Ex Parte Edwards et al

Patent Trial and Appeal Board

Aug 14, 2017

12898628 (P.T.A.B. Aug. 14, 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.
12/898,628 10/05/2010 David E. Edwards DEdwards002 4166
93756 7590
IPTechLaw
8350 E Raintree Dr., Ste 245
Scottsdale, AZ 85260
08/16/2017 EXAMINER
LOEPPKE, JANIE MEREDITH
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
ipdocket @ ip tech .law
adam@iptech.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID E. EDWARDS and KELLIE RAE EDWARDS
Appeal 2015-001616
Application 12/898,6281
Technology Center 3700
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the invention is directed to “a toilet
installation guide and methods for installing a toilet.” Spec., Abstract.
Claims 1, 9, and 19 are the sole independent claims on appeal. Below, we
reproduce claim 1, as illustrative of the appealed claims.
1 According to Appellants, “[t]he real parties in interest... are the
inventors. The exclusive licensee of the patent application is Danco, Inc.”
Br. 3.
Appeal 2015-001616
Application 12/898,628
1. A toilet installation guide, comprising:
a shaft comprising a shaft diameter and a shaft length, the
shaft length being substantially perpendicular to the shaft
diameter, the shaft comprising a substantially conical section
terminating in a substantially cylindrical section, the shaft further
comprising:
a bolt receiving portion at a first end of the shaft and
configured to receive a portion of an end of a bolt and align
the shaft length with a length of the bolt, the length of the
bolt being substantially perpendicular to a diameter of the
bolt; and
a taper at a second end of the shaft configured to
pass through an installation hole of a toilet and align the
installation hole with the bolt;
wherein the shaft comprises no male threads.
REJECTIONS AND PRIOR ART
I. The Examiner rejects claims 1, 3, 6, 8, 9, 11, 13, 16, and 17
under 35 U.S.C. § 102(b) as anticipated by Ladouceur
(US 5,644,830, iss. July 8, 1997).
II. The Examiner rejects claims 2, 4, 5, 7, 10, 12, 14, 15, and 18
under 35 U.S.C. § 103(a) as unpatentable over Ladouceur.
III. The Examiner rejects claims 1—20 under 35 U.S.C. § 103(a) as
unpatentable over Worley (US 3,419,298, iss. Dec. 31, 1968),
Abbate (US 4,850,063, iss. July 25, 1989), and Curtis
(US 4,710,082, iss. Dec. 1, 1987).
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Application 12/898,628
ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, in part, “[a] shaft
comprising a substantially conical section terminating in a substantially
cylindrical section.” Br., Claims App. Based on our review of Ladouceur,
we agree with Appellants that, as shown in Ladouceur’s Figure 8,
“Ladouceur does not disclose a ‘substantially conical section terminating in
a substantially cylindrical section’ but rather discloses a conical section,
followed by a hexagonal prism section, followed by a cylindrical section,
followed by another cylindrical section.” Br. 13; see also id. at 13—15.
Conversely, the Examiner does not establish adequately that Ladouceur’s
Figure 12 teaches the claimed shaft (see Answer 2), as Figure 12’s
assembly 72 appears to have a similar protective cap 76 as is shown in
Ladouceur’s Figure 8; both protective caps appearing to include “a conical
section, followed by a hexagonal prism section, followed by a cylindrical
section” as described by Appellants (see Ladouceur Figs. 8, 12). Further,
the Examiner does not establish adequately that any of Ladouceur’s
embodiments teaches a shaft including a substantially conical section
terminating in a substantially cylindrical section, as claimed, consistent with
the broadest reasonable interpretation of claim 1. See Answer 2.
Based on the foregoing, we do not sustain the anticipation rejection of
claim 1. We also do not sustain the anticipation rejection of independent
claim 9, which recites a limitation similar to that discussed above, and we do
not sustain the anticipation rejection of claims 3, 6, 8, 11, 13, 16, and 17 that
depend from claims 1 and 9.
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Appeal 2015-001616
Application 12/898,628
Rejection II
Inasmuch as we do not sustain the anticipation rejection of
independent claims 1 and 9, and the Examiner does not rely on any other
reference to remedy the deficiency in the independent claims’ rejection, we
also do not sustain the obviousness rejection of claims 2, 4, 5, 7, 10, 12, 14,
15, and 18 that depend from claims 1 and 9.
Rejection III
As set forth above, independent claim 1 recites, in part, “[a] shaft
[that] comprises no male threads.” Br., Claims App. The Examiner
determines that, although neither Worley nor Abbate discloses a shaft
without male threads,
Curtis . . . teaches that outer, smooth surfaces that produce a
friction fit are functionally equivalent to male threaded fits (col.
9, lines 30—34). It would have been obvious ... to use any
reasonably fastening feature for the outer surface of Worley, and
to select a smooth outer surface instead of male threads falls well
within the purview of the invention since the substitution of one
functionally equivalent structure for another involves only
routine skill in the art.
Non-Final Action mailed Dec. 4, 2013 (“Non-Final Action”), 7. Based on
our review of Curtis, however, we agree that the proposed modification
would impermissibly change Worley’s principle of operation. Br. 37.
For example, Worley states that
[i]t is a further object of the present invention to provide for a
novel and improved telescoping bolt assembly for closet bowls
and the like wherein. . . each bolt being fastened to the base of
the bowl through the cooperative use of a telescoping sleeve
inserted through each bolt-receiving opening into threaded
engagement with the bolt[,] and an upper cap threadedly
engaging the upper end of the sleeve, the cap being operative to
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Appeal 2015-001616
Application 12/898,628
tighten the bolt assembly and to effectively seal the entire bolt
assembly within the base of the bowl.
Worley col 1,11. 68—col. 2,1. 9 (emphasis added). As described in Worley’s
Abstract, “[a]n upper cap threadedly engages the upper exposed end of each
sleeve to tighten the bolt assembly and fasten the members together, and a
locking member serves to secure the bolts against rotation when the upper
caps are tightened on the sleeves.” Worley further states that “when the
cap 16 is tightened upon the female member 14 and urged into engagement
with the upper surface of the base B, it will serve to tighten the base B
against the flange while sealing off the bolt assembly and bolt-receiving
holes against the entry of foreign matter.” Id. at col. 3,11. 14—19. Thus, we
agree with Appellants that
[i]f [Worley were modified such that] there w[as] a friction fit
between the cap 16 and the female telescoping member 14
instead of threads, then rotation of the hex head portion 36 of the
cap 16 would not draw the female telescoping member 14 and,
correspondingly, the male telescoping member 12, upwards (or
allow disassembly, depending on the direction of rotation). The
rotation of the cap 16 using the hex head portion 36 would thus
not result in a tightening or loosening of the cap 16 with the
female and male telescoping members 14 and 12. Accordingly,
using a friction fit at that location would remove one of the main
functions of the female telescoping member 14 entirely and
would entirely change the principle of operation of the device.
Br. 37. Restated, we agree with Appellants because replacing Worley’s
threads with Curtis’s friction fit would appear unable to provide a sealed
assembly, as is discussed throughout Worley.
Based on the foregoing, we do not sustain the obviousness rejection of
claim 1, or of independent claims 9 and 19 that each recite a similar
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Appeal 2015-001616
Application 12/898,628
recitation. Further, we do not sustain the obviousness rejection of claims 2—
8, 10-18, and 20 that depend from the independent claims.
DECISION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 1—20.
REVERSED
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