Ex Parte Zoller et al

Patent Trial and Appeal Board

Jul 31, 2017

12516422 (P.T.A.B. Jul. 31, 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.
12/516,422 05/27/2009 Uwe Zoller SMB-PT300 8074
(PC07737BUS)
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
08/02/2017 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 UWE ZOLLER, CHRISTOPH WEIS,
and HERMANN GRETHER
Appeal 2015-004388
Application 12/516,422
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 5, 8, 9, 12—16, and 18—23.1 We have jurisdiction under
35 U.S.C. § 6(b).2
We AFFIRM-IN-PART.
1 The cover page of the Examiner’s Final Action does not list claims 12
and 13 as being either pending or rejected. However, these claims are
addressed and rejected in the body of the Final Action. See Final Action 6.
2 This case came before the Board on regularly scheduled oral hearing on
July 20, 2017.
Appeal 2015-004388
Application 12/516,422
THE INVENTION
Appellants’ invention relates to a sanitary installation element that is
arranged in a water line. Spec. 1. Claim 1, reproduced below with
paragraph indentation added, is illustrative of the subject matter on appeal.
1. A sanitary installation element which is arranged in a
water line that is embodied as a jet regulator, comprising
a jet splitter (2) which divides the inflowing water flow into
a multiplicity of individual jets, and having
an admixing device (4) with at least one throttling or
closing element (5, 5'), the at least one throttling or closing
element (5,5') includes
a fixed anchor portion connected to a center portion of the
jet splitter and
an elastically deformable closing portion extending
therefrom that moves through flexing under the pressure of the
inflowing water, from an admixing or open position into a
throttling or closed position counter to a restoring force
provided by the elastic deformation,
with the admixing device (4), in the admixing or open
position of the at least one throttling or closing element (5, 5'),
providing a clear throughflow cross section, and
in the throttling or closed position of the at least one
throttling or closing element (5, 5'), providing a reduced clear
throughflow cross section in relation thereto,
the admixing device ( 4) is provided upstream of the jet
splitter (2) at an inflow side, and
the at least one throttling or closing element (5, 5'), in its
throttling or closed position, closes off at least one of: a partial
region of the clear passage cross section of the jet splitter (2), or
at least one bypass duct (12) which bypasses at least the jet
splitter (2) of the jet regulator,
with the bypass duct including a duct opening (13) that is
provided upstream of the jet splitter (2) in a flow direction.
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Application 12/516,422
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Weese US 3,409,050 Nov. 5, 1968
Nelson US 4,344,459 Aug. 17, 1982
The following rejections are before us for review:
1. Claim 9 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention.
2. Claims 1, 5, 8, 9, 14—16, 18, 19, and 21—23 are rejected under 35
U.S.C. § 102(b) as being anticipated by Weese.
3. Claims 12 and 13 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nelson.
OPINION
Indefiniteness of Claim 9
The Examiner finds that claim 9 initially refers in the alternative to “at
least one by-pass duct”, but then later requires “at least one by-pass duct.”
Thus, the Examiner states that it is unclear if Appellants are claiming one
by-pass duct, two by-pass ducts, or no by-pass duct. Final Action 2.
In addition, the Examiner states that it is unclear what “partial region”
is referred to on line 22 of the claim. Id. Also, the Examiner finds that there
is no antecedent basis for the term “the clear passage.” Id.
Appellants do not challenge the indefmiteness rejection other than to
state that they have submitted an amendment to claim 9. Appeal Br. 12.
Otherwise, neither Appellants nor the Examiner brief or argue the
indefmiteness rejection. There is no indication in the record that the
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Application 12/516,422
amendment referred to in Appellants’ brief has been entered or considered
by the Examiner.
Under the circumstances, we will treat the Examiner’s indefmiteness
rejection of claim 9 as unopposed and summarily sustain it. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2016) (not arguing a ground of rejection results in waiver).
Anticipation of Claims 1, 5, 8, 9, 14-16, 18, 19, and 21—23
by Weese
Claim 1
The Examiner finds that Weese discloses all of the limitations of
claim 1. Final Action 3—4. In particular, the Examiner finds that Weese’s
element 16 corresponds to the claimed throttling or closing element with a
fixed anchor portion connected to a center portion of the jet splitter. Id. at 2.
Appellants challenge the Examiner’s finding that Weese element 16
has a fixed anchor portion connected to a center portion of the jet splitter.
Appeal Br. 14. Appellants contend that Weese’s diaphragm 14 (which
includes deflectable inner edge 16) rests on an outer circumference of inner
member 6. Id.
In response, the Examiner states that outer edge element 16 of
resilient diaphragm 14 is “anchored” to element 6 because it is shown to
touch it in Figure 2. Ans. 3. With respect to the limitation that the fixed
anchor portion is connected to a “center” portion, the Examiner takes the
position that the entire inner member 6, except for the extreme, outermost
circumferential surface may be considered the “center” of inner member 6.
Id.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
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Application 12/516,422
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art.”’ Id. (quoting In re Am. Acad, of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every
claim limitation. Id.
We do not agree with the Examiner’s position as it relies on an overly
broad construction of “center.” Even under the broadest reasonable
interpretation, the Office’s construction “cannot be divorced from the
specification and the record evidence.” In re NTP, Inc., 654 F.3d 1279,
1288 (Fed. Cir. 2011).
In the instant case, Appellants disclose a closing element 5 that is
anchored to and connected in the center of jet regulator 101. Spec., Figs. 1—
4. Element 5 extends radially outward from the center so that its outer
circumferential edge moves between an open and closed position. Id. As
shown in Figure 2, element 5 “touches” jet splitter 2 at both the center of the
jet regulator and at the extreme outer peripheral edge of element 5. See
Spec., Fig. 2. Claim 1 recites that the “fixed anchor portion” is “connected
to” a center portion. Claims App. Here, a person of ordinary skill in the art
would not view Weese’s diaphragm 14 as a “fixed anchor portion connected
to a center portion.” In contrast to Appellants’ invention where element 5 is
anchored in the center and extends radially outward, Weese’s diaphragm 14
is better understood as being anchored and connected at the outer periphery
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Application 12/516,422
of element 6 and then extending radially inward toward the center where
edge 16 moves between an open/by-pass position (Weese, Fig. 2 (element
17) and a closed position {id. at Fig. 3).
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir.
2008). Here, Appellants’ element 5 is anchored at the center and extends
radially outward whereas Weese is anchored at its circumferential perimeter
and extends radially inward. Weese is, therefore, not arranged as in the
claim. Id. Consequently, we do not sustain the anticipation rejection of
claim 1, nor do we sustain the rejection of claims 5, 8, 14, 22, and 23 that
depend therefrom.
Claim 9
Appellants argue that Weese fails to disclose the limitation in claim 9
directed to closing off at least a partial region of the jet splitter inlet. Appeal
Br. 17. Appellants further argue that Weese fails to disclose at least one by­
pass duct opening that is upstream of the jet splitter. Id. In support of their
argument, Appellants take the position that Weese’s central tube 8 is part of
jet splitter 6 and, therefore, cannot be upstream of itself. Id.
In response, the Examiner observes essentially that, since Weese’s
diaphragm 14 closes off all passages represented by radially spaced
holes 32, it necessarily satisfies a claim limitation directed to closing off at
least a partial region of jet splitter. Ans. 4. Furthermore, the Examiner
states that any position in Weese between fully open (Figure 2) and fully
closed (Figure 3) may be considered a partial closure within the meaning of
the claim. Id. Furthermore, the Examiner takes the position that the opening
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Application 12/516,422
of Weese’s tube 8 is upstream of the jet splitter and that it is sufficient to
meet the claim as long as the tube opening, as opposed to the entire tube
length, is upstream of the jet splitter. Id.
In reply, Appellants argue that the Examiner misconstrues the claim’s
use of the word “partial.” Reply Br. 5. Appellants provide a common
English language dictionary definition of “partial” as referring to something
less than the “whole.” Id?
Weese discloses inner member 6 that extends to and includes tube 8.
See Weese, col. 2,11. 41—59, Figs. 1—2. As illustrated in Figures 1—3,
resilient diaphragm 14 moves between an open position (Fig. 2) and a closed
position (Fig. 3). In the closed position, diaphragm 14 obstructs flow to all
of the radially spaced holes 32. See Weese, Figs. 1, 3. When diaphragm 14
is not in the closed position, fluid passes through by-pass channel 17 and
then through radially spaced holes 32. See id. at Fig. 2. When diaphragm 14
is in the closed position, fluid passes through the center of tube 8. See id. at
Fig. 3. We agree with the Examiner that the opening at the top of tube 8 is
upstream of the jet splitter and, therefore, satisfies the claim language
directed to a by-pass duct with an opening that is upstream of the jet splitter
in a flow direction.
We are unable to agree, however, with the Examiner’s position as to
what constitutes a “partial” opening. Claim 9 further provides that:
wherein the at least one throttling or closing element (5, 5') has
at least one throttling opening which has a clear throttle
opening cross section which is reduced in relation to a partial
region of the jet splitter inlet or a partial region of the clear
passage cross section of the jet splitter (2), which is covered by
3 Citing Merriam-Webster Online Dictionary: http://www.merriam-
web ster. com/ dictionary/partial.
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Application 12/516,422
the throttling or closing element (5,5') in the throttling or
closed position, of the clear passage cross section of the jet
splitter or in relation to the duct opening.
Claims App. (emphasis added). We do not agree with the Examiner’s
position that claim limitations directed to a “partial” region are satisfied by a
prior art disclosure that can only reasonably be construed as being applied to
an entire or whole region.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of claim 9.
Claim 15
Claim 15 is an independent claim that differs in scope from claim 9 in
that it contains a limitation: “the at least one throttling or closing element (5,
5') completely covers at least some of the plurality of openings in the jet
splitter plate.” Claims App.
Appellants argue that “Weese fails to show ‘at least one throttling or
closing element completely covering] at least some of the plurality of
openings in the jet splitter plate’ as claimed in claim 15.” Appeal Br. 20. In
response, the Examiner directs our attention to Figure 3 of Weese as closing
off, blocking, or covering at least some of the plurality of openings 32 of the
jet splitter. Ans. 5.
Figure 3 of Weese, as previously discussed, illustrates that when
diaphragm 14 is moved to the closed position, it blocks flow to all of radially
spaces holes 32 in the jet splitter (inner element 6). See Weese, Figs. 1,3.
Since it covers all of the radially spaced holes, it necessarily covers “at least
some” of the plurality of holes in the jet splitter plate. Thus, the Examiner’s
finding that diaphragm 14 covers “at least some” of the holes is supported by
a preponderance of the evidence.
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Application 12/516,422
That, however, does not end the inquiry as claim 15 also contains a
limitation that is essentially identical to that of claim 9 discussed above and
directed to a closing element that closes off at least one of: (1) a partial
region of the jet splitter inlet; (2) a partial region of the clear passage cross
section of the jet splitter; or (3) at least one by-pass duct which by-passes the
jet splitter. See Claims App. (claims 9 and 15). For reasons previously
discussed with respect to claim 9, we do not find that the Examiner’s
findings of fact are supported by a preponderance of the evidence.
Accordingly, we do not sustain the anticipation rejection of claim 15,
nor do we sustain the rejection of claims 16, 18, 19, and 21 that depend
therefrom.
Anticipation of Claims 12 and 13
by Nelson
Claim 12
Claim 12 is an independent claim. Claims App. The Examiner finds
that Nelson discloses all of the limitations of claim 12. Final Action 6—7. In
particular, the Examiner finds that element 30 of Nelson corresponds to the
claimed by-pass duct of claim 12. Id.
Appellants argue that Nelson element 30 is not a by-pass duct as
claimed. Appeal Br. 21. Appellants contend that fluid only flows through
passages 26, not central opening 30, which is stopped by flow control
element 50. Id. at 22.
In response, the Examiner states that claim 12 does not require an
open position where the by-pass duct allows for fluid to flow through it.
Ans. 5. We disagree.
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Application 12/516,422
Claim 12 requires:
a funnel-shaped ancillary or filter sieve (14) is positioned
upstream of the jet regulator in a flow direction, and a funnel
opening of the funnel shaped ancillary or filter sieve (14),
which is at a downstream side of the ancillary or filter sieve, is
embodied as a duct opening (13) of the at least one bypass duct
(12) of the admixing device (4).
Claims App. (emphasis added). Given the context of the claim which
specifies that the by-pass duct is a “duct opening,” we are of the opinion that
the claim requires the by-pass duct to allow fluid to pass through it at least
under certain operating conditions. In Nelson, central opening 30 is
completely and permanently blocked by element 50 and, therefore, does not
function as a by-pass duct to allow fluid to pass. Instead, all of the fluid
flow of Nelson, in operation, passes through flow passages 26. See Nelson,
col. 4,11. 11-21.
We do not sustain the anticipation rejection of claim 12, nor the
rejection of claim 13 that depends therefrom.
DECISION
The decision of the Examiner to reject claims 1,5,8, 9, 12—16, 18, 19,
and 21—23 is reversed.
AFFIRMED
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