Ex Parte Nelson

Patent Trial and Appeal Board

Nov 20, 2018

13052814 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/052,814 79958 7590 Masco Corporation 03/21/2011 Faegre Baker Daniels LLP 300 North Meridian Street Suite 2700 Indianapolis, IN 46204 11/23/2018 FIRST NAMED INVENTOR Alfred Charles Nelson 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. DFC-P0044-05 7153 EXAMINER GARDNER, NICOLE ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 11/23/2018 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): inteas@faegrebd.com douglas.yerkeson@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALFRED CHARLES NELSON1 Appeal 2018-002531 Application 13/052,814 Technology Center 3700 Before KEN B. BARRETT, JAMES P. CALVE, and BRANDON J. WARNER, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Office Action rejecting claims 1-3, 5, 7, 9-16, 20, 22-25, and 27-32. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Delta Faucet Company is identified as the real party in interest. Appeal Br. 5. Appeal 2018-002531 Application 13/052,814 CLAIMED SUBJECT MATTER Claims 1, 14, 24, and 25 are independent. Claim 1 is illustrative and is reproduced below. 1. A faucet comprising: a faucet head; a supply tube fluidly coupled to the faucet head; a faucet body including a dispensing end having a wall, the wall having an internal surface and an external surface, the internal surface defining an elongate passageway, the supply tube passing through the elongate passageway; and a magnetic coupling releasably coupling the faucet head to the dispensing end of the faucet body, the magnetic coupling including a magnet fixed to at least one of the faucet head and the faucet body. Appeal Br. 42 (Claims App.). REJECTIONS Claims 1-3, 5, 7, 9-16, 20, 23-25, and 27-32 are rejected under 35 U.S.C. § I03(a) as unpatentable over Bosio (US 2003/0188381 Al, pub. Oct. 9, 2003) and Cator (US 3,181,895, iss. May 4, 1965). 2 Claim 22 is rejected under 35 U.S.C. § I03(a) as unpatentable over Bosio, Cator, and Esche (US 6,757,921 B2, iss. July 6, 2004). 2 Although the caption of this rejection does not identify claims 30-32 as subject to this rejection, the rejection itself addresses these claims. See Non- Final Act. 5---6. The caption of this rejection also lists claim 22 as subject to the rejection, but we treat this references as a typographical error in view of the separate rejection of claim 22 as unpatentable over Bosio, Cator, and Esche. Id. at 6. 2 Appeal 2018-002531 Application 13/052,814 ANALYSIS Claims 1-3, 5, 7, 9-16, 20, 23-25, and 27-32 unpatentable over Bosio and Cator The Examiner relies on Bosio to teach a faucet and method recited in independent claims 1, 14, 24, and 25, except for a magnetic coupling that is releasable. Non-Final Act. 2-3, 5. Bosio uses a snap-action retention means in which wings 8a, 8b engage an edge of cap 6 on faucet head 4 with a snap action by elastic deformation. Bosio ,r 20, Figs. 3---6; see Non-Final Act. 2. The Examiner relies on Cator to teach such a quick connect magnetic coupling. Non-Final Act. 2. Cator teaches that a magnetic coupling is an inexpensive, quick-connect coupling to hold coupling parts together. Cator, 1 :9-27. The Examiner determines it would have been obvious to substitute Cator' s magnetic coupling for the snap-action retention means of Bosio "since the magnetic coupling means is a known equivalent to the snap-action retention means and the magnetic coupling would provide the same expected results as the snap-action retention means." Non-Final Act. 2. The Examiner cites Grabianski and Wright as evidence that snap-fit connections and magnetic couplings were known to be equivalent means of releasably coupling mechanical elements at the time of the invention. Non- Final Act. 2-3. Grabianski teaches a toy vehicle with engines 16, 18 that are releasably coupled within chassis 50 by a press-fit or other fastening means that include magnetic couplings and snap-fit connections. Grabianski ,r 39. Wright teaches a "breakaway safety feature" that releasably couples medical lines together with a snap-fit connection. Wright ,r 48. Wright also teaches a magnetic coupling as an alternative arrangement that creates a coupling that detaches when it is subjected to a predetermined separating force. Id. 3 Appeal 2018-002531 Application 13/052,814 Appellant raises a number of arguments against the Examiner's findings and rationale as set forth above. None of these arguments are persuasive, however. For example, Appellant argues that a person of ordinary skill would not consider a magnetic coupling of Cator to be a "known equivalent" of a snap-connecting means of Bosio. Appeal Br. 13-14. Appellant argues that Cator' s magnets must couple parts together against the force of line pressure whereas Bosio' s consumer faucet snap connection is not coupled against a line pressure. Id. at 14. Appellant also argues that a snap-action retention means does not provide the same expected results as a magnetic coupling as the Examiner finds because a snap-action arrangement degrades with use and therefore lack durability. Reply Br. 3 (citing Nelson Declaration ,r 10). These arguments are not persuasive in view of the Examiner's finding that Grabianski and Wright teach the use of magnetic couplings and snap- action retention means as equivalent ways to provide a detachable coupling. Appellant's arguments do not address those findings or apprise us of error in those findings of the Examiner. We find their teachings credible as follows. Grabianski teaches a toy vehicle with engines 16, 18 that detachably couple to chassis 50. Grabianski ,r 30, Figs. 1-6. Each engine 16, 18 has a transmission 72, 74 that compresses spring 54 in chassis 50 when either engine 16, 18 is connected to chassis 50. Id. ,r 39. The compressed spring 54 provides motive force when vehicle 10 is released from actuator 14. Id. The connection therefore must be strong enough to retain engine 16, 18 in chassis 50 against the force of spring 54, but easy enough for a child to detach. Id. ,r,r 2--4, 37--40. Grabianski teaches magnetic coupling and snap- fit connection as alternative ways to provide such a detachable coupling. 4 Appeal 2018-002531 Application 13/052,814 Wright teaches a safety breakaway coupling for catheters that deliver fluids intravenously. Wright ,r,r 1-9. Wright teaches a snap-fit connection of ridges 16 on resilient arms 14 releasably engaging groove 30 to retain two parts 10, 12 and intravenous lines together, but allow the parts to separate "when subjected to a sufficient longitudinal force." Id. ,r 32. The force to disengage the snap-fit connection may be set at different levels for different uses of the device (adults, infants). Id. The breakaway safety feature of the snap-fit connection may be altered without affecting the function or purpose of the connection. Id. ,r 48. Furthermore, other arrangements of mechanical elements may be used to create a coupling that detaches when subject to a predetermined separating force, and these include a magnetic coupling. Id. These references provide unrefuted evidence that snap-fit connections and magnetic couplings provide detachable connections that function in the same way: they provide a connection of sufficient strength to maintain two parts connected together, but one that also separates at a desired force. The teachings provide evidence of equivalence, particularly vis-a-vis the claimed magnetic coupling which merely "releasably coupl[ es] the faucet head to the ... faucet body." See Ans. 6-8 (strength and features of bond not claimed). These teachings also provide motivation for the proposed substitution. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (simple substitution of one known element for another or application of a known technique to prior art ready for improvement). Cator provides similar teachings. Cator substitutes magnetic couplings for detents and springs because magnetic couplings provide inexpensive, detachable connections with fewer parts that allow control of the holding force within desired ranges and tolerances for simple, quick coupling and uncoupling. Cator, 1: 1-34, 2:32-50; Ans. 7. 5 Appeal 2018-002531 Application 13/052,814 These teachings demonstrate that Cator is reasonably pertinent to the problem addressed by Appellant of designing a releasable coupling with a retaining force strong enough to retain a faucet head connected to the faucet body, but not too difficult to uncouple. In short, a faucet sprayhead that is durable and easy to couple and uncouple. Spec. ,r,r 3, 4; Appeal Br. 19; see Ans. 7 (Cator's magnetic coupling would not degrade over time as other connecting means would); Cator, 1 :20-34 (magnetic coupling is desirable because it is extremely simple and requires less parts none of which move). We also agree with the Examiner that the claims do not require any particular type of releasable coupling to be provided by a magnetic coupling such as the ability to separate with "a simple pull." Ans. 9. Cator expressly teaches that coupling and uncoupling can be done "simply and quickly" and the holding force is easily controlled within desired ranges. Cator, 1:21-34, 2:32--43. This teaching refutes Appellant's argument that Cator would not be reasonably pertinent to a releasable coupling for a faucet because Cator holds parts together against line pressure of 3 to 15 psi. Appeal Br. 16-1 7. We agree with Appellant that the claimed "releasable coupling" must be interpreted in light of the Specification. Appeal Br. 14--16. When we do so, we learn the claimed magnetic coupling 15 releasably couples sprayhead 10 to neck 32 of faucet body either by (1) simply pulling sprayhead 10 away from neck 32 with enough force to overcome the attracting magnetic forces between head connector 24 and body connector 36 or (2) "[t]o ease the release of sprayhead 10 from neck 32, the user may also rotate sprayhead 10 by approximately 90 degrees ... until magnetic coupling 15 exhibits its repelling mode shown in FIG. 8B." Spec. ,r 51. Thus, Cator's similar twist release magnetic uncoupling feature falls within the scope of the claims. 6 Appeal 2018-002531 Application 13/052,814 Evidence of Secondary Considerations Appellant also argues that evidence of long-felt need, commercial success, copying, and industry praise establishes the non-obviousness of the claimed magnetic coupling. Appeal Br. 29--40. Mr. Nelson, the inventor, recounts industry attempts to design detachable faucets including his own bayonet design before he developed a detachable magnetic coupling. Nelson Deel. ,r,r 6-14. Mr. Feldman describes sales of "Faucet 2" with the claimed magnetic coupling (MagnaTite®) increased by about 385% over sales of a comparable Faucet 1 that had a bayonet connection. Feldman Dec. ,r,r 6-7, Ex. A. When the magnetic coupling was added to an Old Faucet in 2008, sales of this New Faucet revived. Id. ,r,r 6-7, Ex. B. Delta enjoys a market share of around 55%, up from around 36% prior to introduction of faucets with the claimed magnetic coupling. Id. ,II 0, Ex C. Mr. Thompson recounts how sales increased after Delta introduced MagnaTite® technology, which won an industry award in 2007. Thompson Deel. ,r,r 5-20. Mr. Y erkeson describes alleged infringement of a patent that covers the magnetic coupling as evidence of copying. Yerkeson Deel. ,r,r 2-10. When secondary considerations are present, it is error not to consider them even though they may not be dispositive. Class Co, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Secondary evidence can show that an invention, which appears to be obvious in light of the prior art, is not and guards against hindsight. Apple Inc. v. Int'! Trade Comm 'n, 725 F.3d 1356, 1366 (Fed. Cir. 2013) (holding that "Apple presented compelling secondary considerations evidence that may have rebutted even a strong showing under the first three Graham factors" and "[ t ]he ITC erred ... to the extent that it did not analyze the secondary consideration evidence."). 7 Appeal 2018-002531 Application 13/052,814 A determination of obviousness therefore requires consideration of all four Graham factors, including evidence of secondary considerations when present, and it is error to reach a conclusion of obviousness until all factors are considered. ClassCo, 838 F.3d at 1220; see Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en bane) ("Objective indicia of nonobviousness must be considered in every case where present."). When considering secondary evidence with the other Graham factors, a strong obviousness showing may stand even in the face of considerable evidence of secondary considerations. Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009); see Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) ("secondary considerations of nonobviousness .. . simply cannot overcome a strong prima facie case of obviousness .... where the inventions represented no more than 'the predictable use of prior art elements according to their established functions,' KSR, 550 U.S. at 417 ... , the secondary considerations are inadequate to establish nonobviousness as a matter of law."); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("The secondary consideration evidence in this case does not overcome the strong case of obviousness in the substitution of the multiplexer, a known alternative to Hesser's bus, where the multiplexer operates in a well-known manner."); Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) ("In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness."). Apart from the Examiner's finding that Cator's issuance date is not evidence of long-felt need (Ans. 10), we find no indication the Examiner considered any of the secondary consideration evidence. See Reply Br. 6-7. 8 Appeal 2018-002531 Application 13/052,814 Thus, on the record before us, we do not sustain the rejection of claims 1-3, 5, 7, 9-16, 20, 23-25, and 27-32. Claim 22 Unpatentable Over Bosio, Cator, and Esche The Examiner's reliance on Esche to teach an aerator, as recited in dependent claim 22, does not remedy the Examiner's failure to consider secondary considerations evidence as discussed above. Non-Final Act. 6. Thus, we do not sustain the rejection of claim 22. DECISION We reverse the rejections of claims 1-3, 5, 7, 9-16, 20, 22-25, and 27-32. 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). REVERSED 9