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

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2197%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2010
- **Citation:** 562 U.S. 891

## Text

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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2197%3A1. Public record. Not legal advice.