Ex parte Miller

Board of Patent Appeals and Interferences

Mar 4, 1999

08438533 (B.P.A.I. Mar. 4, 1999)

Application for patent filed May 10, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HOWARD W. MILLER
____________
Appeal No. 98-1532
Application No. 08/438,5331
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 3 and 4. Claim 2 has been
canceled. No claims have been allowed.
Appeal No. 98-1532
Application No. 08/438,533
2
The appellant’s invention is directed to a cover for a
lawn sprinkler head. The claims before us on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Block 2,751,250 Jun. 19,
1956
Leite et al. (Leite) 5,211,338 May
18, 1993
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Leite in view of Block.
Claims 3 and 4 also stand rejected under 35 U.S.C. § 103
as being unpatentable over Leite in view of Block.
The rejections are explained in Paper No. 5, the final
rejection.
The arguments of the appellant in opposition to the
examiner’s positions are set forth in the Brief and the Reply
Brief.
Appeal No. 98-1532
Application No. 08/438,533
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OPINION
According to the appellant’s specification, a problem in
typical home lawn sprinkler installations is that the poppet
sprinkler heads, which move from a retracted to an extended
position upon the application of water pressure, are easily
damaged by being stepped upon or contacted by mowers or other
rolling equipment. The objective of the appellant’s invention
is to provide an effective cover for such sprinkler heads that
is simple in design, inexpensive to produce, and easy to
install. As manifested in claim 1, the sole independent
claim, the appellant’s inventive cover comprises a single
molded piece forming a circular disk having a dome shaped
upper surface and a flat bottom surface. The disk has a
central aperture of “predetermined” diameter which is
sufficient to allow the operating portion of the sprinkler
head to “freely penetrate” the aperture when operating. At
least three conically shaped posts are attached to the bottom
surface of the disk to anchor the device to the ground.
Claims 3 and 4 add to claim 1 details of the posts.
The examiner has rejected all of the claims as being
unpatentable over Leite in view of Block. We have evaluated
Appeal No. 98-1532
Application No. 08/438,533
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this on the basis that the examiner bears the initial burden
of presenting a prima facie case of obviousness (see In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993)), which is established when the teachings of the prior
art itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art (see In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
This is not to say, however, that the claimed invention must
expressly be suggested in any one or all of the references.
Rather, the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art (see Cable Electric Products, Inc.
v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-87
(Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference (see In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)),
with skill being presumed on the part of the artisan, rather
Appeal No. 98-1532
Application No. 08/438,533
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than the lack thereof (see In re Sovish, 769 F.2d 738, 742,
226 USPQ 771, 774 (Fed. Cir. 1985)).
Leite is directed to a “shield” for a sprinkler in a lawn
system, the function of which is to “afford protection and
minimize vegetation growth about the sprinkler head” (column
1, lines 9 and 10). The nature of the “protection” provided
by the inventive shield to the sprinkler head is not
explained. The shield is described as “a rigid cylindrical
plate 11 including a planar top surface 12 spaced from and
parallel to a planar bottom surface 13,” which has a central
bore 15 with a plurality of radial slots 16 extending from the
bore “to effect flexure in the plate construction in
accommodating a sprinkler head to be received therethrough.”
A plurality of frangible grooves 17 are provided in the plate
to permit segments to be broken off so that the device can be
fitted to corner and edge installations. See column 3, lines
36-53. The plate is anchored by a plurality of spikes 14.
Block discloses a sprinkler “guard” which comprises a
pair of interrelated elements 5 and 6 that together define a
dome-shaped plate having a central aperture through which a
sprinkler head 1 extends. See Figure 2. The primary purpose
Appeal No. 98-1532
Application No. 08/438,533
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of this guard is to “prevent the growth of weeds and grass
around the head,” “without in any way altering, adding to or
removing from the conventional sprinkler head” (column 1, line
30 et seq.). Listed as an objective is draining water away
from the sprinkler head to promote this purpose (column 1,
lines 59-65), which no doubt is accomplished by its dome
shape. The guard is described as being for use with systems
in which the sprinkler is “about flush with the upper surface
of the ground so that it will not injure a lawn mower nor be
injured thereby, and so that it will not be obtrusive or be
objectionable to persons walking over the lawn” (column 2,
lines 12-15). The sprinkler heads may include the type that
move upwardly under the pressure of the water (column 2, lines
16-18). As shown in Figure 2 and described in column 2, the
Block device is placed in a depression dug into the ground in
such a position as to have the top of the dome flush with the
surface of the ground, and is installed around the sprinkler
by separating the two plates and then attaching them together
so that they “snugly engage the sides of the head” (column 3,
lines 19-20).
Appeal No. 98-1532
Application No. 08/438,533
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The examiner has taken the position that Leite discloses
all of the subject matter recited in claim 1 except for the
domed upper surface and “an aperture diameter sufficient for
the sprinkler head” (Paper No. 5, page 2-3), which we
interpret to mean an aperture that allows the sprinkler head
to “freely penetrate the aperture when operating,” as is
required by
claim 1. The examiner continues on page 3:
Block is relied upon merely to show that it is known
in the art to provide a dome shaped upper surface 5,
6. It would have been obvious . . . to have
provided the circular disk of Leite with a dome
shaped upper surface like that of Block, in order to
drain the water away from the sprinkler head. . .
.[I]t would have been an obvious matter of design
choice dependent on such considerations as cost and
strength, as well as ease of setup for a particular
size of sprinkler head, to make the central bore 15
of Leite with an aperture the size of or a size
larger than a diameter sufficient for the sprinkler
head to freely penetrate . . . when operating.
We do not agree with the examiner’s reasoning or
conclusion. We begin our rationale for arriving at this
decision by pointing out that neither of the references has
recognized the problem to which the appellant has directed his
inventive efforts nor, in our view, is there any evidence
which would support the conclusion that the combined teachings
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Application No. 08/438,533
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of the references would have resulted in structure that solves
this problem. In this regard, the upper surface of the
shields of both Leite and Block are flush with the surface of
the ground, and therefore are incapable of protecting a
sprinkler head that is above the ground.
With this as prelude, we direct attention to the
requirement in claim 1 that the cover comprise “a single
molded piece” that has a dome shaped upper surface and a flat
bottom surface. The Leite device is a circular disk
comprising a single piece which has a flat upper surface and a
flat bottom surface. Block is of multiple piece construction,
and has a dome shaped upper surface and a dome shaped bottom
surface. From our perspective, even if there existed proper
suggestion to combine these references, the result would not
be a single molded piece device, as required by the claim but,
at best, the dome of Block installed upon the flat disk of
Leite, and the rejection fails at this point. And, continuing
on this theme, since both references teach providing a central
aperture of such diameter as to grip (Leite) or engage (Block)
the sprinkler, the combined teachings would not have motivated
one of ordinary skill in the art to make the aperture large
Appeal No. 98-1532
Application No. 08/438,533
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enough to permit the sprinkler head to “freely penetrate” it
when operating, as is recited in claim 1.
Insofar as the issue of suggestion to combine is
concerned, the advantage of Block upon which the examiner
based the suggestion to combine the references is its domed
upper surface, which allows water to run off from the
sprinkler. To incorporate this feature into Leite would
require that the flat Leite disk be modified into a domed
configuration. Essentially, the result of that would be the
Block device, which is where we began this exercise, for we
can see no reason to retain the flat bottom surface of the
Leite disk in view of the fact that its function of keeping
grass from growing close to the sprinkler is accomplished by
the domed top of Block. We therefore fail to perceive any
teaching, suggestion or incentive in either reference which
would have led one of ordinary skill in the art to modify
Leite in the manner proposed by the examiner.
For the reasons expressed above, it is our opinion that
the combined teachings of the two applied references fail to
establish a prima facie case of obviousness with regard to the
subject matter of independent claim 1. It therefore follows
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Application No. 08/438,533
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that the rejection of that claim and dependent claims 3 and 4
will not be sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
bae
Appeal No. 98-1532
Application No. 08/438,533
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Polster, Lieder, Woodruff & Lucchesi
763 South New Ballas Road
Suite 230
St. Louis, MO 63141