Ex Parte Maskell

Patent Trial and Appeal Board

Nov 29, 2017

14027330 (P.T.A.B. Nov. 29, 2017)

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.
14/027,330 09/16/2013 Bruce William Maskell 61221/885255 1034
23370 7590 12/01/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
CHAUDRY, ATIF H
SUITE 2800 ART UNIT PAPER NUMBER
A1EAJN 1 A, LrA 5U5Uy 3753
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE WILLIAM MASKELL
Appeal 2017-000526
Application 14/027,330
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, GORDON D. KINDER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 1-3, 13, 14, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Zodiac Pool Systems, Inc.
Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated December 14, 2015
(“Final Act.”).
Appeal 2017-000526
Application 14/027,330
CLAIMED SUBJECT MATTER
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A pool-water heater manifold in fluid communication with
other components of a pool-water circulation system, the manifold
comprising:
a. an inlet for receiving pool water from another component
of the pool-water circulation system;
b. an outlet for transferring pool water to another component
of the pool-water circulation system;
c. a chamber configured to allow water to flow from the inlet
to the outlet;
d. at least one opening for directing water to a heating device;
e. a barrier positioned at least partially within the chamber;
f. means for repositioning the barrier from a first position, in
which the barrier obstructs passage through the chamber of
substantially all of the water received by the inlet, to a second position,
in which the barrier allows passage through the chamber to the outlet
of substantially all of the water received by the inlet, thereby preventing
this water from entering the at least one opening for direction to the
heating device at least at times when the heating device is inoperative;
and
g. a valve assembly positioned at least partially within the
chamber and configured for movement between a first position, in
which the valve assembly obstructs passage of water therethrough, and
a second position, in which the valve assembly allows passage of water
therethrough, movement of the valve assembly between the first and
second positions occurring as a function of pressure of water in the
chamber.
2
Appeal 2017-000526
Application 14/027,330
REJECTIONS
I. Claims 1-3 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ackner (US 2012/0131941 Al; published May 31, 2012),
Campbell (US 8,479,771 B2; issued July 9, 2013), Inoue (US 5,566,881;
issued Oct. 22, 1996), and Palmer (US 803,189; issued Oct. 31, 1905).
II. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ackner, Campbell, Inoue, Palmer, and Miller
(US 3,134,366; issued May 26, 1964).
ANALYSIS
Rejection I
Analogous Art — Inoue
Appellant argues that the Examiner improperly relied on Inoue
because Inoue is non-analogous art. Appeal Br. 10-12; see also Reply
Br. 4-5. In support, Appellant submits that the field of endeavor of
Appellant’s invention (i.e., a pool-water heater manifold) is different from
the field of endeavor of Inoue’s invention (i.e., vehicle air conditioning
systems). Reply Br. 5. Appellant also submits that Inoue’s invention is
“directed to purposes wholly different from the [jclaimed invention” (id.
(citations omitted)), because the claimed invention addresses the problems
of reducing “head loss in a pool-water recirculation system [and] erosion or
corrosion of components of a pool-water heater, by redirecting pool water
away from an inactive heating device,” whereas Inoue’s automotive hot-
water heating apparatus “acts in response to pressure differences between
portions of a heat exchanger so as to dampen differences caused by
3
Appeal 2017-000526
Application 14/027,330
rotational speed of the vehicle engine.” Appeal Br. 11 (citing Inoue [4]:5—
12). The Examiner responds that Inoue is in the same field of endeavor as
Appellant’s invention: “water circulation loops in the field of water heating
system[s],” and teaches “loop bypass mechanisms.” Ans. 9.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation omitted). In an
obviousness rejection, it is the PTO’s burden to establish that a reference is
analogous art. See In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
Appellant correctly identifies the two-prong test for defining the scope of
analogous prior art: (1) “whether the art is from the same field of endeavor,
regardless of the problem addressed,” and (2) even “if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Klein, at 1348 (internal citation omitted). The “field of
endeavor” test ask s if the structure and function of the prior art is
would be considered by a person of ordinary skill in the art because of the
similarity to the structure and function of the claimed invention as disclosed
in the application. In re Bigio, 381 F.3d 1320, 1325-27 (Fed. Cir. 2004); see
also In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986) (determining that
the cited references were within the same field of endeavor where they
“have essentially the same function and structure”). “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
4
Appeal 2017-000526
Application 14/027,330
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“In other words, ‘familiar items may have obvious uses beyond their
primary purposes.”’ In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1380 (Fed. Cir. 2007) (quoting KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007)).
We are not apprised of error in the Examiner’s determination that
Inoue is in the same field of endeavor as Appellant’s claimed invention:
“flow by-pass systems and assemblies,” and methods, including, for
example, “manifolds for allowing flowing water to by-pass heat
exchangers.” Spec. 1 (“Field of Invention”). In support, we determine that
the structure and function of Inoue’s automotive hot-water heating apparatus
is such that it would be considered by a person of ordinary skill in the art
because of its similarity to the structure and function of the claimed
invention as disclosed in the Specification. Specifically, Inoue’s automotive
hot-water heating apparatus involves “a hot water flow quantity control
valve integrated as a unit with a bypass circuit” (Inoue 2:8-10) for
controlling a quantity of hot water to the heat exchanger {id., Abstract).
Thus, both the structure and function of Inoue’s manifold is similar to
Appellant’s claimed manifold, which includes a means for repositioning a
barrier (i.e., a diverter valve actuated between open and closed positions)
that obstructs passage of water to a heating device (i.e., heat exchanger),
allowing the water to by-pass the heat exchanger.
5
Appeal 2017-000526
Application 14/027,330
Regarding Appellant’s argument that the field of endeavor of the
claimed invention is limited to “a pool-water heater manifold” (as recited in
the preambles of independent claims 1 and 13, and as repeated in the body of
independent claim 1 and certain dependent claims), we disagree. Field of
use recitations are typically found in the preamble of claims, and the weight
given them largely depends on how the recitation is subsequently used in the
body of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305, 1306 (Fed. Cir. 1999). Here, the body of the claims fully and
intrinsically sets forth all of the limitations of the claimed manifold, and the
claim term “pool-water” merely states the purpose of the claimed manifold
for directing pool-water as opposed to other types of fluids. See Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989).
Moreover, the Specification discloses that, in addition to the problems
identified by Appellant supra, Appellant’s invention seeks to provide “a
less-costly by-pass system” by positioning the low-restriction chamber and
by-pass apparatus within the manifold, such that no separate external
plumbing is required. Spec. 3:5-10. Similarly, an object of Inoue’s
invention is to provide a heating apparatus “in which a hot water flow
quantity control valve integrated as a unit with a bypass circuit is disposed in
a hot water pipe portion outside of a heat exchanger for heating” to gain the
advantages of the invention disclosed in Japanese Patent Publication No. 61-
10327, namely, to simplify the structure of the heating apparatus. Inoue
2:8-11; see also id. 1:36^18, 2:6-12. Thus, we determine that Inoue is
6
Appeal 2017-000526
Application 14/027,330
reasonably pertinent to a particular problem with which Appellant is
involved (i.e., simplification of a water heating circulation and by-pass
system), and logically would have commended itself to Appellant’s
attention.
Accordingly, the Examiner’s reliance on Inoue as analogous art is
proper.
Analogous Art — Palmer
Appellant similarly argues that Palmer “is wholly unrelated to
[Appellant’s] objectives, describing instead safety improvements to
refrigerators using tension-regulating springs” (Appeal Br. 11 (citing Palmer
1:9-11); see also Reply Br. 4), and that “common sense dictates that
designers of pool-water heating equipment would not look to . . .
refrigerators to solve the problems they face” (Appeal Br. 11). The
Examiner responds that Palmer is in the same field of endeavor as
Appellant’s invention: “fluid flow systems with inline valves.” Ans. 9.
As with Appellant’s arguments concerning Inoue discussed supra, we
are not apprised of error in the Examiner’s determination that Palmer is in
the same field of endeavor as Appellant’s claimed invention: flow by-pass
systems, assemblies, and methods. In support, we determine that the
structure and function of Palmer’s refrigeration apparatus is such that it
would be considered by a person of ordinary skill in the art because of its
similarity to the structure and function of the claimed invention as disclosed
in the Specification. Specifically, Palmer discloses a manifold within a fluid
circuit for controlling fluid flow into and out of the manifold, and from one
7
Appeal 2017-000526
Application 14/027,330
device in the circuit (i.e., a condenser) to another (i.e., a refrigerator),
including a valve (i.e., valve G) for controlling fluid flow through the
manifold, as well as a pressure-relief valve (i.e., valve 6) for controlling a
by-pass circuit within the manifold. See Palmer 1:31-32, 44^46, Fig. 2.
Palmer’s manifold is both similar in structure and function to the claimed
pressure relief and by-pass valves (i.e., poppet valve assembly 36 and gate
42) within the claimed manifold.
Moreover, the Specification discloses that, in addition to the problems
identified by Appellant supra, Appellant’s invention seeks to “protect [the
low-restriction chamber and by-pass apparatus within the manifold] from
damage” by positioning the low-restriction chamber and by-pass apparatus
within the manifold. Spec. 3:7-9. Similarly, an object of Palmer’s
invention is to provide a manifold with a “by-pass passage with its valve
under regulatable tension,” such that “undue pressure will relieve it without
injury to the apparatus.” Palmer 1:86—88. Thus, we determine that Palmer
is also reasonably pertinent to a particular problem with which Appellant is
involved (i.e., preventing damage to fluid circulation and by-pass systems),
and logically would have commended itself to Appellant’s attention.
Accordingly, the Examiner’s reliance on Palmer as analogous art is
proper.
Independent claim 1 and dependent claims 2, 3, and 19
Appellant argues claims 1-3 and 19 as a group. Appeal Br. 9-12. We
select independent claim 1 as a representative claim, and claims 2, 3, and 19
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
8
Appeal 2017-000526
Application 14/027,330
Regarding independent claim 1, the Examiner finds, inter alia, that
Ackner generally discloses the claimed manifold (i.e., solar assisted heat
pump system 400), including a barrier (i.e., valve 454) for diverting fluid.
Final Act. 3 (citing Ackner 52, Fig. 6). The Examiner further finds that
Campbell discloses a diverter valve as a rotary barrier and that it would have
been obvious to have provided the device of Ackner with a rotary barrier to
provide an easily operable diverter. Id. (citing Campbell, Figs. 1-3). The
Examiner determines that “[t]he diverter of Ackner as modified [by
Campbell] would be able to prevent flow to [a] heating device when the
heating device is inoperative,” as claimed, and that “[t]he diversion of water
to the bypass when [the] heater is inoperative would have been an obvious
logical mode of operation in Ackner as modified.” Id. at 3—4 (emphasis
added).
Appellant argues that “none of the cited references is concerned with
by[-]passing a pool-water heating device when the heating device is
inoperative,” as required by claim 1. Appeal Br. 9. Appellant submits that
although Campbell discloses a diverter valve with an axle, Campbell’s valve
“[i]n no way . . . act[s] to help position the corresponding valve based on
whether a heating device is, or is not, inoperative.” Id. at 10.
The Examiner responds that Ackner teaches a means for repositioning
a barrier when the heating device is inoperative, as claimed, by disclosing
that ‘“[w]hen there is insufficient light, as determined by a control system,
the solar heater assemblies 410, 412 will be bypassed by operating the
bypass valve 454,”’ such that “the actuation mechanism of the valve 454
9
Appeal 2017-000526
Application 14/027,330
constitute^] the means of bypassing a pool-water heating device when the
heating device is inoperative.” Ans. 7 (citing Ackner 109). The Examiner
also determines that, in view of Ackner’s teaching, this mode of operation
“is also an inherent functional feature disclosed [by Ackner].” Id. at 8; see
also Ackner 55 (“If the photoelectric sensor indicates sufficient light, the .
. . bypass valve 454[] opens . . . and the gas is routed through the solar heater
assemblies 410, 412) (emphasis added); id. ^[ 62 (‘‘If the photo sensor senses
insufficient light, [bypass valve] 454 will close and the heat pump will
operate without solar assist.”) (emphasis added).
Appellant replies that the Examiner still fails to establish that would
have been din obvious logical mode of operation.” Reply Br. 2.
Notably, Appellant’s arguments do not apprise us of error in the
Examiner’s determination, as set forth supra, that Ackner’s solar heater
assemblies 410, 412 (and not Ackner’s heat exchanger 420) disclose a
heating device, as claimed. See, e.g., Ackner, Abstract (“A solar collector
assembly comprises a plurality of heater collection tubes.”). In addition,
Appellant does not provide any argument or evidence as to why the
Examiner’s determination that Ackner’s disclosure of the solar heater
assemblies 410, 412 having insufficient light is not the same as a heating
device being “inoperative,” as claimed. Rather, a preponderance of evidence
supports the Examiner’s determination that by disclosing that solar panels
assemblies 410, 412 have “insufficient light,” Ackner discloses that solar
panel assemblies 410, 412 (i.e., the claimed heating device) are
“inoperable,” as claimed, and thus, also that bypassing a heating device
10
Appeal 2017-000526
Application 14/027,330
when the heating device is inoperable is an obvious (or known) mode of
operation. See Ackner 109 (“When there is insufficient light, . . . the solar
heater assemblies 410, 412 will be bypassed by operating the bypass valve
454.”). In other words, by disclosing that solar heater assemblies 410, 412
have “insufficient light,” Ackner discloses that solar heater assemblies 410,
412 do not have enough light to operate. Moreover, Inoue provides further
support that it is known to bypass a heating device when the heating device
is not operating. See Inoue, Table (disclosing that Inoue’s hot water outlet
22 to heat exchanger 3 is “FULL CLOSED” and Inoue’s bypass circuit is
“FULL OPEN” during a “NON-HEATING OPERATION.”); see also
Campbell 1:7-11 (generally disclosing that it is known to use diverter valves
in pool installations for various reasons, including to “selectively divert
water through jets, filters, and other devices or water paths”); Miller 1:54-
56, 2:68-71 (generally disclosing that it is known to by-pass the heating
portion of the heater in continuous flow heaters for swimming pools “in
proportion to the amount that the temperature of the fluid leaving the heating
portion of the heater is less than a predetermined temperature”).3
Further, Appellant argues that Ackner’s bypass valve 454 “does not
cause pool water to bypass an inactive heating device,” but instead,
3 Notably, Hornsby (US 6,695,970 B2; issued Feb. 24, 2004), which is
incorporated by reference into the Specification, also discloses using an
actuating valve 10 to bypass pool water from fully circulating to heater unit
56 when the heater unit is switched off (i.e., inoperative). See Hornsby
5:31-6:4; Spec. 2:15-21.
11
Appeal 2017-000526
Application 14/027,330
“allow[s] a heat-transfer medium to bypass assistive solar assemblies 410,
412.” Id. at 3 (citing Ackner 52, 109). Appellant submits that
no way exists in the Ackner application to bypass heat exchanger
420 by shunting pool water directly from supply conduit 810 to
return conduit 812. Instead, pool water flowing in supply conduit
810 will always flow through heat exchanger 420, regardless of
whether valve 454 is open or closed and regardless of whether
heat exchanger 420 is operative or inoperative.
Id. (emphasis omitted).
Although Appellant’s interpretation of Ackner’s flow by-pass system
is correct, Appellant’s argument that Ackner’s flow by-pass system involves
a heat transfer medium instead of pool water, as claimed is presented for the
first time in the Reply Brief, and Appellant has not shown good cause as to
why the argument could not have been presented in the Appeal Brief.
Contrary to the characterization presented by Appellant in the Reply Brief,
the Examiner’s findings as to the disclosure in Ackner did not change
between the Final Action and the Answer. As set forth supra, the
Examiner’s findings that Ackner’s flow by-pass system corresponds to the
claimed manifold and Ackner’s bypass valve 454 corresponds to the claimed
barrier are set forth in the Final Action, and the Examiner’s Answer does not
present additional findings regarding these specific claim limitations. See
Final Act. 3; Ans. 3—4, 7-8; Appeal Br. 9-10; Reply Br. 2^1. See 37 C.F.R.
§ 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal). Notwithstanding that we consider Appellant’s argument as
waived, Appellant’s argument is moot in view of our determination that the
12
Appeal 2017-000526
Application 14/027,330
limitations involving “pool water” are a recitation of intended use, which are
not given patentable weight, as discussed supra.
Appellant also argues that the Examiner improperly relied on
hindsight. Appeal Br. 12. In support, Appellant contends that
only by reading [Appellant’s Specification] would one think to
modify the otherwise-conventional valving of the Ackner
application to include all of (1) the valve structure of the
Campbell patent, (2) the pressure-based valve of the Inoue
patent, and (3) the feed-[back] valve (G) and second valve (6) of
the Palmer patent. Or stated differently, the only “facts”
supporting the Examiner’s contention are impermissibly gleaned
directly from [Appellant’s Specification] rather than from the
prior art.
Id.
We are not persuaded by Appellant’s argument. As determined by the
Examiner, Ackner discloses a manifold (i.e. solar assisted heat pump system
400) with an inlet and an outlet for receiving and transferring fluid from one
component to another component in a fluid system, or as stated by the
Examiner, “in fluid communication with other components of pool-water
circulation system.” Final Act. 3. The Examiner also finds that Ackner’s
bypass valve 454 (i.e., diverter valve) corresponds to the claimed barrier
(i.e., diverter valve). Id. The Examiner relies on Campbell for disclosing
“details of [a] diverter valve” (i.e., axle 80 attached to a rotary barrier) and
reasons that it would have been obvious to provide Ackner’s bypass valve
454 with the details of Campbell’s diverter valve “to provide an easily
operable rotary diverter.” Id. at 3 (citing Campbell, Figs. 1-3). Appellant’s
hindsight argument does not address the Examiner’s findings or reasoning
13
Appeal 2017-000526
Application 14/027,330
with respect to Campbell, and thus, does not apprise us of error in the
Examiner’s finding or reasoning.
Further, the Examiner relies on Inoue for disclosing a pressure relief
valve in a system that also has a diverter valve, and reasons that it would
have been obvious to modify Ackner’s fluid flow system (as modified by
Campbell) to include a pressure relief valve, as taught by Inoue, “to prevent
overpressure.” Final Act. 4 (citing Inoue Fig. 12B). Appellant’s hindsight
argument does not address the Examiner’s findings or reasoning with respect
to Inoue, and thus, does not apprise us of errors in the Examiner’s finding or
reasoning.
Still further, the Examiner relies on Palmer for disclosing a pressure
relief valve (i.e., poppet valve 10) in a single manifold chamber, and reasons
that it would have been obvious to have provided a fluid flow device, with
both valves in the single manifold chamber as taught by Palmer “to provide
a compact device.” Final Act. 4. Appellant’s hindsight argument does not
address the Examiner’s findings or reasoning with respect to Palmer, and
thus, does not apprise us of errors in the Examiner’s finding or reasoning.
In sum, we are not persuaded that the Examiner’s proposed
combination involves impermissible hindsight, because the Examiner cites
teachings in the references, and does not rely on Appellant’s Specification,
in articulating reasons for combining the references.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2, 3, and 19 fall therewith.
14
Appeal 2017-000526
Application 14/027,330
Rejection II
Appellant argues claims 13 and 14 as a group. Appeal Br. 12-13. We
select independent claim 13 as a representative claim, and claim 14 stands or
falls with claim 13. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant relies on the arguments presented supra, as applied to
independent claim 1 for the patentability of independent claim 13. For the
same reasons stated supra, we are not persuaded by Appellant’s arguments.
In addition, Appellant argues that the Examiner’s reliance on Miller does not
cure the deficiencies in the Examiner’s findings and reasoning with respect
to Rejection I. Because we do not agree that the Examiner’s findings and
reasoning are deficient with respect to Rejection I, we are not persuaded by
Appellant’s argument.
Accordingly, we sustain the Examiner’s rejection of independent
claim 13, and claim 14 falls therewith.
DECISION
The Examiner’s decision to reject claims 1-3, 13, 14, and 19 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)(l)(iv).
AFFIRMED
15