Ex Parte Novotny

Patent Trial and Appeal Board

Jan 23, 2018

13238782 (P.T.A.B. Jan. 23, 2018)

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.
13/238,782 09/21/2011 Kenneth A. Novotny 86193-102/RWD 1046
23529 7590 01/25/2018
A OF ^ COMPANY TN C
EXAMINER
2157 Henderson Highway CRANE, LAUREN ASHLEY
WINNIPEG, MB R2G1P9
CANADA ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
u spto @ adeco .com
djones @ adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH A. NOVOTNY
Appeal 2017-005016
Application 13/23 8,7821
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting 1—5 and 7—16. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 The real party in interest is Kenneth A. Novotny. Appeal Br. 1.
Appeal 2017-005016
Application 13/238,782
STATEMENT OF THE CASE
Subject Matter on Appeal
The subject matter of the instant application “relates to a cover for a
portable toilet in which the cover can provide some heat insulation while
still allowing sufficient light penetration into the interior of the portable
toilet through the roof panel thereof.” Spec. 1,11. 5—7. The type of portable
toilet relating to this invention is “commonly used in various temporary
locations[,] such as construction sites or at temporary events, for example
parties, concerts[,] and the like.” Id. at 1,11. 9-11.
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A heat insulated cover in combination with a portable
toilet including a front wall, a rear wall, two side walls connected
between the front and rear walls, a door operatively mounted
across a door opening in the front wall, and a translucent roof
member fully spanning a top end of the portable toilet, the heat
insulated cover comprising:
a heat insulated front portion including a door portion
joined to the door of the portable toilet such that the heat
insulated front portion is arranged to fully span the front wall and
door of the portable toilet;
a pair of heat insulated side portions joined to the front
portion so as to fully span respective side walls of the portable
toilet;
a heat insulated rear portion joined to the heat insulated
side portions so as to fully span the rear wall of the portable toilet;
and
a roof portion joined to at least one of the heat insulated
front portion, the heat insulated rear portion and the heat
insulated side portions so as to fully span the roof member of the
portable toilet such that the roof portion, the front portion, the
rear portion and the side portions collectively form a second heat
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Application 13/238,782
insulating layer spanning over the walls and the roof member of
the portable toilet;
at least a portion of the roof portion comprising a window
portion formed of translucent material which comprises plastic
fibers woven together to form a flexible, uniform, plastic sheet
which is substantially waterproof; and
the window portion lying over the roof member of the
portable toilet so as to form part of said second heat insulating
layer.
Rejections
The following rejections under 35 U.S.C. § 103(a) are before us for
review:
I. claims 1—5, 7, 12, and 14 as being unpatentable over Mousseau
et al. (US 6,622,319 B2, issued Sept. 23, 2003) (“Mousseau”),
Hampel (US 6,418,672 Bl, issued July 16, 2002), Conwell
(US 5,974,597, issued Nov. 2, 1999), and Kallmann
(US 2,381,061, issued Aug. 7, 1945);
II. claims 8—11 as being unpatentable over Mousseau, Hampel,
Conwell, Kallmann, and Hentschel (US 2008/0264460 Al,
published Oct. 30, 2008);
III. claim 13 as being unpatentable over Mousseau, Hampel,
Conwell, Kallmann, and Mullett et al. (US 2005/0241055 Al,
published Nov. 3, 2005) (“Mullett”); and
IV. claims 15 and 16 as being unpatentable over Mousseau,
Hampel, Conwell, Kallmann, and Thomas (US 5,920,927,
issued July 13, 1999).
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Application 13/238,782
ANALYSIS
Rejection I
Independent claim 1, among other things, calls for a portable toilet
with a translucent roof member and a cover for the portable toilet with a roof
portion having a window portion, where the cover forms a second heat
insulating layer spanning over the portable toilet. See Appeal Br., Claims
App. More particular to the window portion of the cover’s roof portion,
claim 1 recites, “a window portion formed of translucent material which
comprises plastic fibers woven together to form a flexible, uniform, plastic
sheet which is substantially waterproof.” Id.
The Examiner finds that Mousseau discloses all of the subject matter
of claim 1, except for three deficiencies. Non-Final Act. 3 (mailed Jan. 20,
2016). The first deficiency is a “portable toilet with a translucent roof
member,” the second deficiency is a “roof portion of the cover including a
window,” and the third deficiency is the window portion “being made of
plastic fibers woven together.” Id.
To remedy the first deficiency of Mousseau, the Examiner relies on
HampeE s teaching of a portable toilet with a translucent roof member 30,
388 (i.e., a translucent cover for skylight 386). Id. The Examiner
determines that “[i]t would have been obvious to one of ordinary skill in the
art... to have included a portable toilet with a transparent window in order
to allow sunlight to enter the structure.” Id. at 3^4.
To remedy the second deficiency of Mousseau, the Examiner relies on
Conwell’s teaching of a cover having a window (vent) 10 that goes over a
toilet. Id. at 4. The Appellant argues that one of ordinary skill in the art
would understand that Conwell “relates to a single layer privacy enclosure
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Application 13/238,782
which is not recognized to have any benefit over top of another existing
structure.” Appeal Br. 6 (emphasis added); see id. at 4; Reply Br. 1—2. We
agree with the Appellant.
In the Non-Final Office Action, the Examiner reasons:
It would have been obvious to one of ordinary skill in the
art... to have included a window portion on the roof of the cover
when the portable toilet to which the cover is installed on has a
roof window in order to ensure the window in the roof still allows
sunlight to enter the portable toilet.
Non-Final Act. 4. Similarly, in the Answer, the Examiner reasons that “[i]n
order to ensure the translucent roof [of the portable toilet] is not covered up
a window must be placed in the roof portion of the insulating cover.”
Ans. 9.
We take this opportunity to support the Examiner’s articulated
reasoning with rational underpinning. In doing so, we designate this as a
new ground of rejection because the Appellant did not have a fair
opportunity to react to the thrust of the rejection. See In re Kronig, 539 F.2d
1300, 1302 (CCPA 1976) (“the ultimate criterion of whether a rejection is
considered ‘new’ in a decision by the board is whether appellants have had a
fair opportunity to react to the thrust of the rejection.”). In light of the
following added support, we determine that the Examiner’s reliance on
Conwell to teach a roof portion of the cover including a window, as required
by claim 1, amounts to harmless error.
The support for the Examiner’s articulated reasoning can be found in
Mousseau’s teachings. In many instances, Mousseau teaches adapting a
cover for a portable toilet to align with the structural features of the portable
toilet and maintain the functionality of those structural features. Examples
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of this teaching are demonstrated by the alignment of Mousseau’s cover with
the portable toilet. This is best shown by the alignment of the cover’s vent
hole 32, window 24, door opening 6, and door handle hole 16, with the
portable toilet’s vent pipe, window, door, and door handle, respectively.
More particularly, Mousseau’s portable toilet cover has a roof
member 30 having a vent hole 32, which “is located in position and a
circular pattern sewn but not cut out,” but would be cut out for ventilation if
required. Mousseau, col. 2,11. 14—18, Fig. 4. A person of ordinary skill in
the art would understand that “located in position and a circular pattern”
refers to the typical location and structure of a vent pipe of a conventional
portable toilet. See, e.g., Mullet, || 32, 34, Fig. 1 (showing conventional
portable toilet 10 having a typical and circular vent pipe 22 that extends
through roof 21). Moreover, one of ordinary skill in the art would
understand that vent hole 32 is a structural feature of Mousseau’s cover, and
when cut out and applied to a conventional portable toilet maintains the
functionality of the portable toilet’s vent pipe.
Perhaps it is most notable that Mousseau’s cover includes window 24,
which is not incorporated into the cover when the portable toilet lacks a
window. See Mousseau, col. 2,11. 5—9. One of ordinary skill in the art
would understand that the purpose of the selective inclusion of a window in
the cover is for maintaining the functionality of a window of the portable
toilet. Cf. Appeal Br. 7 (“In Mousseau, any window portion 24 is
specifically taught to be omitted unless aligned with existing vents on the
side walls of the toilet enclosure.”).
As for door opening 6 and door handle hole 16, one of ordinary skill
in the art would understand that door opening 6 and door handle hole 16 are
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structural features incorporated in the cover to maintain the functionality of
the door and door handle of the portable toilet. See Mousseau, col. 1,11. 51,
65-66, Fig. 1.
In sum, Mousseau teaches one of ordinary skill in the art to make
appropriate changes to a portable toilet cover to maintain the functionality of
the various stmctural features of a portable toilet. This teaching gives
rational underpinning to the Examiner’s reasoning that “[i]n order to ensure
the translucent roof [of the portable toilet] is not covered up a window must
be placed in the roof portion of the insulating cover.” Ans. 9. Stated
otherwise, after modifying Mousseau’s portable toilet to include a
translucent roof member in order to allow light to enter the interior of the
portable toilet (see Non-Final Act. 3—4), a further modification to the roof
portion of Mousseau’s portable toilet cover to include a translucent material
to maintain the functionality of the portable toilet’s translucent roof member
would have been obvious to one of ordinary skill in the art.
In the Reply Brief, the Appellant makes a reference to Mousseau’s
description of a portable toilet of “usual construction.” Reply Br. 5—6.
Indeed, the Field of the Invention of the Mousseau patent describes, “[a]
heater can be supplied with the portable toilet but, due to the usual
construction of the toilet, the heat readily escapes therefrom.” Mousseau,
col. 1,11. 11—13. Thereafter, the Appellant asserts:
the ‘usual construction’ of a portable toilet referred to in
Mousseau is readily understood by persons of skill in the art to
be the most common commercially available portable toilet
configuration which dominates the marketplace and which has a
translucent white roof panel of plastic material which is known
for allowing some light to enter in addition to the primary entry
of light through the side vents in the side walls.
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Reply Br. 5—6. Based on the aforementioned reference to Mousseau’s
description and related assertion, the Appellant contends that one of ordinary
skill in the art would conclude that a heat insulating panel should be
provided over a portable toilet’s translucent roof to retain sufficient heat, and
that aligned side windows in the cover and the portable toilet would be relied
upon for introducing light into the interior of the portable toilet enclosure to
maximize its heat generating and retention benefits. See id. at 6.
We determine that the foregoing is unpersuasive of error. Initially, we
note that Mousseau specifically describes the “usual construction” of a
portable toilet, i.e., “[t]he portable toilet is usually manufactured with a front
wall, including a door, a rear wall, two opposite side walls, a top and a floor
for standing on.” Mousseau, col. 1,11. 14—16. The foregoing description
does not mention a translucent white roof panel of plastic material or a vent.
As for the latter, Mousseau actually teaches that a portable toilet may not
have a vent. See id. at col. 2,11. 3—9. As such, the Appellant’s assertion
concerning Mousseau’s meaning of the term “usual construction” as it
relates to a portable toilet is faulty.
Moreover, the Appellant’s contention based on this assertion is
unavailing. Because Mousseau’s portable toilet may not include a side vent
— particularly, a side vent primarily used for light — a cover having a
translucent roof member may be the only way to allow light into the interior
of the portable toilet enclosure. Cf. Spec. 1,11. 15—22 (The Specification
discusses a problem with Mousseau’s cover, particularly a possible need for
auxiliary lighting after covering an allegedly translucent roof member.).
Further, we note that a person of ordinary skill in the art would be
able to weigh the simultaneous advantages and disadvantages of adding a
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window portion to the roof portion of the cover, such that the benefit of
adding light to the interior of the portable toilet enclosure outweighs any loss
of heat due to the inclusion of the window portion. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine[.]” (citing Winner Int 7
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)).
To remedy the third deficiency of Mousseau, i.e., the window portion
“being made of plastic fibers woven together” (Non-Final Act. 3), the
Examiner relies on Kallmann’s teaching of plastic fibers woven together to
form a flexible, uniform, plastic sheet which is substantially waterproof. Id.
at 4 (citing Kallmann, p. 1, col. 1,11. 40-45, col. 2,11. 1—2). The Examiner
determines that “[i]t would have been obvious to one of ordinary skill in the
art... to have included a flexible waterproof window in order to ensure no
water entered the cover.” Id.
The Appellant argues that one of ordinary skill in the art would have
been led by the applied prior art references to avoid the use of Kallmann’s
material in a roof member of a cover for a portable toilet. See Appeal Br. 7.
The Appellant’s argument is supported with the assertion:
In the structure of Hampel, a much more durable means of
providing a waterproof window in a single layer enclosure is
provided by the rigid plastic windows 388, and accordingly the
person of skill in the art would thus clearly avoid use of the
material of Kallmann in relation to any window portion in the
roof to prevent a weaker structure with no added waterproofing
benefit.
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In Mousseau, any window portion 24 is specifically taught to be
omitted unless aligned with existing vents on the side walls of
the toilet enclosure.
Id. The foregoing is unpersuasive of error. As for the assertion concerning
Mousseau, we fail to ascertain how Mousseau’s teaching of aligning
windows in a portable toilet cover with windows in the portable toilet
suggests avoiding using Kallmann’s material. As for the assertion
concerning Hampel, providing a waterproof material on the roof portion of
Mousseau’s cover would prevent water from ever reaching a translucent roof
member of Mousseau’s portable toilet (as modified by Hampel’s teachings),
and as such, reduces the risk of damage to the translucent roof member of
the portable toilet.
Additionally, the Examiner explains that Kallmann’s woven plastic
fibers ensures durability as well as flexibility. See Ans. 9. In response, the
Appellant asserts that durability is not a substantial concern for a static cover
positioned over top of a portable toilet enclosure, and a “person of skill in
the art would specifically avoid any change which may reduce the passage
of light such as translucent woven fibers in place of a single sheet of
transparent material.” Reply Br. 3. Additionally, the Appellant asserts that
“there is no teaching whatsoever as to how the material could be applied
within the cover of Mousseau absent any other references teaching how to
otherwise modify the cover that goes over a toilet enclosure according to
Mousseau.” Id. at 5.
This response is not persuasive of error. First, the Examiner’s
modification is based on Kallmann’s material being durable and flexible, not
solely being durable. Moreover, Mousseau’s cover conforms to the shape of
the portable toilet and may be used outside during cold weather (i.e., winter).
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See Mousseau, col. 1,11. 9-11. As such, a skilled artisan would understand
the need for a flexible and durable material, such as Kallmann’s. Second,
the Appellant’s argument is based on speculation, i.e., “may reduce the
passage of light.” Third, Mousseau teaches cutting and sewing a window
frame, then sewing a 30 mil. U.V. resistant PVC window 24 in place. Id. at
col. 2,11. 5—9. The foregoing demonstrates the ordinary skill of one in the
art to cut a window and include another material into the cover. And, we
find that one of ordinary skill in the art would have adequate knowledge to
similarly include Kallmann’s plastic fibers woven together into Mousseau’s
cover.
Lastly, to the extent the Appellant argues that the Examiner’s
reasoning for combining the teachings of the applied references must
coincide with the findings of the Appellant (see, e.g., Reply Br. 4), no such
requirement is necessary for a proper rejection under section 103, i.e.,
obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)
(holding that patent examiners are not foreclosed to look only to the problem
the patentee was trying to solve in determining a reason to combine the
elements in the manner claimed).
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief and the Reply Brief, and have determined that
they are unpersuasive of Examiner error. Thus, we sustain the Examiner’s
rejection of independent claim 1, and dependent claims 2—5, 7, 12, and 14.
Also, we sustain the Examiner rejections of claims 8—11, 13, 15, and 16,
which were not argued separately.
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DECISION
We AFFIRM the decision of the Examiner to reject claims 1—5 and 7—
16 and designate our affirmance as NEW GROUNDS OF REJECTION.
37 C.F.R. § 41.50(b) provides “[a] new ground 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 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 ....
(2) Request rehearing. Request that the proceeding be
reheard under § 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R $ 41.50(b)
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