Ex Parte ESTEBAN

Patent Trial and Appeal Board

Mar 2, 2016

12692054 (P.T.A.B. Mar. 2, 2016)

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).
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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.
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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
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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
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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,
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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.
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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
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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
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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.
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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
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