95002008 (P.T.A.B. Aug. 30, 2016)

Ex Parte 7686587 et al

Patent Trial and Appeal BoardAug 30, 2016

95002008 (P.T.A.B. Aug. 30, 2016)

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. 95/002,008 06/01/2012 7686587 144074.00751 9436 26710 7590 08/30/2016 QUARLES & BRADY LLP Attn: IP Docket 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI 53202-4426 EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 08/30/2016 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 PATENT TRIAL AND APPEAL BOARD ____________________ HAYWARD INDUSTRIES, INC. Requester/Cross-Appellant v. PENTAIR LTD. Patent Owner/Appellant ____________________ Appeal 2015-007909 Reexamination Control 95/002,008 Patent US 7,686,587 B21 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Issued to Koehl, March 30, 2010 (the ’587 patent). Appeal 2015-007909 Reexamination Control 95/002,008 Patent US 7,686,587 B2 2 STATEMENT OF THE CASE The Third Party Requester (“Requester”) filed Third-Party Requester’s Request for Rehearing on May 2, 2016 (hereinafter “Rehearing Request” or “Reh’g. Req.”) under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed April 1, 2016 (hereinafter “Decision” or “Dec.”), which reversed various final rejections of the claims and affirmed the non-adoption by the Examiner of various proposed rejections. The Patent Owner filed Patent Owner’s Comments in Opposition to Third-Party Requester’s Request for Rehearing (hereinafter “Opposition” or “Opp.”) on June 2, 2016. The Requester asserts that the Board “misapprehended the primary reference . . . by focusing on a single sentence of that 74-page reference directed to an optional, alternate mode, and overlooked Baldor’s discussing of overcurrent fault detection and handling.” Reh’g. Req. 1. As the Patent Owner correctly states, however, we “squarely addressed Baldor and Requester’s arguments and properly concluded that Baldor (alone or in combination) did not undercut the validity of any pending claim of the ’587 patent.” Opp. 2 (citing Dec. 8–9). Furthermore, we agree “that the Rehearing Request includes ‘[a]rguments not raised in the briefs before the Board.’” Id. (citing 37 C.F.R. § 41.79(b)(1)). We decline to consider them as the Requester has provided no explanation as to how such new arguments properly qualify under the exceptions listed in 37 C.F.R. § 41.79(b)(1) and (2). As we stated in the Decision, “[a]lthough Baldor teaches overcurrent fault codes, Baldor specifically states that these faults are triggered by measurements taken of output frequency, not of current itself as required by Appeal 2015-007909 Reexamination Control 95/002,008 Patent US 7,686,587 B2 3 the claims.” Dec. 8. We agree with the Patent Owner that “[w]hile Requester states repeatedly that Baldor somehow ‘expressly discloses bus current measurements, and in particular, …“overcurrent” fault detection,’ Requester continues to rely upon Baldor’s disclosures that actually relate to frequency and/or overloading.” Opp. 3 (citing Reh’g. Req. 3); see also Opp. 3–7. Furthermore, as stated by the Patent Owner, “Requester continues to overreach and cannot point to any affirmative explanation in Baldor for support [of actual overcurrent measurement for fault purposes],” while the Patent Owner has shown that Baldor provides “the explicit frequency discussion noted by the Board.” Opp. 5. Nothing presented by the Requester persuades of us error in relation to our analysis of Baldor and the subsequent reversal of the rejections over Baldor. Although the Requester additionally argues errors in our analysis of Carrow, we need not reach those arguments because the Examiner rejected the claims at issue as obvious over Baldor and Carrow, and Baldor still suffers from the deficiencies already discussed herein and in the original Decision. DECISION While we have considered the Decision in light of the Rehearing Request, we decline to modify it in any respect. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2015-007909 Reexamination Control 95/002,008 Patent US 7,686,587 B2 4 DENIED PATENT OWNER: QUARLES & BRADY LLP ATTN: IP DOCKET 411 E. Wisconsin Avenue Suite 2350 Milwaukee, WI 53202-4426 THIRD PARTY REQUESTER: McCARTER & ENGLISH, LLP NEWARK Four Gateway Center 100 Mulberry Street Newark, NJ 07102 msc