Ex Parte YAGI et al

Patent Trials and Appeals Board

Jan 24, 2019

13624026 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/624,026 09/21/2012
21828 7590 01/28/2019
CARRIER BLACKMAN AND ASSOCIATES PC
22960 VENTURE DRIVE
SUITE 100
NOVI, MI 48375
Shinichi YAGI
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.
CHI-122-A 6361
EXAMINER
PERRIN, CLARE M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
cbalaw@gmail.com
wblackman@ameritech.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI YAGI, TOMOY ASU ICHIKI, HIROAKI AMEMORI,
A YUMU UMEMOTO, YO MOROTOMI, and
MASAHIRO YAMAMOTO
Appeal2017-002765
Application 13/624,026
Technology Center 1700
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Sept. 21, 2012, as amended ("Spec."); Final Office Action dated Feb. 11, 2016
("Final"); Appeal Brief filed July 11, 2016 ("Br."); and Examiner's Answer dated
Oct. 20, 2016 ("Ans.").
Appeal2017-002765
Application 13/624,026
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1--4, 7, 8, 13-16, 18, 21, 23-25, 27, 28, 30-33, and 37. An
oral hearing was held before this Board panel on January 17, 2019. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter two new grounds of rejection.
According to the Specification, residual water on surfaces of water area
equipment, such as washing stands, evaporates to form water scale that is difficult
to remove. Spec. ,r 2. Water scale based on silicic acid is adhered more easily and
involves more difficulties for removal than water scale based on magnesium and
calcium. Id. The inventors are said to have discovered "that water scale can be
reduced by inhibiting polymerization of silicic acid." Id. ,r 13. Exemplary
inhibitors "are aqueous solutions having a high acidity, more specifically aqueous
solutions that can adjust the acidity of residual water to pH 1.5 to 5 .5, preferably
pH 2.0 to 5.0." Id. ,r 18. The inhibitor may be added to water supplied to water area
equipment to allow the inhibitor to exist in the residual water. Id. Alternatively, the
inhibitor may be supplied to the water area equipment before or after formation of
residual water on the surface thereof. Id.
Independent claims 1 and 13 are representative of the claimed invention, and
are reproduced below.
1. A water area equipment utilizing common tap water comprising: a
water area equipment body having an external surface, the water area
equipment body being configured to be connected to a supply source
of common tap water such that common tap water from the supply
source may be selectively applied to the external surface of the water
area equipment body and deposited as residual water; and a unit
which adds an inhibitor for silicic acid polymerization to the common
2 The Appellant is the Applicant, Toto Ltd., also identified as the real party in
interest. Appeal Br. 1.
2
Appeal2017-002765
Application 13/624,026
tap water deposited as residual water on the external surface of the
water area equipment body,
wherein the water area equipment is selected from the group
consisting of wash basins, sinks, bathroom vanities, bidet devices and
groin washing devices in a bathroom, washing devices in a bathroom,
and inner walls of a bathroom, and
wherein the external surface of the body is a glaze layer.
13. A method for inhibiting water scale formation and minimizing
effects of water scale formed on an external surface of a water area
equipment body wherein the water area equipment body is connected
to a supply source of common tap water and common tap water from
the supply source of common tap water is applied to the external
surface of the water area equipment body and deposited thereon as
residual water, the method comprising the steps of: adding an
inhibitor for silicic acid polymerization to the common tap water from
the supply source of common tap water, and applying the common tap
water with added inhibitor to the external surface of the water area
equipment body such that common tap water with added inhibitor is
deposited as residual water on the external surface,
wherein the water area equipment body is selected from the
group consisting of wash basins, sinks, bathroom vanities, bidet
devices and groin washing devices in a bathroom, washing devices in
a bathroom, and inner walls of a bathroom, and
wherein the external surface of the water area equipment body
is a glaze layer.
Appeal Br. 27-28 ( emphasis added).
The Examiner maintains the following rejections under 35 U.S.C. § 103(a): 3
3 The Examiner has withdrawn the rejections of claims 1--4, 7, 8, 13-16, 18, 21-28,
and 30-37 under 35 U.S.C. § 103(a) based on Natsume. Ans. 8.
3
Appeal2017-002765
Application 13/624,026
1. claims 1, 3, 13, 15, 21, 25, 30-33, 35, and 37 over Mizuno (JP 2000-
265526 (A), pub. Sept. 26, 2000 (machine translation))4 in view of Nishiyama (JP
2007-321371 (A), pub. Dec. 13, 2007 (machine translation));
2. claims 2, 4, 14, 16, 22, 26, 28, 34, and 36 over Mizuno in view of
Nishiyama and Miki (JP 2006-325762 (A), pub. Dec. 7, 2006 (machine
translation));
3. claims 7, 18, 23, and 27 over Mizuno in view of Nishiyama and Dubin
(US 4,584,104, pub. Apr. 22, 1986); and
4. claims 8 and 24 over Mizuno in view of Nishiyama, Miki, and Dubin.
The Applied Prior Art
Mizuno discloses that removing silicic acid scale dirt from a ceramic product
surface can be difficult. Mizuno ,r 21. Mizuno discloses a method of preventing
adhesion of silicic acid scale dirt to a ceramic toilet bowl surface by forming a
stain-proof film on the ceramic surface. Id. ,r,r 2, 17. Mizuno discloses that prior to
forming the stain-proof film, any silicic acid scale dirt adhering to the ceramic
surface must be removed by applying ammonium acid fluoride or hydrofluoric
acid, followed by washing. Id. ,r 13.
Nishiyama discloses an acid water generating device for delivering acid
water at a pH of less than 6, more preferably less than 4, to a toilet bowl for the
purpose of removing uroliths. Nishiyama ,r 28.
Miki discloses applying a visible light type photocatalyst to the outer-most
surface of a bathroom component. Miki, Abstract. Miki discloses that the
photocatalyst is optically excited by the light of an intra-bathroom illumination
and/or auxiliary illumination device to decompose contaminants on the surface. Id.
4 In the Final Office Action, the Examiner refers to Mizuno as "Masu." See, e.g.,
Final 8.
4
Appeal2017-002765
Application 13/624,026
Dubin discloses "[a] method of inhibiting amorphous silica scale formation
on surfaces in contact with industrial waters containing dissolved silicates." Dubin,
[57]. Dubin is primarily concerned with inhibiting amorphous silica scale
formation on heat exchange surfaces in contact with alkaline industrial waters
containing silica and having a pH greater than 5. Id. at 2:58---62. To inhibit scale
formation, Dubin adds boric acid and/or its water-soluble salts, such as aluminum
salts to the industrial waters. Id. at 2:62---64, 3:22.
Rejection of claims 1, 3, 13, 15, 21, 25, 30-33, 35, and 37
over Mizuno in view of Nishiyama
The Examiner finds Mizuno discloses an apparatus as recited in independent
claim 1 with the exception of "a unit which adds an inhibitor for silicic acid
polymerization to the common tap water deposited as residual water on the
external surface of the water area equipment body" (claiml). Final 8. The
Examiner finds Mizuno discloses a method as recited in claim 13 with the
exception of adding the inhibitor to water prior to applying the water to the
external surfaces of the water area equipment. Id. at 10. The Examiner finds
"Nishiyama ... teaches an acid water generating device (i.e., a unit) which
supplies acidic water to the external glazed surface of [a] toilet bowl." Id. at 9; see
also id. at 10. The Examiner finds one of ordinary skill in the art would have
modified Mizuno's apparatus and method by using Nishiyama's acid water
generating device (unit) such that the acidic solution is added to common tap water
prior to application to the external surfaces of the toilet because Mizuno applies an
acidic solution to remove scale and stains and Nishiyama teaches that acidic water
dissolves uroliths which adhere to the surface of the toilet bowl. Id. at 9-10.
Appellant argues the Examiner reversibly erred in finding Mizuno discloses
an apparatus and method that utilizes an inhibitor to prevent silica scale from
forming. Br. 23. Appellant contends Mizuno removes already-formed silicic acid
5
Appeal2017-002765
Application 13/624,026
scale on the surface of a toilet with ammonium acid fluoride or hydrofluoric acid,
then removes uroliths with an acidic solution to reveal a new/clean surface. Id. at 9
(citing Mizuno ,r,r 21, 22). Appellant argues that after these removal steps, Mizuno
applies a layer of stain-proof, water-repellant agent to the new/clean surface. Id.
(citing Mizuno Abstract, ,r,r 12-20). Appellant argues the stain-proof, water-
repellant agent is intended for long term use and, therefore, Mizuno has no reason
to add an inhibitor to prevent silica scale. Id. at 22-23.
Appellant argues Nishiyama discloses preventing the deposit of uroliths,
composed mainly of calcium phosphate, by supplying acid water to a toilet bowl
while blocking the supply of washing water, thereby avoiding dilution of the acid
water which would reduce its effectiveness. Appeal Br. 10 ( citing Nishiyama
Abstract, ,r 70). Appellant argues one skilled in the art concerned with inhibiting
the formation of silicic acid scale "would not find any solution in the Nishiyama
reference which only discusses the uroliths from urine." Id. at 24.
Appellant has argued persuasively that the Examiner relies on improper
hindsight reasoning in finding one of ordinary skill in the art would have been
motivated to add Nishiyama's acid generating unit to Mizuno's device to achieve
the claim 1 apparatus. The evidence of record fails to support the Examiner's
finding that Mizuno is concerned with providing acid to the surface of a toilet to
prevent silicic acid polymerization. It follows that there is no evidentiary support
for the Examiner's further finding that the ordinary artisan would have modified
Mizuno's device to include Nishiyama's acid water generating device in order to
render Mizuno' s device capable of providing a silicic acid polymerization inhibitor
to common tap water deposited as residual water on the external surface of a toilet.
For these reasons, we also are persuaded that the Examiner reversibly erred in
finding the ordinary artisan would have modified Mizuno' s method to add an
6
Appeal2017-002765
Application 13/624,026
inhibitor for silicic acid polymerization to the common tap water prior to adding
the inhibitor to the external surface of a toilet as required by claim 13.
Accordingly, we do not sustain the rejection of independent claims 1 and 13,
and their dependent claims 3, 15, 21, 25, 30-33, 35, and 37.
Rejections of claims 2, 4, 14, 16, 22, 26, 28, 34, and 36
over Mizuno in view of Nishiyama and Miki; claims 7, 18, 23, and 27
over Mizuno in view of Nishiyama and Dubin; and claims 8 and 24
over Mizuno in view of Nishiyama, Miki, and Dubin
The Examiner's rejections of dependent claims 2, 4, 7, 8, 14, 16, 18, 22-24,
26-28, 34, and 36 are based on the same erroneous findings discussed above in
connection with the rejection of independent claims 1 and 13. See Final 11-14.
Accordingly, we likewise do not sustain the rejections of these claims.
New grounds of rejection
Pursuant to 3 7 C.F .R. § 41. 50(b ), we enter the following new grounds of
rejection of claims 1 and 13:
New ground of rejection ]--Claims 1 and 13 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Nishiyama.
Nishiyama Figure 1 is reproduced below.
[···,:,··*.Q~-~-·,,,····1 .. _ 20
I •
' .
i .1~* • ' 3 ---•--. I : -I' r--1-{x~
5 ~,3=! " II {; 1-,, 1'
'
................................... ~ .. : ........................ ~
\ / ~
·~ i
l ,j-- ,
I &'·I
l ...... ' - I
i ~ / \ __ }
7
Appeal2017-002765
Application 13/624,026
Nishiyama Figure 1 is a schematic diagram illustrating a toilet bowl washing
station. Nishiyama ,r 8. The toilet bowl washing station includes chamber pot 1
(water area equipment5), control device 20, and acid water generating device 15.
Id. Nishiyama discloses that the toilet bowl washing station is configured to be
connected to a supply source of tap water via service pipe 3. Nishiyama ,r 9 ("[T]he
service pipe (feed water flow path) 3 with which water is supplied to tap water etc.
is connected to the chamber pot 1 .... "). Feed valve 11 connects service pipe 3 to
wash water feeding passage 5 (id.), whereby, when feed valve 11 is open, "tap
water ... [is] supplied from the service pipe 3 ... [to] chamber pot 1 via the wash
water feeding passage 5 as wash water (id. ,r 10). Valve 13 connects service pipe 3
to the inlet to acid water generating device 15 (id. ,r 9), whereby, when valve 13 is
open, "tap water ... [is] supplied from the service pipe 3 ... to the acid water
generating device 15 via the branching channel 7" (id. ,r 10). Feed valve 11 and
valve 13 are electromagnetic valves, and each is automatically opened and closed
in response to a signal from control device 20. Id. Acid water generated in acid
water generating device 15 is supplied to chamber pot 1 via wash water feeding
passage 5, connected to acid water feeding passage 9, which, in tum, is fed by acid
water generating device 15. Id. ff 9--10. Nishiyama discloses that, in operation,
first detection means 17 detects that chamber pot 1 was used and control device 20
initiates "wash water supply mode" wherein valve 13 is closed and feed valve 11 is
opened to supply tap water from service pipe 3 to chamber pot 1. Id. ,r,r 26-27.
When second detection means 19 reaches a specified value, control device 20
initiates "acid water supply mode" wherein feed valve 11 is closed and valve 13 is
5 We note that Appellant does not dispute that a toilet falls within the scope of a
water area equipment body as recited in the penultimate wherein clause of each of
claims 1 and 13.
8
Appeal2017-002765
Application 13/624,026
opened. Id. ,r 26. In "acid water supply mode," feed water from service pipe 3 is
fed to acid water generating device 15 from the service pipe 3, acid water is
generated, and then supplied to chamber pot 1. Id. ,r 28. Thus, Nishiyama's acid
generating device 15 (a unit) is capable of adding acid water, when in "acid water
supply mode," to tap water deposited as residual water on the surface of chamber
pot 1 after completion of "wash water supply mode."
Nishiyama discloses that in one embodiment, acid water generating device
15 comprises storing section 55 wherein tap water is stored. Id. ,r 24, Fig. 5. Acid
water is generated by adding organic acid or inorganic acid (an inhibitor) to the
stored water (common tap water). Id. Nishiyama discloses another embodiment of
acid water generating device 15 wherein nitrogen oxide gas is generated and
dissolved in tap water held in storing section 25 of acid water generating device 15
to generate a nitric acid solution. Id. ,r,r 18-19, Fig. 2. Nishiyama discloses that
acid water having a pH below 6, more preferably below 4, removes uroliths and
prevents formation of uroliths in the drainage pipe connected to the downstream
side of chamber pot 1. Id.; see also id. ,r 14. Nishiyama fails to expressly disclose
that the acid added to the common tap water is "an inhibitor for silicic acid
polymerization" as recited in claims 1 and 13. However, Nishiyama's acid water
would inherently function in the claimed manner because Nishiyama discloses the
use of an acid solution made in the same manner disclosed in Appellant's
Specification, and having a pH that substantially overlaps the pH of Appellant's
acid solution. See Spec. ,r 20 ("[E]xamples of aqueous solutions for enhancing the
acidity of the residual water include acidic waters produced by electrolysis."); id. ,r
19 (The aqueous solution for enhancing the acidity of the residual water is not
limited as long as the acidity can be regulated. Examples of preferred aqueous
solutions ... include nitric acid .... "); id. ,r,r 31, 3 3-34 ( describing the addition of
9
Appeal2017-002765
Application 13/624,026
nitric acid added to common tap water to adjust the pH of the tap water to 1 to 6,
then testing water scale removing capability of the pH adjusted waters and an
acidic electrolyzed water having a pH of 3 .3 by dropping samples on a tile and
allowing water scale to form by drying for 48 hours, and determining water scale
was removable for the waters having a pH of 1.5 to 5.5).
New Ground of Rejection 2----Claims 1 and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nishiyama in view of Mizuno.
Nishiyama's disclosure is discussed in the rejection of claims 1 and 13 under
35 U.S.C. § 102(b ). Nishiyama discloses the claim 1 apparatus and claim 13
method with the exception that Nishiyama fails to expressly disclose the use of an
acid that is capable of acting as "an inhibitor for silicic acid polymerization," as
recited in claims 1 and 13. Mizuno discloses that the hydroxyl group of a toilet
bowl surface reacts with a constituent in tap water to form silicic acid scale dirt
which is difficult to remove. Mizuno ,r 3. Mizuno discloses that silicic acid scale
dirt can be removed from a toilet surface by applying ammonium acid fluoride or
hydrofluoric acid and then washing. Id. ,r 13. One of ordinary skill in the art at the
time of the invention would have been motivated to modify Nishiyama's acid
water generation device to add ammonium acid fluoride or hydrofluoric acid to the
stored tap water (see discussion of Nishiyama Figure 5 embodiment supra p. 9) to
remove silicic acid scale dirt and inhibit silicic acid polymerization based on
Mizuno' s teaching that a build-up of silicic acid scale is difficult to remove. The
ordinary artisan would have had a reasonable expectation of success in making this
modification based on Nishiyama's teaching that its apparatus and method are
capable of both removing uroliths and preventing their formation.
10
Appeal2017-002765
Application 13/624,026
ORDER
We REVERSE the Examiner's decision to reject claims 1--4, 7, 8, 13-16, 18,
21, 23-25, 27, 28, 30-33, and 37.
Pursuant to 37 C.F.R. § 4I.50(b), we enter two new grounds of rejection:
1. Claim 1 and 13 are rejected under 35 U.S.C. § 102(b) as anticipated by
Nishiyama.
2. Claims 1 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nishiyama in view of Mizuno.
37 C.F.R. § 4I.50(b) provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of the
appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record ....
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED;
37 C.F.R. § 4I.50(b)
11