Ex Parte Petrovic

Board of Patent Appeals and Interferences

Jun 24, 2004

09965150 (B.P.A.I. Jun. 24, 2004)

1 Although we note that the examiner has approved entry of
the above-noted amendment filed May 1, 2003 (see advisory action,
Paper No. 9), we observe that such amendment has not as of yet
been clerically entered. This oversight should be corrected
during any further prosecution of the application before the
examiner.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN EDWARD PETROVIC
____________
Appeal No. 2004-0946
Application No. 09/965,150
____________
HEARD: June 10, 2004
____________
Before FRANKFORT, MCQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 10 through 14 as amended subsequent to the final
rejection in a paper filed May 1, 2003 (Paper No. 8). Claims 10
through 14 are the only claims remaining in the application.
Claims 1 through 9 and 15 through 18 have been canceled.1 In
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Application No. 09/965,150
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addition, at the oral hearing held June 10, 2004, appellant's
counsel requested that claim 14 be withdrawn from the appeal.
Accordingly, the appeal as to claim 14 is dismissed, and only the
examiner's rejection of claims 10 through 13 remains for
consideration in this appeal.
Appellant's invention is directed to a multiple head shower
system for retrofit installation on an existing shower plumbing
system in a shower enclosure. Independent claim 10 is
representative of the subject matter on appeal and a copy of that
claim can be found in the Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Gellmann 3,375,532 Apr. 2, 1968
Holbrook 6,233,756 May 22, 2001
Claims 10 through 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gellmann in view of Holbrook.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted § 103 rejection and the
conflicting viewpoints advanced by the examiner and appellant
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Application No. 09/965,150
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regarding that rejection, we make reference to the examiner's
answer (Paper No. 15, mailed November 7, 2003) for the reasoning
in support of the rejection, and to appellant's brief (Paper No.
14, filed September 22, 2003) and reply brief (Paper No. 17,
filed January 23, 2004) for the 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 determination that the examiner's
rejection will not be sustained. Our reasons follow.
The examiner's rejection of claims 10 through 13 under
35 U.S.C. § 103(a) based on the combined teachings of Gellmann
and Holbrook recognizes that the flexible shower line unit of
Gellmann teaches a multiple shower head system (col. 4, lines 66-
71) for retrofit installation on existing shower plumbing,
wherein the multiple shower head system includes a flexible
conduit (28) extending from a valved connector fitting (30)
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Application No. 09/965,150
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attached to shower line (12), a primary shower head (70) attached
to the connector fitting, and secondary shower head units (e.g.,
92) provided on and along the flexible conduit if desired. What
the examiner finds lacking in the system of Gellmann is any
teaching or suggestion of a second elongate water conduit, as
required in claim 10 on appeal. To account for this difference,
the examiner looks to Holbrook, urging that this patent teaches a
retrofit arrangement in a shower that allows for two auxiliary
water lines extending from a header member (2-5) associated with
the main water line (1). In the examiner's view, it would have
been obvious to one of ordinary skill in the art at the time of
appellant's invention to have provided the system of Gellmann
with such multiple auxiliary water lines so as to provide more
options for the user. The examiner has additionally expressed
the view that the position of the respective auxiliary lines with
respect to each other as specified in claim 10 on appeal "would
have constituted an obvious use expedient" (answer, page 4).
Appellant argues, and we strongly agree, that neither
Gellmann nor Holbrook teaches or suggests first and second
elongate water conduits extending a substantial distance
vertically downwardly towards a tub or shower base from a header
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Application No. 09/965,150
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member carrying a primary shower head, and wherein the first and
second water conduits extend downwardly in different amounts and
each carries a water spray valve mechanism and a separate on-off
lever member at the end thereof, as specifically set forth in
claim 10 on appeal. As for the examiner's proposed combination
of Gellmann and Holbrook, and the further modification thereof to
arrive at the claimed subject matter, we are of the view that the
examiner's position represents a clear case of impermissible
hindsight reconstruction of the claimed invention based on
appellant's own teachings. In that regard, we note, as our court
of review indicated in In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1784 (Fed. Cir. 1992), that it is impermissible
for the examiner to use the claimed invention as an instruction
manual or "template" in attempting to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious.
Since we have determined that the teachings and suggestions
found in Gellmann and Holbrook would not have made the subject
matter as a whole of independent claim 10 on appeal obvious to
one of ordinary skill in the art at the time of appellant's
invention, we must refuse to sustain the examiner's rejection of
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that claim under 35 U.S.C. § 103(a). It follows that the
examiner's rejection of dependent claims 11 through 13 under
35 U.S.C. § 103(a) on the basis of Gellmann and Holbrook will
likewise not be sustained.
Accordingly, the decision of the examiner to reject claims
10 through 13 of the present application under 35 U.S.C. § 103(a)
is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2004-0946
Application No. 09/965,150
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JOHN A. ARTZ
ARTZ & ARTZ, P.C.
28333 TELEGRAPH ROAD, SUITE 250
SOUTHFIELD, MI 48034