Ex Parte Yuhas et al

Patent Trial and Appeal Board

Mar 26, 2018

12833783 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/833,783 07/09/2010 Drew J. Yuhas
147046 7590 03/26/2018
MORGAN, LEWIS & BOCKIUS LLP -American Standard
1701 MARKET STREET
PHILADELPHIA, PA 19103-2921
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106958-5003US 7201
EXAMINER
LOEPPKE, JANIE MEREDITH
ART UNIT PAPER NUMBER
3754
MAILDATE DELIVERY MODE
03/26/2018 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 DREW J. YUHAS and MICHAEL J. WEBSTER
Appeal2017-005202
Application 12/833,783
Technology Center 3700
Before JAMES P. CAL VE, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Drew Yuhas and Michael J. Webster ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-16. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appeal Brief, AS IP Holdco, LLC is the real party in
interest. Appeal Br. 1.
Appeal2017-005202
Application 12/833,783
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below with italics added, is illustrative of the
claimed subject matter.
1. A jet nozzle assembly for use in a jet apparatus having
a jet housing and a jet head, the jet nozzle assembly comprising:
(a) ajet nozzle portion having a first end, a second end and
a jet nozzle body extending from the first end to the second end
of the jet nozzle portion,
wherein the jet nozzle body is configured to provide
an aerated flow of fluid for exiting the second end of the
jet nozzle body and the jet nozzle body defines a passage
therethrough extending from the first end to the second
end of the jet nozzle portion, and
wherein the jet nozzle body has at least one opening
for receiving fluid and/or air into the passage and has at
least one fastening mechanism for attaching the nozzle
body to a jet apparatus; and
(b) a jet nozzle cover having an exterior surface and an
interior surface, and having at least one opening extending
through the jet nozzle cover from the interior surface to the
exterior surface for allowing passage of fluid, wherein the jet
nozzle cover and the jet nozzle portion are molded as a one-piece
unitary structure or formed as a two-piece structure, the two
pieces being permanently affixed to one another to form a unitary
structure, and wherein such affixation forms a motion-resistant
connection that prevents the parts disconnecting in use or during
removal for maintenance.
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Application 12/833,783
REJECTIONS
1) Claims 1, 3-7, 9, 13, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Buck (US 6,691,336 B2, issued Feb. 17,
2004).
2) Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buck and Ton (US 5,810,262, issued Sept. 22,
1998).
3) Claims 1-7, 9-14, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reynoso (US 2007/0289056 Al, published Dec.
20, 2007).
4) Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reynoso and Ton.
5) Claims 1, 3-7, 9, 13, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Buck and Barro (US 2008/0276364 Al,
published Nov. 13, 2008).
6) Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buck, Barro, and Ton.
7) Claims 1-7, 9-14, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reynoso and Barro.
8) Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reynoso, Barro, and Ton.
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Application 12/833,783
DISCUSSION
Rejection 5
Appellants argue claims 1, 3-7, 9, 13, and 16 as a group. Appeal Br.
20-22. We select claim 1 as representative and claims 3-7, 9, 13, and 16
stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Buck discloses a jet nozzle assembly
substantially as claimed except that Buck "fails to show the jet nozzle
portion and the jet cover are molded as a one-piece unitary structure or
formed as a two-piece structure, the two pieces being permanently affixed to
one another to form a unitary structure." Non-Final Act. 8. The Examiner
finds that Barro "teaches forming two plumbing fixtures as a unitary piece to
prevent leakage between the two pieces." Id. (citing Barro, i-fl9). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art "to use a one-piece structure to prevent leakage between the two
fluid fittings as is known in the art of plumbing connections and evidenced
by the teachings of Barro" and "[ m ]aking formerly separated pieces into one
integral structure would obviously perform the recited function of providing
a motion-resistant connection that prevents disconnecting in use or during
removal." Id.
Appellants contend that Barro is non-analogous art because "Barro is
concerned with the drain of a stationary shower pan" and "[ o ]ne of ordinary
skill in the art developing whirlpool tub jet nozzle assemblies that work with
a jet pump and other devices to inject water into a whirlpool tub using pre-
molded snap-fit jet nozzle pieces would not look to a shower pan drain to
design the device." Appeal Br. 21. Appellants next contend that "secondary
considerations" of non-obviousness "clearly overcome" the Examiner's
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obviousness rejection based on Buck and Barro. Id. at 15-16, 22. In
connection with this contention, Appellants rely on two Declarations of
Drew J. Yuhas under 37 C.F.R. § 1.132. See 8/14/14 Deel. of Drew J.
Yuhas, 7/6/15 Supp. Deel. of Drew J. Yuhas. According to Appellants, the
Declarations of Mr. Yuhas establish that Mr. Yuhas' one-piece unitary
construction is "an alternative that others in the art have not made and were
not motivated to make." Appeal Br. at 15-16.
With respect to the Appellants' contention that Barro is non-
analogous art, the Examiner disagrees because Barro "contemplates the field
of fluid plumbing connections or fittings and problems common to the
connection between two fittings" and "has cited [Barro] as providing
motivation for forming a one-piece molded or permanently fixed unitary
structure to prevent leaking between two fittings." Ans. 14. For the
following reasons, we sustain the rejection of claim 1.
The Federal Circuit explains that "[t]wo separate tests define the
scope of analogous prior art: ( 1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 201 l)(citation
omitted); see also In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007). We understand Appellants' contention to be that
Barro is non-analogous art because Barro is not from Appellants' field of
endeavor. Appellants do not address whether or not or Barro is reasonably
pertinent to the problem with which Appellants are involved. See Appeal
Br. 21. Appellants do not address the Examiner's assertion in the Answer
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that Barro and Appellants deal with the same problems i.e. "fluid plumbing
connections or fittings and problems common to the connection between two
fittings." Ans. 13-14; Reply Br. passim. With respect to the second test
stated in In re Klein, Appellants submit that the particular problem with
which they were involved was "a leakage problem." Appeal Br. 21.
Appellants, however, do not adequately explain why Barro is not reasonably
pertinent to the leakage problem faced by Appellants. See Barro, i-f 19
("Drain connection 16 is integral with pan liner 15 to prevent
leakage.)(Emphasis added). Consequently, Appellants do not persuade us
that Barro is non-analogous art. We agree with the Examiner that Barro's
teaching of the use of a unitary connection between plumbing fixtures for
basins and tubs to prevent leakage problems is reasonably pertinent to the
problem confronted by Appellants of making their jets "less prone to
leakage." Spec. i1 6; Appeal Br. 21.
In connection with Appellants' contention that secondary
considerations overcome the Examiner's prima facie case of obviousness
based on the combination of Buck and Barro, we initially note that, although
not specifically stated in the Appeal Brief, Appellants apparently claim that
the Declarations of Drew Yuhas provide evidentiary support for the
secondary consideration of long felt need. See Appeal Br. 11, 15-16, 22.
Mr. Yuhas submits that he and his co-inventors made "a two piece, non-
permanently affixed structure" similar to that in Buck and Reynoso. 8/14/14
Yuhas Deel. i-f 10. Mr. Yuhas submits that "[t]his part showed no leakage
problems during testing or initial use in consumer products." Id. However,
after several years of product use, Mr. Yuhas "became aware of reports
received for these products having leakage in a discrete number of jet
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nozzles." Id. at i-f 11. Mr. Yuhas investigated the leak reports and attributed
the leaks to the two-piece non-unitary jet nozzle and cover. Id. i-f 12;
7/6/2015 Supp. Yuhas Deel. i-f 6. Mr. Yuhas then developed "[t]he unitary
structure of the present application ... to solve the leakage problem with the
prior product." 8/14/14 Yuhas Deel. i-f 14.
In order to establish long felt need, Appellants must establish that
"such a 'problem' objectively existed, as distinguished from its
acknowledged subjective existence in the minds of the inventors and their
patent counsel." In re Gershon, 372 F.2d 535, 538 (CCPA 1967).
Appellants must also establish that others unsuccessfully attempted to solve
the problem. See Orthopedic Equipment Co. v. All Orthopedic Appliances,
Inc., 708 F.32d 1376, 1382 (Fed. Cir. 1983); Scully Signal Co. v. Electronics
Corp. of America, 570 F.2d 355, 361 (1st Cir. 1977) ("[T]he questions 'how
long did the need exist' and 'how many tried to find the way', appear side by
side with the question of success."). In this case, Appellants do not offer
persuasive evidence that the leakage problem which surfaced after several
years of use objectively existed in the field of whirlpool jet nozzles and/or
that others unsuccessfully attempted to solve the problem. See 8/14/14
Yuhas Deel.passim; 716115 Yuhas Deel.passim. Consequently, Appellants
have not established, with evidence, that Appellants' invention solved an
objectively existing long felt need that others unsuccessfully attempted to
solve.
In connection with the combination of Buck and Barro, Appellants
alternatively argue that "[i]f there is no recognized problem in the art to
solve, one of ordinary skill in the art would not be motivated to modify the
invention of Buck, particularly not to look at a shower drain pan to improve
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Application 12/833,783
the Buck device." Appeal Br. 21. To the extent that this argument relies on
the contention that Buck is non-analogous art, we determine that contention
to be unpersuasive. In addition, we note that "[t]he obviousness analysis
cannot be confined by a formalistic conception of the words teaching
suggestion, and motivation." KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398,
419 (2007). Rather, the question is whether there is "an apparent reason"
that one of ordinary skill in the art would "combine the known elements in
the fashion claimed by the patent at issue." Id. at 418. In this case, the
Examiner relies on Barro for the explicit teaching of preventing leaks by
"forming two plumbing fixtures as a unitary piece." Non-Final Act. 8. The
Examiner then concludes, based on Barro, that modifying Buck's two-piece
design to have a one-piece unitary construction would have been obvious to
one of ordinary skill in the art to solve the leakage problem identified by
Appellants. Id.; see also 8/14/14 Yuhas Deel. i-f 11.
We have considered all of Appellants' contentions and determine that
Appellants fail to persuasively apprise us of error in the Examiner's factual
findings or rationale, quoted above, for the combination of Buck and Barro,
which we determine to be reasonable and supported by rational
underpinnings. See KSR Intern. 550 U.S. at 416 (2007) ("[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results."). We, thus, sustain the
rejection of claim 1 under 35 U.S.C. § 103(a) based on the combination of
Buck and Barro. Claims 3-7, 9, 13, and 16 fall with claim 1.
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Rejection 7
Appellants argue claims 1-7, 9-14, and 16 as a group. Appeal Br.
22-24. We select claim 1 as representative and claims 2-7, 9-14, and 16
stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Reynoso discloses a jet nozzle assembly
substantially as claimed except that Reynoso "fails to show the jet nozzle
portion and the jet cover are molded as a one-piece unitary structure or
formed as a two-piece structure, the two pieces being permanently affixed to
one another to form a unitary structure." See Non-Final Act. 9-11. The
Examiner finds that Barro "teaches forming two plumbing fixtures as a
unitary piece to prevent leakage between the two pieces." Id. at 11 (citing
Barro, i-f 19). The Examiner concludes that it would have been obvious to
one of ordinary skill in the art "to use a one-piece structure to prevent
leakage between the two fluid fittings as is known in the art of plumbing
connections and evidenced by the teachings of Barro" and "[ m ]aking
formerly separated pieces into one integral structure would obviously
perform the recited function of providing a motion-resistant connection that
prevents parts disconnecting in use or during removal." Id. at 11.
Appellants' contentions in connection with this rejection are
substantially the same as for Rejection 5, i.e., Barro is non-analogous art,
secondary considerations overcome the prima facie case of obviousness, and
one of ordinary skill in the art would not be motivated to modify Reynoso.
Appeal Br. 22-24. As explained above, we are not persuaded by these
contentions. We, thus, sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) based on the combination of Reynoso and Barro for the same
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reasons stated above in connection with Rejection 5. Claims 2-7, 9-14, and
16 fall with claim 1.
Re} ections 6 and 82
Claim 8 depends indirectly from claim 1 and recites that "the jet
nozzle portion is affixed to the jet nozzle portion by at least one of an
adhesive, a molded bead weld or by ultrasonic weld." Appeal Br. (Claims
App. ii). Claim 15 depends indirectly from claim 10 and contains the same
recitation as claim 8. Id. at v. Appellants argue claims 8 and 15 together.
Appeal Br. 24--28. We select claim 8 as representative and claim 15 stands
or falls with claim 8.
The Examiner finds that Ton teaches "that securing a jet nozzle cover
to a jet nozzle portion using an ultrasonic weld is known in the art." Non-
Final Act. 9, 11-12 (citing Ton, 3:60-62). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art "to use any
suitable, known method for affixing the jet nozzle cover to the jet nozzle
portion and to select an ultrasonic weld ... [as] merely a matter of obvious
engineering choice as evidenced by the teachings of Ton." Id.
Appellants contend that "Ton is not properly combined with either
Buck or Reynoso, with or without the teaching of Barro" because "Ton is a
different type of nozzle than those of Reynoso and Buck." Appeal Br. 26.
Appellants also argue that "the alleged modification of Buck or Reynoso,
alone or with Barro, would require one of ordinary skill in the art to avoid
their teaching of advantageous, easy to manufacture interlocking tabs and
2 Appellants' arguments concerning claims 8 and 15 apply to both Rejection
6 and Rejection 8. Appeal Br. 24--28.
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Application 12/833,783
clips and stabilizing tab features, rendering them no longer useful." Id. at
27. In response, the Examiner submits that Ton is a secondary reference and
is "relied upon as a showing of using common joining techniques known in
the art to permanently fix two pieces together." Ans. 14. For the following
reasons, we sustain the rejection of claim 8.
Ton is directed to a "Spa Jet with Interchangeable Nozzles." Ton,
Title. In particular, it discloses "an adjustable jet face 33 which is sonically
welded to an adjustable jet body 29." Id. 3:60-62, Fig. 1. We note
Appellants' argument that Ton is a different type of nozzle than Reynoso or
Buck. However, we are not persuaded of Examiner error because the
rejection does not rely on a bodily incorporation of Ton's nozzle into the
modified nozzle structures of Buck or Reynoso. See In re Keller, 642 F.2d
413, 425 (CCPA 1981) ("The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.")
(citations omitted); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures.").
Claim 8, which depends indirectly from claim 1, claims in the
disjunctive, various processes by which the "one-piece unitary structure" of
claim 1 may be formed. Appellants' arguments concerning the combination
of Buck and Barro or Reynoso and Barro are directed to the Examiner's
rejection of claim 1, not claim 8. These arguments do not apprise us of
Examiner error in the rejection of claim 8 because, "when a patent claims a
structure already known in the prior art that is altered by the mere
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substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR Int'! Co. 550 U.S. at
416. The Examiner relies on Ton for the finding that ultrasonic welding of
pieces in a nozzle jet assembly is known in the art. Ans. 14. Appellants
have not shown that an ultrasonic weld, as recited in claim 8, yields more
than predictable results. We, thus, sustain the rejection of claim 8 under 35
U.S.C. § 103(a). Claim 15 falls with claim 8.
Rejections 1-4
In light of our disposition of Rejections 5-8, we do not reach the
merits of Rejections 1--4. See 37 C.F.R. § 41.50(a)(l)("The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim.").
DECISION
The Examiner's decision rejecting claims 1-16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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