Ex parte MOLTER

Board of Patent Appeals and Interferences

Jul 20, 1998

08455900 (B.P.A.I. Jul. 20, 1998)

Application for patent filed May 31, 1995. According to1
appellant, the application is a continuation of Application
08/333,598, filed November 2, 1994, abandoned; which is a con-
tinuation of Application 08/106,238, filed August 13, 1993,
abandoned.
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(2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAN E. MOLTER

_____________
Appeal No. 97-2822
Application 08/455,9001
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-2822
Application 08/455,900
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 5, 6 and 9 through 16. Claims 3, 4, 7,
8 and 17, the only other claims pending in the application, stand
withdrawn from further consideration based on an election of
species requirement also made in the final rejection (Paper
No. 23).
Appellant's invention relates to a floor drain
extension (e.g., claims 1, 10 and 11), a floor drain extension
com-bination (claim 13), and to a method of repositioning a drain
plate normally located atop a conventional fixed in place non-
adjustable floor drain by using the above-noted floor drain
extension (e.g., claims 5 and 9). Claims 1, 5, 9, 10, 11 and 13
are representative of the subject matter on appeal and a copy of
those claims may be found in the Appendix to appellant's brief
and the Appendix to the examiner's answer.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mayer 1,959,171 May 15, 1934
Appeal No. 97-2822
Application 08/455,900
3
Seewack 2,859,452 Nov. 11, 1958
Morris et al. (Morris) 3,362,425 Jan. 9, 1968
Emberson 4,943,100 July 24, 1990
Claims 5 and 9 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim that which appellant regards as
his invention. In the examiner's view (answer, page 4), the
claims are unclear as to the scope thereof. In this regard, it
is the examiner's position that
[t]he preambles call for a “method” but the
bodies appear to rely upon structural
features of a product for patentability.
Stated differently, claims 5 and 9 recite a
method which as understood should define a
process including novel and unobvious steps.
To the contrary, appellant argues at pages
11-12 of the brief that his method claims are
patentable because of the specific product
being manipulated by the otherwise
unpatentable process steps. In any event,
the preamble of claim 6 clearly reflects the
intended scope of claim 5.
In addition to the foregoing rejection, the appealed
claims stand rejected under 35 U.S.C. § 102 and § 103 as follows:
a) claims 10, 11 and 16 under § 102(b) as being
anticipated by Emberson;
b) claims 10, 11, 13, 14 and 16 under § 103 as being
unpatentable over Emberson;
Appeal No. 97-2822
Application 08/455,900
4
c) claims 12 and 15 as being unpatentable over Emberson
as applied to claims 10 and 11 above, and further in view of
Seewack; and
d) claims 1, 2, 5, 6 and 9 as being unpatentable over
Morris in view of Mayer.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper No.
28, mailed March 4, 1997) for the examiner's reasoning in support
of the rejections, and to appellant's brief (Paper No. 27, filed
January 21, 1997) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Appeal No. 97-2822
Application 08/455,900
5
We turn first to the examiner's rejection of appealed
claims 5 and 9 under 35 U.S.C. § 112, second paragraph. After
reviewing appellant's specification and claims 5 and 9 in light
thereof, and also in light of appellant's arguments on pages 11
and 12 of the brief, it is our opinion that the scope and content
of the subject matter embraced by appellant's claims 5 and 9 on
appeal is reasonably clear and definite, and fulfills the
requirement of 35 U.S.C. § 112, second paragraph, and that they
provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). There is no confusion in our minds concerning
the scope of appellant's claims 5 and 9 on appeal. These claims
are clearly directed to a method of repositioning a drain plate
atop a conventional form of floor drain by using a specific type
of annular body set forth therein. In contrast to the examiner's
opinion, it is our view that, if anything, it is the preamble of
dependent claim 6 which should be brought into conformity with
Appeal No. 97-2822
Application 08/455,900
However, for the reasons which we have indicated above, we2
suggest that the examiner consider such a rejection of dependent
claim 6 or, alternatively, merely have appellant provide an
appropriate correction of the preamble of this dependent claim.
6
the preamble of its parent method claim 5. We note particularly,
that the terminology "floor drain extension" as used in the
preamble of dependent claim 6 is not used anywhere in parent
claim 5 and thus finds no clear antecedent basis therein. Given
the foregoing, we will not sustain the examiner's rejection
of appellant's claims 5 and 9 under 35 U.S.C. § 112, second
paragraph.2
We next look to the examiner's prior art rejections of
the appealed claims, turning first to the rejection of claims 10,
11 and 16 under 35 U.S.C. § 102(b) as being anticipated by
Emberson. Independent claim 10 defines a floor drain extension
comprising an annular ring having upper and lower planar
surfaces, a round outer surface bounded by the upper and lower
planar surfaces, and an inner, generally circular surface. In
addition, the floor drain extension of appellant's claim 10 is
said to include "a pair of oppositely located bores extending
through said annular ring from said upper planar surface and
extending completely through said lower planar surface." The
Appeal No. 97-2822
Application 08/455,900
7
bores referred to in appellant's claim 10 are clearly the bolt
holes (20) seen in Figures 3 and 4 of the application drawings.
According to the examiner (answer, pages 4-5), the floor drain of
Emberson includes an annular ring (18) having a lower surface
(adjacent 28), an upper surface (22), an outer surface, an inner
surface, and a pair oppositely located chamfered bores (receiving
24). The examiner urges (answer, page 5) that the "bores [of
Emberson] extend 'from said upper planar surface' (claim 10) in
the same sense as do appellant's bores" (emphasis in original).
After a careful assessment of appellant's claim 10 and
the Emberson reference, we must disagree with the examiner's
determination that the annular ring (18) is fully responsive to
(i.e., anticipatory of) the floor drain extension defined in
appellant's claim 10 on appeal. Having identified the upper
surface (22) of the annular ring (18) in Emberson as the "upper
planar surface" set forth in appellant's claim 10, we do not see
how the examiner can say that the bores located in the radially
disposed leg (20) of the ring in Emberson, which receive the
screws (24), extend "from said upper planar surface" through the
annular ring and extend completely through said lower planar
Appeal No. 97-2822
Application 08/455,900
8
surface, as required in claim 10 on appeal. As is readily
apparent from viewing Figures 1, 2 and 3 of Emberson, the bores
referred to by the examiner for receiving the screws (24) in
Emberson are far removed the "upper planar surface" (22) of the
ring (18). For this reason alone, the examiner's rejection of
independent claim 10 and dependent claim 16 under 35 U.S.C.
§ 102(b) based on Emberson will not be sustained.
Independent claim 11 on appeal is directed to a floor
drain extension like that seen in Figure 2 of the drawing
correction filed by appellant on November 27, 1996 (as an
attachment to Paper No. 24), which drawing correction was
approved for entry by the examiner on December 9, 1996 (Paper No.
25). Claim 11 sets forth that the annular ring of the drain
extension includes a "continuous groove extending completely
around the annular extent of said extension," and "a pair of
oppositely located bores extending through said annular ring from
said upwardly disposed surface of said groove." Like the
examiner, we are of the opinion that the annular ring (18) of
Emberson is fully responsive to the drain extension of
appellant's claim 11 on appeal. In contrast to appellant's
arguments, we consider that the groove for receiving the drain
Appeal No. 97-2822
Application 08/455,900
9
cover plate or grate (32) of Emberson is "a continuous groove
extending completely around the annular extent of said
extension." Nothing in appellant's claim 11 requires that the
groove be smooth and/or be without other structure on the
upwardly disposed surface thereof, as appellant seems to urge on
page 18 of the brief. As for the requirement for "a pair of
oppositely located bores extending through said annular ring from
said upwardly disposed surface of said groove," we view the bores
in the ring (18) of Emberson which receive the
screws (24) to be broadly "oppositely located," in the sense that
at least two of these bores are disposed on opposite sides of a
central vertical plane passing through the center point of the
annular ring (18). With this understanding of Emberson and the
breadth of appellant's claim 11 on appeal, we will sustain the
examiner's rejection of independent claim 11 under 35 U.S.C.
§ 102(b).
We next consider the examiner's rejection of claims 10,
11, 13, 14 and 16 under § 103 as being unpatentable over
Emberson. In this instance, the examiner has taken the position
that to the extent the bores of Emberson may not be "oppositely
Appeal No. 97-2822
Application 08/455,900
10
located/disposed," it would have been obvious to one of ordinary
skill in the art to provide such an arrangement so as to allow
the ring (18) therein to be associated with different types of
conventional floor drains. For the same reasons as noted above,
we will not sustain the examiner's § 103 rejection of independent
claim 10 or independent claim 13, or of claims 14 and 16 which
depend, respectively, from claim 13 and claim 10. In Emberson,
the bores clearly do not extend through the ring "from said upper
planar surface" and extend completely through said lower planar
surface, as required in appellant's claims 10 and 13. Regarding
claim 11, we will sustain the examiner's rejection, primarily
because appellant has not argued that the examiner's stated
modification of Emberson would have been unobvious. Moreover, we
must agree with the examiner that one of ordinary skill in this
art would have understood that the three bore arrangement of
Emberson is but one of the known arrangements of such bores in
the prior art, and that such an artisan would have found it
obvious to alternatively use an arrangement having two oppositely
located bores, for example, as is seen in appellant's own
"conventional" drain structure depicted in Figure 1 of the
application drawings.
Appeal No. 97-2822
Application 08/455,900
11
As for the rejection of claims 12 and 15 under 35
U.S.C. § 103 based on Emberson and Seewack, we will sustain the
examiner's rejection of dependent claim 12, but not the rejec-
tion of dependent claim 15. Claim 15 depends from independent
claim 10 and thereby includes all of the limitations of that
independent claim. Thus, since the teachings of Seewack do not
supply that which we have found lacking in Emberson above with
regard to independent claim 10, it follows that the rejection of
dependent claim 15 under 35 U.S.C. § 103 cannot be sustained. As
for dependent claim 12, we note that this claim adds to the floor
drain extension defined in independent claim 11 on appeal that
the groove therein is "a right angled groove." Seewack shows
such a groove in the ring (27) therein for supporting the drain
cover plate or strainer (32). As we noted above in our treatment
of claim 11, Emberson also shows a groove for receiving the drain
cover plate or grate (32) therein, however, that groove has an
angled upwardly disposed wall. Like the examiner, we are of the
view that it would have been obvious to one of ordinary skill in
the art to provide the annular ring member (18) of Emberson with
a right angled groove as seen generally in Seewack. Appellant's
arguments on pages 24-25 of the brief do nothing to change our
Appeal No. 97-2822
Application 08/455,900
12
opinion, since in contrast to appellant's first argument the ring
(18) of Emberson clearly provides an "extension" of the drain
body (10) therein, while the arguments numbered 2) and 3) on
page 25 of the brief are directed to limitations not found in
claims 11 and 12 on appeal.
The last of the examiner's rejections for our review is
that of claims 1, 2, 5, 6 and 9 as being unpatentable over Morris
in view of Mayer. Like appellant, we are of the opinion that
Morris and Mayer are not properly combinable in the manner urged
by the examiner. Moreover, even if one were to make the multiple
shim rings (56) of Morris’ Figure 6 into a single shim or annular
ring member, the resulting structure and method would not be that
which is claimed by appellant. The shim rings (56) of Morris
have no upright smooth-wall bolt holes therethrough alignable
with the plurality of drain cover plate mounting holes as
required in independent claims 1, 5 and 9 on appeal, nor any need
for such bolt holes. In addition, and as a result of not having
the above-noted bolt holes, we observe that the annular body of
Morris as modified by the examiner would not be capable of
functioning in the manner required in the last clause of
Appeal No. 97-2822
Application 08/455,900
13
appellant's independent article claim 1 and method claims 5 and
9. For these reasons, the examiner's rejection of claims 1, 2,
5,
6 and 9 under 35 U.S.C. § 103 will not be sustained.
Pursuant to 37 CFR § 1.196(b), we enter the following
new ground of rejection against claims 11 and 12 on appeal.
Claims 11 and 12 are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which, as
originally filed, does not provide "written description" support
for the invention as now claimed. Claims 11 and 12 are directed
to the embodiment of the floor drain extension seen in the
drawing correction filed by appellant on November 27, 1996 (as
an attachment to Paper No. 24), which drawing correction was
approved for entry by the examiner on December 9, 1996. However,
in our opinion, the annular ring (10) seen in Figure 2 of the
drawing correction as having a groove in the upper surface
thereof for receiving the drain cover plate (C) is new matter,
because no such extension ring was previously shown or disclosed
in the application as originally filed. Figure 2 as originally
Appeal No. 97-2822
Application 08/455,900
14
filed shows the drain cover plate (32) positioned directly on the
upper surface of the extension ring (10) and the specification
expressly describes this particular arrangement. See, for
example, page 4, lines 22-25, and page 5, lines 4-6, of the
specification. Thus, we must conclude that the extension ring
now seen in Figure 2 of the drawing correction lacks "written
description" in the application as originally filed.
To summarize our decision, we note that 1) the
examiner's rejection of claims 5 and 9 under 35 U.S.C. § 112,
second paragraph, has not been sustained, 2) the examiner's
rejection of
claims 10, 11 and 16 under 35 U.S.C. § 102(b) has been sustained
with regard to claim 11, but not with regard to claims 10 and 16,
3) the rejection of appealed claims 10, 11, 13, 14 and 16 under
35 U.S.C. § 103 relying on Emberson alone has been sustained with
regard to claim 11, but not with regard to claims 10, 13, 14 and
16, 4) the rejection of claims 12 and 15 under 35 U.S.C. § 103
relying on Emberson and Seewack has been sustained with regard to
claim 12, but not with regard to claim 15, and 5) the rejection
of claims 1, 2, 5, 6 and 9 under 35 U.S.C. § 103 based on Morris
Appeal No. 97-2822
Application 08/455,900
15
and Mayer has also not been sustained. In addition, based on the
authority provided by 37 CFR § 1.196(b), we have entered a new
ground of rejection against claims 11 and 12 on appeal under
35 U.S.C. § 112, first paragraph.
The decision of the examiner is, accordingly, affirmed-
in part.
In addition to affirming the examiner’s rejection
of one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of
the original decision. . . .
Appeal No. 97-2822
Application 08/455,900
16
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order
to preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
Appeal No. 97-2822
Application 08/455,900
17
abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action on
the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART, 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-2822
Application 08/455,900
18
Curtis L. Harrington
6300 State University Drive
Suite 250
Long Beach, CA 90815