Ex Parte Torres

Patent Trial and Appeal Board

Dec 26, 2013

12290754 (P.T.A.B. Dec. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/290,754 11/03/2008 Raymond C. Torres LBW04-003D 1372
61564 7590 12/26/2013
AQUATIC CO.
C/O TOMKINS Limited, IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
EXAMINER
KENNY, DANIEL J
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
12/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAYMOND C. TORRES
____________________

Appeal 2011-009009
Application 12/290,754
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, JILL D. HILL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/290,754

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION of claim
14 pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to a method of constructing a shower stall.
Claims 1, 10 and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of constructing a shower stall comprising:
(i) placing a shower receptor comprising a ledge and a
vertical flange into an alcove with at least one framed wall,
wherein said ledge comprises more than one step;
(ii) applying a subwall material to said wall so that said
subwall overlaps said flange;
(iii) applying a finish wall material to said wall;
(iv) leaving a gap between a bottom edge of said finish
wall material and said ledge; and
(v) positioning a bottom edge of said subwall material
such that the bottom edge of said subwall material is higher
than the bottom edge of said finish wall material[; sic]
(vi) caulking said gap.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gill
Whittick
Sakharoff
Dix
Prochaska
US 2,613,834
US 2,757,385
US 4,190,989
US 5,371,980
US 5,916,394
Oct. 14, 1952
Aug. 7, 1956
Mar. 4, 1980
Dec. 13,1994
Jun. 29, 1999
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Admitted Prior Art of Appellant (APA).

REJECTIONS
The Examiner made the following rejections:
Claims 10 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Appellant’s Admitted Prior Art (APA), and Prochaska.
Ans. 3. 1
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over APA, and Dix. Ans. 5.2
Claims 1-3, 11-13, 16, 17, 19, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over APA, Whittick, and Sakharoff. Ans. 6.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over APA, Whittick, Sakharoff, and Gill. Ans. 10.
Claims 4-8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA, Whittick, Sakharoff and Dix. Ans. 11.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over APA, Whittick, Sakharoff, Dix and Gill. Ans. 13.

1 Since Appellant does not contest this rejection, we summarily affirm the
Examiner’s decision to reject claims 10 and 15 as unpatentable over APA
and Prochaska. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal).
2 We note that although the Grounds of Rejection states that claim 14 is
rejected over the APA, Prochaska and Dix, the inclusion of Prochaska is in
error, and the Examiner did not provide findings for Prochaska nor was
Prochaska included with this rejection in the Final Rejection dated April 22,
2010. Ans. 5-6.
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ANALYSIS
Obviousness Rejection: Claim 14
APA, Dix
Claim 14 depends from claim 10 and further includes the limitation
that the “vertical flange extends upward at least about three inches above an
outer edge of the ledge, and further comprising: fastening a membrane to the
framing of the alcove or to a subwall surface of the alcove, such that the
membrane overlaps the flange at least one inch, and a gap of at least one
inch is left between the membrane and the horizontal ledge surface.” Clms.
App’x.
The Examiner finds that, while Dix does not expressly disclose a three
inch flange, from Figure 3 the flange appears to extend upwardly at least
three inches. Ans. 5. The Examiner reasons that it would have been obvious
to a skilled artisan to make the flange taught by the APA three inches, “to
ensure sufficient membrane overlap and keep water accumulated behind the
subwall from leaving the shower receptor.” Ans. 5. While Dix does not
disclose a one inch minimum membrane/flange overlap or a specific size gap
between the membrane and ledge gap, the Examiner finds that Dix does
disclose placing the membrane over the frame and portions of the shower
receptor; and Figure 3 shows the membrane overlapping vertical flange 16,
while not extending beyond the flange (i.e., horizontally) by at least one
inch. Ans. 5. Noting that the APA discloses that it is known for the subwall
material to overlap the flange, and to leave a gap between the ledge and
subwall material, the Examiner reasons that it would be obvious to a skilled
artisan:
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to use the Dix-taught overlapping membrane/flange in APA to
make membrane installation easier by allowing a large overlap
that is less likely to result in an installed membrane bottom
edge located above the flange top edge, and to leave the
membrane sufficiently short of the ledge as taught by APA to
maximize a benefit of the reason for so terminating the
membrane, reducing membrane interference with the ledge
surface, by keeping the lower membrane edge as far as possible
from the ledge while still maintaining the benefit taught by Dix,
maximizing overlap.
Ans. 6.
Appellant argues that Dix discloses a liner for a tile shower
installation and not a shower receptor, and further explains that the shower
receptor is the floor of the shower, and replaces the liner, tile and mortar
used to form the shower floor. App. Br. 11. This argument is not convincing
as the Examiner relied on the APA to disclose features of the shower
receptor and Dix to disclose an approximately three inch flange. Ans. 5.
Furthermore, the Examiner reasonably explains how Dix’s flange has a
similar structure and same purpose as the claimed flange to prevent
moisture from the shower passing over the top of the flange and causing
water damage to the wall or framing. Ans. 14.
Appellant argues that Figure 3 of Dix does not disclose a three inch
flange, consequently the Examiner erred in relying on the patent drawings
for specific dimensions. App. Br. 11-12. We note that although dimensions
are not given for the wood frame 22 of Figure 3, a skilled artisan would
understand that materials (i.e. studs) used for framing a wall are usually 2
inches deep by 4 inches wide. In comparing the relative height of the flange
16 to the frame 22, it is apparent that the flange height is at least 3 inches
regardless of whether the 2 inch or 4 inch face of the stud is shown in Figure
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3. Further support for the height of the flange being at least 3” is found in
Dix, which suggests that it is known for a portion of the shower liner to be
“run up all walls adjacent the mortar bed to a height of approximately 6
inches.” See Dix, col. 1, ll. 38-41. This reasoning also aligns with the
Examiner’s explanation of how the flange shown in Figure 3 appears to be
about 3 inches, and it would be obvious to a skilled artisan to make the
flange 3 inches high to “ensure that moisture from the shower did not pass
over the top of the flange and cause water damage to the wall/framing.”
Ans. 14.
Appellant also argues that Dix does not provide a dimension for the
gap of at least one inch left between the membrane and the horizontal ledge
surface. App. Br. 12. According to Appellant, since the APA merely
discloses a ¼ inch gap, and Dix teaches no gap, a 1 inch gap would not be
obvious. Id. In reply, the Examiner noted that the APA was relied on to
show that it is old in the art to leave a gap, although not a specific size of
gap. The Examiner further finds that it would have been obvious to a skilled
artisan “to leave the membrane sufficiently short of the ledge to keep the
membrane a safe distance away from the ledge; the ¼” APA-specified gap
leaving the membrane unnecessarily close to the ledge, while a larger (1")
gap would reduce the chance of the membrane interfering with the ledge.”
Ans. 14. The Examiner has the better position , as Appellant has not
adequately explained why it would not be obvious for a skilled artisan to
leave a gap larger than ¼” to reduce the chance of the membrane interfering
with the ledge.
Further, each of Appellant’s arguments directed to the Dix patent are
essentially individual attacks on that reference, which are not persuasive
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when, as here, the rejection is based upon a modification resulting from a
combination of the teachings of more than one reference.3 For these
reasons, Appellant does not apprise us of error in the Examiner’s articulated
reasons as to why it would have been obvious to combine the teachings of
the APA and Dix.
For these reasons, we sustain the rejection of claim 14. Because our
reasoning for sustaining the rejection of claim 14 based on the APA and Dix
differs somewhat from the reasoning relied on by the Examiner, we
designate our affirmance of the rejection of claim 14 as a NEW GROUND
OF REJECTION so as to provide Appellants with a full and fair
opportunity to respond to the thrust of the rejection. See In re Kronig, 539
F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of whether a rejection
is considered ‘new’ in a decision by the board is whether appellants have
had [a] fair opportunity to react to the thrust of the rejection.”).

Obviousness Rejection: Claims 1-3, 11-13, 16, 17, 19, and 21
APA, Whittick, and Sakharoff
Appellant separately argues claims 1-3, 12, 16, and 19; claims 13 and
17; and claim 21.4 App. Br. 12-15.
Claims 1-3, 12, 16, and 19

3 See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d
1091 (Fed. Cir. 1986) (nonobviousness cannot be established by attacking
references individually where rejections are based on combinations of
references).
4 Appellant does not argue the rejection of claim 11. App. Br. 12-15.
Accordingly, we summarily sustain the rejection of claim 11 as unpatentable
over the combined teachings of APA, Whittick, and Sakharoff.
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We select claim 1 as representative and claims 2, 3, 12, 16, and 19
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The
Examiner finds that the APA discloses the method of constructing a shower
substantially as claimed, and relies on Whittick to disclose positioning a
bottom edge of a subwall material higher than the bottom edge of a finish
wall material. Ans. 7, citing Whittick, col. 2, l. 69. The Examiner reasons it
would have been obvious to a skilled artisan to position the materials as
taught by the APA because such a relative respective material orientation
allows for "making use of the receptor as a guide" to help maintain a more
uniform caulk gap. Ans. 7, citing Spec. para. [0043]; Whittick, col. 2, l. 10.
The Examiner further finds that ledge 29 of Whittick has more than one step
28, 29, and it would have been obvious to include a two-step ledge in the
APA “to provide bottom edge guides for both the finish material and
subwall.” Ans. 7.
Appellant contends that Whittick discloses a ledge having one step 30
and recess 27 and does not disclose a ledge comprising more than one step
as required by the claims. App. Br. 13. Contrary to the Examiner’s position
that elements 28 and 29 are both steps, Appellant argues only edge 29 and
flat area 30 form a step, and edge 28, surface 26 and recess 27 do not form a
second step. App. Br. 13. An edge is not a surface or step, which is a
substantially horizontal surface, according to Appellant. Id. Appellant also
argues that Whittick’s recess would ruin the function and purpose of the
steps by collecting water and trapping water within the wall. App. Br. 13
We have carefully considered each of Appellant’s arguments that
Whittick does not disclose more than one step, and are not convinced that
the Examiner erred in finding that the ledge of Whittick has more than one
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step . The Examiner reasonably explains how element 28 and the flat area to
the right of element 28 is a second step, as evidenced by the tiles 45 that rest
on the step. Ans. 14-15. For these reasons, the decision of the Examiner to
reject claim 1 is sustained, and claims 2, 3, 12, 16, and 19 fall therewith.
Claims 13, 17
Appellant provides additional arguments for claims 13 and 17,
contending that Sakharoff discloses a roof flashing system attached to a
vertical wall with top edges sealed against the wall with caulk, and not a
joint at the base of wall that is caulked. App. Br. 14. The application of two
beads of caulk between reglet and wall in the Sakharoff flashing system is
not related to the two beads of caulk applied at the bottom edges of two wall
materials, according to the Appellant. Further, Appellant contends there is
no suggestion to use two beads of caulk in a shower installation, no
suggestion to use two beads of caulk without the flashing system, and no
suggestion where to provide such a layer of protection on anything besides a
roofing flashing system. App. Br. 14.
After careful consideration, Appellant’s argument is not convincing ,
as Appellant has mischaracterized the rejection. The Examiner relied on
Sakharoff to teach that it is “old in the art” to “‘provide a second layer of
moisture protection’ in a construction application” and additionally reasoned
it would be obvious for a skilled artisan “to use a double caulk structure for
redundancy.” Ans. 15. The Examiner did not rely on Sakharoff for
disclosure relating to the relative position of the second line of caulk. .
Further, Appellant contends the Examiner used hindsight since
Sakharoff does not suggest caulking the top edges of the material to be
protected, and there is no suggestion to use the second bead of caulk without
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the flashing system or to use on a roof. App. Br. 14. Appellant’s assertion
of error does not explain why the Examiner’s articulated reasons to combine
the APA, Whittick, and Sakharoff are ineffective to support the conclusion
of obviousness. Because the Examiner’s reasoning includes rational
underpinnings to support the legal conclusion of obviousness, we are not
persuaded that the Examiner’s modification was arrived at using hindsight.5
For these reasons, the decision of the Examiner to reject claims 13 and
17 is sustained.
Claim 21
Appellant proffers an additional argument for claim 21, contending
that the Examiner failed to establish it would be obvious to adapt the
dimensions of the sidewall, base, threshold and ledge of the shower receptor
in order to use the shower receptor in a bathtub application. App. Br. 15.
Noting that claim 21 does not specify any dimensions or features of the
bathtub, and the shower stall structure has the same elements of a bathtub
(i.e., a drain and a basin), the Examiner reasonably explains how the shower
receptor is capable of use as a bathtub, namely, “due to the fact that bathtubs
come in different shapes and sizes.” Ans. 15. Because Appellant has not
identified error in the Examiner’s determination that the prior art would have
rendered it obvious to construct a shower receptor that has the structure
recited in claim 21 and is capable of meeting the intended use as a bathtub,

5 “Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1313-1314.
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Appellant’s arguments do not apprise us of error in the Examiner’s
conclusion of obviousness.6
For these reasons, the decision of the Examiner to reject claim 21 is
sustained.

Obviousness Rejection: Claim 20
APA, Whittick, Sakharoff, Gill
Claim 20 depends indirectly from claim 16 and requires that the ledge
include three steps. Clms. App’x. The Examiner finds that Gill discloses a
three step ledge, and reasons it would have been obvious to include multiple
steps in order to accommodate wall panels of different thicknesses. Ans. 10-
11, citing Gill, col. 3, l. 67; fig. 9. Appellant initially contends that the
Examiner erred since Whittick only shows one step. App. Br. 15. This
argument is not convincing for the reasons disclosed supra with respect to
the rejection of claim 16, from which claim 20 indirectly depends.
Appellant further contends the Examiner erred for numerous reasons,
including: Gill teaches vertical surfaces and not horizontal surfaces; if the
steps were horizontal, there would be still be a gap to accept panels that
would only trap water and not function as a stepped ledge; Gill’s steps
would grip the edge of a single panel corresponding to one of the stepped
widths, and does not facilitate use of multiple layers of wall materials with
“no gripping;” there is no motivation to modify the shipping container of

6 See In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the patentability
of apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof”). See also In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (affirming rejection of appellant’s claim
directed to a dispensing top for dispensing popcorn based on factual finding
that the prior art structure would be capable of dispensing popcorn).
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Gill or combine the shipping container of Gill with the other references; and
the Examiner used hindsight in combining the references. App. Br. 16.
The Examiner addressed Appellant’s arguments, explaining how Gill
was only relied on to disclose an additional or third step to the shower stall
modified by the APA, Whittick, and Sakharoff, and alternatively concludes
it would have been obvious to a skilled artisan “to include a third step (in
addition to the two steps of the APA in view of Whittick and Sakharoff
shower stall construction method) because doing so is a simple duplication
of existing parts, another step not changing the invention or serving a
different purpose than the two steps.” Ans. 15-16. Appellant does not
apprise us of error in the Examiner’s conclusion of obviousness that the
addition of another step to the shower stall disclosed in the APA, as
modified by Whittick and Sakharoff, is an obvious duplication of parts.
For these reasons, the decision of the Examiner to reject 20 is
sustained.

Obviousness Rejection: Claims 4-8 and 18
APA, Whittick, Sakharoff, and Dix

Appellant argues claims 4 and 18; claims 5-7; and claim 8 as separate
groups. App. Br. 17-19.
Claims 4, 18
We select claim 4, which depends directly from claim 1, as
representative, and claim 18 stands or falls with claim 4. Admitting the
APA does not disclose the amount of overlap between the subwall and
vertical flange, the Examiner notes that the purpose of the flange is to be
positioned at the outermost border of the shower receptor with all wall
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materials placed inside the flange, and reasons that the amount of overlap is
a matter of design choice. Ans. 11. Dix was relied on by the Examiner to
disclose placing the membrane over the frame and portions of the shower
receptor; the membrane overlapping the vertical flange 16, while not
extending beyond the flange (i.e., horizontally). Ans. 11, citing Dix, fig. 3.
Acknowledging that Dix does not disclose a one inch minimum
membrane/flange overlap and membrane-ledge gap, the Examiner reasons it
would have been obvious to a skilled artisan “to so form the Dix device, as
Dix is concerned with installation efficiency, cost, and waterproofing.” Id.
Appellant argues that Dix does not teach a gap of one inch between
the membrane and flange, and since the gaps disclosed in the APA are much
smaller, a gap of about 1 inch is not obvious. App. Br. 17. As previously
determined with respect to the rejection of claim 14, the Examiner has the
better position , as Appellant has not adequately explained why it would not
be obvious to a skilled artisan to leave a gap larger than ¼” to reduce the
chance of the membrane interfering with the ledge. Appellant also alleges
that the Examiner failed to explain why “concern with installation
efficiency, cost and waterproofing” would lead a skilled artisan to the
claimed solution. Id. Appellant’s contention is not convincing since
Appellant has not provided any persuasive evidence or technical explanation
as to why the Examiner’s position that it would have been obvious for a
skilled artisan to leave the membrane sufficiently short of the ledge to keep
the membrane away from the ledge and reduce the chance of the membrane
interfering with the ledge is in error. Ans. 14. As such, the rejection of
claim 4 is sustained and claim 21 falls therewith.
Claims 5-7
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Appellant repeats their earlier argument that Figure 3 of Dix does not
disclose a three inch flange, and that the Examiner erred in relying on patent
drawings for specific dimensions. App. Br. 17-18. This argument is not
convincing for the reasons provided supra with respect to the rejection of
claim 14.
As such, the rejection of claims 5-7 is sustained.
Claim 8
Appellant repeats their earlier arguments regarding the teaching of
Sakharoff. App. Br. 18. This argument is not convincing for the reasons
provided supra with respect to the rejection of claims 1 and 4.
As such, the rejection of claim 8 is sustained.

Obviousness Rejection: Claim 9
APA, Whittick, Sakharoff, Dix and Gill
Claim 9 depends indirectly from claim 1, and further includes the
limitation that the ledge comprises three or more steps. Appellant refers to
their earlier arguments for claim 1, and repeat the proffered arguments for
the rejection of claim 20 over Gill. App. Br. 19-21. These arguments are
not convincing for the reasons provided supra with respect to the rejections
of claims 1 and 20.
As such, the rejection of claim 9 is sustained.

DECISION
The Examiner’s decision to reject claims 10 and 15 as unpatentable
over APA and Prochaska is summarily affirmed.
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The Examiner’s decision to reject claim 14 as unpatentable over APA,
and Dix is affirmed. Insofar as our reasoning differs from that of the
Examiner, we denominate our affirmance a NEW GROUND OF
REJECTION.
The Examiner’s decision to reject claims 1-3, 11-13, 16, 17, 19, and
21 as unpatentable over APA, Whittick, and Sakharoff is affirmed.
The Examiner’s decision to reject claim 20 as unpatentable over
APA, Whittick, Sakharoff, and Gill is affirmed.
The Examiner’s decision to reject claims 4-8 and 18 as unpatentable
over APA, Whittick, Sakharoff and Dix is affirmed.
The Examiner’s decision to reject claim 9 as unpatentable over APA,
Whittick, Sakharoff, Dix and Gill is affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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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) (2011).

AFFIRMED; 37 C.F.R. § 41.50(b)

Klh/rvb