Ex Parte ESTEBANDownload PDFPatent Trial and Appeal BoardMar 2, 201612692054 (P.T.A.B. Mar. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/692,054 01122/2010 79681 7590 David A, Einhorn, Esq, Baker & Hostetler LLP 45 Rockefeller Plaza New York, NY 10111 03/04/2016 FIRST NAMED INVENTOR Daniel ESTEBAN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. DE1895 1031 EXAMINER MULLER, BRYAN R ART UNIT PAPER NUMBER 3727 NOTIFICATION DATE DELIVERY MODE 03/04/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Patents@bakerlaw.com IPGNYG@bakerlaw.com eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL ESTEBAN Appeal2014-002666 Application 12/692,054 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and FREDERICK C. LANEY, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Daniel Esteban (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-3 and 6-10, which are the pending claims. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed subject matter: 1. A gutter cleaning system for suctioning debris from a gutter mounted on a house or building above ground level including a vacuum cleaner and tubular hose extending from the 1 We refer to the Amended Appeal Brief filed on June 4, 2013, as "Br." Appeal2014-002666 Application 12/692,054 vacuum cleaner in combination with a suction head assembly comprising a first hollow tubular pipe having a curvilinear shape, a third hollow tubular pipe having a free end extending into the gutter and having a curvature forming a bend of above zero and less than ninety degrees and a second hollow tubular pipe of curvilinear shape interconnecting the first hollow tubular pipe to the third hollow tubular pipe, with the first tubular pipe being coupled at one end thereof to the tubular hose extending from the vacuum cleaner, a first adjustable fitting for interconnecting the opposite end of first tubular pipe to one end of the second tubular pipe to control angular rotational orientation of the free end of the third tubular pipe within the gutter in a substantially vertical plane perpendicular to ground level, and a second adjustable fitting for interconnecting the opposite end of the second tubular pipe to the third tubular pipe to control angular rotational orientation of the free end of the third tubular pipe within the gutter in a substantially horizontal plane parallel to ground level wherein said first and second adjustable fitting comprises having one position for interconnecting the pipes to which the adjustable fitting attaches into a fixed and locked angular orientation relative to one another and having another position for permitting the locked angular orientation between the pipes to be manually readjusted into another position. Br. 17 (Claims App.). REJECTIONS Claims 1-3 and 6-10 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1-3 and 6-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Davis (US 3,971,098, issued July 27, 1976), Gutry (US 6,519,809 B2, issued Feb. 18, 2003), and Mattson (US 4,402,106, issued Sept. 6, 1983). 2 Appeal2014-002666 Application 12/692,054 ANALYSIS Rejection of claims 1 and 9 as indefinite Claim 1 recites, inter alia, "a first adjustable fitting ... to control angular rotational orientation of the free end of the third tubular pipe within the gutter in a substantially vertical plane perpendicular to ground level" ("vertical plane limitation"), and a second adjustable fitting ... to control angular rotational orientation of the free end of the third tubular pipe within the gutter in a substantially horizontal plane parallel to ground level" ("horizontal plane limitation"). Br. 17 (emphasis added). Claim 9 is directed to a gutter cleaning device and recites similar limitations. Id. at 19 (Claims App). The Examiner determines that "the claimed planes are clearly variable depending on the orientation of the apparatus as a whole and the second horizontal plane would further be variable based on the adjustment of the second pipe section about the first plane." Final Act. 2. The Examiner also determines that "the scope of the claims are unclear due to variable planes within the claims that may be positioned differently than claimed." Id. Appellant contends the claimed apparatus is defined in a given orientation relative to ground level based upon its orientation to a gutter mounted on a building or a house (as set forth in the preamble of the claims) since in all cases a gutter when mounted to a house or building lies in a parallel plane substantially horizontal to ground level. Br. 5. Appellant also asserts that "[b]ecause the gutter is in a fixed relationship to ground level the claims clearly define the arrangement of the fittings for adjusting the rotation of the free end of the third tubular pipe within the gutter along both a vertical and horizontal plane relative to ground level." Id. at 7. 3 Appeal2014-002666 Application 12/692,054 Appellant has not established with evidence that "in all cases a gutter when mounted to a house or building lies in in a parallel plane substantially horizontal to ground level." Br. 5 (emphasis added). Nonetheless, we agree with Appellant that claims 1 and 9 are sufficiently clear when read in light of the Specification. Figure 1 of Appellant's application depicts a suction head assembly 14 including a portion within a gutter 30 of a building or residential home 32. Spec. 8, 11. 19-21. Figure 2 depicts a suction head assembly including interconnected tubular pipe sections 35, 36, and 38. Id. at 9, 11. 11-14. Pipe section 35 is coupled to pipe section 36 by fittings 22, 23 and locking mechanism 24, and pipe section 36 is interconnected to pipe section 38 by fittings 22', 23' and locking mechanism 24'. Id. at 9, 11. 19-22; 10, 11. 5-9; Figs. 5c, 6b. Pipe section 38 has a suction end 40. Id. at 10, 11. 5-7. The angular orientation of suction end 40 relative to gutter 30 can be adjusted by disengaging locking mechanisms 24, 24'. Id. at 12, 11. 1-8; Figs. 1, 5a---c, 6a-b. By disengaging locking mechanism 24, pipe sections 36, 38 can be rotated about fittings 22, 23 relative to pipe section 35. Referring to Figures 1, 2, and 4a, it can be visualized that when fittings 22, 23 are oriented to lie "in a substantially vertical plane perpendicular to ground level," this rotation of pipe sections 36, 38 about fittings 22, 23 will change the angular orientation of suction end 40 within gutter 30 "in a substantially vertical plane perpendicular to ground level," as claimed. By disengaging locking mechanism 24', pipe section 3 8 can be rotated about fittings 22', 23' relative to pipe section 36. Referring to Figures 1, 2 and 4e, it can be visualized that when fittings 22, 23 are oriented to lie "in a substantially vertical plane perpendicular to ground level," this rotation of pipe section 38 about fittings 4 Appeal2014-002666 Application 12/692,054 22', 23' will change the angular orientation of suction end 40 within gutter 30 "in a substantially horizontal plane parallel to ground level," as claimed. Likewise, it can be visualized that when fittings 22 ', 23' are oriented to lie "in a substantially horizontal plane parallel to ground level, " rotation of pipe section 38 about fittings 22, 23 will change the angular orientation of suction end 40 within gutter 30 "in a substantially vertical plane perpendicular to ground level," as claimed. The Examiner determines that "the claims as set forth are ambiguous because the claim limitations are only accurate if the apparatus as a whole remains in a fixed vertical orientation, which is not claimed." Ans. 6. We disagree. Claims 1 and 9 define the angular rotational orientation of the free end of the third tubular pipe relative to two planes that are oriented in respective specific orientations relative to ground level, and thus, also relative to each other. Even if the claimed suction head assembly can be positioned in orientations different from "a fixed vertical orientation," this does not establish that the scope of claim 1 or claim 9 is unclear. Rather, we find that the meanings of claims 1 and 9 are sufficiently clear in light of the disclosure. We do not sustain the rejection of claims 1-3 and 6-10 under 35 U.S.C. § 112, second paragraph. Rejection of claims 1-3 and 6--10 as unpatentable over Davis, Gutry, and Mattson Appellant presents substantially the same argument for patentability of claims 1 and 9, and does not present separate argument for patentability of claims 2, 3, 6-8, or 10. Br. 10-15. We select claim 1 as representative of 5 Appeal2014-002666 Application 12/692,054 the group, and claims 2, 3, and 6-10 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Davis discloses a first tubular pipe 11 and a third tubular pipe 22-24, but does not disclose a second tubular pipe connecting these pipes to one other. Final Act. 3. The Examiner determines that Davis does not disclose that "the second pipe may have a curvature forming a bend between zero and 90 degrees." Id. (emphasis added). We assume the Examiner intended to refer to the "the third pipe" instead of "the second pipe" because claim 1 recites "a curvature forming a bend of above zero and less than ninety degrees" for the third hollow tubular pipe, but recites no such limitation for the second hollow tubular pipe. Br. 17 (Claims App.). The Examiner also finds that Gutry discloses a tubular conduit having an open end with a curvature forming a bend of approximately 15°---60°. Final Act. 3. The Examiner concludes that, in view of Gutry, it would have been obvious to provide at least one attachment "forming a bend of above zero and less than 90°" for connection to Davis' first tubular pipe 11, "to allow for an optional nozzle to more easily reach all area of the gutter and more efficiently suction debris from gutters." Id. The Examiner also finds that Mattson discloses a pair of upper conduit portions 28, 30 which form the upper bend similar to first tubular pipe 11 of Davis, and are "rotatably connected to one another to allow the user to vary the angle of the nozzle to allow for more efficient cleaning of the gutter or allow for a more comfortable location for the user during cleaning." Final Act. 3. The Examiner concludes that it further would have been obvious to form Davis' first tubular pipe 11 from two separate, 6 Appeal2014-002666 Application 12/692,054 rotatably-connected conduit portions, as taught by Mattson, "to allow the user to vary the angle of the nozzle to allow for more efficient cleaning of the gutter or allow for a more comfortable location for the user during cleaning, which will also allow a user to provide alternate orientations for any of the connections disclosed by Davis or suggested by Gutry." Id. at 3- 4. We understand that the Examiner's combination replaces Davis's U- shaped manifold 11 with Mattson's inner section 30 and terminal section 28, and provides an attachment having a curvature taught by Gutry to the modified manifold 11 (i.e., at the end of terminal section 28). The attachment structurally modifies the nozzle head or attachment 14 of Davis. See Ans. 7. The Examiner explains that "Mattson provides motivation to provide adjustable connections between each pipe section." Ans. 8 (emphasis added). Mattson discloses that "two curved sections 28 and 30 [are] connected together to permit the terminal section 28 to be rotated relative to the inner section 30, thereby permitting an adjustment in the direction of the air flow from the elbow 26 into the trough 24." Mattson, col. 3, 11. 57---61. Figure 4 of Mattson shows that inner section 30 is connected to terminal section by a flange 32. See id. at col. 4, 11. 6-19. We further understand that the Examiner's combination provides a first rotatable connection between inner section 30 and terminal section 28, and a second rotatable connection between terminal section 28 and the attachment. As such, the Examiner's rejection relies on Mattson for its teaching in relation to the claimed first fitting that allows rotatable adjustment of the first and second tubular pipes, and the second fitting that allows rotatable adjustment of the second and third tubular pipes. 7 Appeal2014-002666 Application 12/692,054 The Examiner also relies on Gutry for disclosing a manual locking connection to secure conduit portions to each other and maintain the desired orientation between the conduit portions. Final Act. 4 (citing Fig. 7). The Examiner concludes that it would have been obvious to provide a locking mechanism, as taught by Gutry, to each of the connections between conduit portions "to similarly secure conduit portions to one another and maintain the desired orientation between conduit portions, thus making it easier for a user to adjust the configuration for cleaning a gutter using the system." Id. at 4--5. Appellant contends that Davis only teaches two tubular pipes or conduits 11, 13, and "does not teach a first adjustable fitting which interconnects the first tubular pipe to the second tubular pipe and a second adjustable fitting which interconnects the second tubular pipe to third tubular pipe." Br. 10-11. However, the Examiner does not rely on Davis for teaching first, second, and third tubular pipes. Rather, the Examiner relies on Mattson for teaching the claimed first and second tubular pipes, and relies on Gutry to support the modification of Davis' nozzle head 14 to provide the claimed third tubular pipe. Additionally, the Examiner relies on Mattson, not Davis, for disclosing the claimed "first adjustable fitting" and "second adjustable fitting." Appellant's contentions address Davis separately and do not address the Examiner's findings and reasoning in regard to what the applied references disclose or suggest in combination. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Consequently, Appellant's 8 Appeal2014-002666 Application 12/692,054 contentions do not apprise us of any error in the Examiner's findings or reasoning based on the combination of references. Appellant also contends that Davis' nozzle head 14 is not a "tubular pipe." Br. 11. Even assuming this is correct, the Examiner's combination modifies nozzle head 14 in view of Gutry' s teaching of a nozzle 24 having a tubular configuration for positioning in a gutter 2. See Gutry, Figs. 3, 4. Appellant fails to provide any persuasive reason why this modification of Davis' nozzle head 14 would not result in the third tubular pipe, as claimed. Appellant also contends that Davis does not teach or suggest rotating nozzle head 14 within a gutter, and does not disclose the claimed adjustable fittings. Br. 11. These contentions also are not persuasive. The Examiner relies on Mattson, not Davis, for teaching the claimed first and second adjustable fittings. In addition, the Examiner articulates an adequate reason with a rational underpinning for combining the teachings of Mattson with Davis. Again, Appellant's contention addresses Davis separately, and not what the applied references disclose or suggest in combination. Appellant also contends that Gutry discloses only two tubular pipes 12, 18, and not three as claimed. Br. 12-13. However, the Examiner does not rely on Gutry for disclosing each of the claimed first, second, and third tubular pipes. In addition, the Examiner relies on Mattson, not Gutry, in relation to the claimed first and second adjustable fittings to provide adjustment in both vertical and horizontal planes in the combination. Id. at 13. Appellant's contentions do not address the Examiner's rejection. Appellant further contends that Mattson only teaches adjusting the free end of elbow 26 along a single plane parallel to the gutter, and does not 9 Appeal2014-002666 Application 12/692,054 teach a first adjustable fitting to interconnect a first tubular pipe and second tubular pipe, and a second adjustable fitting to interconnect the second tubular pipe and a third tubular pipe, to control the angular rotational orientation of the free end of a third tubular pipe as recited in the "vertical plane limitation" and the "horizontal plane limitation." Br. 13-14. Appellant's contentions address Mattson separately, rather than address what the applied references disclose or suggest in combination. The Examiner's combination of Davis, Gutry, and Mattson includes first, second, and third tubular pipes, and first and second adjustable fittings for interconnecting the first, second, and third tubular pipes as discussed above. See Final Act. 3-5; Ans. 7-8. The Examiner articulates an adequate reason with a rational underpinning for combining the teachings of Mattson and Gutry with those of Davis to result in these claimed features. Appellant does not apprise us of any error in the Examiner's findings or reasoning. Regarding the claimed "manually adjustable locking mechanism" of the first and second adjustable fittings, Appellant contends that "Gutry does not teach or suggest the use of two separate adjustable fittings in a suction head assembly for locking and unlocking the three pipes relative to one another." Br. 15. This contention addresses Gutry separately, rather than what the applied references disclose or suggest in combination. See Final Act. 4--5. The Examiner does not rely on Gutry alone for disclosing the first, second, and third tubular pipes. In addition, the Examiner articulates an adequate reason with a rational underpinning for providing a locking mechanism, as taught by Gutry, in each of the first and second adjustable fittings. Id. Appellant does not apprise us of any error in the Examiner's findings or reasoning. 10 Appeal2014-002666 Application 12/692,054 We sustain the rejection of claim 1, and claims 2, 3, and 6-10 falling with claim 1, as unpatentable over Davis, Gutry, and Mattson. DECISION The rejection of claims 1-3 and 6-10 under 35 U.S.C. § 112, second paragraph, is reversed. The rejection of claims 1-3 and 6-10 under 35 U.S.C. § 103(a) as unpatentable over Davis, Gutry, and Mattson 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)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation