Ex Parte SteinDownload PDFPatent Trial and Appeal BoardOct 27, 201713702421 (P.T.A.B. Oct. 27, 2017) Copy Citation 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. 2 Appeal 2017-000240 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. 3 Appeal 2017-000240 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 4 Appeal 2017-000240 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, 5 Appeal 2017-000240 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. 6 Appeal 2017-000240 Application 13/702,421 DECISION We REVERSE the Examiner’s decision rejecting claims 1—7, 9, and 10. REVERSED 7 Copy with citationCopy as parenthetical citation