Ex Parte Stein

Patent Trial and Appeal Board

Oct 27, 2017

13702421 (P.T.A.B. Oct. 27, 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.
13/702,421 12/06/2012 Alexander Stein SMB-PT458 (PC11 9085
137BUS)
3624 7590
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
10/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER STEIN
Appeal 2017-000240
Application 13/702,4211
Technology Center 3700
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—7, 9, and 10. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, the real party in interest is Neoperl GmbH.
Appeal Br. 3.
Appeal 2017-000240
Application 13/702,421
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A jet regulator (1) comprising a jet regulator housing (4)
which has a housing part (5) with a sleeve-shaped housing wall
(7), said housing part (5), in a sleeve interior thereof, is integrally
connected to a jet ffactionater (8) which is oriented transversely
with respect to a direction of flow and has a plurality of flow-
through openings (9) for dividing an incoming water flow into a
plurality of individual jets, an external thread (12) is provided on
an outside circumference of a portion (7’) of the housing wall (7)
defining an upstream part region (10) of the sleeve interior.
Rejections
Claims 1, 2, 4, 5, 7, 9, and 10 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Kao (US 7,677,473 B2, iss. Mar. 16, 2010).
Claims \-A and 7 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Finkbeiner et al. (US 4,637,552, iss. Jan. 20, 1987)
(“Finkbeiner”).
Claims 1, 2, 4, 6, and 7 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Shapiro (US 4,657,186, iss. Apr. 14, 1987).
ANALYSIS
Claim Interpretation
Independent claim 1 is directed to a jet regulator having, among other
things, a housing part integrally connected to a jet fractionater. Appeal Br.,
Claims App.
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Application 13/702,421
The Appellant and the Examiner disagree as to the proper
interpretation of the claim term, “integrally connected.” The Appellant’s
position is that “integrally connected” means monolithic.2 See Appeal Br. 5;
Reply Br. 3^4. The Examiner’s position is that two separate elements that
connect and touch may be “integrally connected.” See Ans. 3. Moreover,
the Examiner determines that “the term ‘intergrally [sic] connected’ does not
mean that the jet fractionator and the housing part are the same piece.” Final
Act. 6.
We agree with the Appellant that “integrally connected” means
monolithic. Although the Specification does not explicitly define the term
“integrally connected,” the Specification is instructive as to the term’s
meaning. The Specification describes, “housing part 5 is integrally
connected in the sleeve interior thereof to a jet fractionater 8.” Sub. Spec.
142 (emphasis added).3 We note that the term “integrally connected” is
used in the Specification only to describe the relationship between housing
part 5 and jet fractionater 8. The Specification consistently describes the
relationship between the housing part and the jet fractionater as integrally
connected. Sub. Spec. H 3, 5, 12, 22. In other words, the Specification
does not describe the relationship between housing part 5 and jet fractionater
8 as anything other than “integrally connected.” As pointed out by the
2 “Monolithic” is defined as “cast as a single piece[;] a monolithic concrete
wall”; “formed or composed of material without joints or seams[;] a
monolithic floor covering”; and “consisting of or constituting a single unit.”
Monolithic Definition 2a-c, MERRIAM-WEBSTER.COM,
https://www.merriam-webster.com/dictionary/monolithic (last visited
Oct. 27, 2017).
3 “Sub. Spec.” refers to the Substitute Specification filed December 6, 2012.
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Application 13/702,421
Appellant, Figure 1 is a sectional view of jet regulator 1 and depicts housing
part 5 and jet ffactionater 8 having the same hatching, which is interrupted
only to identify the exterior surface of a single piece element, i.e.,
monolithic. See Reply Br. 3^4 (quoting 37 C.F.R. § 1.84(h)(3) (“The
hatching of juxtaposed different elements must be angled in a different
way.”); see also 37 C.F.R. § 1.84(h)(3) (“[t]he various parts of a cross
section of the same item should be hatched in the same manner”). Figures 7
and 14, consistent with Figure 1, depict housing part 5 and jet fractionater 8
as having the same hatching, which is interrupted only to identify the
exterior surface of a single piece element, i.e., monolithic. In this case, we
determine that one of ordinary skill in the art would understand the claim
term “integrally connected” as monolithic.
We note that the Examiner provides a definition of the terms
“integrally,” i.e., “composed of constituent parts or formed as a unit with
another part” (Ans. 3), and “connected,” i.e., “joined or linked together”
(Ans. 5). However, the Examiner fails to adequately explain how the claim
term “integrally connected” includes two separate elements, which are
connected and touch, when the claim term is given the “broadest reasonable
interpretation consistent with the [Specification” and “in light of the
[Specification as it would be interpreted by one of ordinary skill in the art.”
See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
And, we do not understand the claim term “integrally connected” to refer to
two separate elements that are connected and touch under the broadest
reasonable interpretation consistent with and in light of the Specification.
Although we appreciate the Examiner’s use of dictionary definitions, we fail
to understand how one of ordinary skill in the art would understand the
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Application 13/702,421
broadest reasonable interpretation of claim term “integrally connected”
consistent with and in light of the Specification as something other than
monolithic.
Anticipation by Kao
The Examiner finds Kao’s shell 10 is integrally connected to sleeve
21 and distributor 23. Final Act. 2 (citing Kao, Figs. 2, 3). However, shell
10 and sleeve 21 and distributor 23 are separate pieces, i.e., not monolithic,
and as such, are not integrally connected as required by claim 1. Appeal
Br. 5-6.
Alternatively, the Examiner finds Kao’s distributor 23’s outer section
and inner section correspond to the claimed housing part and jet ffactionater,
respectively. Ans. 3^4. However, the Appellant points out that the
Examiner’s alternative finding fails to consider that distributor 23 must also
include “an external thread (12) is provided on an outside circumference of a
portion (7’) of the housing wall (7),” as recited in claim 1. See Appeal
Br. 13—14; Reply Br. 4—5. And, distributor 23 does not include an external
thread as required by the claim 1. See Kao, Figs. 2, 3. As such, we
determine that the Examiner’s alternative finding lacks adequate support.
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 5,
7, 9, and 10 as anticipated by Kao.
Anticipation by Finkbeiner
The Examiner finds Finkbeiner’s sleeve 4 is integrally connected to
perforated plate 38. Final Act. 3 (citing Finkbeiner, Fig. 3). However,
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Application 13/702,421
sleeve 4 and perforated plate 38 are separate pieces, i.e., not monolithic, and
as such, are not integrally connected as required by claim 1. Appeal Br. 7—8.
Alternatively, the Examiner finds Finkbeiner’s perforated plate 38’s
outer section and inner section correspond to the claimed housing part and
jet ffactionater, respectively. Ans. 4—5. The Examiner’s alternative finding
fails to account for the claimed “external thread (12). . . provided on an
outside circumference of a portion (7’) of the housing wall (7),” as recited in
claim 1. See also Appeal Br. 13—14; Reply Br. 4—5. And, perforated plate
38 does not include an external thread as required by the claim 1. See
Finkbeiner, Fig. 3. As such, we determine that the Examiner’s alternative
finding lacks adequate support.
Thus, we do not sustain the Examiner’s rejection of claims 1—4 and 7
as anticipated by Finkbeiner.
Anticipation by Shapiro
The Examiner finds Shapiro’s stream former’s barrel 12’ is integrally
connected to flow-control portion 34a’. Final Act. 4—5 (citing Shapiro,
Fig. 3). However, barrel 12’ and flow-control portion 34a’ are separate
pieces, i.e., not monolithic, and as such, are not integrally connected as
required by claim 1. Appeal Br. 7—8.
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 6,
and 7 as anticipated by Shapiro.
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Application 13/702,421
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—7, 9, and
10.
REVERSED
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