Petition for Writ of Certiorari — Lackey v. Patent & Trademark Office

Supreme Court, U.S.

PILED

[ : () 10-50 JUN 30 2010

No OFFICE OF THE CLERK

IN ‘THE

SUPREME COURT OF THE UNITED

STATES

DEREK J. LACKEY,

Petitioner,

v.

DAVID J. KAPPOS, UNDER SECRETARY OF

COMMERCE FOR INTELLECTUAL PROPERTY

AND DIRECTOR OF THE UNITED STATES

PATENT AND TRADEMARK OFFICE,

feespondent.

ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

GREGORY T. ZALECKI

Counsel of Record

Law Offices of Gregory ‘I’. Zalecki

12900 HALL RD., SUITE 400

Sterling Heights, MI 48313

GTZalecki@sbcglobal. net

(586) 254-6113

Attorney for Petitioner

QUESTIONS PRESENTED FOR REVIEW

Whether substituting one fabrication material

(metal) for another (plastic) to produce a

previously unknown significant advance in tne

state of the art of air admittance valves Is per se

obvious under 35 USC 103(a), thereby

foreclosing further consideration of

patentability.

PARTIES TO THE PROCEEDINGS

Petitioner

Derek J. Lackey

Respondent

David J. Kappos, under Secretary of Commerce tor

Intellectual Property and Director of the United States

Patent and Trademark Office

Other Parties

None

CORPORATE DISCLOSURE STATEMENT

There is no parent corporation or any publicly

held company that owns 10% or more of the stock of

Derek J. Lackey

TABLE OF CONTENTS

QUESTIONS PRESENTED FOR REVIEW 1”

PARTIES TO THE PROCEEDINGS . ath

CORPORATE DISCLOSURE STATEMENT

TABLE OF CONTENTS auth

TABLE OF AUTHORITIES | | a

STATEMENT OF OPINIONS AND ORDERS BELOW

STATEMENT OF JURISDICTIONAL BASIS ...-1

CONSTITUTIONAL PROVISIONS, TREATIES,

STATUTES, ORDINANCES, AND

REGULATIONS we wee: &

STATEMENT OF THE CASE 2B

THE PROBLEM AND THE CLAIMED

INVENTION WHICH SOLVES THE

PU ae cock Woes ons “2°

PROCEEDINGS IN THE UNITED STATES

PATENT AND 'TRADEMARK OFFICE

“at uk Ga tet Oa ae ee fee Via ts Per ne ee ee eT cee Wie’ es aoe et er et i)

THE FEDERAL CIRCUIT'S DECISION | .-7-

ARGUMENT .. | , Se Cr

SUBSTETUTING ONI FABRICATION

MATERIAL FOR ANOTHER TO

PRODUCE A PREVIOUSLY UNKNOWN

SIGNIFICANT ADVANCE IN THE

STATE OF THE ART OF AIR

ADMITTANCE VALVES IS NOT PER

SE OBVIOUS UNDER 35 U.S.C. §&

103(a), THEREBY FORECLOSING

FURTHER CONSIDERATION OF

PATENTABILITY ......... . 8:

40 (1966) PATENTABILITY WAS

BASED UPON THE SUBSTITUTION

OF ONE MATERIAL FOR ANOTHER

Be RE 68s Ske se ee ee we

PETITIONER IS LIKELY TO PREVAIL ON

THE ISSUES LEFT UNDECIDED BY

THE FEDERAL CIRCUIT BECAUSE

NEITHER THE BETHUNE PATENT

NOR THE BURKE PATENT DISCLOSE

A METALLIC AIR ADMITTANCE

TS eR Te Oe <i

CONCLUSION aie ee eae Pri ieeens nt be

APPENDIA

APPENDIX A

April 9, 2010 Opinion of the

United States Court of

Appeals for the Federal

Rate RSI Nhe er eee la

APPENDIX B

May 28, 2009 Decision of

the Board of Patent Appeals

and Interferences of the

United States Court Patent

and Trademark Office ....... Ta

APPENDIX C

April 9, 2010 Judgment of the

United States Court of Appeals for

the Federal Circuit ........ 24a

TABLE OF AUTHORITIES

CASES

Graham vy. John Deere,

383 U.S. 1, 17°18 (1966) ........... 10-, -14

ln re Kotzab,

217 F.3d 1365. 1369 (Fed. Cir. 2000) -Y-

In re Aumar,

418 F.3d 1361, 1365 (Fed. Cir. 2005) ...... “9:

KSR Int'l Co. v. Teleflex, Inc..

550 U.S. 398, 405 (2007) ....... -9-11-, -14-

United States v. Adams, Inc..

383 U.S. 89 (1966) . ie *f)- -I]-

STATUTES and COURT RULES

PRUG.C. § UOB41) ow. ck ccc cee 1-

OR U.S. & SBGARGMA) 2.5 cc cee veces 7

ee eT vik sc doee ewes .. °6:, °7

TE rt re cae oa, G-, -7:

ET Cee gt ee a Ge ag G

Vi

$5 U.S.C. § 6(b)

35 USC § 102(b) . eee | te ee | n

35 USC § 103{a)................. “1°, “6. "9. -10-

-Vil-

STATEMENT OF OPINIONS AND ORDERS BELOW

The April 9, 2010 opinion of the U.S. Court of

Appeals for the Federal Circuit (App., infra, la-23a) is

unreported.

The May 28, 2009 opinion of the Board of Patent

Appeals and Interferences of the United States Patent

and Trademark Office (App., infra, 7a-23a) is

unreported

STATEMENT OF JURISDICTIONAL BASIS

The judgment of the U.S. Court of Appeals for

the Federal Circuit was entered on April 9, 2010. The

jurisdiction of this Court is invoked under 28 U.S.C. §

1254(1).

CONSTITUTIONAL PROVISIONS, TREATIES,

STATUTES, ORDINANCES, AND REGULATIONS

35 USC § 103(a) provides:

(a) A patent may not be obtained

though the invention is not identically

disclosed or described as set forth in

section 102 of this title, if the differences

between the subject matter sought to be

patented and the prior art are such that

the subject. matter as a whole would have

been obvious at the time the invention

was made to a person having ordinary

skill in the art to which said subject

matter pertains. Patentability shall not

be negatived by the manner in which the

invention was made.

STATEMENT OF THE CASE

THE PROBLEM AND THE CLAIMED INVEN'TION

WHICH SOLVES THE PROBLEM

Appellant's patent application claims are

directed to metallic air admittance valves.

Traditional commercial and __ residential

plumbing systems contain elaborate vent piping

connected to each fixture. The vent piping adds a

significant cost to new construction. It often makes

retrofitting new fixtures into an existing structure

expensive and difficult because of the need to route

new vent pipes through existing walls and an existing

roof. The use of air admittance valves partially solves

this problem. An air admittance valve is essentially an

air check valve. It is usually attached near the trap of

a fixture. It is a small device which is easy to install.

It permits air to flow into a drain waste vent system,

thereby preventing the siphoning of a trap, but does

not permit sewer gas to escape. Thus, an air

admittance valve has the potential to significantly

reduce construction and remodeling costs because it

does away with the need for much vent piping.

Air admittance valves are not universally

accepted as a replacement for vent piping terminating

outside of a building. The housing of currently

available air admittance valves is plastic. The use of

plastic air admittance valves in buildings can create

safety problems when they ure subjected to a fire. The

valves are often needed to be installed in air plenum

areas of buildings. An air plenum area of a building

feeds the ventilating system of the building. When

plastic 1s subjected to fire, noxious and toxic fumes

result. Further, if an air admittance valve fails due to

fire, sewer gases will enter the plenum, As a result of

these potential problems, the use of plastic air

udmittance valves in the plenum areas of buildings is

often legally prohibited or undesirable. The market

needs an air admittance valve which will not produce

toxic fumes when subjected to fire and that 1s less

likely to fail when subjected to fire.

One attempt to solve this problem appears

within U.S. patent number 6,799,600 (O'Neal). There,

a metal housing was provided which surrounds an

installed plastic air admittance valve. A simpler and

less costly approach to solving the problem is desirable.

Appellant's invention provides this simpler and

less costly approach to solving the problem. Although

his solution is not complicated, he is the first to offer it.

His solution allows air admittance valves to be

economically installed in areas previously thought to

not be available for air admittance valve use because

ot safety laws,

Air admittance valves are commonly available.

The typical current air admittance valve has a tubular

body with a valve chamber integral to one end of the

tubular body. The valve chamber contains a valve.

The valve chamber has an air inlet. The valve permits

the flow of air when air pressure outside of the valve is

higher than air pressure within and on the other side

ofthe valve. When the pressure differential is reversed

air flow is prevented. Thus, when the air admittance

valve is attached to a vent pipe of a plumbing system

it will prevent high-pressure sewer gases from escaping

into the atmosphere and wil! allow atmospheric

pressure air to flow into the valve and prevent

siphoning from trap water when the trap pressure i:

lowered by the flow of water. ‘The tubular body and th

valve chamber are typically one integral plastic part

Secause the body and chamber of current au

admittance valves are plastic, the air admittance valv:

is subject to fire hazard risks

This invention uses a tubular body and integral!

valve chamber which 1s fabricated from metal. Metal

will not burn in a building fire. Metal does not give off

noxious or toxic fumes when subjected to fir

Therefore, an air admittance valve having a metallix

tubular body and integral valve chamber cun be used

in the plenum area of a building without a risk of tox1

fumes being distributed through the building whenever

the valve is subjected to fire. Further, the metallr

tubular body and valve chamber provide much bette

protection from fire to the valve within the valv

chamber. This lowers the risk of sewer gases escaping

into a building during a fire. The preferred metals for

the construction of the tubular body = and valve

chamber are copper, brass, black steel and cast iron

Many plumbing devices and pipes are constructed from

copper, brass, black steel and cast iron. Therefore, the

consistency of material will be maintained. Copper

brass, black steel and cust tron ure resistive to

corrosion. Copper, brass, black steel and cast iron are

not expensive materials

The claimed metallic air admittance valve 1s

intended for use with any plumbing system having one

Or more Was

te water discharge device Such dischary

devices include sinks, bastns, tubs iter closets and

irinals. ‘The waste water discharge device is vented

with a metalhe air admittance valve

The pertinent independent = claim and

cli poe ndent claims involved in the sap poe al to the United

States Court of Appeals for the Federal Circuit were a

follows

| \n cor admittance valve having a tubular bod:

with a valve chamber integral to one end of the

tubular body, said valve chamber havinya valve

and an alr inlet, wherein the tubular body and

the valve chamber ure fabricated from metal

y he air admittance valve of claim 1

furthe)

COTYDPOP ESTEVE ch anne Crabby vent pipe coupler retry hye a

to

the other end of the tubular body

1] \ yotem having

wastewater discharge device

rpdmittance valve

alve chambe)

tubular hody

plumbing

Ore Ol} mor

vented withan

p tubular body

integral to

aid valve

‘ill

haviny with a

one end of thi

chamber having a valve

mdan am iunlet. wherein the tubular body and

the \ alve ( hamber ire ] ibru ated from met |

|‘? The

plumbing SYSLEeM)

claim 1. further

omprising ametallic vent pipe coupler attached

toy thy

soother indol Chics Carbocatear hodsy

PROCKEDINGS IN THE UNITED STATE!

PATENT AND ‘TRADEMARK OFFICE

Appellant, Derek J. Lackey

application

with the United Stats

Trademark Office ("PTO") on April

a

filed patent

Patent and

» ZOOS. Alter

}

recelving an initial rejection of all claims followed by a

final rejection of all claims, appellant filed a notice of

appeal with the Board of Patent Appeals and

Interferences of the United States Patent and

Trademark Office. This appeal was pursuant to 35

U.S.C. § 184. On May 28, 2009 the Board of Patent

Appeals and Interferences rendered a decision adverse

tothe appellant, wherein the examiner's rejection of all

claims was affirmed. On July 23, 2009 appellant filed

a Notice of Appeal to the Court of Appeals for the

Federal Circuit with the United States Patent and

Trademark Office. This appeal was authorized by 35

U.S.C. § 141. It was timely pursuant to 35 U.S.C. §

142. This appeal is from a final order that. disposes all

of Appellant's claims.

Claims 1-3, 5-7, 9, 10, 18, 15-17, 19 and 20 were

rejected by the examiner and by the PTO's Board of

Patent Appeals and Interferences ("Board") under 35

USC 103(a) as being unpatentable over Ericson in view

of Kohn (US patent number 6,845,527). The examiner

concluded "it would have been obvious to one of

ordinary skill in the art at the time the invention was

made to make the valve of Ericson with cither copper,

black steel or cast-iron as, for example, taught by Kohn

in order to provide specific metals and materials that

are suitable for manufacturing the components of a

plumbing system valve."

Claims 1, 2, 11 and 12 were rejected by the

examiner and by the Board under 35 USC § 102(b) as

being anticipated by Ericson (US patent number

4,535,807). This issue was conceded by the USPTO in

the United States Court Of Appeals for the Federal

Circuit. Footnote 3 (page 3) of appellee's brief in the

Ee

Court of Appeals states that "The director agrees with

Lackey that Ericson does not disclose the specific

material from which his air admittance valve should be

made."

Ciaims 1-3, 7, 11-13 and 17 were rejected by the

examiner and by the Board under 35 USC § 102(b) as

being anticipated by Bethune (US patent number

4,811,753).

Claims 1, 2, 4, 8, 11, 12, 14 and 18 were rejected

by the examiner and by the Board under 35 USC §&

102(b) as being anticipated by Burke (US patent

number 2,347,988). App., infra, 9a.

THE FEDERAL CIRCUIT'S DECISION

Lackey appealed the USPTO examiner's

rejection to the PTO Board of Patent Appeals and

Interferences under 35 U.S.C. § 134(a). The PTO Board

had jurisdiction pursuant to 35 U.S.C. § 6(b). The PTO

Board affirmed the examiner on May 28, 2009.

Lackey appealed the PTO Board's decision to the

Court of Appeals for the Federal Circuit under 35

U.S.C. § 141. The Federal Circuit had jurisdiction over

the appeal pursuant to 28 U.S.C. § 1295(a)(4)(A). The

Federal Circuit affirmed the Board's decision on April

9, 2010. App., infra, la-Ga.

The Federal Circuit affirmed the obviousness

ruling of the Board without reaching the Board's other

grounds. The Federal Circuit concluded (at App., infra,

Ga) as follows:

Finally, we conclude that it would have

been obvious to a person having ordinary

skill in the art to combine the teachings

of Ericson and Kohn to make Appellant's

claimed invention. A simple substitution

of one known element for another known

element in the field to obtain predictable

results is obvious. See KSR, 550 U.S. at

416. In this case, the claimed invention

may be obtained merely by making

Ericson's valve out of either copper, black

steel or cast iron as taught by Kohn. This

is simply the substitution of one known

material for a generic metal to obtain

predictable results. Furthermore,

Appellant introduced no_ evidence

showing unexpected results or secondary

indicia of nonobviousness. ‘lherefore, we

conclude that the Board did not err in

rejecting the claims for obviousness over

Kricson in view of Kohn and we affirm

the Board's decision.

ARGUMENT

SUBSTITUTING ONE FABRICATION MATERIAL

FOR ANOTHER TO PRODUCE A PREVIOUSLY

UNKNOWN SIGNIFICANT ADVANCE IN THE

STATE OF THE ART OF AIR ADMITTANCE

VALVES IS NOT PER SE OBVIOUS UNDER 35

U.S.C. § 103(a), THEREBY FORECLOSING

FURTHER CONSIDERATION OF

PATENTABILITY

The Federal Circuit has decided an important

federal question relating to the standards used to

b

-8-

decide whether an invention is ohvious. The decision

of the Federal Circuit conflicts with U/nited States v.

Adams, 383 U.S. 39, 40 (1966) and ASR Int’ Co. v.

Teleflex, Inc., 550 U.S. 898, 416 (2007).

Section 103(a) of title 35 of the U.S. Code

"forbids issuance of a patent when ‘the differences

between the subject matter sought to be patented and

the prior art are such that the subject matter as a

whole would have been obvious at the time the

invention was made to a person having ordinary skill

in the art. to which said subject matter pertains." ASR

int Co. v. Teleflex, Inc., 550 U.S. 398, 405 (2007)

(quoting 35 U.S.C. § 108(a)). "Determination of

obviousness under 35 U.S.C. § 103 is a legal conclusion

based on underlying facts." Jn re Kumar, 418 F.3d

1361, 1365 (Fed. Cir. 2005). The Federal Circuit court

reviews "the Board's ultimate determination = of

obviousness de novo," while the Board's underlying

findings of fact are reviewed under a substantial

evidence standard. Jn re Aotzab, 217 F.3d 1365, 1369

(Fed. Cir. 2000).

Claims 1-3, 5-7, 9, 10, 18, 15-17, 19 and 20 were

rejected under 35 USC 103(a) as being unpatentable

over Ericson in view of Kohn (US patent) number

6,845,527). The examiner concluded "it would have

been obvious to one of ordinary skill in the art at the

time the invention was made to make the valve of

Ericson with either copper, black steel or cast-iron as,

for example, taught by Kohn in order to provide

specific metals and materials that are suitable for

manufacturing the components of a plumbing system

valve." The Federal Circuit held (at App., /nfra, Ga)

that "A simple substitution of one known element for

another known element in the field to obtain

predictable results 1s obvious."

35 USC 103(a) provides:

(a) A patent may not be obtained though

the invention is not identically disclosed

or described as set forth in section 102 of

this title, if the differences between the

subject matter sought to be patented and

the prior art are such that the subject

matter as a whole would have been

obvious at the time the invention was

made to a person having ordinary skill in

the art to which said subject matter

pertains.

An invention Is not patentable if "the differences

between the subject matter sought to be patented and

the prior art are such that the subject matter as a

whole would have been obvious at the time the

invention was made to a person having ordinary skill

in the art to which said subject matter pertains." ASR

Int Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)

(citing 35 U.S.C. § 103(a)). The question of obviousness

is resolved on the basis of underlying factual

determinations, including (1) the scope and content of

the prior art, (2) the differences between the claimed

subject matter and the prior art, (3) the level of

ordinary skill in the art, and (4) any secondary indicia

of nonobviousness. Grahamv. John Deere, 383 U.S. 1,

17-18 (1966).

‘The Federal Circuit failed to consider prior art

which teaches away from the claimed invention. The

need for a metallic air admittance valve 1s

demonstrated by the 2004 patent issued to O'Neal

-10-

(A108 of Federal Circuit joint appendix, 6,799,600). In

that patent a plastic air admittance valve is protected

from fire by a protective metal housing. Applicant's

device presents a much simpler solution for the

protection of an air admittance valve from fire.

Nothing within Kohn provides a teaching, suggestion

or motivation to fabricate an air admittance valve with

a metallic tubular body and a metallic valve chamber.

IN UNITED STATES V. ADAMS, 383 U.S. 39, 40

(1966) PATENTABILITY WAS BASED UPON THE

SUBSTITUTION OF ONE MATERIAL FOR

ANOTHER MATERIAL

In KSR [nt Co. v. Teleflex, Ine., 550 U.S. 398,

416 (2007) the court quoted from United States v.

Adams, Inc., 383 U.S. 39 (1966) with approval as

follows:

In United States v. Adams, 383 U.S. 39,

40 (1966), a companion case to Graham,

the Court considered the obviousness of a

“wet. battery” that varied from pnior

designs 1n two ways: It contained water,

rather than the acids conventionally

employed in storage batteries; and its

electrodes were magnesium and cuprous

chloride, rather than zinc and silver

chloride. The Court recognized that when

a patent claims a _ structure already

known in the prior art that is altered by

the mere substitution of one element for

another known in the _ field, the

combination must do more than yield a

1 1-

predictable result. 383 U.S., at 50-51. It

nevertheless rejected the Government’s

claim that Adams’s battery was obvious.

The Court relied upon the corollary

principle that when the prior art teaches

away from combining certain known

elements, discovery of a successful means

of combining them is more likely to be

nonobvious. Id., at 51-52. When Adams

designed his battery, the prior art warned

that risks were involved in using the

types of electrodes he employed. The fact

that the elements worked together in an

unexpected and_=fruit-ful manner

supported the conclusion that Adams’s

design was not obvious to those skilled in

the art.

lat p. 418] a patent composed of several

clements 1s not proved obvious merely by

demonstrating that each of its elements

was, independently, known in the prior

art, Although common sense directs one

to look with care at a patent application

that claims as innovation the

combination of two known devices

according to their established functions,

it can be important to identify a reason

that would have prompted a person of

ordinary skill in the relevant field to

combine the elements in the way the

claimed new invention does. ‘This is so

because inventions in most, if not all,

By he»

~

instances rely upon building blocks long

since uncovered, and claimed discoveries

almost of necessity will be combinations

of what, in some sense, 1s already known.

The USPTO and the Federal Circuit position is

that the prior art discloses air admittance valves and

the prior art discloses plumbing parts fabricated from

metal and that because these elements were

independently known in the prior art applicant's

claimed invention is automatically obvious. One

should look at the purpose for fabricating a plumbing

part from metal. [or most plumbing parts the purpose

1s simply to provide a rigid durable structure. On the

other hand, the purpose of fabricating from metal with

respect to applicant 's claimed invention is to prevent

sewer gas from escaping into a building when that

plumbing part is subjected to fire. This different

purpose for the use of fabricating from metal pushes in

the direction of nonobviousness. The fact that the prior

art teaches away from metallic air admittance valves

also pushes in the direction of nonobviousness.

Here, the prior art teaches away from metallic

air admittance valves. As previously indicated in the

specification of the patent application many

governmental entities prohibit the use of plastic air

admittance valves because such valves may admit

noxious fumes from burning plastic and, more

importantly, can allow the escape of sewer gas into a

building if the valve were to be subjected to fire.

The need for a metallic air admittance valve is

demonstrated by the 2004 patent issued to O'Neal

(U.S. patent no. 6,799,600). This argument wus

ignored by the Board and by the Federal Circuit. In

itt

that patent a plastic air admittance valve is protected

from fire by a protective metal housing. Applicant 's

device presents a much simpler solution for the

protection of an air admittance valve from fire.

Nothing within Kohn provides a teaching, suggestion

or motivation to fabricate an air admittance valve with

a metallic tubular body anda metallic valve chamber.

Here, the USPTO and the Federal Circuit rely

upon hindsight reasoning. They are looking at

applicant's invention and distilling it into a valve

which admits air and fabrication from metal. After

this distillation they concluded the combination to be

obvicus. This is hindsight. reasoning. Hindsight

reasoning is cautioned against by the Supreme Court.

At page 421 of ASA the Court stated:

A factfinder should be aware, ofcourse, of

the distortion caused by hindsight bias

and must be cautious of arguments

reliant upon ex post reasoning. See

Graham, 383 U. S., at 36 (warning

against a “temptation to read into the

prior art the teachings of the invention in

issue” and instructing courts to “guard

against slipping into the use _ of

hindsight” ... Rigid preventative rules

that deny fact finders recourse to common

sense, however, are neither necessary

under our case law nor consistent with it.

Lackey has invented a superior air admittance

valve. It successfully addresses the concerns of

plumbing code drafters worried about the emission of

noxlous fumes into buildings. It is superior to O'Neal's

device because it is much simpler and does not have a

itd.

plastic valve body, as O'Neal does. Lackey should not.

be denied a patent because of the simplicity of his

invention.

PETITIONER IS LIKELY TO PREVAIL ON THE

ISSUES LEFT UNDECIDED BY THE FEDERAL

CIRCUIT BECAUSE NEITHER THE BETHUNE

PATENT NOR THE BURKE PATENT DISCLOSE A

METALLIC AIR ADMITTANCE VALVE

The Federal Circuit did not reach two of the

grounds for the Board's affirmance. ‘The petitioner is

likely to prevail on these grounds. The grounds involve

the conclusion of the Board that petitioner's claims are

anticipated by the Bethune patent (US patent no.

4,811,753) and the Burke patent (US patent no.

2,347,988). Acursory review of the patents relicd upon

by the Board shows that they are inappropriate for an

anticipation rejection under 35 USC 102(b).

The USPTO erroneously assumes that Bethune

and Burke disclose air check valves and, further, that

those check valves are air admittance valves. The

Bethune device does not function as an air check valve.

As stated in the abstract, the Bethune device blocks

the reverse flow of a liquid (water), not air. Figure 3

and [igure 6 of the Bethune patent show floating check

balls (reference numbers 33 and 84). Those balls block

an opening above them when they rise. The balls are

caused to rise by a liquid, not air. See column 3, line

47 through column 4, line 7. Additionally, see column

1, lines 51-59. There it is stated that "obnoxious gases

may pass upward to the drain system and be expelled

by the vent." Also see column 2, lines 40°46 wherein it

1S

is stated that "the check vaive is located in the outer

housing passageway to allow the passage of air in one

direction while blocking the passage of water in the

opposite direction so that the outside vent air may pass

into the drain vent to vent the drain line" and claim 1

(line 30) wherein the check valve is described as

allowing "the passage of air in one direction while

blocking the passage of water in the opposite

direction." The Bethune device allows sewer gas to

vent. Thus, it is crystal clear that the Bethune device

will not function as an air check valve. ‘Theretore, a

metallic air admittance valve is not anticipated by

Bethune, even using the expanded definition of an air

admittance valve urged by the USPTO.

Similarly, the Burke device, which was patented

some 30 to 40 years before the invention of air

admittance valves, will not function as an air check

valve. In other words, if it's bottom end is attached to

a pipe containing pressurized sewer gas some of that

sewer gas will be expelled through the top end of the

Burke device. The Burke device is also intended for

use within hydraulic or liquid systems. Liquid enters

the top end and exits the buttom end. See, for example,

the first paragraph of the Burke patent. In the second

column of page 3 beginning at line 44 Burke states "In

normal or at rest position, as above noted, there is a

small annular space between the lower portion 40b of

the valve element and the convex shoulder or seat

10b..." This means that the pressurized sewer gas will

be allowed to escape from the valve, rather than being

checked. This can he seen in Figure 1 and Figure 2 of

Burke. Sewer gas in the vicinity of reference number

13 will pass through this described annular space and

-16-

reach an air hole (reference number 28) and thereby he

vented to the atmosphere. Thus, the Burke hydraulic

valve does not function as an air check valve and,

therefore, does not disclose un air admittance valve

even under the disputed definition of an air admittance

valve employed by the USPTO.

CONCLUSION

Kor these reasons, the petition for a writ of

certiorari should be granted

Respectfully submitted

/s3/

GREGORY 'T. ZALECKI

Counsel of Record

Attorney for Petitioner

12900 HALL RD., SUITE 400

STERLING HEIGHTS, MI 48313

GTZalecki@sbcglobal.net

(586) 254-6113

APPENDIX A

NO'TE: This disposition is nonprecedential

United States Court of Appeals tor the Federal Circuit

ZOOS: 1532

(Serial No. 10/008.004)

IN RE DEREK J. LACKEY

Gregory |’. Zalecki, Law Offices of Gregory ‘J

Zalecki, of Sterling Heights, Michigan, for appellant

Raymond T. Chen, Solicitor, Office of the

Solicitor, United States Vatent and ‘Trademark Office,

of Arlington, Virginia, for the Director of the United

States Patent and Trademark Office. With him on the

brief were Benjamin D.M. Wood and Thomas L. Stoll,

Associate Solicitors

Appealed from: United States Patent and Trademark

Office

Bourd of Patent Appeals and Interferences

NOTTS This dy po mon} nonpreced neal

United States Court of Appeals for the Federal]

Corcult

2009-15382

(Serial No. 10/008.004)

IN RE DEREK J. LACKEY

Appeal from the United States Patent and Trademar}

Office, Board of Patent Appeals and Interferenc

DECIDED: April 9, 2010

Before LOURII., GAJARSA,. and MOORE. Circuit

dude

GAJARSA, Circuit Judge

Appellant Derek J. Lackey C \ppellant )fileda

patent application with the United States Patent and

Trademark Office (I’TO”) relating to metallic an

udimittunce valves for use in plumbing systems. The

PTO’s Board of Patent Appeals and Interference

(“Board”) held the patent claims invalid on multiplh

grounds, including that they would have been obviou

at the time the invention was made. For the reasons

stated below, we affirm the obviousness ruling and

therefore sustain the Board’s decision without reaching

the Soard's other grounds

Appellant’s patent application is directed to

metallic air admittance valves. An air admittance

valve is a check valve that provides ventilation to

plumbing system drain lines while preventing noxious

gases from escaping the drain lines. The Appellant's

specification discloses that an air admittance valve is

essentially an air check valve that is usually attached

near the trap of a fixture. The air admittance valve

permits air flow into a drain waste vent system,

thereby preventing the siphoning of a trap and sewer

gases from escaping.

Claim 1, reproduced below, 1s representative of

the claims on appeal:

:. An air admittance valve having a tubular body

with a valve chamber integral to one end of the

tubular body, said valve chamber having a valve

and an air inlet, wherein the tubular body and

the valve chamber are fabricated from metal.

During prosecution, the examiner rejected the

claims for obviousness based on the teachings of two

prior art patents related to plumbing systems. The first

patent, United States Patent No. 4,535,807 (“Ericson”),

ts entitled “Air Valve Device for Ducts.” Ericson

discloses an air valve having a valve body connected to

an air duct, a valve chamber, an air inlet, and a

membrane or annular flap (or valve). Ericson teaches

that the air valve is used in combination with a

sanitary appliance, wherein the air valve eliminates a

partial vacuum that can lead to contaminated water

from the sanitary appliance being sucked therein. The

second patent, United States Patent No. 6,845,527

(“Kohn”), is entitled “Valve Construction.” Kohn

teaches plumbing fixtures that produce a reliable

3a

drainage system for a building. Kohn teaches that

these fixtures may be fabricated in a multitude of

materials, including copper, black steel and cast iron.

The Board affirmed the examiner’s obviousness

rejections of Appellant's claims covering metallic air

admittance valves. In particular, the Board found that

Ericson’s disclosure of air admittance valves for

plumbing systems in light of Kohn’s teachings that

plumbing fixtures may be constructed out of a variety

of metals rendered Appellant’s invention obvious to a

person of ordinary skill in the art at the time the

invention was made.

On appeal, Appellant challenges the Board’s

ruling on the obviousness rejections of claims 1, 2, 11

and 12 hased on Ericson in view of Kohn. We have

jurisdiction to review the Board's ruling under 28

U.S.C. § 1295(a)(4)(A). We review the Board’s ultimate

determination of obviousness de novo and _ its

underlying findings of fact for substantial evidence. In

re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).

An invention is not patentable if “the differences

between the subject matter sought to be patented and

the prior art are such that the subject matter as a

whole would have been obvious at the time the

invention was made to a person having ordinary skill

in the art to which said subject matter pertains.” KSR

Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)

(citing 35 U.S.C. § 103(a)). The question of obviousness

is resolved on the basis of underlying factual

determinations, including (1) the scope and content of

the prior art, (2) the differences between the claimed

subject matter and the prior art, (3) the level of

ordinary skill in the art, and (4) any secondary indicia

i)

of nonobviousness. Graham v. John Deere, 383 U.S. 1,

17-18 (1966).

The Supreme Court recently clarified the law

relating toobviousness of an invention, explaining that

where “a patent claims a structure already known in

the prior art that is altered by the mere substitution of

one element for another known in the field, the

combination must do more than yield a predictable

result.” KSR, 550 U.S. at 416 (citing United States v.

Adams, 383 U.S. 39, 40 (1966)). “Often, it will be

necessary for a court to look to interrelated teachings

of multiple patents... and the background knowledge

possessed by a person having ordinary skill in the art

_.. to determine 2009-1533

whether there was an apparent reason to combine the

known elements in the fashion claimed by the patent

at issue.” KSR, 550 U.S. at 418.

On appeal, Appellant contends that Ericson does

not disclose an air admittance valve as required by

claims 1 and 11. Appellant’s argument is not

persuasive. The Board found that Ericson discloses an

air valve having a valve body connected to an air duct,

a velve chamber, an air inlet, and a membrane or

annular flap (or valve). These elements are plainly

disclosed in the written description of the Ericson

patent. Ericson also teaches that the air valve is used

in combination with a plumbing system, or “sanitary

apphance.” The Board concluded that the ordinary

meaning of the word “sanitary” includes “of, or relating

to, or used in the disposal of sewage.” Bd. Op. at 14

(citing Merriam-Webster’s Collegiate Dictionary (10th

ed. 1996)), Accordingly, the Board’s finding that

Ericson discloses an air admittance valve for use in

plumbing systems is supported by substantial

evidence.

Appellant also argues that Kohn is

non-analogous art. We disagree. The analogous art test

requires that the Board show that a reference is either

in the field of the applicant’s endeavor or is reasonably

pertinent to the problem with which the inventor was

concerned to rely on the reference as a basis for

rejection. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir.

2006). In this case, Ericson and Kohn are from the

same field ofendeavor: both patents disclose that their

inventions are used with plumbing fixtures.

Accordingly, the Board’s finding that Ericson and Kohn

are analogous art is supported by substantial evidence.

See id.

Finally, we conclude that 1t would have been

obvious to a person having ordinary skill in the art to

combine the teachings of Ericson and Kohn to make

Appellant’sclaimed invention. A simple substitution of

one known element for another known element in the

field to obtain predictable results is obvious. See KSR,

850 US. at 416. In this case, the claimed invention

may be obtained merely by making Ericson’s valve out

of either copper, black steel or cast iron as taught by

Kkohn. This is simply the substitution of one known

material for a generic metal to obtain predictable

results. Furthermore, Appellant introduced no

evidence showing unexpected results or secondary

indicia of nonobviousness. 'l‘herefore, we conclude that

the Board did not err in rejecting the claims for

obviousness over Ericson in view of Kohn and we

affirm the Board’s decision.

No costs.

APPENDIX B

UNITED STATES PATENT AND TRADEMARK

OFFICE

BEFORE THE BOARD OF PATENT APPEALS

AND INTERFERENCES

ix parte DEREK J. LACKEY

Appeal 2009-1060

Apphication 10/908,004

Technology Center 3700

Decided:’ May 28, 2009

Before WILVIAM F. PATE, ITT, JENNIFER D. BATIR,

and FRED A. SILVERBERG, Administrative Patent

Judges.

SILVERBERG, Administrative Patent Judge.

'! The two-month time period for filing an appeal or

commencing a civil action, as recited in 37 C.F.R. § 1.304,

begins to run from the decided date shown on this page of the

decision. The time period does not run from the Mail Date

(paper delivery) or Notification Date (electronic delivery).

ia

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 (2002)

from a rejection of claims 1-20, which are all of the

pending claims. We have jurisdiction under

35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION

We AFFIRM.

THE INVENTION

The Appellant’s claimed invention is directed to

a metallic air admittance valve usable with any

plumbing system having one or more waste water

discharge devices (Spec.‘{[Para 7]). Claim 1, reproduced

below, is representative of the subject matter on

appeal.

1. An air admittance valve having a

tubular body with a valve chamber

integral to one end of the tubular hody,

said valve chamber having a valve and an

air inlet, wherein the tubular body and

the valve chamber are fabricated from

metal.

THE REJECTIONS

The Examiner relies upon the following as evidence of

unpatentability:

Burke US 2,347,988 May 2, 1944

Ericson US 4,535,807 Aug. 20, 1985

Bethune US 4,811,753 Mar. 14, 1989

Kohn US 6,845,527 B1 Jan. 25, 2005

The following rejections by the Examiner are

before us for review:

1. Claims 1, 2, 11 and 12 are rejected under 35 U.S.C.

§ 102(b) as being anticipated by Ericson.

2. Claims 1-3, 7, 11-13 and 17 are rejected under 35

U.S.C. § 102(b) as being anticipated by Bethune.

3. Claims 1, 2, 4, 8, 11, 12, 14 and 18 are rejected

under 35 U.S.C. § 102(b) as being anticipated by

Burke.

4. Claims 1-3, 5-7, 9-13, 15-17, 19 and 20 are rejected

under 35 U.S.C. § 103(a) as being unpatentable over

Ericson in view of Kohn.

ISSUES

The issues before us are whether the Appellant

has shown that the Examiner erred 1n rejecting claims

1, 2, 11 and 12 over Ericson; claims 1-3, 7, 11-13 and

17 over Bethune; claims 1, 2, 4, 8, 11, 12, 14 and 18

over Burke; and claims 1-3, 5-7, 9-13, 15-17, 19 and 20

over Ericson in view of Kohn. These issues turn on

whether: (1) The Appellant’s claim construction of the

term air admittance valve as called for in claims 1-20

is reasonable; (2) Ericson’s vaive is made out of metal;

(3) Kohn is non-analogous art; and (4) it would have

been obvious to combine the teachings of Ericson and

Kohn to make Ericson’s valve out of copper, black steel

and cast iron.

FINDINGS OF FACT

We find that the following enumerated findings

are supported by at least a preponderance of the

evidence. Hthicon, Inc. v. Quigg, 849 F.2d 1422, 1427

(Fed. Cir. 1988) (explaining the general evidentiary

stundard for proceedings before the Office).

1. The Appellant's Specification discloses that

an air admittance valve is essentially an air

check valve that is usually attached near the

trap of a fixture. The air admittance valve

permits air flow into a drain waste vent system,

thereby preventing the siphoning of a trap, but

does not permit sewer gases to escape

(Spec.:[Para 2]).

2. Ericson discloses an air valve having a valve

body 1 connected to an air duct (col. 1, 1. 42), a

valve chamber 14, an air inlet 5, and a

membrane or annular flap (valve) 6 (fig. 1).

3. Ericson further discloses that the air valve is

used in combination with a sanitary appliance,

wherein the air valve eliminates a partial

vacuum that can lead to contaminated water

from the sanitary appliance being sucked

therein (col. 2, ll. 26-34).

4. Bethune discloses a recreational vehicle drain

vent including a sink drain pipe 11; a tubular

housing 22 formed of copper (col. 3, 1. 34)3 a

check valve 31 including a ball 33, a cage 34 and

a valve seat 35; and an annular passageway 40.

5. Burke discloses a valve 10, a threaded

coupling 15 (p. 2, col. i, ll. 22-23), a passage

(valve chamber) 16, a multiple valve element 40

(p. 2, col. 2, Il. 45-49), air apertures 28 (p. 2, col.

1, ll. 65-71), wherein the valve 10 is made of

brass (p. 1, col. 2, 1. 46) and allows flow in one

direction (p. 4, col. 2, ll. 7-20).

G. Burke further discloses that an object of the

invention is to extend the valve’s use to

household water supply systems, wherein the

risks of contaminating the water supply by the

back-flow of water, sewage or contaminated

water upon the failure of the pressure head in

the supply side of the system are present (p. 1,

col. 1, ll. 18-29).

7. Burke still further discloses that another

object of the invention is to provide a valve of

the just mentioned character that will be

adapted also for industrial uses, such as tanks

or the like, wherein the hydraulic system has

inherently the risk of back flow upon loss or

failure of head or pressure upon one side of the

system (p. 1, col. 1, ll. 29-37).

8. Burke still further discloses that still another

object of the invention is to provide a valve that

will provide multiple safeguards against or

controls of flow of liquid or of air from the

atmosphere or both, to prevent back flow or

syphonic action (p. 1, col. 1, ll. 38-43).

Y. Kohn discloses that it is a principal object

that his invention be used with all plumbing

fixtures to produce a reliable drainage system

for a building and can be fabricated in a

multitude of materials typical of plumbing

fixture fabrication: copper, black steel and cast

iron (col. 2, ll. 17-22).

10, The ordinary meaning of the word “check

valve” includes “a valve that permits flow in one

direction.” Merriam-Webster’s Collegiate

Dictionary (10th ed. 1996).

11. The ordinary meaning of the word “sanitary”

includes “of, or relating to, or used in the

disposal of sewage.” Merriam-Webster'’s

Collegiate Dictionary (10th ed. 1996).

PRINCIPLES OF LAW

Appellant has the burden on appeal to the Board

to demonstrate error inthe Examiner’s position. See /n

re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On

appeal to the Board, an applicant can overcome a

rejection [under § 103] by showing insufficient evidence

of prima facie obviousness or by rebutting the prima

facie case with evidence of secondary indicia of

nonobviousness.”) (quoting In re Rouffet, 149 F.3d

1350, 1355 (red. Cir. 1998)).

“Anticipation is established only when a single

prior art reference discloses, expressly or under the

principles of inherency, each and every element of a

claimed invention.” #CA Corp. v. Applied Digital Data

Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In

other words, “[t]here must be no difference between the

claimed invention and the reference disclosure, as

viewed by a person of ordinary skill in the field of the

invention.” Scripps Clinic & Research Found. v.

Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir, 1991).

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, 772 (Fed. Cir. 1983).

“Section 103 forbids issuance of a patent when

‘the differences between the subject matter sought to

be patented and the prior art are such that the subject

matter as a whole would have been obvious at the time

the invention wus made blo a person having ordinary

skill in the art to which said subject matter pertains.”

KSR [Int'l] Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The question of obviousness is resolved on the basis of

underlying factual determinations including (1) the

scope and content of the prior art, (2) any differences

between the claimed subject matter and the prior art,

(3) the level of skill in the art, and (4) where in

evidence, so-called secondary considerations. Graham

v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also

KSR, 1275S. Ct. at 1734 (“While the sequence of these

questions might be reordered in any particular case,

the [Graham] factors continue to define the inquiry

that controls.”).

In ASH, the Supreme Court stated that “when a

patent claims a structure already known in the prior

art that is altered by the mere substitution of one

element for another known in the field, the

combination must do more than yield a predictable

result (citing United States v. Adams, 383 U.S. 39 S.

Ct. 708 (1966)). Id at 416.

In ASR, the Supreme Court stated that “lo]ften,

it will be necessary for a court to look to interrelated

teachings of multiple patents; the effects of demands

known to the design community or present in the

marketplace; and the background knowledge possessed

by a person having ordinary skill in the art, all in order

to determine whether there was an apparent reason to

combine the known elements in the fashion claimed by

the patent at issue.” /d at 418. ‘lhe Court noted that

“[tlo facilitate review, this analysis should be made

explicit.” /d. (citing Jn re Kahn, 441 F.3d 977, 988 (Fed,

Cir. 2006) (“[Rlejections on obviousness grounds cannot

be sustained by mere conclusory statements; instead,

there must be some articulated reasoning with some

rational underpinning to support the legal conclusion

ofobviousness’ )). Llowever, “the analysis need not seck

out precise teachings directed to the specific subject

matter of the challenged claim, for a court can take

account of the inferences und creative steps that a

person of ordinary skill in the art would employ.” /d.

When construing claim terminology in the

United States Patent and ‘Trademark Office, claims are

to be given their broadest reasonable interpretation

consistent with the specification, reading claim

language in light of the specification as it would be

interpreted by one of ordinary skill in the art. In re

Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed

Cir. 2004)

The analogous-art test requires that the Board

show that a reference is either in the field of the

applicant's endeavor or is reasonably pertinent

to the problem with which the inventor was

concerned in order to rely on that reference as a

hasis for rejection. References are selected as

being reasonably pertinent to the problem based

on the judgment of a person having ordinary

skill in the art.

In re Kahn, 441 ¥°.8d 977, 986-87 (fed. Cir. 2006)

(citation omitted). “A reference is reasonably pertinent

if, even though it may be in a different field from that

of the inventor’s endeavor, it 1s one which, because of

the matter with which it deals, logically would have

commended itself to an inventor’s attention in

considering his problem.” /n re [CON Health &

Fitness, Inc... 496 F.8d 1374, 1379-1380 (Ped. Ci

2007) (citution omitted). “[Flamiliar items muy have

obvious uses beyond their primary purposes.... AS/

Int’) Co. v. Teleflex, Tne.. 550 U.S. 898, 420 (2007)

ANALYSIS

Rejection of claims J, 2, 11 and 12 under 35 U.S.C.

102(b) as being as being anticipated by Iricson

Appellant contends that Ericson doe: not

disclose a valve body and a housing fabricated from

metal (Br. 9). Appellant further contends that the 45

degree crosshatchings in Ericson are general purpose

crosshatchings that indicate the surface has been cut

und not that the clement has been fabricated from

metal (Br. 9). Appellant cites to several pages of a book

on cngincering drawing and design submitted along

with a Declaration of Gregory T. Zalecki on Decembe1

18, 2006, which references the pages in support of his

contention (Br. 9-10). Ericson discloses an air valve

having a valve body 1 connected to un uir duct (col, |

1. 42), a valve chamber 14, an air inlet 5, and a

membrane or annular flap (valve) 6 (fig. 1) (fact 2)

bmitted to the USPTO in

Patent drawings are su

accordance with 35 U.S.C. § 113, 37 C.F.R. § 1.84 and

the Manual of Patent Examining Procedure (MPEP)

section 608.02. MPIEP section 608.02 sets forth a

drawing standard wherein 45 degree crosshatchings

are used in the drawings to indicate that an clement is

made of metal. The MPEP contained the 45 degree

crosshatchings drawing standard prior to the filing of

the Ericson’s invention Further, there is” a

presumption that all patent drawings filed in the

USPTO have followed MPEP section 608.02. Nothing

been found in kIricson to indicate that the 45

e crosshatchings drawing standard was. not

followed. [tis our finding that Ericson’s clements that

include 45 degree crosshatchings are metal to a

preponderance of the evidence, Therefore, we agrees

with the IXxamuiner’s finding (Ans. 49) that the valve

body and housimyv shown in iricson’s drawings as

including 45 devree crosshatchings indicate that the

valve body and housing were fabreated from metal

Regarding claims 2 and 12: Appellant further contend:

that Iuericson does not disclose a vent propre couples

Kricson discloses in column 1], lines 41°43 that t

valve body 1s connected to an ar duct Cnot shown)

Both an air duct and uw vent pipe contain air flowing

therethrough. We find that an air duet is” the

equivalent of a vent pipe. Therefore, we agree with the

Kxaminer’s finding (Ans. 5°G) that since” [Hricson

discloses in column 1, lines 41°43 that the valve body

is connected to an air duct (not shown), that [ricson

discloses some mechanism to couple the valve body to

the air duct (vent pipe), wherein that mechanism is a

vent pipe couple r Therefore, we conclude that the

Kxaminer did not errin rejecting claims 1, 2, ll and 12

over Ericson. We affirm ths reqecbion ofeclamms I, 2, 1)

and 12 under 35 U.S.C. § 102

Rejection of clarms 1°33, 7 I1138 and 17 under 35

U.S.C. 102(b/) as being as being anticipated by Bethune

Appellant contends that Bethune docs not

disclose an air admittance valve (br. 12). Appellant

cites to a 2003 Michigan Plumbing Code section 2002

submitted along with a Declaration of Grevory 1T

Zalecki on December 18, 2006, which notes that the

2003 Michigan Plumbing Code provides a specific

definition of an air admittance valve. We find nothing

on the record that proves that the 2003 Michigan

Plumbing Code section 2002 definition for an air

admittance valve is the generally accepted definition in

the field or that the definition is the appropriate

definition for an air admittance valve in these specific

claims on appeal. We note that there is no expert

testimony to assure us that the definition 1s applicable

in the instant application. In fact, we find that

Appellant’s Specification provides another, differing

definition of an air admittance valve, that. is,

Appellant’s Specification defines an air admittance

valve as essentially an air check valve that is usually

attached near the trap of a fixture, wherein the air

admittance valve permits air flow into a drain waste

vent system, thereby preventing the siphoning of a

trap, but docs not permit sewer gascs to escape

(Spec.:[Para 2]) (Fact 1). Therefore, we will rely on the

definition of an air admittance valve provided by the

Appellant’s Specification at Para 1 (Fact 1)

Bethune discloses a recreational vehicle drain

vent including a sink drain pipe 11; a tubular housing

22 formed of copper (col. 3, 1. 34); a check valve 31

including a ball 33, a cage 34 and valve seat 35; and an

annular passageway 40 (I*act 4), Therefore, since an

air admittance valve is essentially an air check valve

(Fact 1), we find that Bethune’s recreational vehicle

drain vent, which includes check valve 31 (Fact 4),

discloses an air admittance valve as called for in claims

land 11.

Regarding claims 2 and 12: Appellant further

contends that Bethune does not disclose a vent. pipe

coupler. Bethune discloses a housing 22 having an

externally threaded coupling 23. We agree with the

Examiner's analysis (Ans. 9) that Bethune’s threaded

coupling 23 is capable of attaching to a vent pipe and.

Therefore, Bethune’s threaded coupling 23 = is

considered to be a vent pipe coupler as called for in

claims 2 and 12. Regarding claims 3, 7, 13 and 17: We

find that Appellant has not contested the Examiner's

finding (Ans. 3) that Bethune discloses the tubular

body and the valve chamber being made of copper

(Fact 4). Therefore, we conclude that the Examiner did

not err in rejecting claims 1-3, 7, 11-13 and 17 over

Bethune. We affirm the rejection of claims 1-3, 7, 11-13

and 17 under 35 U.S.C. § 102.

Rejection of claims 1, 2, 4, 8, 11, 12, 14 and 18 under

385 U.S.C. 102(b) as being as being anticipated by

Burke

Appellant contends that Burke does not. disclose

an air admittance valve for the same reasons as set

forth above regarding Bethune (Br. 12). For our

reasons previously sect forth regarding the rejection

based upon Bethune, we will rely on the definition of

an air admittance valve provided by the Appellant’s

Specification at Para 1 (Fact 1). Burke discloses a valve

10, a threaded coupling 15 (p. 2, col. 1, ll. 22-23), a

passage (valve chamber) 16, a multiple valve element

40 (p. 2, col. 2, ll. 45-49), air apertures 28 (p. 2, col. 1,

ll. 65-71), wherein the valve 10 is made of brass (p. 1,

col. 2, 1. 46) and allows flow in one direction (p. 4, col.

2, ll. 7-20 (Fact 5). Burke further discloses that an

18a

object of the invention is to extend the valve’s use to

household water supply systems, wherein the risks of

contaminating the water supply by the back-flow of

water, sewage or contaminated water upon the failure

of the pressure head in the supply side of the system

are present (p. 1, col. 1, ll. 18-29) (Fact 6). Burke still

further discloses that another object of the invention is

to provide a valve of the just mentioned character that

will be adapted also for industrial uses, such as tanks

or the lke, wherein the hydraulic system has

inherently the risk of back flow upon loss or failure of

head or pressure upon one side of the system (p. 1, col.

1, ll. 29- 37 (Fact 7). Burke still further discloses that

still another object of the invention is to provide a

valve that will provide multiple safeguards against or

controls of flow of liquid or of air from the atmosphere

or both, to prevent back flow or syphonic action (p. 1,

col. 1, I. 38-43) (Fact 8). The ordinary meaning of the

word “check valve” includes “a valve that permits flow

in one direction.” Merriam-Webster’s Collegiate

Dictionary (10th ed. 1996) (Fact 10). Therefore, in

order for a valve to be a check valve it must permit

flow in only one direction. We find that since Burke's

valve 40 permits flow in only one direction (Fact 5), it

is a check valve. ‘Therefore, since an air admittance

valve is essentially an air check valve (Fact 1), we find

that Burke’s valve 10 is an air admittance valve as

called for in claims 1 and 11.

Regarding claims 2 and 12: Appellant further

contends that Burke does not disclose a vent pipe

coupler. Burke discloses an extension 11 having

external threads 12 for coupling to a pipe line (p. 1, col.

2, 1. 48-p. 2, col. 1, 1. 7). We agree with the Examiner's

analysis (Ans. 9) that Burke's threaded extension 11 is

capable of attaching to a vent pipe and, therefore,

Burke’s threaded extension 11 is considered to be a

vent pipe coupler as called for in claims 2 and 12.

Regarding claims 4, 8, 14 and 18: We find that

Appellant has not contested the Examiner’s analysis

(Ans. 3) that Burke discloses the tubular body and the

valve chamber being made of brass (Fact 5). Therefore,

we conclude that the Examiner did not err in rejecting

claims 1, 2, 4, 8, 11, 12, 14 and 18 over Burke. We

affirm the rejection of claims 1, 2, 4,8, 11, 12, 14 and

18 under 35 U.S.C. § 102.

Rejection of claims 1-3, 5-7, 9-13, 15-17, 19 and 20

under 35 U.S.C. § 103(a) as being unpatentable over

Ericson in view of Kohn

Appellant contends that Ericson does not

disclose an air admittance valve as called for in claims

l and 11 (Br. 17). Appellant further contends that

neither Ericson nor Kohn discloses a metallic vent pipe

coupler attached to a tubular body as called for in

claims 2 and 12 (Br. 17). Appellant still further

contends that Kohn is non-analogous art (Br. 17). For

the reasons set forth above in our discussion of the

rejection of claims 1, 2, 11 and 12 as being anticipated

by Ericson, Appellant's contention regarding Ericson

not disclosing an air admittance valve and _ not

disclosing a metallic vent pipe coupler attached to a

tubular body as called for in claims 2 and 12 1s not

persuasive. Ericson discloses an air valve having a

valve body 1 connected to an air duct (col. 1, 1. 42), a

valve chamber 14, an air inlet 5, and a membrane or

annular flap (valve) 6 (fig. 1) (Fact 2). Ericson does not

disclose that the body and the chamber are fabricated

from copper, black steel and cast iron as called for in

claims 3, 5-7, 9, 13, 15°17, 19, and 20, respectively.

Ericson further discloses that the air valve is used in

combination with a sanitary appliance (col. 2, 11. 26-34)

(Fact 3). Kohn discloses that it is a principal object that

his invention be used with all plumbing fixtures to

produce a reliable drainage system for a building and

can be fabricated in a multitude of materials typical of

plumbing fixture fabrication: copper, black steel and

cast iron (col. 2, Il 17-22) (Fact. 9). The ordinary

meaning of the word “sanitary” includes “of, or relating

to, or used in the disposal of sewage.”

Merriam‘Webster’s Collegiate Dictionary (10th = ed.

1996) (Fact 11). Therefore, we find that a sanitary

appliance is a plumbing fixture. Since both Ericson and

Kohn disclose that their inventions are used with

plumbing fixtures, we find that both Ericson and Kohn

are from the same field of endeavor. Therefore, we find

that Ericson and Kohn are analogous art. See Jn re

Kahn at. 986-978. We conclude that it would have been

obvious at the time the invention was made to a person

having ordinary skill in the art to combine the

teachings of Ericson and Kohn us set forth by the

[Examiner (Ans. 4) by making Ericson’s metallic valve

out of either copper, black steel or cast iron as taught

by Kohn. In ASA#the Supreme Court held that a simple

substitution of one known element for another known

in the field to obtain predictable results is obvious. See

KSR, 550 1).S. at. 416. The substitution proposed by the

Examiner is simply the substitution of one known

particular metal for a generic metal to obtain

zla

predictable results. Therefore, we conclude that the

Examiner did not err in rejecting claims 1-3, 5-7, 9°13,

15-17, 19 and 20 over Ericson in view of Kohn. We

affirm the rejection of claims 1°3, 5-7, 9-13, 15°17, 19

and 20 under 35 U.S.C. § 103.

CONCLUSION

We conclude that the Appellant hus not shown

that the Examiner erred in rejecting claims 1, 2, 11

and 12 under 35 U.S.C. § 102(b) as being anticipated

by Ericson; claims 1-3, 7, 11-13 and 17 under 35 U.S.C.

§ 102(b) as being anticipated by Bethune: claims 1, 2,

4, 8, 11, 12, 14 and 18 under 35 U.S.C. § 102(b) as

being as anticipated by Burke; and claims 1-3, 5-7,

9-13, 15-17, 19 and 20 under 35 U.S.C. § 103({a) as

being unpatentable over Ericson in view of Kohn.

DECISION

The decision of the Examiner to reject claims 1,

2,11 and 12 over Ericson; claims 1-3, 7, 11-13 and 17

over Bethune; claims 1, 2, 4, 8, 11, 12, 14 and 18 over

Burke; and claims 1-3, 5-7, 9-13, 15-17, 19 and 20 over

Ericson in view of Kohn is affirmed.

No time period for taking any subsequent action

in connection with this appeal may be extended under

37 C.F.R. § 1.136(a)(1) Gv) (2007).

AFFIRMED

LV:

GREGORY T. ZALECKI

12900 HALL ROAD

SUITE 400

STERLING, HEIGHTS MI 48313

APPENDIX C

United States Court of Appeals for the Federal

Circuit

2009-1532

(Serial No. 10/908.004)

IN RE DEREK J. LACKEY

Appeal from the United States Patent and

Trademark Office, Board of Patent Appeals and

Interferences.

Judgment

ON APPEAL from the UNITED STATES PATENT

AND TRADEMARK

OFFICE, BOARD OF

PATENT APPEALS AND

INTERFERENCES

in CASE NO(S).

This CAUSE having been heard and considered, it is

ORDERED and ADJ UDGED:

AFFIRMED

ENTERED BY ORDER OF TILE COURT

DATED APR - 9 2010 Is

Jan Horbaly, Clerk

ISSUED AS A MANDATE: Jun -1 2010