Ex Parte Porat

Patent Trial and Appeal Board

Dec 21, 2016

12227395 (P.T.A.B. Dec. 21, 2016)

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.
210,045 8699
EXAMINER
BUI-HUYNH, DONOVAN C
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
12/227,395 11/13/2008
38137 7590 12/21/2016
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
Joseph Porat
12/21/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH PORAT
Appeal 2015-003885
Application 12/227,3951
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
JENNIFER R.GUPTA, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the January 27, 2014
Non-Final rejection of claims 1—13. We have jurisdiction under 35 U.S.C.
§6.
Appellant’s invention relates generally to robotic pool cleaners having
self-contained water sterilization capabilities. (Spec. 1). Claim 1 is
illustrative of the subject matter on appeal and reproduced from the Brief
below:
1 The real party in interest is Aqua Products, Inc. (App. Br. 2).
Appeal 2015-003885
Application 12/227,395
1. A pool cleaning apparatus for cleaning a
swimming pool comprising:
an exterior housing;
a drive motor for moving the cleaning apparatus along
the sidewalls and/or bottom surfaces of the pool;
a pump for circulating water through and discharging
water from the housing while the apparatus is submerged in the
pool; and
at least one source of water-sterilizing UV radiation
positioned in an interior space defined by the housing, whereby
water passing in proximity to the UV radiation source is
exposed to sterilizing radiation to reduce the amount of any
bacteria in the water that is discharged from the housing into
the pool.
The Examiner has maintained the following rejections:
Claims 1, 3, 5, 6—10, 12, and 13 under 35 U.S.C. § 103(a) as obvious
over Erlich US 2004/0168838 A1 Sept. 2, 2004, in view of Mercer US
2006/0226060 A1 Oct. 12, 2006.
Claim 11 is rejected under 35 U.S.C. § 103(a) as obvious over Erlich
and Mercer in view of Lam 2007/0012883 A1 Jan. 18, 2007.
Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as obvious over
Erlich and Mercer in view of Morgan, Jr. US 5,853,676 Dec. 29, 1998.
OPINION2
2 Appellant has principally presented arguments addressing the claims
together. Appellant has also not presented substantive argument addressing
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Application 12/227,395
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s rejections. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
We have reviewed each of Appellant’s arguments for patentability.
We sustain the Examiner’s rejection for essentially those reasons expressed
in the Non-Final Action and Answer, including the Response to Argument
section. We add the following:
We refer to the Examiner’s Non-Final Action for a complete
statement of the rejection. (Non-Final Act. 2—6).
The Examiner found Erlich teaches a swimming pool cleaning
apparatus comprising an exterior housing, a motor, a pump for circulating
the water and filter media that can be positioned within the housing. (Non-
Final Act. 3). The Examiner found Erlich differed from the claimed
invention in that at least one source of water sterilizing UV radiation
positioned in the interior space defined by the housing was not disclosed.
{Id. at 4). The Examiner found Mercer disclose UV water sanitation device
that can be built in to robotic pool cleaners. {Id. at 4—5). The Examiner
determined it would have been obvious to incorporate a UV water sanitation
separately rejected claims 2, 4, and 11. We limit our discussion to
independent claim 1 as representative of the subject matter on appeal.
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Appeal 2015-003885
Application 12/227,395
device inside a swimming pool cleaning apparatus such as described by
Erlich to increase water purification of the apparatus. {Id. at 5).
Appellant argues the modification of the Erlich device would require a
substantial reconstruction and redesign of the elements as well as a change
in the basic principle of operation. (App. Br. 10-13). Appellant argues the
Examiner’s rejection is improper because it is based on multiple distinct
embodiments of the references. {Id. at 13). Appellant also argues the
Examiner’s rejection is based on hindsight because claim 1 was improperly
used as a framework to pick and choose among individual references to
recreate the claimed invention. {Id. at 15).
Appellant’s arguments do not address the rejection as set forth by the
Examiner, which is not based upon a literal combination of the pool cleaning
apparatus of Erlich and the UV water sterilization device of Mercer. Rather,
the rejection is based on the suggestion from the combined teachings of
Erlich and Mercer of including a UV water sterilization/sanitation device in
a pool cleaning apparatus such as described by Erlich. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of a primary reference . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); and In reNievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). In the present case a person of ordinary
skill in the art would have recognized the suitability of incorporating a UV
sanitizing device in a pool cleaning apparatus as described by Mercer.
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Appeal 2015-003885
Application 12/227,395
(Mercer 179). Appellant acknowledges that Mercer discloses the suitability
of utilizing a UV device in an automatic pool cleaner. (App. Br. 13).
Appellant’s arguments regarding Mercer’s disclosure of different
embodiments describing various water purification devices is not persuasive
of reversible error (App. Br. 10—11). In the present case it is not disputed
the Erlich describes a cleaning device that is utilized in water. A person of
ordinary skill in the art would have recognized the suitability of utilizing the
water purification devices of Mercer in the water cleaning apparatus of
Erlich. Appellant has not persuasively shown that modifying Erlich’s pool
cleaning apparatus to include a UV purification structure would have been
beyond the level of ordinary skill in the art at the time of the invention.
(App. Br. 10-15). Appellant’s arguments are therefore unpersuasive of
reversible error in the obviousness case set forth by the Examiner. A
claimed invention is unpatentable if the differences between it and the prior
art “are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). KSR further states that the “analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741. See also
DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1367 (Fed. Cir. 2006)(“0ur suggestion test is in actuality
quite flexible and not only permits, but requires, consideration of common
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Application 12/227,395
knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1291 (Fed. Cir. 2006)(“There is flexibility in our obviousness
jurisprudence because a motivation may be found implicitly in the prior art.
We do not have a rigid test that requires an actual teaching to combine...”).
Accordingly, we affirm the Examiner’s decision to reject claims 1—13
for the reasons presented by the Examiner and given above.
ORDER
The Examiner’s obviousness rejections of claims 1—13 are 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)(1).
AFFIRMED
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