                 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




                           __________________________

                           DECIDED: July 15, 2005
                           __________________________

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.
                                    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).




04-1457                                      3
                                    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




04-1457                                     4
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




04-1457                                      5
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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