13190402 - (D) (P.T.A.B. Oct. 21, 2019)

ZOLLER, Uwe

Patent Trials and Appeals BoardOct 21, 2019

13190402 - (D) (P.T.A.B. Oct. 21, 2019)

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. 13/190,402 07/25/2011 Uwe ZOLLER SMB-PT155.2- PC04019BUSCIP 2060 164469 7590 10/21/2019 John Cordani Robinson & Cole LLP 280 Trumbull Street Hartford, CT 06103 EXAMINER BOECKMANN, JASON J ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 10/21/2019 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): jcordani@rc.com jlc247@cornell.edu PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UWE ZOLLER Appeal 2016-007552 Application 13/190,402 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and ANNETTE R. REIMERS, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Uwe Zoller, Appellant,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant states that the sole real party in interest is Neoperl GmbH. Appeal Br. 3. Appeal 2016-007552 Application 13/190,402 2 STATEMENT OF THE CASE The Specification The Specification’s disclosure “relates to a sanitary insert unit, which can be inserted into a discharge fitting, comprising an essentially conical- shaped upstream sieve with a downstream throughflow regulator and a jet regulator located further downstream in the direction of the flow.” Spec. ¶5. The Claims Claims 1–12 are rejected; no other claims are pending. Final Act. 1. Claims 1 and 8 are independent; all other claims ultimately depend from either claim 1 or claim 8. Appeal Br. 14–16. Claim 1 is illustrative and reproduced below with emphasis added. 1. A sanitary unit (1), configured for insertion into a discharge fitting, comprising: a conical upstream sieve (2) having an inner surface and an outer surface; a throughflow regulator (3), immediately adjacent the sieve (2), comprising a control gap (10) and a throttle body (8) that deforms under pressure to regulate throughflow varying the control gap (10); a jet fractionating plate (4), immediately adjacent the throughflow regulator (3), comprising a plurality of openings (20) in a throughflow direction positioned downstream, in a flow direction, from the throughflow regulator (3) and the sieve, wherein the throughflow regulator (3) is contained within an interior space (6) of the unit (1) defined between the sieve (2) and the jet fractionating plate (4) and wherein the throughflow regulator (3) has the same general slope as the inner surface of the sieve (2). Id. at 14 (emphasis added). Appeal 2016-007552 Application 13/190,402 3 The Examiner’s Rejections The rejections before us for review are: 1. claims 1–12, under 35 U.S.C. § 102(b) (pre-AIA), as anticipated by WO 01/96673 A1, published Dec. 20, 2001 (“Grether”) (Final Act. 2); and 2. claims 1–12, under 35 U.S.C. § 103(a) (pre-AIA), as unpatentable over Grether (Final Act. 4). Oral Hearing An oral hearing was held October 1, 2019. A transcript of the hearing will be entered in due course. DISCUSSION Independent claims 1 and 8 recite “wherein the throughflow regulator (3) has the same general slope as the inner surface of the sieve (2).” Appeal Br. 14–16. In both rejections, the Examiner relies on Grether for meeting this limitation. Final Act. 2–5. Appellant argues that the Examiner has misconstrued this limitation in reaching that finding. See, e.g., Appeal Br. 7–8 (“The claims do not recite ‘at least a part of the throughflow regulator has the same general slope as a part of the sieve’ as interpreted by the Examiner.”). The dispute in the construction of this limitation, or at least its application to Grether, is most easily gleaned from contrasting the Examiner’s annotations of Figure 5 of Grether on page 4 of the Answer with Appellant’s annotated versions of Appellant’s Figures 1 and 4 on page 4 of the Reply Brief. Compare Ans. 4, with Reply Br. 4. We are persuaded by Appellant that the Examiner’s mapping of this limitation to Grether relies on an unreasonable claim interpretation. Appeal 2016-007552 Application 13/190,402 4 Specifically, the Examiner’s reliance on the horizontal slope of the inner surface of the relatively small central portion of Grether is erroneous. That slope is not the “general slope” of Grether’s inner surface. It is not reasonable to consider only the central portion of Grether’s sieve to the exclusion of the overall sieve structure (which has a pitched slope) in determining its general slope. Our understanding of the meaning of “general slope” is informed by Appellant’s Figures 3 and 4 as well as the Specification’s description that: The central core region 7, the throttle body 8, and the rising sloping surface 9 are sized such that the cross-sectional profile of the throughflow regulator 3 is substantially form- fitting to the cross-sectional profile of the upstream sieve 2, with the rising sloping surface 9 and the upstream sieve 2 being distanced from one another. Spec. ¶29. In other words, the cross-sectional profile of “[t]he central core region 7, the throttle body 8, and the rising sloping surface 9”—all components of the throughflow regulator 3—is “substantially form-fitting to the cross-sectional profile of the upstream sieve 2.” Id. Thus, the inner surface of the sieve is described as form-fitting with the cross-sectional profile of, not just the central core region of the through flow regulator, but also the throttle body 8 and the rising sloping surface 9. The Examiner’s application of the claims to Grether erroneously focuses on only a relatively small portion of the inner surface of the Grether sieve. Accordingly, we reverse the anticipation and obviousness rejections of all claims. Appeal 2016-007552 Application 13/190,402 5 OUTCOME SUMMARY TABLE Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–12 102(b) Grether 1–12 1–12 103(a) Grether 1–12 Overall Outcome 1–12 REVERSED