2. The Examiner incorrectly determined that Mason constitutes
analogous art and thus available as prior art in evaluating the obviousness of
the Appellant’s claims 4-6.
F. ORDER
The rejection of claims 1 and 3 under 35 U.S.C. § 102(b) as
anticipated by Mason is affirmed.
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The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Mason and King is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Mason, King, and Koizumi is reversed.

AFFIRMED-IN-PART

KMF

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