Ex Parte Salser

Patent Trial and Appeal Board

Oct 31, 2016

12263606 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/263,606 11103/2008
49578 7590
SIMMONS PATENTS
P.O. BOX 1560
LENOIR, NC 28645
11/01/2016
FIRST NAMED INVENTOR
Floyd Stanley Salser
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.
MAR-P-09 8549
EXAMINER
FOX,JOHNC
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
11/01/2016 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 FLOYD STANLEY SALSER
Appeal2013-009874
Application 12/263,606
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Floyd Stanley Salser (Appellant) 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 45---64. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
INVENTION
Appellant's disclosure "relates to an apparatus and method for
allowing a utility provider to interrupt water service to a first residential
1 FC Patents, Inc., is identified as the real party in interest. Br. 3.
2 Claims 1--44 have been canceled. Br. 4.
Appeal2013-009874
Application 12/263,606
service line while not interrupting such utility service to a second residential
service line associated with such utility service where both first and second
residential service lines are metered to monitor resource consumption."
Spec. 2, 11. 8-11. 3 Claims 45, 51, and 57 are independent. Claim 45 is
illustrative, and reads:
45. A flow control fixture configured for controlling the flow
of a fluid, said flow control fixture comprising:
a one piece elongated three-way elbow comprising an
elbow-input disposed between a first elbow-output and a second
elbow-output and defining a first fluid communication path with
said first elbow-output and a second fluid communication path
with said second-elbow output, wherein said elbow-input defines
a flow control fixture input that is suitably configured for being
associated with a fluid source;
wherein said first elbow-output is defined at one end of
said elongated three-way elbow and said second elbow-output is
defined at a second end of said elongated three-way elbow so that
the fluid flow paths through said outputs are perpendicular to
each other;
a flo\~1 control device comprising a flo\~1 control device
input and a flow control device output wherein said flow control
device input is associated with said second elbow-output;
wherein said first elbow-output defines a first fixture
output;
wherein said flow control device output defines a second
fixture output; and
wherein said flow control device is configurable in a first
state that allows the flow of a fluid through said flow control
device input and out said flow control device output and a second
state that prevents the flow of said fluid through said flow control
device.
Br. 62---63 (Claims App.).
3 We refer to the Substitute Specification (filed May 11, 2011 ), as the
"Specification" or "Spec."
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REJECTIONS 4
I. Claims 45---63 are rejected under 35 U.S.C. § 102(a) as
anticipated by Ford Meter Box (Ford Meter Boxes, Section C, The Ford
Meter Box Company, Inc., Installation Manual, 72-142, web version (Nov.
17, 2006), hereinafter "Ford Meter Box"). 5
II. Claims 48-50, 52, 54--56, and 58-64 are rejected under 35
U.S.C. § 103(a) as unpatentable over Ford Meter Box.
III. Claims 45-64 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ford Meter Box, Miller (US 4,726,399, issued Feb. 23,
1988), McNab & Harlin Manufacturing Co. Catalog M-1, 149, Fig. 220
(1916), hereinafter, "McNab and Harlin," and What you can get in
Manifolds, hereinafter, "Manifolds."
ANALYSIS
Rejection I: Anticipation of Claims 45-63
Claims 45-5 0
The Examiner finds that Ford Meter Box discloses all the limitations
of claim 45. Final Act. 2-3. The Examiner provides a copy of the Ford
Meter Box drawing with the notations "elbow" and "tee." Id. at 3.
Regarding this drawing, the Examiner explains:
In the marked up copy below, the elbow and tee are collectively
read as a one piece body since, when assembled, they will form
a single body. It is noted that nothing in the original description
explicitly defines a one piece body or even describes how the
body of Figures 3-8 is formed.
4 A rejection of claims 50, 59, and 60 under 35 U.S.C. § 112, first
paragraph, for lack of written description, has been withdrawn. Ans. 3.
5 A copy of the Ford Meter Box drawing is reproduced at page 70 of
"Exhibit 'J'." Br. (Evid. App.).
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Id. at 2 (emphasis added).
Appellant contests the Examiner's finding that Ford Meter Box
discloses the claimed "one piece body." Br. 42--43. Appellant contends that
an exemplary embodiment of "a one piece elongated three-way elbow" is
depicted in Figure 7 and described as component 70 in the Specification, and
also depicted in the reproduced "image" included in U.S. Provisional
Application No. 60/984,782, filed on November 2, 2007 (hereinafter, "the
provisional application"). Id. at 43. We note the "image" appears to
correspond to fixture body 70 shown in Figures 7 and 8 of the present
application, and to be shown at page 4 of the provisional application under
the heading "Three-way elbow."
The Examiner responds that "the phrase 'one piece'" does not appear
in the original specification or drawings of the present application, or in the
provisional application. Ans. 6. The Examiner acknowledges the phrase
"one integral piece" appears in the original specification and the provisional
application in describing enclosure 10, but not the elbow. Id. The Examiner
states:
There is no written description in the original specifications that
the elongated three-way elbow is either "one-piece[,]"
"unitized[,]" or "integral[.]" The drawings are not
determinative as to how the three-way elbow is made, that is it
could be a single cast piece or it could be two or more pieces
soldered, brazed, glued, or threaded together, or joined by any
other method.
Ans. 6 (emphasis added). 6
6 The Examiner does not reject any of the claims on appeal as failing to
meet either the written description requirement or the enablement
requirement of 35 U.S.C. § 112, first paragraph, based on the claims
containing the limitation of "a one piece elongated three-way elbow."
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Accordingly, Appellant and the Examiner disagree about the meaning
of the claim term "one piece." During examination of a patent application,
claims are to be given their broadest reasonable interpretation consistent
with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation
standard, claim terms are generally given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in view
of the specification. In re Trans logic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007).
The Specification uses the term "one integral piece" in describing that
"[ e ]nclosure (10) defines a rectangular shape comprising two sets of
opposed walls in one integral piece." Spec. 6, 11. 18-19; 7, 11. 7-8; and
Fig. 1 (emphasis added). A dictionary definition of "one-piece" is
"consisting of or made in a single undivided piece." Merriam-Webster's
Collegiate Dictionary 866 (I Ith ed. 2003). Enclosure 10 shown in Figure 1
appears to "consist[] of or [be] made in a single undivided piece." In other
words, the use of the phrase "one integral piece" in the Specification in
reference to enclosure 10 appears to be consistent with the dictionary
definition of "one-piece."
The Examiner appears to construe "a one piece elongated three-way
elbow" as encompassing both "a single cast piece" and a three-way elbow
with "two or more pieces." Ans. 6 (emphasis added). It is not apparent how
an elbow made of two or more pieces can be considered a "one piece"
elbow, which to be consistent with the noted dictionary definition, is an
elbow "consisting of or made in a single undivided piece." The Examiner's
construction of "one piece" is also inconsistent with the use of the phrase
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"one integral piece" in the Specification with reference to enclosure 10.
Although the Specification does not explicitly describe fixture body 70 as
being "one piece," the Examiner does not direct us to any disclosure that
would support such a broad construction of "one piece" so as to encompass
"two or more pieces."
As noted above, the Examiner finds the Ford Meter Box device
includes both an elbow and a tee. Final Act. 3. The elbow and tee are two
separate pieces when unassembled, and the assembly of the elbow and tee
consists of, or is made of, two pieces. Accordingly, we are persuaded that
one of ordinary skill in the art would not, in view of the present disclosure
and the noted definition of "one-piece," consider the Ford Meter Box device
to be "a one piece elongated three-way elbow," as claimed. (Emphasis
added). Thus, we do not sustain the rejection of claim 45, and claims 46-50
depending therefrom, as anticipated by Ford Meter Box.
Claims 51-63
Independent claim 51 recites, inter alia, that "said flow control fixture
comprises a one piece elongated three-way elbow." Br. 64---65 (Claims
App.) (emphasis added). Independent claim 57 also calls for "a one piece
elongated three-way elbow." Id. at 66-67 (Claims App.). Accordingly, we
likewise do not sustain the rejection of claim 51 and dependent claims 52-
56, or claim 57 and dependent claims 58---63, as anticipated by Ford Meter
Box.
Rejection II: Obviousness of Claims 48-50, 52, 54-56, and 58-64
Claims 48, 49, 52, 54--56, 58, and 61---63, which depend from one of
independent claims 45, 51, and 57, recite limitations relating to dimensions
of the flow control fixture or fire control fixture. Br. 63---68 (Claims App.).
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The Examiner concludes that it would have been obvious to make the Ford
Meter Box device with the claimed dimensions because "it was designed for
the same application as the instant device." Final Act. 3. Claims 50 and 59
depend from claims 45 and 57, respectively, and recite a working pressure of
"at least 300 pounds per square inch" for the flow control device. Br. 64, 67
(Claims App.). Claim 60 depends from claim 57 and recites this same
pressure limitation for the fire service fixture. Id. at 67 (Claims App.).
Claim 64 depends from claim 57 and adds that "said control device input
and said second elbow-output each define a working pressure sufficient to
meet Underwriters Laboratories certification criteria for residential fire
service fixture devices." Id. at 68 (Claims App.). The Examiner concludes
that it would have been obvious to make the Ford Meter Box device "to hold
300 psi in view of the intended use of the device" and "to satisfy UL
standards in view of the intended use of the device in the regulated field of
domestic water service." Ans. 4--5.
Alternatively, the Examiner concludes that it would have been "an
obvious matter of design choice and/or engineering design to provide the
Ford device with the recited features in view of the intended application of
the device." Id. at 5.
The Examiner's rejection of dependent claims 48-50, 52, 54--56, and
58---64 does not cure the deficiencies of the rejection of independent claims
45, 51, and 57 over Ford Meter Box. Accordingly, we do not sustain the
rejection of these dependent claims as unpatentable over Ford Meter Box.
Rejection III: Obviousness of Claims 45-64
Appellant argues claims 45-64 as a group. Br. 45---61. We select
claim 45 to decide the appeal as to this ground of rejection with respect to
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the group. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 46-64 stand or fall with
claim 45. Id. We have considered each of Appellant's arguments presented
in its Brief in relation to this rejection. See Br. 45-61.
Prima Facie Case of Obviousness
For this rejection, the Examiner takes the alternative position that the
Ford Meter Box drawing shows the claimed device "except, arguably, a one
piece body." Final Act. 4. The Examiner relies on additional references to
address this limitation. Particularly, the Examiner finds that Miller teaches
an improvement over prior art, which, as shown in Figure 2, comprises
threaded-together fittings. Id. (citing Miller, Fig. 2). The Examiner explains
that "the improvement being one piece bodies of different designs which
have plural ports." Id. The Examiner also finds that Manifolds "shows the
general equivalence of different manifolds including fitted and cast
manifolds." Id. The Examiner further finds that Figure 220 of McNab and
Harlin "shows a one piece elbow with a third port between the angle ends
and at 90 degrees to the plane of the elbow." Id.
The Examiner concludes that it would have been obvious to make the
Ford Meter Box "elbow and tee as a one piece body" in view of the totality
of the teachings of the secondary references "that the two types of
construction are equivalent and well known," and under the rationale in KSR
Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), "that the simple substitution
of one known element for another to obtain predictable results is an
indication of obviousness," where "the predictable result is a one piece
fitting suitable for use in a water supply application." Final Act 4--5. The
Examiner additionally concludes that it would have been "an obvious matter
of design choice and/or engineering design to provide the Ford [Meter Box]
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device, as modified, with the recited features in view of the intended
application of the device." Id. at 5.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). If this burden is met, the burden shifts to Appellant to come forward
with evidence or argument persuasive of the claimed invention's non-
obviousness. Id. The Examiner has provided factual findings in support of
the rejection, and has identified reasons why one of ordinary skill in the art
would have combined the prior art teachings in the manner claimed. See
KSR, 550 U.S. at 418 ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.") (quoting In re Kahn, 441 F .3d 977, 988 (Fed.
Cir. 2006)). Accordingly, the Examiner has carried the initial procedural
burden of establishing a prima face of obviousness.
Appellant contends that the applied prior art fails to teach or render
obvious all the limitations of the claimed invention, including a one piece
three-way elongated elbow. Br. 46. In this regard, Appellant contends that
Figure 220 of McNab and Harlin fails to teach or make obvious this element.
Id. Appellant states:
If the McNab and Harlin teachings (or any cited prior art
teachings) were so compelling and widely known to everyone in
the brass coupling manufacturing industry, why did Ford, a
company that specializes in making McNab and Harlin type
couplings, during their product development attempts spanning
over at least a year of effort, not invent the [Appellant]' s claimed
device using such McNab and Harlin teachings?
Id. at 46-47.
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Appellant merely questions why the Ford Meter Box device does not
include the teaching of McNab and Harlin. However, the relevant issue is
whether it would have been obvious to one of ordinary skill in the art to
combine the teachings of McNab and Harlin with those of Ford Meter Box,
as proposed by the Examiner. See Ans. 7 ("the issue is what would be
obvious to one of ordinary skill in the art"). It is the Examiner's position
that "once the structure of the Ford device is known that a hypothetical
routineer in the art would find the one piece fittings of the secondary
references a clear suggestion of the simple equivalent to the threaded fittings
of the Ford device." Id. Appellant's contention effectively addresses
McNab and Harlin individually, but not the collective teachings of the
references. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citation omitted). Whether or not any particular limitation is
missing from a single prior art reference is, therefore, not dispositive.
Appellant's argument also fails to persuasively address either the
Examiner's findings for Miller and Manifolds, or the reasons why the
Examiner cited each reference in concluding that the claims would have
been obvious over the references' collective teachings. See Br. 46-61.
Consequently, Appellant does not apprise us of error in either the
Examiner's findings in relation to Miller, McNab and Harlin, or Manifolds,
or the Examiner's articulated reasons for combining the teachings of these
references with Ford Meter Box. See Final Act. 4--5.
Appellant asserts that none of the applied references "provide[ s]
adequate guidance on how to construct a proper Fire Service Fixture [FSF],"
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and one of ordinary skill in the art would not have considered such teachings
when designing an FSF device. Br. 47. To the extent Appellant might be
implying that any one of the applied references must provide enablement for
this "guidance," we disagree. "Under [35 U.S.C.] § 103, however, a
reference need not be enabled; it qualifies as a prior art, regardless, for
whatever is disclosed therein." See Amgen Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003) (citation omitted). Accordingly,
this contention also does not apprise us of Examiner error.
Appellant also contends:
[Appellant]' s new design was different from the prior art devices
in at least three material ways: (1) the elongated 3-way elbow;
(2) "higher" pressure flow control device (although please note
that such limitation is not in all claims); and (3) it would fit in a
standard % inch[] (7 inch wide) water meter box.
Br. 51-52. We note, however, that claim 45 does not recite a "higher
pressure" flow control device, or require any element to "fit in a standard %
inch (7 inch wide) water meter box.'' Hence, Appellant's argument for
"differences" (2) and (3) is not persuasive. See In re Self, 671 F.2d 1344,
1348 ( CCP A 1982) (limitations not appearing in a claim cannot be relied
upon for patentability).
Appellant also states that "[Appellant]'s 'one piece elongated three-
way elbow' is a part that never existed, to [Appellant]'s knowledge, before
[Appellant] invented one for use in the claimed FSF device." Br. 52. But it
is not the Examiner's position, for this rejection, that any single prior art
reference discloses the claimed "one piece elongated three-way elbow";
rather, this rejection is premised on the conclusion that the combined
teachings of the cited art render obvious such an elbow. Accordingly,
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Appellant's statement does not apprise us of any error in the Examiner's
rejection.
Appellant also states, "as disclosed in [Appellant]s' applications, the
FSF device was designed to comply with Underwriters Laboratories pressure
ratings so that the FSF device would pass UL® certification testing." Br. 52.
As claim 45 does not recite any limitation regarding "UL® certification
testing," Appellant's contention is not commensurate with the claim scope.
See Self, 671 F.2d at 1348. Additionally, "a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment." See SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Accordingly, we
do not construe claim 45 to require that the flow fixture device "would pass
UL® certification testing."7
Appellant also does not persuasively address the Examiner's obvious
design choice rationale for modifying Ford Meter Box. Final Act. 5.
Accordingly, Appellant's contentions do not apprise us of any error in the
Examiner's rejection.
Objective Indicia of Non-Obviousness (Secondary Considerations)
Appellant advances evidence of objective indicia of non-obviousness
("secondary considerations") pertaining to skepticism in the field, long-felt
7 Claim 64 recites the limitation of "Underwriters Laboratories certification
criteria for residential fire service fixture devices." Br. 68 (Claims App.).
"Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." See 3 7 C.F .R.
§ 41.37(c)(l)(iv) (emphasis added). Accordingly, to the extent Appellant's
argument may be pertinent to claim 64, such argument has been waived.
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need, failure by others, commercial success, and copying. See Br. 54---61.
Evidence of objective indicia of non-obviousness provided in rebuttal must
be considered in the determination of obviousness/non-obviousness under 3 5
U.S.C. § 103. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990); In re Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011)
("[W]hen secondary considerations are present, though they are not always
dispositive, it is error not to consider them."). That is, the rebuttal evidence
must be considered along with the evidence upon which the conclusion of
obviousness was reached. Accordingly, we consider anew the issue of
obviousness of the claimed flow control fixture under 35 U.S.C. § 103,
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence presented by Appellant.
Nexus
"For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention." Kao, 639 F.3d at 1068
(quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)).
"Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims." Id. (citations omitted).
Skepticism in the Field
"Doubt or disbelief by skilled artisans regarding the likely success of
a combination or solution weighs against the notion that one would combine
elements in references to achieve the claimed invention." See WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1335 (Fed. Cir. 2016) (citation omitted).
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Appellant contends:
With regard to skepticism, as Mr. Kebles stated in his affidavit,
he approached several major manufacturers and requested they
invest the research and development (R&D) funds to create a
suitable FSF device. None agreed to invest such funds
apparently because they were skeptical that it was commercially
feasible to do so; instead, they cobble[ d] together various
plumbing fixtures in a weak attempt to satisfy Mr. Kebles['s]
long felt need for a FSF device. Notably, one does not invest
R&D into making the "obvious" as such requires no research.
[Appellant] Salser, however, agreed to invest the R&D and
invented the FSF device now claimed.
Br. 55-56 (emphasis added). 8
Appellant does not identify any specific statement in the General
Affidavit of Michael J. Kebles (hereinafter, "the Kebles Affidavit"). 9 In
addition, Appellant's statement that "several major manufacturers" did not
agree to invest R&D funds to create a suitable FSF device, "apparently
because they were skeptical," does not offer evidence of actual doubt or
disbelief by the manufacturers regarding the likely success of the flow
control fixture recited in claim 45. Br. 55 (emphasis added). Rather, this
statement represents Appellant's opinion. Appellant's statement that,
"instead, they cobble[ d] together various plumbing fixtures in a weak
attempt to satisfy Mr. Kebles['s] long felt need for a FSF device[,]" appears
8 Appellant addresses the issue of ownership of the present application in
the Appeal Brief. See Br. 13-15. Floyd Stanley Salser and Michael J.
Kebles are the named inventors in the present application, as originally filed.
A Request to Correct Inventorship under 37 C.F.R. § 1.48(b) was filed on
November 22, 2011, to remove Mr. Kebles as a listed inventor, leaving Mr.
Salser as the sole listed inventor.
9 The Kebles Affidavit is at pages 2-13 of the Appeal Attachment to the
Evidence Appendix.
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to imply that the manufacturers made only a "weak attempt" to produce a
"FSF device." Id. Appellant's statement that, "[n]otably, one does not
invest R&D into making the 'obvious' as such requires no research[,]"
appears to imply that the manufacturers did not "invest the R&D" to try to
make a "suitable FSF device" they considered to be obvious. Br. 55-56; see
also Br., Evidence Appendix attachment. If so, it is not apparent how this
statement establishes skepticism in the field of Appellant's endeavor.
Moreover, it is not apparent how Appellant's statement, "[Appellant] Salser,
however, agreed to invest the R&D and invented the FSF device now
claimed," shows skepticism of others skilled in the field. Id. at 56 (emphasis
added).
For these reasons, Appellant's evidence of skepticism of others is
accorded little weight.
Commercial Success
To demonstrate non-obviousness based on commercial success,
Appellant must provide evidence that establishes the existence of
commercial success, and a nexus between that success and the merits of the
claimed invention. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F .3d
1317, 1324 (Fed. Cir. 2005). The evidence is required to show that "the
successful product is the invention disclosed and claimed." See J.T. Eaton
& Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).
To establish a proper nexus between the claimed invention and the
commercial success of a product, Appellant must offer "proof that the sales
[of the product] were a direct result of the unique characteristics of the
claimed invention-as opposed to other economic and commercial factors
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unrelated to the quality of the patented subject matter." In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996) (citation omitted).
Appellant states that "Salser's FSF device enjoyed almost immediate
commercial success." Br. 56. Appellant contends that"[ Appellant J's FSF
device was the first to meet LVVWD's [(Las Vegas Water District's)]
criteria and would have resulted in large orders but for the political nature of
the relationship between L VVWD and Ford Meter Box." Id. (emphasis
added). Appellant does not indicate how many units were sold, or show the
sales represent a substantial quantity in the relevant market. We understand
Appellant's contention to acknowledge that Appellant's device did not
experience "large orders." Moreover, "evidence related solely to the number
of units sold provides a weak showing of commercial success, if any."
Huang, 100 F.3d at 140. Appellant's evidence also does not show the sales
"were a direct result of the unique characteristics of the claimed invention."
Id.
Appellant also asserts commercial success because of licensing. Br.
57. Specifically, Appellant states that "FC Patents has licensed, for a
substantial sum of money, the rights to the FSF Device to another major
manufacture[r], Mueller Water Products." Id. A license taken under a
patent "may constitute evidence of nonobviousness; however, only little
weight can be attributed to such evidence if the patentee does not
demonstrate 'a nexus between the merits of the invention and the licenses of
record."' In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (citations
omitted). "Our cases specifically require affirmative evidence of nexus
where the evidence of commercial success presented is a license, because it
is often 'cheaper to take licenses than to defend infringement suits."' Iron
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Grip Barbell Co., 392 F.3d at 1324 (citation omitted). Here, Appellant's
contention is not supported by evidence showing the terms of the license or
the circumstances under which the license was granted, or a nexus between
the merits of the invention and the license. Accordingly, Appellant's
contention is inadequate.
For these reasons, Appellant's evidence of commercial success is
accorded little weight.
Copying
"[C]opying the claimed invention, rather than one within the public
domain, is indicative of non-obviousness." Windswfzng Int'!, Inc. v. AMF,
Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986) (citation omitted). "Not every
competing product that arguably fails within the scope of a patent is
evidence of copying. Otherwise every infringement suit would
automatically confirm the nonobviousness of the patent. Rather, copying
requires the replication of a specific product." Iron Grip Barbell Co., 392
F.3d at 1325 (emphasis added).
Appellant contends that "[a ]lmost immediately after Salser submitted
his current design to L VVWD, employees of L VVWD made unauthorized
derivative works based on Salser's copyright protected design drawings and
sent them (and probably Salser's actual design drawings themselves) to Ford
Meter Box so that they could copy his design." Br. 57-58. This contention
does not, however, specify the structure of the "unauthorized derivative
works."
Appellant also contends:
Ford Meter Box employees requested from Salser, and received,
three samples of Salser's FSF device to take back with them for
testing under the pretense that they wanted to test this FSF device
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and perhaps license the rights to manufacture same. A few
months later Ford Meter Box was able to manufacturer [sic] an
almost identical FSF Device as shown in the image below (which
is almost an identical copy of Salser's design).
Br. 59 (emphasis added). Appellant provides an image of what Appellant
indicates is the Ford Meter Box FSF device. Id.
Appellant further contends that James Jones Brass, a subsidiary of
Mueller Water Products, copied Mr. Salser's design. Br. 60. Appellant
provides images of what Appellant indicates are the "Salser" design and the
James Jones design. Id.
To establish copying of the claimed invention, the evidence must
show that the alleged copying device(s) include(s) all claimed limitations.
Although Appellant provides images of purportedly copied devices made by
Ford Meter Box and James Jones Brass, Appellant does not explain that
these devices include all the limitations of claim 45. Appellant asserts that
the Ford Meter Box device is "almost an identical copy of Salser's design."
Br. 59. However, we are unable to determine from the images that the Ford
Meter Box device or the James Jones Brass device necessarily comprises all
claim limitations.
For these reasons, Appellant's assertion of copying is accorded little
weight.
Long-Felt Need
"Evidence of a long felt but unresolved need tends to show non-
obviousness because it is reasonable to infer that the need would have not
persisted had the solution been obvious." WBIP, 829 F.3d at 1332 (citation
omitted). Establishing long-felt need requires objective evidence that a
recognized problem existed in the art for a long period of time without
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solution. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed.
Cir. 1984 ). Once a long-felt need has been established, it must further be
shown that the claimed invention satisfied the need. See In re Cavanagh,
436 F.2d 491, 496 (CCPA 1971). This can be demonstrated, for example,
by evidence establishing commercial success and that the industry purchased
the claimed invention because it satisfied the long-felt need. See W.L. Gore
&Assocs., Inc. v. Garlock, Inc., 721F.2d1540, 1555 (Fed. Cir. 1983).
Appellant contends:
Mr. Kebles noted that he was impressed with Salser's
design as Salser' s [sic], an individual inventor, was able to invent
a FSF device that met the long felt need as described above while
the major brass coupling manufacturers, like Ford Meter Box,
with all their resources, and the same prior art available to all,
were unable to do the same. ([see] Appeal Attachment at pp[.]
137-142)[.]
Br. 56 (emphasis added). We note Appellant describes "long-felt need" in
its argument against the anticipation rejection of claims 45---63. See Br. 38.
Although long-felt need is not relevant to anticipation, Appellant correctly
recognizes that long-felt need is a secondary consideration of non-
obviousness. Id. at 30-31, 54--55. Accordingly, we will consider
Appellant's earlier argument to apply to the obviousness rejection of claim
45 (Rejection III).
Appellant states that the Kebles Affidavit and the Salser Affidavit10
note the following:
(a) There has been a long felt need for a fire service fixture
type device. Such device has been needed from the day the first
10 A General Affidavit of Floyd Stanley Salser is provided in the Appeal
Br., Evidence Appendix, as one of the Attachments (hereinafter "Salser
Affidavit").
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residential sprinkler system was installed and at least from 2005.
Of course such statement assumes that the time span of YEARS
qualifies as a "longfelt need" . ...
(b) That all known devices prior to [Appellant]' s disclosed
and claimed device did not adequately meet such long felt need
as they were too big and prone to leak; (Kebles Affidavit, Appeal
Attachment at pp[.] 2-12).
Br. 38 (emphasis added).
Appellant's statement, "[t]here has been a long felt need for a fire
service fixture type device[,]" does not provide adequate evidence to show
that such need actually existed. Br. 38. Appellant does not direct us to any
particular discussion in either the Kebles Affidavit or Salser Affidavit that
supports this statement. Appellant's statement that "[s]uch device has been
needed from the day the first residential sprinkler system was installed and
at least from 2005[]" also does not provide such sufficient evidence for the
same reason. Id.
We note that "long-felt need is analyzed as of the date of an
articulated identified problem and evidence of efforts to solve that problem."
Texas Instruments Inc. v. Int'! Trade Comm 'n, 988 F.2d 1165, 1178 (Fed.
Cir. 1993). Even if the alleged "need" has existed since "at least from 2005"
(i.e., about two years before the provisional application's filing date, and
about three years before the present application's filing date), we note that a
"time span of YEARS" is not, by itself, sufficient to establish a long felt
need. See Iron Grip Barbell Co., 392 F.3d at 1325 ("Absent a showing of
long-felt need or the failure of others, the mere passage of time without the
claimed invention is not evidence of nonobviousness."). For these reasons,
Appellant's statement "(a)" does not amount to "objective evidence that a
recognized problem existed in the art for a long period of time without
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solution," as required to establish a long-felt need. See Vandenberg, 740
F.2d at 1567 (emphasis added).
As for statement "(b)," pages 2-12 of the Appeal Attachment
correspond to the Kebles Affidavit. However, Appellant does not direct us
to any description of "long-felt need" at these pages.
We note the Salser Affidavit discusses long-felt need, as follows:
In 2007, Michael Kebles (hereafter Kebles) asked me if
MARS would be interested in investing the R&D funds
necessary to develop/invent a Fire Service Fixture (FSF) device.
Kebles informed me that there has been a long felt need for a
fixture that would allow the water supply to a typical home to be
turned off (for non-payment, for example) without turning off the
water supply to a fire suppression system (such as a fire sprinkler
system). Kebles further informed me that no known devices
adequately meet such long felt need as they were too big and
prone to leak My individual research and knowledge revealed
the same state of the art regarding such fixtures.
Salser Affidavit 1-2 (emphasis added). Mr. Salser's statement that
"[Michael] Kebles informed me that there has been a long felt need'' does
not provide sufficient evidence that such need actually existed, when the
problem was identified, or of efforts to solve the problem. See Texas
Instruments Inc., 988 F.2d at 1178. Mr. Salser's statement that "[m]y
individual research and knowledge revealed the same state of the art
regarding such fixtures[]" also does not provide sufficient evidence to
establish a long-felt need. Salser Affidavit 2.
And even assuming Appellant has established a long-felt need,
Appellant has not shown that the claimed invention satisfied the need. See
In re Cavanagh, 436 F.2d at 496. For example, Appellant has not provided
sufficient evidence to establish commercial success, or that the industry
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purchased the claimed invention because it satisfied the long-felt need. See
W.L. Gore &Assocs., Inc., 721 F.2d at 1555.
For these reasons, Appellant's assertion of long-felt need is accorded
little weight.
Failure by Others
Failure of others to satisfy a long-felt need can provide evidence of
non-obviousness. Dow Chemical Co. v. American Cyanamid Co., 816 F.2d
617, 623 (Fed. Cir. 1987). Appellant asserts that "[a]s noted above, all
previous attempts by Ford and others failed to produce a FSF device that
complied with the desired criteria." Br. 60. Appellant does not, however,
direct us to any specific argument "noted above" that supports this
contention.
As mentioned above, Appellant also contends that "the major brass
coupling manufacturers, like Ford Meter Box, with all their resources, and
the same prior art available to all, were unable to do the same [i.e., "invent a
FSF device that met the long felt need as described above"]." See id. at 56.
Appellant references pages 137-142 of the Appeal Attachment. Id. Pages
137-142 of the Appeal Brief Evidence Appendix Attachments correspond to
"Exhibit A" by Michael Kebles (hereinafter, "Ex. A"). This contention
appears to pertain to Appellant's "failure by others" position.
As discussed above, the evidence Appellant advances to show a long-
felt need is insufficient. Appellant does not indicate where in Exhibit A
evidentiary support for Appellant's bare attorney argument is found. In
Exhibit A, Mr. Kebles states that Ford Meter Box made a "first attempt,"
which produced a "solder joint assembly made up of various standard
fittings an [sic] copper tubing that was not practical [and] was immediately
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rejected by all who saw it" (see Ex. A 139 (emphasis added)), and a "second
attempt ... using stock brass fittings that screwed together and required
separate %" and 1" size assemblies. Although functional, it was not
practical. I received a lot of negative feedback from all who saw it" (see Ex.
A 140 (emphasis added)). Mr. Salser also states that "[m]y original concept
was for a one piece cast unit marked 'Fire & Domestic' with directional flow
arrows but none existed. Ford Meter Box had no further interest in the
project unless the District was willing to pay for the R&D time and
material." Id.
Accordingly, Mr. Salser acknowledges the device made in the second
attempt was "functional." Ex. A. 140. Mr. Salser does not explain in any
detail why the devices produced by the first and second attempts were "not
practical." Id. at 139--140. The evidence does not show, for example, that
the two attempts failed because the devices lacked the claimed features. See
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1313 (Fed. Cir.
2006).
Also, Mr. Salser does not indicate that Ford Meter Box tried, but
failed, to make a one-piece cast unit. Ex. A. 139--140. Rather, Mr. Salser
appears to indicate that Ford Meter Box lacked sufficient interest in trying to
make such one-piece cast unit.
For these reasons, Appellant's assertion of failure by others is
accorded little weight.
Conclusion
Although Appellant has provided some objective evidence of non-
obviousness, the overall weight of this evidence does not outweigh the
evidence of obviousness relied upon by the Examiner. See Sud-Chemie, Inc.
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v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("evidence
of unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness"); Leapfrog Enters.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (holding that
objective evidence of non-obviousness presented, including substantial
evidence of commercial success, praise, and long-felt need, was inadequate
to overcome the strength of the prima facie obviousness showing).
Accordingly, we sustain the rejection of claim 45, and claims 46-64
falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Ford Meter
Box, Miller, McNab and Harlin, and Manifolds.
DECISION
We reverse the rejection of claims 45---63 under 35 U.S.C. § 102(a) as
anticipated by Ford Meter Box.
We reverse the rejection of claims 48-50, 52, 54--56, and 58---64 under
35 U.S.C. § 103(a) as unpatentable over Ford Meter Box.
We affirm the rejection of claims 45---64 under 35 U.S.C. § 103(a) as
unpatentable over Ford Meter Box, Miller, McNab and Harlin, and
Manifolds.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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