Ex Parte Dipzinski et al

Board of Patent Appeals and Interferences

Oct 29, 2009

10639301 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY JOHN DIPZINSKI and
ARTHUR WILLIAM SHOREY1
____________

Appeal 2009-003762
Application 10/639,301
Technology Center 3600
____________

Decided: October 29, 2009
____________

Before MICHAEL W. O’NEILL, DANIEL S. SONG, and
KEN B. BARRETT, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Fernco, Inc. (App. Br. 1).
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The Appellants appeal under 35 U.S.C. § 134 from a Final Rejection
of claims 2-11, 13-15, and 18-24. Claims 1, 12, and 16-17 have been
previously canceled (App. Br. 2). An Amendment After Final (in which
only independent claims 5 and 18 were amended) has not been entered by
the Examiner (App. Br. 2). The refusal to enter the Amendment was noted
in an Advisory Action mailed February 2, 2007. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b) (2002).
The claimed invention is directed to a closet (i.e., toilet) flange seal
and a water closet assembly having a closet flange seal.
Independent claim 5 reads as follows (App. Br. 16, Claims App’x.;
emphasis added):
5. A closet flange seal comprising:
a horn section having a connecting flange, a conical wall,
and a ring end wall, the conical wall being integral with and
interconnecting the connecting flange and ring end wall;
a body section integral with the horn section, the body
section having a tubular body wall with an outer face, a first
end integral with the horn section, and a second end; and
a sealing fin extending outwardly from the outer face,
circumscribing the body, and oriented at a predetermined angle
relative to the outer face;
wherein the horn section, body section, and sealing fin
are each formed of one piece of material having a Shore A
hardness of less than about 83, and further wherein the body
wall has a substantially uniform thickness between said sealing
fin and horn section, and the conical wall has a thickness less
than the substantially uniform body wall thickness between said
sealing fin and horn section.

Independent claim 18 recites a water closet assembly with a closet
flange seal having the features noted with respect to independent claim 5
(App. Br. 18-19, Claims App’x.).
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The evidence relied upon by the Examiner in rejecting the claims is:
Bush US 2,924,472 Feb. 9, 1960
Schwartz US 3,349,412 Oct. 31, 1967
Flegel US 3,702,193 Nov. 7, 1972
Spells, Sr. (“Spells”) US 6,789,275 B2 Sep. 14, 2004

The Examiner rejected claims 2-6, 10, 11, 13-15, 18, and 22-24 under
35 U.S.C. § 103(a) as unpatentable over Spells, Schwartz, and Bush.
The Examiner rejected claims 7-9 and 19-21 under 35 U.S.C. § 103(a)
as unpatentable over Spells, Schwartz, Bush, and Flegel.

We AFFIRM.

ISSUES
The following issues have been raised in the present appeal:
1. Whether the Appellants have shown that the Examiner erred in
finding that Spells describes a body wall that “has a substantially uniform
thickness between said sealing fin and horn section” and a conical wall that
“has a thickness less than the substantially uniform body wall thickness
between said sealing fin and horn section” as recited in independent claims 5
and 18.
2. Whether the Examiner erred in finding that Schwartz describes
a closet flange seal that includes a horn section, a body section, and a sealing
fin each formed of one piece of material as recited in independent claims 5
and 18.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Spells describes a toilet base extension sleeve 10 (i.e., closet
flange seal) that includes a mounting face 13, an extension member 14
having an outer surface 14A, an upper portion 19 having an inner
clearance surface 18 and an outer clearance surface 12, and a lower
face 15 (i.e., connecting flange) (col. 2, ll. 1-5; figs. 1-3).
2. In Spells, lower portion 14C of extension member 14 is
slidingly positioned within a sealing boot 20, the sealing boot having a
plurality of sealing lips 22 (i.e., sealing fins) that extend outwardly
from an outer surface 20B thereof. (Col. 2, ll. 61-64; col. 2, l. 67 –
col. 3, l. 4; fig. 3)
3. In Spells, the outer clearance surface 12 consists substantially
of four flat surfaces 12A, 12B, 12C (i.e., conical wall), and 12D (i.e.,
ring end wall) that define the outer clearance sealing surface 12 (col.
2, ll. 15-18; fig. 3).
4. Figure 3 of Spells with the Examiner’s annotations is
reproduced below (Ans. 6).
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Figure 3 of Spells illustrates a side section view of the toilet base
extension sleeve described in Spells. The Examiner’s annotations
identify the portions of Spells’ toilet base extension sleeve that the
Examiner considers as corresponding to a “horn section” and a “body
section” (Ans. 6; Spells fig. 3).
5. In the annotated Figure 3 of Spells reproduced above, the body
wall of Spells has a substantially uniform thickness between the
sealing boot (i.e., sealing fin) and horn section that is greater than the
thickness of the conical wall (Ans. 6; Spells fig. 3). Hence, the
conical wall of the horn section has a thickness less than the
substantially uniform body wall thickness between the sealing fin and
horn section.
6. Schwartz describes a gasket for sealing the connection between
a toilet bowl outlet and a soil pipe that extends upwardly through a
floor, the gasket including a plastic ferrule 12 (col. 2, ll. 9-15; figs. 1
and 5).
7. In Schwartz, the plastic ferrule 12 is unitarily formed with a
radial flange 18 (i.e., connecting flange) at its upper end, and is of
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stepped configuration having an upper circumferential portion 20 (i.e.,
horn section), intermediate circumferential portion 24, and a lower
circumferential portion 22 (i.e., body section) (col. 2, ll. 20-31; figs. 1
and 5).
8. In Schwartz, the lower portion 22 of the plastic ferrule 12 is
formed with three spaced apart outer circumferential flanges or lips 34
(i.e., sealing fins) that engage the soil pipe 30 (col. 2, ll. 48-57; fig. 1).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
The transitional terms “comprises”, and its synonym, “includes”, are
open-ended and do not exclude additional, unrecited elements. See SanDisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1284 (Fed. Cir. 2005). On
the other hand, the transitional term “having” must be interpreted in light of
the specification to determine whether it is open or closed-ended. See, e.g.,
Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376 (Fed.
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Cir. 2000); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559,
1573 (Fed. Cir. 1997).

ANALYSIS
Obviousness rejection over Spells, Schwartz, and Bush
Initially, we note that the Appellants only argue the patentability of
independent claims 5 and 18 with respect to this rejection (App. Br. 10).
The rejected dependent claims are not separately argued by the Appellants,
and therefore, stand or fall with their corresponding independent claim. See
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner rejects claims 2-6, 10, 11, 13-15, 18, and 22-24 as
obvious over the combination of Spells, Schwartz, and Bush (Ans. 3-4). In
particular, the Examiner finds that Spells describes the invention recited in
independent claims 5 and 18 except for the horn, body and fins being formed
of one-piece of material and the Shore A hardness of the material used.
(Ans. 3; see also FF 1-5). To cure the deficiency of Spells with respect to
being formed of one-piece of material, the Examiner relies on Schwartz,
asserting that Schwartz teaches “a toilet flange seal having a horn section,
body section, and sealing fins” made “from one-piece of material.” (Ans. 3;
see also FF 6-8). Therefore, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to make the fins integral with the
body by using one-piece of material as taught by Schwartz. (Ans. 3).
Firstly, the Appellants argue that Spells neither describes a body wall
that “has a substantially uniform thickness between said sealing fin and horn
section,” nor a conical wall that “has a thickness less than the substantially
uniform body wall thickness between said sealing fin and horn section” as
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recited in independent claims 5 and 18 (App. Br. 11-13). In this regard, the
Appellants contend that the horn section recited in claims 5 and 18 is
narrowly defined to be between a connecting flange at one end and a ring
end wall at the other end (Reply Br. 5 citing Spec. ¶ [0013]). The
Appellants assert that the horn section of Spells extends between lower face
15 and flat surface 12D, but does not include any portion of the tubular body
wall below the flat surface 12D (App. Br. 12; Reply Br. 5). Thus, the
Appellants contend that the Examiner erred in interpreting the horn section
limitation recited in claims 5 and 18 so as to allow inclusion of a portion of
the tubular body wall of Spells that is between flat surface 12D and sealing
boot 20 (Ans. 3 and 6; see also FF 4).
We disagree with the Appellants that the “horn section” limitation
recited in claims 5 and 18 must be read to exclude the portion of the Spells’
seal below the ring end wall. Claim 18 merely recites that the horn section
“includes a connecting flange, a conical wall, and a ring end wall…” It is
well established that the transitional term “includes”, is inclusive or open-
ended and does not exclude additional, unrecited elements. See SanDisk
Corp., 415 F.3d at 1284. On the other hand, the “horn section” limitation
recited in claim 5 utilizes the transitional term “having”, which must be
interpreted in light of the specification to determine whether it is open or
closed-ended. See Lampi Corp., 228 F.3d at 1376; Regents of the Univ. of
Cal., 119 F.3d at 1573. In this regard, the Specification indicates that the
Appellants intended the term “having” in claim 5 to be open, the cited
portion of paragraph [0013] merely paraphrasing the claim limitation at
issue and using the open-ended term “includes” to describe the portions of
the horn section 28. Thus, the Specification indicates that the horn section
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28 must have at least a connecting flange 32, a conical horn wall 34, and a
ring end wall 38, but that it may have other parts as well. We, therefore,
find no reversible error with the Examiner’s construction of “horn section”
to include a portion of the tubular body wall between the ring end wall and
sealing fin.
The Appellants also assert that the Examiner’s interpretation of the
“horn section” limitation renders the “substantially uniform thickness”
limitation meaningless because every device “ha[s] a ‘substantially uniform
thickness’ along a very short distance.” (Reply Br. 6). However, we
disagree and remind the Appellants that it is their burden to precisely define
the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Claims 5 and 18 do not specifically recite the distance between the
sealing fin and horn section in which a “substantially uniform thickness” is
required, for example, by reciting the distance relative to another dimension
of the seal. Hence, because Spells describes a gasket having a conical wall
that has a thickness less than the substantially uniform body wall thickness
between the sealing fin and horn section (FF 5), the Appellants’ arguments
do not persuade us of reversible error.
Lastly, the Appellants argue that Schwartz does not describe a horn
section, body section, and sealing fin each formed of one piece of material as
recited in independent claims 5 and 18 (Reply Br. 3-4). In this regard, the
Appellants contend that because Schwartz describes a liner 14 and a plastic
ferrule 12 bonded together, Schwartz does not satisfy the recited “one piece
of material” limitation (Reply Br. 4).
We disagree with the Appellants and find no error with the
Examiner’s application of Schwartz. We understand the Examiner’s
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rejection as having acquiesced to the Appellants’ construction of the “one-
piece of material” limitation so as to require the recited components to be of
a unitary or one-piece construction which is formed of a single piece of
material. As we further understand this rejection, the Examiner relies on the
plastic ferrule 12 of Schwartz, not the combination of the plastic ferrule 12
and liner 14, to support her finding that “Schwartz teaches making all
sections from one-piece of material.” (Ans. 3). As shown in Figures 1 and
5, the plastic ferrule of Schwartz is depicted as being a unitary piece, the
ferrule including a horn section, a body section and a sealing fin recited in
claims 5 and 18 (FF 6-8). Thus, the Examiner’s proposed combination of
Spells, Schwartz, and Bush results in the closet flange seal recited in claim
5, and the water closet assembly recited in claim 18.
In view of the above, the Appellants have not shown that the
Examiner erred in concluding that the subject matter of independent claims 5
and 18 is obvious over Spells, Schwartz, and Bush. Therefore, the
obviousness rejection of claims 2-6, 10, 11, 13-15, 18, and 22-24 is
sustained.

Obviousness rejection over Spells, Schwartz, Bush, and Flegel
The Examiner rejects dependent claims 7-9 and 19-21 as obvious over
the combination of Spells, Schwartz, and Bush, as applied to independent
claims 5 and 18, in further view of Flegel (Ans. 4-5). The Appellants
present no further arguments for patentability of these rejected dependent
claims beyond those presented for patentability of independent claims 5 and
18 (App. Br. 13-14; Reply Br. 7). Thus, for the reasons discussed supra
relative to the obviousness rejection over Spells, Schwartz, and Bush, the
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Examiner’s obviousness rejection of dependent claims 7-9 and 19-21 is
likewise sustained.

CONCLUSIONS
1. The Appellants have not shown that the Examiner erred in
finding that Spells describes a body wall that “has a substantially uniform
thickness between said sealing fin and horn section” and a conical wall that
“has a thickness less than the substantially uniform body wall thickness
between said sealing fin and horn section” as recited in independent claims 5
and 18.
2. The Examiner did not err in finding that Schwartz describes a
closet flange seal that includes a horn section, a body section, and a sealing
fin each formed of one piece of material as recited in independent claims 5
and 18.

DECISION
1. The Examiner’s rejection of claims 2-6, 10, 11, 13-15, 18, and
22-24 under 35 U.S.C. § 103(a) as unpatentable over Spells, Schwartz, and
Bush is AFFIRMED.
2. The Examiner’s rejection of claims 7-9 and 19-21 under 35
U.S.C. § 103(a) as unpatentable over Spells, Schwartz, Bush, and Flegel is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

Appeal 2009-003762
Application 10/639,301

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AFFIRMED

ack

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Dickinson Wright PLLC
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