Ex parte Smith

Board of Patent Appeals and Interferences

Aug 26, 1998

08506851 (B.P.A.I. Aug. 26, 1998)

Application for patent filed July 25, 1995.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANTHONY SMITH
__________
Appeal No. 97-3983
Application 08/506,8511
___________
ON BRIEF
___________
Before STAAB, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Anthony Smith originally appealed from the final rejection of claims 1 through 20, all
of the claims pending in the application. The appellant has since waived the appeal as to
claims 1 through 8 (see page 1 in the brief, Paper No. 9). Accordingly, the appeal as to
these claims is hereby dismissed, leaving for review the standing rejections of claims 9
Appeal No. 97-3983
Application 08/506,851
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through 20.
The invention relates to a “cartlike sanitation apparatus adapted to receive liquid
waste, as from hospital patients, for transport to a nearby disposal site for draining
discharge” (specification, page 1). Claims 9 and 13, the two independent claims
remaining on appeal, are illustrative and read as follows:
9. In mobile sanitation apparatus having housing means, the improvement
comprising temporarily deformable elastomeric receptor means for a patient’s waste
liquid, tubular means adapted to conduct the waste liquid from the receptor means into a
temporary waste liquid storage compartment in the housing means, and rinse means for
rinsing clean the waste liquid path from the receptor means into the storage compartment.
13. In mobile sanitation means, the improvement comprising elastomeric receptor
means for waste liquids, having a base with a discharge outlet and having a hollow wall
upstanding surrounding a major part of the base and having an opening into the wall hollow
and openings connected therewith through and along the wall and facing inward therefrom
for rinse water supplied to the hollow to flow down the wall and over the base to the
discharge opening.
The references relied upon by the examiner as evidence of anticipation and
obviousness are:
Coffman et al. (Coffman) 3,192,537 Jul. 6, 1965
Smith 5,117,511 Jun. 2, 1992
Claims 13 and 17 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Smith, and claims 9 through 12 and 14 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Smith in view of Coffman.
Reference is made to the appellant’s brief (Paper No. 9) and to the examiner’s
Appeal No. 97-3983
Application 08/506,851
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answer (Paper No. 10) for the respective positions of the appellant and the examiner with
regard to the merits of these rejections.
Smith, the examiner’s primary reference, discloses an apparatus for the disposal of
undesirable and unsanitary substances, such as spit or saliva, from the passenger
compartment of a motor vehicle. The apparatus includes a funnel 20 connected to water-
supply tubing 23 and drain tubing 27. According to Smith,
[t]he tubing may be obtained in almost any desired size in rubber or any of
many synthetic polymers, such as nylon, polyvinyl chloride, polyethylene, and
polypropylene, for example. The funnel may be of similar composition or
may be made of glass or of a thermosetting phenol-formaldehyde or urea-
formaldehyde resin, for example [column 5, lines 38 through 44].
The water-supply tubing originates at a rinsewater bottle 32, continues to and past a water
pump P and terminates at the funnel. The drain tubing extends from the funnel through thew
bottom of the vehicle (see, for example, Figure 2) or to an interim collection site within the
vehicle if external disposal of the waste substances is prohibited or undesirable (see
column 6, lines 28 through 35). The funnel is movable between a rest position partially
surrounded by housing 14 beneath the dash 13 and an extended, use position (see Figure
2). In its rest position, the funnel contacts an automatic switch S for the water pump. TheA
apparatus also includes a manual pump switch S . As shown in Figure 4, the funnel has aM
hollow, double wall construction, the interior of which communicates with the water-supply
tubing 23. The inner wall of the funnel has a ring of openings therein for feeding the water
Appeal No. 97-3983
Application 08/506,851
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into and down through the funnel to the drain tubing. As explained by Smith,
[t]he manual switch is actuated directly by hand, of course, and the automatic
switch is actuated indirectly by manual withdrawal of the funnel from its rest
position to an extended use position. Either way rinsewater is pumped to
the funnel. The supplied rinsewater flows into the space between the funnel
walls, exits through the ring of openings near the [top] edge of the inside wall,
and flows down through the funnel and out from its neck into, through, and out
the drain tube when the funnel is in use or is being rinsed preliminary to or
following use.
When the driver or a passenger wishes, he or she withdraws the
funnel from its rest position. Withdrawal of the funnel from contact with the
automatic switch triggers the switch to actuate the pump, whereupon water
flows from the openings near the rim down the exposed inside wall of the
funnel. Such water rinses away, down and out the drain tube, surplus liquid
(such as saliva), or even finely divided particulate matter (such as sand or
tobacco grains) fed into the funnel gradually enough so as not to block or
overflow it. When finished using the funnel, the user returns it to its rest
position, thereby switching off the [w]ater flow, unless continued flow is
required to clear the drain tube, in which event the manual switch can be
switched on for a suitable period [column 3, lines 32 through 57].
With regard to the standing 35 U.S.C. § 102(b) rejection of claims 13 and 17,
anticipation is established only when a single prior art reference discloses, expressly or
under principles of inherency, each and every element of a claimed invention. RCA Corp.
v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
Appeal No. 97-3983
Application 08/506,851
Webster’s New Collegiate Dictionary (G. & C. Merriam Co. 1977) defines “cart”2
as meaning “a small wheeled vehicle.”
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(Fed. Cir. 1984). It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference, i.e., that all
of the limitations in the claim be found in or fully met by the reference. Kalman v. Kimberly
Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984).
The appellant contends that the anticipation rejection of claims 13 and 17 is
unsound because Smith does not meet the limitation in claim 13 requiring the receptor
means to be “elastomeric” or the limitation in claim 17 requiring a “mobile sanitation cart”
(see pages 5 and 7 in the brief). As indicated above, however, Smith teaches that the
receptor means or funnel 20 disclosed therein may be made of rubber, a well known
elastomeric material. The fact that Smith also discloses that the funnel may be made of
other materials which are not elastomeric does not in any way diminish or negate the
teaching of rubber as urged by the appellant. It is also not evident, nor has the appellant
cogently explained, why the recitation in claim 17 of the “mobile sanitation cart” does not
read on Smith’s vehicle mounted apparatus. The Smith apparatus is mobile, is concerned
with sanitation, and is a “cart” as broadly recited in the claim. 2
Thus, the appellant’s position that the subject matter recited in claims 13 and 17 is
Appeal No. 97-3983
Application 08/506,851
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not anticipated by Smith is not persuasive. Therefore, we shall sustain the standing 35
U.S.C. § 102(b) rejection of these claims.
As for the standing 35 U.S.C. § 103 rejection of claims 9 through 12 and 14 through
20, Coffman discloses a portable cart-like shampoo device for patients confined to a bed
or chair. The device includes a cabinet or housing 12, a pair of water supply tanks 36, a
main shampoo bowl 66, pumps for supplying water from the supply tanks to the main bowl
via faucets 56 and 58 and/or a spray head 64, a drainage water storing tank 50, a drain
pipe 72 connecting the main bowl to the drainage tank, and an ancillary bowl 126
particularly designed for bed-ridden patients. As shown in Figure 5, the ancillary bowl,
which is connectible to the main bowl via a drain tube 140, is semi-circular in outline and
has a neck-receiving recess 130 formed in its sidewall 132.
According to the examiner, it would have been obvious to one of ordinary skill in the
art at the time the invention was made “to provide Smith with a waste collection tank such
as taught by Coffman et al at 50" (answer, page 3). The examiner also considers that “to
provide for a portion of the [Smith] receptor [funnel 20] to be absent as set forth at 130 of
Coffman et al would have been obvious in order to accommodate the user” (answer, page
3).
The appellant’s argument with respect to the obviousness rejection of independent
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Application 08/506,851
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claim 9 is based on a limitation which was proposed subsequent to final rejection and
refused entry by the examiner (see page 6 in the brief). Since the limitation in question
does not appear in the claim, the appellant’s argument fails at the outset (see In re Self,
671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982)).
Therefore, we shall sustain the standing 35 U.S.C. § 103 rejection of claim 9 as
being unpatentable over Smith in view of Coffman.
We also shall sustain the standing 35 U.S.C. § 103 rejection of dependent claims
10 and 11 as being unpatentable over Smith in view of Coffman since the appellant has
not challenged such with any reasonable specificity, thereby allowing these claims to stand
or fall with parent claim 9 (see In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987)).
We shall not sustain, however, the standing 35 U.S.C. § 103 rejection of dependent
claim 12 as being unpatentable over Smith in view of Coffman.
Claim 12 further defines the temporary storage compartment recited in parent claim
9 as being “at a height enabling it to be positionable over and be discharged into a toilet
bowl.” In short, the combined teachings of Smith and Coffman would not have suggested
providing the Smith apparatus with a temporary storage compartment positioned at such a
height. The examiner’s determination that “the term ‘positionable over’ fails to define
structure that distinguishes over the art here in that any device can be lifted to such a
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Application 08/506,851
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height” (answer, page 3) rests on an unreasonable interpretation of the claim language in
question.
Finally, we shall sustain the standing 35 U.S.C. § 103 rejection of claims 14 through
20, all of which ultimately depend from claim 13, as being unpatentable over Smith in view
of Coffman.
Claim 14 recites “a flexible discharge outlet tube for connection to receive waste
liquid and to convey it to a mobile compartment for waste water.” The Smith drain tubing
27 constitutes a flexible discharge outlet tube for connection to receive waste liquid.
Smith’s teaching that this drain tubing may communicate with an interim collection site
within the automobile if external disposal of the waste substances is prohibited or
undesirable would have provided the artisan with ample suggestion to connect the tubing
to a waste compartment of the sort disclosed by Coffman, thereby meeting the terms of
claim 14.
Claims 15 and 16 fall with parent claim 14 since the appellant has not challenged
the rejection thereof with any reasonable specificity (see In re Nielson, supra).
As for claim 17, the appellant’s contention that the “mobile sanitation cart” feature
recited therein is not taught by the applied references is not persuasive for the reasons
discussed above in conjunction with the anticipation rejection of this claim.
With regard to claims 18 through 20, the appellant does not specifically dispute the
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Application 08/506,851
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examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to
provide for a portion of the Smith receptor or funnel 20 to be absent in the manner of
Coffman’s recess 130 to accommodate a user. Instead, the appellant contends that the
provision of such a recess or depression in the Smith funnel would not meet the limitations
in these claims (see page 7 in the brief). This position is not well taken. Suffice it to say
that the provision of a recess or depression in Smith’s receptor means or funnel 20 would
result in the funnel wall being absent as recited in claim 18, the discharge outlet of the
funnel being remote from the absent wall as recited in claim 19, and the wall of the funnel
being substantially U-shaped in plan view as recited in claim 20.
In light of the foregoing, the decision of the examiner to reject claims 9 through 20 is
affirmed with respect to claims 9 through 11 and 13 through 20 and reversed with respect
to claim 12.
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Application 08/506,851
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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3983
Application 08/506,851
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Charles A. McClure
P. O. Box 1168
Tampa, FL 33601