Ex Parte KAH

Patent Trial and Appeal Board

Apr 24, 2017

13827369 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
P/3426-298 7886
EXAMINER
LIEUWEN, CODY J
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
13/827,369 03/14/2013
2352 7590 04/24/2017
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
CARL L.C. KAH JR.
04/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL L.C. KAH JR.
Appeal 2017-005531
Application 13/827,369
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Carl L.C. Kali Jr. (“Appellant”) seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated February 10, 2016 (“Final Act.”), and as further explained in the
Advisory Action dated July, 27, 2016 (“Adv. Act.”), rejecting claims 1—28.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2017-005531
Application 13/827,369
BACKGROUND
The disclosed subject matter “relates to a protective nozzle top
assembly for use with turf type sprinklers for in-ground installation.” Spec.
12. Claims 1, 8, 15, 22, and 23 are independent.1 Claim 1 is reproduced
below, with emphasis added:
1. A protective nozzle top for use in an
irrigation sprinkler including a riser with a nozzle
assembly movably mounted thereon, the riser
movably mounted in a sprinkler body between a
retracted position and an extended position, the
protective nozzle top comprising:
a first cover portion attached to the outside
of the sprinkler body; and
a second cover portion, mounted on top of
the first cover portion, and configured to protect
the nozzle assembly when the riser is in the
retracted position.
REJECTIONS
1. Claims 1—23 and 25—28 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Lawson (US 5,222,669, issued June 29, 1993).
2. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawson and Hunter (US 6,138,924, issued Oct. 31, 2000).
1 We refer to the Claims Appendix filed with the Response to
Notification of Non-Compliant Appeal Brief dated November 3, 2016.
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Application 13/827,369
DISCUSSION
Rejection 1 — Claims 1—23 and 25—28
A. Claims 1—14
Appellant argues the patentability of the two independent claims in
this group—claims 1 and 8—based on the same arguments and does not
provide separate arguments for any dependent claims. Appeal Br. 4—6. We
select independent claim 1 as representative, with the remaining claims
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
Claim 1 recites, among other limitations, “a first cover portion
attached to the outside of the sprinkler body.” Appeal Br. 11 (Claims App.).
In the Rejection, the Examiner identified element 12 in Lawson as the
“sprinkler body” and elements 40/46 as the “first cover portion.” Final Act.
3 (citing Lawson, col. 4,11. 16—20, Figs. 2, 3). Appellant argues that Lawson
fails to disclose this limitation for two reasons. Appeal Br. 4.
First, Appellant argues that elements 40/46 do not satisfy the
limitation at issue because “the flange 40 is a separate and distinct element
from the ring 46” and because “the ring 46 is entirely within the sprinkler
body 12 and below the top of the riser 22 and the top of the sprinkler body
12 such that it cannot be ‘attached to the outside of the sprinkler body’ as
required by claim 1.” Appeal Br. 4—5. Appellant also argues that certain
statements in the Advisory Action are “simply incorrect” and that “[cjlaim 1
explicitly requires that the first cover portion is ‘attached to the outside of
the sprinkler body,’ such that it cannot also be inside the sprinkler body.”
Id. at 5 (discussing Adv. Act. 2).
The Examiner responds that “the limitation ‘attached to the outside of
the sprinkler body’ has been interpreted to require only that the first cover
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portion is attached in some way to the outside of the sprinkler body.” Ans.
10. The Examiner also states that “[t]his limitation does not require the first
cover portion to be located entirely outside of the sprinkler body, or even
attached directly to the outside of the sprinkler body.” Id.2 According to the
Examiner, because elements 40/46 are “attached to the body, 12, as shown
by figure 2 of Lawson, it is also attached to the outside of the sprinkler body
and is interpreted to teach this limitation.” Id. at 10—11. The Examiner also
states that “claim 1 does not recite a limitation requiring the first cover
portion to be a single, integral structure.” Id. at 11.3
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). As noted by the
Examiner, the limitation at issue “does not require the first cover portion to
be located entirely outside of the sprinkler body.” Ans. 10. Here, Appellant
does not argue that element 40 in Lawson is not “attached to the outside of
the sprinkler body” 12 and has not shown error in the finding that the
combination of elements 40/46 satisfies the limitation at issue. As to the
separateness of elements 40 and 46, Appellant has not shown why the
2 Appellant replies that the Examiner’s proposed construction “is
simply incorrect and contrary to the plain language of claim 1 which
requires the first cover portion be ‘attached to the outside of the sprinkler
body.’” ReplyBr. 1.
3 Appellant replies that this position “directly contradicts the plain
language of claim 1 which specifically requires ‘a first cover portion.’”
Reply Br. 2.
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presence of “a” before “first cover portion” sets forth a requirement that the
“first cover portion” be integral. See Reply Br. 2.
Second, Appellant argues that “element 40 is radially spaced away
from the top of the riser 22 such that neither element 40 nor element 46
covers the riser 22.” Appeal Br. 5. We are not apprised of error based on
this argument. Appellant has not identified the language in claim 1 requiring
that the “first cover portion” covers the riser. Further, to the extent required,
Appellant has not shown error in the Examiner’s finding that “elements
40/46 of Lawson . . . both form a cover portion that partially covers the riser
and nozzle assembly of the sprinkler, see figures 2 and 3.” Ans. 11.
Claim 1 also recites “a second cover portion, mounted on top of the
first cover portion.” Appeal Br. 11 (Claims App.).4 In the Rejection, the
Examiner found that Lawson discloses “a second cover portion (48)
mounted on top of the first cover portion (fig. 2; col. 6, In. 43—59).” Final
Act. 3.
Appellant argues that element 48 “is not ‘mounted on top of the first
cover portion.’” Appeal Br. 5. Appellant contends that “[i]t is clear by mere
inspection of Fig. 1, for example, of Lawson, that the ring protector 48 is not
mounted on top of the laterally extending flange 40.” Id. Appellant argues
that “it is clear that the ring 48 is not ‘mounted on top’ of element 46” and
that “rib 118 contacts the element 46 on a bottom surface thereof.”5 Id.
4 We will refer to this as the “second cover portion” limitation.
5 In the Response to Argument section of the Final Office Action, the
Examiner stated that “figure 2 and column 6, lines 50—57 of Lawson clearly
teach that the second cover portion, element 48, is attached to the top of the
first cover portion, specifically element 46, by circumferential ribs with
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We first address the construction of the “second cover portion”
limitation. Appellant implicitly proposes to construe this limitation to
require that the “second cover portion” is mounted to the top surface of the
“first cover portion.” See Appeal Br. 5 (stating that “it is clear that the ring
48 is not ‘mounted on top’ of element 46” and that “rib 118 contacts the
element 46 on a bottom surface thereof’). As noted by the Examiner,
however, the limitation “does not recite the structure or surface to which the
second cover portion must be mounted, nor does it require a specific type or
structure of mounting.” Ans. 11; see also Adv. Act. 2 (stating that the
“second cover portion” limitation “recites that the second cover portion is
‘mounted on top’ not ‘mounted to the top’”). Here, Appellant has not shown
error in the Examiner’s proposed construction, which requires the “second
cover portion” “to be located on top of the first cover portion.” Ans. 11.
Under this construction, Appellant has not shown error in the
Examiner’s finding that element 48 in Lawson is located on top of the
identified “first cover portion”—i.e., the combination of elements 40 and 46.
See Final Act. 3 (citing Lawson Fig. 2). Here, Appellant does not argue that
element 48 is not “located on top of’ element 46, but rather, argues that
element 48 is not mounted to the top surface of element 46. See Appeal Br.
5—6; Reply Br. 2.
For the reasons above, we sustain the rejection of independent claim 1
as unpatentable over the combined teachings relied upon by the Examiner.
Claims 2—14 fall with claim 1.
edges, elements 116 and 118, respectively.” Final Act. 13.
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B. Claims 15—21
Claim 15 recites, among other limitations, “a cover portion, mounted
on top of the outside of the sprinkler top.” Appeal Br. 13 (Claims App.). In
the Rejection, the Examiner identified element 48 in Lawson as the “cover
portion” and element 40 as the “sprinkler top.” Final Act. 6.6 7
Appellant argues that “element 48 of Lawson is simply not mounted
above the element 40, but to the contrary, is positioned within the body of
the sprinkler.” Appeal Br. 7. Discussing certain statements in the Advisory
Action, Appellant argues that “the ring 48 is not on top of the flange 40 at
all, whether mounted or otherwise.” Id.1
In response, the Examiner states that the limitation at issue “is
interpreted to require the . . . cover portion to be located on top of the . . .
outside of the sprinkler.” Ans. 11. The Examiner also states, “[sjince the
. . . cover portion, 48, of Lawson is located on top of the . . . sprinkler top,
40, see figure 2, it is interpreted to teach th[is] limitation[].” Id. at 11—12.
Lawson describes element 40 as a “peripheral flange . . . which
extends laterally outwardly from the top of the upper body portion 14 to
provide a ground support surface for the case when the case [12] is initially
installed and embedded in the ground.” Lawson, col. 4,11. 16—20 (emphasis
6 Although the Examiner, in Figure Cl (see Final Act. 7), appears to
identify element 52 as the “sprinkler top,” the text of the Rejection and the
Answer show that the Examiner identifies element 40 as the “sprinkler top.”
See id. at 6 (“sprinkler top (40)”); Ans. 12 (discussing “sprinkler top, 40”).
7 In the relevant portion of the Advisory Action, the Examiner states
that the limitation at issue in claim 15 “is not interpreted to require the cover
portion to be mounted to the top of the outside of the sprinkler top, but only
that the cover portion is located on top of the outside of the sprinkler top
when it is mounted.”).
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added). Lawson also describes case 12 as including “a generally cylindrical
upper body portion 14.” Id., col. 3,11. 15—19. Given those descriptions of
elements 14 and 40 and the depiction shown in Figure 2 of Lawson, we
agree with Appellant that, even under the Examiner’s proposed construction
of the limitation at issue, the record does not support the finding that element
48 in Lawson is “located on top” of element 40.
Thus, we do not sustain the rejection of claim 15, or the rejection of
claims 16—21, which depend from claim 15.
C. Claim 22
Claim 22 requires, among other limitations, “a first cover portion
attached to the sprinkler body, the first cover forming a top closure of the
sprinkler body” and “a second cover portion, mounted on top of the first
cover portion.” Appeal Br. 14 (Claims App.). In the Rejection, the
Examiner identified element 52 in Lawson as the “first cover portion,”
element 48 as the “second cover portion,” and element 12 as the “sprinkler
body.” Final Act. 8—9 (Examiner’s Figure D).
First, Appellant argues that, in the Final Office Action, the Examiner
“refers to the same structure ... as allegedly corresponding to the ‘first
cover portion’ and the ‘second cover portion.” Appeal Br. 7—8. Appellant
also asserts that, “[i]n the Advisory Action, the Examiner argues that the
final Office Action referred to two different elements, 48 and 52, as the
[fjirst cover portion and second cover portion, however does not specify
which of these is which.” Id. at 8. We are not apprised of error based on
this argument. As noted by the Examiner, “Figure D in the Final Office
Action mailed 10 February 2016 identified separate structures interpreted to
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be the first cover portion, element 52, and second cover portion, element
48.” Ans. 12; see also Final Act. 9 (Figure D).
Second, Appellant contends that “mere inspection of the drawings
makes clear that element 52 is located entirely within the sprinkler body
such that it does not ‘form a top closure of the sprinkler body’ as is required
of the first cover portion of claim 22.” Reply Br. 4; Appeal Br. 8 (arguing
that “neither of the elements 48 and 52 . . . form ‘a top closure of the
sprinkler body,’ as is required by claim 22”). In the Rejection, the Examiner
stated that element 52 “forms a top closure of the sprinkler body and
provides a water pressure seal (col. 4, In. 38—42; col. 6, In. 60-65 — the first
cover portion forms a top closure and together with the seals, 50 and 58,
provides a water pressure seal).” Final Act. 8.
Appellant has not shown that the limitation at issue structurally
distinguishes over the identified structure in Lawson. Appellant does not
propose a construction but implies that the limitation at issue requires that
the “first cover portion” is located entirely outside the “sprinkler body.”
Appellant has not, however, identified support for this implied construction.
We note that the Specification does not use the term “top closure.” Further,
although Figure 1 of the Specification, for example, does depict a lower
cover portion 4 that appears to be located entirely outside sprinkler body 5
(see Spec. 119), “the mere fact that the . . . drawings depict a particular
embodiment. . . does not operate to limit the claims to that specific
configuration.” Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc.,
340 F.3d 1298, 1306-07 (Fed. Cir. 2003).
Third, Appellant argues that, by identifying element 52 in Lawson as
the “first cover portion” and element 48 as the “second cover portion” with
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respect to claim 22, the Examiner is “once again contradicting the assertions
made regarding Lawson with respect to claims 1 and 8 where the Examiner
argued that elements 40/46 corresponded to the ‘first cover portion’ and
element 48 corresponded to the ‘second cover portion.’” Reply Br. 4; see
also Appeal Br. 7 and 8 (similar arguments for claims 15 and 23).
Appellant has not provided support for the assertion that it is per se
improper for the Examiner to identify different structures of the prior art to
address similar claim language in different independent claims. As noted by
the Examiner (with respect to similar arguments for claims 15 and 23), the
rejection of independent claims—such as claims 1, 8, and 22—“are separate
and distinct from each other” such that the “rejection of each of these claims
stands alone.” Ans. 12. Appellant cites to Felix v. American Honda Motor
Corp., 562 F.3d 1167, 1178 (Fed. Cir. 2009), for the proposition that “it is
inconsistent and improper to construe the same claim terms in the same
patent in different ways.” Reply Br. 3; see also Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (enbanc) (“Because claim terms are
normally used consistently throughout the patent, the usage of a term in one
claim can often illuminate the meaning of the same term in other claims.”),
quoted in Felix, 562 F.3d at 1177—78. Appellant has not shown, however,
that the Examiner has inconsistently construed any claim terms between the
independent claims at issue when, for example identifying element 52 as the
“first cover portion” with respect to claim 22 and elements 40/46 as the “first
cover portion” with respect to claim 1.
For these reasons, we sustain the rejection of independent claim 22 as
unpatentable over the combined teachings relied upon by the Examiner.
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D. Claims 23 and 25—28
Claim 23 recites, among other limitations, “a protective nozzle top
mounted on the sprinkler top.” Appeal Br. 14 (Claims App.). In the
Rejection, the Examiner identified element 48 as the “cover portion” (which
is the only recited element of the “protective nozzle top”) and elements
14/40 as the “sprinkler top.” Final Act. 9—10.
Appellant argues that “ring 48 makes no contact at all with the flange
40 or the upper body portion 14, and thus, is not ‘mounted on the sprinkler
top.’” Appeal Br. 8; Reply Br. 3. We agree.
The Examiner states that the limitation at issue “is not interpreted to
require the protective nozzle top to be mounted to the sprinkler top, but only
that []the protective nozzle top is located on the sprinkler top when it is
mounted.” Adv. Act. 2. To the extent the Examiner maintains the
construction proposed in the Advisory Action, we agree with Appellant that
that is an unreasonably broad construction of “mounted on.” We construe
the limitation at issue as requiring at least that the “protective nozzle top” is
in contact with the “sprinkler top.” See Appeal Br. 8.
In the Answer, the Examiner does not further address the construction
proposed in the Advisory Action, but rather, addresses Appellant’s implicit
proposed construction (set forth above), stating that “the cover portion, 48,
of the protective nozzle top is mounted to the sprinkler top, 14/40, by
element 46, see lines 31 to 42 of column 6.” Ans. 13 (emphasis added). As
shown in Figure 2 of Lawson, element 48 is in contact with element 46 and
element 46 is in contact with elements 14/40. This does not, however, show
that element 48 is in contact with elements 14/40. See Lawson, Fig. 2.
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Thus, we do not sustain the rejection of claim 23, or the rejection of
claims 25—28, which depend from claim 23.
Rejection 2 — Claim 24
Claim 24 depends from claim 23. Appeal Br. 15 (Claims App.). The
Examiner’s added reliance on Hunter does not remedy the deficiencies in the
teachings of Lawson, discussed above, regarding claim 23 (see supra
Rejection 1 § D). Thus, for the same reasons discussed above, we do not
sustain the rejection of claim 24.
DECISION
We (1) AFFIRM the decision to reject claims 1—14 and 22 and (2)
REVERSE the decision to reject claims 15—21 and 23—28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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