Ex Parte 7854597 et al

Patent Trial and Appeal BoardFeb 27, 2019

95002006 (P.T.A.B. Feb. 27, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 02/27/2019 QUARLES & BRADY LLP Attn: IP Docket 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI 53202-4426 UNITED STATES OF AMERICA EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/27/2019 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 US 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 US 7,854,597 B2 2 STATEMENT OF THE CASE The present Decision After Remand is necessitated by the Federal Circuit’s recent decision, which Affirmed-In-Part, Vacated-In-Part, and Remanded an earlier Board Decision on Appeal in the subject reexamination. Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc., 721 Fed.Appx. 974 (Fed. Cir. 2018). THE COURT’S REMAND In its decision, the court vacated our conclusion that claims 1–16, 18– 32, 34–37, 40–43, and 45–57 are allowable based on the master/slave limitation and remanded for reconsideration of the rejections based on Discenzo as to the “optimize energy consumption” limitation. Id. at 982. The court affirmed our construction of “optimize energy consumption” (id. at 978) our findings that Carrow, Jones, and Danfoss do not disclose or teach the “optimize energy consumption limitation” (id. at 980) and our conclusions that: claims 17 and 58 are not obvious (id. at 981), claims 38 and 39 are not indefinite (id.), and claim 44 is not invalid for enablement or written description (id. at 982). Lastly, the court vacated our conclusion that claims 33 and 59 are not obvious and remanded to us for consideration of that question (id. at 981). ANALYSIS The main issue before us on this remand is to determine whether or not Discenzo teaches the “optimize energy consumption” limitation. In its request, Requester asserts that Discenzo “discloses that the on-board control system 908 includes its own efficiency optimization component 970 for reducing energy and that is provided as a PID control responsive to flow- Appeal 2016-002780 Reexamination Control 95/002,006 Patent US 7,854,597 B2 3 rate from a flow-sensor 938 and/or a pressure sensor, much like the example of ‘optimizing energy consumption’ that the Examiner pointed to…in the Notice of Allowance.” Request 40. Requester further asserts that “Discenzo…teaches that the loci of the set-point input can be at any location (local controller and/or master), and that the loci of the optimization component can be at any location (local controller and/or master),” and that thus, “[a]ll permutations are taught.” Req. Resp. Br. 5. Tellingly, Requester does not specifically point out where Discenzo teaches the arrangement as claimed, but merely points to similar components that allegedly have the capability to operate as claimed. As Patent Owner points out, however, “Requester points to discrete and disjointed examples within Discenzo and states that anticipation only requires ‘each and every element be present in a single reference.” PO Rebuttal Br. 3 (citing Resp. Br. 4). We agree with Patent Owner that the Board “must, while looking at the reference as a whole, conclude whether or not that reference discloses all elements of the claimed invention arranged as in the claim.” PO Rebuttal Br. 3 (citing Net MoneyIN, 545 F.3d at FN 5 (emphasis added)). The main issue with Discenzo is that it is concerned not with optimization of any single component, but with optimization of an entire system of components. As Patent Owner states, “the optimization component of Discenzo is not attempting to reduce energy consumption over time ‘relative to the ultimate pumping application/function,’ but is simply relying on the correlation of known efficiency data of individual system components in order to maximize a system efficiency.” PO Rebuttal Br. 3. Appeal 2016-002780 Reexamination Control 95/002,006 Patent US 7,854,597 B2 4 This is further elucidated by Discenzo’s teaching that “to achieve global optimization of one or more performance characteristics…the components…of the system may be operated at less than optimal efficiency.” Discenzo ¶ 144. In other words, Discenzo specifically teaches that any particular component can run at less than optimal efficiency as long as the system as a whole is optimized. Discenzo simply is not concerned with component optimization and so we do not actually know whether Discenzo optimizes any particular component at any given time as claimed. Furthermore, Discenzo also specifically states that energy consumption may become secondary to revenue generation such that revenue becomes a “more important, over-arching objective” than energy consumption. Discenzo ¶ 51. Patent Owner is also correct that Discenzo fails to teach a “pump controller operating independently to control the motor to optimize energy consumption when disconnected from the control system.” PO Rebuttal Br. 4. Although Discenzo teaches both centralized and local control, we agree with Patent Owner that “nothing in Discenzo discloses switching between these operating modes based on whether the controller is connected to the host,” which would be required in order for continued optimization of energy consumption when disconnected from the control system. Id. In fact, the Federal Circuit specifically reversed our original decision as to the master/slave limitation saying that the local and centralized control were two discrete, alternative embodiments such that the localized control would not be found in the master/slave configuration, thus finding host-to-peer as equivalent to master/slave. Hayward at 977. Requester cannot have it both Appeal 2016-002780 Reexamination Control 95/002,006 Patent US 7,854,597 B2 5 ways and cherry pick disclosure from Discenzo so as to meet various limitations without the proper arrangement actually being disclosed in Discenzo. The rejection before us is anticipation, and so the Patent Owner is correct that Discenzo must not only disclose the proper components, but must also do so in the claimed arrangement. In this case, we do not agree that Discenzo teaches the components as arranged in the claims. As such, we reverse the anticipation rejection based upon Discenzo. Although the Federal Circuit remanded for our consideration of claims 33 and 59, these claims depend from claim 1 and so our reversal of the rejection of claim 1 also causes the rejection of these claims to fall as well. As such, we need not specifically consider the limitations found in these two claims. DECISION Having addressed the remanded question regarding the “optimize energy limitation,” we again REVERSE the Examiner’s decision to reject claims 1–16, 18–32, 34–37, 40–43, and 45–57 as anticipated by Discenzo. We further REVERSE the Examiner’s decision to reject claims 33 and 59 as obvious over Discenzo and Tompkins. Appeal 2016-002780 Reexamination Control 95/002,006 Patent US 7,854,597 B2 6 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