JAMES McLELLAN

Patent Trials and Appeals Board

Jul 27, 2020

13909594 - (D) (P.T.A.B. Jul. 27, 2020)

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.
13/909,594 06/04/2013 JAMES McLELLAN A18082US (100102.1) 6084
22920 7590 07/27/2020
GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
07/27/2020 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 JAMES MCLELLAN
__________

Appeal 2020-001022
Application1 13/909,594
Technology Center 3700
__________

Before ANTON W. FETTING, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims for a
stiffener for use with a flexible hose, which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Automatic swimming pool cleaners “that move[] along the bottom
and sides of a swimming pool . . . have been in use for many years.”
(Spec. 3.) “These pool cleaners all require flexible hoses to deliver the water

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the
inventor. (Appeal Br. 3.)
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Application 13/909,594

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to the cleaning assembly.” (Id.) “As the pool cleaner moves along the
bottom of the pool, [this hose] frequently becomes tangled or knotted, which
can result in the pool cleaner not cleaning the entire pool surface or
becoming stuck in one location in the pool.” (Id.) Appellant’s invention
relates to stiffeners for such flexible hoses. (Id. at 2.)
Claims 1–3, 5, 6, and 11–252 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A stiffener for use with a flexible hose which is part of a
swimming pool cleaner, the flexible hose having an outside
diameter and an axis, the stiffener having an inside diameter of
substantially the same diameter as the outside diameter of the
flexible hose,
the stiffener comprising multiple rods or strips to be oriented
parallel to the axis of the flexible hose,
the rods or strips being connected to two or more partial
rings to be oriented perpendicular to the axis of the
flexible hose,
wherein said partial rings have an opening to
permit the flexible hose to pass between said
partial rings,
and wherein the stiffener is made of materials compatible with
chlorinated water, iodized water, and salt water.
(Appeal Br. 9 (with paragraphing added).)

2 Appellant did not include claims 22 and 23 in the Claims Appendix.
However, claims 22 and 23 have not been cancelled, and therefore, are still
pending and on appeal.
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The prior art relied upon by the Examiner is:
Name Reference Date
Bub US 2,881,804 Apr. 14, 1959
Peacock US 4,900,596 Feb. 13, 1990

The following grounds of rejection by the Examiner are before us on
review:
Claims 22 and 23 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement.
Claims 1–3, 5, 6, and 11–25 under 35 U.S.C. § 103(a) as unpatentable
over Bub and Peacock.

DISCUSSION
112, first paragraph
The Examiner finds that the Specification does not provide support for
the limitation “the stiffener is about 6-18 inches in length.” (Final Action 2.)
Appellant does not respond to this rejection. We agree with the
Examiner and summarily affirm this rejection. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground
of rejection to the Board . . . the Board may treat any argument with respect
to that ground of rejection as waived.”).

Obviousness
The Examiner finds that Bub teaches a stiffener for use with a flexible
hose where the stiffener comprises three rods or strips oriented parallel to
the axis of the flexible hose and connected to two or more partial rings,
where those rings are oriented perpendicular to the axis of the hose. (Final
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Action 3 (referring to Bub Figure 6 for the stiffener and Figure 1 for the
flexible hose).) The Examiner finds that the rods and partial rings are taught
to be made of metal, not Acrylonitrile Butadiene Styrene (ABS)
thermoplastic or other material compatible with chlorinated water or the
other environments recited in the claims. (Id. at 4.)
The Examiner, however, finds that Peacock teaches a conduit
protector that is wrapped around a conduit and where the protector may be
made from ABS or other appropriate thermoplastic material. (Id. (referring
to Peacock Figure 3a and 9:18–40).)
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have substituted the use of ABS material of
Peacock for the metal of Bub “on the basis of its suitability for the intended
use as a matter of obvious design choice.” (Id.)
We address representative claim 1, as Appellant does not argue the
claims separately. We agree with the Examiner that the teachings of Bub
combined with Peacock render claim 1 obvious.
“[T]he patentability of apparatus . . . claims depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (citation
omitted). The structure required by Appellant’s claim 1 is a stiffener that
has “multiple rods or strips” that are “connected to two or more partial
rings” where the “partial rings have an opening” sized to permit a flexible
hose to pass between the rings. The rods/strips are oriented in a direction
that would be parallel to a flexible hose placed within the partial rings, and
the partial rings would be oriented perpendicular to the axes of the flexible
hose. In addition, the stiffener is “made of materials compatible with
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chlorinated water, iodized water, and salt water.” Appellant’s Specification
discloses that ABS is such a compatible material. (Spec. 5.)
The preamble of Appellant’s claim 1 recites that the stiffener is “for
use with a flexible hose which is part of a swimming pool cleaner.” We find
that the phrase “for use with a flexible hose” is limiting only to the extent
that the partial rings of the stiffener structure must be sized such that a
flexible hose can pass between them. We find that the recitation “which is
part of a swimming pool cleaner” does not limit the structural features noted
above. That is because the claim body is structurally complete without
reference to the context in which the flexible hose is used. “Where . . . a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997). In light of this claim construction, we do not find persuasive
Appellant’s arguments that Bub “does not disclose a stiffener to be used
with a swimming pool cleaner hose in a swimming pool” (Appeal Br. 6).
With the foregoing in mind, we agree with the Examiner that Bub
teaches in Figure 6 a stiffener as substantially claimed except for the
material being compatible with chlorinated water and salt water. In
particular, Bub states that the “invention relates to stiffeners for flexible
hoses.” (Bub 1:15–16.) Bub goes on to state that “[i]n accordance with this
invention, two or more trough-shaped splints are disposed end to end for
receiving and confining a length of hose.” (Id. at 1:33–35.) Bub further
states that the flexible hose that the stiffener is to receive and confine is “of
substantially the same diameter as the inside of the stiffener.” (Id. at 2:69–
70.)
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Below is Figure 6 from Bub depicting one embodiment of the
stiffener.

The description of the stiffener depicted in Figure 6, shown above,
explains that stiffener “splint 16 is formed from two or three parallel rods 17
that are connected together at longitudinally spaced intervals by arcuate
rods 18.” (Id. at 2:52–56.) Bub indicates that the splint is formed of sheet
metal. (Id. at 2:53–54.)
Peacock discloses a “sleeve [that] may be used to surround a pipe or a
cable etc[.] to provide environmental protection.” (Peacock 13:38–39.)
Figure 3a of Peacock, reproduced below, shows an embodiment of the
sleeve.

Figure 3a above depicts an arcuate splint with an opening above into which a
conduit may be placed. As depicted, the sleeve includes a cylindrical form
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at the top of both sides of the arcuate shaped sleeve. Peacock explains that
“nylon rods” can be fitted therein. (Id. at 14: 45–47, 57–60.) Peacock
discloses that the sleeve can be made of polymeric material including acrylic
polymers and polyamides (id. at 5:6–7, 18–30) and laminated with a
polymeric material (id. at 14:7–9). The polymeric material can be an
elastomer such as ABS block copolymer. (Id. at 9:18–43.)
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art to substitute a material such as ABS for use in
making the splint of Bub. “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). “Express suggestion to substitute one equivalent for another need
not be present to render such substitution obvious.” In re Fout, 675 F.2d
297, 301 (CCPA 1982) (citation omitted). The substitution of
manufacturing material to make an arcuate splint with partial rings and
parallel rods connected to the rings from the metal to ABS would have been
well within the skill of the art as demonstrated by Peacock. Moreover,
Peacock indicates that such material can be used to surround a conduit,
which a flexible hose is, and thus has a known equivalent function to the
metal splint of Bub.
Appellant argues that Bub “teaches away from the claimed
invention’s compatibility with chlorinated water” because in Bub the splint
is made of metal, used with ships, and it is “at least a few feet long.”
(Appeal Br. 6.) This argument is unpersuasive for the reasons explained by
the Examiner in the Answer. (Ans. 9–10.) “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
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would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
“[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art .
. . must be considered.’” Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750,
(CCPA 1976).) The fact that Bub indicates that “large flexible hoses” are
used on ships (Bub Abstract) does not teach away from use of the splint
described with smaller hoses. Indeed, Bub does not limit the size of flexible
hose that the disclosed splint can be used with, stating simply that “[i]t is
among the objects of this invention to provide a stiffener for a flexible
hose.” (Bub 1:28–29.) Nor does Bub require the stiffener to be a particular
length by disclosing one embodiment in which the splints are a few feet
long. Nothing in Bub teaches away from using smaller lengths of splint to
prevent kinks or collapsing.
Moreover, that Bub teaches the splint to be made of metal is not
dispositive of error. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Examiner relied on Peacock for the obviousness of making a conduit splint
out of ABS.
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Appellant’s argument that the purpose of Bub’s stiffener is different
from the purpose of the claimed invention is unavailing. “[A]pparatus
claims cover what a device is, not what a device does.” Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). As the
Examiner explained in the Answer: “Here, regardless of the purpose of
Bub’s stiffener, it still teaches the same structure as set forth by the claim.”
(Ans. 10.) And, in any event, we also agree with the Examiner that
“knotting, tangling of the hose are also similar to the kinking . . . since all of
these events do indeed cut off the flow of the hose and thus Bub’s intended
use is also similar to the use of appellant’s invention.” (Id.)
Finally, Appellant’s argument that Bub in combination with Peacock
“does not disclose an easy insertion of the hose into the stiffener or easy
removal of the hose from the stiffener” is similarly unpersuasive of error.
That is because the combination of references suggests all the structural
requirements of claim 1. Moreover, claim 1 does not even require the
functionality of easy insertion or easy removal. Although this is a functional
recitation in claim 14, we note that functional language does not confer
patentability if the prior art structure has the capability of functioning in the
same manner. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997).
We agree with the Examiner that the recited functionality is dependent on
the outer diameter of the hose. (Ans. 11–12.) As the Examiner states:
“Provided that the outer diameter of the hose is smaller or close to the inner
diameter of the stiffener, Bub’s invention is fully capable of carrying out the
conditional function as recited in the claim [14].” (Id. at 12.)
For all of the foregoing reasons, therefore, we affirm the Examiner’s
rejection of claim 1 as being obvious from Bub and Peacock.
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Claims 2, 3, 5, 6, and 11–25 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22, 23 112 Written
Description
22, 23
1–3, 5, 6,
11–25
103 Bub, Peacock 1–3, 5, 6,
11–25

Overall
Outcome
1–3, 5, 6,
11–25

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED