NEOPERL GMBH

Patent Trials and Appeals Board

Mar 12, 2020

14796138 - (D) (P.T.A.B. Mar. 12, 2020)

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.
14/796,138 07/10/2015 Uwe ZOLLER SMBNEO-PT300.2 4646
3624 7590 03/12/2020
VOLPE AND KOENIG, P.C.
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte UWE ZOLLER, CHRISTOPH WEIS, and
HERMANN GRETHER

____________

Appeal 2018-005495
Application 14/796,138
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20 as unpatentable under 35 U.S.C. § 103(a) over
Brady (US 2,014,063, iss. Sept. 10, 1935). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Neoperl GmbH as the Applicant and
real party in interest. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to water faucet outlets. Spec. ¶ 4.
Claim 1, reproduced below with paragraph indentation added, is illustrative
of the subject matter on appeal.
1. A sanitary installation element (106), which is arranged
in a water line, embodied as a jet regulator, comprising
a body portion;
a funnel-shaped filter sieve (14) having filter openings;
a jet splitter (2), arranged downstream from the filter
sieve (14), having
a plurality of openings which divide an inflowing water
flow into a multiplicity of individual jets, and having
an admixing device (4) with at least one throttling or
closing element (5), the at least one throttling or closing
element (5) moves, under pressure of the inflowing water,
from a first position to a second position counter to a
restoring force,
wherein under a first water pressure, the at least one
throttling element (5) is in the first position, providing a
clear throughflow cross section defined by a central funnel
opening (13) at a base portion of the funnel-shaped filter
sieve, the funnel opening leading to a bypass duct (12) of
the jet splitter thereby bypassing the filter openings and the
jet splitter openings, and
wherein under a second water pressure, greater than the
first and greater than the restoring force, the at least one
throttling element (5) moves to a second closed position,
closing off the clear throughflow cross section, thereby
creating a flow path through the filter openings and the jet
splitter opening.
OPINION
Appellants argue claims 1–20 as a group. Appeal Br. 7–11. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds that Brady discloses the invention substantially as
claimed except for having multiple openings that divide inflowing flow into
multiple independent jets. Final Act. 2–3. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Brady to have more than one opening. Id.
at 3. According to the Examiner, a person of ordinary skill in the art would
have done this to dispense fluid on both sides of the device and increase
outflow capacity. Id.
Appellant first argues that Brady lacks a jet splitter, a point that is
already conceded by the Examiner. Appeal Br. 8.
In response, the Examiner states that, although Brady does not split
the water flow downstream of filter screen 16 and direct the resulting
separated flows to multiple outlets, the Examiner’s proposed modification of
Brady’s casing 17 would have resulted in Brady having two outlet 18 - type
openings to become a jet splitter. Ans. 2.
The modified element 17 of Brady is being considered a jet
splitter because it splits the fluid into two separate jets, one
comes out opening 18 and the other comes out the second
opening added by the examiner in the 103 modification.
Id.
In reply, Appellant argues that it is inappropriate for the Examiner to
find obviousness over a single prior art reference. Reply Br. 2. Appellant
faults the Examiner for relying on common knowledge of the person of
ordinary skill to supply an element that is missing from the prior art. Id.
(citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)).
Appellant criticizes the Examiner for advancing nothing more than
“conclusory statements” in support of the proposed modification.
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[A] person of skill in the art would not simply start making
additional holes in a device without reason . . . Here, the
Examiner has combined Brady only with the knowledge of a
person of skill in the art, which specific knowledge had never
been explained.
Id. at 4–5.
Appellant advances an overly restrictive view of the Arendi decision.
In the more recent case of Koninklijke Philips N.V. v. Google LLC, 948
F.3d 1330, 1338 (Fed. Cir. 2020), the Federal Circuit distinguished Arendi
and upheld a PTAB decision that certain claims were obvious over the prior
art in light of the general knowledge of a skilled artisan.
[I]t does not follow that we ignore the skilled artisan’s
knowledge when determining whether it would have been
obvious to modify the prior art . . . the inquiry into whether any
“differences” between the invention and the prior art would
have rendered the invention obvious to a skilled artisan
necessarily depends on such artisan’s knowledge.
Id. at 1337.
Brady is directed to a faucet filter. Brady, col. 1, ll. 1–12. Brady
features a valve comprised of plunger 21 that is disposed in either of two
positions relative to valve seat 20. Id. col. 2, ll. 26–41. In a first position,
the valve is open, thereby allowing water to flow out of outlet 19. Id. In a
second position, the valve is closed thereby preventing flow out of outlet 19
and directing flow through screen 16 and out of discharge outlet 18, which is
formed in outer casing 17. Id. In operation, the opening and closing of the
valve is accomplished by water pressure acting on element 11. Id.
The issue before us is whether it would have been obvious to add an
outlet port to Brady absent some explicit teaching in a cited reference
showing that it was known to provide faucets with more than one outlet
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orifice. Appellant provides no evidence that adding a second outlet orifice
to a water faucet requires more than ordinary skill. Furthermore, Appellant
provides no evidence that adding a second orifice produces unexpected
results. Thus, Appellant’s sole argument, in a nutshell, is that a person of
ordinary skill in the art would not have had any reason to add a second
orifice to Brady. This argument is not persuasive.
It is well settled that a claimed invention may be obvious even when
the prior art does not teach each claim limitation, so long as the record
contains some reason that would cause one of skill in the art to modify the
prior art to obtain the claimed invention. Beckson Marine, Inc. v. NFM,
Inc., 292 F.3d 718, 728 (Fed. Cir. 2002). In other words, a claim can be
obvious even where all of the claimed features are not found in specific prior
art references, where there is a showing of a reason to modify the teachings
of the prior art to achieve the claimed invention. See Randall Mfg. v. Rea,
733 F.3d 1355, 1361–62 (Fed. Cir. 2013); see also Broadcom Corp. v.
Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013). For this reason, “we
do not ignore the modifications that one skilled in the art would make to a
device borrowed from the prior art.” In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1382 (Fed. Cir. 2007).
In the instant case, the failure to cite a reference that explicitly teaches
a faucet with a least two outlet orifices is not indicative of Examiner error.
The Supreme Court explains that the obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). This follows from recognizing that a person
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of ordinary skill is also a person of ordinary creativity, not an automaton,
and is presumed to know something about the art apart from what the
references disclose. Id. at 421; In re Jacoby, 309 F.2d 513, 516
(CCPA 1962).
The diversity of inventive pursuits and of modern technology
counsels against . . . overemphasizing the importance of
published articles and the explicit content of issued patents. In
many fields there may be little discussion of obvious techniques
or combinations, and market demand, rather than scientific
literature, may often drive design trends.
KSR, at 402.
Here, the fact that the prior art may already perform adequately does
not preclude a skilled artisan from seeking to improve upon it. See Dystar
Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006) (the desire to enhance commercial opportunities by improving a
product or process is universal—and even common-sensical). A person of
ordinary skill in the art would understand that, depending on the particular
product application and its desired performance, a beneficial advantage may
be obtained in either concentrating or dispersing flows of water into either
more or fewer fluid streams. In the instant case, the Examiner finds that
dispersing the water outlets over a broader area of the faucet surface is
reason enough to add a second outlet. Final Act. 3. This is an adequate
rationale to support the proposed modification of the rejection. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
underpinning), cited with approval in KSR, 550 U.S. at 418.
Appellant next argues that modifying Brady as proposed would
accomplish nothing more than eliminating closing element 21. Reply Br. 4.
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We disagree. As we understand the rejection, Brady’s plunger 21 and valve
seat 20 would remain in place as depicted, for example, in Figure 1. Brady,
Fig. 1. The proposed modification would merely add a second discharge
outlet 18 in the outer casing 17 of Brady such as, for example, at the right
side of Figure 1. Id. Water would flow around plunger 21 and through
screen 16 on the right side of Figure 1 in the same manner as illustrated on
the left side of Figure 1.
Appellant next argues that Brady fails to bypass the filter and jet
splitter opening. Appeal Br. 9. According to Appellant, water flows
through filter screen 16 and out of discharge outlet 18 whether or not
plunger 21 is seated in valve seat 20. Id.
In response, the Examiner explains that, in the rejection, outlet 19 is
considered to be a bypass duct. Ans. 2. The Examiner explains that fluid
that flows through opening 19 does not flow through the filter openings 16
or the jet splitter openings. Id. Therefore, according to the Examiner, such
fluid bypasses the filter. Id. at 2–3.
Opening 19 of Brady acts just like the bypass duct 12 of the
present invention . . . In figure 1 of Brady, the bypass duct (19)
is open with the throttling and closing element (21) being in the
upper position. Fluid now flows through the filter openings
(16) and the jet splitter openings (18 and the added second
opening) as well as the bypass duct (19). The fluid flowing
through 19 bypasses the filter openings and the jet splitter
openings. Fluid that is in the bypass duct does not flow through
the screen and the jet splitter even though some outgoing fluid
still flows through the screen and jet splitter . . . the claim does
not require all the fluid to bypass the screen and jet splitter, just
the fluid in the bypass duct.
Id. at 3.
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Application 14/796,138
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In reply, Appellant argues that the raw water outlet 19 of Brady
“never bypasses” discharge outlet 18. Reply Br. 5–6.
Appellant’s argument is tantamount to a blanket, unsubstantiated
assertion that, notwithstanding whether plunger valve 20/21 is open or
closed, no water passes through raw water outlet 19. This position is not
supported by the record before us. Brady teaches the following:
When water is caused to flow through the faucet 4, the initial
low pressure is not sufficient to force the plunger valve to its
seat; therefore the raw water flows around the plunger valve
and against the filter screen 16 to remove sediment therefrom
and cause it to pass out through the raw water outlet 19 . . .
When the faucet is closed the reduction in pressure permits the
plunger valve to rise from its seat 20, and the flow of water
during the opening movement of this valve washes all sediment
which may have been deposited on the filter screen during the
previous filter operation.
Brady, col. 2, ll. 29–47. Outlet 19 is disposed downstream of outlet 18. Id.
Fig 1. In order for water to reach outlet 19, water flows past screen 16 and
outlet 18, without passing through them (i.e., “by-passing” them), and then
flows through outlet 19. Id. Brady’s plunger 21, valve seat 20, and raw
water outlet 19 operate in a manner that is substantially similar to closing
element 5, by-pass duct 12, and central funnel opening 13 of Appellant’s
invention and they both flush dirt and other particles trapped by filter
elements 16 in Brady and sieve 14 in Appellant’s invention. Brady, Fig. 1,
col. 2, ll. 29–47; Appellant’s Spec. ¶ 67, Figs. 21–24.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded. We
sustain the Examiner’s unpatentability rejection of claims 1–20.
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CONCLUSION
Claims
Rejected
§ Reference Affirmed Reversed
1-20 103 Brady 1-20

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