Ex Parte Smith

Board of Patent Appeals and Interferences

Jan 15, 2010

10290548 (B.P.A.I. Jan. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte COVERSTAR, INC.
____________________

Appeal 2009-005419
Application 10/290,548
Technology Center 3600
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Decided: 15 January 2010
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Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Coverstar,
Inc. (“Coverstar”) under 35 U.S.C. § 134(a) from a final rejection of claims
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1, 2, 6-8, 10-12, 14, 19, 20, and 33-48. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

References Relied on by the Examiner
Kindness (“Kindness ‘849”) 4,713,849 Dec. 22, 1987
Stegmeier 4,967,424 Nov. 6, 1990
Masotti 5,239,709 Aug. 31, 1993
Epple et al. (“Epple”) US 6,418,572 B1 Jul. 16, 2002
Kindness (“Kindness ‘189”) US 6,457,189 B1 Oct. 1, 2002

The Rejections on Appeal
The Examiner rejected claims 11 and 33 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Coverstar regards as the invention.
The Examiner rejected claims 1, 36, 37, 41-43, 46, and 47 under 35
U.S.C. § 102(b) as anticipated by Masotti.
The Examiner rejected claims 11, 12, 14, 19, 38-40, and 48 under 35
U.S.C. § 102(b) as anticipated by Stegmeier.
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Stegmeier and Epple.
The Examiner rejected claims 1, 2, 6-8, 10, 33-35, and 41-46 under 35
U.S.C. § 103(a) as unpatentable over Kindness ‘189 and Kindness ‘849.

The Invention
The invention relates to a track assembly for the retractable cover of a
swimming pool in which the track assembly forms the deck edging of the
swimming pool. (Spec. 2:12-3:7.)
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Claim 1 is reproduced below (App. Br. 25 Claims App’x.):
An apparatus for constructing edging of a swimming pool,
comprising:

(a) an elongated guide connector configured to be permanently
embedded in a wall of the swimming pool and having an open-sided
cavity defined therein that is configured to receive a pool cover guide
member, said cavity having a top portion and a bottom portion, a
bottom side of the top portion having a form-receiving structure
formed thereon,

(b) a unitary metallic deck forming member having an edge
forming portion shaped to form the edging, and

(c) a metallic form mating structure integrally formed on a top
portion of said unitary deck forming member for removably mating
said unitary deck forming member to said elongated guide connector,
wherein said form mating structure is adapted to be mated to said
form receiving structure.
B. ISSUES
1. Has Coverstar shown that the Examiner erred in determining
that claims 11 and 33 are indefinite?
2. Has Coverstar shown that the Examiner was incorrect in
determining that the claim feature of a guide connector or track member
containing a cavity that is structured to receive a pool cover guide member is
inherently disclosed in any of Masotti, Stegmeier, and Kindness ‘189?
C. FINDINGS OF FACT
1. Masotti discloses a break away pool cover clip that is releasably
secured to the projecting edge of a swimming pool coping. (Masotti
Abstract.)

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2. Figure 3 of Masotti is reproduced below:

The figure above depicts a side view of Masotti’s break away
pool cover clip engaged with a swimming pool coping
assembly.

3. As shown in Masotti’s Figure 3, coping 6 includes recess 10
that receives leg 39 of breakaway clip 30 and edge 20 of swimming pool
liner 22. (Id. at 2:35-65.)
4. Stegmeier discloses a track structure for retaining a liner that
lines the wall and floor surfaces of a swimming pool. (Stegmeier Abstract.)

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5. Figure 4 of Stegmeier is reproduced below:

The figure above depicts a side view of Stegmeier’s pool
liner track.

6. As shown in Stegmeier’s Figure 4, liner track 47 has a recess 64
that receives insert 50 which secures liner bead 18 of pool liner 20 within the
liner track. (Id. at 4:64-5:31.)
7. Kindness ‘189 discloses a retainer for a pool liner. (Kindness
‘189 Abstract.)

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8. Figure 3 of Kindness ‘189 is reproduced below:

The figure above depicts a side view of Kindness ‘189’s pool
liner retainer.

9. As shown in Kindness ‘189’s Figure 3, pool liner retainer 10
includes a channel 24 that receives edge portion 44 of cap 40 and bead 20 of
pool liner 18. (Id. at 4:13-45.)
10. None of Masotti, Stegmeier, or Kindness ‘189 discloses a guide
member for guiding a pool cover over the top of a pool.
D. PRINCIPLES OF LAW
Under the principles of inherency, if the prior art necessarily operates
exactly as claimed, then the claimed invention is met. MEHL/Biophile
International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
That a claim feature may possibly, or even probably, result from the prior art
is not sufficient to show inherency. Id. The Examiner must make out a
prima facie case, through evidence or explanation, that what is urged as
inherent necessarily flows from the teachings of the prior art before the
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burden is shifted to an applicant to disprove the inherency theory. See In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
E. ANALYSIS
The 35 U.S.C. § 112, second paragraph rejection
The Examiner rejected claims 11 and 33 under 35 U.S.C. § 112,
second paragraph, as indefinite. According to the Examiner, because each
of claims 11 and 33 are directed to “[a]n apparatus for attaching to a wall of
a swimming pool” those claims are limited in scope to a subcombination of
the apparatus alone and not a combination of the apparatus and a swimming
pool. The Examiner thus contends that the subsequent requirement in the
body of those claims of an elongated track member that is “permanently
secured to a wall of the swimming pool” (claim 11) or “permanently
attached to a wall of the swimming pool” (claim 33) renders those claims
indefinite in requiring that a swimming pool wall forms an element of each
claim. (Ans. 4:4-14; 14:15-19.)
We do not agree with the Examiner. The phrase “for attaching to a
wall of a swimming pool” in the preamble of the rejected claims is not
inconsistent with the specified condition in the body of the claims that an
elongated track member is permanently attached or secured to a wall of a
swimming pool. Neither the wall of a swimming pool nor the swimming
pool is affirmatively recited as a part of the subcombination apparatus. The
wall of the swimming pool is merely something connected to that apparatus,
as is clearly defined in the claims. Consequently, what is claimed is more
than the subcombination and the phrase “for attaching to a wall of a
swimming pool” in the preamble is more than a statement of intended use.
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We do not sustain the rejection of claims 11 and 33 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
The prior art rejections
Claims 1, 11, 33, 38, 41, and 47 are independent. Claims 2, 6-8, 10,
12, 14, 19, 20, 34-37, 39, 40, 42-46, and 48 are ultimately dependent on, and
argued collectively with, one of those independent claims. Each of the
independent claims is directed to an apparatus used in constructing the
edging of a swimming pool and includes the feature of an elongated guide
connector or track member containing a cavity structured to receive a guide
member that guides a pool cover.
In particular, in claim 1, the feature reads: “an elongated guide
connector…having an open-sided cavity defined therein that is configured to
receive a pool cover guide member.” (App. Br. 25 Claims App’x.)
In claim 11, the feature reads: “an elongated track member…having
top and bottom members forming an open-sided cavity therebetween, the
bottom side of said top member having a channel defined therein for
receiving a pool cover guide member[.]” (App. Br. 27 Claims App’x.)
In claim 33, the feature reads: “an elongated track member…having
an elongated cavity defined therein for accommodating the guide
member[.]” (App. Br. 29 Claims App’x.)
In claim 38, the feature reads: “an elongated track member…with a
elongated cavity…said elongated cavity being configured to receive an
automatic pool cover guide member that guides an edge of an automatic
pool cover as it is extended or retracted.” (App. Br. 31 Claims App’x.)
In claim 41, the feature reads: “an elongated track member…having a
top member and a bottom member forming an open-sided cavity between
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said top member and said bottom member, the bottom side of said top
member having a channel defined therein for receiving a pool cover guide
member[.]” (App. Br. 32 Claims App’x.)
In claim 47, the feature reads: “an elongated guide connector…having
an open-sided cavity defined therein for receiving a pool cover guide
member[.]” (App. Br. 33 Claims App’x.)
According to the Examiner, none of the references that were applied
in rejecting Coverstar’s claims expressly disclose a guide connector or track
member having a cavity that operates to receive a pool guide member. In
accounting for that feature, the Examiner relied on a theory of inherency.
The Examiner found that the above-quoted claim features are inherently
satisfied by one of Masotti, Stegmeier, and Kindness ‘189. Specifically, the
Examiner stated that each of those references discloses an apparatus that
includes a cavity or channel having a structure that is inherently capable of
functioning to receive a pool cover guide member.
Under the principles of inherency, if the prior art necessarily operates
exactly as claimed, then the claimed invention is met. MEHL/Biophile
International Corp., 192 F.3d at 1365. That a claim feature may possibly, or
even probably, result from the prior art is not sufficient to show inherency.
Id. The Examiner must make out a prima facie case, through evidence or
explanation, that what is urged as inherent necessarily flows from the
teachings of the prior art before the burden is shifted to an applicant to
disprove the inherency theory. See In re King, 801 F.2d at 1327.
Here, while each of Masotti, Stegmeier, and Kindness ‘189 do
disclose that their respective devices include recesses or cavities, none of
those cavities are disclosed as operating to receive a member that guides a
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pool cover. Indeed, none of those references even mentions a pool cover
guide member. Evidently, the Examiner’s inherency determination rests
simply on the fact that the devices have cavities.
It is, however, not true that all cavities will invariably be capable of
receiving a pool cover guide member. A pool cover guide member must be
appropriately sized and configured to perform its pool cover guiding
function. A cavity receiving that pool cover guide member must, in turn, be
appropriately sized and configured to support the guide member such that it
can perform its function. While some cavities will be structured as required,
other cavities will not be. The Examiner does not explain how one of
ordinary skill in the art would have known that the cavities of Masotti,
Stegmeier, and Kindness ‘189 are those that are structured to receive a pool
cover guide member. Absent justification through underlying evidence,
reasoning, or explanation, the Examiner’s merely conclusory statements that
those cavities are inherently capable of receiving a pool cover guide member
are insufficient to make out a prima facie case of inherency.
Claims 1, 36, 37, 41-43, 46, and 47 were rejected as anticipated by
Masotti and claims 11, 12, 14, 19, 38-40, and 48 were rejected as anticipated
by Stegmeier. Because the Examiner’s inherency theory is not adequately
supported, i.e., that each of Masotti and Stegmeier inherently discloses a
cavity that is configured as required by the claims, we do not sustain the
anticipation rejection over Masotti or the anticipation rejection over
Stegmeier.
Claim 20 was rejected as unpatentable over Stegmeier and Epple and
claims 1, 2, 6-8, 10, 33-35, and 41-46 were rejected as unpatentable over
Kindness ‘189 and Kindness ‘849. As discussed above, the Examiner has
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not properly demonstrated that either Stegmeier or Kindness ‘189 inherently
disclose the cavity or channel that is required by those claims. The
additional references of Epple and Kindness ‘849 were applied only to
account for other claim features and were not relied upon to support any
aspect of the Examiner’s inherency determination involving Stegmeier and
Kindness ‘189. Accordingly, we do not sustain the obviousness rejection
over Stegmeier and Epple or the obviousness rejection over Kindness ‘189
and Kindness ‘849.
F. CONCLUSION
1. Coverstar has shown that the Examiner erred in determining
that claims 11 and 33 are indefinite.
2. Coverstar has shown that the Examiner was incorrect in
determining that the claim feature of a guide connector or track member
containing a cavity that is structured to receive a pool cover guide member is
inherently disclosed in any of Masotti, Stegmeier, and Kindness ‘189.
G. ORDER
The rejection of claims 11 and 33 under 35 U.S.C. § 112, second
paragraph, as indefinite is reversed.
The rejection of claims 1, 36, 37, 41-43, 46, and 47 under 35 U.S.C.
§ 102(b) as anticipated by Masotti is reversed.
The rejection of claims 11, 12, 14, 19, 38-40, and 48 under 35 U.S.C.
§ 102(b) as anticipated by Stegmeier is reversed.
The Examiner rejection of claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Stegmeier and Epple is reversed.
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The rejection of claims 1, 2, 6-8, 10, 33-35, and 41-46 under 35
U.S.C. § 103(a) as unpatentable over Kindness ‘189 and Kindness ‘849 is
reversed.

REVERSED

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