Ex Parte Cohen

Board of Patent Appeals and Interferences

Nov 7, 2011

11474692 (B.P.A.I. Nov. 7, 2011)

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.
11/474,692 06/26/2006 Richard Cohen ECV-10802/29 9763
25006 7590 11/08/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
HWU, DAVIS D
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
11/08/2011 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 RICHARD COHEN
____________________

Appeal 2010-000585
Application 11/474,692
Technology Center 3700
____________________

Before: STEVEN D. A. MCCARTHY, ROBERT A. CLARKE, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000585
Application 11/474,692
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6, 7, 15, and 16. App. Br 1. We have jurisdiction under 35 U.S.C. § 6(b).
We dismiss the appeal as to claim 4. We reverse the remainder of the
rejection as entered by the Examiner and, pursuant to our authority under 37
C.F.R. § 41.50(b), reenter it as new grounds of rejection.

The claims are directed to a combination birdbath fountain with water
level maintaining reservoir. Claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A fountain birdbath, comprising:
a bowl;
a water-containing reservoir;
a fountain head;
an electrically operated submersible pump disposed in the
water-containing reservoir operative to pump water from the
reservoir to the fountain head, after which the water returns to
the bowl;
a fluid path from the bowl back to the reservoir, thereby
keeping the water level of the bowl substantially constant;
a solar panel providing electrical power to the pump; and
wherein the dimensions of the solar panel are such that it
provides a cover for the water-containing reservoir.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Locke
Gates
Lemon
US 5,918,415
US 6,179,218 B1
US 6,684,813 B1
Jul. 6, 1999
Jan. 30, 2001
Feb. 3, 2004
Appeal 2010-000585
Application 11/474,692
3
REJECTIONS
Claims 1-41, 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lemon, Gates, and Locke. Ans. 3.

OPINION
The Examiner’s rejection of claims 1-3, 6, 7, 15, and 16 as being
unpatentable over Lemon, Gates, and Locke is reversed.
Appellant correctly points out that in making the above rejection the
Examiner failed to articulate any reason with a rational underpinning to
support the legal conclusion of obviousness. See Final Rej. 3-4; Ans. 3; In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In response to the Appellant’s
argument the Examiner suggested that the reason it would have been
obvious to incorporate solar panels into Lemon’s device is “helping to
reduce overall electricity consumption by eliminating the need for electricity
to power the pump.” Ans. 4. As Appellant points out, the source of power is
unlikely to change the electricity consumed by the pump. Thus, we agree
with Appellant that the Examiner’s proposed reason for modifying Lemon
lacks a rational underpinning. Accordingly, we are constrained to reverse the
Examiner’s rejection.

1 Appellant attempted to cancel claim 4 by an amendment submitted with the
Appeal Brief. We treat the rejection of claim 4 as not appealed and the
Examiner is advised to cancel this claim in any further prosecution. See
Manual of Patent Examining Procedure (MPEP) § 1215.03 (8th Ed., Rev. 8,
Jul. 2010); see also Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential).
Appeal 2010-000585
Application 11/474,692
4
Pursuant to our authority under 37 C.F.R. § 41.50(b), claims 1-3, 6, 7, 15,
and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lemon, Gates, and Locke.

Lemon discloses a birdbath fountain assembly comprising an upper
basin 20, a “bowl,” having a depth defined by a superior basin perimeter 21,
“an outer, circular raised rim,” and a central water dam or basin pedestal 22,
“an inner concentric raised rim.” Col. 7, ll. 37-39, col. 8, ll. 12-25. Lemon
further discloses a water-containing basin support reservoir 30 within the
dam 22 having a depth greater than the depth of the bowl. Col. 8, ll. 51-54,
fig. 8. A decorative cap 50 is dimensioned to cover the reservoir 30, and
contains a water outlet conduit 53, “a fountain head.” Col. 13, ll. 20-24, fig.
8. Lemon suggests disposing a specific pump 41, the “Little Giant® brand
PE-A series submersible pump” in the reservoir 30 to pump water from the
reservoir through the outlet conduit 53 to the upper basin 20. Col. 10, l. 56 –
col. 11, l. 8. However, Lemon also notes that “any number of small
submersible water recirculating pumps may be utilized.” Col. 10, ll. 66-67.
At least one, preferably four, water inlet grooves 24, “notches,” have a depth
in the cap end of the dam 22 which allows water to empty into the reservoir
and maintains a maximum water depth ΔY. Col. 8, ll. 35-67, col. 16, ll. 2-15,
fig. 3.
Lemon relies on an electrical power delivery means 46, selectively
connected to an electrical power supply, such as an outdoor receptacle, to
power the pump 41. Col. 12, l. 64 – col. 13, l. 2. Lemon recognizes that prior
art devices have used photocells for controlling a birdbath pump, but Lemon
does not mention using photocells or a “solar panel” for powering such a
Appeal 2010-000585
Application 11/474,692
5
pump. See col. 3, ll. 25-26. Lemon suggests placing the birdbath on the
ground as opposed to a “stand.”
Gates demonstrates that it was known in the art that the use of solar
power to power a fountain of water in a birdbath in place of an external
electricity source such as wires could be less complicated to install, less
hazardous and less wasteful of resources. Col 1, ll. 8-10, 21-35. Gates solves
“many challenges” for a solar-powered water fountain to be useful in bird
bath fountains. Col. 4, l. 25 – col. 5 l. 11. Gates powers a motor 12 and
pump 14 with at least one solar cell 10 positioned on a float 18. Gates notes
the object the pump and motor are secured to need not be a float. Instead, it
can be supported from underneath. Col. 3, ll. 1-4.
Locke demonstrates that it was known in the art to use circular solar
panels 314 to power a bird bath pump 138. Col. 14, ll. 52-61. Locke places
those panels on an umbrella 300 above the birdbath. Id. Locke also
demonstrates that various “stand[s]” upon which a bird bath may rest were
known in the art such as pedestals (Fig. 31B) and posts (Fig. 31C).
Incorporating a solar panel into Lemon’s device involves the
substitution of known elements according to the express suggestion of Gates
that a wired power source could be replaced with a solar panel. Such a
substitution would yield the predictable result of facilitating installation,
discouraging injury, and using an alternative power source that could be less
wasteful of resources. See Gates, col 1, ll. 8-9, 21-35. Both Gates and Locke
teach that solar cells should be placed facing upwards. Applying this
teaching to Lemon would result in the placement of solar cells on Lemon’s
decorative cap 50 since it is the only dry, upwardly facing surface. This
Appeal 2010-000585
Application 11/474,692
6
modification would result a solar panel2 that covers the water containing
reservoir, through which water is pumped. Thus, the subject matter of claims
1-3, 6, and 15 amounts to no more than the predictable use of prior art
elements according to their established functions and therefore would have
been obvious to one having ordinary skill in the art. Resting Lemon’s device
on a stand in place of the ground amounts to the simple substitution of
support structures in order to achieve the predictable result of changing the
height of the birdbath. Thus, the subject matter of claims 7 and 16 would
also have been obvious to one having ordinary skill in the art.
We turn to Appellant’s remaining arguments. Appellant contends a
solar cell would not be able to power Lemon’s specified pump. Reply Br. 1.
While this may be the case, it is an attack on Lemon’s specific structure not
what Lemon teaches or would fairly suggest to one of ordinary skill in the
art. Lemon specifically recognizes that the selected pump is not critical to
the invention and a variety of pumps may be employed. Col. 10, ll. 66-67.
The fact that in order to incorporate solar cells, as a replacement for an
external power source, the Lemon’s pump may also need to be replaced does
not render the combination any less obvious. Additionally, Gates expressly
discusses a motor and pump that could be used to raise water to a height
approximately equal to the depth of Lemon’s basin under solar power. See
e.g., Gates, col. 2, l. 46; Lemon, col. 9, l. 62; Locke, col 14, ll. 52-53.
Obviousness required only that one of ordinary skill in the art would have
reasonably expected that solar cells could power a pump, not that the one of

2 Appellant does not expressly define “solar panel.” We understand the term
to include a group of connected solar cells. See solar panel. In The American
Heritage® Dictionary of the English Language (2000, 2007) (available at
http://www.credoreference.com/entry/hmdictenglang/solar_panel).
Appeal 2010-000585
Application 11/474,692
7
ordinary skill would have been certain that solar cells could do so.
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Appellant argues it would have not been obvious to use Gates’ float as
a cover. App. Br. 4. First, as noted above, Gates teaching is not restricted to
a float. Gates, col. 3, ll. 1-4. Second, the specific supporting structure used in
Gates need not be incorporated into Lemon in order to incorporate Gates’
teaching of using solar cells to power a bird bath fountain since Lemon
already has a surface suitable for receiving such cells, the cap 50.
“Combining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
Appellant contends that Locke does not disclose a “cover” since it
does not fit the reservoir like a lid. Reply Br. 2. First, we find no reason to
construe the term cover so narrowly. Second, the claims do not actually
require the solar panel to cover the reservoir, only that they be
“dimensioned” to do so. Third, even if we were to construe the term as
Appellant suggests, as discussed regarding Gates, there is no need to
incorporate Locke’s specific structure supporting the solar cells, the
umbrella 300, in order to incorporate Locke’s teaching of using solar cells to
power a bird bath pump into Lemon’s device. Incorporation of solar cells
into Lemon’s cap results in a solar panel dimensioned to cover the reservoir.

DECISION
The Examiner’s rejection of claims 1-3, 6, 7, 15, and 16 as being
unpatentable over Lemon, Gates, and Locke is reversed.
Appeal 2010-000585
Application 11/474,692
8
Pursuant to our authority under 37 C.F.R. § 41.50(b), claims 1-3, 6, 7,
15, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lemon, Gates, and Locke.

37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

Appeal 2010-000585
Application 11/474,692
9

hh