Ex parte Teskey

Board of Patent Appeals and Interferences

Sep 7, 1999

08281318 (B.P.A.I. Sep. 7, 1999)

Application for patent filed July 28, 1994. According to appellant,1
this application is a continuation of application no. 08/023,836, filed
February 23, 1993, now abandoned.
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not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES TESKEY
_____________
Appeal No. 97-1366
Application No. 08/281,318 1
______________
HEARD: August 4, 1999
_______________
Before McCANDLISH, Senior Administrative Patent Judge and
PATE and GONZALES, Administrative Patent Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2 and 4 through 10. These claims
Appeal No. 97-1366
Application No. 08/281,318
Claims 1 and 10 have been amended subsequent to final rejection.2
2
constitute all of the claims remaining in the application.2

Appellant's invention pertains to a closet flange for
connecting an outlet of a toilet bowl with a waste water drain
conduit through an opening in a floor. According to appealed
claim 10, the closet flange includes an outer flange (24) and
a discharge tube (26). The outer flange (24) includes a least
two first apertures (32, 34) for connecting the outer flange
to a floor and at least two second apertures (36, 36) for
connecting the outer flange to a toilet bowl. The discharge
tube (26) is rotatably connected to the outer flange by means
of a press catch connector (62, 66). The press catch
connector permits rotation of the discharge tube relative to
the outer flange without raising or lowering the discharge
tube relative to the outer flange. The discharge tube (26)
further includes (i) an interiorly-positioned seal seat
located proximate the outer flange which defines a first
substantially circular opening, (ii) a distal end for coupling
Appeal No. 97-1366
Application No. 08/281,318
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to a waste water drain conduit, and (iii) a curved tubing
section (54) extending between the first substantially
circular opening and the distal end and defining a curved
centerline immediately below and continuously from the first
substantially circular opening.
A correct copy of independent claims 1 and 10 is appended
to the examiner's answer. A correct copy of dependent claims
2 and 4 through 9 can be found in the appendix to appellant's
brief.
The references relied upon by the examiner as evidence of
obviousness are:
McFarland 310,298 Jan. 06,
1885
O'Donnell 1,091,697 Mar. 31,
1914
McEwen 3,775,780 Dec. 04, 1973
Olsson WO 92/19901 Nov. 12, 1992
(PCT Application)
The following rejections are before us for review:
Claims 1 and 10 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
Appeal No. 97-1366
Application No. 08/281,318
4
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1, 2, 4 through 7, 9 and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over McEwen in view of
McFarland and Olsson.
Claims 1, 2 and 4 through 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over McEwen, McFarland
and Olsson, as applied to claims 1 and 10 above, and further
in view of O'Donnell.
Reference is made to the appellant's brief (Paper No. 30)
and to the examiner's answer (Paper No. 32) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Appeal No. 97-1366
Application No. 08/281,318
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Turning first to the examiner's rejection of claims 1 and
10 under 35 U.S.C. § 112, second paragraph, it is the
examiner's position that the claims are indefinite because (i)
the "claims are unclear as to the structure defined by the
language 'without raising or lowering . . . flange'" and (ii)
the relationship between the "floor" recited in the body of
the claims and the "floor" recited in the preamble of the
claims is unclear (answer, pages 4 and 5). Appellant points
out that it is the press catch connector which permits
relative rotation between the outer flange and the discharge
tube without raising or lowering the discharge tube relative
to the outer flange, i.e., without any
vertical displacement of the discharge tube (brief, pages 5
and 6). Appellant also believes that the amendments made to
claims 1
and 10 subsequent to the final rejection clarified the use of
the term "floor" (brief, page 5).
The definiteness of claim language is analyzed, not in a
vacuum, but always in light at the teachings of the prior art
Appeal No. 97-1366
Application No. 08/281,318
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and of the particular application disclosure as it would be
interpreted by one possessing an ordinary level of skill in
the pertinent art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). Claims are considered to be definite,
as required by the second paragraph of 35 U.S.C. § 112, when
they define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
In our opinion, the recitation that the press catch
connector permits rotation of the discharge tube relative to
the outer flange without raising or lowering the discharge
tube relative to the outer flange, when read in light of
appellant's specification and drawings, would have apprised a
person skilled in the art of the scope of the claims. It is
also clear to us that the floor referred to in the body of the
claims is the same
floor mentioned in the preamble. Since the examiner has not
presented any reason why a person having ordinary skill in the
art would not understand the scope and meaning of claims 1 and
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Application No. 08/281,318
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10, we will not sustain the rejection of claims 1 and 10 under
35 U.S.C. § 112.
Turning next to the rejection of claims 1, 2, 4 through
7, 9 and 10 under 35 U.S.C. § 103 as being unpatentable over
McEwen in view of McFarland and Olsson, the examiner describes
Figure 1 of McFarland as teaching a discharge tube (A)
including a curved tubing section and contends that "it would
have been obvious to one of ordinary skill in the art to
associate a curve with the McEwen tubing section in order to
facilitate installation" (answer, page 6).
We share appellant's view that even if McEwen and
McFarland were combined in the manner proposed, the resulting
device still would fall short of meeting the limitation in
claims 1 and 10 of a curved tubing section defining a "curved
centerline immediately below and continuously from said first
substantially circular opening." As correctly pointed out by
the appellant (brief, page 9), Figure 1 of McFarland shows the
upper end of pipe (A) extending downwardly from the flange (B)
in a direction
perpendicular to the flange. In fact, McFarland describes the
end of the pipe (A) connected to the flange (B) as a "short
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Application No. 08/281,318
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vertical cylinder" (page 1, lines 98 and 99), that is, pipe
(A)
has a straight centerline immediately below the flange (B).
In order to meet the limitation in question, the art would
have to teach or suggest a tubing section defining a curved
centerline immediately below the seal seat (16) of McEwen. In
other words, the limitation in question precludes a tubing
section defining a straight centerline immediately below the
seal seat. The advantages of appellant's curved tubing
section are described at pages 7 and 8 of appellant's
specification. We can find nothing in the combined teachings
of McEwen and McFarland which would have suggested the
elimination of McFarland's upper straight section of pipe.
Olsson does not cure the foregoing deficiency in the McEwen-
McFarland combination.
Thus, the examiner’s conclusion that the differences
between the subject matter recited in claims 1, 2, 4 through
7, 9 and 10 and the applied prior art are such that the
subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in
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Application No. 08/281,318
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the art is not well founded. Accordingly, we will not sustain
the 35 U.S.C. § 103 rejection of these claims based on McEwen,
McFarland and Olsson.
The last of the examiner's rejections for our review is
that of claims 1, 2 and 4 through 10 under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of McEwen,
McFarland,
Olsson, and O'Donnell. The examiner considers O'Donnell as
teaching the "continuously curved" and "non-edge bearing"
language of independent claim 1 and concludes, that in any
event, the feature is old and well known (answer, page 5).
Our review of O'Donnell reveals that the centerline of
the tubing section of O'Donnell's pipe (1) immediately below
the annular depression or seal seat (6) is straight, not
curved. Thus, O'Donnell does not cure the deficiency in the
McEwen-McFarland-Olsson combination that we discussed, supra.
With regard to the examiner's assertion that the
"continuously curved" and "non-edge bearing" language is old
and well known, we note that the assertion has been timely
challenged by appellant and the examiner has provided no
Appeal No. 97-1366
Application No. 08/281,318
10
evidence to support the assertion. At any rate, for the
reasons we have set forth above, we find that the limitation
in claims 1 and 10 of a curved tubing section defining a
"curved centerline immediately below
and continuously from said first substantially circular
opening"
is not taught or suggested by the combined teachings of the
applied prior art. Thus, we find that the examiner has not
established a prima facie case of obviousness with regard to
the claimed subject matter.
Accordingly, we will not sustain the 35 U.S.C. § 103
rejection of claims 1, 2 and 4 through 10 based on McEwen,
McFarland, Olsson and O'Donnell.
Since we have found that the examiner has not established
a prima facie case of obviousness with regard to the claimed
subject matter, it is unnecessary for us to consider
appellant's argument regarding the declarations filed under 37
CFR § 132.
To summarize, all rejections are reversed.
Appeal No. 97-1366
Application No. 08/281,318
11
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 97-1366
Application No. 08/281,318
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