Ex Parte McAlpine

Patent Trial and Appeal Board

Sep 18, 2013

10556716 (P.T.A.B. Sep. 18, 2013)

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.
10/556,716 02/21/2006 James Kenneth McAlpine M-0930.02 3308
41418 7590 09/18/2013
LAW OFFICES OF CHRISTOPHER L. MAKAY
1634 MILAM BUILDING
115 EAST TRAVIS STREET
SAN ANTONIO, TX 78205-1763
EXAMINER
NGUYEN, TUAN N
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
09/18/2013 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 JAMES KENNETH MCALPINE
____________________

Appeal 2011-010458
Application 10/556,716
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010458
Application 10/556,716

2
STATEMENT OF THE CASE
James Kenneth McAlpine (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 2, 5, 7-21, 23-30, and 32.
The Examiner rejected claims 1, 2, 5, 7-14, 19-21, and 23-30 under
35 U.S.C. § 102(b) as anticipated by Peterson (US 6,067,669, iss. May 30,
2000) and rejected claims 15-18 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Peterson and Downey (US 3,428,295, iss. Feb. 18, 1969).1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A plug for cooperating with a waste outlet, comprising:
a seal;
a stem coupled to the seal and comprising a first portion
coupled with a second portion, the stem being received in a
waste outlet and removable therefrom such that both the first
portion and the second portion separate as a unit from the
waste outlet, the stem further being selectively adjustable in
length in that relative movement between the first portion
and the second portion selectively adjusts the length of the
stem thereby selectively engaging the seal with a portion of
the waste outlet to open and seal the waste outlet; and
a strainer member operatively associated with one of the
seal and the stem, wherein the stem is adjustable in length in
response to a compressive force exerted on the stem.

1 The Examiner withdrew the rejections of claims 1-4, 6-14, and 19-30 as
anticipated by Garguillo and of claims 15-18 and 32 as unpatentable over
Garguillo and Downey. Ans. 3.
Appeal 2011-010458
Application 10/556,716

3
OPINION
Anticipation based on Peterson
Appellant argues that “the ‘stem’ as defined by the Examiner is not
removable as a unit from the waste outlet” because “[r]emoval of the ‘stem’
requires unscrewing the knob 60 from the stopper 50, unscrewing the rigid
stem 16 from the boss 20 of the housing 12 using a screwdriver inserted into
slots 90, and removing the stopper 50.” App. Br. 9. According to
Appellant, Peterson does not disclose
a stem comprised of a first portion coupled with a second
portion such that the . . . first and the second portion are
removable as a unit from a waste outlet, because it is not
possible to remove the rigid stem 16, the knob 60, and the
stopper 50 as a unit from the waste outlet.
Id. Appellant’s argument is premised on the assertion that the Examiner
considers Peterson’s rigid stem 16, knob 60, and stopper 50 to form the
claimed “stem.” App. Br. 8.
Appellant’s argument is not convincing, because the Examiner reads
the claimed “stem” on Peterson’s stopper 50 and rigid stem 16. See Ans. 5.
The Examiner finds that the rigid stem 16 and stopper 50 are separable from
the waste outlet as a unit by first unscrewing rigid stem 16 and then lifting
rigid stem 16 and stopper 50 as a unit. Id.; see also Peterson, col. 2, ll. 53-58
(describing manually removing the knob 60, inserting the tip of a
screwdriver into slots 90 at the top of stem 16 to turn and remove the stem
16 from the housing 12, and removing “[t]he stem 16 and stopper 50”).
Appellant does not present any convincing argument or evidence to show
that Peterson’s stem 16 and stopper 50 are not capable of being separated
from the waste outlet as a unit after the knob has been removed and the stem
has been unthreaded from the threaded boss 20 of housing 12.
Appeal 2011-010458
Application 10/556,716

4
Thus, Appellant’s argument does not apprise us of error in the
Examiner’s rejection of claim 1. We thus sustain the rejection of claim 1
and of its dependent claims 2, 5, 8-14, 19-21, and 23-30, for which
Appellant does not assert any separate arguments, and which thus fall with
claim 1, as anticipated by Peterson.
Claim 7 requires that the strainer be removable from the stem or the
seal to which it is coupled. Appellant argues that “[t]he strainer 30 of
Peterson does not connect with the rigid stem 16 or the stopper 50.” App.
Br. 9. This argument is not convincing. When Peterson’s drain plug
assembly is assembled with the rigid stem 16 threaded to the replacement
housing 12, the knob 60 threaded to the stopper 50, and the strainer 30
captured between the stopper and cross head 22 of housing 12, the strainer
30 is coupled to the knob, the rigid stem 16, the stopper 50, and the valve
head 74 held between the flange 72 and collar 76 of the stopper 50. Further,
the strainer 30 is removable from the assembly, and from the
aforementioned components thereof, by first removing the knob 60,
unthreading the stem 16, and removing the stem 16 and the stopper 50, as
discussed above. Thus, Peterson’s strainer 30 is removable from the stem or
seal to which it is coupled, as called for in claim 7.
Accordingly, we sustain the rejection of claim 7 as anticipated by
Peterson.
Obviousness based on Peterson and Downey
Appellant argues claims 15-18 and 32 together in contesting this
rejection. Thus, we decide the appeal of this rejection on the basis of claim
32. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2011-010458
Application 10/556,716

5
Appellant argues that the Examiner has not set forth a prima facie case
that the proposed modification of Peterson in view of Downey would have
been obvious, “because the reason set forth by the Examiner – same field of
endeavor in light of the possibility that one of ordinary skill in the art could
make the combination – is not adequate.” App. Br. 13. This argument does
not fairly characterize the Examiner’s articulated reasoning.
The Examiner reasons that it would have been obvious to use a stem
device as taught by Downey on the plug device of Peterson “in order to
provide operational efficiency (see col. 1, line 25 et seq. of Downey).” Non-
Final Rej. 4, mailed May 15, 2008; Ans. 4. Appellant does not point out any
error in the Examiner’s reasoning.
Appellant argues that Downey’s push-activated device is not easily
removable, and thus substituting the push-activated device of Downey for
the rigid stem 16 of Peterson would render Peterson’s assembly incapable of
satisfying Peterson’s stated objective of providing a strainer that is easily
removed. App. Br. 13-14 (citing Peterson, col. 1, ll. 42-44). This argument
is not convincing. First, we understand the Examiner’s proposed
modification to entail the substitution of Peterson’s rigid stem 16 and
stopper 50 with the push-activated device of Downey. While Downey’s
push-activated stem device may comprise more components than the stem
device of Peterson that the Examiner proposes to replace, the disassembly
process required to remove the strainer seemingly would involve the same
types of turning and removal steps described by Peterson to remove and
replace strainer 30. Thus, Appellant fails to establish that the Examiner’s
proposed combination would defeat Peterson’s objective of providing “a
Appeal 2011-010458
Application 10/556,716

6
strainer in the replacement drain assembly that is easily removed.” Peterson,
col. 1, ll. 42-43.
Moreover, even assuming that the proposed modification would
render the strainer somewhat less easily removable, that fact would not
necessarily dissuade a person of ordinary skill in the art from making the
modification to gain the efficiency benefit recognized by Downey. See
Downey, col. 1, ll. 26-27. “The fact that the motivating benefit comes at the
expense of another benefit, . . . should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000).
Appellant also argues that the Examiner “does not adequately explain
why one of ordinary skill in the art would combine devices operating under
different principles.” App. Br. 14-15. This argument is not convincing. As
pointed out by the Examiner, Peterson and Downey both “require the
movement of the seal member up and down to effectively open and seal a
waste outlet.” Ans. 5. While there are differences in how the knob is
actuated to move the seal up and down between its open and closed positions
in the two references, they do not operate under different principles.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claim 32. We thus sustain the rejection
of claim 32 and of claims 15-18, which fall therewith, as unpatentable over
Peterson and Downey.
Appeal 2011-010458
Application 10/556,716

7
DECISION
The Examiner’s decision rejecting claims 1, 2, 5, 7-21, 23-30, and 32
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)(1)(iv).

AFFIRMED

mls