Ex Parte 6223548 et al

Board of Patent Appeals and Interferences

Jul 21, 2010

90006567 (B.P.A.I. Jul. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/006,567 03/20/2003 6223548 016672-00173 4568
54487 7590 07/21/2010
JONES & SMITH, LLP
2777 ALLEN PARKWAY, SUITE 1000
HOUSTON, TX 77019-2141
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/21/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PORT-A-COOL, LLC1
Appellant and Patent Owner
____________________

Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B12
Technology Center 3900
____________________

Before CAROL A. SPIEGEL, JOHN C. KERINS and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING3

1 Port-A-Cool, LLC (hereinafter "Appellant") is the real party in interest; the
original assignee, General Shelters of Texas, S.B., Ltd., having a thirty
percent interest in Port-A-Cool, LLC (App. Br. 1).
2 Issued May 1, 2001 to Calvert (hereinafter "'548 patent").
3 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 “MAIL
DATE” shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-001702
Reexamination Control No. 90/006,567
2
The Appellant filed a Request for Rehearing (hereinafter "Request")
of our Decision on Appeal of October 8, 2009 (hereinafter "original
Decision"), affirming the Examiner's Final Rejection of claims 1, 3, 5-9, 17-
21, 24-27, 29 and 30 of the '548 patent. The Appellant asserts that in the
original Decision, we misapprehended or overlooked three points set forth in
the Request (Request1-3).
We grant the Appellant's Request to the extent that we consider the
arguments set forth infra, but DENY Respondent's request to modify our
original Decision.

ISSUES
The Request raises the following issues:
1. Whether we erred in concluding that integrally forming a base
with a housing is within the skill of one of ordinary skill in the art in view of
the Declaration of Phillip D. Calvert (hereinafter "Declaration").
2. Whether we erred in affirming the rejection of claims 9 and 21
which recite an "evaporative cooler comprising the cooler housing," and
whether the recitation to an evaporative cooler distinguishes these claims
from the prior art.
3. Whether we erred in affirming the rejection of claim 21 which,
by its dependency on claim 17, requires a central collection chamber for
containment of water within the interior of the base.

Appeal 2009-001702
Reexamination Control No. 90/006,567
3
ANALYSIS
Issue 1
The Appellant argues that the Declaration "presented details of the
development of the invention" which "required extensive efforts by one of
ordinary skill the art, and was not a 'predictable variation'." (Request 2). The
Appellant contends that our statements that "[t]here is no persuasive
evidence that making the support frame integral with the housing would
have been beyond the skill of one of ordinary skill in the art[,]" and that "the
claimed invention merely applies the well known technique of making
various structural features integral to yield predictable results[]" are contrary
to the declarative evidence (Request 1 and 2, citing Decl. ¶¶ 11 and 12). The
Appellant further inquires "[h]ad the claimed invention of Appellant been
within the skill of one of ordinary skill in the art, why would it have taken
the inventor of the Reexamination Patent years to develop the invention?"
(Request 1-2).
Firstly, we observe that the Board has “broad discretion as to the
weight to give declarations offered in the course of prosecution.” In re Am.
Acad. of Sci. Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004). The
ultimate determination of whether a claimed invention would have been
obvious or unobvious is a legal conclusion which is made based on
considering and weighing all of the facts in evidence. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992); see also Velander v. Garner, 348 F.3d
1359, 1371 (Fed. Cir. 2003) ("It is within the discretion of the trier of fact to
give each item of evidence such weight as it feels appropriate . . . ").
Appeal 2009-001702
Reexamination Control No. 90/006,567
4
With the above in mind, in considering the patentability of the
claimed invention, we found the Declaration unpersuasive. (See original
Decision 16 stating "[t]here is no persuasive evidence that making the
support frame integral with the housing would have been beyond the skill of
one of ordinary skill in the art." (emphasis added)). Contrary to the
Appellant's assertion, in our view, the Declaration does not present "details"
that persuade us that integrally forming the base with the housing would
have entailed skills beyond those of one of ordinary skill.
The Declaration states that integrally forming the base with the
housing was "troublesome since it required the combination of two separate
functional components into one while incorporating all of the stability
characteristics of the caddy base and the operational features of the housing
and which further addressed the bottom surface weakness of the rotomolded
caddy base." (Decl. ¶ 11). However, such a general statement is not much
more than simple articulation of the functional objectives for developing the
claimed invention, and does not provide details as to the technical
difficulties and skills required for attaining such objectives. The Declaration
also specifies that a void that is above the caster mounting surface caused the
casters to collapse (Decl. ¶ 11), but it does not provide persuasive evidence
or articulate technical reasons as to why redesigning of that area was
technically difficult or would have been beyond the skills of a person skilled
in the art. In this regard, while the declarant, Mr. Calvert, may be skilled in
the relevant field of coolers and in manufacturing of coolers, the Appelllant
has not persuasively shown that the level of ordinary skill in the art is such
that arriving at the claimed invention, which includes an integrally formed
Appeal 2009-001702
Reexamination Control No. 90/006,567
5
support base and housing, would have involved skills beyond those of one of
ordinary skill.
While the Declaration further states that "molds had to be continually
re-designed in order to address the issue of stability[,]" (Decl. ¶ 11), with the
exception of the above noted "void" issue, no further details are provided
with respect what other technical issues or unforeseeable problems were
addressed during by each redesign and how many redesigns were required.
Furthermore, while the general assertion is made that "a great deal of time
and resources were expended to solve these issues[,]" (Decl. ¶ 12), no details
are provided with respect to the amount of time and resources expended.
The Appellant's argument for non-obviousness is based on the
assertion that there were technical challenges to the claimed invention that
were beyond the skill set of one of ordinary skill in the art, the solution for
which was inventive and took substantial time and resources to develop.
However, the evidence does not reflect these challenges and the alleged
inventive contribution.
In summary, we found the limited evidence presented to be
unpersuasive to show that it was beyond the skill of one of ordinary skill to
integrally form the base with the housing, and unpersuasive to show that the
claimed invention is more than the application of the well known technique
of making various structural features integral. (See Original Decision 16).
We find no error in our prior conclusion of obviousness.

Appeal 2009-001702
Reexamination Control No. 90/006,567
6
Issue 2
Claims 9 and 21 recite an "evaporative cooler comprising the cooler
housing." The Appellant contends that this recitation sufficiently
distinguishes these claims from the other claims rejected under the same
rejection, and that our conclusion that the "claims do not recite that the
housing stably supports the evaporative cooling unit with all of its associated
sub-components" would not apply (Request 2).
However, the Appellant mischaracterizes the record in that we made
the above quoted conclusion with respect to the Examiner’s rejection as to
other claims directed to a "cooler housing" (i.e., claims 1, 3, 4, 5, 8, 17, 18,
20, 24, 25, 27, 29 and 30) that were subject to the same obviousness
rejection, and not with respect to claims 9 and 21 which we addressed
separately (original Decision 21-22).
The Appellant alleges that we stated that failure to recite any
"additional elements" in claims 9 and 21 was the basis for sustaining the
Examiner's rejection, but contends that a person of ordinary skill in the art
"would know that an evaporative cooler contains other components[.]"
(Request 2). However, the Appellant misquotes the original Decision and
misunderstands our rationale for affirming the rejection of claims 9 and 21.
In the original Decision, we stated:
"With respect to claims 9 and 21, while these claims do
recite an evaporative cooler which comprises the cooler
housing of claims 1 and 17, respectively, claims 9 and 21
do not set forth any additional recitations as to the
structure or function of the housing or the evaporative
cooler. As such, Calvert satisfies the recitations of claim
9 and 21 in that it describes an evaporative cooling unit."
(Original Decision 21-22).
Appeal 2009-001702
Reexamination Control No. 90/006,567
7
Hence, our affirmance of the Examiner's rejection was not based on
the fact that claims 9 and 21 did not recite any "additional elements" other
than the housing. Rather, our basis was that merely claiming an evaporative
cooler without including some "additional recitations" of a patentable feature
of the housing or the cooler in the claims, does not render claims 9 and 21
patentable because the prior art Calvert patent not only discloses a cooler
housing, but also discloses an "evaporative cooling unit." In other words,
recitation to an "evaporative cooler" (with its implicit sub-assemblies and
components) still fails to distinguish over Calvert which also discloses an
"evaporative cooling unit" having such sub-assemblies and components
therein. Therefore, we discern no error in our original Decision.

Issue 3
The Appellant further argues that with respect to claim 21, by virtue
of its dependency on claim 17, requires "a central collection chamber for the
containment of water within the interior of the base[,]" and thus, "recites an
evaporative cooler having a housing supported on an integrally formed base
and a collection chamber[]" which "would contain water during operation."
(Request 2-3).
However, the Appellant does not identify, nor is it apparent to us,
where in the Appellant's briefs such an argument was previously made
during the appeal. Rehearings are not provided for presentation and
consideration of new arguments that could have been previously made in the
briefs. See 37 CFR § 41.52. Therefore, we do not discern any error in our
original Decision.
Appeal 2009-001702
Reexamination Control No. 90/006,567
8

DECISION
While we have considered original Decision in light of the Appellant's
Request, we decline to modify our original Decision in any respect.

DENIED

ack
FOR PATENT OWNER:

JONES & SMITH, LLP
2777 Allen Parkway
Suite 800
Houston, TX 77019-2141

FOR THIRD PARTY REQUESTER:

John M. Bradshaw, Esq.
WOODARD, EMHARDT, NAUGHTON, MORIARTY & MCNETT
111 Monument Circle
Suite 3700
Indianapolis, IN 46204-5137