Ex Parte McAward et al

Patent Trial and Appeal Board

Aug 23, 2017

13435655 (P.T.A.B. Aug. 23, 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.
13/435,655 03/30/2012 James Gerard McAward H0034623/4874/115276 7472
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
08/25/2017 EXAMINER
COLON MORALES, DAVID
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
patentservices-us @ honey well, com
amy. hammer @ hu schblackwell .com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES GERARD McAWARD, DAVID S. ZAKREWSKI,
KEVIN G. PIEL, and JONATHAN KLINGER
Appeal 2015-006416
Application 13/435,655
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Gerard McAward et al. (Appellants)1 seek our review under
35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action
dated November 7, 2014 (“Final Act.”), rejecting claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Honeywell International, Inc. as the real party in
interest. Appeal Brief 2 (filed January 27, 2015) [hereinafter “Appeal Br.”].
Appeal 2015-006416
Application 13/435,655
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “water leakage
detectors . . . which are easily connectable to flexible water hoses, and, can
be coupled together to monitor leakage from hot and cold supplies.”
Specification, para. 1 (filed March 30, 2012) [hereinafter “Spec.”]. Claims
1, 8, and 10 are independent. Claim 1 is illustrative of the subject matter on
appeal and is reproduced below.
1. A water detector comprising:
a housing;
flow connectors carried by the housing including a spin-
on female pipe connector at an inflow end and a spin-on male
pipe connector on an outflow end;
at least one water presence sensor carried by the housing;
an electrically actuatable valve, carried by the housing,
and having first and second states; and
control circuits, carried by the housing, coupled to the
sensor and valve, and, responsive to a leakage indicating signal
from the sensor, the circuits actuate the valve causing it to change
state wherein the control circuits detect flood conditions, shut off
a malfunctioning water branch to a home appliance and
communicate to a premises alarm communication device or
home automation system via a wireless link and wherein the
water detector is configured to be reliably installed by an
untrained installer or a homeowner and to not require the services
of a plumber or electrician to perform installation, thereby
permitting widespread and cost effective adoption.
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REJECTIONS
The Final Action includes the following rejections:
I. Claims 1-20 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1-7 and 10-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walter (US 7,549,435 B2, issued June 23, 2009)
and Kaplan (US 7,403,839 Bl, issued July 22, 2008).
ANALYSIS
I.
A.
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 8. We select claim 1 as representative of the group, with
claims 2-20 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner states that the recitation in claim 1 of the water detector
“configured to be reliably installed by an untrained installer or a homeowner
and to not require the services of a plumber or electrician to perform
installation, thereby permitting widespread and cost effective adoption” is
“unclear and indefinite.” Final Act. 5. The Examiner explains that “one
having ordinary skill in the art cannot determine the metes and bounds of the
claimed subject matter” because “the claim language does not provide any
structure to the apparatus or system that would allow it to be ‘configured’ to
function as described in the claims.” Id. at 6.
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Appellants assert that this “configured” limitation “would be
understood to mean capable of being installed without special knowledge or
tools” and “[gjarden hose connectors or electrical plugs for home wall
outlets would be understood as examples of such configuration.” Appeal
Br. 8; see also Reply Brief 2 (dated June 18, 2015) [hereinafter “Reply Br.”]
(“the claims are directed to the simple, straightforward concept of a ‘do-it-
yourself device installed by an amateur”).
B.
Under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second
paragraph,2 * 4the specification must conclude with “one or more claims
particularly pointing out and distinctly claiming the subject matter” regarded
as the invention. This definiteness requirement “secure[s] to the patentee all
to which he is entitled” and “apprise[s] the public of what is still open to
them.” Markman v. WestviewInstruments, Inc., 517 U.S. 370, 373 (1996)
(quotation and brackets omitted).
The USPTO bears responsibility for testing claims for definiteness
prior to issuance. See, e.g., In re Zletz, 893 F.2d 319, 321—22 (Fed. Cir.
1989). Thus, when applying § 112 during examination of a patent
application, the Office must carry an initial procedural burden of presenting
a prima facie case that a pending claim is indefinite. Hyatt v. Dudas, 492
2 Appellants filed the application on appeal before September 16, 2012, and
thus, the pre-Leahy-Smith America Invents Act (“ALA”), Pub. L. No. 112-
29, 125 Stat. 284 (2011), version of § 112 applies. See 35 U.S.C. § 112,
second paragraph (2006); AIA, 125 Stat. at 297.
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F.3d 1365, 1369—70 (Fed. Cir. 2007) (“In the prosecution of a patent, the
initial burden falls on the [Office] to set forth the basis for any rejection, i.e.,
aprima facie case.”); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).
As the first step in its indefiniteness analysis, the Office must determine the
scope of the claims. See Zletz, 893 F.2d at 321 (discussing generally claim
interpretation during patent examination). The Office “determines the scope
of claims . . . not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. A WII
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (enbanc) (quoting In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); see also
Zletz, 893 F.2d at 321. Applying the broadest reasonable interpretation of a
claim, then, the Office establishes a prima facie case of indefmiteness with a
rejection explaining how the metes and bounds of a pending claim are not
clear because the claim contains words or phrases whose meaning is unclear.
See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam) (citing
Manual of Patent Examining Procedure (“MPEP”) § 2173.05); see also
MPEP § 2173.02(1) (9th ed. Rev. 7, Nov. 2015) (advising examiners that a
rejection for indefmiteness is appropriate “after applying the broadest
reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear”); Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential) (“if a claim is amenable to two or more plausible claim
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constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable ... as indefinite”).3 During prosecution, an
examiner’s indefmiteness rejection begins what is intended to be an
interactive process in which the applicant has the opportunity to respond to
the examiner by amending the claims or by providing evidence or
explanation that shows why the claims are not indefinite. Packard, 751 F.3d
at 1311-12.
The Office plays an important role in ensuring that proposed patent
claims are clear, unambiguous, and drafted as precisely as the art allows.
Claim clarity keeps the rights afforded by patents commensurate with the
invention’s contribution to the art. Packard, 751 F.3d at 1313. Interpreting
the claims as broadly as reasonable during prosecution allows the Office to
fulfill this important role. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir.
2007) (claims are given their broadest reasonable interpretation during
prosecution “to facilitate sharpening and clarifying the claims at the
application stage”); Zletz, 893 F.2d at 321 (“during patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
3 The Board’s precedential decision in Miyazaki, which remains Board
precedent, provides an example in which the Board affirmed an
indefmiteness rejection of a claim containing words or phrases whose
meanings were unclear, i.e., the approach approved in Packard. The instant
decision reaffirms, after the Supreme Court’s decision in Nautilus, Inc. v.
BiosigInstruments, Inc., 572 U.S.__ , 134 S. Ct. 2120 (2014), the USPTO’s
long-standing approach to indefmiteness and the reasons for this approach.
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breadth of language explored, and clarification imposed”). And, in
situations where the application of the broadest reasonable interpretation
reveals ambiguity in the claim language, “the applicant may ‘amend his
claims to obtain protection commensurate with his actual contribution to the
art.’” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (quoting In re
Prater, 415 F.2d 1393, 1405 (CCPA 1969)). Thus, the broadest reasonable
interpretation standard ensures that claims, once fixed and issued, are as
“precise, clear, correct, and unambiguous” as possible. Zletz, 893 F.2d at
322.
The broadest reasonable interpretation standard differs from the claim
interpretation standard used during patent litigation in the federal courts.
The Supreme Court has recognized “a degree of inconsistency in the
standards used between the courts and the agency” in claim interpretation.
Cuozzo Speed Techs., LLCv. Lee, 579 U.S.__ , 136 S. Ct. 2131, 2146 (2016)
(holding that the broadest reasonable interpretation standard set forth in
37 C.F.R. § 42.100(b) represents a reasonable exercise of the rulemaking
authority that Congress delegated to the Office). But, importantly, the Court
approved of the distinction, explaining that “construing a patent claim
according to its broadest reasonable construction helps to protect the public”
because it “helps ensure precision while avoiding overly broad claims, and
thereby helps prevent a patent from tying up too much knowledge, while
helping members of the public draw useful information from the disclosed
invention and better understand the lawful limits of the claim.” Id. at 2144-
45; see also In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997) (“It would
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be inconsistent with the role assigned to the PTO in issuing a patent to
require it to interpret claims in the same manner as judges who, post­
issuance, operate under the assumption the patent is valid.”).
As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (cited with approval in Nautilus,
134 S. Ct. at 2129):
We note that the patent drafter is in the best position to resolve
the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
The Office’s application of the broadest reasonable interpretation for
pending claims and its employment of an interactive process for resolving
ambiguities during prosecution naturally results in an approach to resolving
questions of compliance with § 112 that fundamentally differs from a court’s
approach to indefiniteness. To that end, the Office’s approach effectively
results in a lower threshold for ambiguity than a court’s. Miyazaki, 89
USPQ2d at 1211 (stating that an examiner may use “a lower threshold of
ambiguity when reviewing a pending claim for indefmiteness”). The
different approaches to indefmiteness before the Office and the courts stem
not from divergent interpretations of § 112, but from the distinct roles that
the Office and the courts play in the patent system. The lower threshold
makes good sense during patent examination because the patent record is in
development and not fixed, the Office construes claims broadly during that
period, and an applicant may freely amend claims. See, e.g., Packard, 751
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F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have
a full prosecution record to consider, the prosecution record before the
USPTO is in development and not fixed during examination”). By contrast,
once a patent has been issued and is under review by a court, simple
amendments are impossible, the full prosecution record is available, and
courts endeavor to adopt saving constructions. Cf. In re Swanson, 540 F.3d
1368, 1377—78 (Fed. Cir. 2008) (explaining that the differences in burdens,
standards of proof, and modes of claim interpretation between PTO
examination proceedings and district court actions could result in different
but correct obviousness conclusions in both forums based on the same
evidence).
We recognize that after the Packard decision, the Supreme Court in
Nautilus, Inc. v. BiosigInstruments, Inc., 572 U.S.__ , 134 S. Ct. 2120, 2129
(2014), explained that the “definiteness command” of § 112,12 “require[s]
that a patent’s claims, viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of the invention with
reasonable certainty.” The Court stated that “[t]he definiteness requirement,
so understood, mandates clarity, while recognizing that absolute precision is
unattainable.” Id. We do not understand Nautilus, however, to mandate a
change in the Office’s approach to indefmiteness in patent-examination
matters in which, as discussed above, the claims are interpreted under the
broadest reasonable interpretation standard and an opportunity to amend the
claims is afforded. See Packard, 751 F.3d at 1323—24 (Plager, J.,
concurring) (recognizing and approving the reasons enumerated by the
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Office regarding why the Office review of pending claims for indefiniteness
uses “a lower threshold for ambiguity than a court’s”).
Indeed, the United States participated in Nautilus as amicus curiae and
defended the Office’s approach to definiteness. See Br. for the United States
as Amicus Curiae Supporting Respondent, Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120 (2014) (No. 13-369), 2014 WL 1319151
at *21 (“U.S. Br.”). Specifically, the government explained that “[f]or
nearly a century, the courts have recognized that the PTO . . . may
appropriately insist on a greater degree of clarity than would the court in an
infringement suit.” Id. (citing Morris, 127 F.3d at 1054; Zletz, 893 F.2d at
321; Prater, 415 F.2d at 1404-05; In re Carr, 297 F. 542, 543^14 (D.C. Cir.
1924)). Accordingly, the government argued, the Office is “justified in
using a lower threshold for indefmiteness.” Id. at *22.
Following Nautilus, the government reaffirmed that view in a brief
opposing a writ of certiorari in Packard v. Lee. See Br. for the Respondent
in Opposition, Packard v. Lee, 2015 WL 1642022 (No. 14-655) (Apr. 9,
2015). The United States emphasized that the Court’s reasoning about
‘“infringement actions’ (i.e., proceedings implicating issued patents)
demonstrates that [the Court] was not addressing the pre-issuance
examination context, which was not at issue in Nautilus itself.” Id. at *21.
Thus, the government explained, “[t]here is no basis” for the contention that
“the Court in Nautilus rejected the PTO’s long-standing practice.” Id.
Indeed, it would be “implausible,” the government argued, that the Court
“intended to overturn the PTO’s longstanding practice without even
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addressing the government’s contention that the Court should be particularly
loath to disturb the settled distinction that the PTO and the courts have
recognized between the pre- and post-issuance contexts, which long predates
the 1952 Patent Act.” Id. at *22 (quotation omitted).
Thus, in this proceeding, we apply the approach for assessing
indefmiteness approved by the Federal Circuit in Packard, i.e., “[a] claim is
indefinite when it contains words or phrases whose meaning is unclear.”
751 F.3d at 1310, 1314. Put differently, “claims are required to be cast in
clear—as opposed to ambiguous, vague, indefinite—terms.” Id. at 1313; see
also MPEP § 2173.02(1).4
[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ H2(b).
Packard, 751 F.3d at 1311; see also Zletz, 893 F.2d at 322 (“the inquiry
during examination is patentability of the invention as ‘the applicant
regards’ it; and if the claims do not ‘particularly point[ ] out and distinctly
claim[ ],’ in the words of section 112, that which examination shows the
applicant is entitled to claim as his invention, the appropriate PTO action is
to reject the claims for that reason”) (alterations in original) (footnote
4 We do not address, in this decision, the approach to indefmiteness that the
Office follows in post-grant trial proceedings under the America Invents
Act.
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omitted). We caution, however, that “this requirement is not a demand for
unreasonable precision,” and “does not contemplate in every case a verbal
precision of the kind found in mathematics.” Packard, 751 F.3d at 1313.
Instead, the requirement that claims be written in clear and unambiguous
terms “necessarily invokes some standard of reasonable precision in the use
of language in the context of the circumstances.” Id.
C.
Claim 1 recites that the water detector is “configured to be reliably
installed by an untrained installer or a homeowner and to not require the
services of a plumber or electrician to perform installation, thereby
permitting widespread and cost effective adoption.” Appeal Br. 15 (Claims
App.). This claim language is unusual because, rather than further defining
the water detector’s structure, including by reference to a function that the
water detector is capable of performing, the claim language attempts to
further define the water detector’s structure by the skill level required to
install the water detector. This language fails to provide adequate clarity to
the required structure because the skill level of “an untrained installer or a
homeowner” is ambiguous and vague, and thus, the meaning of a structure
configured to be “reliably installed” by such an installer is unclear.
Appellants assert that a person having ordinary skill in the art would
understand the “configured” limitation to mean “capable of being installed
without special knowledge or tools.” Appeal Br. 8; see also Reply Br. 2
(“the claims are directed to the simple, straightforward concept of a ‘do-it-
yourself’ device installed by an amateur”). The Specification does not,
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however, provide support for this definition. In particular, the Specification
contains no description of, for example, the knowledge or tools required for
installation of the claimed water detector, nor does the Specification define
the skill level of an “untrained installer” or a “homeowner.” But cf. Spec.,
paras. 3, 4 (stating generally that prior art installation methods require
professionals or tradesmen). Appellants’ argument attempts to contrast “an
untrained installer or a homeowner” from a trained professional, e.g., “a
plumber or electrician.” This distinction alone, however, is insufficient to
provide clarity to the claim language because the claim requires the water
detector to be configured to be “reliably installed” by the former. A person
having ordinary skill in the art would appreciate that a “homeowner” can
encompass a wide range of people of all skill levels. As such, the claim
suffers from general vagueness and ambiguity.
Even assuming Appellants’ proffered understanding to be correct, the
claim language of the “configured” limitation, when read in light of the
Specification, fails to further clearly define the structure encompassed by the
limitation. Appellants’ Specification provides a preferred embodiment of a
water detector suitable for mechanical installation in which the detector’s
connector elements are “standard hose connectors used with flexible
hose[s]” that “can be easily, and, manually attached to the respective
detector.” Spec., para. 16; see also id. at para. 25 (“[UJnits such as Di, as
discussed above, are modular and flexible and can be used as standalone
devices, or may be linked to additional structures, such as Hot/Cold supply
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lines. They can be fitted with commonly-used threaded water connectors or,
they can be fitted with any type of connectors commonly known to the
trade.”). In particular, the Specification describes installation as follows:
Methods of installation include, disconnecting a water
supply hose for an appliance at the supply valve of the appliance.
An inflow end of a modular unit in accordance herewith is
threaded onto the supply valve. The water supply hose is
threaded onto [an] “outflow” end of the modular unit. External
water sensor probes are connected to the modular unit. External
water sensing probes are placed as to most efficiently detect
potential leaks given the local environment.
Id. at para. 28.
We agree with Appellants that one having ordinary skill in the art
could discern from the example provided in the Specification that a modular
unit configured with threaded inflow and outflow ends would be an example
of a structure capable of being installed without special knowledge or tools.
Distinct from the “configured” limitation, however, claim 1 separately
recites that the claimed water detector comprises “flow connectors . . .
including a spin-on female pipe connector at an inflow end and a spin-on
male pipe connector on an outflow end.” Appeal Br. 15 (Claims App.).
Thus, it is unclear what additional structural limitation the “configured”
limitation adds to the “spin-on” flow connectors of the claimed water
detector. Stated differently, neither the language of claim 1 nor anything in
Appellants’ Specification delineates how a person of ordinary skill would
determine whether a water detector that includes each of the structural
limitations of claim 1 further satisfies the “configured” limitation.
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Similarly, Appellants provide in the Appeal Brief an example of an
electrical installation that would include “electrical plugs for home wall
outlets.” Appeal Br. 8. We fail to see how one having ordinary skill in the
art would discern from the Specification, which does not provide any
description of the use of electrical plugs for home wall outlets to power the
water detector units, that such structure would be understood as an example
of the claimed configuration. Rather, the Specification describes that the
detectors can be powered by batteries. Spec., paras. 9, 11, 12, and 22.
The Specification also describes that during installation, pairs of the
modular units can be “interconnected” and that “[i]n instances where a
wireless monitoring system is available, the units would be enrolled, or
otherwise made known to the system as would be understood by those of
skill in the art.” Id. at para. 28. The Specification does not provide,
however, any further discussion of the structure that would enable an
installer “without special knowledge or tools” to interconnect pairs of
modular units (e.g., are electrical wiring skills necessary, or can the units be
simply plugged together?) and does not provide any description of the
structure (e.g., software/hardware) that would be necessary to enable an
installer “without special knowledge or tools” to enroll the units with the
homeowner’s wireless monitoring system.
For these reasons, we agree with the Examiner that the claimed
“configured” limitation, under the broadest reasonable interpretation when
read in light of the Specification, is vague and unclear, and a person having
ordinary skill in the art would not be able to discern the metes and bounds of
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the claimed invention in light of this claim language. Appellants have failed
to provide a satisfactory response that apprises us of error in the Examiner’s
rejection. Accordingly, we sustain the rejection of claims 1-20 under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim Appellants’ invention.
II.
Appellants argue the claims subject to the second ground of rejection
as a group. Appeal Br. 9-13. We select claim 1 as representative of the
group, with claims 2-7 and 10-20 standing or falling with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
A.
Appellants contend that the Examiner erred in finding the combined
teachings of Walter and Kaplan render obvious the claimed “flow
connectors carried by the housing including a spin-on female pipe connector
at an inflow end and a spin-on male pipe connector on an outflow end.”
Appeal Br. 9, 12-13. The Examiner determines that Walter shows, in
Figures 1-3, a water detector (system 100 or 200) comprising a housing
(202) and flow connectors carried by the housing and having an inlet and an
outlet (204 and 206). Final Act. 6. The Examiner finds that “Fig[ures] 1-3
of Walter fail to explicitly show or teach the limitations wherein the flow
connectors include ‘a spin-on female pipe connector at an inflow end and a
spin-on male pipe connector on an outflow end.’” Id. at 8. The Examiner
also finds that such male and female connectors, however, are well known in
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the art. Id. (citing Walter, Fig. 20 (showing valve module 600 with a
threaded female end 606 and a threaded male end 608 that allows for a spin-
on coupling)). The Examiner states that it would have been obvious to
modify the flow connections of the device of Walter to be “spin-on”
connectors, as shown in Figure 20 of Walter, “thus allowing the device to be
easily and securely installed to a complementary threaded connection.” Id.
at 9.
We agree with the Examiner and find the proffered reasoning and
explanation adequate. Figure 1 of Walter shows one embodiment of a leak
detection and restriction system 100 having control module 102, valve
module 104, which comprises one or more valves 113, and sensor 106.
Walter, col. 3,11. 46^48, col. 4,1. 43, Fig. 1. Control module 102, valve
module 104, and sensor 106 are separate from each other and connected via
wires or wirelessly. Id. at col. 3,1. 52 - col. 4,1. 4. Walter describes that in
system 100, “the valve module 104 is directly connected to the plumbed line
114 at the wall spigot and is interposed between the plumbed line 114 and
the supply line 110.” Id. at col. 4,11. 35-37. Walter does not explicitly
provide details in the portion of the patent that discusses system 100 of how
the connections between valve module 104 and plumbed line 114 and
between valve module 104 and supply line 110 are effected.
Figure 3 of Walter shows another embodiment of a leak detection and
restriction system 200 of integrated construction in which each component
of the system depicted in Figure 1 is contained within a single housing 202.
Walter, col. 6,11. 28-35, Fig. 3. “[WJater flows in through a water inlet 204
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and out through a water outlet 206.” Id. at 11. 43-45. “A valve 208, such as
a motorized ball valve, is interposed between the inlet 204 and the outlet
206.” Id. at 11. 45-46. Walter does not explicitly provide details in the
portion of the patent that discusses system 200 of how the connections are
effected between plumbed line 114 and water inlet 204 and between water
outlet 206 and supply line 110.
Nonetheless, Water discloses in Figure 20 “an embodiment of a ball
valve 600 usable with the leak detection and correction systems [100, 200]
described herein.” Walter, col. 10,11. 28-30. Walter discloses that “the
valve body 604 includes threaded connecting portions 606 and 608 for
coupling to a supply line.” Id. at 11. 40^11, Fig. 20 (showing a female
threaded connecting portion 606 and a male connecting portion 608); id. at
11. 42^45 (describing an example threaded connection including a % inch
National Pipe Taper pipe thread for engagement with a supply line of a
water heater or other appliance). This disclosure in Walter would have
suggested to one having ordinary skill in the art that one way to effect the
connections to supply line 110 and plumbed line 114 in systems 100 and 200
would be to use threaded female and male connectors for the ends of valve
module 104 and for water inlet 204 and water outlet 206 of housing 202. In
other words, the use of such threaded connections in systems 100 and 200 is
nothing more than the predictable use of these threaded connections
according to their established functions to connect the water inlet and water
outlet of each system to the supply line and plumbed line. See KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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B.
Appellants contend the Examiner erred in finding that the combined
teachings of Walter and Kaplan render obvious the claimed “context
‘wherein the control circuits detect flood conditions, shut off a
malfunctioning water branch and communicate to a premises alarm
communication device or home automation system via wireless link.’”
Appeal Br. 9-10. The Examiner finds that Walter teaches control circuits
that detect flood conditions (via sensors 106, 212), shut off a malfunctioning
water branch (control module 102, 210 sends an actuation signal to close one
or more valves) and communicate with a remote monitoring unit that alerts a
user that a leak has occurred. Final Act. 7 (citing Walter, col. 7,11. 45-55).
The Examiner finds that “Walter fail[s] to explicitly show or teach the
limitations wherein the control circuits communicate to a premises alarm
communication device or home automation system ‘via a wireless link.’” Id.
at 8 (stating that Walter teaches use of wireless communications between the
control module, the valves, and the sensor, but not explicitly with the remote
monitoring unit). The Examiner finds that such wireless communication
between valve modules and remote monitoring units, however, was well
known in the art. Id. (citing Kaplan, Fig. 1). The Examiner states it would
have been obvious “to use wireless communication in the device of Walter
to allow remote and convenient wireless communication between the control
module of the valve and a remote monitoring system, as it is taught by
Kaplan.” Id. at 9.
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Walter discloses that “when the processor 302 determines that there is
a fluid leak, the processor 302 may output one or more signals to alert a user
that a leak [h]as occurred” and that “processor 302 may be in
communication with a remote monitoring unit that alerts a user that a leak
has occurred.” Walter, col. 7,11. 45-55. We agree with the Examiner that
this portion of Walter does not explicitly disclose that the communication
between processor 302 and a remote monitoring unit can be by wireless link.
As noted supra, however, Walter discloses, with reference to system 100,
that control module 102 may communicate with valve module 104 via
wireless communication links, and likewise control module 102 may
communicate with sensor 106 through wireless communication links.
Walter, col. 3,1. 57 — col. 4,1. 4. This disclosure in Walter of using wireless
links for communication between modules of system 100 would have
suggested to a person having ordinary skill in the art that a wireless link
could also be used to communicate between processor 302 and a remote
monitoring unit, because such an arrangement is simply the use of a known
communication method for its established function to achieve predictable
results. KSR, 550 U.S. at 417.
We also agree with the Examiner that Kaplan further demonstrates
that such wireless communication between a leak detection system and a
remote control station was known in the art at the time of Appellants’
invention. In particular, Kaplan discloses a moisture monitoring and control
system 10 including moisture sensors 12, water control valves 16, a local
control station 14 and a remotely located control station 14 A, and RF
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communications devices 20 at each of the sensors, control stations, and
water control valve locations, respectively. Kaplan, col. 2,11. 38-51, col. 3,
11. 8-14, Fig. 1. Kaplan describes that control station 14A may be remote
from the structure being monitored where system 10 is used to monitor and
control moisture in a summer home or warehouse that is not continuously
occupied. Id. at col. 3,11. 8-12. Appellants’ arguments that “neither
reference discloses the ability to ‘communicate to a premises alarm
communication device or home automation system’” (Appeal Br. 9—10) does
not address the Examiner’s proposed modification of Walter with the
teaching of Kaplan and does not persuade us of error in the Examiner’s
obviousness rejection.
C.
Appellants further contend the Examiner erred in finding that the
combined teachings of Walter and Kaplan render obvious the claimed water
detector “configured to be reliably installed by an untrained installer or a
homeowner and to not require the services of a plumber or electrician to
perform installation, thereby permitting widespread and cost effective
adoption.” Appeal Br. 9-10 (“a modular device is not the equivalent of [the
claimed configuration]”).
As discussed supra, Appellants argue that examples of a detector so
configured would have “[gjarden hose connectors or electrical plugs for
home wall outlets.” Appeal Br. 8. Further, as we noted supra, Appellants’
Specification describes threaded connectors and battery-powered detectors.
Although the “configured” limitation is vague and unclear, for the reasons
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set forth above, we agree with the Examiner that Walter discloses, or at least
renders obvious, the claimed configuration as interpreted and described by
Appellants.5 In particular, Walter discloses that housing 202 of system 200
includes a battery compartment, and Walter suggests that the connecting
portions for inlet 204 and outlet 206 could be threaded. Walter, Figs. 3, 20.
For these reasons, Appellants have not shown error in the Examiner’s
finding that Walter, as modified by Kaplan, renders obvious a water detector
configured to be reliably installed as recited in claim 1 and as interpreted and
described by Appellants.
5 Although we have determined supra that this claim limitation is indefinite,
we nonetheless use our discretion in this case to address the prior art
contentions raised by Appellants based on Appellants’ asserted
interpretation. See, e.g., Supplementary Examination Guidelines for
Determining Compliance With 35 U.S.C. § 112 and for Treatment of Related
Issues in Patent Applications, 76 Fed. Reg. 7162, 7169 (Feb. 9, 2011)
(advising examiners to interpret the claim and apply art with an explanation
of how an indefinite term is interpreted under the principles of compact
prosecution). In other words, although the metes and bounds of this claim
language are unclear, Appellants have provided a narrow interpretation that
falls within the claim language, and even under this narrow interpretation,
the claim is rendered obvious in view of the prior art. As such, unlike in the
case of In re Steele, 305 F.2d 859 (CCPA 1962), a determination of
obviousness in this case does not require speculation as to the scope of the
claims. Id. at 862-63 (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims).
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D.
Appellants further argue that “a prima facie case of obviousness has
not been established” because there is no reason, suggestion, or motivation
found in the prior art to modify the system of Walter in the manner claimed
and because the references are not directed to the problem solved by the
claimed invention, i.e., providing a simplified flood prevention device.
Appeal Br. 11-13. These arguments fail to acknowledge the guidance
provided by the Court in KSR that “[rjigid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” 550 U.S. at 421. The Court also held
that it was error to look only to the problem the patentee was trying to solve.
Id. at 420 (“Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed”). As
stated in the Final Action and in the Examiner’s Answer, and as recounted
herein, the Examiner specifically identified teachings in the prior art patents
to Walter and Kaplan that would have suggested modifications to the water
detector system of Walter in the manner claimed. These modifications are
nothing more than “the predictable use of prior art elements according to
their established functions.” Id. at 417. As such, Appellants’ arguments
have not demonstrated error in the Examiner’s rejection of claim 1, and
claims 2-7 and 10-20, which fall therewith, under 35 U.S.C. § 103(a) as
unpatentable over Walter and Kaplan.
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DECISION
The rejection of claims 1-20 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed.
The rejection of claims 1-7 and 10-20 under 35 U.S.C. § 103(a) as
unpatentable over Walter and Kaplan is affirmed.
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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