Ex Parte Iosim

Patent Trial and Appeal Board

Mar 14, 2016

12759087 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121759,087 04/13/2010
26812 7590 03/16/2016
HA YES, SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
FIRST NAMED INVENTOR
Marklosim
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IOSIM 10.02 6268
EXAMINER
LOEPPKE, JANIE MEREDITH
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
TSULLIV AN@HA YES-SOLOWAY.COM
jhrycuna@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK IOSIM
Appeal2014-000945
Application 12/759,087 1
Technology Center 3700
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1---6, 15-18, and 21-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
BACKGROUND
According to Appellant, "[ t ]he present disclosure is generally related
to enclosures and more particularly is related to a swimming pool and spa
cover apparatus and method thereof." Spec. 1.
1 According to Appellant, the real party in interest is Mark Iosim. App.
Br. 4.
Appeal2014-000945
Application 12/759,087
CLAHvIS
Claims 1---6, 15-18, and 21-27 are on appeal. Claim 1 is illustrative
of the appealed claims and recites:
1. A swimming pool cover apparatus, comprising:
at least two stationary support members located proximate
to a swimming pool and rising vertically above a top surface of
the swimming pool;
a substantially rigid cover element frame supported by
said support members and movable in a substantially vertical
direction between a lowered position proximate to the top surface
of the swimming pool and a raised position remote from the top
surface of the swimming pool;
at least one flexible cover element supported by said cover
element frame, wherein the flexible cover element is stretched
proximate to said cover element frame;
at least one collapsible upper vertex formed within the
cover element with at least one biasing device, the upper vertex
preventing a quantity of precipitation from collecting on top of
the cover element, wherein the upper vertex is situated to
coHapse under a predetermined weight, whereby at ieast a
portion of the cover element abuts an upper water surface of the
swimming pool when the cover element frame is in the lowered
position; and
a vertical movement control system located at least
partially within at least one of the support members, the vertical
movement control system controlling a vertical movement of the
cover element frame between the lowered position and the raised
position.
App. Br. 28.
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Application 12/759,087
REJECTION
The Examiner rejects claims 1---6, 15-18, and 21-27 under 35 U.S.C.
§ 103(a) as unpatentable over Sears2 in view of Smart3 and Tombari. 4
DISCUSSION
With respect to claim 1, the Examiner finds that Sears discloses a
swimming pool cover with stationary support members; a substantially rigid
cover element frame; a cover element with a collapsible upper vertex; and a
vertical movement control system. Final Action 2-3 (citing Sears Figs. 9,
13; col. 4, 11. 18-36, 43-50). The Examiner acknowledges that this
embodiment of Sears shows a rigid cover element and does not show a
flexible cover element. Id. at 3. The Examiner relies on Smart as teaching
that flexible and rigid cover elements may be used interchangeably. Id.
(citing Smart i-fi-1 21-22 ). The Examiner concludes that it would have been
obvious to substitute a rigid cover for a flexible cover as functionally
equivalent structures that would involve only routine skill in the art. Id.
Further, the Examiner acknowledges that Sears does not show a biasing
device at the upper vertex of the cover element. Id. The Examiner finds that
T ombari teaches using a biasing device between a frame and cover element.
Id. (citing Tombari Fig. 1 ). The Examiner concludes that it would have been
obvious to include a biasing element as taught by Tombari to provide an
easy attachment means between a cover and a frame. Id. at 3--4.
We agree with and adopt the Examiner's findings and conclusions
regarding the scope and content of the prior art with respect to claim 1. See
2 Sears, US 3,009,166, iss. Nov. 21, 1961.
3 Smart, US 2008/0256698 Al, pub. Oct. 23, 2008.
4 Tombari et al., US 3,285,257, iss. Nov. 15, 1966.
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Appeal2014-000945
Application 12/759,087
Final Action 2--4; Ans. 6-9. As discussed below, we are not persuaded of
error by Appellant's arguments.
Appellant first argues that the Examiner incorrectly finds that Sears
discloses a collapsible upper vertex in the cover element and that none of the
references teaches or suggests collapsing the cover to abut a water surface.
App. Br. 17, 20-21. However, the claim requires only that "the upper vertex
is situated to collapse under a predetermined weight" such that a portion of
the cover abuts the upper surface of the water. We agree with the Examiner
that Sears discloses a cover with a vertex (Sears Fig. 9), which is inherently
collapsible under a predetermined weight that depends on the materials used
to create the cover. See Ans. 6-7. Further, we agree that the proposed
combination of art would necessarily have a predetermined weight at which
it would collapse and abut the upper water surface of a pool.
Next, Appellant argues that Sears's Figure 9 teaches away from using
a flexible cover "so combining it with Smart's flexible cover goes against
the teachings of Sears' [Figure] 9." App. Br. 17. Appellant also argues that
Sears and Smart both "teach away from being combined within the
rejection." Reply Br. 5-6. In support, Appellant asserts that the flexible
covers disclosed in Sears and Smart both include interior frame members,
and thus, "the references teach away from using a flexible cover without an
interior support structure." Id. at 7. A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994). Further, a reference does not teach
away if it merely expresses a general preference for an alternative invention
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Application 12/759,087
but does not "criticize, discredit, or otherwise discourage" investigation into
the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
We are not persuaded that the references teach away from the proposed
combination simply because they only disclose using flexible covers with
interior frames. We also disagree that Sears teaches away from using a
flexible cover in the embodiment of Figure 9 simply because Sears discloses
a different embodiment with a flexible cover.
Appellant also argues that one of ordinary skill in the art would not
"be motivated to combine the coil spring of Tombari with the structure
taught by Sears." App. Br. 19. Appellant asserts that "[t]he Examiner fails
to identify why Sears can benefit from an 'easy attachment' with a coil
spring." Id. Appellant also asserts that Sears and Tombari disclose
structures with major differences including that Sears discloses a flexible
cover with rollers as compared to the fixed attachment required by
Tombari's spring. Id. Further, Appellant asserts that the Examiner "fails to
provide any support for how [Tombari's spring] could be combined with
Sears to form a collapsible upper vertex with the cover, or why practical
motivation to combine it [sic]." Id. at 20. We are not persuaded. First, we
note that the proposed combination of art relies on Sears's Figure 9, Smart,
and Tombari. To the extent Appellant asserts that Tombari is not compatible
with, or would change the principle of operation of, the flexible cover in
Sears' Figure 1 (see App. Br. 19--21; Reply Br. 8), the combination proposed
by the Examiner does not rely on this embodiment. Also, we agree with the
Examiner that the art suggests that flexible and rigid covers may be used
interchangeably (see Ans. 7), though one of ordinary skill in the art would
recognize that different support means may be required. Further, we agree
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Application 12/759,087
with the Examiner that Tombari teaches the use of a frame and biasing
device as a suitable means for supporting a flexible cover that creates a
vertex in the cover and maintains the cover "taut in a flexible or resilient
manner." Id. at 7; Tombari col. 2, 11. 25-27. Thus, we find that the
combination proposed by the Examiner is no more than the simple
substitution of one known cover and attachment means for another that
would yield predictable results.
Accordingly, we determine that the Examiner established a prima
facie showing of obviousness with respect to claim 1 without error. Thus,
we sustain the rejection of claim 1. Appellant does not present separate
arguments with respect to claims 2---6, 15-18, 21, 22, and 24--26, and thus,
those claims fall with claim 1. See App. Br. 13-25
Claims 2 3 and 2 7
Appellant raises separate arguments with respect to claims 23 and 27.
App. Br. 25-26. According to Appellant, these claims "are directed to at
least one biasing device which is connected between 'a spring-biased
support and the cover element, wherein the spring-biased support contacts
the cover element to form the at least one collapsible upper vertex."' Id. at
25. Appellant argues that the cited art does not disclose this requirement and
that "Tombari discloses contacting the tent material only with a coil spring
and further teaches [] attaching the spring directly between the tent material
and the frame." Id. Thus, Appellant asserts that Tombari does not teach
connecting the biasing device to a spring-biased support. Id. at 26.
We agree with and adopt the Examiner's findings regarding these
claims and find Appellant's argument unpersuasive. See Final Action 5;
Ans. 9. Specifically, we agree with the Examiner that under the broadest
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Application 12/759,087
reasonable interpretation of the claim, the spring biasing device and frame
form a spring-biased support when connected to the cover. Id. Appellant
cites the Specification as support for the contention that the biasing device
must be a separate structure from the spring-biased support. Reply Br. 10.
However, we find that the Specification does not provide a requirement that
these be separate devices and we will not import limitations from the
Specification into these claims. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.")
Accordingly, we determine that the Examiner established a prima
facie showing of obviousness with respect to claims 23 and 27 without error.
Thus, we sustain the rejection of these claims.
CONCLUSION
For the reason set forth above, we affirm the rejection of claims 1---6,
15-18, and 21-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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