UPONOR INNOVATION AB

Patent Trials and Appeals Board

Sep 2, 2020

2019006542 (P.T.A.B. Sep. 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.
15/447,195 03/02/2017 Paul Bartenstein 4B701-024001 2129
69713 7590 09/02/2020
OCCHIUTI & ROHLICEK LLP
50 Congress Street
Suite 1000
Boston, MA 02109
EXAMINER
MACKAY-SMITH, SETH WENTWORTH
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAUL BARTENSTEIN
__________

Appeal 2019-006542
Application 15/447,195
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Uponor
Innovation Ab. Appeal Brief (“Appeal Br.”) 1, filed Mar. 15, 2019.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a system and a method for
flushing a drinking-water installation that comprises at least one riser or
distribution pipe.” Spec. 1:7–9.2
Claims 1 and 8 are independent. Claim 1 is illustrative of the claimed
subject matter and recites:
1. A system for flushing a drinking-water installation, said
system comprising
at least one riser or distribution pipe,
a plurality of branch pipes connected to the riser or distribution
pipe,
consumer devices and flushing stations connected to the branch
pipes, and
measuring devices, wherein each of the measuring devices is at
least one of integrated into a flushing station and installed in said
drinking water installation independently of said flushing station,
wherein each of said measuring devices measures at least one of
temperature change in the branch pipe and through-flow through
the branch pipe
wherein the system further comprises a control unit that is
connected to the measuring devices by data cables or by radio,
wherein the control unit has an evaluation module for evaluating
data, said data having been transmitted by the measuring devices,
and
wherein the evaluation module is set up to determine, on the basis
of the data, how many flushing stations need to be flushed
simultaneously in order for the riser or distribution pipe to be
flushed.

2 Appellant’s Specification (“Spec.”), filed May 4, 2017.
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REJECTIONS
I. Claims 7 and 16 stand rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
II. Claims 1–7, 13, and 15–17 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
III. Claims 1–9, 12, 13, and 15–17 stand rejected under 35 U.S.C. § 103
as unpatentable over Applicant’s Admitted Prior Art (“AAPA”)3 and Petzolt
(DE 102006017807 A1, published Oct. 18, 2007).4
IV. Claims 10, 11, and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over AAPA, Petzolt, and Taylor (US 9,151,023 B2, issued Oct.
6, 2015).

ANALYSIS
Rejection I – Written Description
The Examiner finds that the Specification fails to disclose the subject
matter of claims 7 and 16. Final Act. 9.
Appellant states that “[u]pon entry of the Rule 41.33 amendment,
claims 7 and 16 will be cancelled, thus rendering the rejection moot.”
Appeal Br. 42; see also id. at 28, 32.
Rule 41.33(b)(1) permits “[a]mendments filed on or after the date of
filing a brief. . . to cancel claims. . .” See 37 C.F.R. § 41.33(b)(1) (emphasis

3 The Examiner cites to “at least page 1, line 15 - page 2, line 12” of the
Specification of the subject application as being indicative of Applicant’s
Admitted Prior Art (“AAPA”). See Final Office Action (“Final Act.”) 11,
dated Oct. 29, 2018.
4 The Examiner provides an English-language, machine-generated
translation of Petzolt’s Description, to which we shall refer to hereinafter.
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added). However, the Claims Appendix to an appeal brief is not an
“amendment.” “Amendments” must be made in accordance with 37 C.F.R.
§ 1.121 entitled “Manner of making amendments in applications.”
Paragraph (c) of § 1.121 sets forth specific requirements for making
amendments to the claims and paragraph (h) requires such amendments to
begin on a separate sheet of paper. This requirement is important “to
facilitate separate indexing and electronic scanning of each section of an
amendment document for placement in an image file wrapper.” MPEP
§ 714(II)(A). Furthermore, 37 C.F.R. § 41.37(c)(2) expressly states, with
emphasis added, “[a] brief shall not include any new or non-admitted
amendment.” Due to Appellant’s failure to comply with the requirements of
37 C.F.R. § 1.121, the amendment Appellant wanted entered pursuant to 37
C.F.R. § 41.33(b)(1) was not entered. As a consequence, the Written
Description rejection remains outstanding.5
As the merits of this rejection are not contested, we summarily affirm
the rejection. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (Affirming
the Board’s affirmance of an uncontested rejection, holding that the
appellant had waived the right to contest the rejection by not presenting

5 In the Response to the Notice of Non-Compliant Appeal Brief filed April
11, 2019, Appellant requests entry of the previously submitted “Rule 41.33
Amendment” and further states that “if the amendment is not entered,
Applicant reserves the option of filing a substitute appeal brief to present
arguments for both the § 112 rejections and the prior art rejections of those
claims.” Appellant cannot reserve the right to make arguments not included
in the brief. See 41.37(c)(1)(iv) (“any arguments or authorities not included
in the appeal brief will be refused consideration by the Board.”).
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arguments on appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”).

Rejection II – Indefiniteness
The Examiner determines that claim 1 is indefinite because claim 1 is
directed to an apparatus but recites a method step, namely, “wherein each of
said measuring devices measures at least one of temperature change in the
branch pipe and through-flow through the branch pipe.” Final Act. 3 (citing
Appeal Br. 45 (Claims App.) (emphasis added), 10 (citing MPEP §
2173.05(p)(II)).
MPEP § 2173.05(p)(II) cites to In re Katz Interactive Call Processing
Patent Litigation.6 Appellant contends that the claim in Katz Interactive
Call Processing Patent Litigation “is different from the appealed claim
because the appealed claim does not involve a step of requiring a user to use
any part of the system being claimed.” Appeal Br. 43. As such, Appellant
contends that the rejection is deficient for this reason. See id. at 42–43.
To the extent Appellant is arguing Katz Interactive Call Processing
Patent Litigation stands for the proposition that an apparatus claim must
explicitly recite a user using a part of the claimed apparatus to render the
claim indefinite, we disagree. The claim language at issue is not a structural
limitation but instead, is a method step that, under the broadest reasonable
interpretation, invokes a user’s action to carry out the recited step. Here, a
seller of a system for flushing a drinking-water installation comprising the

6 In Katz Interactive Call Processing Patent Litig. v. Am. Airlines, Inc., 639
F.3d 1303 (Fed. Cir. 2011).
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components recited in claim 1 would not know if the claim requires actual
measurements of actual temperature changes by each of the measuring
devices before being infringed or alternatively, simply making, using,
selling, or importing a system that has the capacity to make such
measurements. Additionally, Appellant appears to rely on the language “is
set up to” to invoke a functional limitation with respect to the recited
“measuring devices,” yet such language is not recited in the “wherein”
clause that recites the stand-alone term “measures.” See Appeal Br. 42; see
also id. at 45 (Claims App.). As a consequence of this inconsistency, a
skilled artisan would not know if the term “measures” invokes a functional
limitation with respect to the recited “measuring devices.”7
Appellant also argues that the recited “wherein” clause recites a
structural feature of one of the components of the system and thus, is not
indefinite. Appeal Br. 42. To the extent Appellant is arguing all “wherein”
clauses are not indefinite by virtue of reciting a structural feature, Appellant
does not cite authority for this proposition. Id.
For these reasons, we agree with the Examiner that the recitation of
“each of said measuring devices measures at least one of temperature change
in the branch pipe and through-flow through the branch pipe” is a method

7 We note this deficiency could be remedied by changing the recited
“measures” language to “is configured to measure” or “is set up to measure”
much like the language used in other portions of the claim. See e.g., Appeal
Br. 45 (Claims App.) (“wherein the evaluation module is set up to
determine, . . . how many flushing stations need to be flushed
simultaneously” (emphasis added)).

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step thereby rendering the metes and bounds of claim 1 unclear. See Ans.
17; see also Final Act. 3, 10.
Accordingly, we sustain the Examiner’s rejection of claims 1–7, 13,
and 15–17 as indefinite.

Rejection III – Obviousness over AAPA and Petzolt
The Examiner finds that AAPA discloses a system for flushing a
drinking-water installation in which the system comprises at least one riser
or distribution pipe, a plurality of branch pipes, consumer devices, flushing
stations, and measuring devices. Final Act. 11 (citing Spec. 1:25; 2:2). The
Examiner acknowledges that “AAPA does not teach a specific method of
measurement by the measurement devices, controller capability, or explicitly
teach control mode features or connection types.” Id. The Examiner,
however, finds that Petzolt discloses, among other things, “measuring the
temperature change in the branch pipe” and “determin[ing] which flushing
stations to flush.” Id. at 11–12 (citing Petzolt ¶¶ 11, 15). The Examiner
concludes that it would have been obvious to a skilled artisan to modify the
system of AAPA “by insuring that all pipes in the system are purged, or at
least able to be purged, as taught by Petzolt . . . in order to achieve the
expected result of providing clean water for end use.” Id. at 12.
We agree with Appellant that the rejection is deficient, for the
following reasons. Independent claim 1 recites “wherein the evaluation
module is set up to determine, on the basis of the data, how many flushing
stations need to be flushed simultaneously in order for the riser or
distribution pipe to be flushed.” Appeal Br. 45 (Claims App.) (emphasis
added) ; see also id. at 3–4 (Appellant points out that claim 1 “requires
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determination of how many flushing stations to use when flushing a pipe.”).
Independent claim 8 recites similar claim language. See Appeal Br. 47
(Claims App.). Even if crediting the Examiner’s determination that
Appellant has not defined a “flushing station” such that a valve can be
considered a “flushing station” (see Ans. 13) and that Petzolt discloses
flushing some flushing stations in order to flush a riser or distribution pipe
(id.), the Examiner has not sufficiently shown how Petzolt discloses any
module set up to determine how many flushing stations are necessary to
flush in order for a riser or distribution pipe to be flushed as well. As
Appellant explains, at best, the Examiner merely shows that Petzolt
discloses flushing all flushing stations, and as such, there would be no need
for any module to determine the number of flushing stations to use. See
Appeal Br. 4, 6 (“The claim recites determining how many flushing stations
to use based on certain data. If one were to carry out the obvious procedure,
i.e., flush all of them, such a determination would obviously be pointless. . . .
[A]ccording to [Appellant’s] invention, the evaluation module may
recommend that only one or two flushing stations be used even when there
are dozens available.”), 9 (“[T]he [E]xaminer has not shown how [Petzolt]
discloses the possibility of using different numbers of flushing stations to
flush a particular riser or pipe.”).
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–9, 12, 13, and 15–17 as unpatentable over AAPA and Petzolt.

Rejection IV – Obviousness over AAPA, Petzolt, and Taylor
The Examiner’s rejection of claims 10, 11, and 14 as unpatentable
over AAPA, Petzolt, and Taylor is based on the same incorrect findings as
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the combination of AAPA and Petzolt discussed above. See Final Act. 18–
20. The Examiner does not rely on the teachings of Taylor to remedy the
deficiencies of AAPA and Petzolt. Id. Accordingly, for reasons similar to
those discussed above, we do not sustain the Examiner’s rejection of claims
10, 11, and 14 as unpatentable over AAPA, Petzolt, and Taylor.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 16 112(a) Written
Description
7, 16
1–7, 13,
15–17
112(b) Indefiniteness 1–7, 13,
15–17

1–9, 12, 13,
15–17
103 AAPA, Petzolt 1–9, 12, 13,
15–17
10, 11, 14 103 AAPA, Petzolt,
Taylor
10, 11, 14
Overall
Outcome
1–7, 13,
15–17
8–12, 14

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 IN PART