Ex Parte Moskun

Board of Patent Appeals and Interferences

Feb 7, 2012

11434429 (B.P.A.I. Feb. 7, 2012)

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.
11/434,429 05/15/2006 Peter Moskun 14316-8 3938
757 7590 02/08/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
COLEMAN, KEITH A
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
02/08/2012 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 PETER MOSKUN
________________

Appeal 2009-012773
Application 11/434,429
Technology Center 3700
________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-24. We have jurisdiction under 35 U.S.C. 3
§ 6(b).4

1 The Appellant identifies the real party in interest as Ansul Canada
Limited of Toronto, Ontario, Canada.
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We sustain the Examiner’s rejection of claims 7-21 under 35 U.S.C. 1
§ 103(a) as being unpatentable over Springer (US 5,765,995, issued Jun. 16, 2
1998) and Avdenko (US 3,657,720, issued Apr. 18, 1972).2 We do not 3
sustain the Examiner’s rejection of claims 1, 3, 5 and 6 under 35 U.S.C. 4
§ 102(b) as being anticipated by Avdenko; claim 2 under § 103(a) as being 5
unpatentable over Avdenko; and claims 4 and 22-24 as being unpatentable 6
over Avdenko and Springer. 7
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW 8
GROUND OF REJECTION against claim 1 under § 102(b) as being 9
anticipated by Gergek (US 6,568,425 B2, issued May 27, 2003). 10
Claim 7 is illustrative of the claims on appeal: 11
7. A method for remotely starting a 12
pump system, the pump system comprising an 13
engine, a pump end driven by the engine, and a 14
remote starter communicatively coupled to the 15
engine, the method comprising: 16
providing a start signal from the remote 17
starter to the engine; 18
starting the engine upon receipt of the start 19
signal; 20
detecting at least one of fluid pressure at the 21
pump end, fluid flow from the pump end, and 22
engine vibration; 23
comparing the at least one of fluid pressure 24
at the pump end, fluid flow from the pump end, 25
and engine vibration to a respective determined 26
threshold; and 27

2 We note that the Examiner’s reasoning relies on Springer as the
primary reference in rejecting claims 7-20 and on Avdenko as the primary
reference in rejecting claim 21. (See Ans. 6 and 8).
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transmitting a confirmation signal from the 1
remote starter if the at least one of fluid pressure at 2
the pump end, fluid flow from the pump end, and 3
engine vibration are within the predetermined 4
threshold. 5
6
ISSUES 7
The Appellant groups the rejections of claims 8-20 with that of claim 8
7. (See Br. 28). On the other hand, the Appellant argues the rejection of 9
each of claims 21-24 separately. (Br. 23-26). Only issues and findings of 10
fact contested by the Appellant will be addressed. See Ex Parte Frye, 94 11
USPQ2d 1072, 1075-76 (BPAI 2010). 12
First, has the Examiner shown that Avdenko describes a 13
remote starting system including a remote starter controller 14
configured to prime an engine-driven pump prior to 15
transmitting an engine start signal? (See Br. 17). 16
Second, does Gergek describe the subject matter of claim 17
1? 18
Third, do the evidence and technical reasoning 19
underlying the rejection of representative claim 7 adequately 20
support the conclusion that the subject matter of claim 7 would 21
have been obvious from the combined teachings of Springer 22
and Avdenko? (See Br. 26-28). 23
Fourth, is the subject matter of claim 21 limited to a 24
combination including an engine and a pump rotatably coupled 25
to the engine as recited in the preamble? (See Br. 20-26; 26
Ans. 19).27
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FINDINGS OF FACT 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. 3
4
Avdenko 5
1. Avdenko describes a system for remotely starting and stopping 6
a vehicle internal combustion engine. (See generally Avdenko, col. 1, ll. 63-7
64 and fig. 1). 8
2. Avdenko’s system includes a portable remote radio transceiver 9
10 containing a single channel transmitter 12 and a receiver 14. The system 10
also includes a vehicle transceiver 16 permanently mounted on a vehicle. 11
The vehicle transceiver 16 also contains a single channel transmitter 18 and 12
a receiver 20. (Avdenko, col. 2, ll. 5-9). 13
3. Avdenko discloses that an engine running detector 28 monitors 14
the vehicle generator 44. When the engine running detector 28 detects that 15
the engine is turning over at an RPM higher than a maximum possible 16
cranking RPM, it communicates a signal to the run indication controller 54. 17
(Avdenko, col. 2, ll. 45-48 and col. 2, l. 74 – col. 3, l. 4). 18
4. The transmitter 12 of the remote radio transceiver 10 is 19
configured to send a start command radio signal to the receiver 20 of the 20
vehicle transceiver 16 in response to a user input. If the receiver 20 detects a 21
start command radio signal at a time when the engine running detector 28 22
and the run indication controller 54 detect that the vehicle engine is not 23
running, the receiver 20 initiates a series of electrical signals which 24
ultimately reach a throttle actuator timer 30. (See Avdenko, col. 2, ll. 9-13 25
and 21-25). 26
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5. Avdenko discloses that the throttle actuator timer 30 then 1
“supplies a signal to a throttle actuator 32 for a specified time to fully open 2
the vehicle throttle to permit the carburetor choke and the fast idle cam to be 3
positioned for starting and the accelerator pump shot to be ejected.” 4
(Avdenko, col. 2, ll. 26-30; see also id., col. 5, ll. 4-9). The two cited 5
passages appear to provide Avdenko’s only description of the accelerator 6
pump. The passage at column 1, lines 23-31 of Avdenko refers to priming 7
the vehicle engine but not to any structure or method for priming an engine-8
driven pump. 9
6. Once the engine running detector 28 signals the run indication 10
controller 54 that the engine is running, the run indication controller 54 11
initiates a series of signals which cause the transmitter 18 of the vehicle 12
transceiver 16 to send a pulsing signal to the receiver 14 of the remote radio 13
transceiver 10. The pulsing signal indicates that the engine is running. 14
(Avdenko, col. 2, l. 74 – col. 3, l. 4). 15
16
Springer 17
7. Springer describes a pump control system 10 for controlling 18
and monitoring an engine-powered pump system. The system 10 includes a 19
control unit 15. (Springer, col. 4, ll. 11-14). The control unit 15, as depicted 20
in Figure 2 of Springer, is remote from the engine in the sense that the 21
control unit 15 is separate from the engine. The control unit 15 sends a start 22
signal to the engine driving the pump at the beginning of a pumping 23
sequence by supplying electrical power to an engine ignition 91 and a crank 24
relay 35. (Springer, col. 5, ll. 9-19). 25
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8. Springer teaches that an engine-powered pump system may be 1
used intermittently for fluid level control in a remote or hazardous 2
environment. (Springer, col. 1, ll. 35-37 and 47-50; col. 2, ll. 7-12). 3
Springer additionally teaches that it is desirable to provide a pump control 4
system which automatically starts and stops the engine as needed to provide 5
fluid level control while permitting an operator to remotely monitor the 6
status of the engine and the pump. (Springer, col. 1, ll. 59-65 and col. 2, ll. 7
16-23). 8
9. Springer’s pump control system 10 uses a bank 80 of color-9
coded strobe lights to permit an operator to remotely monitor the status of 10
the engine and the pump. (Springer, col. 7, ll. 25-37 and 48-49). For 11
example, Springer teaches the lighting of a green light to indicate that the 12
pump is pumping. (Springer, col. 7, ll. 49-51). 13
10. Springer acknowledges that a wireless radio control system can 14
allow for remote monitoring. Springer criticizes the use of a wireless radio 15
control system to control an individual engine-powered pump system only 16
on the basis that such control systems are complex and costly. (Springer, 17
col. 2, ll. 12-15). 18
11. Springer teaches a control system which uses single or dual 19
floats to automatically start and stop the engine driving the pump to control 20
water level around the engine-powered pump system. (See generally 21
Springer, col. 8, ll. 15-52). Springer does not criticize control systems 22
having alternative automatic and manual control modes, however. On the 23
contrary, Figure 2 of Springer appears to depict the local control unit 15 as 24
having a knob 100 capable of selecting between automatic control modes 25
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112, 113, 131 and a manual control mode 106. (Cf. Springer, col. 8, ll. 59-1
61 (describing the use of the knob 100 to select an automatic control mode)). 2
12. Springer teaches providing the engine drive-pump system 10 3
with a pump pressure-sensor 66 for monitoring the pressure inside the pump 4
and a head pressure sensor 67 for monitoring the pressure on the output side 5
of the pump. Springer additionally teaches determining if the pump is 6
running by comparing the pressure at the output side of the pump with the 7
pressure inside the pump. (Springer, col. 6, ll. 56-65). 8
9
Gergek 10
13. Figure 8 of Gergek depicts a remote starting system for an 11
engine-driven pump. The engine-driven pump comprises a reversible 12
electric motor 151 which is coupled to, and adapted for driving, a pump 150. 13
(Gergek, col. 14, ll. 25-29). The engine driven pump is used to supply water 14
to a pot 70 for a potted plant. (See Gergek, col. 14, ll. 54-59). 15
14. The remote starting system depicted in Figure 8 has a remote 16
starter controller. The remote starter controller includes a main controller 17
unit 152; a remote controller 34; a proportional solenoid valve 185; and a 18
water flow meter 168. (Gergek, col. 14, ll. 25-30 and 34-40). Gergek 19
discloses electronically connecting the main controller unit 152 with the 20
electric motor 151; the proportional solenoid valve 185; and the water flow 21
meter 168. (Gergek, col. 14, ll. 45-48). 22
15. During a water supply session, the proportional solenoid valve 23
185 is signaled to partially open when a requested flow rate is selected by 24
using the remote controller 34. (Gergek, col. 14, ll. 54-59; see also id., col. 25
5, ll. 30-36). The opening of the proportional solenoid valve 185 allows 26
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water from a water tap 192 to flow through the valve 185 to the pump 150. 1
(See Gergek, col. 14, ll. 36-42 and fig. 8). Then, the pump 150 is driven by 2
the electric motor 151 in order to supply water from the water tap 192 to the 3
plant pot 70. (Gergek, col. 14, ll.54-59). 4
16. Gergek discloses that the main controller unit 152 signals the 5
proportional solenoid valve 185 to close and the electric motor 151 to stop 6
when the water temperature falls outside a predetermined range. (Gergek, 7
col. 15, ll. 3-9). This disclosure implies that the main controller unit also 8
starts the water supply session. That is, the main controller unit 152 signals 9
the proportional solenoid valve 185 to open and then sends a start signal to 10
the electric motor 151 in response to a remote start signal from the remote 11
controller 34 indicating the selection of a requested flow rate. 12
17. Gergek’s water flow meter 168 measures the water flow rate at 13
the outlet of the pump 150. (Gergek, col. 14, ll. 62-64 and fig. 8). The 14
remote controller 34 displays the flow rate value measured by the water flow 15
meter 168. (Gergek, col. 14, ll. 62-64). Since the water flow meter 168 16
appears to communicate electronically only with the main controller unit 17
152 (see Gergek, col. 14, ll. 45-48 and fig. 8), the main controller unit 152 18
must wirelessly transmit a signal representing the water flow value measured 19
by the water flow meter 168 to the remote controller 34. 20
18. Figure 5 of Gergek depicts an alternative remote starting system 21
for an engine-driven pump comprising a reversible electric motor 151 which 22
is coupled to, and adapted for driving, a pump 150. (Gergek, col. 10, ll. 41-23
42 and 61-63). 24
19. While describing the system depicted in Figure 5, Gergek 25
teaches that most pumps will not run properly or will be damaged if operated 26
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when dry. Gergek further teaches momentarily turning on a solenoid valve 1
134 connecting a low pressure water tank 136 with the pump 150 to 2
automatically prime the pump 150. (Gergek, col. 12, ll. 48-53). 3
4
ANALYSIS 5
First Issue 6
Claim 1 recites: 7
1. A remote starting system for an 8
engine-driven pump comprising: 9
a starter controller communicatively coupled 10
to the engine-driven pump, and configured to 11
transmit an engine start signal to the engine, 12
wherein the starter controller is 13
remote from the engine-driven pump, the 14
remote starter controller is configured to 15
prime the engine-driven pump prior to 16
transmitting the engine start signal; 17
an engine start sensor communicatively 18
coupled to the engine and configured to determine 19
whether the engine started in response to the 20
engine start signal; and 21
an engine start indicator configured to 22
indicate to a user that the engine has started in 23
response to the engine start signal. 24
(Emphasis added.) 25
The Examiner finds that Avdenko describes a remote starter control 26
“configured to prime the engine-driven pump (i.e. accelerated pump actuated 27
by the throttle actuator 32) prior to transmitting the engine start signal (Col. 28
1, Lines 20-30).” (Ans. 4 (emphasis omitted)). The brief description which 29
Avdenko provides concerning the accelerator pump (see FF 5) provides no 30
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indication how the accelerator pump might be primed, if at all. In particular, 1
Avdenko does not describe a remote starting system including a remote 2
starter controller configured to prime the accelerator pump prior to 3
transmitting an engine start signal. We do not sustain the rejection of claims 4
1, 3, 5 and 6 under § 102(b) as being anticipated by Avdenko. 5
The Examiner’s rejection of claim 2 relies on the findings made in 6
support of the rejection of claim 1. The Examiner fails to articulate a 7
persuasive reason why one of ordinary skill in the art might have modified 8
Avdenko’s system to provide a remote starting system including a remote 9
starter controller configured to prime the accelerator pump prior to 10
transmitting an engine start signal. We do not sustain the rejection of claim 11
2 under § 103(a) as being unpatentable over Avdenko. 12
In rejecting claim 4, the Examiner cites Springer for the disclosure of 13
a fluid level sensor and an engine-driven pump. (Ans. 6). The Examiner 14
concludes that it would have been obvious “to substitute the pump of 15
Avdenko et al. with an engine-driven pump with a fluid level sensor in view 16
of the teaching to Springer, in order to monitor critical fluid levels (Col. 1, 17
Lines 29-30, Col. 2, Lines 12-15) via wireless radio control.” (Id.) The 18
Examiner’s reasoning does not articulate why one of ordinary skill in the art 19
might have configured a remote starter controller to prime the engine-driven 20
pump prior to transmitting an engine start signal. We do not sustain the 21
rejection of claim 4 under § 103(a) as being unpatentable over Avdenko and 22
Springer. 23
24
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Second Issue 1
We enter a new ground of rejection against claim 1 under § 102(b) as 2
being anticipated by the system depicted in Figure 8 of Gergek. Figure 8 of 3
Gergek depicts a remote starting system for an engine-driven pump, namely, 4
the pump 150 driven by the electric motor or engine 151.3 (FF 13). The 5
remote starting system depicted in Figure 8 includes a remote starter 6
controller. The remote starter controller includes a main controller unit 152; 7
a remote controller 34; a proportional solenoid valve 185; and a water flow 8
meter 168. (FF 14). The remote starter controller is remote from the electric 9
motor 151 in the sense that the components of the remote starter controller 10
are separate from the electric motor 151. (See Spec., para. [0014] (formally 11
defining the term “remotely” as “separate from the engine-driven pump 100, 12
but not necessarily at a great distance from engine-driven pump 100)). 13
The starter controller is communicatively coupled to the engine-driven 14
pump in the sense that the main controller unit 152 is electronically 15
connected to the electric motor 151. (FF 14). Furthermore, the starter 16
controller or, more specifically, the main controller unit 152, is configured to 17
transmit an engine start signal to the engine. (See FF 15 and 16). The starter 18
controller is configured to prime the pump 150 in the sense that the main 19
controller unit 152 is configured to open the proportional solenoid valve 185 20
to supply water from the water tap 192 to the pump 150 prior to transmitting 21

3 The Specification describes the engine 102 of the preferred engine-
driven pump 100 as being, “for example, an internal combustion engine.”
(Spec., para. [0010]). This description implies that the term “engine” as
used in claim 1 encompasses a broader range of engines than merely internal
combustion engines. Nothing in the Specification appears inconsistent with
interpreting the term “engine” sufficiently broadly to encompass an electric
motor.
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a start signal to the electric motor 151. (FF 15 and 16). The teachings of 1
Gergek indicate that opening a solenoid valve to supply water from a water 2
supply to the pump before the engine begins driving the pump primes the 3
pump. (Compare FF 15 with FF 19). 4
The system depicted in Figure 8 of Gergek also includes an engine 5
start sensor embodied in the water flow meter 168. The water flow meter 6
168 is communicatively coupled to the electric motor 151 in the sense that 7
the water flow meter 168 senses the flow rate of water at the outlet of the 8
pump 150 driven by the motor 151. (FF 17). The water flow meter 168 is 9
configured to determine whether the motor 151 started in response to the 10
start signal from the main controller unit 152 by detecting an increase of 11
outlet flow rate from pump 150 above an ambient level. (See id.) Gergek 12
describes the remote controller 34 as including a display which acts as an 13
engine start indicator by displaying the flow rate value measured by the 14
water flow meter 168. (FF 17). The displayed flow rate value indicates to a 15
user that the electric motor 151 has started in response to the start signal 16
from the main controller unit 152. 17
Therefore, the system depicted in Figure 8 of Gergek includes each 18
limitation of claim 1. Gergek anticipates claim 1 under § 102(b). 19
20
Third Issue 21
The Examiner finds that “Springer does not positively [disclose] a 22
remote starter communicatively coupled to the engine, and a method 23
providing a start signal from the remote starter to the engine and starting the 24
engine upon receipt of the start signal” as recited in claim 7. (Ans. 8). 25
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Instead, the Examiner finds that Avdenko teaches these limitations. (Id.; see 1
also FF 1, 2 and 4). 2
The Appellant contends that Springer teaches away from modifying 3
the Springer’s pump control system 10 to include a remote starter. (Br. 27). 4
More specifically, Springer teaches that it is desirable to provide a pump 5
control system 10 which automatically starts and stops the engine as needed 6
to provide fluid level control while permitting an operator to remotely 7
monitor the status of the engine and the pump. (FF 8). The Appellant 8
asserts that a “fundamental objective of Springer is to control the pump 9
without any operator interaction.” (Br. 27 (underlining in original)). The 10
Appellant argues that adding a remote starter to Springer’s system 10 11
“would require that the control system taught by Springer be modified so 12
significantly that Springer would no longer perform its intended purpose.” 13
(Id.) 14
Springer describes an engine-powered pump system with a pump 15
control system 10. The pump control system 10 includes a remote starter 15. 16
(FF 7). Springer’s control system 15 is remote in the sense that it is separate 17
from the engine-powered pump. (See Spec., para. [0014] (formally defining 18
the term “remotely” as “separate from the engine-driven pump 100, but not 19
necessarily at a great distance from engine-driven pump 100)). Furthermore, 20
the control system 15 provides a start signal to the engine, on receipt of 21
which the engine starts. (FF 7). Claim 7 itself does not distinguish between 22
a start signal initiated manually or a signal generated in response to 23
automatic control by the control system. Hence, Springer actually discloses 24
a remote starter communicatively coupled to the engine as well as the 25
provision of a start signal from the remote starter to the engine. 26
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Alternatively, Springer teaches the desirability of permitting remote 1
monitoring of the engine. (FF 8). Although Springer’s preferred structure 2
for providing the remote monitoring is bank 80 of strobe lights (FF 9), 3
Springer also teaches that it is known to provide remote monitoring by 4
means of a wireless radio connection (FF 10). While Springer criticizes the 5
use of a wireless radio connection for remote monitoring as complex and 6
costly (id.), the cost of a particular modification in and of itself is not 7
typically presumed sufficient to discourage one of ordinary skill in the art 8
from adopting the modification. See In re Farrenkopf, 713 F.2d 714, 718 9
(Fed. Cir. 1983). 10
Indeed, Springer and Avdenko teach the use of similar structure, 11
namely, wireless connections, to perform similar functions, namely, the 12
control or monitoring of an engine. (Compare FF 10 with FF 4 and 6). 13
Since Springer and Avdenko describe similar structure performing similar 14
functions, one of ordinary skill in the art likely would have turned to 15
Avdenko for guidance in monitoring the pump control system as disclosed 16
by Springer. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). The 17
Examiner correctly concludes that it would have been obvious to modify 18
Springer’s pump control system 10 “with a remote starter that transmits and 19
receives a start and confirmation signal in view of the teaching to Avdenko 20
et al., in order to provide indication that [the start] radio signal has been 21
received by the receiver.” (Ans. 8-9). 22
Springer does not teach away from combining automatic and manual 23
control modes for controlling an engine-powered pump used for fluid level 24
control. In particular, Springer does not criticize the use of a control system 25
having both automatic and manual control modes. On the contrary, Figure 2 26
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indicates that Springer’s preferred system itself may possess a knob 100 for 1
switching between automatic and manual control modes. (FF 11). 2
Furthermore, modifying Springer’s pump control system 10 to provide 3
alternative automatic or manual control modes would not prevent Springer’s 4
pump from operating in the automatic control modes without operator 5
interaction. 6
The Appellant additionally argues that: 7
Avdenko’s teachings lack the claimed transmitting 8
a confirmation signal from the remote starter if at 9
least one of the fluid pressure in the pump end, 10
fluid flow from the pump end, and engine 11
vibration are within the predetermined threshold. 12
As such, there is no reason, need, or advantage in 13
modifying Springer’s remote relay to transmit a 14
confirmation signal to a remote starter since any of 15
the water sensing device, the pump pressure 16
sensor, and the head pressure sensor are configured 17
to automatically deactivate the pump under 18
predetermined conditions. 19
(Br. 28). 20
Springer teaches remotely indicating to an operator monitoring the 21
pump whether the pump is pumping. (See FF 9). Avdenko similarly teaches 22
transmitting a confirmation signal from the pump control system to indicate 23
when the pump is pumping. (See FF 6). While Avdenko discloses 24
determining whether the pump is pumping by comparing engine RPM with a 25
threshold value (see FF 3), Springer teaches determining whether the pump 26
is pumping by a comparison involving a pressure detected at the pump (FF 27
12). In view of these teachings, the Examiner correctly concludes that it 28
would have been obvious to modify Springer’s control system 10 “with a 29
transmitting confirmation signal from the remote starter if the pressure at the 30
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pump end [is] within the predetermined threshold.” (Ans. 8). We sustain 1
the rejection of claims 7-20 under § 103(a) as being unpatentable over 2
Springer and Avdenko. 3
4
Fourth Issue 5
Claim 21 recites: 6
21. A starter assembly for an engine-7
driven pump having an engine comprising a 8
starting system and a pump rotatably coupled to 9
the engine, the starter assembly comprising: 10
a wireless handheld transmitter for 11
transmitting, in response to a user input, a start 12
command; and 13
a remote starter controller communicatively 14
coupled to the starting system, said remote starter 15
controller including a receiver to wirelessly receive 16
the start command, and in response thereto, 17
transmit an engine start signal to the starting 18
system. 19
(Emphasis added.) 20
The Appellant contends that Avdenko fails to describe a “starter 21
assembly for an engine-driven pump having an engine comprising a starting 22
system and a pump rotatably coupled to the engine” and that the Examiner 23
fails to cite the teachings of Springer so as to remedy the deficiency. (Br. 24
23). The Examiner correctly responds that the quoted language merely 25
states an intended use for the claimed starter assembly. (Ans. 19). The 26
Appellant has not filed a Reply Brief responding to the Examiner’s claim 27
interpretation. Since the subject matter of claim 21 is not limited to a 28
combination including an engine and a pump rotatably coupled to the 29
engine, the Appellant has not provided a reason why the Examiner might 30
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have erred in concluding that the subject matter of claim 21 would have been 1
obvious from the combined teachings of Avdenko and Springer. 2
If: 3
the body of the claim fully and intrinsically sets 4
forth the complete invention, including all of its 5
limitations, and the preamble offers no distinct 6
definition of any of the claimed invention’s 7
limitations, but rather merely states, for example, 8
the purpose or intended use of the invention, then 9
the preamble is of no significance to claim 10
construction because it cannot be said to constitute 11
or explain a claim limitation. 12
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 13
1999). 14
The preposition “for” in the term “for an engine-driven pump having 15
an engine comprising a starting system and a pump rotatably coupled to the 16
engine” implies that the term merely states an intended use of the claimed 17
starter assembly. Furthermore, the only mention in the body of claim 21 of 18
any structure recited in the preamble is the recitation of a “remote starter 19
controller communicatively coupled to the starting system, said remote 20
starter controller including a receiver [sic] to . . . transmit an engine start 21
signal to the starting system.” This recitation identifies a connection 22
between the claimed starting assembly and an engine as well as a function 23
which the claimed starting system must be capable of performing with 24
respect to the engine. Neither the connection nor the function is dependent 25
on the structure of the engine, the existence of the pump or the manner in 26
which the pump may be coupled to the engine. In short, nothing in claim 21 27
objectively indicates that the Appellant intended to limit the claimed subject 28
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matter to the combination of a starting assembly, an engine and a pump as 1
opposed to the starting assembly alone. 2
Since claim 21 is not limited to a combination including an engine and 3
a pump rotatably coupled to the engine, the alleged failure of Avdenko to 4
describe these elements does not imply that claim 21 is patentable over the 5
combined teachings of Avdenko and Springer. We sustain the rejection of 6
claim 21 under § 103(a) as being unpatentable over Avdenko and Springer. 7
In rejecting claims 22-24, the Examiner fails to articulate any 8
reasoning with some rational underpinning to explain why the claimed 9
subject matter might have been obvious. (See Br. 24-26; see also Ans. 7 and 10
19-20; Final Office Action mailed Mar. 4, 2008 at 6-7). We do not sustain 11
the rejection of claims 22-24 under § 103(a) as being unpatentable over 12
Avdenko and Springer. 13
14
DECISION 15
We AFFIRM the Examiner’s decision rejecting claims 7-21. We 16
REVERSE the Examiner’s decision rejecting claims 1-6 and 22-24. 17
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW 18
GROUND OF REJECTION against claim 1 under 35 U.S.C. § 102(b) as 19
being anticipated by Gergek. 37 C.F.R. § 41.50(b) provides that, “[a] new 20
ground of rejection pursuant to this paragraph shall not be considered final 21
for judicial review.” 22
Regarding the new ground of rejection, the Appellant must, WITHIN 23
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of 24
the following options with respect to the new ground of rejection, in order to 25
avoid termination of the appeal as to the rejected claims: 26
Appeal No. 2009-012773
Application No. 11/434,429

19
(1) Reopen prosecution. Submit an 1
appropriate amendment of the claims so rejected or 2
new evidence relating to the claims so rejected, or 3
both, and have the matter reconsidered by the 4
examiner, in which event the proceeding will be 5
remanded to the examiner . . . 6
(2) Request rehearing. Request that the 7
proceeding be reheard under § 41.52 by the Board 8
upon the same record . . . 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a). 11
12
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 13
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Klh 20