Ex Parte Mizutani

Board of Patent Appeals and Interferences

Sep 13, 2007

09933517 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MASARU MIZUTANI
__________

Appeal 2007-2640
Application 09/933,517
Technology Center 3600
__________

Decided: September 13, 2007
__________

Before ERIC GRIMES, LORA M. GREEN, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 8-29
and 44. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF CASE
Claims 8-29 and 44, which are all the pending claims, are on appeal.
The following rejections are appealed in this proceeding (Answer 3-7):
1) Claims 8-10, 16, 18, and 44 stand rejected under 35 U.S.C. §
103(a) as obvious over Meilahn (US 5,762,024, issued Jun. 9, 1998) in view
of Iseki (English translation of “Effect of Artificial Upwelling on Primary
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Production In Toyama Bay Japan,” published 1994), Nomura (English
translation of “Treatment of Atopy Skin Inflammation by Deep Sea Water,”
published 1995), and Miyamato (English translation of “High Degree of
Application for Deep Sea Water In Fishing Ports,” published 1999);
2) Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, and further in view
of Mougin (US 4,166,363, issued Sep. 4, 1979);
3) Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, and further in view of
Sibinski (US 2,641,221, issued Jun. 9, 1953);
4) Claims 15, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Meilahn in view of Iseki, Nomura, and Miyamato, and further
in view of Mougin and Sibinski;
5) Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, and further in view of
Puncochar (US 3,571,819, issued Mar. 23, 1971);
6) Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, and further in view of
Mougin, Sibinski, and Puncochar;
7) Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Meilahn in view of Iseki, Nomura, and Miyamato, and further
in view of O’Sullivan (US 5,929,538, issued Jul. 27, 1999);
8) Claims 23 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Meilahn in view of Iseki, Nomura, and Miyamato, and further
in view of Mougin, Sibinski, Puncochar, and O’Sullivan;
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9) Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, and further in view of
Atwell (US 4,536,257, issued Aug. 20, 1985);
10) Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, and further in view
of Mougin, Sibinski, Puncochar, O’Sullivan, and Atwell;
11) Claim 28 stands rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Rolfson (US 3,764,015, issued Oct. 9, 1973);
12) Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin, Sibinski, Puncochar, O’Sullivan, Atwell, and Rolfson; and
13) Claims 8-29 and 44 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking a written description.
The following claims are representative of the rejected claims:
8. A sea-water swimming pool, comprising:
a swimming pool structure floating on a sea; and
means for collecting and supplying deep-sea water
to the swimming pool structure, wherein surface-sea water and
aquatic animals are substantially excluded from said swimming
pool structure.

11. The sea-water swimming pool of Claim 8, further
comprising a propulsion device.

14. The sea-water swimming pool of Claim 8, further
comprising a plurality of extensions protruding from said
swimming pool structure and adapted to protect the swimming
pool from attacks by sea creatures.

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15. The sea-water swimming pool of [Claim 8
comprising a mooring means and a propulsion device] . . . ,
further comprising a plurality of extensions protruding from
said swimming pool structure and adapted to protect the
swimming pool from attacks by sea creatures.

20. The sea-water swimming pool of Claim 8, further
comprising means for generating and mixing air bubbles into
the deep-sea water supplied to said swimming pool.

21. The sea-water swimming pool of [Claim 15
comprising a facility for enabling fishing from the side of said
swimming pool structure], further comprising means for
generating and mixing air bubbles into the deep-sea water
supplied to said swimming pool.

22. The sea-water swimming pool of Claim 8, further
comprising means for solar power generation.

23. The sea-water swimming pool of Claim 21, further
comprising means for solar power generation.

24. The sea-water swimming pool of Claim 8, further
comprising means for wind power generation.

25. The sea-water swimming pool of Claim 23, further
comprising means for wind power generation.

26. The sea-water swimming pool of Claim 8, further
comprising a sea-water desalination plant.

27. The sea-water swimming pool of Claim 25, further
comprising a sea-water desalination plant.

28. The sea-water swimming pool of Claim 8, wherein
said means for collecting and supplying deep-sea water to the
swimming pool structure includes a check valve which only
allows an upward flow of the deep-sea water.

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29. The sea-water swimming pool of Claim 27, wherein
said means for collecting and supplying deep-sea water to the
swimming pool structure includes a check valve which only
allows an upward flow of the deep-sea water.

44. A sea-water swimming pool, comprising:
a swimming pool structure; and
means for collecting and supplying deep-sea water
to the swimming pool structure, wherein surface-sea water and
aquatic animals are substantially excluded from said swimming
pool structure.

DISCUSSION
Rejection over Meilahn in view of Iseki, Nomura, and Miyamato
Claims 8-10, 16, 18, and 44 stand rejected over Meilahn in view of
Iseki, Nomura, and Miyamato.
Meilahn describes an aquaculture system for growing aquatic animals
which comprises “[a] rigid-walled floating tank . . . positioned in a body of
water” (Meilahn, at Abstract and Fig. 3). “The tank has a cylindrical section
that creates a primary zone wherein the aquatic animals live and grow”
(Meilahn, at col. 2, ll. 1-2). “[T]he tanks may be sized to any desired
configuration” (Meilahn, at col. 3, ll. 36-37). “[I]n a preferred embodiment
each of the tanks has an inner diameter of 18 meters and a sidewall height of
8.5 meters” (Meilahn, at col. 3, ll. 37-39). The body of water may be either
fresh or salt (Meilahn, at col. 3, ll. 30-32). A pump assembly is provided for
drawing in water from the body of water and discharging water from the
tank via an outlet (Meilahn, col. 4, ll. 18-35). “[W]ater may be drawn from
different depths, such that water that is free of surface contaminants . . . is
provided to the tank” (Meilahn, col. 4, ll. 39-42).
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The Examiner contends that Meilahn’s aquaculture floating tank,
equipped with a pump assembly for drawing water from different depths,
meets the limitations of claim 8 of a “swimming pool structure floating on a
sea” and “means for collecting and supplying” sea water to the swimming
pool structure that would exclude surface sea water and aquatic animals
(Answer 8-9). The Examiner further contends that it would have been
obvious to one of ordinary skill in the art to have supplied deep sea water1 to
Meilahn’s floating tank in view of Iseki’s and Miyamato’s teachings of the
advantages of deep seawater for aquaculture and Nomura’s teaching of deep
seawater obtained from pumping stations for the treatment of atopic skin
inflammation (Answer 10).
It is the Examiner’s burden to establish prima facie obviousness.
Obviousness requires a teaching or suggestion of all the elements in a claim
(In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000)) and “a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007). Once prima facie obviousness has been
established, the burden shifts to the applicant to rebut the prima facie case
with evidence and/or argument. Hyatt v. Dudas, 492 F.3d 1365, 1369-70, 83
USPQ2d 1373, 1375-76 (Fed. Cir. 2007). Here, we find that the Examiner
has identified all the elements of claims 8 and 44, and provided a logical
reason that would have prompted the skilled worker to have combined them

1 Claim 8 recites that the means is for “supplying deep-sea water.”
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to achieve the claimed invention. Thus, the Examiner has properly shifted
the burden to Appellant to provide rebuttal evidence or arguments.
Appellant argues that “the ‘swimming pool’ of Meilahn is really a
tank ‘for growing aquatic animals’ (see column 1, lines 5-6)” and that the
Examiner’s broad interpretation of the recited “swimming pool” limitation is
unreasonable” (Reply Br. 8-9).
We find that the Examiner has the better argument. During
prosecution, claim terms are given their broadest reasonable interpretation as
they would be understood by persons of ordinary skill in the art in the
context of the specification. The Specification does not provide a specific
definition of a “swimming pool structure,” but it states that “any shape, for
example cylindrical or cubical, can be adopted as far as it floats on the sea”
(Spec. 9: 20-25). In view of this disclosure, it is our opinion that the
Examiner reasonably interpreted “swimming pool structure” broadly to
cover Meilahn’s cylindrical rigid walled tank having preferred dimensions of
18 meters wide and 8.5 meters high (Meilahn, at Abstract, col. 2, ll. 1-2, and
col. 3, ll. 37-39). Appellant has not identified any structure in Meilahn’s
tank that would make it unsuitable for swimming.
Appellant contends that the claimed swimming pool substantially
excludes aquatic animals (Reply Br. 10-11), but does not explain how this
exclusion is represented in claims 8 or 44 by a structural feature that would
distinguish the claimed swimming pool structure from Meilahn’s tank.
Thus, we do not find this argument persuasive.
In setting forth the case of prima facie obviousness, the Examiner
relied on three different references – Iseki, Nomura, and Miyamoto – for
providing the motivation to have utilized deep sea water in Meilahn’s tank.
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We find that Miyamoto’s teaching of the advantages of deep sea water for
aquaculture (Miyamoto, at 2) is alone sufficient to have established a reason
to have modified Meilahn’s aquaculture tank by pumping deep sea water
into it, especially in view of Meilahn’s disclosure that “water may be drawn
from different depths, such that water that is free of surface contaminants . . .
is provided to the tank” (Meilahn, col. 4, ll. 39-42). Thus, we do not
consider it necessary to address the additional teachings of Iseki and
Nomura.
Appellant contends that “Miyamoto’s pool is adapted for raising fish
by including heating and cooling equipment (see pp. 9-10 . . .) to keep the
water temperature from getting to[o] high or too low for the fish. The
applicant is not aware of any swimming pool that contains such specialized
equipment for both heating and cooling” (Reply Br. 10).
We do not find this argument persuasive. The Examiner relied upon
Miyamoto for its teaching of the advantages of deep seawater (Answer 10).
Therefore, while Miyamoto describe regulating the temperature of the water
in the tank, this teaching does not detract from its other disclosure about the
benefit of deep seawater in aquaculture and its relevance to Meilahn, which
also relates to the field of aquaculture. Furthermore, Miyamoto does not
require heating and cooling equipment as stated by Appellant. Miyamoto
merely indicates that the water may be cooled or heated depending on the
type of fish cultured (Miyamoto, at 2).
Appellant also argues that “one skilled in the art of swimming pool
design and construction would have no motivation to look to fish hatchery
literature to solve swimming pool-related problems” (Reply Br. 10). We are
not convinced. “In determining whether the subject matter of a patent claim
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is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” KSR, 127 S. Ct. at 1741-42, 82 USPQ2d at 1397. See
also In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1902 (Fed. Cir.
1990) (en banc); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972) (“The fact that [applicant] uses sugar for a different purpose
does not alter the conclusion that its use in a prior art composition would be
prima facie obvious from the purpose disclosed in the references.”). Thus,
as long as there is a reason for combining the references to achieve the
claimed invention, the rejection is sound, even when the reason for the
combination differs from Appellant’s own. In this case, Miyamoto teaches
the benefit of deep sea-water for aquaculture and Meilahn teaches an
aquaculture tank; thus, the skilled worker would have been motivated to fill
Meilahn’s tank with deep-sea water in order to improve fish yield.
For the foregoing reasons, we affirm the rejection of claims 8 and 44.
Claims 9, 10, 16, and 18 fall with claims 8 and 44 because separate reasons
for their patentability were not provided.

Rejection over Mougin
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin.
Claim 11 is drawn to the sea-water swimming pool of claim 8 which
further comprises “a propulsion device.” The Examiner contends that it
would have been obvious to outfit Meilahn’s tank with a “propulsion unit as
taught by Mougin . . . to facilitate relocation of the swimming pool structure
within a body of water” (Answer 11-12). Appellant contends that “none of
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the cited references disclose a swimming pool structure containing deep-sea
water as recited in the claims (Reply Br. 11).
The Examiner’s reference to a “swimming pool structure” (Answer
11-12) is clearly a reference to Meilahn’s aquaculture tank which we have
found meets the limitation in claim 8 of a “swimming pool structure.” The
Examiner provides a reasonable explanation as to why a person of skill in
the art would have been prompted to outfit Meilahn’s tank with a propulsion
device: to relocate it within a body of water. We agree with this reasoning
since Meilahn teaches that its aquaculture system is “independent of land
and may be positioned at any desired location” (Meilahn, abstract). Thus,
we affirm the rejection of claim 11. Claims 12 and 13 fall with claim 11
because their patentability was not separately addressed.

Rejections over Sibinski
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Sibinski.
Claims 15, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Meilahn in view of Iseki, Nomura, and Miyamato, further in
view of Mougin and Sibinski.
Claims 14 and 15 are drawn to the sea-water swimming pool of claim
8 which further comprises “a plurality of extensions protruding from said
swimming pool structure and adapted to protect the swimming pool from
attacks by sea creatures.”
The Examiner finds that Sibinski teaches the use of a plurality of
extensions to protect a structure from attack by fish (Answer 12). The
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Examiner contends that it would have been obvious to modify the device
disclosed by Meilahn with the plurality of extensions as taught by Sibinski
“to impede the movement of fish approaching the swimming pool structure”
(Answer 13).
Appellant contends that “the use of pins to impede the swimming of
fish near freshwater dams in no way suggests or motivates one of ordinary
skill in the art to attach an appendage to swimming pool structure harboring
deep-sea water for protection against attacks by sea creatures” (Reply Br.
13).
We are not persuaded that the Examiner erred in concluding that
claims 14 and 15 are further obvious in view of Sibinski. Meilahn does not
expressly state that its aquaculture tank requires protection from invading
fish present in the waters which surround the tank. However, a suggestion,
teaching, or motivation to combine the relevant prior art teachings does not
have to be found explicitly in the prior art. “[T]he teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. . . The test for an implicit showing is
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art.” In re Kahn, 441 F.3d 977, 987-988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006). Here, Meilahn’s tank is for creating a
defined environment for aquatic animals (Meilahn, at col. 3, ll. 5-12).
Consequently, it is reasonable to conclude that the skilled person would
want to exclude alien animals living in the surrounding waters from invading
the defined environment.
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Sibinski teaches a simple solution: pins to prevent fish from leaping
over a dam (Sibinski, at col. 1, ll. 31). We agree with the Examiner that a
person of ordinary skill in the art would have found Sibinski’s solution for
dams reasonably pertinent to Meilahn’s deep sea water tank because both are
present in the same environment and exposed to the same risks. See In re
Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992) (The
two criteria for evaluating whether a reference is sufficiently analogous to
the invention are “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) 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.”).
For the foregoing reasons, we affirm the rejections of claims 14 and
15. Claims 17 and 19 fall with claims 14 and 15 because they were not
separately argued.

Rejections over Puncochar
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Puncochar.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin, Sibinski, and Puncochar.
Claims 20 and 21 are drawn to the swimming pool of claim 8 which
further comprises “means for generating and mixing air bubbles into the
deep-sea water supplied” to the swimming pool.
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The Examiner finds that Puncochar teaches a means for generating
and mixing air bubbles in water (Answer 16). The Examiner contends that,
based on Meilahn’s disclosure of “the desirability of aeration in tanks (col.
5, lines 26 and 30)” (Answer 16), persons of ordinary skill in the art would
have been motivated to include such “means in the pool structure for
dissolving oxygen as desired” (Answer 17).
Appellant contends that “Puncochar does not disclose mixing bubbles
into deep-sea water. Moreover, the Puncochar swimming pool consists of
screens that allow surface sea-water to freely diffuse in and out of the pool,
and, accordingly, it is completely devoid of any suggestion to use deep-sea
water as the same would instantly mix with the surface water (thereby
defeating the purpose of the present invention)” (Reply Br. 13).
We do find Appellant’s argument persuasive. Meilahn expressly
describes the addition of oxygen and air into its tank, e.g., using an oxygen
diffuser or an air lift pump (Meilahn, at col. 4, l. 65 to col. 5, l. 30). Thus,
the suggestion to aerate deep-sea water is not provided by Puncochar as
Appellant contends, but by Meilahn. Puncochar’s teaching is relied on to
the extent that it describes a specific means for producing air bubbles in
water which would have been recognized by persons of skill in the art as an
appropriate method to aerate water as suggested by Meilahn. We find no
defect in this reasoning. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395.
Accordingly, we affirm the rejection of claims 20 and 21.

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Rejections over O’Sullivan
Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
O’Sullivan.
Claims 23 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious
over Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin, Sibinski, Puncochar, and O’Sullivan.
Claims 22 and 23 are drawn to the swimming pool of claim 8 which
further comprises a “means for solar power generation.” Claims 24 and 25
are drawn to the swimming pool of claim 8 which further comprises a
“means for wind power generation.”
The Examiner finds that O’Sullivan “teach[es] the known use of
power generation by solar and wind sources to operate domestic and
industrial facilities (col. 1, lines 38 through 52)” (Answer 18). The
Examiner contends that one of ordinary skill in the art would have been
motivated to modify the Meilahn’s device to “provide the pool with a
renewable energy system capable of use at remote locations and for reducing
operating costs” (Answer 18).
Appellant argues there would be no motivation to have utilized
O’Sullivan’s multi-mode AC power processor “because an AC power source
likely would not be available at a ‘remote location’ and a hybrid energy
system is likely to be more expensive than a single source (such as a diesel
generator)” (Reply Br. 14-15).
We are not persuaded by Appellant’s argument. The Examiner relied
upon O’Sullivan for its teaching that solar and wind power generators are
well known renewable sources of energy. The Examiner did not rely on the
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specific power processor described in O’Sullivan; thus, we do not find
Appellant’s remarks address the Examiner’s sound basis for combining the
references. Meilahn specifically discloses that its remote aquaculture system
can be supported by a service platform comprising generators (Meilahn, at
col. 6, ll. 45-51), providing the motivation to have utilized a solar or wind
generator which O’Sullivan teaches are known sources of energy for remote
locations (O’Sullivan, at col. 1, ll. 15-22). Accordingly, we affirm the
rejection of claims 22-25.

Rejections over Atwell
Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of Atwell.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin, Sibinski, Puncochar, O’Sullivan, and Atwell.
Claims 26 and 27 are drawn to the swimming pool of claim 8, further
comprising a sea-water desalination plant.
The Examiner finds that Atwell discloses a desalination system for
providing potable water (Answer 20). The Examiner contends that “it would
have been obvious to one of ordinary skill in the art of marine structures at
the time of invention to further modify the device shown by the combination
of Meilahn … [Iseki, Nomura, and Miyamato] . . . to provide a potable
source of water on the pool structure for consumption (Answer 20).
Appellant contends that “none of the cited art discloses or suggests a
deep-sea water swimming pool as claimed herein” (Reply Br. 15).
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Atwell was cited for its teaching of a desalination system for
providing water, not for teaching a deep-sea swimming pool structure.
Thus, Appellant has not identified an error in the rejection and we find none.
Accordingly, we affirm the rejections of claims 26 and 27.

Rejections over Rolfson
Claim 28 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Rolfson.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin, Sibinski, Puncochar, O’Sullivan, Atwell, and Rolfson.
Claims 28 and 29 are drawn to the swimming pool of claim 8, further
comprising “a check valve which only allows an upward flow of the deep-
sea water.”
The Examiner finds that Rolfson teaches a check valve in an air
supply tube for restricting the flow of air in one direction (Answer 22). The
Examiner contends that it would have been obvious to have included a check
valve in the deep-sea water intake valve in view of Rolfson’s teaching that it
is “advantageous for use in supply pipes for restricting flow in one direction
. . . to prevent the reversal of flow of water” (Answer 22).
Appellant argues that Rolfson’s disclosure is of a valve in an air-
supply tube to exclude water from it, not to control the direction of water
flow in a water collection pipe (Reply Br. 16).
We are not convinced by this argument. We do not read Rolfson’s
disclosure so restrictively. Rolfson’s disclosure is evidence that check
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valves were known in the art as a type of valve to restrict flow in only one
direction. The Specification’s description of a check valve as allowing only
upward water flow, without any additional enabling disclosure, indicates that
– consistent with Rolfson’s teachings – check valves were customarily used
in the art to restrict flow of air and water. The modification of Meilahn’s
pump assembly for drawing and discharging water (Meilahn, at col. 4, ll. 18-
35) with a check valve is no more than the addition of a known element for
its expected advantage in controlling water flow (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 127 S. Ct. at 1739,
82 USPQ2d at 1395.
Thus, we affirm the rejections of claims 28 and 29.

Rejection under § 112, first paragraph
Claims 8-29 and 44 stand rejected under § 112, first paragraph, as
lacking written description. The Examiner contends that the Specification as
originally filed fails to provide support for the newly added limitation
“wherein surface[-]seawater and aquatic animals are substantially excluded
from said swimming pool structure” (Answer 7-8).
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required to ‘recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 [65 USPQ2d 1385] (Fed. Cir. 2003) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 [19 USPQ2d 1111] (Fed. Cir. 1991)).
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While there is no requirement that the claimed invention be described in the
identical wording that was used in the specification, there must be sufficient
disclosure to show one of skill in this art that the inventor “invented what is
claimed.” See Union Oil Co. of California v. Atlantic Richfield Co.,
208 F.3d 989, 1000, 54 USPQ2d 1227, 1235 (Fed. Cir. 2000).
In this case, we find that the Specification supports the limitation that
surface sea-water is substantially excluded from the swimming pool
structure, but does not support the exclusion of aquatic animals.
With respect to the exclusion of surface sea-water, we agree with
Appellant that the Specification shows possession of the concept of using
only deep-sea water in its swimming pool structure (App. Br. 7-8; Spec. 3:
3-5 (“It is an object . . . to provide a pool on the sea which uses pure and
clean deep-sea water.”)) and thus one of skill in the art would recognize that
surface-sea water is to be excluded from it. In addition to emphasizing the
importance of “pure and clean deep-sea water” free from contaminants
(Spec. 11: 13-20), the Specification describes a means for maintaining the
supplied deep-sea water “fresh at all times” by continuously feeding deep-
sea water into the pool while draining it by pump (Spec. 14: 21-26),
indicating that the pool is entirely filled with deep-sea water and thus
excludes surface-sea water.
However, we do not find that the Specification supports the newly
added limitation of “wherein . . . aquatic animals are substantially excluded
from said swimming pool structure.” For support for this claim limitation,
Appellant refers to the structure disclosed in Fig. 1 and extensions 10
described on page 14 of the Specification “for frightening away sea animals”
such as sharks (App. Br. 8). In each case, the structures referred to in the
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Appeal 2007-2640
Application 09/933,517

Specification are to exclude fish and other animals that live exclusively
underneath the water. However, we interpret the phrase “aquatic animals”
more broadly to include aquatic living animals, such as aquatic birds (e.g.,
ducks) that live in aquatic habitats. There is no description in the
Specification that aquatic birds be excluded from the pool, or of a structure
that would shield the pool from aquatic birds flying in and landing on it.
The written description must be of sufficient detail to show possession of the
full scope of the invention. Pandrol USA LP v. Airboss Railway Products
Inc., 424 F.3d 1161, 1165, 76 USPQ2d 1524, 1527 (Fed. Cir. 2005). Thus,
we agree with the Examiner that there is no detailed description to show that
Appellant possessed the invention which is now claimed. We affirm the
rejection of claims 8 and 44. Claims 9-29 fall with claims 8 and 44 because
they were not separately argued.

TIME PERIOD
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)(2006).

AFFIRMED

lbg

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