Ex Parte Hillman

Board of Patent Appeals and Interferences

Oct 19, 2009

10880285 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Kathleen Hillman
____________________

Appeal 2009-004695
Application 10/880,285
Technology Center 3600
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Decided: October 19, 2009
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Before JAMESON LEE, SALLY GARDNER LANE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Kathleen
Hillman (Hillman) under 35 U.S.C. § 134(a) from a final rejection of claims
1-13, the only claims on appeal. Hillman requests reversal of the
Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part and enter a new ground of rejection.

References Relied on by the Examiner
Brazzell 3,752,121 Aug. 14, 1973
Kirk et al. 5,184,574 Feb. 9, 1993
Maguire 6,408,790 Jun. 25, 2002
Jeffery 6,925,964 Aug. 9, 2005

The Invention
Hillman claims a pet waste station designed to facilitate the portable
collection and disposal of pet waste. (Spec. ¶ [0011]). There are three
independent claims on appeal, claims 1, 8, and 13. Claims 2-7 and 9-12
depend directly or indirectly from claim 1.
All of Hillman’s claims require that the pet waste station comprise a
non-rigid permeable pad disposed atop a rigid mesh screen. (App. Br. 20-
22, Claims App’x.). Claim 1 is illustrative of the claimed invention and is
reproduced below along with a summary of claims 8 and 13:
1. A portable pet waste station for collecting urine from an animal,
comprising:
a shell defining a urine collection chamber;
a rigid mesh screen disposed atop the urine collection chamber;
and,
a non-rigid permeable washable pad disposed atop the rigid
mesh screen, wherein
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said non-rigid permeable washable pad having a total greatest
length less than a total length of the shell along a common axis,
said non-rigid permeable pad is removably detachable from said
shell, and
substantially all of the urine from the animal passes through
said rigid mesh screen and said non-rigid permeable pad and into the
urine collection chamber.

(App. Br. 20, Claims App’x.).
Claims 8 and 13 are similar to claim 1 but further require the non-
rigid permeable pad to be an artificial grass section. (Id. at 21-22).

The Rejections on Appeal
The Examiner provided the following grounds of rejection for the
claims on appeal.
1. The Examiner rejected claims 1-3, 6-7, 9-10, and 12 under
35 U.S.C. § 103(a) as unpatentable over Maguire.
2. The Examiner rejected claims 4-5 under 35 U.S.C. § 103(a) as
unpatentable over Maguire and Kirk.
3. The Examiner rejected claims 8 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Maguire and Brazzell.
4. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Maguire and Jeffery.
Hillman contends that claims 2-13 stand or fall together with claim 1.
(App. Br. 6 and 16-18). Specifically, Hillman argues that Maguire fails to
disclose the claimed non-rigid permeable pad. (Id. at 6-18). Regarding
claims 4-5, 8, 11, and 13, Hillman contends that the additional references
cited by the Examiner fail to cure the deficiencies of Maguire. (Id. at
16-18).
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B. ISSUE
1. Has Hillman shown that the Examiner incorrectly determined that
Maguire provides one of ordinary skill in the art with a reason to utilize a
detachable non-permeable pad?
2. Has Hillman shown that the Examiner incorrectly determined that one
of ordinary skill in the art would have had reason to employ the known
non-rigid artificial grass pad from Brazzell’s animal commode as part of
Maguire’s litter box?
C. FINDINGS OF FACT
Hillman’s Specification
1. Hillman’s specification discloses a portable pet waste station.
(Spec. ¶ [0011]).
2. Hillman Figure 3 depicts an embodiment of Hillman’s pet waste
station and is reproduced below:
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Hillman Figure 3, reproduced above, depicts Hillman’s pet waste
station.
3. Hillman’s pet waste station 310 comprises a shell defining a urine
collection chamber 320, a rigid mesh screen 340 disposed above the urine
collection chamber 320, and a non-rigid permeable pad 350 that may be
removably detached from the shell. (Spec. ¶¶ [0021]-[0022] and [0024]-
[0026]).
4. Hillman’s specification states that the claimed non-rigid permeable
pad provides significant improvement over prior art metal mesh screens.
(Id. at ¶ [0026]). Specifically, Hillman states:
[m]ost importantly, the non-rigid, permeable pad 350 can be
removed from the mesh screen 340 and washed within a
conventional washing machine, or disposed of without
requiring the messy and uncomfortable task of hand-washing
the permeable pad 350 as would be required in the case of a
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rigid, plastic or metal mesh. In this regard, the non-rigid nature
of the permeable pad 350 provides significant advantages over
the rigid mesh screens of the prior art as the non-rigid nature
permits the insertion of the permeable pad 350 in a washing
machine.
(Id.).
5. Hillman’s specification states that the claimed non-rigid permeable
pad may be formed from artificial grass. (Id. at ¶ [0025]).
Maguire
6. Maguire teaches an animal litter box for receiving animal waste.
(Maguire 1:5-7).
7. Maguire Figure 1 depicts an embodiment of Maguire’s litter box
and is reproduced below:

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Maguire Figure 1, reproduced above, depicts an embodiment of
Maguire’s litter box.
8. Maguire’s litter box includes a drain pan 18 that supports a removably
detachable litter tray 2. (Maguire 3:17-22 and 3:28-40, Fig. 1).
9. Maguire teaches that the litter tray 2 includes a rigid permeable
support portion 10 and an upper fine metal mesh screen 14. (Id. at 3:64 to
4:15).
Brazzell
10. Brazzell is directed to an animal commode 10 comprising an
impervious tray 20 and an artificial grass disposable (detachable) mat or pad
30 that is designed to fit within the tray. (Brazzell 1:20-24, 2:11-17, and
2:45-63).
11. Brazzell Figure 3 depicts an embodiment of Brazzell’s artificial grass
pad and is reproduced below:

Brazzell Figure 3 reproduced above, depicts an embodiment of
Brazzell’s artificial grass pad.
12. Brazzell teaches that the artificial grass pad 30 may be colored green
and coated with an animal attractant to encourage animals to utilize the
animal commode. (Id. at 2:45-63).
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D. PRINCIPLES OF LAW
While claim terms are given their broadest reasonable interpretation
during examination, that interpretation must be consistent with the
specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. Id. at 420. In
particular, the combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. Id. at 416.

E. ANALYSIS
As discussed above, claims 1-13 each recite a non-rigid permeable
pad disposed atop a rigid mesh screen. (App. Br. 20-22, Claims App’x.).
For reasons made apparent below, the rejections of claims 1-13 can be
treated as two distinct groups: (i) the rejections of claims 1-7 and 9-12, over
Maguire alone or in combination with references other than Brazzell, and
(ii) the rejections of claims 8 and 13 over Maguire and Brazzell.

Claims 1-7 and 9-12
Claims 1-7 and 9-12 each require a non-rigid permeable pad. (App.
Br. 20, Claims App’x.). The Examiner determined that Maguire teaches the
claimed non-rigid permeable pad. Specifically, the Examiner interpreted
Maguire’s disclosure of an upper fine metal mesh screen 14 as teaching a
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non-rigid permeable pad. (Ans. 3 and 8, “The terminology ‘non-rigid
permeable pad’ is maintained as being disclosed by the fine metal mesh
screen of Maguire”).
Hillman acknowledges that Maguire teaches a metal mesh screen 14.
(App. Br. 6-7). Hillman however contends that Maguire’s metal mesh
screen 14 is distinguishable from the claimed non-rigid permeable pad.
(App. Br. 6-14; Reply Br. 2-5). Specifically, Hillman contends that it is
inconsistent with the specification to interpret Maguire’s metal mesh screen
14 as the claimed non-rigid permeable pad. (App. Br. 13-14; Reply Br. 2-5).
Although claim terms are given their broadest reasonable
interpretation during examination, that interpretation must be consistent with
the specification. Morris, 127 F.3d at 1054. It is clear from the
specification that with regard to the term non-rigid permeable pad Hillman
seeks to exclude prior art rigid metal mesh screens. Specifically, Hillman
teaches that the claimed non-rigid permeable pad provides significant
improvement over prior art metal mesh screens. (Spec. ¶ [0026]). The
Examiner however, has failed to demonstrate that the prior art metal mesh
screen of Maguire is distinct from the prior art rigid metal mesh screens
excluded from Hillman’s claims. Accordingly, based on the record before
us, we hold that Hillman’s non-rigid permeable pad is distinguishable over
Maguire’s metal mesh screen 14.
Additionally, the Examiner relies upon Maguire in combination with
other prior art references (Kirk and Jeffery) to reject claims 4-5 and 11.
(Ans. 5-6). The Examiner however does not articulate why Kirk and/or
Jeffery provide a reason to utilize the claimed non-rigid permeable pad, nor
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is such a reason apparent from the references themselves. Accordingly, we
reverse the Examiner’s rejections of Hillman claims 1-7 and 9-12.

Claims 8 and 13
The Examiner rejected claims 8 and 13 as unpatentable under
35 U.S.C. § 103(a) over Maguire and Brazzell. (Ans. 5). The Examiner
found that Maguire teaches all material limitations of Hillman’s claims 8 and
13 with the exception of the artificial grass pad. The Examiner however,
relied upon Brazzell, which teaches that it was known in the art to employ
artificial grass pads in order to “entice the pet to use the mat 30 for relieving
itself.” (Ans. 5 and Brazzell, 2:59-63).
As discussed above Hillman contends that Maguire fails to teach a
non-rigid permeable pad that is removably detachable. (App. Br. 6-16).
Hillman also provides a general statement that Brazzell does not cure the
deficiencies of Maguire. (Id. at 17, “The Examiner’s secondary reference of
Brazzell does not cure the argued deficiencies of Maguire.”)
Hillman’s specification teaches that the non-rigid permeable pad may
be formed from artificial grass. (Spec. ¶ [0025]). Like Hillman, Brazzell
teaches an animal commode having a disposable (detachable) artificial grass
pad 30. (Brazzell 1:27-33, 2:11-17, and 2:45-66). The Examiner found that
Brazzell’s artificial grass pad was a non-rigid artificial grass pad as defined
by Hillman’s claims and Hillman did not dispute this finding. (Ans. 5). We
find that Brazzell teaches the use of a detachable (disposable) non-rigid
permeable pad.
Additionally, Brazzell provides a reason to utilize its artificial grass
pad as it is designed to entice the pet to use the pad for relieving itself.
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(Brazzell at 2:59-63). Thus, one of ordinary skill in the art would have had
reason to utilize Brazzell’s non-rigid permeable pad. Accordingly, we hold
that it was obvious to one of ordinary skill in the art to utilize known
elements (a known artificial grass pad for an animal commode with a known
litter box) for their known purpose (enticing an animal to use a litter box) to
achieve a predictable result (improving an animal’s likelihood of using a
litter box). Based on the foregoing we affirm the Examiner’s rejections of
claims 8 and 13 under 35 U.S.C. § 103(a) as being unpatentable over
Maguire and Brazzell.

New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection for claims 1-7 and 9-12. Claims 1-3, 6-
7, 9-10, and 12 are rejected under 35 U.S.C. § 103(a) as obvious over
Maguire and Brazzell. Claims 4-5 are rejected under 35 U.S.C. § 103(a) as
obvious over Maguire, Kirk, and Brazzell. Claim 11 is rejected under 35
U.S.C. § 103(a) as obvious over Maguire, Jeffery, and Brazzell.
Regarding claims 1-3, 6-7, 9-10, and 12, Hillman does not dispute that
Maguire teaches all claim limitations, except for a detachable non-rigid
permeable pad. Similarly, as to claims 4-5, Hillman does not dispute that
the combination of Maguire and Kirk teaches all claim limitations, except
for a detachable non-rigid permeable pad. Further, as to claim 11 Hillman
does not dispute that the combination of Maguire and Jeffery teaches all
claim limitations, except for a detachable non-rigid permeable pad.
As discussed above, we agree with Hillman that Maguire taken alone
or in combination with Kirk or Jeffery fails to teach a detachable non-rigid
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permeable pad. Brazzell however teaches a disposable (detachable) non-
rigid permeable pad (artificial grass pad) for enticing an animal to relieve
itself in the waste station.
The claims do nothing more than combine known elements (a known
pad for an animal commode with a known litter box) for their known
purpose (enticing an animal to use a litter box) to achieve a predictable result
(improving an animal’s likelihood of using a litter box). Accordingly,
claims 1-3, 6-7, 9-10, and 12 are rejected under 35 U.S.C. § 103(a) as
obvious over Maguire and Brazzell. Similarly, claims 4-5 are rejected under
35 U.S.C. § 103(a) as obvious over Maguire, Kirk, and Brazzell. Further,
claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over Maguire,
Jeffery, and Brazzell.

F. CONCLUSION
1. Hillman has shown that the Examiner incorrectly determined that
Maguire provides one of ordinary skill in the art with a reason to utilize a
detachable non-permeable pad.
2. Hillman has not shown that the Examiner incorrectly determined that
one of ordinary skill in the art would have had reason to employ a known
non-rigid artificial grass pad from Brazzell’s animal commode as part of
Maguire’s litter box.

G. ORDER
The rejections of claims 1-3, 6-7, 9-10, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Maguire are reversed.
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The rejections of claims 4-5 under 35 U.S.C. § 103(a) as being
unpatentable over Maguire and Kirk are reversed.
The rejections of claims 8 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Maguire and Brazzell are affirmed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Maguire and Jeffery is reversed.

We have also entered a new ground of rejection against claims 1-7
and 9-12 under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:

(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner…; or

(2) Request that the proceeding be reheard under 37 C.F.R.
§ 41.52 by the Board upon the same record …

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).

AFFIRMED-IN-PART
New ground of rejection under 37 C.F.R. § 41.50(b) (2008)

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