In Re Lackey

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1532
(Serial No. 10/908,004)
IN RE DEREK J. LACKEY
Gregory T. Zalecki, Law Offices of Gregory T. Zalecki, of Sterling Heights,
Michigan, for appellant.
Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent 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
Board of Patent Appeals and Interferences
NOTE: This disposition is nonprecedential.
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.
____________________
DECIDED: April 9, 2010
____________________
Before LOURIE, GAJARSA, and MOORE, Circuit Judges.
GAJARSA, Circuit Judge.
Appellant Derek J. Lackey (“Appellant”) filed a patent application with the United
States Patent and Trademark Office (“PTO”) relating to metallic air admittance valves
for use in plumbing systems. The PTO’s Board of Patent Appeals and Interferences
(“Board”) held the patent claims invalid on multiple grounds, including that they would
have been obvious 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 Board’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, is representative of the claims on appeal:
1. 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”), is 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 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
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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 based 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 of
nonobviousness. Graham v. John Deere, 383 U.S. 1, 17-18 (1966).
The Supreme Court recently clarified the law relating to obviousness 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
2009-1532 3
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 valve 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 appliance.” 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 of endeavor; 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 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
2009-1532 4
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. Therefore, 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.
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