Ex Parte Swarts

Patent Trials and Appeals Board

Jul 29, 2013

11557858 - (D) (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DOUGLAS R. SWARTS
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Appeal 2010-012428
Application 11/557,858
Technology Center 3700
____________________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Douglas R. Swarts (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s rejection of claims 1-11. App. Br. 3.1 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). We affirm.

CLAIMED SUBJECT MATTER
Claims 1, 6, and 9 are independent. Claim 1 is representative and
reads:
1. An apparatus comprising:
a flexible hose having an input and an
output, said flexible hose capable of extending in

1 Appellant filed a Response on January 3, 2103, in which claims 1-3, 6-9,
and 11 were amended, and dependent claim 10 was cancelled. Appellant
stated in the Response that “[b]y this response prosecution is reopened.” See
Response 1. However, Appellant did not also file a Request for Continued
Examination with the Response to request withdrawal of the Appeal and
reopening of prosecution. See 37 C.F.R. § 1.114(d). Accordingly,
Appellant’s filing of the Response was insufficient to reopen prosecution
before the Examiner. 37 C.F.R. § 41.33(b) states “Amendments filed on or
after the date of filing a brief pursuant to § 41.37 may be admitted: (1) To
cancel claims, where such cancellation does not affect the scope of any other
pending claim in the proceeding, or (2) To rewrite dependent claims into
independent form.” Appellant’s claim amendments do not only cancel
claims, and do not rewrite any dependent claim into independent form, and
thus, may not be admitted under 37 C.F.R. § 41.37(b). 37 C.F.R. § 41.33(c)
states “[a]ll other amendments filed after the date of filing an appeal
pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as
permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c).” We
note that the claim amendments also do not meet the requirements of 37
C.F.R. § 41.33(c). Accordingly, we do not consider the claim amendments,
but consider the claims listed in the Claims Appendix of the Appeal Brief
filed on February 19, 2009, as the claims on appeal.

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length, maintaining a length, and retracting in
length;
a source of material to be transferred
through said flexible hose wherein said source of
material to be transferred is in communication with
said flexible hose input; and
a sheath through which said flexible hose
may extend and retract.

REJECTIONS
1. Claims 1-3 are rejected under 35 U.S.C. § 102(e) as
unpatentable over Schoellhorn (US 2002/0189673 A1; pub. Dec. 19, 2002).
2. Claims 4-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoellhorn and Croft (US 6,491,062 B1; iss. Dec. 10,
2002).
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schoellhorn and Knappmiller (US 6,578,762 B1; iss. Jun. 17, 2003).
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schoellhorn and Buxton (US 5,135,258; iss. Aug. 4, 1992).
5. Claim 10 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.2

ANALYSIS
Rejection of claims 1-3 – Anticipation – Schoellhorn
Claim 1
The Examiner found that Schoellhorn discloses an apparatus
comprising each and every limitation of claim 1, including a flexible hose

2 This is a new ground of rejection made in the Examiner’s Answer mailed
July 7, 2010 (referred to hereinafter as “Ans”). Ans. 5-7.
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(waste hose 42), which may extend, retract, and maintain a length. Ans. 3
(see also Schoellhorn, para. [0015], figs. 1, 3).
Appellant contends that Schoellhorn does not disclose a flexible hose
capable of extending in length, maintaining a length, and retracting in length
because Schoellhorn does not mention “maintaining a length.” App. Br. 13;
Reply Br. 14. Appellant also contends that Schoellhorn states that the
extended hose is interconnected with a waste receptacle (citing para. [0016])
and the user disengages the hose from the receptacle for retraction (citing
para. [0018]). Id. Appellant also contends that Schoellhorn’s hose does not
maintain a length, rather the interconnection does. Id. These contentions are
not persuasive.
Schoellhorn discloses that “[t]he pressure exerted on the end portion
of the waste hose 42, capped by a detachably engageable cover 54, will
cause the waste hose 42 to slide outwardly from the recreational vehicle 20,
as illustrated in FIG. 2.” See Schoellhorn, para. [0016]. Schoellhorn also
discloses that “[a]fter extending the waste hose 42 the cover 54 is removed
and the waste hose 42 is interconnected with the suitable waste receptacle.”
Id. The Examiner found that “a finite time period will elapse between the
full extension of the hose and the removal of the cap 54,” and that it is
inherent that Schoellhorn’s waste hose 42 will be maintained in the extended
position during the finite time period. Ans. 7.
Claim 1 recites that “said flexible hose capable of . . . maintaining a
length.” Emphasis added. Claim 1 does not specify that the flexible hose is
capable of maintaining any particular length. To the extent that Appellant
may be contending that claim 1 requires that the flexible hose is capable of
maintaining an extended length, we do not construe claim 1 so narrowly.
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Claim 1 also does not specify any amount of time that the flexible hose must
be capable of “maintaining a length.” Appellant does not identify any
disclosure in Schoellhorn that the waste hose 42 is incapable of maintaining
“a length” during the “finite time period” indicated by the Examiner, or that
the waste hose 42 can only maintain “a length” by being interconnected to
the waste receptacle. Accordingly, as Appellant has not apprised us of any
error in the Examiner’s findings or reasoning, we sustain the rejection of
claim 1.
Claim 2
Claim 2 depends from claim 1 and calls for “a nozzle having an input
and an output, said nozzle input in communication with said flexible hose
output.” The Examiner found that “the end few inches of [Schoellhorn’s]
hose 42 is considered as [a] nozzle.” Ans. 3.
Appellant contends that Schoellhorn does not disclose a “nozzle.”
App. Br. 13; Reply Br. 14. Appellant also contends that the Examiner
provided no legal support for being a lexicographer, that the Specification
provides “excruciating detail on what a nozzle is,” and if a dictionary
definition is used for interpretation, a “nozzle” is defined as “‘a short tube
with a taper or constriction used (as on a hose) to speed up or direct a flow
of fluid.’”3 App. Br. 13-14; Reply Br. 15. These contentions are not
persuasive.
The Examiner acknowledged that the Specification discloses
variations of the nozzle, but stated that it only ascribes that the nozzle “[be]
able to provide an outlet for waste from the hose into the waste receptacle.”

3 We note that this definition of “nozzle” is found in Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003).
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Ans. 7. The Examiner also stated that Schoellhorn’s hose provides an outlet
for waste from the hose into the waste receptacle, and reading the terminal
portion of the hose as a nozzle is reasonable and consistent with the
disclosure. Id.
The Patent and Trademark Office gives claims their broadest
reasonable interpretation consistent with the specification, reading claim
language as it would be interpreted by one of ordinary skill in the art. See In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here,
Appellant does not direct us to a specific definition of the term "nozzle" in
the Specification. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
While Appellant’s Specification discloses variations of the nozzle, “a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.” See
Superguide Corp., v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). Here, the claim language is broad and does not specify the structure
and/or function of the “nozzle.” Accordingly, it is improper to read a
particular embodiment of the nozzle appearing in the written description into
the claim.
Where the Specification does not assign or suggest a specific
definition to a claim term, it is appropriate to consult a general dictionary
definition of the term in determining its ordinary and customary meaning to
one of ordinary skill in the art. See Comaper Corp. v. Antec., Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). Accordingly, it appropriate to consult a general
dictionary definition of the term “nozzle.”4 We note that an ordinary

4 See also In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“Absent an
express definition in their specification, the fact that appellants can point to
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meaning of “nozzle” is “a projecting pipe or spout from which fluid is
discharged.”5 This definition appears to be similar to the Examiner’s
interpretation, as well as consistent with the Specification and also met by
Schoellhorn. Moreover, Appellant does not adequately explain why
Schoellhorn does not meet the dictionary definition of “nozzle” it provided.
Accordingly, we sustain the rejection of claim 2.
Claim 3
Claim 3 depends from claim 1 and calls for “an extend/retract module
in gas communication with said flexible hose.” The Examiner found that
Schoellhorn “discloses the extension/retraction of the hose to be achieved
remotely by the user through the actuation of a valve (50 and 52) and
broadly teaches the use of any suitable automatic extension and retraction
system.” Ans. 3.
Appellant questions what the Examiner considers equivalent to “an
extend/retract module” in Schoellhorn. App. Br. 14; Reply Br. 15-16. In
response, the Examiner explained that “one of ordinary skill in the art would
understand that the control system of Schoellhorn . . . including the valves
for extending and retracting the hose, make up the cited module when taken
either individually or collectively.” Ans. 8. We understand that the
Examiner determined that the control system, which includes valves 50, 52,
for extending and retracting waste hose 42, is an “extend/retract module” in

definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
supports its interpretation.”).
5 See nozzle. Dictionary.com. Collins English Dictionary - Complete &
Unabridged 10th Edition. HarperCollins Publishers.
http://dictionary.reference.com/browse/nozzle (accessed: July 20, 2013).

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Schoellhorn’s system.6 Appellant’s contentions in the Reply Brief do not
apprise us of any error in the Examiner’s findings. See Reply Br. 15-16.
Accordingly, we sustain the rejection of claim 3.

Rejection of claims 4-9 – Obviousness - Schoellhorn and Croft
Claim 4
Claim 4 depends from claim 3 and calls for “a handheld remote
control” and “a receiver capable of responding to a signal from said
handheld remote control and said receiver operatively coupled to said
extend/retract module.” The Examiner found that Schoellhorn “teaches the
extension/retraction of the hose to be achieved remotely by the user through
the actuation of a valve (50 and 52) and broadly teaches the use of any
suitable automatic extension and retraction system.” Ans. 4. The Examiner
found that Schoellhorn does not disclose a handheld remote control and a
receiver to control the valve. Id. The Examiner relied on Croft for
disclosure of a handheld remote control 12 and a receiver (antenna 50
connected to transceiver 46), and concluded that it would have been obvious
to provide a remote control in Schoellhorn to remotely control the valve, as
taught by Croft. Id. (see also Croft, col. 4, ll. 16-18; fig. 2).
Appellant contends that Croft discloses a receiver 46 for a sprinkler
bypass, not valve control, and that Croft’s cut-off valve 42 is controlled by
the water meter 40. App. Br. 15; Reply Br. 18. Appellant also contends that
the combination of Schoellhorn and Croft does not disclose a receiver
operatively coupled to an extend/retract module. App. Br. 16; Reply Br. 18.

6 Schoellhorn also discloses an automatic electrical extension/retraction
system. See Schoellhorn, para. [0016].
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In response, the Examiner explained that Croft is applied for teaching
a handheld remote control and an associated receiver for controlling an
electrically-operated apparatus. Ans. 8. The Examiner stated that one
skilled in the art would apprehend that a handheld remote and an associated
receiver, as taught by Croft, is useful for controlling a multitude of
electrically-operated devices, and would appreciate that its use with
Schoellhorn’s system would produce an operable, useful combination. Id.
We note that Croft discloses that the internal components of the water
shut-off 10 are controlled remotely by the handheld device 12. See Croft,
col. 3, ll. 52-62; figs. 1 and 2. The water shut-off 10 includes antenna 50
and transceiver 46, which receives signals from handheld device 12 and is
electrically connected to cut-off valve 42. See Croft, col. 4, ll. 16-18, 27-34;
fig. 2. We agree with the Examiner that it would have been obvious to one
skilled in the art to modify Schoellhorn’s apparatus by incorporating Croft’s
teachings. Croft shows that using a handheld remote and an associated
receiver for remotely controlling a system including a fluid control valve is a
known technique. We agree with the Examiner that applying Croft’s
teachings to Schoellhorn would produce an improved system providing
remote control of the extension/retraction of the waste hose 42. Appellant
has not provided any persuasive argument or evidence that applying this
known technique to Schoellhorn would not have yielded predictable results.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly,
we sustain the rejection of claim 4.
Claim 5
Claim 5 depends from claim 4 and calls for “a nozzle box.” The
Examiner found that Schoellhorn discloses a nozzle box 60. Ans. 8.
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Appellant contends that Schoellhorn discloses a movable support 60, not a
nozzle box. App. Br. 16; Reply Br. 19. However, claim 5 does not specify
any particular structure for the “nozzle box,” and Appellant does not provide
any persuasive argument or evidence as to why the support 60 does not meet
this claim limitation. Hence, we sustain the rejection of claim 5.
Claims 6-9
As to independent method claim 6, Appellant contends that
Schoellhorn in view of Croft discloses valves and a water sprinkler bypass,
which is not controlling the valves, and does not disclose the claimed
“extend/retract module.” App. Br. 16; Reply Br. 20. For reasons discussed
supra, however, we find no error in the Examiner’s finding that Schoellhorn
discloses the claimed “activating” and “receiving steps,” and the
“extend/retract module.” In addition, we find no error in the Examiner’s
conclusion that it would have been obvious to combine the teachings of
Schoellhorn and Croft to perform the step of “controlling an extend/retract
module based on said received signal from said handheld remote control.”
Accordingly, we sustain the rejection of claim 6.
Appellant relies on the dependency of claim 7 from claim 6 for
patentability. App. Br. 17; Reply Br. 21. Appellant’s contention that the
combination of Schoellhorn and Croft “does not disclose or suggest a
handheld remote control controlling an extend/retract module and extending
said flexible hose by supplying a positive gas pressure with respect to local
atmospheric pressure to [an] inside of said flexible hose” is not persuasive.
See Reply Br. 21. The Examiner’s modification of Schoellhorn in view of
Croft would result in Schoellhorn’s valve being remotely controlled by
signals transmitted by a handheld remote control to result in the supply of
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positive gas pressure to extend the waste hose 42. Accordingly, we sustain
the rejection of claim 7.
Appellant also relies on the dependency of claim 8 from claim 6 for
patentability. App. Br. 17; Reply Br. 21. Appellant’s contention that the
combination of Schoellhorn and Croft “does not disclose or suggest a
handheld remote control controlling an extend/retract module and extending
said flexible hose by supplying a negative gas pressure with respect to local
atmospheric pressure to [an] inside of said flexible hose” (see Reply Br. 22)
is not persuasive for reasons similar to those discussed supra for claim 7.
Accordingly, we sustain the rejection of claim 8 for similar reasons.
As to independent apparatus claim 9, Appellant contends that
Schoellhorn in view of Croft discloses valves and a water sprinkler bypass,
which is not controlling the valves, and does not disclose the claimed
“activating an extend/retract module.” App. Br. 17; Reply Br. 22-23. For
reasons discussed supra, Croft discloses elements for “receiving and
responding to a handheld remote control device.” In addition, we find no
error in the Examiner’s finding that Schoellhorn discloses the claimed
“extend/retract module,” or the Examiner’s conclusion that it would have
been obvious to combine the teachings of Schoellhorn and Croft to provide
“means for activating an extend/retract module in communication with an
extendible hose.” Accordingly, we sustain the rejection of claim 9.

Rejection of claim 10 – Indefiniteness
Claim 10 depends from claim 9 and calls for “means for charging a
fee for said transferring material through said extendible hose.” The
Examiner found that this limitation is a means-plus-function claim limitation
under 35 U.S.C. § 112, sixth paragraph, and that because the Specification
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lacks sufficient disclosure corresponding to this “means,” the scope and
meaning of this limitation is indefinite. Ans. 5-7.
Appellant contends that the Specification identifies the “means plus
function as well as the structure.” Reply Br. 27. Appellant contends that
Figure 13, at 1304, illustrates service utilities and their status, thus showing
structure of transfer status. Id. Appellant also contends that Figure 37, at
3702, shows the means for transfer, and that paragraph [0086] of the
Specification [0086] recites a charge associated with the transfer. These
contentions are not persuasive.
Paragraph [0086] of the Specification describes “one embodiment of
the invention not illustrated involves the transfer of a debit and/or a credit.
This may be, for example, a charge that is associated with the dumping of
waste, etc.” Emphasis added. This paragraph explicitly states that the as-
described embodiment is not illustrated. Moreover, paragraph [0086] does
not describe any structure associated with the transfer of a debt and/or a
credit. Appellant does not identify any disclosure that element 1304
depicted in Figure 13 is related to the embodiment described in paragraph
[0086]. Element 3702 shown in Figure 37 is merely a hose. "[I]f one
employs means-plus-function language in a claim, one must set forth in the
specification an adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112." In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). We agree with the
Examiner that the Specification fails to disclose sufficient structure for the
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claimed means, making the scope and meaning of claim 10 indefinite. We
sustain the rejection of claim 10 under 35 U.S.C. § 112, second paragraph.

Rejection of claim 10 – Obviousness - Schoellhorn and Knappmiller
In light of the rejection of claim 10 under 35 U.S.C. § 112, second
paragraph, we exercise our discretion to not address this rejection of claim
10 over the prior art. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).

Rejection of claim 11 – Obviousness - Schoellhorn and Buxton
Claim 11 depends from claim 2 and recites “said nozzle further
comprises a handle.” The Examiner found that Buxton discloses a nozzle 40
with a handle. Ans. 4, 9 (citing Buxton, fig. 2). The Examiner concluded
that it would have been obvious to provide a handle as taught by Buxton in
Schoellhorn to operate the nozzle with a handle.
Appellant contends that Buxton discloses a nozzle unit 40, but not a
handle. App. Br. 20; Reply Br. 29. We note that Buxton describes the
nozzle unit 40 having a lever 44. See Buxton, col. 4, ll. 14-17. However,
reference number 44 in Figure 2 of Buxton appears to correspond to a
curved structure extending below the “lever” identified by reference number
44 in Figure 1. As Appellant has not apprised us of any error in the
Examiner’s finding or conclusion, we sustain the rejection of claim 11.

DECISION
The rejection of claims 1-11 is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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