Ex parte SANTOS

Board of Patent Appeals and Interferences

Dec 23, 1998

08412491 (B.P.A.I. Dec. 23, 1998)

Application for patent filed March 28, 1995.1
-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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT O. SANTOS
________________
Appeal No. 97-1092
Application 08/412,4911
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Robert O. Santos appeals from the final rejection of
claims 1 and 4 through 7. Claims 8 through 14, the only other
claims pending in the application, stand objected to as
Appeal No. 97-1092
Application 08/412,491
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depending from a rejected base claim.
The subject matter on appeal relates to “a three-way
valve for a faucet head” (specification, page 1). Claim 1 is
illustrative and reads as follows:
1. A kitchen faucet comprising:
a) a kitchen faucet base having an temperature control
valve and a hollow member extending therefrom;
b) an extensible kitchen faucet head, said extensible
kitchen faucet head connectable to the kitchen faucet base and
including a flexible conduit sized to slide in and out of the
hollow member, said flexible conduit connectable to a source
of liquid, said extensible kitchen faucet head further
comprising a kitchen faucet body having;
i) a first passageway therein, an inlet of said
first passageway connected to said flexible conduit, said
first passageway diverging into a second and a third
passageway, each of said second and third passageways having
an outlet for liquid discharge; and
ii) means for blocking flow of said liquid through
one of and both of said second and third passageways.
The references relied upon by the examiner as evidence of
obviousness are:
Magnenat et al. (Magnenat) 5,158,234 Oct. 27, 1992
Henkin et al. (Henkin) 5,230,106 Jul. 27, 1993
Claims 1 and 4 through 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Magnenat in view of Henkin.
Appeal No. 97-1092
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Reference is made to the appellant’s main and reply
briefs (Paper Nos. 11 and 13) and to the examiner’s main and
supplemental answers (Paper Nos. 12 and 14) for the respective
positions of the appellant and the examiner with regard to the
merits of this rejection.
Magnenat, the examiner’s primary reference, discloses an
extensible kitchen faucet comprising a mixer housing 1, a
control lever 2, a spout 3, a flexible water conduit 4, a
handle 5 and a head 11 (see Figure 1). As described by
Magnenat,
[t]he head 11 . . . comprises a body 15 . . .
and comprises fixing means, generally a threading,
for the flexible conduit 4. This upstream end
comprises a water entry chanel [sic] 18, opening
into a first chamber 19. This first chamber 19 is
connected by means of a passage 20 to a second
chamber 21, also located in the body 15 of the head
11.
The lower face of the body 15 of the head 11
comprises two outlets openings 24, 25, preferably
having the same diameter, provided with a threading
permitting fixing an aerator 22 or a shower head 23
therein. . . .
The body 15 comprises further a wall 26
separating the outlet aperture 25 of the first
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chamber 19, wall 26 being with an opening 27 of a
diameter approximately equal to that of the passage
20 connecting the chambers 19 and 21.
An obturation member, here a flap 28, is
pivotally mounted in the body 15 by means of a shaft
29 . . . . Each of the faces of the flap 28 bears
a gasket 31, 32. In a first position of the flap
shown in FIG. 2, the gasket 32 surrounds the opening
27 and effects a tight closure between the first
chamber 19 and the outlet aperture 25. In this
first position of the flap 28 the passage 20 is free
and water flows from the first chamber 19 into the
second chamber through the passage 20 to come out
through the aperture 24.
In a second position of the flap 28, the gasket
31 surrounds the upstream end of the passage 20 and
obturates it in a tight manner so that the water
flows out of the first chamber 19 through the outlet
aperture 25 directly. . . .
The head comprises further an actuating member
35 presenting the shape of a stirrup the arms of
which are fast with . . . the shaft 29 of the flap
for its actuation [column 3, line 42 through column
4, line 24].
As acknowledged by the examiner (see page 5 in the main
answer), the Magnenat faucet does not meet the limitation in
independent claim 1 requiring “means for blocking flow of said
liquid through one of and both of said second and third
passageways.” In this regard, Magnenat’s flow blocking means
(flap 28) is adapted to block the flow of liquid through one
or the other of the passageways leading to the outlets, but
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not both.
Henkin discloses a hand-held, water massage apparatus
designed to discharge water through different sets of openings
in a continuous shower spray, a pulsed shower spray or a
hydromassage stream. A control knob 130 on the apparatus
operates a valve 190, best shown in Figures 10 through 12, to
select any one of the foregoing operational modes or an OFF
mode (see column 6, line 32 et seq.).
According to the examiner,
[i]n view of the teaching of Henkin et al, it would
have been obvious to one of ordinary skill in the
art at the time of the invention to have modified
the faucet valve of Magnenat et al to include the
faucet head of Henkin et al to provide a faucet head
containing a first and second outlet producing a
stream or spray flow stream and means to block fluid
flow through one or both of the outlets [main
answer, page 5].
Even if Henkin is analogous art (the appellant argues
that it is not), the combined teachings of Magnenat and Henkin
do not justify the examiner’s conclusion of obviousness. The
water discharge devices disclosed by these references differ
substantially in structure and intended use. The only
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suggestion for combining such disparate structures in the
manner proposed by the examiner stems from an impermissible
hindsight reconstruction of the appellant’s invention wherein
the claims have been used as a template to selectively piece
together isolated disclosures in the prior art.
This being the case, we shall not sustain the standing 35
U.S.C. § 103 rejection of claim 1, or of dependent claims 4
through 7, as being unpatentable over Magnenat in view of
Henkin. The following new rejections are entered
pursuant to 37 CFR § 1.196(b).
Claim 1, and claims 4 through 14 which depend therefrom,
are rejected under 35 U.S.C. § 112, first paragraph, as being
based on a specification which fails to comply with the
written description requirement of this section of the
statute.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
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artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). In the present case, the disclosure of
the application as originally filed would not reasonably
convey to the artisan that the appellant had possession at
that time of a kitchen faucet comprising a “temperature
control valve” and a “flexible” conduit as is now recited in
independent claim 1.
Claim 1, and claims 4 through 14 which depend therefrom,
also are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the
subject matter the appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In determining whether this standard is met, the definiteness
of the language employed in the claims must be analyzed, not
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in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would
be interpreted by one possessing the ordinary level of skill
in the pertinent art. Id. Here, the recitation in
independent claim 1 of a faucet having “an extensible kitchen
faucet head” is inconsistent with the underlying disclosure
which indicates that it is the faucet as a whole, rather than
the faucet head component thereof, which is extensible (see,
for example, Figure 7 and specification pages 2 and 6). This
inconsistency renders the scope of claims 1 and 4 through 14
unclear.
In summary:
a) the decision of the examiner to reject claims 1 and 4
through 7 under 35 U.S.C. § 103 is reversed; and
b) new rejections of claims 1 and 4 through 14 are
entered pursuant to 37 CFR § 1.196(b).
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
Appeal No. 97-1092
Application 08/412,491
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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.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 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. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
Appeal No. 97-1092
Application 08/412,491
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HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-1092
Application 08/412,491
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Dickinson, Wright, VanDusen & Freeman
1901 L Street N.W.
Washington, DC 20034
JPM/ki