Ex Parte Barrett

Patent Trial and Appeal Board

Jan 16, 2019

14680347 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/680,347 04/07/2015 Zachary Bradford Barrett
26252 7590 01/17/2019
KELLY & KELLEY, LLP
6320 CANOGA A VENUE
SUITE 1650
WOODLAND HILLS, CA 91367
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.
BARRET-56317 3748
EXAMINER
STELLING, LUCAS A
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
01/17/2019 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 ZACHARY BRADFORD BARRETT
Appeal2018-001451
Application 14/680,34 71
Technology Center 1700
Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 1, 3-19, 22, and 23, as well as the
Examiner's objection to the Specification under 35 U.S.C. § 132.
App. Br. 7-14.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellant identifies Zachary Bradford Barrett as the real party in interest.
App. Br. 2.
Appeal2018-001451
Application 14/680,347
BACKGROUND
The subject matter on appeal is directed to a dechlorinator unit for
water discharged from a fire hydrant. Spec. ,r 2.
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to relevant limitations at issue in this appeal:
1. A fire hydrant water discharge dechlorinator unit,
compnsmg:
a body having a first end adapted to be removably coupled
to a fire hydrant, the body defining a water passageway between
an inlet and an outlet thereof; and
a chamber fixedly extending through a side wall of the
body and having a bottom surface fixedly suspended in the water
passageway, the chamber defining an inner cavity configured for
reception of dechlorinating material therein, the inner cavity
being in fluid communication with the water passageway
through only a single aperture in the bottom surface of the
chamber, whereby water from the water passageway is drawn
into the inner cavity, circulated over the dechlorinating material
to create a homogeneous mixture of dechlorinating material and
water, and returned to the water passageway through the single
aperture in the bottom surface of the chamber with solute from
the dechlorinating material so as to neutralize chlorine in the
water before it is discharged from the body.
App. Br. 15.
STATEMENT OF THE CASE
The Examiner objects to the amendment to paragraph 27 of the
Specification filed January 18, 2017 as adding new matter. Final 2.
The Examiner rejects claim 22 under 35 U.S.C. § 112, first paragraph
as lacking written description for the recitation of "the bottom surface of the
chamber is fixedly suspended approximately half of the distance between the
side wall of the body and a central axis of the water passageway." Id. at 2-
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3. The Examiner also rejects claim 23 as lacking written descriptive support
for reciting a "side wall of the body" because the Examiner finds a lack of
antecedent basis for this language. Id. at 3.
The Examiner furthermore rejects claims 1, 3-19, 22, and 23 under 35
U.S.C. § I03(a) as unpatentable over the disclosure of Just,2 either alone or
in combination with other prior art. Id. at 4--20.
OPINION
Objection to the Specification
We first address the Examiner's objection to the Specification, noting
that, although objections are normally petitionable (not appealable) matters,
objections are properly before the Board if such objections "are [] directly
connected with the merits of issues involving rejections of claims." In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). Here, the objection is
sufficiently connected because Appellant relies on the objected-to language
to support its argument that claim 22, currently rejected under 35 U.S.C.
§ 112, first paragraph, does not contain new matter. App. Br. 8. Thus, this
objection is properly before us.
On January 18, 2017, Appellant filed an amended Drawing to Figure
3, as well as an amendment to paragraph 27 of the Specification. The
amendment to Figure 3 added center axis 51 to previous Figure 3 as depicted
below:
2 US 2011/0094949 Al, published April 28, 2011.
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4
6
10
\
~o 58
FIG. 3
As amended, Figure 3 illustrates a cross-sectional view of the
dechlorinator unit illustrating water flow from left to right. Spec. ,r 18.
Appellant also amended the last sentence of the Specification's paragraph 27
by adding the following language as underlined:
The chamber 52 protrudes through the side wall of the barrel 12
... such that the bottom wall of the chamber 52 is fixedly
suspended approximately half of the distance between the side
wall and the center axis 51 of the water passageway as shown in
FIG. 3.
Regarding the amendment to paragraph 27, the Examiner finds that
"the bottom wall of the chamber 52 is fixedly suspended approximately half
of the distance between the side wall and the central axis of the water
passageway" is new matter. Final 2. Appellant argues that "the entirety of
the original disclosure, including the depiction of FIG. 3, provides sufficient
support for this amendment to paragraph 27" because "the chamber 52 is
shown as protruding through the side wall of the barrel 12" and "the bottom
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Application 14/680,347
wall of the chamber 52 is suspended at some point between the side wall and
the center of the passageway 50. FIG. 3 depicts that this point as
approximately half of the distance between the side wall and the center axis
51." A B 7 pp. r. .
Appellant's argument is not persuasive. Our reviewing "court has
repeatedly cautioned against overreliance on drawings that are neither
expressly to scale nor linked to quantitative values in the specification."
Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012) (citing
Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951,956 (Fed.
Cir. 2000)
(HHI' s argument thus hinges on an inference drawn from certain
figures about the quantitative relationship between the respective
widths of the groove and fins. Under our precedent, however, it
is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the
issue.);
see also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (declining to find
that, based on a comparison of the relative dimensions of appellant's and
patentee's drawing figures, patentee's disclosure "clearly point[ ed] to the
use of a chime length of roughly 1h to 1 inch for a whiskey barrel"); In re
Wilson, 312 F.2d 449, 454 (CCPA 1963) (noting that specific dimensions
could not be established based on measurements of patent drawings); In re
Reynolds, 443 F.2d 384 (CCPA 1971) (considering the issue of whether
drawings supported claim language in an appeal from the Examiner's
rejection under 35 U.S.C. § 112, first paragraph).
Here, Appellant has neither alleged nor persuasively shown that
originally filed Figure 3 or its amended counterpart adding center axis 51 is
to scale or has quantitative markings sufficient to establish defined
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proportions to the individual elements depicted therein. App. Br., generally.
Further, Appellant's argument relying on "the entirety of the original
disclosure" for support (App. Br. 7) lacks sufficient specificity and amounts
to an invitation for us to review the entire disclosure to find such support.
This we decline to do.
Without some reference to the scale of the drawings, or quantitative
relationships between components depicted therein, our reviewing court's
precedent is clear - mere drawings, without more, are insufficient to
establish "precise proportions of the [ depicted] elements and may not be
relied on to show particular sizes if the specification is completely silent on
the issue." Hockerson-Halberstadt, Inc., 222 F.3d at 956. We, therefore,
sustain the Examiner's objection to the Specification.
Rejection under 35 U.S.C. § 112, 1st paragraph
We sustain the Examiner's rejection of claims 22 and 23 for lacking
written description support.
Regarding claim 22, Appellant relies on the amendment to paragraph
27 to demonstrate written descriptive support for "the bottom surface of the
chamber is fixedly suspended approximately half of the distance between the
side wall of the body and a central axis of the water passageway." App. Br.
8. We have found, however, that the Examiner properly objected to
Appellant's amendments to paragraph 27 adding such language. Appellant
cannot now rely on improperly added subject matter to serve as the basis of
adequate written description support. Thus, the rejection of claim 22 under
35 U.S.C. § 112 is sustained.
Regarding claim 23, Appellant does not contest this rejection, so we
summarily sustain it. App. Br. 8.
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Rejection of claims 1, 3-12, and 22 under 35 U.S.C. § 103(a)
With respect to the rejection of claims 1, 3, 9-12, and 22, Appellant
presents arguments only directed to independent claim 1. We, therefore,
select this claim as representative and decide the appeal on the basis of claim
1 alone. 3 37 C.F.R. § 4I.37(c)(l)(iv). Appellant also does not separately
argue the rejections of claims 4--8, dependent from claim 1. Thus, the
rejections of claims 3-12, and 22 stand or fall with the rejection of claim 1.
Relevant to this appeal, the Examiner finds that Just discloses a
chamber 21 fixedly extending through a side wall of body 56 and having a
bottom surface suspended in the water passageway. Final Act. 4--5. The
Examiner finds Just's chamber 21 is "fixed by a suspending lip [25]." Id. at
4. The Examiner finds that although Just does not expressly state that the
bottom of chamber 21 is "fixedly suspended," Just suggests a desire to
"maintain the bottom height of [ chamber 21] at a specific [point] both high
enough, and low enough, so that there is desired contact between the tablets
and the water." Id. at 6 ( citing Just ,r 7 5). The Examiner determines that it
would have been obvious to the skilled artisan to have provided chamber
21 's "bottom to be fixedly suspended in the water passageway in Just or Just
and LaCrosse[ 4J in order to provide for a desired height of the tablets in
[ chamber 21] ... as suggested by Just." Id.
3 We need not consider Appellant's argument regarding claim 22 because
the argument relies on limitations appearing in the claim that lack written
descriptive support. App. Br. 10-11.
4 US 7,137,568 Bl, issued November 21, 2006.
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Appellant argues that the prior art does not "teach and/ or show a
chamber fixedly extending through a side wall and having a bottom surface
fixedly suspended in the water passageway." App. Br. 9; Reply Br. 5---6.
In the Answer, the Examiner observes that the claims do not require the
chamber to be fixedly attached to the side walls of the body- rather, the
chamber must be fixedly extending through the body, which Just teaches by
virtue of chamber 21 being at least partially fixed by lip 25 and ridge 50.
Ans. 25-26. The Examiner also determines it would have been obvious to
"completely fix[] the location of the [chamber's] bottom" surface. Id. at 26.
In the Reply Brief, Appellant urges that Just fails to meet these limitations
because its chamber 21 "loosely hangs from a ledge" and is "certainly not
fixed to the side wall nor relative to any other structure insofar as the
[chamber] may raise above the ledge." Reply Br. 6.
We have considered Appellant's arguments (App. Br. 9-11; Reply Br.
5-7) and are unpersuaded that Appellant has identified reversible error in the
Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir.
2011 ). Therefore, we sustain the obviousness rejection of these claims based
on the findings of fact, conclusions of law, and rebuttals to arguments
expressed by the Examiner in the Final Action and in the Answer. We add
the following.
Appellant does not point to a definition of the term "fixed" - in the
Specification or otherwise - that excludes how chamber 21 of Just is
arranged within body 56. Here, the Examiner finds that chamber 21 is "at
least partially fixed by a lip [25] and ridge [50]." Ans. 26; see also Final
Act. 4 ( explaining how chamber 21 fixedly extends through a side wall of
Just's body because "the location of the chamber is fixed by a suspending
lip" (citing Just, Figs. 3A and 3B; ,r 72)). Appellant argues that Just's
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Application 14/680,347
chamber 21 "loosely hangs from a ledge," but "is certainly not fixed to the
side wall nor relative to any other structure insofar as the basket may raise
above the ledge." Reply Br. 6 (emphasis added); see also id. at 5 (urging
that "' [ fJixedly' is clear in that it requires attachment without relative
movement."). Without a firm definition in the Specification or other suitable
evidence regarding the meaning of the term "fixed" which excludes the
"partially fixed" arrangement disclosed in Just as found by the Examiner,
such arguments amount to no more than mere attorney argument.
"Attorney's argument in a brief cannot take the place of evidence." In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, the claim does not
require the chamber to be fixed "to the side wall," as Appellant argues
(Reply Br. 6), but rather requires the chamber to fixedly extend through a
side wall. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.").
Furthermore, to the extent Appellant is arguing for a construction of
the term "fixed" to mean "completely fixed," the Examiner applies
additional obviousness rationale in the Answer regarding the chamber's
"bottom surface fixedly suspended in the water passageway" that Appellant
does not fully address. See Ans. 26
(Furthermore, completely fixing the location of the bottom is
considered to be obvious to a person having ordinary skill in the
art ... [because] Just suggests ... a desire to maintain the bottom
height of the basket at a specific location both high enough, and
low enough, so that there is desired contact between the tablets
and the water (See [0075]). Accordingly, it would have been
obvious to a person having ordinary skill to provide for the
bottom to be fixedly suspended in the water passageway in Just
or Just and Lacrosse in order to provide for a desired height of
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the tablets in the basket at both a high and low enough level for
desired usage as suggested by Just.)
Appellant's argument in reply (Reply Br. 7) focuses on one
embodiment expressly disclosed in Just, and does not address the
Examiner's rationale to modify Just, or Just in view of Lacrosse, to provide
such "complete" fixing. Here, the Supreme Court of the United States
counsels us that the "obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents." KS1? lnt'l Co. v. Teleflex Inc., 550 U.S. 398,419
(2007). Thus, to the extent that "fixedly" is even properly constn1ed as
"complete" fixing as seemingly argued by Appellant, the Examiner has set
forth an obviousness rationale that AppeHant does not fully address. Ans.
26; Reply Br. 7.
For these reasons, and those provided by the Examiner, Appellant has
not identified reversible error in the Examiner's obviousness rejections of
claims 1, 3-12, and 22. We, therefore, sustain the Examiner's rejections of
these claims.
Rejection of claims 13-19 and 23 under 35 U.S.C. § 103(a)
Appellant presents arguments only directed to independent claim 13.
We, therefore, select this claim as representative and decide the appeal on
the basis of claim 13 alone. 5 37 C.F.R. § 4I.37(c)(l)(iv).
5 We need not consider Appellant's argument regarding claim 23 because
the argument relies on limitations appearing in the claim that lack written
descriptive support. App. Br. 13.
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Appellant relies on the same deficient arguments for reversal of the
rejection of claim 13 as relied on for claim 1. App. Br. 12-13. Having
found such arguments to be unpersuasive for claim 1, we likewise find them
unpersuasive for claim 13 for the same reasons.
Thus, the Examiner's rejections of claims 13-19 and 23 are sustained.
DECISION
The Examiner's objection to the Specification is affirmed.
The Examiner's final decision to reject claims 1, 3-19, 22, and 23 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).
AFFIRMED
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