10513980 (B.P.A.I. Apr. 11, 2011)

Ex Parte Roberts Jr.

Board of Patent Appeals and InterferencesApr 11, 2011

10513980 (B.P.A.I. Apr. 11, 2011)

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. 10/513,980 11/08/2004 Kenny Roberts Jr. 100923.0001US1 9295 34284 7590 04/12/2011 Rutan & Tucker, LLP. 611 ANTON BLVD SUITE 1400 COSTA MESA, CA 92626 EXAMINER LEE, CHEE-CHONG ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 04/12/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte KENNY ROBERTS JR. ____________________ Appeal 2009-009624 Application 10/513,980 Technology Center 3700 ____________________ Before LINDA E. HORNER, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kenny Roberts Jr. (Appellant) seeks our review under 35 U.S.C. § 134 of the rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2009-009624 Application 10/513,980 2 THE INVENTION Appellant’s claimed invention is directed to protecting sanitary fixtures during new construction by installing a sanitary fixture proxy before the sanitary fixture is installed (Spec. 2:17-22). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of protecting a sanitary fixture during home construction, comprising: providing a temporary replacement sanitary fixture proxy having at least one preinstalled pipe fitting; permanently installing the temporary replacement sanitary fixture proxy prior to installing the sanitary fixture; and installing the sanitary fixture over the sanitary fixture proxy whereby the temporary replacement sanitary fixture performs certain functions of the sanitary fixture that it temporarily replaces prior to installation of the sanitary fixture. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Nemiroff (US 3,614,793, issued Oct. 26, 1971). 2. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nemiroff. ISSUES The issues before us are: (1) whether the Examiner erred in finding that Nemiroff describes a sanitary fixture proxy having at least one preinstalled pipe fitting, as called for in independent claims 1 and 9 (App. Br. 5); and (2) whether the Examiner erred in finding that Nemiroff Appeal 2009-009624 Application 10/513,980 3 describes installing a sanitary fixture over the sanitary fixture proxy, as called for in independent claim 1 (id.). ANALYSIS Rejection of claims 1-9 under 35 U.S.C. § 102(b) Appellant argues independent claims 1 and 9, but does not separately argue claims 2-8 (App. Br. 5). We select claim 1 as representative, and claims 2-8 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). ISSUE 1 Claims 1 and 9 call for, inter alia, a “sanitary fixture proxy having at least one preinstalled pipe fitting.”1 Appellant contends that “Nemiroff does not teach or disclose providing a sanitary fixture proxy having at least one preinstalled pipe fitting and allowing plumbing hookups to be performed before the sanitary fixture is installed as required by Claim 1 and Claim 9” (App. Br. 5). We find that the Examiner’s findings (Ans. 3-4) are reasonable and adopt them as our own, that is, that Nemiroff anticipates the claimed invention. In particular, we agree with the Examiner’s finding that in Nemiroff, “[t]he installation of tub 10 meets claim 1, lines 1-5” (Ans. 3) (emphasis bolded), that is, in Nemiroff, the installation of the existing bathtub 10 includes at least one preinstalled pipe fitting since Nemiroff describes that the installation of existing bathtub 10 includes a drain hole 18, overflow hole 19, overflow pipe 20 and trap 21 (col. 2, ll. 45-52 and col. 4, ll. 35-58). We further agree with the Examiner’s finding (Ans. 4) that Nemiroff’s bathtub 10 is a sanitary fixture proxy, given Appellant has failed 1 See App. Br. 9-10, Claims Appendix, claim 1, ll. 2-3 and claim 9, l. 2. Appeal 2009-009624 Application 10/513,980 4 to provide any evidence or analysis that term “proxy” has an established meaning to those skilled in the art or a lexicographic definition we can adopt. In other words, the word is a descriptive label in this context and while the bathtub 10 is permanently installed, it is a stand-in or substitute in the broadest reasonable sense that it is covered by bathtub liner assembly 24, which becomes, upon installation, the sanitary fixture. As such, the bathtub 10 becomes the proxy for the liner assembly 24. We agree with the Examiner (Ans. 3) that independent claim 1 does not call for “allowing plumbing hookups to be performed before the sanitary fixture is installed.” Thus, Appellant’s contention is not commensurate in scope with the language called for in independent claim 1. Claim 9 does call for the pre-installed sanitary fixture being connected to plumbing hookups . . . prior to its [sanitary fixture] installation.” However, we find that in Nemiroff the installation of the sanitary fixture proxy (existing bathtub) 10 includes the installation of plumbing hookups (drain hole 18, overflow hole 19, overflow pipe 20 and trap 21), wherein the connection of the sanitary fixture proxy (existing bathtub) 10 to plumbing hookups occurs before the installation of the sanitary fixture (bathtub liner assembly) 24 (col. 2, ll. 45-52; col. 4, ll. 35-58; and figs.1-2). ISSUE 2 Appellant contends that “Nemiroff does not teach or disclose installing the sanitary fixture over the sanitary fixture proxy whereby the sanitary fixture substantially obscures the sanitary fixture proxy after installation as required by Claim 1 and Claim 9” (App. Br. 5). We agree with the Examiner’s findings that “Nemiroff clearly shows 24 covering 10” (Ans. 4) (emphasis bolded) and “this provides full response Appeal 2009-009624 Application 10/513,980 5 to these claims in the mere fact that one tub is installed over the other, notwithstanding what names are given to the respective tubs” (Ans. 3). As we found supra, in Nemiroff, the bathtub liner assembly 24 is the sanitary fixture that covers the sanitary fixture proxy, the existing bathtub 10 (see col. 3, ll. 28-49 and col. 4, l. 35; and figs. 1-2). We further find that independent claims 1 and 9 do not recite that “the sanitary fixture substantially obscures the sanitary fixture proxy after installation as required by Claim 1 and Claim 9.” Thus, we find that Appellant’s contention is not commensurate in scope with the language called for in independent claims 1 and 9. We affirm the rejection of independent claims 1 and 9, and claims 2-8 which fall with independent claim 1. Rejection of claims 10 and 11 under 35 U.S.C. § 103(a) Appellant relies on the same contentions as were set forth supra regarding independent claim 9, from which claims 10 and 11 depend (App. Br. 6-7). For the reasons provided supra in our analysis of independent claim 9, we find these contentions equally unpersuasive of Examiner error for claims 10 and 11. As such, we affirm the rejection of claims 10 and 11. CONCLUSIONS The Examiner has not erred in finding that Nemiroff describes a sanitary fixture proxy having at least one preinstalled pipe fitting, as called for in independent claims 1 and 9. Appeal 2009-009624 Application 10/513,980 6 The Examiner has not erred in finding that Nemiroff describes installing a sanitary fixture over the sanitary fixture proxy, as called for in independent claim 1. DECISION The decision of the Examiner to reject claims 1-11 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls