Ex Parte Sisk

Board of Patent Appeals and Interferences

Jul 30, 2009

10810797 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Thomas J. Sisk
____________________

Appeal 2009-003620
Application 10/810,797
Technology Center 3700
____________________

Decided:1 July 31, 2009
____________________

Before JAMESON LEE, SALLY G. LANE, and MICHAEL P. TIERNEY,
Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Masco
Corporation, under 35 U.S.C. § 134(a) from a final rejection of claims 7-9

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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and 21-24. Claims 1-6, 13-19, and 25 were cancelled prior to this appeal.
Claims 10-12 and 20 stand allowed. Appellant requests reversal of the
Examiner’s final rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

References Relied on by the Examiner
Primucci 4,578,832 Apr. 1, 1986
Wissinger 4,671,026 Jun. 9, 1987
Dron 6,677,020 Jan. 13, 2004

The Rejections on Appeal
The Examiner rejected claims 7-9 and 21 under 35 U.S.C. § 102(b) as
anticipated by Primucci. The Examiner rejected claims 22-24 under
35 U.S.C. § 103(a) as unpatentable over Primucci in view of Wissinger or
Dron.
Claim 7 is the only independent claim. Appellant argues dependent
claim 8 collectively with claim 7. Appellant provides separate arguments
for dependent claims 9, 21, and 22-24.
The Invention
The invention relates to a retainer assembly for a shower surround
having inner and outer band sections. (App. Br. 8, Claims App’x.; Spec.
¶¶ 0019-242). The retainer assembly is mounted to an outer band section,
and has a first frame arm opposed by a second frame arm, and a stop which
extends from one of the first or second frame arms, wherein the inner band
section is received against the stop between the opposing arms. (Id.). Claim

2 References to the specification are to U.S. Publication 2005/0210577.
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7 is representative of the claimed invention and is reproduced below:
7. A shower surround comprising:
a first surround section comprising an inner band section;
a second surround section comprising an outer band section;
and
a retainer assembly mounted to said outer band section, said
retainer assembly comprising a first frame arm opposed to a second
frame arm and a stop which extends from one of said first frame arm
and said second frame arm, said inner band section receivable against
said stop and between said first frame arm and said second frame arm.

(App. Br. 8, Claims App’x.).

B. ISSUE
1. Has Appellant demonstrated that the Examiner incorrectly determined
that Appellant’s claimed retainer assembly comprising a first frame arm, a
second frame arm and a stop encompasses Primucci’s retainer assembly
which in addition to the frame arms and stop also contains blocks and a bolt?
2. Has Appellant demonstrated that the Examiner incorrectly determined
that Primucci’s gasket inherently comprises multiple seals?
3. Has Appellant demonstrated that the Examiner incorrectly determined
that one of ordinary skill in the art would have combined a seal with a
retainer assembly having a stop?
C. FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Appellant’s Specification
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1. Appellant’s specification describes the inner band section as a lower
surround section that is located in the interior of a band and describes the
outer band section as an upper surround section that is located at the outside
of the band (facing the user of the shower). (Spec., ¶¶ 0019-20; Figs. 1 and
2B).
2. Appellant’s specification teaches that the inner band section may
include ribs and further describes the ribs as “raised areas formed in the
surround surface” having “various shapes.” (Spec. ¶ 0019).
Primucci
3. Primucci discloses a plastic shower enclosure including a first
surround section (unnumbered middle section) and a second surround
section (unnumbered upper section), wherein both sections are separated by
an upper band 10. (Primucci, col. 3, l. 65 to col. 4, l. 3, Figs. 1 and 3-5).
4. Primucci Figure 5, reproduced below, depicts the band 10 and the
(unnumbered) first and second surround sections:
Figure 5 is reproduced below:

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Primucci Figure 5 reproduced above depicts the band 10 and the first
and second surround sections.
5. Primucci’s first surround section (middle section) forms the inner
lower part of the band 10 and the second surround section (upper section)
forms the upper outer part of the band 10. (Id. at col. 4, l. 64 to col. 5, l. 6
(discussing overlapping), Figs. 1, 2C, 3, and 5). Accordingly, the first
surround section comprises an inner band section and the second surround
section comprises an outer band section. (Id.).
6. Primucci teaches that the inner band section has a block 22 and that
the outer band section has another block 20. Primucci further teaches that
the blocks 20, 22 each have a vertically directed bore 24 that extends
through the blocks 20, 22 to allow the sections to be secured together via a
bolt 30 and wing nut 32. (Id. at col. 5, ll. 7-37).
7. Primucci further teaches that a rubber gasket 34 may be used as part
of the shower assembly in combination with the blocks and bolt. (Id. at col.
5, ll. 58-60). In particular, as shown in Figure 5, the blocks are recessed to
receive portions (frame arms) of the gasket such that the blocks, bolt and
gasket retain the inner band section. (Id. at col. 5, 5, l. 68 to col. 6, l. 1).
8. Primucci’s rubber gasket 34 is located such that it provides a vertical
and horizontal separation between the panels; thereby restraining the inner
and outer band sections from contacting one another. (Id. at Fig. 5).
9. Primucci teaches that the first surround section comprising the inner
band section, further includes a shelf 14. (Id. at col. 3, l. 65 to col. 4, l. 1).
Wissinger
10. Wissinger teaches a bathtub seal assembly 58 having walls 66, 68, and
70 that are formed of a rigid or semi-rigid plastic as well as flexible finger
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type seals 72, 74, 76, and 78 formed from a flexible material. (Wissinger,
col. 5, ll. 22-64, Figs. 3 and 9).
11. Wissinger’s walls 66, 68, and 70 receive the end of a side panel 30
and act as a stop because of their semi-rigid or rigid structure. (Id. at Fig. 3).
D. PRINCIPLES OF LAW
A claim is anticipated when each and every element as set forth in the
claim is found, either expressly or inherently described in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987).
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 406 (2007). In particular,
the combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results. Id. at 416.
We give claims their broadest reasonable interpretation consistent
with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Comprising is a term of art used in claim language to signify that a claim is
inclusive or open-ended and does not exclude the presence of additional,
unrecited elements. CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356,
1360-61 (Fed. Cir. 2007). As such, a comprising claim is anticipated when
each and every element as set forth in the claim is found even though the
prior art may include an additional element. Medichem, S.A. v. Rolabo S.L.,
353 F.3d 928, 934-35 (Fed. Cir. 2003).

E. ANALYSIS
The Rejection of Claims 7 and 8 as Anticipated by Primucci
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As discussed above, the Examiner rejected independent claim 7, along
with claims 8-9, and 21, under 35 U.S.C. § 102(b) as anticipated by
Primucci. Appellant argues the patentability of independent claim 7 and
dependent claim 8 collectively.
The Examiner found that Primucci teaches a shower surround meeting
all of the limitations of claim 7. (Ans. 3). Specifically, the Examiner found
that Primucci teaches a shower surround having a first surround section
(middle section) comprising an inner band section and a second surround
section (upper section) comprising an outer band section. (Id.). The
Examiner further found that Primucci teaches a gasket 34 that forms part of
a retainer assembly and meets all of the limitations of the retainer assembly
recited by Appellant’s claims. (Id. at 3 and 5).
Appellant contends that the Examiner erred in finding that Primucci’s
gasket 34 was a retainer. (App. Br. 3-5; Reply Br. 2). Specifically,
Appellant reasons that the gasket 34 is only a seal, and may not be
interpreted as a retainer assembly, because Primucci already teaches a
retainer assembly, comprising a bolt 30 and block 20, 22 mechanism. (Id.).
Appellant further contends that Primucci’s gasket cannot be a retaining
assembly, because it is taught as an optional component. (App. Br. 4-5;
Reply Br. 2).
Appellant’s claims are directed to a retainer assembly comprising a
first frame arm, a second frame arm and a stop. Appellant’s use of the
“comprising” transitional phrase signals that the retainer assembly is
inclusive or open-ended and does not exclude the presence of additional,
unrecited elements. See, CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d
1356, 1360-61 (Fed. Cir. 2007). Thus, the question is not whether
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Primucci’s gasket is a retainer, but whether Primucci’s gasket forms a part of
a retainer assembly comprising the recited structure.
Primucci describes a gasket 34 that meets Appellant’s claimed
retainer assembly structure. Specifically, gasket 34 has the required first
frame arm opposed to a second frame arm and a stop extending from one of
the arms. The gasket 34 is located such that it separates the respective inner
and outer bands. (FF 7-8). Primucci describes blocks and a bolt that, in
combination with the gasket 34, helps retain the first and second surround
sections in place, i.e., the blocks, bolt and gasket form a “retainer assembly.”
In particular, gasket 34 restrains movement and prevents contact between the
respective sections. (Id.).
We hold that Primucci’s retainer assembly meets the limitations of
Appellant claim 7 as Appellant’s retainer assembly does not exclude the
presence of Primucci’s blocks and bolt that, in combination with gasket 34,
retain the first and second sections.
Appellant contends that Primucci’s gasket cannot be a retaining
assembly because it is an optional component. (See, App. Br. 4-5; Reply Br.
2). The issue of anticipation depends upon whether all of the claimed
features are taught. Appellant does not dispute that Primucci describes in
words and figures the use of a gasket to separate its first and second shower
surround sections. The fact that Primucci does not require the use of the
gasket in all of its embodiments does not negate the fact that such a shower
surround gasket is described.
We affirm the Examiner’s rejection of claims 7 and 8 as anticipated
by Primucci as Appellant’s claims encompass Primucci’s described retainer
assembly.
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The Rejection of Claim 9 as Anticipated by Primucci
Claim 9, depends from Claim 7, and further requires that the inner
band comprises a rib that extends therefrom. (App. Br. 8, Claims App’x.).
The Examiner found that Primucci’s shelf 14 was part of the inner band
section and is a rib. (Ans. 3 and 5). Appellant contends that Primucci does
not have an inner band including a rib extending therefrom. (App. Br. 5).
Specifically, Appellant contends that the Examiner erred in finding that
Primucci’s shelf 14 was a rib because “the shelf 14 is not received between
the arms of a retainer assembly and therefore cannot be interpreted to be the
rib.” (Id.). Further Appellant contends that the shelf 14 “is not even located
at the raised band.” (Id.).
Appellant’s contentions are not commensurate with the scope of the
claim. Specifically, claim 9 requires that the inner band have a rib extending
therefrom. Claim 9 does not require the rib to be between the arms of the
retainer assembly, nor does claim 9 require the rib to be located at the raised
band. Furthermore, Appellant’s specification describes ribs as “raised areas
formed in the surround surface” having “various shapes.” (FF 2).
Primucci’s inner band section has a shelf 14 formed thereon which is a
raised area formed in the surround surface of the inner band. (See, FF 5 and
9). Accordingly, Appellant has failed to demonstrate that the Examiner
incorrectly determined that Primucci’s shelf 14 was met Appellant’s
definition of a rib.
The Rejection of Claim 21 as Anticipated by Primucci
Claim 21, depends from claim 7 and further requires “a multiple of
seals” mounted within said retainer assembly to receive the inner band. The
Examiner found that Primucci’s gasket 34 inherently taught a retainer
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having a “multiple of seals.” (Ans. 3). The Examiner’s position is that the
gasket has several surfaces, each of which can constitute a separate seal.
Appellant contends that “[t]he Examiner has pointed to nothing within
Primucci that discloses a retainer member having a multiple of seals.” (App.
Br. 5).
We provide Appellant’s claims with the broadest reasonable
interpretation in light of the specification. Appellant’s specification
identifies multiple seals as distinct and separate seals. (See, e.g., ¶¶ 0020-
21, and 23, Fig. 2B, 38a, 38b, 38c). Appellant’s specification does not
identify multiple surfaces of the same seal to be “multiple” seals. In
particular, Appellant’s seal 38a is identified as a single seal even though 38a
possesses several surfaces, each of which “seals” the inner surface of the
surround. (Id.). The broadest reasonable interpretation of the term “multiple
of seals” in light of Appellant’s specification is that a multiple of seals
requires separate and distinct seals and does not encompass multiple
surfaces of the same seal.
Primucci describes a gasket 34. The gasket can act as a seal. The
gasket however, is a single unitary object and does not constitute a “multiple
of seals” as required by Appellant’s claim 21. Accordingly, we hold that
Appellant’s have demonstrated that the Examiner incorrectly determined
that Primucci teaches a multiple of seals.

The Rejection of Claims 22-24 as Obvious over Primucci in view of
Wissinger or Dron
Claim 22 depends from claim 7, and further requires a seal mounted
to a stop to receive an end segment of the first inner band. Claims 23 and 24
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depend from claim 22. The further limitations of claims 23 and 24 are not in
dispute.
The Examiner acknowledged that Primucci “fails to show a seal
mounted to a stop,” because Primucci’s entire gasket is made from a sealing
material. (Ans., 4). However, the Examiner found that Wissinger and Dron
both teach mounting seals to stops. (Id.) The Examiner determined that it
would have been obvious to one of ordinary skill in the art to have utilized a
retainer having a seal mounted to a stop in view of either Wissinger or Dron.
(Id. at 4-5). Appellant disagrees and contends that the “there is no benefit to
mounting a seal to a gasket that is also a seal.” (App. Br., 6).
Wissinger teaches a bathtub seal assembly 58 having walls 66, 68, and
70 that are formed of a rigid or semi-rigid plastic. Wissinger also teaches
multiple flexible finger type seals 72, 74, 76, and 78 formed from a flexible
material that are mounted to the walls 66, 68, and 70. (FF 10). Wissinger’s
walls 66, 68, and 70 receive the ends of a side panel 30 and act as a stop
because of their semi-rigid or rigid structure. (FF 11). Accordingly,
Wissinger teaches a seal mounted to a stop.
One of ordinary skill in the art understood that various types of seals
could perform the function of preventing water from intruding out of the
shower surround. One of ordinary skill in the art also would have
understood that multiple seals may be used for added protection against
water intrusion. The combination of familiar elements (different types of
water seals) according to known methods (forming a seal with a stop) would
have obvious to one of ordinary skill in the art as it does no more than yield
the predictable result of preventing water intrusion into the areas behind the
shower. As the claims have been shown to be obvious over Primucci in
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view of Wissinger, we need not reach the issue of whether the claims would
also have been obvious over Primucci in view of Dron.
F. CONCLUSION
1. Appellant has not demonstrated that the Examiner incorrectly
determined that Appellant’s claimed retainer assembly comprising a first
frame arm, a second frame arm and a stop encompasses Primucci’s retainer
assembly which in addition to the frame arms and stop also contains blocks
and a bolt.
2. Appellant has demonstrated that the Examiner incorrectly determined
that Primucci’s gasket inherently comprises multiple seals.
3. Appellant has not demonstrated that the Examiner incorrectly
determined that one of ordinary skill in the art would have combined a seal
with a retainer assembly having a stop.

H. ORDER
The rejections of claims 7-9 under 35 U.S.C. § 102(b) as anticipated
by Primucci are affirmed.
The rejection of claim 21 under 35 U.S.C. § 102(b) as anticipated by
Primucci is reversed.
The rejections of claims 22-24 under 35 U.S.C. § 103(a) as
unpatentable over Primucci in view of Wissinger or Dron are affirmed.
FURTHER ORDERED 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).

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AFFIRMED-IN-PART

rvb

Masco Corporation
21001 Van Born Road
Taylor, MI 48480