Ex Parte D

Board of Patent Appeals and Interferences

Jun 19, 2009

10606414 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RALPH D’AGOSTA
____________

Appeal 2009-000973
Application 10/606,414
Technology Center 2800
____________

Decided:1 June 19, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000973
Application 10/606,414

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1 and 3-17. See App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.

STATEMENT OF THE CASE
Appellant invented a portable water heating system.2
Claim 1 which further illustrates the invention follows:
1. A portable water heating system, the system comprising:
a housing with an inside and an outside, the housing adapted to be
portable to store and transport water received therein;
a water inlet disposed on the outside of the housing;
a first hose nipple attached to the water inlet, the first hose nipple
adapted to connect a water source to the system;
a heating element adapted to heat water inside the housing;
an adjustable thermostatic control controlling the output of the heating
element;
a lining disposed inside of the housing, the lining adapted to protect
the inside of the housing from water corrosion;
a water outlet disposed on the outside of the housing; and
a second hose nipple attached to the water outlet, the second hose
nipple adapted to connect a fluid conduit for heated water distribution.

The Rejections
The Examiner relies upon the following prior art references as
evidence of unpatentability:

2 See generally App. Br. 3-5 and Spec 2-6.
2
Appeal 2009-000973
Application 10/606,414

Rodriguez U.S. 2,861,170 Nov. 18, 1958
Alston U.S. 4,947,025 Aug. 7, 1990
Nelson U.S. 4,974,551 Dec. 4, 1990
Twigg U.S. 5,853,553 Dec. 29, 1998
Winter U.S. 6,628,894 B2 Sep. 20, 2003

Claims 1 and 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rodriguez and Alston (Ans. 3-4).
Claims 3, 7, 8 and 12-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rodriguez, Alston and Winter (Ans. 5-6).
Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rodriguez, Nelson and Twigg (Ans. 6-7).

Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Claim 13
Appellant argues that Rodriguez is directed to a water heating
attachment for cold water pipes that is actually connected to a pipe for
support and therefore is not adaptable to store and transport water to a
desired location (App. Br. 6). The Examiner responds by arguing that the
Appellant’s use of “adapted to” in the claims does not impart a positive

3 Appellant argues claim 1 separately. See App. Br. 6-13.
3
Appeal 2009-000973
Application 10/606,414

limitation and therefore Rodriguez only has to disclose the ability to perform
as set forth in the claim in order for the claim to read on Rodriguez (Ans. 8).

ISSUE
Has the Appellant shown that the Examiner erred in finding that the
combination of Rodriguez and Alston discloses a portable water heating
system adapted to be portable to store and transport water?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Rodriguez
1. Figure 1 of Rodriguez is reproduced below:

4
Appeal 2009-000973
Application 10/606,414

Figure 1 discloses a heating attachment for cold water pipes having a
tank (15), a source of heat (17), shower unit (16), cold water supply pipe
(23) coupled to the heater and thermostat.

2. Figure 6 of Rodriguez is reproduced below:

Figure 6 discloses a valve unit having a water inlet (29a), water outlet
(29c), heated water tube (44), cold water port (70) and lift ring (64).

3. Rodriguez discloses on the outer surface of the tank a strip of metal (56)
that can be marked or stamped with such legends as “closed,” “open,”
“cold,” “hot,” “warm,” “tepid,” and / or “very hot” to guide the user of the
device taking a shower (col. 3, ll. 30-35).

4. Rodriguez discloses a valve is used to adjust the temperature of the water
by controlling the amount of cold water that is mixed with the heated water
(col. 4, ll. 5-23).
5
Appeal 2009-000973
Application 10/606,414

5. Figure 9 of Rodriguez is reproduced below:

Figure 9 discloses a valve for controlling the amount of cold water that
combines with the heated water from the heating element.

6. Rodriguez discloses using a thermostat (66) as a safety device that opens
the circuit of the heating element whenever the temperature of the valve
chamber rises to a predetermined point (col. 3, ll.62-67).

PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
6
Appeal 2009-000973
Application 10/606,414

Graham v. John Deere Co., 383 U.S. 1, 17 (1966). If the Examiner's burden
is met, the burden then shifts to the Appellant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
The Appellant argues that Rodriguez’s heating attachment includes a
tank capable of holding water while attached to the cold water pipe (App.
Br. 6-7). Appellant further argues that because the attachment is only
intended to be used to heat and dispense water when it is connected to the
cold water pipe it is not adaptable for transporting the water within its tank
(App. Br. 6-7). As noted previously, the Examiner argues that the
Appellant’s use of “adapted to” in the claims does not impart a positive
limitation and therefore Rodriguez only has to disclose the ability to perform
as set forth in the claims in order for the claims to read on Rodriguez (Ans.
8). We agree with the Examiner’s position.
The Appellant argues that the heat attachment cannot be adapted to be
portable because it is connected to a cold water supply pipe (App. Br. 6).
We disagree with the Appellant’s position for several reasons. First,
Rodriguez goes to great lengths to disclose that his invention has many
applications such as providing heated water in camps, hunting and fishing
lodges, in country homes and other places where hot water is needed but
high installation costs are unwanted (col. 1, ll. 35-39). This disclosure by
Rodriguez indicates that he recognizes that the heating unit has to be
portable in order to service various locations. Further, the heating unit can
7
Appeal 2009-000973
Application 10/606,414

be coupled to a location via a cold water supply pipe alone (FF1 and col. 1,
ll. 72-73). The claims only require that the heating system be adapted to be
portable and we see no reason why Rodriguez’s unit cannot be portable with
a simple disconnection from the cold water supply pipe.
Appellant further argues that Rodriguez does not disclose the water
heating attachment is portable, stores and transport water, and distributes
heated water (Reply. Br. 3). This argument is not commensurate with the
scope of the claims. Claim 1 indicates that the first hose is connected to a
water source while the second hose is adapted to serve a conduit for heated
water distribution. Claim 1 does not require the heating system to store and
transport heated water for distribution. Therefore the Appellant’s argument
is not persuasive.
The Appellant also argues that Rodriguez’s tank while capable of
holding two-gallons of water while attached to a non-portable cold water
supply pipe is not adaptable to transport the water held within its tank (App.
Br. 6-7). Again, claim 1 only requires that the housing be “adapted to be
portable to store and transport the water received therein” and we see no
reason why with a simple disconnection from the non-portable cold water
pipe that Rodriguez’s unit cannot store and transport the water that it
received.
Claim 1 requires “an adjustable thermostatic control controlling the
output of the heating element.” The Examiner indicated that although
Rodriguez discloses the use of a thermostat (66), it is primary used as a
safety device to automatically open the circuit of the heating coil whenever
the temperature of the valve chamber rises to a predetermined point (Ans. 4).
Also, see FF 6. The Examiner relies upon Alston to disclose the adjustable
8
Appeal 2009-000973
Application 10/606,414

thermostatic control that controls the output of the heating element (Ans. 4).
We agree with the Examiner that “[i]t would have been obvious to
incorporate the teachings of Alston et al. as a means to offer the ability to
adjust the temperature of the water in accordance with the desires of the
consumer.” (Ans. 4). However, Rodriguez also discloses that the consumer
can adjust the temperature of the water by an adjustable thermostatic
controller. See FF 2-5. Most importantly, Rodriguez discloses that the
output of the heating element can be adjusted by a thermostatic control that
controls the amount of cold water that interacts with the heated water thus
controlling the output of the heating element (FF4-5).
We also agree with the Examiner’s assertion that Rodriguez’s
thermostat could be interpreted as adjustable and therefore the “adjustable
thermostatic control” claim limitation would read on the Rodriguez
reference (Ans. 4). Rodriguez discloses a thermostat (66) that is used for
safe operation of the heating attachment that automatically opens the circuit
of the heating coil whenever the temperature of the valve chamber rises to a
predetermined point (FF 6). The thermostat had to be adjusted to that
predetermined value; therefore, it is considered to be adjustable.
Therefore, for these reasons, we find that Rodriguez actually anticipates
claim 1. Nevertheless, we agree with the Examiner's obviousness rejection
based on Rodriguez and Alston as obviousness rejections can be based on
references that happen to anticipate the claimed subject matter. See In re
Meyer, 599 F.2d 1026, 1031 (CCPA 1979).
We therefore sustain the Examiner’s rejection of claim 1 for the
reasons stated previously.

9
Appeal 2009-000973
Application 10/606,414

Claims 3-17
Regarding the obviousness rejections of (1) claims 4-6 over
Rodriguez and Alston (Ans. 3-4); (2) claims 3, 7, 8 and 12-17 over
Rodriguez, Alston and Winter (Ans. 5-6); and (3) claims 9-11 over
Rodriguez, Nelson and Twigg (Ans. 6-7), we find that Appellant has not
persuasively rebutted the Examiner's prima facie case of obviousness for
these claims, but merely contended that the additional references fail to cure
the previously-noted deficiencies of Rodriguez and Alston (App. Br. 6-13).
Once the Examiner has satisfied the initial burden of presenting a
prima facie case of obviousness, the burden then shifts to Appellant to
present evidence and/or arguments that persuasively rebut the Examiner's
prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Since Appellant did not particularly point out errors in the Examiner’s
reasoning to persuasively rebut the Examiner's prima facie case of
obviousness, the rejections are therefore sustained.

CONCLUSION
Appellant has not shown that the Examiner erred in finding that the
combination of Rodriguez and Alston disclosed a portable water heating
system adapted to be portable to store and transport water.

ORDER
We have sustained the Examiner’s decision rejecting claims 1 and 3-
17.
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) (2007).
10
Appeal 2009-000973
Application 10/606,414

AFFIRMED

gvw
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
11