Ex Parte Leber et al

Patent Trial and Appeal Board

Jun 28, 2016

11869183 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/869, 183 10/09/2007
20686 7590 06/30/2016
DORSEY & WHITNEY, LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 W ewatta Street
Suite 400
DENVER, CO 80202-5549
FIRST NAMED INVENTOR
Leland C. Leber
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.
187654/US/2 2531
EXAMINER
JONAITIS, JUSTIN M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
docketing-dv@dorsey.com
docketingDV @dorsey.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LELAND C. LEBER, GARY D. GOLICHOWSKI,
and MICHAEL J. QUINN1
Appeal2014-005795
Application 11/869, 183
Technology Center 3700
Before BIB HU R. MOHANTY, ROBERT L. KINDER, and
BRUCE T. WIEDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 21-27.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is "Water Pik, Inc."
Appeal Br. 3.
2 Appellants' proposed Amendment - adding new claim 28 - was not
entered by the Examiner and claim 28 is therefore not before us for review.
See Ans. 7; Appeal Br. 6.
Appeal2014-005795
Application 11/869, 183
Appellants' Invention
Appellants' "invention generally relates to showerheads, and more
particularly to showerhead connections." Spec. i-f 2.
Claims 21, 24, and 26 are the independent claims on appeal. Claim 21
is illustrative of the claimed subject matter and reproduced below:
21. A shower arm assembly comprising:
an arm;
a shower arm attachment assembly including an arm coupling
member; and
an arm rotation assembly including:
a connector rod;
a nut joined to the connector rod and operative with the
connector rod to press together the arm coupling member and
the arm; and
a retaining clip attached to and directly engaging the
connector rod and operative with the connector rod to prevent
disassembly of the arm from the arm coupling member
independent of the nut.
Appeal Br., Claims App. iv.
Examiner's Rejections
The Examiner rejected claims 21, 22, 24, 26, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Macan (US 2005/0283904 Al, pub. Dec. 29,
2005) and Denham (US 4,651,770, iss. Mar. 24, 1987). Final Act. 2 (mailed
Mar. 25, 2013).
The Examiner rejected claims 23 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Macan, Denham, and Wollenberg (US 6,863,227 B2, iss.
Mar.8, 2005). Id. at 6.
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Application 11/869, 183
Claim 21
ANALYSIS
Appellants contend that the combination of Macan and Denham fails
to teach the claim 21 requirement of "a retaining clip that directly engages a
connector rod." Appeal Br. 15. Appellants note that the Examiner relies on
Denham for disclosing this feature. Id. Appellants contend that the
Examiner "does not provide an explanation of how or where the retaining
clip 82 of Denham would be used with the Macan device." Id. Appellants
then offer three possible combinations regarding how the combination is
made and arguments why each combination is improper. Id. at 15-18.
The Examiner, however, states that each of the Appellants' three
proposed combinations is incorrect, and not what the Examiner
contemplated for combining the retaining clip of Denham into the assembly
of Macan. Ans. 7-8. The Examiner provides graphical representations
(annotated Figure 2 and 3 of Macan) that depict the retaining clip positioned
in both a locked and unlocked position around a connector rod (adjustment
post 128) near hole 133. Id. at 8-10. The Examiner's finding that
Denham's retaining clip would attach to and directly engage Macan's
connector rod are based on these annotated Figures.
The Examiner's findings are reasonable and demonstrate how the
retaining clip of Denham would be integrated to engage the connector rod of
Macan to retain relative movement between components. See id.
Appellants have not effectively addressed the combination actually proposed
by the Examiner. See Reply Br. 2 (stating the Examiner did not adequately
convey the proposed combination beforehand). The Examiner has
persuasively established the combination of Macan and Denham teaches the
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Application 11/869, 183
claim 21 requirement of a retaining clip that directly engages a connector
rod.
Appellants next make two additional arguments against the
Examiner's proposed combination: the combination would render Macan
inoperable for its intended purpose and the Examiner engaged in
impermissible hindsight. See Appeal Br. 18-19; Reply Br. 2--4.
First, Appellants contend the Examiner's proposed modification
"would render Macan unsatisfactory for its intended purpose (an articulating
shower arm where the arm portion and elbow portion are pivotably
coupled)" upon integration ofDenham's retainer clip. Appeal Br. 18-19;
Reply Br. 2. Appellants suggest the combination would prevent separation
of components and Macan would be unable to displace vertically to allow
the arm to articulate. Id.
Appellants also contend that combining the Denham clip with the
Macan shower arm as proposed by the Examiner would cause the Macan
device to no longer be water tight and thus be inoperable. Reply Br. 2-3.
Appellants contend that to allow movement of Macan's arm portion 102, the
sealing element positioned adjacent the threaded end of the adjustment post
128 would have to be removed as depicted in modified Figures 2 and 3 in
the Examiner's Answer. Id. at 2. If the sealing element were removed,
Appellants contend "there would be only a small seal against the adjustment
post 130 at this location and water traveling through the elbow portion 104
and arm portion 102 would likely leak around the adjustment post 128 and
out the bottom end of the elbow portion 104 through hole 133." Id.
Second, Appellants contend that the Examiner's motivation to
combine Macan and Denham involved impermissible hindsight. Reply Br.
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Application 11/869, 183
3. Appellants allege that "[n]either Denham nor Macan provide motivation
to replace a seal in Macan with the Denham retaining clip 82 nor include a
clip in the location proposed by the Examiner." Id. Further, Appellants
contend that the Examiner has made conflicting findings that demonstrate
the impermissible hindsight. Id. Specifically, Appellants argue the
Examiner stated that placement of the retaining clip in the manner proposed
would still allow relative movement to allow rotation of the components. Id.
Then, to the contrary, the Examiner finds the retaining clip would prevent
movement of the adjustment post relative to the rest of the apparatus. Id.
We disagree with Appellants' contentions. We do not agree the
Examiner's proposed modification would render Macan unsatisfactory for
its intended purpose. We also disagree that impermissible hindsight was
involved in making the combination.
The Examiner finds that annotated Figures 2 and 3 show two positions
of Macan's arm, specifically one in which the components are locked
together (Figure 2) and a position in which the components are unlocked
permitting swivel (Figure 3). Ans. 8-10. The Examiner further finds that
placement of the retaining clip in the manner shown for the unlocked
position would enable loosening the nut (110), which would allow relative
movement between elbow portion (104) and receiving end (112) such that
the splines (122) and (124) would be able to disengage to allow rotation of
the components. Id. In the locked position, the Examiner relies on the
retaining clip of Denham to retain relative movement between components
when the clip is placed in a groove of the spindle and bears on a surface of
the valve body. Id.; see also Denham, 6: 10-15.
The Examiner's findings and proposed combination are consistent
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Application 11/869, 183
with the teachings of each reference and are persuasive. As explained by the
Examiner, Denham teaches that by "[b ]y including a retaining clip it
prevents the spindle from moving in unintended direction when subject to a
force to prevent damage to other components of the apparatus." Ans. 10.
The Examiner provides a persuasive rationale for combining Denham's
retaining clip into Macan. See Final Act. 3 (using Denham's known
retaining clip in Macan "would be effective in preventing the vertical
displacement of arm portion (102) away from elbow portion (104)");
Ans. 10. The use of the retaining clip in Macan's unlocked position (see
Ans. 9) would still allow necessary movement between components as
explained by the Examiner and would therefore not render Macan
unsatisfactory for its intended purpose (see id. at 10 ("a position in which the
components are unlocked permitting swivel (figure 3)")). The Examiner
also persuasively explains that use of the retaining clip in the unlocked
position would help prevent the components from becoming unintentionally
disassembled - the retaining clip would ensure the adjustment post
movement is limited. Id.; see also id. at 8-9 (annotated Figs. 2 and 3).
Thus, we do not agree with the Appellants that the Examiner's proposed
combination is contradictory and based on hindsight.
We also disagree with Appellants' contention that the proposed
modification would prevent Macan from being watertight, thus defeating a
purpose of the Macan device. See Reply Br. 2 (citing Macan i-f 50). The
same paragraph of Macan cited by Appellants further explains that various
o-rings, gaskets, or similar structures, none of which are depicted in Figures
1-3, may be employed at various locations to prevent leakage. Macan i-f 50.
Macan discloses that "the hole defined by the arm portion 102 through
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Application 11/869, 183
which the adjustment post 128 extends may be supplemented with an o-ring
to fill any void between the hole and the adjustment post 128." Id. Further,
sealing structures may also be placed at other locations including "between
the wing nut 110 and the adjustment post 128." Id. Thus, even if the sealing
element would need to be removed as alleged by Appellants, the redundant
sealing structures disclosed in Macan would suffice to prevent leakage at the
location alleged by Appellants. See Reply Br. 2 ("would likely leak around
the adjustment post 128 and out the bottom end of the elbow portion 104
through hole 133"). We therefore disagree that the Examiner's proposed
combination would render Macan inoperable for its intended purpose.
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 21under35 U.S.C. § 103(a).
Claims 22, 24, 26, and 27
We also sustain the rejection of independent claims 24 and 26 as well
as dependent claims 22 and 27 under 35 U.S.C. § 103(a). Claims 24 and 26
were not argued separately from claim 21. See Appeal Br. 15, 19. Likewise,
claims 22 and 27 depend from claims 21 and 26, respectively, and these
claims were also not argued separately by Appellants. See id. at 19.
Claims 23 and 25
Claims 23 and 25 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Macan and Denham in view of
Wollenberg. See id. at 20. Appellants contend that "claims 23 and 25 are
believed to be allowable over Wollenberg for at least the same reasons as
claims 21 and 24, from which they depend." Id. Because Appellants argue
the Examiner's rejection of claims 23 and 25 is erroneous for the same
reasons that the rejection of claims 21 and 24 is erroneous, and because we
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Application 11/869, 183
are not persuaded by Appellants' arguments regarding claims 21 and 24, we
sustain the rejection of claims 23 and 25.
DECISION
We AFFIRM the Examiner's decision to reject claims 21-27.
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
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