Ex Parte Callahan

Patent Trial and Appeal Board

Aug 17, 2017

13426497 (P.T.A.B. Aug. 17, 2017)

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.
13/426,497 03/21/2012 Patrick Callahan PSAFE.001A 6851
20995 7590 08/21/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
SKUBINNA, CHRISTINE J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK CALLAHAN
Appeal 2015-006743
Application 13/426,497
Technology Center 3700
Before JEFFREY A. STEPHENS, CARL L. SILVERMAN, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—20, 29, and
30.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held
on August 7, 2017.
We affirm.
1 The real party in interest is identified as Poolsafe, Inc. App. Br. 3.
2 Claims 21—28 are withdrawn. Final Act. 1.
Appeal 2015-006743
Application 13/426,497
Claimed Subject Matter
Claims 1 and 13 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A system for covering a manmade pool, comprising:
an insulating cover, installed on a spa or swim spa,
wherein said insulating cover consists essentially of at least one
insulation layer, at least one flexible outer layer that substantially
covers the at least one insulation layer, and at least one additional
layer selected from the group consisting of a layer of fibrous
reinforcing material and a layer of metalized material;
a roller positioned along one edge of the pool, wherein the
roller is attached to at least one edge of the insulating cover;
an actuator for rotating the roller; and
a guide capable of guiding at least one leading edge of the
insulating cover across the pool, such that the insulating cover
can be moved from an open position, with the insulating cover
wound around the roll, to a closed position, with the insulating
cover secured over the pool, wherein:
the insulating cover is sufficiently flexible and
durable that it can be repetitively wound upon and
unwound from the roller;
the-insulating cover has sufficient strength that
when in the closed position over the pool, the cover can
support the weight of at least one adult human; and
the insulating cover has sufficient insulation to
retain heat in the pool water at a rate of cooling no greater
than k= 0.038.
Rejections3
I. Claims 1^4 and 7—12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Boyd (GB 2,144,035 A, published Feb. 27, 1985),
3 A rejection of claims 1—12 and 29 under 35 U.S.C. § 112, first paragraph,
as lacking written description support, Final Act. 2, was withdrawn in the
Advisory Action (Feb. 13, 2015).
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MacDonald et al. (US 4,811,433, issued Mar. 14, 1989) (“MacDonald”), and
Perry (US 4,857,374, issued Aug. 15, 1989). Final Act. 3—5.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd, MacDonald, Perry, and Schroeder et al. (US
2007/0245479 Al, published Oct. 25, 2007) (“Schroeder”). Final Act. 6.
III. Claim 29 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd, MacDonald, Perry, and Dalliige (US 4,924,650,
issued May 15, 1990). Final Act. 6.
IV. Claims 5, 13—16, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boyd, MacDonald, Perry, and Aine (US
4,601,072, issued July 22, 1986). Final Act. 6—9.
V. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd, MacDonald, Perry, Aine, and Schroeder. Final
Act. 9-10.
VI. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd, MacDonald, Perry, Aine, and Dalliige. Final Act.
10.
DISCUSSION
Rejection I
Appellant argues claims 1^4 and 7—12 as a group. App. Br. 4—8. We
select claim 1 as representative, with the remaining claims standing or
falling therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds “Boyd teaches the importance of retaining the
heat in the water of the man-made pool (note, lines 5—11) but fails to
specifically show the insulation in the cover is sufficient such that the pool
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water has a rate of cooling no greater than k=0.038.” Final Act. 4. The
Examiner finds the general conditions of the claim are taught, however, and
that the optimal k value would be determined by routine experimentation.
Id. at 5. The Examiner also finds “Boyd shows that the device of the prior
art is composed of the same materials and layers as the instant invention,”
and “[therefore the same composition would yield the same results as that
of the instant invention and the k value would be inherent.” Ans. 3; see also
Final Act. 5.
Appellant argues “Boyd discloses the use of foam primarily as
floatation material,” but acknowledges “Boyd discloses that the foam can
‘also act as an insulating cover during the night.’” App. Br. 5 (quoting Boyd
Abstract). “Because Boyd is only designed to conserve heat in a pool at
night or periods of cold weather,” Appellant contends, “there is no
documentary evidence to support the Examiner’s assertion that Boyd would
retain heat in an ‘insulated spa or swim spa’” and meet the claimed
limitation on the k value. Id. Appellant further contends that Boyd cannot
inherently teach the claimed k value because inherency may not be
established by probabilities or possibilities, and “Boyd’s disclosure of
materials is general, with insufficient detail to allow particular materials,
thickness, and other details of construction to be ascertained.” Id.', see also
Reply Br. 2—3.
Appellant does not dispute that Boyd teaches an insulation layer, a
flexible outer layer, and at least one layer of metallized material, as recited
in claim 1. See Final Act. 3; Boyd Fig. 2, 1:55—64, 1:104—109. Boyd’s
“lower layer 1 is constructed from a flexible closed cell polyurethane foam
or any other insulating and buoyant material.” Boyd 1:104—106. As the
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Examiner notes, Final Act. 10—11, Appellant’s Specification concludes that
“even a thin layer of closed cell foam is surprisingly effective in retaining
heat,” Spec. para. 37. This conclusion is based on Example 5 in the
Specification, which measured a k value of 0.034 for “two layers of fabric,
aluminum foil, and l/4[in.] closed-cell foam.” Spec. para. 37. Based on
Boyd’s composition of materials and the Specification’s assertions as to the
effect of a thin layer of closed-cell foam on heat retention, we find it is likely
Boyd’s cover would have “sufficient insulation to retain heat in the pool
water at a rate of cooling no greater than k = 0.038,” as recited in claim 1.
Nevertheless, we agree with Appellant that this probability is insufficient to
establish inherency. As noted by Appellant, App. Br. 5, Boyd does not
specify a particular thickness of the foam layer.
We agree with the Examiner, however, that Boyd teaches the general
conditions of the claim in teaching use of the same layers, and that it is not
inventive to discover the optimum or workable ranges of heat retention by
routine experiment. Final Act. 4. “It is a settled principle of law that a mere
carrying forward of an original patented conception involving only change
of form, proportions, or degree, ... is not such an invention as will sustain a
patent, even though the changes . . . may produce better results than prior
inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929); see also In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (recognizing “the rule that
discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art”). Boyd teaches that covers
are often used “so as to retain as much heat as possible during the night or
periods of cold weather.” Boyd 1:10—12. Thus, we agree with the Examiner
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that one of ordinary skill in the art would have had reason to test the heat
retention of Boyd’s cover and find optimum or workable ranges. See Ans. 4.
Appellant argues the Examiner’s statement, that ‘“differences in
concentration or temperature’ will not support patentability unless there is
evidence that such concentration or temperature is critical,” App. Br. 4—5
(quoting Final Act. 4 (para. 9)), “says nothing about claim requirements
directed towards the properties of a finish produced,” id. at 5. Appellant is
incorrect. The “concentration” in the claim at issue in the Peterson case
cited by the Examiner, Final Act. 4, for example, was percent weight of
certain elements in an alloy. See In re Peterson, 315 F.3d 1325, 1327 (Fed.
Cir. 2003) (“A nickel-base superalloy . . . consisting essentially of about 1 to
3 percent rhenium . . . .” (emphasis omitted)). Thus, the distinction drawn
by Appellant between chemical processes and properties of finished
products is not persuasive.
Moreover, in context, it is evident the Examiner was analogizing
between variables such as concentration or temperature and the claimed rate
of cooling. Appellant contends “the ‘rate of cooling’ is not a variable that
can be freely manipulated the way reaction temperature in a chemical
process can be manipulated.” App. Br. 5. Appellant’s argument, however,
does not address the Examiner’s finding that the rate of cooling may,
nonetheless, be manipulated. See Final Act. 4. We agree with the
Examiner’s finding because one of ordinary skill in the art would have
understood based on basic engineering principles that varying the thickness,
for example, of Boyd’s flexible, closed-cell foam would have varied the
cooling rate of the cover. In light of this understanding, and because Boyd
recognizes the desire to have a cover that retains as much heat as possible
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and teaches the layers recited in claim 1, it would have involved only routine
experimentation to determine the cooling rate and attempt to maximize it,
optimize it, or find workable ranges through varying properties such as the
thickness of Boyd’s flexible foam. The range of cooling rates recited in
claim 1 is, thus, within the level of ordinary skill in the art.
Appellant also contends the cited references do not teach a cover that
is both “flexible” and “can support the weight of at least one adult human.”
App. Br. 7. Appellant acknowledges the Examiner’s reliance on Perry for
teaching the importance of a pool cover being strong enough to hold the
weight of a human, but argues “the Examiner fails to explain how Boyd
could be modified to obtain such strength.” Id. Because Perry’s cover is
rigid, Appellant contends, it is not compatible with the flexible design of
Boyd and it would frustrate Boyd’s purpose to use a rigid cover as it would
no longer be flexible enough to be rolled onto a roller. Id.
The Examiner’s rejection does not purport to modify Boyd with
Perry’s rigid foam, and instead merely relies on Perry to show that one of
ordinary skill in the art would understand “it is an important safety feature of
a pool cover to provide a cover with sufficient strength, such that it can
support an adult human.” Final Act. 4 (citing Perry col. 1,11. 41—47). Thus,
one of ordinary skill in the art would have had reason to construct Boyd’s
pool cover with sufficient strength to support the weight of an adult human.
As with the cooling rate, we agree with the Examiner that one of ordinary
skill in the art would also understand how to adjust the strength. As a basic
example, one of ordinary skill in the art would have had reason to select a
foam with sufficient buoyancy to support an adult human in order to provide
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the important safety feature taught in Perry. Accordingly, Appellant’s
arguments do not inform us of error in the rejection on this basis.
The Examiner also finds that no specific modification of the strength
of Boyd’s cover is needed because “the cover as disclosed by Boyd has a
level of buoyancy and some rigidity that is inherent with the materials, such
as the foam.” Ans. 6. The Examiner’s finding is supported by Boyd, which
teaches “lower layer 1 is constructed from a flexible closed cell polyurethane
foam or any other insulating and buoyant material.” Boyd 1:104—106.
Appellant does not dispute that Boyd has a level of buoyancy and
rigidity, but argues “there is no actual evidence to support the Examiner’s
assumption that Boyd’s pool cover has sufficient ‘bouyancy’ and ‘rigidity’
to ‘support the weight of at least one adult human’ as recited in Claim 1.”
Reply Br. 4. The Examiner points out that the weight of an adult human
“can vary greatly from person to person.” Ans. 6. Thus, “the weight of at
least one adult human” is a broad term, and we note further that claim 1 does
not specify any particular type or degree of support. It cannot be disputed
that even a thin layer of foam would keep a small adult human laying on it
afloat near the water’s surface, and thus can “support” an adult human
within the broadest reasonable interpretation of that term. Accordingly,
Appellant has not informed us of error in the Examiner’s finding that Boyd’s
cover “has sufficient strength that when in the closed position over the pool,
the cover can support the weight of at least one adult human,” as recited in
claim l.4
4 We note also that Appellant’s Specification admits flexible fabric covers
are known to support the weight of a person:
In addition, due to the risk of drowning or unauthorized use,
security pool covers are enjoying wide popularity. Such covers
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Appellant next contends that the phrase “consists essentially of’
recited in claim 1 excludes Boyd’s cover with water channels because “the
solar heating elements of Boyd materially affect the basic and novel
characteristics of the claimed invention.” App. Br. 8. We do not agree. As
the Examiner points out, the language of claim 1 expressly allows for more
than one of each layer of the insulating cover. Ans. 7. We agree with the
Examiner that Boyd’s material forming the water channels may be
considered an additional layer that covers the insulation layer. Ans. 7.
Appellant does not dispute this finding, arguing instead that “[t]he Examiner
presents no evidence to suggest that PVC channels serve any insulation
function such that they could be considered ‘at least one insulation layer.’”
Reply Br. 4. In addition, we agree with the Examiner that the water that
may be present in the channels need not be considered a part of the cover
because it is not a permanent feature of the cover. Ans. 7 (noting Boyd
teaches the water is removed prior to winding the cover on the roll).
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of representative
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Boyd, MacDonald,
and Perry. Thus, we sustain the rejection of representative claim 1, and, for
the same reasons, the rejection of claims 2—\ and 7—12, which are not argued
separately.
can often support the weight of a person, are typically made of
reinforced vinyl fabric, can be rolled up, and may be secured on
all sides. However, they provide little insulative value.
Spec. para. 5.
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Rejections II—III
Appellant does not present argument as to claims 6 or 29. See
generally App. Br. Accordingly, we sustain the rejections under 35 U.S.C.
§ 103(a) of claim 6, which depends from claim 1, and claim 29, which
depends from claim 12.
Rejection IV
Appellant argues the rejection of claims 5, 13—16, and 18—20 as a
group. App. Br. 8—9. We select claim 5 as representative, with the
remaining claims standing or falling therewith. 37 C.F.R. § 41.37(c)(l)(iv).5
Appellant contends Aine does not cure the deficiencies argued in
support of claim 1. App. Br. 8. As discussed above, the rejection of claim 1
is not deficient, and, therefore, we are not informed of error in the rejection
of claim 5 on that basis.
Claim 5, which depends from claim 1, specifies a foam thickness of
“about 1/8 inch to 1/2 inch.” Appellant does not dispute that Aine teaches a
foam thickness within that range, see Final Act. 6 (citing Aine col. 9,1. 13),
but Appellant argues “those skilled in the art would have no reasonable
expectation that a cover comprising foam with the claimed thickness could
adequately insulate a spa or swim spa,” App. Br. 9. Thus, Appellant appears
to contend one of ordinary skill in the art trying to cover a spa or swim spa
would not have used Boyd’s basic design with the thickness taught in Aine.
5 One paragraph directed to claim 13 relies on arguments presented in
support of claim 1, App. Br. 9, and Appellant’s listing of various thicknesses
recited in the claims does not constitute separate argument under 37 C.F.R.
§ 41.37(c)(l)(iv).
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As an initial matter, Appellant has not persuasively rebutted the
Examiner’s determination in rejecting claim 1 that the claim requires a cover
capable of covering a spa or swim spa. Final Act. 3. Thus, it is sufficient to
show that it would have been obvious to make a pool cover with the claimed
structure that is capable of being used on a spa or swim spa. Appellant’s
arguments relating to higher heat in a spa or swim spa do not address this
aspect of the rejection and, therefore, do not inform us of error. In addition,
Appellant’s contention that one of ordinary skill in the art would not have a
reasonable expectation of success in using a cover with the claimed foam
thickness on a spa or swim spa is unsupported, as discussed below.
Appellant states that “[sjpas and swim spas are typically maintained at
temperatures significantly higher than normal swimming pool
temperatures,” and “traditional spa covers—such as the cover disclosed in
Perry—are ‘about three to six inches thick,”’ citing Appellant’s
Specification at paragraphs 2 and 4. App. Br. 9. Specification paragraph 4
refers to a “heated pool or spa,” stating: “Often times, heated pool or spa
may use an insulating cover to further reduce heat loss. These covers are
traditionally made of a rigid foam core about three to six inches thick that
can be covered in a vinyl cover.” Boyd, however, teaches an insulated cover
for a heated pool that has a flexible foam layer that is rolled onto a roller.
Boyd Abstract.
One of ordinary skill in the art would have recognized that different
covers of different thicknesses would provide varying levels of insulation,
and that design tradeoffs may determine whether a cover is provided as thick
as possible to maximize heat retention or made thinner to allow for better
mobility, including rolling. “[A] given course of action often has
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simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (citing Winner Int 7 Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). Thus, we agree with the Examiner
that one of ordinary skill in the art would have had reason to use the
thicknesses specified in Aine when constructing the cover of Boyd, Final
Act. 6, in order to balance ease of use with insulation value.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of representative
claim 5 under 35 U.S.C. § 103(a) as unpatentable over Boyd, MacDonald,
Perry, and Aine. Thus, we sustain the rejection of representative claim 5,
and, for the same reasons, the rejection of claims 13—16 and 18—20, which
are not argued separately.
Rejection V
Claim 17 depends from claim 13 and recites “the at least one
insulation layer comprises a closed cell foam having a weight of about
2 lbs / ft3.” Appellant argues Schroeder does not cure the deficiencies
argued in support of other claims “because, like Perry, Schroeder also
discloses a standard thick, rigid, folding spa cover.” App. Br. 9. Appellant
contends that, for this reason, Schroeder’s cover is incompatible with the
rolling covers taught in Boyd and MacDonald, and “[tjhose skilled in the art
would have no reasonable expectation of success combining the rigid cover
of Schroeder with the flexible cover of Boyd.” App. Br. 9—10.
The Examiner clarifies that Schroeder is relied on “only to show that
it is known to show the foam having a weight of 21bs/ft3 for a pool cover.”
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Ans. 8. Thus, Appellant’s argument does not address the rejection of the
Examiner, which does not propose to use Schroeder’s foam in Boyd’s cover,
only a foam with a similar weight density. Appellant does not further
respond. See Reply Br. 6.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Boyd, MacDonald, Perry, Aine, and
Schroeder, and we sustain the rejection.
Rejection VI
Claim 30 depends from claim 20, which depends from independent
claim 13. Appellant argues Dalliige “does not cure the deficiencies
discussed above because [Dalliige] does not disclose a flexible spa cover that
can support the weight of an adult human or adequately insulate a spa or
swim spa.” App. Br. 10. We find no such deficiencies, as discussed supra,
and, therefore, sustain the rejection of claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Boyd, MacDonald, Perry, Aine, and Dalliige.
DECISION
We affirm the Examiner’s rejections of claims 1—20, 29, and 30.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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