Ex Parte Sabini et al

Patent Trial and Appeal Board

Jun 8, 2016

10294463 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/294,463 11/14/2002
4955 7590 06/10/2016
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P 0 BOX 224
MONROE, CT 06468
Eugene P. Sabini
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
911-002.006 7972
EXAMINER
HUYNH, CONG LAC T
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
06/10/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE P. SABINI,
JEROME A. LORENC, and JEREMIAH D. QUILL
Appeal2015-000599
Application 10/294,463
Technology Center 2100
Before ERIC S. FRAHM, JEFFREYS. SMITH, and KAL YANK.
DESHPANDE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000599
Application 10/294,463
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 32-36, which are all the claims remaining in the application. We
affirmed previous appeal 2010-000743 on March 26, 2012. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Representative Claim
Claim 32. Apparatus comprising:
a pump; and
a name plate configured to attach to the pump, the name
plate having a memory device housed in an environmentally
sealed canister, the memory device being configured to store
information and documentation related to the pump and to
provide the information and documentation related to the pump
to an end user capable of retrieving the information and
documentation from the memory device via an end user
computer node,
wherein the information and documentation comprises
sales literature, a purchase order, an order entry, performance or
test data, equipment selected data/curves, bill of material,
installation and operation manuals (IOM), maintenance
manuals, product bulletins, factory work and stock orders,
product history, or a combination thereof, so as to enable the
end user to quickly gain access to the information when needed.
Esterman
Rajala
Morimoto
Callahan
Prior Art
US 2002/0169848 Al
US 6,555,984 Bl
US 2003/0160096 Al
US 2004/0019534 Al
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Nov. 14, 2002
Apr. 29, 2003
Aug. 28, 2003
Jan. 29, 2004
Appeal2015-000599
Application 10/294,463
Examiner ;s Rejections
Claims 32-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Callahan and Morimoto.
Claims 32-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Esterman and Morimoto.
Claims 32-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Rajala and Morimoto.
ANALYSIS
Section 103 rejection of claims 32, 33, and 36 based on Callahan and
Morimoto
We adopt the findings of fact made by the Examiner in the Non-Final
Action and Examiner's Answer as our own. We concur with the conclusions
reached by the Examiner for the reasons given in the Examiner's Answer.
We highlight the following for emphasis.
Appellants contend Callahan does not teach a memory housed in an
environmentally sealed canister attached to a pump as recited in claim 32.
App. Br. 5-6. However, the Examiner finds Morimoto teaches a memory
housed in an environmentally sealed canister attached to the product. Non-
Final Act. 4-5. Accordingly, we are not persuaded by Appellants'
contention because Appellants' contention does not address the Examiner's
finding.
Appellants also contend Morimoto does not teach a memory housed in
an environmentally sealed canister attached to the product. Reply Br. 2.
Appellants' contention is inconsistent with Appellants' statement on page 7
of the Appeal Brief, that the memory device 60 of Morimoto can be affixed
to the product by bonding the memory device to the product. We further
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Appeal2015-000599
Application 10/294,463
highlight that "when a patent simply arranges old elements with each
performing the same function it had been known to perform and yields no
more than one would expect from such an arrangement, the combination is
obvious." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here,
encasing memory in plastic as taught in paragraph 39 of Morimoto, then
attaching the encased memory using a bonding agent as taught in paragraphs
26 and 39 of Morimoto, does no more than yield the expected result of a
memory housed in an environmentally sealed canister attached to a product.
Appellants contend the type of information stored by Morimoto is not
pump related documentation such as sales literature or maintenance
manuals. App. Br. 7. However, the Examiner relies on Callahan to teach
storing product documentation such as sales literature or maintenance
manuals in memory. Non-Final Act. 3-4. Appellants do not persuasively
rebut the Examiner's findings.
Appellants contend the combination of Callahan and Morimoto does
not teach the pump and pump-related information as claimed. App. Br. 6-7;
Reply Br. 3. However, the Examiner finds the pump was a type of product
well known at the time of invention. Final Act. 5; Ans. 16. Appellants do
not persuasively rebut the Examiner's finding. In particular, Appellants do
not persuasively show that using a known pump and pump-related
information as the product and the product-related information stored in the
memory taught by Callahan and Morimoto was "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 419).
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Appeal2015-000599
Application 10/294,463
Further, Appellants' contend that a pump, and the corresponding
pump-related information, is not taught by the combination of Callahan and
Morimoto is inconsistent with Figures 8 and 13 of Callahan. Figure 8 of
Callahan shows a list of products including a dishwasher, refrigerator, and
washer, all of which have a pump. Figure 13 of Callahan shows the
information stored for the product can be documentation such as
maintenance manuals and parts lists, which, in the case of the dishwasher,
refrigerator, and washer, includes a pump.
We sustain the rejection ofclaim 32 under 35 U.S.C. § 103 as
unpatentable over Callahan and Morimoto. Appellants do not present
arguments for separate patentability of claims 33 and 36, which fall with
claim 32.
Section 103 rejection of claim 34 based on Callahan and Morimoto
Appellants contend the Examiner has not explained why a person of
ordinary skill in the art would have replaced the plastic of the casing taught
in paragraph 39 of Morimoto with stainless steel. App. Br. 17. "[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result." KSR, 550 U.S. at
416. Here, substituting the known element of stainless steel for the plastic
taught in paragraph 39 of Morimoto yields the predictable result of memory
encased in stainless steel.
We sustain the rejection of claim 34 under 35 U.S.C. § 103.
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Appeal2015-000599
Application 10/294,463
Section 103 rejection of claim 35 based on Callahan and Morimoto
Appellants contend paragraph 50 of Callahan teaches downloading a
product identifier, but does not teach downloading product documentation,
because the product identifier of paragraph 50 is not product documentation.
App. Br. 18. The Examiner relies on paragraphs 42-46 and Figures 6-11 of
Callahan (Non-Final Act. 3--4), in addition to paragraph 50, to teach product
documentation. Appellants have not persuasively distinguished the "product
documentation" recited in claim 35 from the product information taught by
paragraphs 42--46 and Figures 6-11 of Callahan. Transmitting the product
documentation taught in paragraphs 42--46 and Figures 6-11 from the server
taught in paragraph 50 of Callahan does no more than yield the expected
result of downloading product documentation.
To the extent Appellants' contention is based on the premise that the
product documentation of Callahan is not "pump documentation" as recited
in claim 35, we find Appellants' contention unpersuasive for the same
reasons discussed in our analysis of claim 32. Further, Appellants'
contention that a memory device configured to download product
documentation is unknown in the prior art is inconsistent with the title and
abstract of Esterman.
We sustain the rejection of claim 35 under 35 U.S.C. § 103.
Remaining section 103 rejections of claims 32-36
Our affirmance is dispositive as to all claims on appeal. It is not
necessary, therefore, to explicitly analyze the other grounds of rejection
entered by the Examiner. Rather, we adopt the findings of fact made by the
Examiner in the Non-Final Action and Examiner's Answer as our own, and
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Application 10/294,463
we concur with the conclusions reached by the Examiner for the reasons
given in the Examiner's Answer.
DECISION
Claims 32-36 are not patentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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