Ex Parte 6,775,873 B2 et al

Patent Trial and Appeal Board

Jul 30, 2018

95001754 (P.T.A.B. Jul. 30, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,754 10/07/2011 6,775,873 B2 4066.0013RX1 7913
112610 7590 07/31/2018
Christensen, Fonder, Dardi & Herbert PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
GT WATER PRODUCTS, INC.
Requester and Cross-appellant
v.
EUGENE H. LUOMA
Patent Owner and Appellant
____________________
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873
Technology Center 3900
____________________
Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
FINAL DECISION ON APPEAL UNDER 37 C.F.R. § 41.77(f)
I. STATEMENT OF THE CASE
On July 27, 2015, the Patent Trial and Appeal Board issued a
Decision on Appeal (“Decision”) affirming the Examiner’s decision to reject
claims 1, 2, 4, 6–8, and 11 under 35 U.S.C. § 102(b) as anticipated by
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Hymes1 and to reject claims 5 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Hymes in view of the general knowledge in the art.
Decision 28. The Decision also included new grounds rejecting claims 3, 9,
and 12 under 35 U.S.C. § 103(a) as unpatentable over Hymes in view of
Forder.2 Id.
Because the Decision included new grounds of rejection, Patent
Owner, Eugene H. Louma (“Patent Owner”), was provided with two options
under 37 C.F.R. § 41.77(b): (1) to file a response requesting reopening of
prosecution before the examiner; OR (2) to request that the proceeding be
reheard before the Board upon the same record. Decision 29.
Patent Owner requested to reopen prosecution under 37 C.F.R. §
41.77(b)(2) proposing amendments to the specification, claims 3, 9, and 12,
and new claims 13–26 on August 26, 2015 (“PO Request”). On September
23, 2015, Third-Party Requester, GT Water Products, Inc. (“Requester”),
filed Comments in response to the Patent Owner’s Request under 37 C.F.R.
§ 41.77(c) (“Req. Comments”).
On July 28, 2016, the Patent Trial and Appeal Board issued an Order
entering the amendments to claims 3, 9, and 12, denying the entry of the
specification amendments and new claims, and remanding to the case to the
Examiner for a determination under 37 C.F.R. § 41.77(d) with respect to the
amended claims 3, 9, and 12. See Order 3–5.
On September 7, 2017 the Examiner entered a Determination under
37 C.F.R. § 41.77(d) (“Determination”) that the newly amended and entered

1 US 834,135, issued October 23, 1906 to David Hymes.
2 GB 219,609, issued July 31, 1924 to James Charles Forder.
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claims did not overcome the new ground of rejection set forth in the
Decision.
The Patent Owner filed Comments in response to the Examiner’s
Determination under 37 C.F.R. § 41.77(e) filed October 10, 2017 (“PO
Comments”) and Requester filed a Reply under 37 C.F.R. § 41.77(e) in
response to the Patent Owner’s Comments on November 7, 2017 (“Req.
Reply”).
Neither Patent Owner nor Requester submits any additional evidence
in this reexamination.3
Jurisdiction now returns to the Board for a final Decision on Appeal
under 37 C.F.R. § 41.77(f).
Amended claims 3, 9, and 12 are reproduced below with underlining
showing added language in Patent Owner’s Request:
3. The apparatus of claim 1, wherein;
the handle has an aperture therethrough adapted for gripping with a
person’s fingers, further wherein the strip has a first side and a second side
opposite the first side, the barbed portions projecting on the first side and
on the second side such that there are no barbed portions disposed directly
opposite one another on the first and second sides.
9. The apparatus of claim 7, wherein the handle has an aperture
therethrough adapted for gripping with a person’s fingers, further wherein

3 In its Reply under 37 C.F.R. § 41.77(e), Requester, for the first time
identifies new prior art, namely “GB 22,780 by James Scott Law.” Req.
Reply 12. This new evidence was not timely submitted, and Patent Owner
has not had an opportunity to address the merits of this new evidence.
Accordingly, we do not consider this reference or rely on any of its
teachings in our final Decision under 41.77(f).
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the barbed portions project from the sides of the elongate, flexible strip and
alternate in position with one another from side to side along the elongate,
flexible strip.
12. Apparatus for removing hair from a drain, comprising:
(a) an elongate, flexible strip;
(b) a handle, integrally molded with the elongate, flexible strip,
wherein the handle is a distinct structural element from the elongate,
flexible strip, the handle having an aperture therethrough adapted to be
gripped by a person’s fingers;
(c) the elongate, flexible strip having a plurality of integrally molded
barbed portions, wherein the barbed portions alternate in position along each
side of the elongate, flexible strip such that the barbed portions are not
disposed directly opposite each other along the strip, the barbed portions
being adapted to grip hair in a drain, wherein the barbed portions all point
toward the handle and are oriented at an acute angle to the axis of the
elongate strip, and wherein the vertex of the angle points away from the
handle.
PO Request 4.
II. DISCUSSION
Claim 3
Claim 3 as amended recites “the strip has a first side and a second side
opposite the first side, the barbed portions projecting on the first side and on
the second side such that there are no barbed portions disposed directly
opposite one another on the first and second sides.”
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The Requester argues that there is no literal support in the ’873 patent
for the amendments to claim 3 and that the language is not unambiguously
derivable from the drawings. Req. Comments 7. We agree with the Patent
Owner that, although not explicitly described in the ’873 patent, there is
adequate support in the figures for the language recited in the claim. That is,
as pointed out by Patent Owner, Figure 1 depicts barbs that are not directly
opposite one another on a first side and a second side. ’873 Patent, col. 2, ll.
8–11, Fig. 1; PO Request 11. However, as the figures are merely illustrative
and not restrictive, the language of the claims dictate the scope of the
claimed invention. ’873 Patent, col. 2, ll. 27-33. Thus, the specific
embodiment does not limit the scope of the claim.
The Examiner determined that Hymes reads on this claim language
because
Hymes teaches a strip having a first side (top side) and a second
side (bottom side) opposite the first side, the barbed portions
projecting on the first (top) side and on the second (bottom) side
such that there are no barbed portions disposed directly opposite
one another on the first and second sides (top and bottom sides).
Determination 7.
The Examiner provided a version of Figure 3 of Hymes labelled as
follows. Determination 7.

1st side
2nd side
id
Barb 1
Barb 2
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Figure 3 of Hymes is a plan view of the working end of the sewer
opening device showing barbs D having sharp points b. Hymes col. 1, ll.
22–26, 39–45. The Examiner’s annotation labels a top surface as “1st side”
and a bottom surface as “2nd side.” The Examiner’s annotation also labels a
barb in the foreground facing upwards as “Barb 1” and a barb in the
background facing downwards as “Barb 2.” Determination 7.
Patent Owner argues that the Examiner uses an inconsistent and
overly broad interpretation of the term “sides” by using the top and bottom
sides of Hymes as the first and second sides. PO Comments 3. Patent
Owner contends that the ’873 patent states that the rod is “substantially flat”
and thus the barbs of Hymes prevent any part of Hymes from being
“substantially flat.” Id. 6. Patent Owner further argues that the Board has
construed the “sides” of Hymes and Bropson in the previous Decision as the
lateral surfaces. PO Comments 3.
Requester contends that the Examiner’s interpretation is reasonable
because the ’873 patent does not preclude the top and bottom sides also to be
construed as sides. Req. Reply 3. Requester states that a strip has a
substantially rectangular cross section with 4 sides, namely 2 pairs of side
that are opposite and parallel to each other. Id. 2–3. Requester further
points out that Patent Owner concedes that term “side” is not defined in the
claims or elsewhere to be limited to the lateral sides now argued by Patent
Owner. Id. 3.
We are not persuaded by Patent Owner’s arguments. Initially, the
claims do not require that any part of the strip is “substantially flat.”
Further, it would be error to read in a substantially flat strip into the claims
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because the Specification of the ’873 patent expressly states that a
substantially flat strip is merely “preferred.” Thus, the Specification of the
’873 patent and claim 3 encompasses strips that are not substantially flat.
We agree with the Examiner and Requester that it is reasonable to
interpret each of the top, bottom, and lateral surfaces of the strip as a “side”,
because a “side” is reasonably interpreted to be a face of an object and this
interpretation is not inconsistent with the Specification of the ’873 patent.
We also disagree with Patent Owner that our Decision supports their
interpretation of a “side” as being limited to a lateral surface. To the
contrary, we note that the language added to amended claim 3 is similar to
claim 4 of the original patent, which recites “wherein the barbed portions
alternate along each side of the elongate flexible strip.” The Board applied
the teachings of Hymes to the “sides” recited in claim 4 in the Decision as
follows.
The claims do not define the “sides” upon which the barbed
portions are to alternate, do not describe any particular direction
the barbs must extend from any particular “side,” and do not
preclude barbed portions disposed “directly opposite” one
another. While Figure 1 of the ’873 patent, reproduced above,
shows barbed portions 20 projecting on sides 18, such that there
are no barbs directly opposite one another, we do not read
specific embodiments into the claims absent language in the
claim that would require it. See ’873 patent, col. 2, ll. 6-7
(“Preferably, the barbed portions 20 alternate along the sides 18
of the elongate, flexible strip 12.”). The Specification of the ’873
patent also refers to the barbs as “interspersed along the length
of the shaft, rather than being limited to one end of the shaft” and
that the barbs “alternate with one another along the strip, rather
than being helically configured.” See id. col. 1, ll. 36-45. The
barbs of Hymes are dispersed along the “elongated flexible strip”
and are not helically configured as distinguished by the ’873
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patent. Moreover, the claim does not specify that the barbed
portions “alternate with one another along the strip” or that they
are “interspersed” as stated in the patent, which could have given
a more restricted interpretation of the claim. Accordingly, we
interpret “wherein the barbed portions alternate along each side
of the elongate, flexible strip” broadly to include alternating in
position, direction, or other fashions.
Decision 18–19.
Our Decision notes that the only structure expressly disclaimed in the
Specification is a helical configuration. While we noted language that
“could have given a more restrictive interpretation of the claim,” we do not
find that the language actually added to claim 3 by amendment distinguishes
over the structure of Hymes for the reasons set forth by the Examiner.
Determination 7–8. As noted in our Decision:
we agree with the Examiner that the barbed portions D, best
illustrated in Figure 3 of Hymes, “alternate along each side of the
elongate, flexible strip” in that one barb projects upward while
the next barb “along each side of the elongate, flexible strip”
projects downward, and alternate so forth. We further note that
barbed portions D do not project “directly opposite” one another
as argued by Patent Owner because one barb is directed up while
the laterally opposite barb, as well as the next adjacent barb on a
particular side, is directed down, as illustrated in Figure 3 of
Hymes.
Decision 19.
Patent Owner further contends that it would not be obvious to
combine the art of Hymes and Forder because (1) they are not in the same
field of endeavor and (2) the reference is not reasonably pertinent to the
particular problem with which the inventor is involved. PO Comments 15.
In particular, Patent Owner notes that Hymes is directed to removing debris
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from a sewer while Forder is directed to removing a cork from a wine glass.
Id.
Requester points out (Req. Reply 10) that the new ground of rejection
does not rely on Forder for the function of its barbed end, but instead Forder
is being used for teaching a handle in order to allow a person to better grip
an apparatus with their finger “to aid in ‘draw[ing] up and through’ a narrow
passage, as in the function of the handle in Forder.” Decision 26.
Accordingly, we find that Forder is directly pertinent to the particular
problem with which the inventor was involved in when designing a handle,
namely, to ensure that an adequate grip could be maintained under resistance
encountered when using the apparatus. There is no compelling evidence that
one of ordinary skill in the art, seeking to improve the grip on a handle,
would have considered only handles from the drain or pipe cleaning art,
rather than handles generally, particularly those which have the same
purpose in facilitating a stable hand grip while pulling.
Accordingly, the amendments to claim 3 do not overcome the new
ground of rejection presented in our Decision.
Claim 9
The language added to claim 9 is slightly different than then language
added to claim 3. In particular, claim 9 recites “wherein the barbed portions
project from the sides of the elongate, flexible strip and alternate in position
with one another from side to side along the elongate, flexible strip.”
Patent Owner argues that “alternating in position” is different from
“alternating in direction” and that Hymes teaches that “regardless of whether
the direction of projection of the barbs alternates, Barbs 1 and 2 do not
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alternate in position from one another from side to side along the strip.” PO
Comments 9–15. Indeed, Patent Owner provides an annotation of Figure 2
of Hymes as follows:

Figure 2 of Hymes is a plan view of the working end of the sewer
opening device showing barbs D having sharp points b created from
diagonal slits a cut in the strip of steel A. Hymes col. 1, ll. 22–26, 39–45.
Patent Owners annotation labels a top, lateral surface as “First Side” and a
bottom, lateral surface as “Second Side.” The Examiner’s annotation adds a
double headed arrow extending from a barb D on the “First Side” to a barb
D on the “Second Side,” which is labeled “Barbed Portions Directly
Opposite One Another.” PO Comments 11. Therefore, according to Patent
Owner, the limitation of “alternating in position” is not met by the teachings
of Hymes. Id.
Requester responds that the phrase “alternating in position” is not
defined in the ’873 patent and that “alternating in position” encompasses
“alternating in direction” because if “barbs point in different directions, they
are ‘positioned’ differently.” Req. Reply 8. Requester further notes that
pointing up and pointing down is “alternating in position” from side to side
along the elongate, flexible strip.” Id.
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We agree with the Requester that the ’873 patent and the claims do
not clarify with specificity how the phrase “alternate in position with one
another from side to side along the elongate, flexible strip” is to be
interpreted. We find the Examiner’s interpretation to be reasonable in light
the fact that the specification and the claim and the general definition4 of the
term “position” does not preclude a barb prong in the upward direction and a
prong in the downward direction from being considered “alternating in
position.” Therefore, we do not find the Patent Owner has shown the
Examiner erred in finding Hymes teaches the barbs “alternating in position”
because they are alternatively pointing up or down “from side to side along
the elongate, flexible strip.” Determination 8.
Accordingly, the amendments to claim 9 do not overcome the new
ground of rejection presented in our Decision.5
Claim 12

4 Neither party provided a dictionary definition of the term position, but
consistent with the arguments from both parties, we find the term means
both “a place where someone or something is located or has been put” and
“a particular way in which someone or something is placed or arranged.”
5 Further, we note that Frick, U.S. Patent 566,570, issued August 25, 1896,
to F.A. Frick for a “Pipe Stem Cleaner,” was relied upon by the Requester in
the original Request for Inter Partes Reexamination “[i]f the expression
‘alternate’ is construed differently . . . namely that two barbs on opposite
sides are provided in lengthwise direction at the same location along the
strip”. Request for Inter Partes Reexamination filed October 7, 2011. In
finding that Hymes teachings this limitation, the Examiner did not rely on
Frick, but we agree with the Requester (Req. Comments 31) that Frick is
sufficient evidence that alternating the position to the extent it would mean
alternating the location of the base of a barb, regardless of the direction the
barb is pointed, is also known in the art.
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Claim 12 includes language similar to that claim 3, namely that “the
barbed portions are not disposed directly opposite each other along the
strip,” and similar to that of claim 9, namely that “the barbed portions
alternate in position.” For the reasons discussed above, these amendments to
claim 12 do not overcome the new ground of rejection presented in our
Decision.
Claim 12 further recites that “the barbed portions all point towards the
handle.” The Examiner finds that Hymes teaches that “the barbed portions
all point in the same longitudinal direction towards the handle, as shown in
Figure 1.” Determination 8.
Patent Owner contends that the limitation that all of the barbs all point
in direction toward the handle is not taught by the teachings of Hymes
because, when in the coiled position as show in Figure 1, the barbs point in a
direction “which is generally perpendicular to the handle.” PO Comments
14.
Requester responds by noting the flexibility of the strip of the ’873
patent as represented by the depiction of the device in Figure 4 in use in a
“bent” configuration that “changes the orientation of the barbs with respect
to the handle.” Req. Reply 9.
We understand the Examiner is interpreting the phrase “towards the
handle” as referring to the “longitudinal direction” of the handle vis-á-vis the
elongate strip of the device, irrespective of the particular orientation of the
elongate strip, be it flat, flexed, or coiled. We find this interpretation to be
reasonable and consistent with the Specification, particular in considering
the various orientations of the barbs vis a vis the handle as it is represented
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in, for example, Figures 1 and 2 as compared to Figure 4 of the ’873 patent.
Patent Owner has not shown error with this interpretation but rather provides
an argument that inserts a temporal limitation (i.e., when the device is not in
use) that is not recited in the claims. We decline to accept the Patent
Owner’s reasoning in light of the lack of temporal limitation in the claims.
Therefore, the amendment to the claim does not distinguish over the prior art
applied in the new ground of rejection.
Accordingly, the amendments to claim 12 do not overcome the new
ground of rejection presented in our Decision.

III. CONCLUSION
We conclude that Patent Owner has not overcome the new ground of
rejection of claim 8, 9, and 19.

AFFIRMED: 37 C.F.R. § 41.77(f)

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PATENT OWNER:
Christensen, Fonder, Dardi & Herbert PLLC
33 South Sixth Street
Suite 3950
Minneapolis MN 55402

THIRD PARTY REQUESTER:
Alexander R. Schlee
Schlee IP International P.C.
3770 Highland Ave., Suite 203
Manhattan Beach, CA 90266

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