Federal Circuit disposition — 2004-1457

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1457
(Serial No. 09/432,313)
IN RE JOSEPH BATTISTON
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DECIDED: July 15, 2005
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Before MAYER, RADER, and PROST, Circuit Judges.
PROST, Circuit Judge.
Appellant Joseph Battiston (“Battiston”) appeals a decision by the United States
Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences
(“Board”) sustaining the final rejection by the examiner of claims 1-4, 12-14, and 18 of
U.S. Patent Application Serial No. 09/432,313 (“Battiston’s application”) as obvious
under 35 U.S.C. § 103 over the prior art. Ex Parte Battiston, Appeal No. 2004-0331,
Paper No. 38 (B.P.A.I. Mar. 31, 2004). We agree with the Board’s conclusion that the
claims on appeal are obvious in view of the combined teachings of prior art and affirm
the Board’s decision.

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I. BACKGROUND
Battiston’s application, U.S. Patent Application Serial No. 09/432,313, claims a
splash resistant pan for use with a commode to aid elderly or infirmed persons who
cannot use a conventional porcelain toilet. The examiner rejected claims 1-4, 12-14,
and 18 of Battiston’s application as unpatentable for obviousness under 35 U.S.C.
§ 103 on four separate grounds. Battiston appealed the examiner’s rejections to the
Board and the examiner withdrew three of the four rejections as redundant in his
answer. However, the examiner maintained the rejection of claims 1-4, 12-14, and 18
as obvious in view of the collective teachings of U.S. Patent Nos. 2,500,544 (“Haskins”)
and 5,343,573 (“Rose”), and the Admitted Prior Art (“APA”) in the “Background of the
Invention” section of Battiston’s application.
Battiston asserted before the Board that claims 1-4 and 12-14 form a claim group
directed to a “pan” and that claim 18 forms a claim group directed to a “splash guard
pan,” but the Board found that Battiston had not presented separate arguments for each
of the two alleged groupings. Ex Parte Battiston. Instead, the Board determined that
Battiston’s claims on appeal are directed to a pan and seat combination with: (1) the
pan having a generally rectangular opening that is longer than it is wide; (2) the seat
arranged on top of the pan having an elongated opening that corresponds with the
opening in the pan; and (3) the sides of the pan extending downwardly from the rim to
form a bottom portion, which is displaced rearwardly with respect to the midpoint of the
length dimension. The Board concluded that Battiston’s appealed claims would stand or
fall with representative claim 1:
A pan for use with a commode, said pan having an upper generally
rectangular rim having a front and rear and having an opening
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therethrough, said rim having predetermined length and width dimensions,
said length dimension being larger than said width dimension and
extending from said front to said rear, a seat arranged on top of said rim
and having an elongated opening which substantially corresponds to the
opening in said rim, said pan further having sides extending downwardly
from said rim to form a bottom portion, said bottom portion being displaced
rearwardly with respect to the midpoint of said length dimension.
The Board found that the cited art discloses all of the features of representative
claim 1. Specifically, the Board decided that Battiston’s APA discloses that commode
seats were known in the art at the time of the claimed invention to have elongated
openings with a length that is longer than the width. The Board further determined that
the APA discloses that commode seats having elongated openings configured to be
used with pans having elongated openings were also well known in the prior art. It
established that Rose also discloses a commode chair having a seat and a pan,
wherein the pan and seat have corresponding elongated openings. It also found that
Rose’s rim defines an elongated opening, which has a length dimension that is longer
than its width dimension. The Board found that Rose discloses that the pan has a front
surface that extends forward relative to the bottom of the pan, such that the midpoint of
the bottom of the pan is offset rearwardly relative to the midpoint of the length of the pan
opening. It then concluded that all of the features of the claimed pan and seat
combination were disclosed by the APA and Rose except for the generally rectangular
shape of the pan opening. However, it resolved that Haskins’s disclosure of a pan
comprising an upper rim and four planar sides suggests a generally rectangular shape.
The Board thus sustained the final rejection by the examiner on March 31, 2004, and
this appeal ensued.
This court has jurisdiction over this appeal under 28 U.S.C. § 1295(a)(1).
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II. DISCUSSION
A. Standard of Review
This court reviews the Board’s determination of obviousness under 35 U.S.C.
§ 103 de novo. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990). Any factual
determinations underlying a conclusion of obviousness are reviewed deferentially. In re
Dembiczak, 175 F.3d 994, 1000 (Fed. Cir. 1999).
B. Obviousness
Battiston appeals the Board’s decision sustaining the final rejection by the
examiner of claims 1-4, 12-14, and 18 of Battiston’s application as obvious under 35
U.S.C. § 103 over Rose, Haskins, and the APA. Specifically, Battiston argues that
Board applied the incorrect standard of obviousness, misunderstood the structure of the
invention, and ignored the separate patentability of claims 2-4, 12-14, and 18.
First, Battiston argues that the Board applied the incorrect standard for
obviousness. Particularly, he contends that the Board used impermissible hindsight to
combine the cited art and failed to make findings on a motivation to combine the cited
art. The Director of the PTO (“Director”) responds that the Board applied the correct
standard, properly finding that it would be obvious to modify the pan and seat
combination of Rose or the APA to have the rectangular opening exemplified by
Haskins. We find that substantial evidence supports the Board’s finding that a
suggestion to combine the references, resulting in a commode configured with a
rectangular opening, flows from the ordinary knowledge of one skilled in the art. See In
re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (noting that “the suggestion to
combine references may flow from the nature of the problem . . . [or] the teachings of
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the pertinent references or from the ordinary knowledge of those skilled in the art that
certain references are of special importance in a particular field” (citations omitted)).
Battiston further argues that the Board misapprehended the claimed invention
and incorrectly found that the bottom of Rose’s pan displaced rearwardly, and that
Haskins discloses a square pan opening, not a generally rectangular pan opening.
Battiston additionally argues that Rose teaches away from the claimed invention
because Rose’s pan, although structurally similar to the claimed pan and seat
combination, performs a different function. Battiston submits that the angled front wall
and rearward displacement of Rose’s pan represents a spout that would induce
splashing, whereas the claimed pan and seat combination prevents unwanted
splashing. The Director responds that these matters are purely factual and that the
Board correctly found that the bottom of Rose’s pan is rearwardly displaced with respect
to the midpoint of the length dimension of Rose’s pan opening, and that Haskins’s pan
opening is generally rectangular. The Director further responds that Rose does not
teach away from the claimed invention because Rose expressly discloses that its
angled pan wall design, which results in a rearwardly displaced pan bottom, ensures
that splashing is “minimized.” The Director argues that Rose thus expressly discloses
using the same structure to perform the same function, splash prevention, as the
claimed pan and seat combination. Upon inspection of the drawings in Rose, we find
that substantial evidence supports the Board’s findings and that Rose does not teach
away from the claimed invention.
Finally, Battiston argues that the Board improperly grouped claim 18 with claims
1-4 and 12-14. He argues that the Board incorrectly found that Battiston had not
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separately argued the claims with respect to the rejection maintained by the examiner.
The Director responds that the Board correctly selected claim 1 as representative
because Battiston did not provide a statement explaining why the claims are separately
patentable as to the single rejection. The Director argues that Battiston instead argued
each of the original four rejections, not the claims, separately. We conclude that
substantial evidence supports the Board’s finding that Battiston had not presented
separate arguments for each of the two alleged groupings based on the examiner’s
rejection over the combined disclosures of the APA, Rose and Haskins, and therefore
that the Board properly concluded that all claims would stand or fall with representative
claim 1. See 37 C.F.R § 1.192(c)(7); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir.
2002) (finding that in the absence of a clear statement asserting separate patentability
of the claims, “the Board is free to select a single claim from each group of claims
subject to a common ground of rejection as representative of all claims in that group
and to decide the appeal of that rejection based solely on the selected representative
claim”).
CONCLUSION
We hold that substantial evidence supports the Board’s finding that the claimed
pan and seat combination is unpatentable under 35 U.S.C. § 103 over the combined
teachings of the APA, and the Rose and Haskins disclosures, and therefore affirm the
Board’s decision.
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