Ex Parte 6,775,873 B2 et al

Patent Trials and Appeals Board

Jul 30, 2018

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

MOD PTOL-90A (Rev.06/08)

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

95/001,754 3/28/19 6,775,873 B2,

EXAMINER
Christensen, Fonder, Dardi & Herbert PLLC
33 South Sixth Street
Suite 3950
Minneapolis MN 55402
McKane, Elizabeth
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE

3/28/19 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
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.
DECISION ON REHEARING

I. STATEMENT OF THE CASE
On July 31, 2018, the Patent Trial and Appeal Board issued a Final
Decision on Appeal under 37 C.F.R. § 41.77(f) (“Final Decision”)
maintaining the new ground of rejection of claims 3, 9, and 12 under 35
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

2
U.S.C. § 103(a) as unpatentable over Hymes1 in view of Forder.2 On
August 31, 2018, Patent Owner filed a Request for Rehearing under 37
C.F.R. § 41.79 (“PO Reh’g Req.”) of the decision to maintain the rejection
of claims 3, 9, and 12.
Amended claims 3 and 12 are reproduced below with underlining
showing added language in Patent Owner’s request to reopen prosecution
filed August 26, 2015 (at page 4):
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.
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

1 US 834,135, issued October 23, 1906 to David Hymes.
2 GB 219,609, issued July 31, 1924 to James Charles Forder.
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

3
axis of the elongate strip, and wherein the vertex of the angle
points away from the handle.
In this Request for Rehearing, Patent Owner contends that “the Board
has misapprehended or overlooked arguments made by Patent Owner in
construing certain terms of each of claims 3 and 12 and consequently
misapprehended arguments made by Patent Owner regarding the differences
between the claimed invention and the prior art.” PO Reh’g Req. 2. In
particular, Patent Owner argues that the phrase “there are no barbed portions
disposed directly opposite one another on the first and second sides” recited
in claim 3 has been misconstrued by the Board.3 Id. at 3. Patent Owner
accepts for the purposes of the Request for Rehearing that the “first” and
“second” sides read on the “top and bottom surfaces of Hymes” consistent
with our determination in the Final Decision. Id.; see also Final Decision 5-
8 (agreeing with the Examiner’s interpretation of the term “side”).
However, Patent Owner contends that, even under this construction, “Hymes
still disclosed barbed portions on the first (top) and second (bottom) sides
that are disposed directly opposite to one another.” Id.
In particular, Patent Owner argues that the figures in Hymes show
“that the pairs of the barbed portions include some parts that are disposed
directly opposite one another in a lateral direction (from one lateral side to
the other lateral side, which could also be thought of a[s] from a third side to
a fourth side).” Id. at 4.
Patent Owner provided the following annotated Figure 2 from Hymes:

3 Patent Owner presents no separate argument regarding claim 12, but rather
relies on the similarity of language between claims 3 and 12. PO Reh’g
Req. 8.
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

4

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 Owner’s annotation labels the innermost points of diagonal slits a as
“Parts of Barbed Portions Opposite.” PO Reh’g Req. 5.
According to Patent Owner, “one of ordinary skill would understand a
‘barbed portion’ to comprise any or all parts of the barbed portion, from base
to tip.” Id. Therefore, according to Patent Owner, “if any part of one barbed
portion is directly opposite a part of another barbed portion, then the barbed
portions are ‘disposed directly opposite one another.’” Id. Patent Owner
further reiterates the arguments made on pages 7–8 of Patent Owner’s
Comments to the Examiner’s Determination Pursuant to 37 C.F.R.
§ 41.77(e) and argue that “the barbed portions are nonetheless disposed
directly opposite one another in a lateral direction.” PO Reh’g Req. 5, 7–8.
According to Patent Owner, the Board “read in the requirement that the
barbed portions on the first and second sides must not be disposed directly
opposite one another with respect to only the first and second sides (or in a
direction of the first side to the second side).” Id. at 7.
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

5
We do not agree with Patent Owner’s interpretation of claim 3.
Neither the language of the claims nor any description in the ’873 patent
would suggest that the claim language “such that there are no barbed
portions disposed directly opposite one another on the first and second
sides” should be interpreted such that no part of one barbed portion can be
disposed directly opposite any part of another barbed portion.4
Initially, we find that the ’873 patent and the claims do not clarify
with specificity how the phrase “there are no barbed portions disposed
directly opposite one another on the first and second side” is to be
interpreted. We find the Examiner’s interpretation to be reasonable in light
the fact that the claim, in light of the specification and the general definition5
of the term “disposed,” encompasses the arrangement of the barbed portions
as taught in Hymes.
We understand the term “barbed portion” to be the barb extending off
of the flexible strip, as a whole feature. Claim 3 depends from claim 1
which recites, among other things, an “elongate, flexible strip having a
plurality of barbed portions” with no recitation of any part but the whole
“barbed portion.” This interpretation is consistent with the ’873 patent
which throughout expressly refers to only the entire barb as a “barbed
portion.”

4 Cf., Final Decision 11, n.5.
5 As with the term “positioned” with respect to claim 9 (see Final Decision 11,
n.4), neither party provided a dictionary definition of the term “disposed,” yet
we find the term is synonymous with the term “positioned” recited in claim 9,
namely “arranged in a particular position” or “a particular way in which
someone or something is placed or arranged.”
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

6
Any negative limitation or exclusionary proviso must have basis in the
original disclosure. If alternative elements are positively recited in the
specification, they may be explicitly excluded in the claims. See In re
Johnson, 558 F.2d 1008, 1019 (CCPA 1977) (“[the] specification, having
described the whole, necessarily described the part remaining.”). See also
Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d
453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis
for an exclusion.
Contrary to Patent Owner’s assertion (PO Reh’g Req. 5, n.1), the fact
that the ’873 patent does not specify any particular part of a “barbed portion”
separately from any other part is evidence to suggest the language would
only exclude those embodiments in which the entire barbed portions
are disposed directly opposite one another on the first and second sides,
which is consistent with Figure 1 of the ’873 patent, which shows a single
embodiment in which the entire barbed portion are not directly opposite one
another. ’873 patent, Fig. 1. Patent Owner directs us to no description in the
’873 patent where part of a barbed portion is positioned directly opposite
part of another barbed portion or where the scope is expressly excluded.6
Indeed, Patent Owner is requesting a narrower construction (i.e., more
subject matter would be excluded from the scope of the claim) than the
broadest reasonable construction consistent with the scope the ’873 patent
allows. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.

6 In other words, interpreting the claim as suggested by Patent Owner would
be interpreting in a manner that lacked written descriptive support in the
’873 patent because such scope is neither positively described nor expressly
excluded.
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

7
Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)) (During
reexamination, “claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.”).
We disagree with Patent Owner’s characterization of the Decision as
reading in requirements with respect to only the first and second sides.
Claim 3 recites “that there are no barbed portions disposed directly opposite
one another on the first and second sides,” and it is the claim’s language that
informs our analysis. The claims are silent as to the disposition of barb
portions “laterally” or with respect to third and fourth sides of the “elongate,
flexile strip.” We decline to read into the claims any requirements with
respect the lateral placement of barbed portions or any relations of the
barbed portions vis-à-vis third or fourth sides of the elongate flexible strip.
Therefore, we decline to revise our determination that the Examiner
did not err in finding Hymes teaches an elongate flexible strip “such that
there are no barbed portions disposed directly opposite one another on the
first and second sides.” See Final Decision 5 (quoting the Examiner’s
Determination 7, filed September 7, 2017).
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is denied with respect to making any changes
therein.
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).
Appeal 2018-003212
Reexamination Control 95/001,754
Patent 6,775,873

8
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

DENIED

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

em