Thomas Spankowski et al.

Patent Trials and Appeals Board

Apr 2, 2020

14205191 - (D) (P.T.A.B. Apr. 2, 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.
14/205,191 03/11/2014 Thomas Spankowski 046150-2167 2560
12572 7590 04/02/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
ROS, NICHOLAS A
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS SPANKOWSKI, MICHAEL BATES, ROB DAVIS,
CARL BARLETT, JOHN ZUTZ, and THOMAS C. JORSCH
____________

Appeal 2018-008312
Application 14/205,191
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

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 Kohler Co.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1, 9, and 16 are independent claims. Claim 1 is illustrative.
1. A wall-hung toilet mountable to a fixture wall,
comprising:
a bowl;
a water inlet chamber configured to receive a supply of
water;
a rim channel provided above the bowl and fluidly
connected to the water inlet chamber to receive the supply of
water;
a shroud comprising:
a top wall having an opening;
a rear wall having a mounting hole that is
configured to connect the toilet to the fixture wall via a
fastener;
an outer side wall extending downwardly from the
top wall to define a first portion of a bottom edge of the shroud
and surrounding at least a portion the bowl; and
an inner side wall coupled to the outer side and
rear walls, wherein the inner side wall is recessed inwardly
from the outer side wall, defines at least a portion of a rearward
edge of the shroud and a second portion of the bottom edge, and
includes an opening;
wherein the outer and inner side walls define a
pocket; and
a passage located within the shroud that extends between
the opening in the top wall, the opening in the inner side wall,
and the mounting hole in the rear wall.
Appeal Br. 25 (Claims App.).

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REJECTIONS
Claims 1–82 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lamarque (EP 2325402 A2, published May 25, 2011), Mondragon
(WO 2011/141604 A1, published Nov. 17, 2011), Kayahara (US 6,292,956
B1, issued Sept. 25, 2001), and Kosugi (US 2003/0115664 A1, published
June 26, 2003).
Claims 9–12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lamarque, Mondragon, and Kayahara.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lamarque, Mondragon, Kayahara,3 and Fryzer (US 2007/0033723 A1,
published Feb. 15, 2007).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lamarque, Mondragon, Kayahara, Fryzer, and Hubatka (US 6,367,095 B2,
issued Apr. 9, 2002).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lamarque, Mondragon, Kayahara,4 and Hubatka.
Claims 16–18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lamarque, Mondragon, and Kayahara.

2 In the Final Action, the rejection heading lists claims 1 and 5–8 only. Final
Act. 4. However, in the Examiner’s Answer, the rejection heading is revised
to also list claims 2–4. Ans. 2.
3 We note that Kayahara is not applied in the rejection of claim 13 or the
rejection of claim 14, although claims 13 and 14 depend from claim 12.
Final Act. 8–10. We treat the rejections of claims 13 and 14 as being based
also on Kayahara.
4 Kayahara is not mentioned in the rejections of claim 15, which depends
from claim 9. Final Act. 10–11. We treat this rejection as being based also
on Kayahara.
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Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lamarque, Mondragon, Kayahara, and Kosugi.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lamarque, Mondragon, Kayahara, Kosugi, and Hubatka.

ANALYSIS
Claims 1–8 over Lamarque, Mondragon, Kayahara, and Kosugi
For claim 1, the Examiner finds that Lamarque discloses a shroud 1
comprising a top wall, a rear wall, an outer side wall extending downwardly
from the top wall, and an opening in the outer side wall with a cover (side
door) for providing access to the opening, where the cover can be hinged or
removable. Final Act. 4 (citing Lamarque, Figs. 6–8). The Examiner
concedes that Lamarque discloses openings in the side wall, not an opening
in the top wall for running electrical and water supply lines, and does not
disclose an inner side wall recessed inwardly from the outer side wall, as
claimed. Final Act. 5.
The Examiner relies on Kayahara as teaching a toilet bowl 1 having
an opening (cut portion 9) in a sidewall (skirt portion 7), and a recessed
inner wall with a fastening structure (on face 9c) providing an attachment
surface for a removable covering (lid portion 40) of the opening. Final Act.
5 (citing Kayahara, Fig. 21). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to form an interior wall
around the opening in Lamarque, as taught by Kayahara, “to provide a
surface for the covering to fasten to and form a more secure connection
when closed.” Id.
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Appellant contends, inter alia, that if Lamarque were modified in
view of Kayahara to include the “fastening structure 9c” as the recessed
inner wall, the recessed inner wall of the modified toilet would not “define[]
at least a portion of a rearward edge of the shroud and a second portion of
the bottom edge,” as claimed, as Figure 21 of Kayahara shows that the
fastening structure 9c does not include these features. Appeal Br. 9.
Appellant asserts that the structure 9C in cut portion 9 of Kayahara, which
the Examiner relies on as the “recessed inner wall,” “neither defines any
portion of the rearward edge of the shroud of Kayahara nor defines any
portion of the bottom edge of the shroud.” Reply Br. 7.
The Examiner responds, “the claim language does not place any
limitations or requirements on how the as to what [sic] ‘portion’ of these
edges the recessed wall must provide,” and “the edges of the opening
disclosed by Lamarque provide ‘at least a portion’ of the interior of the
rearward and bottom edges of the shroud.” Ans. 16. In reply, Appellant
points out that the Examiner acknowledges that Lamarque does not disclose
an inwardly recessed inner side wall (Final Act. 5), and thus, does not
disclose an inwardly recessed inner side wall that “defines at least a portion
of a rearward edge of the shroud and a second portion of the bottom edge,”
as claimed. Reply Br. 6.
Appellant’s contention is persuasive. The Examiner acknowledges
that Lamarque does not disclose both an outer side wall and an inner side
wall recessed inwardly from the outer side wall, but discloses only a single
wall. Final Act. 5. The Examiner does not adequately explain, and it is not
apparent to us, how any “edges of the opening” shown in Figure 8 of
Lamarque might provide ‘at least a portion’ of the interior of the rearward
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and bottom edges of the shroud,” as required by claim 1. Ans. 16 (emphasis
added). Further, even if Lamarque were modified to include Kayahara’s
fastening element 9c as the recessed inner wall, it is not apparent how this
modification would result in the recessed inner wall of the modified toilet
“defin[ing] at least a portion of a rearward edge of the shroud and a second
portion of the bottom edge,” as claimed.
The Examiner relies on Mondragon as teaching a toilet 1 having holes
2 in the top surface for receiving water lines 3, 4 through the rear of the
apparatus. Final Act. 5 (citing Mondragon, Figs. 3, 6). Accordingly, the
Examiner’s reliance on Mondragon does not cure the above-described
deficiency in the rejection.
The Examiner further relies on Kosugi as teaching a rim channel
structure. Final Act. 6. Accordingly, the Examiner’s reliance on Kosugi
also does not cure the deficiency in the rejection.
For the foregoing reasons, we do not sustain the rejection of claim 1,
and claims 2–8 depending therefrom, as unpatentable over Lamarque,
Mondragon, Kayahara, and Kosugi.

Claims 9–12 over Lamarque, Mondragon, and Kayahara
Claim 9 recites, inter alia, “a recessed pocket formed in a side of the
toilet,” and “the recessed pocket provides access to an interior side of the
mounting hole and an interior side of the clearance hole from the side of the
toilet, such that the fastener, the water line, and the electrical cord can be
accessed through the recessed pocket from the side of the toilet.” Appeal Br.
26–27 (Claims App.) (emphasis added).
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The Examiner finds that Lamarque discloses pockets 14, 16 (Fig. 4)
formed on opposite sides of the toilet to provide access to an interior side of
a mounting hole 18. Final Act. 7; Ans. 18 (addressing the claimed “first and
second recessed pocket[s]” by indicating Lamarque’s disclosure of pockets
14, 16 in Figure 4).
The Examiner relies on Kayahara as teaching a toilet bowl 1 having
an opening (cut portion 9) in a sidewall (skirt portion 7), and a recessed
inner wall with a fastening structure (on face 9c) providing an attachment
surface for a removable covering (lid portion 40) of the opening. Final Act.
5 (citing Kayahara, Fig. 21).
Appellant replies that that the Examiner’s response in the Examiner’s
Answer contradicts the Examiner’s reliance on Kawahara “for allegedly
disclosing a recessed inner wall to try to overcome Lamarque’s deficiency of
not showing a recessed pocket, merely an alleged pocket.” Reply Br. 8.
Based on the Examiner’s response, we understand that the rejection
relies on Lamarque as disclosing the claimed “recessed pocket.” Ans. 18.
The “pockets” 14, 16 in Lamarque found by the Examiner are “internal
cavities.” See Lamarque ¶ 10, Fig. 4.5 Even if these internal cavities can be
considered to be “pockets” in Lamarque’s toilet, it is not apparent how these
internal cavities are “formed in a side of the toilet,” as required by claim 9.
In contrast to Lamarque, and consistent with the language of claim 9, we
note that the side pocket 22 shown in Appellant’s Figure 1, for example, is
formed in the side of the toilet 10 at a location between the rear mount
including a mounting hole 20 (see also Fig. 5) and a clearance hole 30. As

5 This citation is to the English-language translation of Lamarque of record
in this appeal.
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such, the claimed recessed pocket is a pocket in the side of the toilet at the
claimed location.
The Examiner does not rely on Mondragon or Kayahara in any
manner that cures this deficiency in the rejection. Final Act. 7–8. As the
Examiner has not established that the applied combination discloses or
suggests all limitations recited in claim 9, we do not sustain the rejection of
claim 9, and claims 10–12 depending therefrom, as unpatentable over
Lamarque, Mondragon, and Kayahara.

Claim 13 over Lamarque, Mondragon, Kayahara, and Fryzer
Claim 14 over Lamarque, Mondragon, Kayahara, Fryzer, and Hubatka
Claim 15 over Lamarque, Mondragon, Kayahara, and Hubatka
The Examiner’s reliance on Fryzer and/or Hubatka does not cure the
deficiency in the rejection of base claim 9 over Lamarque, Mondragon, and
Kayahara. Final Act. 8–11. Accordingly, we do not sustain the rejections of
claims 13–15 for the same reasons as for claim 9.

Claims 16–18 over Lamarque, Mondragon, and Kayahara
For claim 16, the Examiner concedes that Lamarque discloses
openings in the side wall, not an opening in the top wall for running
electrical and water supply lines, and does not disclose an inner side wall
recessed inwardly from the outer side wall, as claimed. Final Act. 12. The
Examiner relies on Mondragon and Kayahara as teaching these missing
limitations, as discussed above for claim 1. Id.
Appellant contends, inter alia, that even if Lamarque were modified
by Kayahara to include the “fastening structure 9c” shown in Figure 21 of
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Kayahara as the recessed inner wall, the recessed inner wall of the modified
toilet would not be “coupled to a rear edge of the shroud and the rear
mounting wall” and “define a first pocket between the rear edge of the
shroud and the rear mounting wall,” as claimed. Appeal Br. 22. Rather,
Figure 21 shows that “the fastening structure 9c is forward of both the rear
edge of the shroud and the rear wall, and the fastening structure 9c is not
coupled to either the rear edge of the shroud or the rear wall.” Id.
Accordingly, Appellant contends, the applied combination does not disclose
or suggest the claimed first side wall (id.) and second side wall (id. at 23).
These contentions are persuasive. Accordingly, we do not sustain the
rejection of claim 16, and claims 17 and 18 depending therefrom, as
unpatentable over Lamarque, Mondragon, and Kayahara.

Claim 19 over Lamarque, Mondragon, Kayahara, and Kosugi
Claim 20 over Lamarque, Mondragon, Kayahara, Kosugi, and Hubatka
The Examiner’s reliance on Kosugi and Hubatka does not cure the
deficiency in the rejection of base claim 16 over Lamarque, Mondragon, and
Kayahara. Final Act. 13–15. Accordingly, we do not sustain the rejections
of claims 19 and 20 for the same reasons as for claim 16.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103(a) Lamarque,
Mondragon,
Kayahara, Kosugi
1–8
9–12 103(a) Lamarque,
Mondragon,
Kayahara
9–12
13 103(a) Lamarque,
Mondragon,
Kayahara, Fryzer
13
14 103(a) Lamarque,
Mondragon,
Kayahara, Fryzer,
Hubatka
14
15 103(a) Lamarque,
Mondragon,
Kayahara, Hubatka
15
16–18 103(a) Lamarque,
Mondragon,
Kayahara
16–18
19 103(a) Lamarque,
Mondragon,
Kayahara, Kosugi
19
20 103(a) Lamarque,
Mondragon,
Kayahara, Kosugi,
Hubatka
20
Overall
Outcome
1–20

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REVERSED