Ex Parte Carroll et al

Patent Trial and Appeal Board

Mar 25, 2013

11420492 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL J. CARROLL and
PAUL A. SCHMITT
____________

Appeal 2011-006256
Application 11/420,492
Technology Center 3700
____________

Before JOHN C. KERINS, BRADFORD E. KILE and WILLIAM A. CAPP,
Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

App
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06256
/420,492
ST
ts Carroll
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in interes
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ATEMEN
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- 2 -

T OF TH
itt1 seek o
s 22-27. C
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Appeal 2011-006256
Application 11/420,492

- 3 -
Figure 1 depicts a cross-sectional view of a flushometer valve body 10
having a water inlet 12 and outlet 14. Opposing bleed valves 40 serve to
bleed water through an O-ring filter 43 into a pressure chamber 62. App. Br.
8-9. “The bypass orifices 40 are positioned so that at least one orifice will
be no more than 90 degrees around the annular surface of the piston from the
inlet.” Id. at 9.
Claim 22, reproduced below, is illustrative of the subject matter on
appeal.
22. In a flushometer of the type having a hollow
valve body with an inlet, an outlet and a valve seat
between the inlet and the outlet, a piston movable
in the hollow valve body to a closing position on
the valve seat to control fluid flow between the
inlet and the outlet, the piston having an outer
annular surface, and a pressure chamber above the
piston for holding the piston on the valve seat, the
improvement comprising
a method of providing consistent flush volumes at
low water pressure including the step of reducing
the fluid travel distance from the inlet to a bypass
by providing two bypass orifices passing through
the piston to fluidly connect the inlet with the
pressure chamber to provide fluid to move the
piston to the closing position, said bypass orifices
being positioned such that at least one orifice will
be no more than 90 degrees around the annular
surface of the piston from the inlet.

EVIDENCE RELIED UPON
The Examiner relies upon the following as evidence in support of the
rejections:
App
App

103(
as be
selec
stand
‘374
eal 2011-0
lication 11
Carroll
Grunert

The follo
1. C
a) as being
2. C
ing unpate

C
Appellan
t claim 22
or fall wi
The Exa
patent. F
06256
/420,492

wing reje
laims 22, 2
unpatenta
laims 23 a
ntable ov
laims 22, 2
ts argue th
as represe
th claim 2
miner relie
igure 1 of
US 5,
US 5,

ctions are
4, 25 and
ble over C
nd 26 also
er Carroll
O
1. Obvio
4, 25 and
e above c
ntative of
2. See 37
s primaril
the Carrol
- 4 -
415,374
738,138
before us
27 stand r
arroll and
stand reje
and Grune
PINION
usness Rej
27 Over C
laims as a
the group
C.F.R. § 4
y on the d
l patent is
M
A
for review
ejected un
Grunert.
cted under
rt.
ection of
arroll and
group. A
. Claims 2
1.37(c)(1)
isclosure o
reproduce
ay 16, 19
pr. 14, 19
:
der 35 U.S
35 U.S.C
Grunert
pp. Br. 11-
4, 25 and
(iv) (2011
f the Carr
d below:

95
98

.C. §
. § 103(a)
30. We
27 will
).
oll prior
App
App

flush
with
wate
Exam
oppo
Figu
eal 2011-0
lication 11
Figure 1
ometer. T
the excep
r inlet 12 t
iner ackn
sed bypas
res 1 and 2
06256
/420,492
of the Car
his flusho
tion that th
o bleed w
owledges
ses.” Id.
of Grune
roll ‘374 p
meter is id
ere is only
ater into pr
that Carro
For this fe
rt are repro
- 5 -
atent depi
entical to
one bleed
essure cha
ll ‘374 “la
ature, the E
duced bel
cts, in cro
Appellant
port 40 th
mber 62.
cks at leas
xaminer r
ow:
ss-section
s’ disclose
at is expo
Ans. 3. T
t two diam
elies on G

, a
d Figure 1
sed to
he
etrically
runert. Id

.
Appeal 2011-006256
Application 11/420,492

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Figure 1 is an illustration of a prior art valve to which the Grunert
‘136 invention is readily adapted. Grunert, col. 3, ll. 17-18. Figure 1
discloses valve 10 having a flow diaphragm 16 and a single bleed orifice 32.
Figure 2 discloses the Grunert ‘136 invention where the single bleed orifice
32 in Figure 1 is replaced with a pair of diametrically opposed bleed orifices
32 and 33. Grunert, col. 4, ll. 68-67; col. 5, ll. 1-3.
The Examiner concludes that:
[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was
made to modify the flushometer of Carroll et al.
by adding a second bypass orifice as taught by
Grunert et al. in order to close the main valve
more quickly which would waste less water
while flushing and prevent water hammer.
Ans. 3-4.
Appellants contend that “the Examiner has failed to make out a prima
facie case of obviousness.” App. Br. 12. Appellants assert three reasons for
this conclusion: (1) the dual orifices in Grunert are used to mount a wire to
clean the bleed orifices; (2) Grunert’s bleed orifices cannot operate as bypass
orifices for recharging a pressure chamber and (3) Grunert’s bleed orifice
structure, with cleaning wires, would be completely useless in a flushometer
because flow through them would be variable. Appellants admit, however,
that the Grunert bleed orifices “allow fluid to bleed into the upper chamber
when the spring 24 moves the diaphragm downwardly.” App. Br. 22.
Appellants’ arguments directed to the overall operation of the Grunert
valve, per se, are unavailing. The Examiner’s rejection is based on a
combination of the teachings of Carroll in view of Grunert. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
Appeal 2011-006256
Application 11/420,492

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established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”) The Examiner cites the
Carroll ‘374 patent for a disclosure of the general structure and operation of
the subject Carroll et al. flushometer recited in claim 22. The two Carroll
disclosures are the same with the exception that the prior art Carroll ‘374
flushometer valve has one bypass orifice 40 (note Figure 1 above) while the
subject Carroll et al. application discloses and recites in claim 22 two
orifices . . . “such that at least one orifice will be no more than 90 degrees
around the annular surface of the piston from the inlet.” App. Br., Clms.
App’x at 32. (Also note Figure 1 above of the highlighted Carroll
disclosure.) App. Br. 8.
The Examiner’s point of citing Grunert is that, as opposed to use of a
single bleed valve through diaphragm 19, as illustrated in Figure 1 of
Grunert above, the Grunert ‘138 patent discloses that enhanced flow
characteristics are obtained by using a pair of diametrically opposed bleed
orifices 32 and 33 through the diaphragm 19 as illustrated in Figure 2 above.
See Grunert, col. 5, ll. 38-59. “[T]he examiner is just relying on the number
of orifices within Grunert et al. - not any of the other structure within the
valve to modify the flush valve of Carroll et al.” Ans. 5-6.
The Examiner’s reasoning and conclusions have not been persuasively
shown to be unreasonable or lacking in rational underpinnings. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing with approval In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). We affirm the Examiner’s rejection of claims
22, 24, 25 and 27.
Appeal 2011-006256
Application 11/420,492

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2. Obviousness Rejection of
Claims 23 and 26 Over Carroll and Grunert
Claims 23 and 26 depend from independent claims 22 and 25
respectively and in each instance add a recitation of “making the two bypass
orifices identical.” App. Br., Clms. App’x at 32-33.
The Examiner finds that “Grunert et al. shows identically sized
orifices and those identically sized orifices were relied upon as the teaching
to modify the flush valve of Carroll et al.” Ans. 7. Appellants respond that
“[s]ince the prior art contains no suggestion of providing two bypass orifices
passing through the piston, it follows that there is no suggestion of making
the two orifices identical.” Ans. 30.
The issue of whether the Carroll and Grunert patent disclosures can be
properly combined by the Examiner, having been determined above, leaves
Appellants’ argument with respect to claims 23 and 26 as a mere statement
of claim features. First, Grunert contains no disclosure to indicate that the
diametrically opposed bleed orifices 32 and 33 are not identical. Rather there
is a strong indication by function that the diametrically opposed bleed valves
32 and 33 are balanced and thus identical - “the bleed orifices 32 and 33
permit the central portion 19 of the diaphragm 31 to move into contact with
the valve seat 23 in a stable and controlled manner.” Grunert, col. 6, ll. 40-
43. Second, merely pointing out claim language and asserting that
corresponding elements are not disclosed in the prior art is not an argument
sufficient to convince us of the separate patentability of a claim. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”)
Appeal 2011-006256
Application 11/420,492

- 9 -
We are not persuaded of any error in the Examiner’s rejection of
claims 23 and 26. We affirm the Examiner’s rejection of claims 23 and 26.
DECISION
We affirm the decision of the Examiner to reject claims 22- 27.
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). See 37
C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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