Ex Parte Siena et al

Patent Trial and Appeal Board

Mar 19, 2015

11602548 (P.T.A.B. Mar. 19, 2015)

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.
11/602,548 11/21/2006 Matthew J. Siena KMF/108/US 9450
2543 7590 03/20/2015
ALIX YALE & RISTAS LLP
750 MAIN STREET
SUITE 1400
HARTFORD, CT 06103
EXAMINER
NGUYEN, TUAN N
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
03/20/2015 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 MATTHEW J. SIENA, JOHN H. SIENA, and
CHRIS W. JEFFERS
____________________

Appeal 2012-012394
Application 11/602,548
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and
LISA M. GUIJT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012394
Application 11/602,548

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
5 and 9–19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a universal kit for a toilet water tank. Spec.
1, ll. 21–22. Claim 16, reproduced below, is illustrative of the claimed
subject matter:
16. A flush rod assembly mounted on a wall of a toilet tank for
rotation about an axis extending into the tank, comprising
a mounting assembly engaging a mounting hole in the
tank wall and having a shaft passing through the tank wall and
rotatable about said axis;
a handle outside the tank and operatively connected to
one end of the shaft, for rotating said shaft;
a flush rod having one end secured in a fitting at the other
end of the shaft, and angulated in three dimensions within the
tank to another end that is corotatable with said handle about
said axis, each of said flush rod ends having substantially the
same size and shape such that either end portion is selectively
securable in said shaft fitting, said flush rod further including a
plurality of spaced apart holes at each end; and
a flush valve chain attached to a hole at said other end.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bate
Ota
Talerico
Bliss
Yeh
US 361,203
US 4,173,044
US 4,391,003
US 6,178,567 B1
US 6,453,480 B1
Apr. 12, 1887
Nov. 6, 1979
July 5, 1983
Jan. 30, 2001
Sep. 24, 2002
Appeal 2012-012394
Application 11/602,548

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REJECTIONS
Claim 12 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Talerico. Ans. 4.
Claims 1–3, 11, and 13–19 are rejected under 35 USC §103(a) as
obvious over Talerico in view of Bate. Ans. 4.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Talerico in view of Bate, and further in view Bliss or Yeh. Ans. 5.
Claims 5 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Talerico in view of Bate, and further in view of Ota. Ans.
6.
Claims 5 and 10 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Talerico in view of Bate, and further in view of Bliss.
Ans. 6.

OPINION
Independent claims 12 and 16 each require a flush rod, angulated in
three dimensions, wherein the flush rod is reversible. Specifically, and in
relevant part, claim 12 requires “each end portion selectively securable in
said mounting fixture.” Claim 16 similarly requires, “each of said flush rod
ends having substantially the same size and shape such that either end
portion is selectively securable in said shaft fitting.”
To meet the above noted limitations the Examiner relies on diagrams
in Talerico, and, on that basis, finds that the end portions of the disclosed rod
appear to be the same size. Ans. 4. Based on this finding, the Examiner
concludes that Talerico’s rod would meet the limitations above regarding
Appeal 2012-012394
Application 11/602,548

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reversibility. Id. at 7 (noting “the rod of Fig. 8 of Talerico shown to be like
a Z-shape and the one end being secured in the mounting fixture . . . is the
end portion that is selected in this instant and the other end appears to be the
same size and shape from same rod 49 surely is capable of being secured in
the mounting fixture”); Fin. Rej. 2 (noting “each end portion is selectively
securable to the mounting fixture since the dimension and shape of each end
is the same.”).
When a reference does not disclose that the drawings are to scale and
is silent as to dimensions, the drawing features are of little value in
establishing measurements. See MPEP §2125; Hockerson-Halberstadt, Inc.
v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.”). Furthermore, the Examiner
must provide sufficient evidence or scientific reasoning to establish there is a
sound basis for the Examiner’s belief that a functional limitation is an
inherent characteristic of the prior art. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
Here, the Examiner has found that the ends of rod 49, as illustrated in
Fig. 8 of Talerico are “the same size and shape,” and “the dimension and
shape of each end is the same.” Ans. 7; Fin. Rej. 2. However, there is no
indication in Talerico that the drawings are to scale, and the reference is
silent as to dimensions of rod 49. As such, the relied upon figures provide
little evidentiary value relative to the measurement or relative proportions of
the end portions of rod 49. Therefore, the Examiner’s conclusion that both
ends of the rod 49 are the same size and shape is based on speculation, and
Appeal 2012-012394
Application 11/602,548

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the Examiner has not demonstrated that Talerico’s rod is necessarily capable
of meeting the recited functions as is required to establish inherency.
Independent claim 1 requires “a shaft rotatably supported in the base,
. . . said shaft having a slot at the other end for receiving either flat end
portion of the flush rod.” The Examiner relies on Fig. 1 of Talerico to meet
the ‘shaft’ limitation. Ans. 4–5, 7–8. However, there is no clear illustration
of a shaft in the cited figure nor does the Examiner articulate any rational
underpinnings for why the claimed shaft would be obvious in view of the
prior art teachings.
Furthermore, claim 1 requires “end portions having a plurality of
holes therein.” The Examiner relies on Bate to meet this limitation, and
finds that it would have been obvious to use the rod of Bates “as an
alternative equivalent rod structure,” Ans. 5; and that it would be an obvious
choice “to construct the Talerico flush rod out of a rod with apertures along
the entire length of said rod without altering or preventing the intended
function of the Talerico flush rod.” Fin. Rej. 3.
In Bate, the holes are present along the entire length of lever c as
potential fulcrum points. See Bate, p. 1, lines 46-49 and 75-84. Talerico
does not utilize similar fulcrum points, but rather slots connected to chain 48
located at one end of rod 49. See Talerico, col. 4, ll. 60–65 and Fig. 1.
Thus, adding fulcrum points at both ends of a flush rod, as taught byBate,
would serve no apparent purpose in Talerico. In other words, the
Examiner’s conclusion that the substitution of Bate’s lever c for Talerico’s
rod 49 would have provided an “alternative equivalent” says essentially that
the substitution would have been obvious because Bate’s lever c was a
known element for use in a toilet. Therefore, the Examiner’s position that it
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Application 11/602,548

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would have been obvious to combine Bate and Talerico is not supported by
rational underpinnings.
Either of the above noted deficiencies is fatal to the rejection of
claim 1.
As the Examiner has not accounted for the deficiencies noted above in
rejecting the dependent claims involved in this appeal, our decision
regarding the independent claims is dispositive as to all claims involved in
this appeal.

DECISION
The Examiner’s rejections of claims 1–5 and 9–19 are reversed.

REVERSED
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