Ex Parte 7854597 et al

Patent Trial and Appeal Board

Aug 30, 2016

95002006 (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.
95/002,006 06/01/2012 7854597 144074.00753 9030
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.,
Third Party Requester/Cross-Appellant,

v.

PENTAIR WATER POOL AND SPA, INC.,
Patent Owner/Appellant.
____________________

Appeal 2016-002780
Reexamination Control 95/002,006
Patent US 7,854,597 B21
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Stiles, Jr. et al. on December 21, 2010 (hereinafter the ’597
patent).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
a rejection of claims 1–16, 18–32, 34–37, 40–43, and 45–57. PO App. Br. 1.
Claims 38, 39, and 44 are confirmed, and claims 17, 33, 58, and 59 are
objected to. Id. The Third Party Requester (“Requester”) cross-appeals
from the non-adoption of rejections of claims 17, 33, 39, 44, 58, and 59.
Req. Br. 4. The Requester also cross-appeals from numerous non-adopted
rejections of claims presently rejected on other grounds. Req. Br. 5–6. We
have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). Oral arguments
were presented in this case on May 17, 2016, a transcript of which was
entered in the record on June 20, 2016.
We are informed that the ’597 patent is involved in a lawsuit in the
United States District Court for the Eastern District of North Carolina
captioned Pentair Water Pool and Spa, Inc. and Danfoss Drives A/S v.
Hayward Industries, Inc. and Hayward Pool Products, Inc.¸ Civil Action
No. 5:11-cv-459. Req. Br. 1. We are further informed that the
aforementioned lawsuit also involves six other patents: US 7,686,587,
which is subject to a Board Decision and subsequent Request for Rehearing
in Reexamination Control 95/002,008; US 7,857,600 B2, which is subject to
a Board Decision in Reexamination Control 95/002,005; US 7,815,420 B2,
which is subject to a Board Decision in Reexamination Control 95/002,007;
US 8,019,479 B2, which is subject to a Final Written Decision in IPR2013-
00285 and an appeal therefrom in Appeal 2015-1408; US 7,704,051 B2,
which is subject to a Final Written Decision in IPR2013-00287 and an
appeal therefrom in Appeal 2015-1409; and US 8,043,070 B2. Id.
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We reverse the Examiner’s decision to reject the claims as detailed
above, but affirm the Examiner’s non-adoption of the rejections as cross-
appealed by the Requester.

CLAIMED SUBJECT MATTER
The claims are directed "to control of a pump, and more particularly
to control of a variable speed pumping system for a pool." Spec., col. 1, ll.
14–16. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A pumping system for at least one aquatic application, the
pumping system receiving information from a user, the pumping
system comprising:
a pump;
a motor coupled to the pump;
a control system operating as a master controller,
the control system including an automation system,
the control system including a remote keypad and display
connected to the automation system; and
a pump controller located remotely from the control
system,
the pump controller coupled to at least one of the pump
and the motor,
the pump controller operating as a slave controller when
connected to the control system,
the pump controller in digital communication with the
motor and the control system,
the pump controller transmitting information to and
receiving information from the control system over at least one
communication link,
the pump controller operating the motor to substantially
optimize energy consumption based on the information entered
into the remote keypad by the user and received from the control
system,
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the pump controller operating independently to control the
motor to optimize energy consumption when disconnected from
the control system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Discenzo
Jones
Ehlers
Koehl
US 2003/0061004 A1
US 2003/0196942 A1
US 2004/0117330 A1
US 2005/0123408 A1
Mar. 27, 2003
Oct. 23, 2003
June 17, 2004
June 9, 2005

Compool, Cp3800 Pool-Spa Control System Installation and
Operating Instructions, November 7, 1997 (“Compool Manual”).
Robert S. Carrow, Electrician’s Technical Reference, Variable
Frequency Drives, 2001 (“Carrow”).
Owner’s Guide, Hayward Pro-Series High-Rate Sand Filter, Model
S310T2, S360T2, 2002 (“Filtering Owner’s Guide”).
Pentair RS-485 Pool Controller Adapter Published Advertisement
from Pool and Spa News, March 22, 2002 (“Pentair RS-485 Publication”).
Product Focus – New AC Drive Series Targets Water, Wastewater
Applications, WaterWorld Magazine, Vol. 8, No. 7, July 2002
(“WaterWorld Magazine Publication”).
Pentair IntelliTouch Operating Manual, Set-Up and Programming,
May 22, 2003 (“Pentair Manual”).
Danfoss VLT 8000 AQUA Instruction Manual, April 16, 2004
(“Danfoss”).

REJECTIONS
The Requester presented 153 rejections to the Examiner for
consideration, a listing of which may be found in the RAN at 6–24. The
Examiner adopted Rejections 8, 39–50, 66–79, 95–108, and 139–153 in
whole or in part. RAN 25–54. The Examiner originally adopted, but
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withdrew, or chose not to adopt, the remaining rejections. RAN 6–22, 54–
159.

OPINION
Patent Owner’s Appeal
As the Patent Owner states, the adopted rejections on appeal deal
mainly with two references, Discenzo and Ehlers. PO App. Br. 3.
According to the Patent Owner, these references fail to teach or disclose
both the claimed elements of optimizing energy consumption and the
interrelated master-slave relationship, and if either of these two elements is
found to be missing, then the currently pending rejections fall away. Id.
While the Requester asserts that Carrow also teaches the claimed master-
slave relationship, as the Requester states “the RAN relies on Discenzo for
‘optimize energy consumption’ and master-slave,” so that whether Carrow
teaches these concepts is not in a rejection that is before us. Req. Resp. Br.
3. See also RAN 161 (“while it is true that Carrow is not seen to teach the
master/slave relationship”).
The Requester admits that what Discenzo actually teaches is more of
a host-to-peer relationship between various controllers, but nonetheless
asserts that this is equivalent to the claimed master-slave relationship. Req.
Resp. Br. 6. The Requester provides little explanation as to how a host-to-
peer relationship meets the claims other than to state that Discenzo, “after
having first discussed that the pump controller of Figure 9 has stand-alone
capability, thereafter discloses that the same controller can ‘alternatively or
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in combination’ receive information when ‘operatively’ connected.” Req.
Resp. Br. 5 (citing Discenzo ¶ 134).
The Requester also relies on the statements of its expert, Dr. Emadi,
but as with Requester’s argument, Dr. Emadi does little more than state that
“the host computer of Fig. 17 is the ‘master’ and the pump controller of Fig.
9 (MC1) is the ‘slave.’” Emadi Dec. ¶ 34. This is allegedly so because
“[t]he setpoint on the flow regulator of the pump controller can be entered at
the host computer when connected.” Id. As further explained by the Patent
Owner’s expert, Dr. Collins, however, “the optimization component 970
determines an optimized setpoint that varies from a setpoint sent from a host
computer.” 3rd Collins Dec. ¶ 28. Dr. Collins also elaborates, “Discenzo
describes a distributed control system that relies on controllers that function
as local agents that are designed to make local decisions based on local
objectives, even when working collaboratively with other controllers.” Id. at
¶ 29. Dr. Collins further explains, “Discenzo does not disclose that if
setpoints or desired operating points are received from the host computer
1704, even if optimized by optimization component 1706, the controller 966
and its optimization component 970 would lose independent control.” Id. at
¶ 36.
We agree with Dr. Collins’ conclusion that in either the control
scheme of Figure 9 or Figure 17 of Discenzo, “the pump control system
contains an active optimization component 970 that independently provides
a motor speed output signal 964 that commands the motor’s speed.” Id. at
¶ 38. Further, we disagree with the Requester that the mere receiving of
information that may then be used to influence local control can properly be
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considered a master-slave configuration. Accordingly, while we agree that
Discenzo teaches that the master controller/host may influence and/or
provide operating information to the peer, we are persuaded that the peer in
Discenzo maintains a significant amount of control so as not properly to be
considered a slave. This deficiency is not cured by any of the references
used in combination with Discenzo. We, therefore, do not sustain the
Examiner’s rejections that rely on Discenzo for teaching the claimed master-
slave relationship that is present in all of the pending independent claims.2
Regarding the use of Ehlers as also teaching the claimed master-slave
relationship, the Examiner appears only to rely on the fact that the local
control node “will continue to perform if the connection to the main
controller is severed.” RAN 166. We agree with the Patent Owner,
however, that “a device that ‘continues to perform’ does not teach a change
of operation from a ‘slave’ device to a master device,” but that Ehlers
merely “indicates that the device simply continues to operate as it did when
connected to the network.” PO App. Br. 14. As Dr. Collins further points
out, “handing over primary control over electrical devices in a home to the
utility company, with no ability for the home owner to maintain similar
privileges, makes little sense.” First Collins Dec. ¶ 109.
We also agree with the Patent Owner that Ehlers deals with a different
concept entirely and thus “fails to disclose or teach the claimed optimization
of energy consumption as called for” in the claims. PO App. Br. 22. The
Examiner accepts that the proper interpretation of “optimize energy

2 Rejections 8, 38–47, 49, 50, 66–76, 78, 79, 95–105, 107, and 108 each rely
on Discenzo for this teaching.
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consumption” is “a reduction of energy consumed over time relative to the
ultimate pumping application/function.” RAN 160. Ehlers, however, “is not
concerned with optimizing energy consumption by reducing energy
consumed over time relative to an ultimate pumping application/function,”
but only deals with “[m]oving discretionary loads from peak demand periods
to off demand periods.” PO App. Br. 22–23, (emphasis added). As the
Patent Owner points out, “pool pumps controlled by nodes 1.10B are
specifically referred to as ‘dumb devices . . . which simply operate in an on
or off state.’” PO Rebuttal Br. 11. It would appear that the Requester
simply picks certain language in Ehlers (flow control, ability to
intercommunicate with the entire supply chain, etc.) to assemble what looks
like the claimed device, but when viewed in context is actually inapplicable.
All Ehlers discloses is that an energy consumer may allow the utility
to aid in scheduling certain operations and thus receive a discount for
participation, but the specifics of the operation, other than their happening or
not (i.e., essentially an on/off control), is completely out of the control of the
centralized system. Id. at 22. Ehlers has nothing to do with the details of the
pump operation at the pool to make it operate more efficiently based on
conditions within the pool system other than to move a scheduled operation
from a peak time to a non-peak time. As Dr. Collins states, “Ehlers merely
functions to either to schedule the pool pump to run [at a] certain time, or
alternatively, shut down the pump during peak loads.” 3rd Collins Dec. ¶ 26.
The claims require more than load shifting, and must include more detailed
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control of the pump to achieve optimum efficiency within the pool system.
As such we do not sustain the Examiner’s rejections that rely on Ehlers.3
Requester’s Cross-Appeal
§ 112 Rejections
The Requester asserts that the Examiner was incorrect in withdrawing
the indefiniteness rejection of claim 44. Req. Br. 29. The Requester goes
into great detail explaining the history of this rejection, but as the Patent
Owner states, the Examiner, in most of that history, “failed to reference the
sections of the ’597 Patent cited in PO’s Third Response” that support the
claim language. PO Resp. Br. 14. We agree with the Examiner’s finding
that “PO’s arguments pointing out the portions of the original specification
that support new claims 44, 45, and 56 on pages 38-40 of the July 9, 2014
amendment are persuasive.” RAN 178. As the Patent Owner correctly
states, “the portions of the ’597 Patent cited by PO specifically addressed the
issues presented by the Examiner, and demonstrated that Claim 44 is fully
and properly supported.” PO Resp. Br. 14. Accordingly, we sustain the
Examiner’s withdrawal/non-adoption of this rejection.
Regarding the rejection of claims 38 and 39, we agree with the Patent
Owner that the Examiner properly determined that the claim language “‘an
amount of water movement is associated with operation of at least one
auxiliary device’ is ‘seen to mean the water flow intended to provide proper
operation of the auxiliary device.’” PO Resp. Br. 15. Further, we agree with
the Patent Owner that the Requester appears to confuse breadth with

3 Rejections 139–153 rely upon Ehlers as the primary reference and
rejections 75 and 104 rely on Ehlers as a secondary reference.
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indefiniteness. Id. The claims clearly state what may or may not be a part
of the pumping system and all that is required is that a component thereof do
the claimed “considering.” Accordingly, we sustain the Examiner’s non-
adoption of the rejection of claims 38 and 39 as indefinite.
Art-Based Rejections
The majority of the remainder of the Requester’s cross-appeal deals
with the disagreement over the proper construction of “optimize energy
consumption.” Req. Br. 11 (“but for the Reexamination Examiner’s change
in construction…Issues 1-16, 18, 19, 20-34, 36, 37, 51-62, 64, 65, 80-91, 93,
94, 109-120, 122, 123, and 124-135, 137, 138 would not have been
withdrawn”). As discussed, supra, we agree with the Examiner’s
interpretation of this claim language and thus also agree that the Carrow,
Jones, and Koehl references as well as the Danfoss Manual do not meet this
limitation as properly construed by the Examiner. See also PO Resp. Br. 3–
8. The rest of the Requester’s arguments deal with dependent claims or
other rejections that rely on a rejected construction of “optimize energy
consumption.” See Req. Br. 12–27. Having already deemed the base
references deficient for not teaching the properly construed “optimize energy
consumption” limitation, all rejections using these base references are
improper for at least the above-stated reasons.
The Examiner also objected to claims 17 and 33 as being dependent
upon a rejected base claim but containing allowable subject matter. RAN
179. The Requester argues that these claims as well as independent claims
58 and 59, which contain similar limitations, should also be rejected. Req.
Br. 12–18. As the Requester’s counsel stated during oral argument “when a
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pump controller ignores a request for increased flow rate, but doesn’t know
that the request was for increased flow rate or doesn’t care, that’s enough.”
Hearing Transcript 92. Essentially, Requester’s argument is that not
receiving a request is the same as ignoring a request, thus allowing a
“lockout” state as in Mehlhorn or shutdown states of other references, to
teach the claimed “ignoring.” We agree with the Examiner, however, that “a
signal to shut down the motor is not the same as the motor controller
ignoring a signal to increase the flow rate.” RAN 78. The Requester’s
argument essentially would equate to not receiving a telephone call because
the telephone line has been cut or no phones are plugged in as being
equivalent to having “ignored” that call. We do not agree that “ignoring”
can be so broadly interpreted. As such, we agree with the Examiner’s
decision not to reject claims 17, 33, 58, and 59.
For the reasons stated above, we sustain the Examiner’s non-adoption
of all of the art-based rejections set forth in the Requester’s Cross-Appeal.

DECISION
The Examiner’s rejection of claims 1–16, 18–32, 34–37, 40–43, and
45–57 is REVERSED and the Examiner’s non-adoption of all other
rejections proposed by the Requester is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
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on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

PATENT OWNER:

QUARLES & BRADY LLP
Attn: IP Docket
411 E. Wisconsin Avenue
Suite 2350
Milwaukee, WI 53202-4426

THIRD PARTY REQUESTER:

McCARTER & ENGLISH, LLP
Four Gateway Center
100 Mulberry Street
Newark, NJ 07102