7854597 et al.

Patent Trials and Appeals BoardMar 1, 2021

2016002780 (P.T.A.B. Mar. 1, 2021)

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. 95/002,006 06/01/2012 7854597 144074.00753 9030 26710 7590 03/01/2021 QUARLES & BRADY LLP ATTN: IP DOCKET 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI 53202-4428 EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 03/01/2021 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 ____________________ HAYWARD INDUSTRIES, INC., Third Party Requester/Cross-Appellant, v. PENTAIR WATER POOL AND SPA, INC., Patent Owner/Appellant. ____________________ Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B21 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION AFTER REMAND 1 Issued to Stiles, Jr. et al. on December 21, 2010 (hereinafter the ’597 patent). Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B2 2 STATEMENT OF THE CASE The present Decision After Remand is necessitated by the Federal Circuit’s recent decision, which Reversed In Part, Vacated In Part, and Remanded an earlier Board Decision on Appeal in the subject reexamination. Hayward Indus., Inc. v. Pentair Water Pool & Spa, Inc., App. No. 19-1821 (Fed. Cir. 2020). THE COURT’S REMAND In its decision, the Federal Circuit reversed our conclusion that Discenzo does not teach the “optimize energy consumption” limitation recited in claims 1–16, 18–32, 34–37, 40–43, and 45–57, resulting in those claims being found to be anticipated by Discenzo. The court vacated certain of our findings that went beyond whether Discenzo teaches the aforementioned limitation, as exceeding the scope of their mandate. Lastly, the court vacated our conclusion that claims 33 and 59 are not obvious and remanded to us to address the single question of whether claims 33 and 59 are obvious in view of the combination of Discenzo and Tompkins. ANALYSIS Claim 33 depends from claims 1 and 22, noted above to be anticipated by Discenzo as a result of the Federal Circuit decision. The sole question before us is whether Tompkins teaches the recitations of claim 33, and substantially identical recitations in claim 59, and whether the combination of Discenzo and Tompkins renders obvious the subject matter of those claims. As such our analysis of claim 33 below applies equally to claim 59. Claim 33 recites, inter alia, “wherein the information received from the control system is that the heater is operating or needs to operate, and Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B2 3 wherein the pump controller alters the performance of the pumping system to provide an increased flow rate necessary for proper operation of the heater.” Appeal Brief of Patent Owner, Claims App. The Examiner originally rejected these claims over Discenzo and the teachings found in Tompkins. The Examiner later, however, stated that “Tompkins turns the pump on before turning on the heater and keeps it running for a time after the heater is disengaged. This is not seen as increasing the flow when the heater is activated.” RAN at 72. Requester argues that “a person of ordinary skill in the art understands that a deactivated pump typically results in a lower flow rate and an activated pump typically results in a higher flow rate.” Requester’s Appeal Br. 16. We note that the claim recites “alter[ing] the performance of the pumping system to provide an increased flow rate necessary for proper operation of the heater” when “the information received from the control system is that the heater is operating or needs to operate.” We agree with Requester that activation of the pump in Tompkins is sufficient to teach an increased flow rate. Tompkins teaches turning the pump on before activating the heater and running it for a time after the heater is disengaged, thus sufficiently teaching altering the performance of the pumping system based on information that the pump needs to operate. Patent Owner argues that “Tompkins discloses the basic concept of turning the pump on and off, which is distinct from increasing the flow rate for proper heat[ing] operation.” Patent Owner’s Respondent Br. 11. Patent Owner admits that Tompkins discloses “an interlock between a pump and a heater, energizing a pump prior to the heater, and allowing the pump to run Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B2 4 after heating has ended.” Id. As noted above, by activating the pump, Tompkins teaches an increased flow rate and this is directly tied to operation of the heater. It is unclear what other function activating the pump would achieve other than to increase flow rate during heater operation. Patent Owner does not dispute that the structure exists to meet the claim, only that the full function as claimed is not disclosed, nor does Patent Owner challenge the proffered reason to combine. Patent Owner appears to suggest that the claims require some second level of alteration such as further increasing flow rate as the heater heats up or some other type of synchronization of flow rate tied to the heater operation. These claims, however, require only a single alteration of pump performance. Claim 33 recites only altering the performance of the pump to increase flow rate for proper heater operation, not continually altering pump performance as heat output increases. Given that Tompkins clearly ties pump operation to the desire to operate the heater (turning it on prior to heater operation and allowing the pump to operate for a time after the heater has disengaged), and that operating of the pump will increase flow as explained by Requester, we fail to see how this teaching can be construed in a manner so as not to meet the claim language at issue. Accordingly, we reverse the Examiner’s decision not to reject claims 33 and 59 as obvious over Discenzo and Tompkins. Because the Examiner withdrew this rejection prior to the Appeal, our reversal of the Examiner’s determination not to make a rejection proposed by the third party requester is denominated a new ground of rejection. Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B2 5 DECISION We REVERSE the Examiner’s decision not to reject claims 33 and 59 as obvious over Discenzo and Tompkins. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.77(b). 37 C.F.R. § 41.77(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.77(b) also provides that Appellant, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the Appeal 2016-002780 Reexamination Control 95/002,006 Patent 7,854,597 B2 6 application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. PATENT OWNER: QUARLES & BRADY LLP Attn: IP Docket 411 E. Wisconsin Avenue Suite 2350 Milwaukee, WI 53202-4426 THIRD PARTY REQUESTER: McCARTER & ENGLISH, LLP Four Gateway Center 100 Mulberry Street Newark, NJ 07102