Ex Parte Rathbone

Patent Trial and Appeal Board

Feb 28, 2017

13141409 (P.T.A.B. Feb. 28, 2017)

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.
78462.000002 5019
EXAMINER
CRANE, LAUREN ASHLEY
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
13/141,409 09/15/2011 Jon Rathbone
21967 7590 03/01/2017
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
03/01/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JON RATHBONE
Appeal 2015-003815
Application 13/141,409
Technology Center 3700
Before WILLIAM A. CAPP, SCOTT A. DANIELS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jon Rathbone (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 4, 6—10, 12—19, 22, and 23.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Pourty International
Limited. Br. 1.
2 Claims 2, 3, 5, 20, and 21 are canceled (Br. 12, 15 (Claims App.)), and the
Examiner has indicated that claim 11 contains allowable subject matter
(Final Act. 7).
Appeal 2015-003815
Application 13/141,409
SUMMARY OF INVENTION
Appellant’s claimed invention is directed to a child’s portable toilet,
or “potty.” Spec. 1:10—15. Claim 1, reproduced below from page 12
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A potty comprising a basin, a seating surface and a duct
arranged to enable liquid to be poured out of the basin without
the liquid contacting the seating surface, wherein:
the potty includes a primary sidewall, the basin includes
a basin sidewall and the seating surface is provided between the
sidewalls,
one end of the duct is provided at or adjacent to a first
opening formed through a surface of the potty, such that liquid
can be poured along the duct to the first opening,
at least some of the duct is provided along or across at
least some of the basin sidewall, and
the potty is configured to be stackable with a similar
potty such that at least a part of the potty may be received by
the similar potty.
REJECTIONS
Claim 1, 7—9, 17, 19, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Henningfield (US 4,193,142, iss. Mar.
18, 1980) and Zeraffa (US 2,776,438, iss. Jan. 8, 1957).
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henningfield, Zeraffa, and Mendelovich (US 5,787,518,
iss. Aug. 4, 1998).3
3 Although the Examiner failed to list Zeraffa in this rejection, Zeraffa was
used in the rejection of the parent claims, and, thus, we understand the
rejection of these claims to also be based on Zeraffa.
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Application 13/141,409
Claims 10, 12—14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Henningfield, Zeraffa, and Wolfgang (DE
19837480 Al, pub. Apr. 13, 2000).3
Claim 15 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Henningfield, Zeraffa, Wolfgang, and Mendelovich.3
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henningfield, Zeraffa, and La Fayette (US 1,181,162, iss.
May 2, 1916).3’4
ANALYSIS
Rejection Based on Henningfield and Zeraffa
Claims 1, 7—9, 17, and 19
The Examiner finds that Henningfield discloses the potty substantially
as claimed in independent claim 1, including, inter alia, a basin (recess 17)5,
a seating surface (side flange portions 31, 336), and a duct (pour spout 24),
but does not “show the duct having a first end nearest a lower surface of the
basin.” Final Act. 2—3. We understand the Examiner’s finding to be that
Henningfield does not disclose at least some of the duct being provided
along or across at least some of the basin sidewall, as required by claim 1.
The Examiner relies on Zeraffa to teach a duct (beak 10) along a basin
sidewall of child’s portable chamber pot, and reasons that it would have
4 Although the inventor’s name is La Fayette Pierce, both the Examiner and
Appellant refer to the ’162 patent as “La Fayette.” We maintain this
nomenclature for clarity.
5 Parentheticals refer to the terminology of the cited references.
6 Although reference 33 is defined as “comer portion” in the written
description (Henningfield 3:6), it is illustrated in Figure 1 as corresponding
to the side portion of seat flange 18.
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Application 13/141,409
been obvious to a skilled artisan “to include the duct extending along the
sidewall of the basin as shown by La Fayette because it would help direct
waste out of the potty.”7 Id. at 3.
Appellant traverses, arguing first that Henningfield’s “pour spout 24
does not have an end that is ‘provided at or adjacent to a first opening
formed through the surface of the potty,’ as recited in claim 1.” Br. 6.
According to Appellant, “Henningfield’s pour spout 24 is simply an opening
and cannot be considered a duct.” Id.
We are not persuaded by this argument. Henningfield discloses that
pour spout 24 is provided at the rear of body 16 of toilet apparatus 1, and
that the pour spout “communicates with the opening within the body for
enabling the contents of the apparatus 10 to be readily removed therefrom.”
Henningfield 2:30—33. Henningfield further discloses that the pour spout
includes notch 47 extending through seat flange 18 to wall 43 such that the
pour spout is in fluid communication with recess 17 and, thus, the recess can
be emptied via pour spout 24. Id. 3:34—38, 61—64, Fig. 1. Thus, we agree
with the Examiner that Henningfield’s pour spout 24 includes an end at or
adjacent to an opening in a surface (wall 43) of the potty. Final Act. 7—8;
Ans. 7—8.
Furthermore, we note that Henningfield’s pour spout 24, arranged
through seat flange 18, appears to be similar to Appellant’s outlet 36c of
channel 36. Compare Henningfield Fig. 1, with Spec. Fig. 4; see also
1 We understand the Examiner’s reference to La Fayette to be a harmless
typographical error and that, instead, reference to Zeraffa was intended, as it
is Zeraffa’s beak 10 that the Examiner finds to correspond to the recited
duct. See Final Act. 3. We note that Appellant did not attribute any error to
the Examiner’s reference to La Fayette. See Br. 5—10.
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Application 13/141,409
Spec. 10:5—10, 32—33. Appellant describes outlet 36c as corresponding to a
duct provided at or adjacent to a first opening formed through a surface of
the potty. Br. 3. Appellant fails to apprise us of why Appellant’s outlet 36c
corresponds to the recited duct end being at or adjacent to a first opening
formed through a surface of the potty, while Henningfield’s similar pour
spout 24 does not so correspond.
Appellant also argues that “the spout 24 of Henningfield extends only
across the seat 32. No part of the spout 24 extends along or across at least
some of the basin sidewall as required by claim 1.” Id. at 6. We note that
the Examiner relied on Zeraffa to teach extending Henningfield’s pour spout
24 to travel along the sidewall of recess 17. Final Act. 3. Appellant’s
argument that Henningfield does not disclose this feature does not address
the rejection as set forth by the Examiner, and, thus, fails to apprise us of
error.
Appellant next attacks the combination of Henningfield and Zeraffa,
arguing that the combination is based on hindsight reasoning because
“Zeraffa does not address how to pour waste out of a potty.” Br. 6—7.
Continuing, Appellant asserts that “Zeraffa’s ‘bell-mouthed beak 10’ that the
Examiner equates to a pour spout is only briefly mentioned in the document
and the purpose of that feature is never identified.” Id. at 7. Thus, according
to Appellant, “when reading Zeraffa as a whole, the skilled person would not
place any importance on the bell-mouthed beak feature.” Id.
We are not persuaded by these arguments. We note that one
dictionary definition of beak is “the spout of a vessel.” See, e.g.,
http://www.merriam-webster.com/dictionary/beak (last visited February 23,
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Application 13/141,409
2017). Thus, a skilled artisan, upon reading Zeraffa, would understand that
beak 10 is a spout by which vessel 2 can be emptied.
Appellant further argues that even if Zeraffa’s beak 10 is a spout, “the
skilled person would understand the bell-mouthed beak 10 to be an
alternative way of pouring in comparison to the pour spout 24 in
Henningfield. One feature would be substituted for the other, and not
combined into the hypothetical combination suggested by the Examiner.”
Br. 7.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Zeraffa
discloses a beak, or pour spout, extending along the basin of a child’s
portable chamber pot. Zeraffa 1:68—69, Fig. 1. Henningfield discloses a
pour spout extending through the seating surface of a child’s toilet
apparatus. Henningfield 2:30-33, 3:5—8, 34—38, 61—64, Fig. 1. We
therefore find the Examiner’s modification of Henningfield’s pour spout to
extend along the basin sidewall to be supported by rational underpinnings.
Appellant’s conclusory argument fails to apprise us of why a skilled artisan
would not be able to modify Henningfield’s pour spout 24 to extend along
recess 17 as taught by Zeraffa. Thus, we are not persuaded by Appellant’s
argument.
Finally, Appellant argues that “various secondary considerations
suggest that the claimed invention is non-obvious over the prior art.” Br. 7.
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Appellant alleges that “[t]he invention has been commercially successful and
popular, and is one of the best-selling potties in the UK, and won ‘Best New
Product to Market 2010/2011.’” Id. at 7—8. Appellant concludes by noting
the age of the cited references, and asserting that “[i]f the invention was
obvious in view of these documents, Appellant respectfully submits that
someone would have made a potty according to the claimed invention before
now.” Id. at 8.
Appellant’s arguments are unpersuasive. In particular, evidence of
commercial success “is only significant if there is a nexus between the
claimed invention and the commercial success.” Ormco Corp. v. Align
Tech., Inc., 463 F.3d 1299, 1311—12 (Fed. Cir. 2006). To establish a proper
nexus between a claimed invention and alleged commercial success of a
product, Appellant must offer “proof that the sales [of the allegedly
successful product] were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996). Here, the Appellant has made no such
showing, nor offered any persuasive objective evidence of the alleged
commercial success. Regarding Appellant’s allegations regarding the age of
the cited references, “[t]he mere age of the references is not persuasive of
the unobviousness of the combination of their teachings, absent evidence
that, notwithstanding knowledge of the references, the art tried and failed to
solve the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(citation omitted).
Accordingly, we sustain the rejection of independent claim 1.
Appellant does not make any other substantive (non-conclusory) argument
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regarding the rejection of dependent claims 7—9, 17, and 19. See Br. 10.
Therefore, we likewise sustain the rejection of dependent claims 7—9, 17,
and 19.
Claim 22
Independent claim 22 defines a potty similar to that of claim 1, but
also recites “a backrest [with] the first opening . . . formed through a part of
the backrest,” “wherein the backrest defines a support surface arranged to
support the lower back of a user and the duct is spaced from the support
surface.” Br. 15 (Claims App.). The Examiner finds that Henningfield
discloses a backrest (pedestal 20) defining a support surface and a duct
(recess 37), which is “spaced from the support structure,” wherein “[t]he
support structure prevents a user’s skin, in normal use, from coming into
contact with the duct.” Final Act. 3; see also Ans. 9.
Appellant traverses, arguing, inter alia, that “the recess 37 of
Henningfield is not ‘spaced from the support surface, such that the support
surface prevents a user’s skin, in normal use of the potty, from coming into
contact with the duct,’ as required by claim 22.” Br. 9—10. Continuing,
Appellant asserts that “[i]f a child sat on the potty backwards (facing pour
spout 24) and leaned back on pedestal portion 20 . . ., the user’s skin would
clearly come into contact with the recess 37” because “recess 37 is not
sufficiently spaced from the support surface to prevent a user’s skin coming
into contact with it.” Id. at 10.
We find Appellant’s arguments persuasive. Henningfield discloses
recess 37 as being “disposed in the rear face of the pedestal portion 20
between the two generally vertical portions 28 and 35 of the seat flange 18
to communicate with the opening 17, thus serving as a splash guard.'”
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Application 13/141,409
Henningfield 3:20-24 (emphasis added). However, we discern no
disclosure, nor does the Examiner direct us to any disclosure, of recess 37
being a pour spout or the structure of Henningfield’s toilet apparatus being
configured to prevent the user’s skin from coming into contact with recess
37 during normal use while facing pour spout 24. We note that recess 37 is
provided on the same side of recess 17 as handle 25, and that there appears
to be nothing to prevent the contents of recess 17 from contacting pedestal
20—including its top recess 22—were recess 37 to be used as a pour spout.
We find both of these factors to weigh against using recess 37 as a pour
spout. Moreover, the Examiner’s contention that the user would be
prevented from contacting recess 37 during normal use is presented in
conclusory fashion with no supporting evidence or persuasive technical
reasoning.
Accordingly, we do not sustain the rejection of independent claim 22.
Claim 23
Independent claim 23 defines a potty comprising, inter alia, a duct
arranged such that it crosses a seating surface and extends across a backrest.
Br. 16 (Claims App.). The Examiner finds that Henningfield’s recess 37
corresponds to the duct recited in claim 23. Final Act. 3; see also Ans. 9.
As discussed above with respect to claim 22, Henningfield’s recess 37 is not
a pour spout, and thus does not correspond to the recited duct.
Accordingly, we do not sustain the rejection of independent claim 23.
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Rejections Based on Henningfield, Zeraffa, and one or more of Wolfgang,
Mendelovich, and La Fayette
Appellant does not make any substantive (non-conclusory) arguments
regarding the rejections of dependent claims 4, 6, 10, 12—16, and 18, each of
which depending, directly or indirectly, from independent claim 1. See
Br. 10. Therefore, we likewise sustain the rejection of claims 4 and 6 as
being unpatentable over Henningfield, Zeraffa, and Mendelovich; of claims
10, 12—14, and 16 as being unpatentable over Henningfield, Zeraffa, and
Wolfgang; of claim 15 as being unpatentable over Henningfield, Zeraffa,
Wolfgang, and Mendelovich; and of claim 18 as being unpatentable over
Henningfield, Zeraffa, and La Fayette.
DECISION
The Examiner’s decision to reject claims 1, 4, 6—10, and 12—19 is
affirmed.
The Examiner’s decision to reject claims 22 and 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
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