Ex Parte Kah

Patent Trial and Appeal Board

Apr 3, 2018

13784156 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/784, 156 03/04/2013
2352 7590 04/05/2018
OSTROLENK FABER LLP
1180 A VENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
FIRST NAMED INVENTOR
Carl L.C. Kah JR.
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.
P/3426-296 4675
EXAMINER
BARRERA, JUAN C
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
04/05/2018 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL L.C. KAH JR.
Appeal2017-006473
Application 13/784, 156
Technology Center 3700
Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-20. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2017-006473
Application 13/784,156
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to irrigation sprinkler spray
nozzles." Spec. i-f 2. Apparatus claims 1 and 18 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A spray nozzle assembly comprising:
a housing element including an inlet configured to receive
water from a supply, the housing element including a central bore
defining a flow path for the water;
a plurality of fluidic oscillating nozzle chambers positioned
circumferentially around the housing and configured to selectably
distribute water from the spray nozzle assembly; and
a valve member in the central bore of the housing and
configured to selectably control flow of water through the flow path
and to the plurality of nozzle chambers, such that only selected nozzle
chambers distribute water.
REFERENCES RELIED ON BY THE EXAMINER
Sesser et al. US 7,032,836 B2 April 25, 2006
Miller et al. US 2010/0078501 Al April 1, 2010
Allen et al. US 2010/0090036 Al April 15, 2010
Walker et al. US 2010/0108787 Al May 6, 2010
THE REJECTIONS ON APPEAL
Claims 1-13, 15, 16, and 18-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Walker and Allen.
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Walker, Allen, and Miller.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Walker, Allen, and Sesser.
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Application 13/784,156
ANALYSIS
The Examiner rejects both independent claims 1 and 18 stating that
Walker teaches these limitations with the exception that Walker does not
teach the limitation directed to oscillating nozzle chambers/cavities. Final
Act. 3, 8. The Examiner relies on Allen for such teaching (referencing
Allen's inserts 101) and concludes that it would have been obvious to insert
Allen's inserts into Walker's chambers/cavities "to provide the spray nozzle
with a[] uniform flow distribution." Final Act. 3, 8 (referencing Allen i-f 10).
In KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), we have been
instructed that "[ r ]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR, 550 U.S. at 418. Here, the Examiner's conclusion
regarding uniform flow distribution is supported by Allen's teachings on this
point. See, e.g., Allen Title, Abstract, i-fi-19, 10. However, the primary
reference to Walker already teaches uniform flow distribution. See, e.g.,
Walker Abstract, i-fi-1 11, 19, 22, 77. The Examiner does not explain why
Walker, already providing uniform flow distribution, might require
modification by the inclusion of Allen's inserts, for further uniform flow
distribution. In short, because Walker already teaches the benefit relied
upon by the Examiner for combining Allen with Walker, we conclude that
the Examiner failed to provide "articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." See supra. In
other words, we are not of the opinion the Examiner has presented a prima
facie case of obviousness, as is required under KSR, to support the
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Application 13/784,156
Examiner's obviousness rejection of independent claims 1 and 18 over
Walker and Allen.
Further, Appellant addresses the Examiner's statement that 'just a
portion of [Allen's] inserts can fit in [Walker's] passages and it would be
enough to generate the oscillating spray pattern." App. Br. 3 (quoting Final
Act. 11). Appellant contends, "[t]he Examiner, however, unacceptably, fails
to provide any support for this assertion, either in the cited art or elsewhere."
App. Br. 3 (referencing In re Warner, 379 F.2d. 1011 (CCPA 1967)).
Warner provides the following instruction:
The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in its factual basis. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of
the Patent Office determination when there are deficiencies in
the record as to the necessary factual bases supporting its legal
conclusion of obviousness.
Warner, 379 F.2d at 1017. Consistent with our discussion above, we cannot
"resolve doubts in favor of the Patent Office determination when there are
deficiencies in the record as to the necessary factual bases supporting its
legal conclusion of obviousness." 1 See supra.
We further note Appellant's arguments regarding Walker's passages
676 as being "tortuous and divergent" (App. Br. 3; Reply Br. 1, 2), but
Walker explains that this description applies to "one preferred form" of the
1 The Examiner does not address any finding of obviousness based on
substituting Allen's oscillating spray configurations ("as shown in FIGS.
lA-5" (Allen i-f30)) for Walker's configuration (see Walker i-f 103). We
form no opinion on a topic not under review.
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Application 13/784,156
passages, and Walker does not preclude other constructions for these
passages. Walker ii 103. The Examiner, nevertheless, responds "changes in
shape in order to accommodate the insert into the passage are considered an
obvious design choice." Ans. 11. Appellant does not explain how the
Examiner might be in error on this point.
The Examiner also states (for the first time) that, "[p]assages 676 of
Walker can be replaced by the slots 110 to accommodate the inserts 101 as
taught by Allen." Ans. 10-11. This new "replacement of the passages
themselves" rationale differs from the Examiner's original "add inserts
thereinto" rationale. Appellant notes this new argument and explains, "one
skilled in the art could not simply replace the passages 676 of Walker with
the chamber 110 of Allen without completely redesigning the entire
sprinkler of Walker." Reply Br. 2.
Walker describes twelve passages 676 distributed about a circle and
Walker also states, "each flow passage inlet 675 is relatively small in cross-
sectional area compared to the corresponding flow passage outlet 677."
Walker ii 103. In contrast, Allen relies on a maximum of only four fluidic
passages because Allen teaches that each passage "is used to produce an
oscillating 90 degree wide fan-shaped pattern of spray." Allen iii! 31-33.
Allen also discloses a flow path whose inlet is depicted as being larger than
its necked-down outlet. See Allen Figs. 2--4 (see also In re Mraz, 455 F .2d
1069, 1072 (CCPA 1972) ("[W]e did not mean that things patent drawings
show clearly are to be disregarded."). The Examiner does not indicate how
these changes are to be accommodated or achieved and, lacking same,
Appellant's contention about "completely redesigning the entire sprinkler of
Walker" appears to have merit.
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Application 13/784,156
Appellant also presents a new argument that Walker's corresponding
nozzle chamber/cavities 676 are for close-in irrigation whereas Allen's insert
101 "is not designed to provide close-in irrigation." Reply Br. 2. In view of
our discussion of the Examiner's new rationale above, we likewise address
Appellant's new argument out of fairness to Appellant. However,
Appellant's new argument is not persuasive because Figure 5 of Allen
illustrates "TOP" and "BOTTOM" spray patterns which are understood to
irrigate areas farther out and closer in, respectively. Furthermore, Paragraph
32 of Allen teaches that the spray "could be a single spray or a double spray
(e.g., as shown in FIG. 5)." Hence, we understand that Allen's inserts can
be employed to provide a single "BOTTOM" (close-in) irrigation if desired.
Accordingly, Appellant's contention that Allen's insert 101 "is not designed
to provide close-in irrigation" (Reply Br. 2) is not persuasive of Examiner
error.
Claim 18 includes the additional limitation of "a circular plate
including multiple fluidic oscillating stream nozzle cavities molded therein."
The Examiner identifies Walker's "circular plate 660 having passages 676"
as disclosing this limitation. Ans. 11. Figure 21 of Walker illustrates plate
660 having passages 676 formed therein (see also Walker i-f 103) which is
contrary to Appellant's contention that "passages 676 are not formed in the
plate 660" and "Walker does not include any sort of 'cavities molded
therein. "'2 Reply Br. 3. Appellant does not explain how the Examiner
might be mistaken on this point, and as such, we are not persuaded of
Examiner error.
2 Appellant also repeats the argument that Allen's "inserts 101 are
incompatible with the passages 676." Reply Br. 3.
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However, as indicated above, due to a lack of articulated reasoning
with rational underpinning that would support a conclusion of obviousness,
we do not sustain the Examiner's rejection of claims 1-13, 15, 16, and 18-
20 as unpatentable over Walker and Allen.
Regarding the separate, additional rejections of dependent claims 14
and 17 in view of Miller and Sesser, respectively, the Examiner does not
employ these additional references in a manner that might cure the above
defect regarding the reason to combine Walker and Allen. For similar
reasons, we likewise do not sustain the Examiner's rejections of claims 14
and 17.
DECISION
The Examiner's rejections of claims 1-20 are reversed.
REVERSED
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