Ex Parte Miskovich

Patent Trial and Appeal Board

Nov 22, 2016

13135581 (P.T.A.B. Nov. 22, 2016)

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.
13/135,581 07/09/2011 Joseph S. Miskovich TRTN-100-A 9521
48980 7590 11/25/2016
YOT TNORANTT F
EXAMINER
3001 WEST BIG BEAVER ROAD LAMBE, PATRICK F
SUITE 624
TROY, MI 48084 ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
docketing @ youngbasile. com
audit @ youngbasile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH S. MISKOVICH
Appeal 2015-000822
Application 13/135,581
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—4, 7—9, 21—24, and 30.1 App. Br. 43. Claims 5, 6, 10-
12, 16—20, and 25 have been canceled. App. Br. 23—25 (Claims Appendix).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Examiner withdrew the rejections of claims 13—15 and 26—29 under
35 U.S.C. § 103(a). Ans. 2. Claims 13 and 29 are independent. Claims 14,
15, and 26—28 depend from claim 13. No rejection of these claims is
presently before us for review.
Appeal 2015-000822
Application 13/135,581
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to underground water collection
and storage chamber systems.” Spec. 11. Claims 1 and 13 are independent
claims. Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. An underground water collection and storage
system, wherein the system comprises:
a primary underground water collector having an
enclosure wall, a water inlet, a floor and ends defining a
primary storage chamber enclosure having a longitudinal axis;
a secondary underground water overflow collecort2
having an enclosure wall and ends defining a secondary storage
chamber enclosure; and
a water transfer device for transferring excess overflow
water from the primary chamber to the secondary chamber, the
transfer device including:
a first elongate pipe having a first end extending
through the primary collector enclosure wall and elevated
above and distant from the primary chamber floor
defining an elongate axis, the first elongate pipe having a
first end defining a first plane substantially perpendicular
to the elongate axis positioned in the primary storage
chamber and an outlet end positioned and longitudinally
extending into the secondary storage chamber having a
lowest portion; and
an angled inlet elbow positioned in the primary
storage chamber extending from the elongate pipe first
end, the inlet elbow having an inlet end defining an inlet
opening in an inlet plane angularly displaced relative to
the elongate pipe first plane and elevated above and
distant from the primary chamber floor to restrict the
passage of debris in the water from the primary chamber
2 The Examiner does not raise this issue, but we presume this is a
typographical error and that Appellant meant to say “collector.” Our
analysis will be based on this assumption.
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Application 13/135,581
to the secondary chamber as overflow water in the
primary chamber rises above the elbow inlet opening.
REFERENCES RELIED ON BY THE EXAMINER
Wold US 2,527,046
US 4,919,568
US 6,132,139
Oct. 24, 1950
April 24, 1990
Oct. 17, 2000
Nov. 8, 2007
Oct. 22, 2009
Hurley
Hashimoto
Miskovich
Lucas
US 2007/0258770 A1
US 2009/0261036 A1
THE REJECTIONS ON APPEAL
Claims 1—4, 9, 21—24, and 30 are rejected under 35 U.S.C. § 103(a) as
obvious over Miskovich and Hurley.
Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over
Miskovich, Hurley, and Hashimoto.
Claim 8 is rejected under 35 U.S.C. § 103(a) as obvious over
Miskovich, Hurley, and Lucas.
Claim 8 is rejected under 35 U.S.C. § 103(a) as obvious over
Miskovich, Hurley, and Wold.
Appellant presents separate arguments for each of these claims except
for claim 21, which depends from claim 3. App. Br. 4—13. Regarding claim
21, Appellant states that this claim “stands and falls based on the
patentability of claim 3.” App. Br. 10. Accordingly, except for claim 21,
ANALYSIS
The rejection of claims 1—4, 9, 21—24, and 30
as obvious over Miskovich and Hurley
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Application 13/135,581
we address each claim separately, with claim 21 standing or falling with
claim 3. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
The Examiner primarily relies on Miskovich for teaching the recited
limitations, but the Examiner acknowledges Miskovich’s lack of a disclosure
of the recited “inlet elbow” forming a part of the claimed “transfer device.”
Final Act. 3. The Examiner relies on Hurley for disclosing “an inlet elbow
(see Fig. 4)” and concludes that it would have been obvious to modify
“Miskovich to use the elbowed pipe of Hurley as described in the claim as a
substitution of [] one known element for another to obtain predictable
results.” Final Act. 3^4. Appellant “disagrees that Hurley discloses the
claimed transfer device and elbow and further asserts that the combination of
Hurley’s associated elbow with [Miskovich] is improper.” App. Br. 4—5.
Regarding the recited “transfer device,” claim 1 states that this device
includes “a first elongate pipe” and also “an angled inlet elbow.” The term
“elbow” is not employed in Appellant’s Specification; instead, Appellant’s
Specification repeatedly refers to a “90° angled water transfer device.” See
e.g., Spec. 5, 13, 15—27, 47—51 and the various figures discussed therein.
The dictionary definition of “elbow” is “something (such as a pipe or a piece
of food) that is bent like an elbow.”3 The dictionary definition of “elbow” is
consistent with how “90° angled” is employed in Appellant’s Specification.
3 See http://www.merriam-webster.eom/dictionary/elbow, last visited on
November 17, 2016.
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Accordingly, we understand the claim term “elbow” as referring to
something that is bent.4
The Examiner references Hurley’s Figure 4 and provides an
annotation thereof where the claimed “elbow” can be found. Final Act. 3.
Appellant contends that Hurley’s device is “a siphon device” or one that
requires a “vacuum force to draw water from a catch basin.” App. Br. 5; see
also Reply Br. 2—5. However, this argument is not an argument that the
claimed structure is not shown or taught by Hurley; instead, this argument is
directed to how Hurley functions and to the environment in which Hurley
operates.5 Hurley was relied on for disclosing “an inlet elbow” (Final Act.
3) and Appellant’s contention is not an argument that Hurley fails to disclose
an “elbow” (as that term is understood, see infra) or that Hurley’s “elbow”
could not be substituted as stated by the Examiner. Final Act. 4.
As indicated supra, Appellant also contends, “the Examiner is
incorrect that the asserted Hurley device elbow discloses the claim 1 elbow
structure.” App. Br. 5. However, Appellant does not explain how the
“elbow” identified by the Examiner (Final Act. 3) is not “something that is
4 For completeness, we note that the claims do not recite any particular angle
(i.e., 90°), but instead recite “an angled inlet elbow.” Appellant’s
Specification further states that “any angle could be utilized.” Spec. 147.
Additionally, it is noted that Appellant’s Figures depict this “90° angled”
device as having horizontal and vertical linear extensions of different
lengths, and that the claim language is silent regarding the length of these
linear extensions. See e.g., Figures 3, 4b, 4d, 5, and 8—14. Accordingly, the
recited elbow is not precluded from having linear extensions, or that they be
of different lengths. See also Spec. 1 60.
5 We are instructed that “apparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch &Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990).
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bent,” as the claim term “elbow” is understood. See supra. This is
especially the case when Hurley’s device is shown as having a 90° angle.
See Hurley Fig. 4. Appellant’s contention that Hurley fails to disclose an
elbow structure is not persuasive.
Appellant further contends, “[t]he asserted Hurley elbow does not
serve as the inlet end or define an inlet opening.” App. Br. 5. To be clear,
claim 1 recites “an angled inlet elbow” “having an inlet end” that is
“elevated above and distant from the primary chamber floor.” Appellant
does not explain how Hurley’s identified “elbow” fails to meet this criteria.6
Appellant also contends, “the Hurley catch basin/retention pond
system is expressly distinguished by [Miskovich]” and that the Examiner’s
modification “would render the [Miskovich] system inoperable for its
intended functions.” App. Br. 6; see also Reply Br. 2—5. First, the
Examiner is not relying on Hurley for its disclosure of a catch basin or a
retention pond. Instead, the Examiner is relying on Hurley for disclosing
“an inlet elbow (see Fig. 4).” Final Act. 3. Second, Appellant does not
explain how the substitution of Hurley’s elbow structure for the intake
structure of Miskovich would render Miskovich inoperable because both
pertain to water transfer devices.7 See Miskovich item 26; Hurley item 30.
6 The Examiner provides alternate explanations on this point involving either
the elbow alone or the elbow with a linear pipe extension. Ans. 4. Should
the elbow be a separate structure from the piping connected thereto, then
“the bottom portion of the elbow would clearly define an inlet.” Id. On the
other hand, should Hurley’s vertical pipe be a part of the elbow, then “the
elbow pipe combination would still read on the claim language.” Id.
1 Appellant identifies some of the “disadvantages” that may arise upon the
“placement of the Hurley pipe inlet as applied to” Miskovich (Reply Br. 3),
but the Examiner is not relying on Hurley for disclosing the “placement” of
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Nevertheless, the Examiner acknowledges that Miskovich does not disclose
“an inlet elbow connected to the elongate pipe” and the Examiner relies on
Hurley for teaching the use of an inlet elbow. Final Act. 3. Accordingly,
Appellant does not explain how the substitution of one known device (i.e.,
Hurley’s elbow) into Miskovich would render Miskovich “inoperable for its
intended function.”* * * * * * 8 App. Br. 6; see also Reply Br. 4.
Appellant also addresses “an elbow and long extension pipe
downward as shown in Hurley” and contends that this structure cannot be
combined with Miskovich. App. Br. 6; see also Reply Br. 4—5. However,
even should Hurley’s elbow include an extension pipe (see Ans. 4), this
would not disqualify Hurley’s structure from being equated to the claimed
“elbow” because Appellant’s own device has horizontal and vertical linear
components of unequal length. See supra.
Appellant also addresses the problem of “[djebris and sediment
clogging” (App. Br. 6) but it is noted that both Miskovich and Hurley
additionally discuss water filtration. See Miskovich 131; Hurley 4:38-42.
Appellant does not explain how these references, by also addressing
the pipe inlet. Further, Appellant’s contention is not dispositive, even
should Hurley’s placement have been under consideration, because we are
instructed that a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate any or all reasons to
combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349, n.8 (Fed. Cir. 2000).
8 Appellant addresses locating the inlet “close to the bottom of the chamber”
(App. Br. 6; see also Reply Br. 5) but this argument relies on incorporating
more from Hurley into Miskovich than relied on by the Examiner. As
indicated supra, claim 1 recites that the inlet be “elevated above and distant
from the primary chamber floor” and Appellant does not explain how that is
not shown or taught by Hurley’s elbow (e.g., Figure 4 of Hurley illustrates
this elbow and its inlet as being located above the chamber floor).
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Application 13/135,581
filtration, are not also concerned with reduced operability due to clogging
and the like. Appellant also references the “huge improvement” the
disclosed filter puck provides and also the “demand and commercial
success” of the system. App. Br. 7 (referencing the Inventor’s Declaration
and three attachments). The Examiner states that “Appellant’s reliance on
the declarations is misplaced.” Ans. 6. We agree that Appellant’s reference
to filtering and these documents on this point is better suited to the rejection
of claim 4, which recites “a filter cartridge.” Claim 1 does not include such
language. However, regarding the commercial success of Appellant’s
device, the submitted inventor’s Declaration does not address that topic, or
provide any sales or market share data having a nexus to the recited claim
language that might support this general assertion of commercial success.9
Furthermore, the three attachments are letters of praise and are directed to
Appellant’s filtration methods, and hence will be further addressed when
discussing the rejection of claim 4.
Appellant’s Reply Brief additionally addresses the issue of “teaching
away,” contending that “[o]ne looking for Applicant’s solution for debris
and sediment management would be discouraged by Hurley from proceeding
in Applicant’s direction.” Reply Br. 4. However, as discussed above,
Hurley is not relied on for its method of operation, but instead for the
stmcture disclosed therein that is used to drain or transfer water from one
location to another. This is emphasized by the Examiner when stating the
9 Additionally, our reviewing court has instructed us that “secondary
considerations of nonobviousness . . . simply cannot overcome a strong
prima facie case of obviousness” and that for obviousness under § 103, “all
that is required is a reasonable expectation of success.” Wyers v. Master
Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010).
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reason to combine Miskovich and Hurley, i.e., “to modify the water transfer
device of Miskovich to use the elbowed pipe of Hurley.” Final Act. 4
(emphasis added). Appellant’s contention is not persuasive of Examiner
error.
Appellant also seems to argue that Hurley is not analogous art. See
Reply Br. 2; see also Ans. 2—3. However, both Hurley and Miskovich
pertain to the drainage of water (see respective Titles and Abstracts) and
hence Appellant’s contention is not persuasive that Hurley and Miskovich
are not in the same field of endeavor. See In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006).
Appellant further contends that, in addition to the “secondary
considerations” previously discussed, Appellant’s device “has further
achieved unexpected results in the management of debris and sediment in
the primary collector.” Reply Br. 5. Appellant relies on the submitted
declaration and documents for support (Reply Br. 5 (referencing App. Br. 6—
7)), but it is not made clear how the inclusion of a known elbow (Hurley)
into a known system (Miskovich) achieves an unexpected result. In other
words, Appellant does not explain how the inclusion of an elbow, which
knowingly changes the system’s input location, accomplishes something
unexpected. There is no evidence that the elbow operates differently or
receives water differently. Accordingly, Appellant’s contention regarding
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Application 13/135,581
“unexpected results” is not persuasive that one skilled in the art would have
considered the result of adding an elbow to be unexpected.10,11
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 1 as being obvious over Miskovich
and Hurley.
Claim 2
Claim 2 depends from claim 1 and includes the limitation “wherein
the angled elbow inlet plane is oriented toward the primary chamber floor
and positioned below the outlet end lowest portion.” The Examiner finds
this limitation met by Hurley’s elbow, whose inlet is “at a lower elevation
than the outlet end of the pipe (30).” Final Act. 4; see also Ans. 5.
Appellant disagrees and directs attention to “end/exit point (40)” shown in
Hurley Figure 4. App. Br. 7; see also Reply Br. 6. It appears that the
Examiner is distinguishing between the elbow inlet and the horizontal run of
pipe 30 whereas Appellant is addressing an exit point that occurs after
horizontal pipe 30 is secured to both another elbow and a length of vertical
piping. In effect, the parties are addressing different locations, as well as
different components, shown in Hurley Figure 4. While both might be
10 Regarding the inventor’s declaration, it does address how the “elbow and
transfer devices were designed to improve on and minimize clogging” (see
Declaration | 8) but Appellant does not explain how such improvement is
“unexpected” rather than good engineering judgement. Further, the
inventor’s disagreement with the Examiner’s position (see Declaration 19)
does not render the Examiner’s rejection based on obviousness wrong.
11 The submitted letters each address how the use of an elbow is “unique” or
“novel” or “brings a new dimension to treatment” of runoff, but none of
these letters address the elbow disclosed in Hurley, nor are any persuasive
that the use of Hurley’s elbow in Miskovich is wrongfully deemed by the
Examiner to be obvious.
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correct based on the structure relied upon, Appellant has not shown how the
arrangement of the components identified by the Examiner is not as claimed.
Appellant also contends that Hurley “does not meet the claim 2 elbow and
transfer device elements” but this contention is not persuasive based on the
previous discussion of the scope of the claim term “elbow.” See supra. In
summary, Appellant has not shown error by the Examiner and accordingly,
we sustain the Examiner’s rejection of claim 2.
Claim 3
Claim 3 depends from claim 1 and includes the limitation “wherein
the inlet plane is positioned at an angle about 90° relative to the elongate
pipe first plane.” The Examiner finds this 90° orientation disclosed in
Hurley. Final Act. 4; Ans. 5. Appellant contends that “Hurley’s asserted
elbow does not define an inlet end or inlet plane due to the long vertical pipe
extending therefrom down to point (32).” App. Br. 8; see also Reply Br. 6.
Even assuming, for the sake of argument, that Hurley’s elbow incorporates
this “long vertical pipe” (which is not precluded, see supra), the 90° bend
depicted in Hurley discloses the two planes at ninety degrees to each other in
the same manner as Appellant describes its device having planes ninety
degrees offset to each other. See App. Br. 8 (referencing Spec. Figs. 4a, 19,
and 21). Appellant’s contention is not persuasive of Examiner error. We
sustain the Examiner’s rejection of both claim 3 and claim 21.
Claim 4
As discussed above, claim 4 (which depends from claim 1) recites a
“filter cartridge,” and more specifically, “a filter cartridge positioned in the
inlet opening.” The Examiner relies on Miskovich, stating that it would
have been obvious “to modify the location of the filter” to the elbow inlet
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opening because Miskovich teaches a “filter to assist with water quality
within the system (paragraph 0031).”12 Final Act. 4; see also Ans. 6.
Granted, Miskovich does not disclose (nor does Hurley) the location of this
filter as being in the elbow inlet opening (see, e.g., Reply Br. 6), but
Appellant does not explain how or why it would not have been obvious “to
modify the location of the filter” to this recited location as stated by the
Examiner. Final Act. 4. The Examiner explains that Miskovich’s teaching
of filtration “guides one of ordinary skill in the art to utilize filtration media
in areas of maximum flow to increase the water quality of the system.” Ans.
6. Thus, according to the Examiner, “[a]n obvious location would be the
inlet of the water transfer device as it balances filtering the water at the
earliest time with not limiting the flow into the primary chamber.” Ans. 6.
Appellant’s further reliance on the inventor’s Declaration and the
three attachments do not explain how modifying the location of the filter as
stated by the Examiner would not have been obvious. See App. Br. 9; Reply
Br. 7. In short, these documents each acknowledge the known need to filter
water so as to prevent clogging, and each signatory also indicates that they
are not aware of another system where the filter is so located.13 However,
such documents are not persuasive that one skilled in the art, aware of a
12 As noted above but not relied on by the Examiner, Hurley also discusses
water filtration and that if a screen were used, “[t]his screen will filter all but
the smallest particles thus allowing for the use of much smaller pipe.”
Hurley 4:38 42.
13 One document (Declaration of Joseph S. Miskovich, Attachment B),
signed by both Messrs. Lance Hoff and Daniel Murphy, states that “several
systems are currently available on the market that provide filtration of
stormwater,” which use filter fabric but that the use of Appellant’s “Filter
Puck product is a novel idea.” Hence, this document seems to indicate that
the presence of the filter puck is novel, not its location.
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desire to filter water, would consider placing a filter at an inlet as being non­
ob vious. Accordingly, we are not persuaded the Examiner erred in rejecting
claim 4 as being obvious over Miskovich and Hurley.
Claim 9
Claim 9 depends from claim 1 and includes a recitation to first and
second transfer devices “separated along the primary storage chamber
longitudinal axis” and also at separate heights “relative to the primary
storage chamber floor.” The Examiner relies on Miskovich for disclosing
this limitation and references paragraph 24 thereof. Final Act. 4; Ans. 6.
Paragraph 24 of Miskovich states that “half pipes 10 [are] connected
together at one or more ports” and that “[a] series of half pipes 10 can be
connected to a manifold pipe by connector pipes 26 to form a leaching
field.” Here, it is understood that the Examiner correlates Miskovich’s
“manifold pipe” to the claimed “primary storage chamber.”14 Final Act. 3.
Paragraph 24 further states, “[t]he half pipes may also be connected to each
other, either through side ports 15 or top ports 18.” Hence, Miskovich
teaches that pipes 10 can be “connected together at one or more ports” and
that these connections can be “either through side ports 15 or top ports 18.”
Miskovich 124. Appellant addresses side ports 15 and top ports 18
separately, but not in combination. See App. Br. 10; Reply Br. 8. In effect,
by arguing only the use of side ports 15 or only the use of top ports 18 (and
14 The Examiner identifies Miskovich’s item 10 as “a primary underground
water collection and storage chamber” and that it has “multiple water
transfer devices (26) connecting the primary chamber and the secondary
chambers for transferring overflow water.” Final Act. 3; see also Miskovich
Fig. 2.
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explaining their deficiencies),15 Appellant does not indicate how the
Examiner erred by utilizing Miskovich’s teaching of multiple connections
involving multiple ports. Accordingly, we are not persuaded the Examiner
erred in rejecting claim 9.
Claim 22
Claim 22 depends from claim 21 (and hence ultimately from claim 1).
Claim 22 includes the additional limitation of “wherein the elbow inlet plane
is positioned elevationally above a highest portion of the elongate pipe outlet
end.” The Examiner references Figures 4 and 5 of Hurley as disclosing this
limitation and relies on the “discussion of claim 1.” Final Act. 4; Ans. 6—7.
However, Appellant does not address the Examiner’s rejection or the
structure discussed above with respect to claim 1. Instead, Appellant
presumes the Examiner is addressing a totally different pipe altogether, i.e.,
collection pipe 19.16 App. Br. 11. Appellant argues that the inlet of this
collection pipe 19 (“apparently at 23 in Fig. 5”) “is not in combination with
the claim (22) elbow and therefore does not satisfy or render obvious the
claim (22) structure.” App. Br. 11. Appellant’s argument premised on a
totally different pipe, which is not illustrated as even having an elbow
15 For example when addressing side ports 15, Appellant states, “ports (15)
are not disclosed or suggested to be at different heights.” App. Br. 10. In
other words, Appellant is not addressing the elevational difference between
side ports 15 and top ports 18, nor does Appellant contend that Miskovich’s
top and side ports cannot be employed concurrently.
16 Interestingly, Appellant’s Reply Brief does not further address collection
pipe 19 but instead begins to address a new and different portion of the
structure illustrated in Hurley, i.e., “the bend at the far right side of Hurley
Fig. 4 toward the pond-exit point 40.” Reply Br. 8. Appellant’s new focus
on this part of Hurley, which is not addressed in Appellant’s Appeal Brief, is
likewise not persuasive of Examiner error.
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associated therewith, is not persuasive the Examiner’s rationale for rejecting
claim 22 is in error. We sustain the Examiner’s rejection of claim 22.
Appellant also relies on “[t]he secondary considerations argued for
claim 1” regarding filtration (App. Br. 11), but as previously indicated,
Appellant’s documents are not deemed persuasive by the Examiner. Ans. 6.
We agree with the Examiner (see supra).
Claim 23
Claim 23 depends from claim 9 and includes the additional limitation
of “wherein the higher second water transfer device elbow inlet plane is
positioned substantially perpendicular to the primary storage chamber
longitudinal axis.” The Examiner relies on Miskovich, and particularly side
and top ports 15 and 18, for disclosing this limitation. Final Act. 4, Ans. 7.
Appellant “views the asserted [Miskovich] ports (18) (or 15) as being
parallel to the longitudinal length of the [Miskovich] chamber (10).” App.
Br. 11—12 (citing Miskovich Fig. 1). To be clear, claim 23 is addressing the
“plane” of the inlet and how this “plane” is “substantially perpendicular” to
the primary storage “axis.” The “planes” of Miskovich’s ports 15 and 18 are
illustrated as running parallel to Miskovich’s axis, not perpendicular as
recited.
Accordingly, we agree with Appellant’s view that “the asserted
[Miskovich] ports (18) (or 15) [are] parallel to the longitudinal length of the
[Miskovich] chamber (10).” The Examiner provides no other reason for the
rejection of this claim, and, accordingly, we do not sustain the rejection of
claim 23 as being obvious over Miskovich and Hurley.
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Claim 24
Claim 24 depends from claim 1 and recites “a second transfer device”
having “a second inlet opening extending into the primary storage chamber
and an outlet end positioned in the secondary storage chamber.” In other
words, claim 24 recites a second transfer device between storage chambers,
but in this case, this “second inlet opening is positioned elevationally higher
than a highest portion of the first transfer device inlet opening.” The
Examiner again references Miskovich’s disclosure of “a plurality of inlets
(15, 18) at different elevations” as teaching this limitation. Final Act. 4; see
also Ans. 7 (referencing Miskovich 124). Appellant contends that
Miskovich’s “disclosure of using a single, aligned row of ports (15 on each
side) and (18 on the top) further supports that there is only one row of
transfer devices shown in [Miskovich].”17 App. Br. 12 (emphasis added).
We are not in agreement with Appellant’s interpretation of Miskovich
in light of the teachings of Miskovich Paragraph 24. See also Reply Br. 9.
As indicated supra, Miskovich Paragraph 24 teaches that half pipes 10 can
be “connected together at one or more ports” and that these pipes “may also
be connected to each other, either through side ports 15 or top ports 18.”
Hence, as above, Miskovich’s teaching of multiple connections involving
multiple ports at different elevations is not persuasive that Miskovich is
limited to “only one row of transfer devices,” although that arrangement
may be the only embodiment shown. According, we are not persuaded by
Appellant’s argument that the Examiner erred in rejecting claim 24.
17 Appellant further states (regarding Miskovich) that “[t]here is no
disclosure or suggestion of a secondary or auxiliary row of ports or inlets at
an elevation above” Miskovich’s side ports 15. App. Br. 12.
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Claim 30
Claim 30 depends from claim 9 and includes the limitation wherein
the first and second inlet planes are “positioned at a different angle relative
to the respective elongate pipe first plane.” In other words, the first and
second inlet planes are positioned at a different angle than their respective
pipe planes. The Examiner relies on both Miskovich and Hurley for
disclosing this limitation. Final Act. 4; Ans. 7. Appellant addresses the
teachings of Miskovich stating that ports 15 and 18 “are parallel to the
longitudinal axis of the single manifold” (similar to that “argued for claim
9”). App. Br. 13. Presuming, as indicated by Appellant, that the
longitudinal axis of the manifold corresponds to the claimed “elongate pipe
first plane,” then indeed, the plane of Miskovich’s inlet ports are arranged
“parallel to the longitudinal axis” of the manifold as discussed above.
However, one such inlet plane in Miskovich is arranged horizontally parallel
and the other inlet plane is arranged vertically parallel (i.e., inlet planes 15
and 18 are orthogonal to each other). As this is the arrangement Miskovich
illustrates, Appellant does not explain how these two inlet planes fail to be
“positioned at a different angle” (one being horizontal, the other vertical)
with respect to the longitudinal axis of the manifold, as claimed.
Regarding Hurley, Appellant does not attempt to indicate how Hurley
fails to disclose this limitation. Instead, Appellant reverts to arguments
previously made to the effect that “the asserted Hurley transfer device inlet
(long vertical pipe and asserted elbow) also does not disclose the claimed
elbow inlet transfer device and is not properly combined with [Miskovich].”
App. Br. 13.
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Appellant’s arguments are not persuasive the Examiner erred. We
sustain the Examiner’s rejection of claim 30.
The rejection of claim 7
as obvious over Miskovich, Hurley, and Hashimoto
Claim 7 depends from claim 4. The Examiner relies on the additional
reference to Hashimoto for disclosing the additional limitation of the transfer
device comprising “a radially enlarged portion defining an increased inlet
end.” The Examiner finds that “Hashimoto discloses that the water transfer
pipes can be expanded in a bell mouth (radially enlarging the opening
portion).” Final Act. 5; see also Hashimoto Fig. 22, 6:62—64 and 12:2-4.
The Examiner concludes that it would have been obvious “to modify the
inlet openings of the Miskovich-Hurley combination to be enlarged” as
described in Hashimoto “as the simple substitution of a known pipe opening
for another to obtain predictable results.” Final Act. 5. The Examiner
further concludes that it would have been obvious “to place the filter of the
Miskovich-Hurley combination in the enlarged inlet opening as an obvious
location to try.”18 Final Act. 5.
Appellant does not dispute the Examiner’s additional reliance on
Hashimoto for disclosing this additional limitation, or combining same with
the Miskovich-Hurley combination. App. Br. 14; see also Ans. 7. Instead,
Appellant repeats arguments set forth regarding claims 1 and 4. App. Br.
14; Reply Br. 11. The Examiner again replies stating “[a]n obvious location
would be the inlet of the water transfer device” and provides a reason for
18 The Examiner finds, “[a]n obvious location would be the inlet of the water
transfer device as it balances filtering the water at the earliest time [while]
not limiting the flow into the primary chamber.” Ans. 8.
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this statement. Ans. 8. Appellant also contends that no filter cartridge could
be found in Hashimoto (App. Br. 14), but the Examiner did not rely on
Hashimoto for disclosing a filter. Appellant further contends, “[pjlacing a
filter in the Hurley elbow which is in the middle of Hurley’s transfer device
would leave no way to service the filter and disable Hurley when the filter
gets plugged or contaminated.” App. Br. 14. First, there is no recitation in
any of claims 1, 4, or 7 regarding servicing the filter. Second, there is no
limitation in any of claims 1, 4, or 7 precluding any disablement “when the
filter gets plugged or contaminated.”19 Third, Appellant has not provided
any evidence in support of this allegation (“no way to service the filter”) and
such attorney argument is “not the kind of factual evidence that is required
to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).20 (Citations omitted). Additionally, Appellant’s
reference to “secondary considerations” and “Declarations” (App. Br. 14)
are, as indicated supra, not persuasive because they lack a showing of nexus
to the recited limitation and do not address Hashimoto.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 7 as obvious over Miskovich, Hurley,
and Hashimoto.
19 We note that Appellant is silent as to how one can service Appellant’s
own filter without any disablement of Appellant’s system when Appellant’s
filter likewise “gets plugged or contaminated.”
20 See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
arguments in a brief cannot take the place of evidence.”) (citation omitted);
see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value).
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The rejection of claim 8
as obvious over Miskovich, Hurley, and Lucas
Claim 8 depends from claim 1. The Examiner relies on the additional
reference to Lucas for disclosing the additional limitation of the transfer
device having “a second inlet bypass opening positioned elevationally
above” the first inlet. Final Act. 5; see also Ans. 9. More specifically, the
Examiner identifies “two outlets (201,202) that are in fluid communication”
with pipe 9 “to control flow.” Final Act. 5; see also Lucas Figure 1 and
1 63; see also Ans. 8—9. The Examiner also provides a reason to combine
Lucas with Miskovich and Hurley based on “applying a known flow control
technique to a known device ready for improvement.” Final Act. 6.
Appellant emphasizes that “[cjlaim 8 recites a second inlet bypass
opening” whereas Lucas discloses “outflow devices” designed “to ‘detain as
much runoff as possible while treating large events.’” App. Br. 15
(referencing Lucas Tflf 59—63); see also Reply Br. 11—12. Accordingly, as
per Appellant, “[t]he Examiner’s stated bases for modifying [Miskovich]
and Hurley is improper as the cited Lucas openings are flow outlets.” App.
Br. 16; see also Reply Br. 12.
The Examiner states, “Appellant’s assertion that [] they are outlets is a
distinction without merit. In a water flow system, inlet or outlet are
determined by the direction of water flow. If the flow is reversed, the inlets
become outlets and vice versa.” Ans. 9. Appellant does not indicate or
explain how a change in the flow of water would fail to render Lucas’s
identified components as inlets. Appellant does not provide a structural
distinction regarding the teachings of Lucas, only functional. We are
instructed that functional recitations serve to define over the prior art only
where those recitations result in a structural distinction as compared to that
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prior art. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir.
1999). See also Hewlett-Packard Co., 909 F.2d at 1468.
Appellant also states that the claim requires the additional opening to
be “in the elbow.” App. Br. 15. However, Appellant does not further
elaborate as to how this limitation is not disclosed in view of the teachings
of Miskovich, Hurley, and Lucas and also in view of how this claim term is
understood. See supra, see also Ans. 9. Appellant further references
“secondary considerations of failure of prior designs and long felt need.”
App. Br. 16. However, as the recited documents lack a nexus to this recited
limitation, Appellant’s contention is not persuasive the Examiner erred in
rejecting claim 8 as being obvious over Miskovich, Hurley, and Lucas.
The rejection of claim 8
as obvious over Miskovich, Hurley, and Wold
Similar to the discussion above, the Examiner relies on Wold for
disclosing “an inlet (40) with multiple openings (80) at different elevation
levels.” Ans. 9. Thus, even presuming we reverse the Examiner’s rejection
of claim 8 in view of Wold, our affirmance of the rejection of claim 8 in
view of Lucas above would still “constitute^ a general affirmance of the
decision of the examiner on” claim 8. 37 C.F.R. § 41.50(a)(1).
Accordingly, we do not address the Examiner’s duplicative rejection of
claim 8 based on Miskovich, Hurley, and Wold.
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DECISION
The Examiner’s rejections of claims 1—4, 7—9, 21, 22, 24, and 30 are
affirmed.
The Examiner’s rejection of claim 23 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
22