Ex Parte Schmitt

Board of Patent Appeals and Interferences

Jan 27, 2011

10872940 (B.P.A.I. Jan. 27, 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.
10/872,940 06/21/2004 Randall Paul Schmitt 60,137-255; 001-3088-U 4002
82074 7590 01/27/2011
Carlson, Gaskey & Olds/Masco Corporation
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
01/27/2011 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 RANDAL PAUL SCHMITT
____________

Appeal 2009-011905
Application 10/872,940
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-6, 11-13, and 18-29. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011905
Application 10/872,940

2

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:

1. A drain cleaning adapter comprising:

a main body;

a first end of said main body having a first opening for receiving a
flushing device;

a second end opposing said first end, said second end having a second
opening for allowing discharge of a fluid; and

an enlarged portion between said first end and said second end
wherein said enlarged portion is expandable between an initial position and
an expanded position that is radially outward of said initial position.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tash 4,606,364 Aug. 19, 1986

THE REJECTIONS
1. Claim 3 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.2
2. Claims 1-6, 11-13, 18-24, and 27-29 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Tash.

2 The rejection of claim 3 under 35 U.S.C. § 112 is a new rejection as
indicated by the Examiner on page 2 of the Answer.
Appeal 2009-011905
Application 10/872,940

3
3. Claims 25 and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tash.3

ANALYSIS
(with Findings of Fact and Principles of Law)
1. The Rejection of claim 3 under 35 U.S.C. § 112, second paragraph, as
being indefinite

On page 3 of the Answer, the Examiner indicates that claim 3 is
indefinite because it depends upon itself.
On page 2 of the Reply Brief, Appellant acknowledges the incorrect
dependency of claim 3.
We sustain this rejection.
2. The Rejection of Claims 1-13, 18-24, and 27-29 under 35 U.S.C.
102(b) as being anticipated by Tash
Appellant does not argue or present substantial arguments with
respect to claims 23 and 28 for this rejection, and we therefore do not
separately consider these claims. Appellant’s arguments regarding the
remaining rejected claims are addressed infra. 37 C.F.R. § 41.37 (c)(1)(vii).
Claims 1 and 18
As pointed out by Appellant on page 2 of the Reply Brief, the
Examiner presents two different positions based on Tash in the Answer.

3 The rejection of claim 26 under 35 U.S.C. § 103 is a new rejection as
indicated by the Examiner on page 2 of the Answer.
Appeal 2009-011905
Application 10/872,940

4
The Examiner’s first position is that adaptor 36 corresponds to the
claimed invention. The Examiner’s second position is that the flushing
device 24 corresponds to the claimed invention. See Answer generally, and
Tash, Figs. 1-3.
With respect to the first position, the Examiner argues that Tash
discloses an adaptor having a first end 40, a main body 36, a second end 42,
and an enlarged portion 48, 46, and 54. The Examiner finds that Tash
specifically teaches that upon applying water, body 32 expands and that the
pressure created, by the enlarging body 32, in the enlarged section 46, helps
in maintaining necessary pressure between the device and the drain pipe.
The Examiner finds further that Tash teaches that enlarging the body 32 in
the enlarged section 46 facilitates in maintaining the necessary pressure
between the device and the drain pipe. The Examiner argues that since the
adaptor of Tash is made of plastic (the same type of material used by
Appellant), the adaptor of Tash will have the same properties. Ans. 4, 7.
We agree with Appellant that the above-mentioned facts do not
support that the enlarged portion (whether it be item 48 and/or 46 and/or 54)
expands as asserted by the Examiner, for the reasons stated by Appellant on
pages 4-5 of the Brief and on pages 2-3 of the Reply Brief. We note that in
general, “inherency, . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981)(citation omitted). Here, the Examiner has not directed our attention to
credible evidence of record that the “plastic” components described by Tash
necessarily have the required expandable property. Accordingly, we reverse
Appeal 2009-011905
Application 10/872,940

5
all of the Examiner’s rejections that are based on the Examiner’s first
position.
With regard to the second position of the Examiner, the Examiner
finds that part 24 of Tash “is readable on the part having a main body, a first
end with an opening, a second opposing end with an opening and an
enlarged portion, which is expandable.” Ans. 7.
Appellant states that claim 1 recites that the adaptor includes a main
body with a first end of the main body having a first opening for receiving a
flushing device. Appellant argues that component 24 of Tash is the flushing
device, and as such, component 24 does not have an opening for receiving a
flushing device as claimed.
However, we agree with the Examiner that hose 28 of Tash
corresponds to the recited flushing device because Appellant’s Specification
does not exclude a hose as a flushing device.
We therefore affirm the rejection of claims 1 and 18 based on the
Examiner’s second position.
We base our consideration of the claims addressed below on the
Examiner’s second position.
Claim 2
We affirm the rejection of claim 2 for the following reasons.
Appeal 2009-011905
Application 10/872,940

6
Claim 2 recites that the enlarged portion has at least one striation
extending in an axial direction from the enlarged portion toward the first
end.
Appellant asserts that flushing device 24 does not include striations
that extend in an axial direction as claimed. Br. 5. Reply Br. 4. It is the
Examiner’s position that flushing device 24 includes striations between parts
34. Ans. 8.
Appellant’s Figure 1 depicts an embodiment of the invention having
striations 34, which are described in para. [0016] of the Specification as
running from the insertion portion 24 all the way to the main body 12, and
following the same curvature as the enlarged portion 32 along the length of
the adaptor 10. This example does not define the terms “striation” or the
limitation “extending in an axial direction” in a way that excludes the
striations identified by the Examiner in Tash. We therefore affirm the
rejection of claim 2.

Claim 3
With respect to the Examiner’s second position, Appellant is correct
(Br. 5) that the Examiner does not identify the insertion portion of flushing
device 24. The Examiner also does not make findings about the annular
sealing rings. Ans. 8. Hence, the rejection fails for lack of factual support
for the Examiner’s position. The Examiner bears the initial burden of
factually supporting his conclusion. In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). We therefore reverse the rejection of claim 3.

Appeal 2009-011905
Application 10/872,940

7
Claims 4, 5, and 6
With respect to the Examiner’s second position, the Examiner
does not make findings4 concerning the subject matter of claim 4, which
recites that the main body has at least one indent concentric about the main
body, and which is between the enlarged portion and the first end. Ans. 8.
Similarly, the Examiner does not make findings concerning the subject
matter of claim 5, which recites that at least one indent has a smaller
diameter than the main body; nor does the Examiner make findings
concerning the subject matter of claim 6, which recites that the at least one
indent corresponds to recesses on the flushing device. Ans. 8. Hence, these
rejection fails for lack of factual support for the Examiner’s position, and we
reverse the rejections of claims 4, 5, and 6.

Claims 11, 23, and 27
Each of claims 11 (depends on claim 1), 23 (depends on claim 18),
and 27 (depends on clam 13) recites that the main body has a greater rigidity
than the enlarged portion.
With respect to the Examiner’s second position, these rejections fail
for the following reasons.
At pages 6-7 of the Reply Brief, Appellant correctly points out that
while the Examiner argues that it is inherent that the rigidity of the part of
the lesser diameter would be higher than the rigidity of the part of the greater
diameter, the Examiner has not provided any basis in fact or technical

4 With regard to each of claims 4, 5, and 6, the Examiner makes factual
findings with regard to his first position, but not with regard to his second
position.
Appeal 2009-011905
Application 10/872,940

8
reasoning to support this assertion. As such, the Examiner’s position is not
supported by factual evidence.
Therefore, we reverse the rejection of claims 11, 23, and 27.

Claim 12

With regard to the Examiner’s second position, the rejection of claim
12 fails for the following reasons.
Claim 12 recites that the enlarged portion is expandable in response to
an increase in fluid pressure within the drain cleaning adapter, with the
enlarged portion being expandable between an initial non-contact position
with a sink recess and an expanded contact position with the sink recess.
The enlarged portion of flushing device 24 does not have a contact
position with a sink recess (inlet opening 22 of Tash), and therefore does not
anticipate claim 12. See Figure 3 of Tash, particularly item 24.

Claim 13
With regard to the Examiner’s second position, claim 13 requires that
the enlarged portion contact walls defining a sink recess.
The enlarged portion of flushing device 24 of Tash does not contact
the walls of the sink recess (inlet opening 22 of Tash). See Figure 3 of Tash,
particularly item 24. Hence, we reverse the rejection of claim 13.

Claim 19
With regard to the Examiner’s second position, for the reasons that we
affirmed the rejection of claim 2, we also affirm this rejection.
Appeal 2009-011905
Application 10/872,940

9
Claim 20
Claim 20 recites that the axially extending striation is defined by an
arcuate surface. We affirm this rejection because the striations of the
enlarged portion of flushing device 24 have an arcuate surface along their
surfaces. See Figure 3 of Tash, item 24.

Claim 21
Claim 21 requires that the enlarged portion (except for the striations)
contact the sink recess wall. The Examiner has not pointed to any teaching
of Tash indicating that the enlarged portion of the flushing device 24
contacts the walls of the sink recess (inlet opening 24). We therefore reverse
the rejection of claim 21.

Claim 22
Claim 22 recites that the flushing device includes an exit end that is
aligned with the enlarged portion. Hose 28 of Tash has such an exit end that
is aligned with the enlarged portion of flushing device 24 of Tash. See
Figure 3 of Tash. We therefore affirm the rejection of claim 22.

Claim 24
Claim 24 recites that the method of claim 13 includes aligning an exit
end of the flushing device with the enlarged portion such that the exit end is
surrounded by the enlarged portion. Claim 24 is similar to claim 22.
Appellant has not convincingly argued that hose 28 of Tash does not have an
exit end surrounded by the enlarged portion of component 24 after insertion
Appeal 2009-011905
Application 10/872,940

10
into component 24. Hence, for the reasons stated regarding claim 22, supra,
we affirm this rejection.

Claim 29
As pointed out by Appellant on page 9 of the Reply Brief, Appellant
made a request for identification of the vents taught by Tash, and the
Examiner has failed to identify what structures in Tash correspond to the
claimed vents. See Answer generally.
We therefore reverse the rejection of claim 29.

2. The Rejection of Claims 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Tash.

These claims stand or fall with claim 13. The Examiner’s position as
set forth on page 6 of the Answer does not remedy the failings of the
rejection of claim 13. We therefore reverse the rejection of claims 25 and
26.

CONCLUSIONS OF LAW AND DECISION
1. The rejection of claim 3 under 35 U.S.C. § 112, second paragraph, as
being indefinite is affirmed.
2. The rejection of claims 1, 2, 18-20, 22, 24, and 28 under 35 U.S.C.
§ 102(b) as being anticipated by Tash is affirmed. However, the rejection of
claims 3-6, 11-13, 21, 23, 27, and 29 is reversed.
3. The rejection of claims 25 and 26 under 35 U.S.C. § 103 as being
unpatentable over Tash is reversed.
Appeal 2009-011905
Application 10/872,940

11
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).
AFFIRMED-IN-PART

sld

MASCO CORPORATION
21001 VAN BORN ROAD
TAYLOR, MI 48480