ZODIAC POOL SYSTEMS, LLCDownload PDFPatent Trials and Appeals BoardJun 30, 20212020006242 (P.T.A.B. Jun. 30, 2021) Copy Citation 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. 15/067,886 03/11/2016 Bruce William Maskell 061221-1004951 5682 23370 7590 06/30/2021 Kilpatrick Townsend & Stockton LLP - East Coast MAILSTOP: IP DOCKETING - 22 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 EXAMINER CHAUDRY, ATIF H ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 06/30/2021 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRUCE WILLIAM MASKELL ____________ Appeal 2020-006242 Application 15/067,886 Technology Center 3700 _______________ Before EDWARD A. BROWN, SUSAN L. C. MITCHELL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 18–21, 24, and 25.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Zodiac Pool Systems, LLC as the real party in interest. Appeal Br. 3. Appeal 2020-006242 Application 15/067,886 2 THE INVENTION Claims 18 and 24 are the independent claims on appeal. Claim 18, reproduced below, is exemplary of the subject matter on appeal. 18. A method of operating a pool-water circulation system, comprising: a. causing pool water to be received by an inlet of a manifold also comprising an outlet, a chamber, a gate positioned at least partially within the chamber, and first openings; b. electrically activating or deactivating a heating device by respectively electrically connecting the heating device to, or electrically disconnecting the heating device from, a source of electrical power; and c. causing an automatic actuator to position the gate so as to allow the pool water to flow from the inlet to the outlet without significant restriction if the heating device is electrically deactivated or from the inlet, through the first openings, to a heat exchanger for heating when the heating device is electrically activated. THE REJECTIONS2 The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Dickinson US 2,025,665 Dec. 24. 1935 Miller US 3,292,598 Dec. 20, 1966 McIntire US 4,088,113 May 9, 1978 Hornsby US 2004/0004034 A1 Jan. 8, 2004 Wah US 2010/0236538 A1 Sept. 23, 2010 2 “Claims 22, 23, 26, 27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” Final Act. 10. Appeal 2020-006242 Application 15/067,886 3 The following rejections are before us for review: I. Claims 18, 19, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miller, McIntire, Wah, and Hornsby. II. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller, McIntire, Wah, Hornsby, and Dickinson. ANALYSIS3 Rejection I Regarding independent claim 18, the Examiner finds that Miller discloses, inter alia, a method of operating a pool-water circulation system, including the steps of causing pool water to be received by an inlet of a manifold (i.e., front manifold 21 having an inlet at reference numeral 41), the manifold also comprising an outlet (i.e., at reference numeral 47) and first openings (i.e., openings 27 to heat exchanger tubes 23). Final Act. 3 (citing, e.g., Miller 4:10–15, Figs. 1, 2). The Examiner does not specify whether Miller’s manifold 21 has a chamber, as claimed, although Appellant acknowledges that Miller discloses (inlet) chamber 39. Appeal Br. 10. Miller’s figure 2 is reproduced below. 3 Notably, US Application No. 14,027,330, which is a continuation of the present application, and which recited similar claims directed to an apparatus, was abandoned following the Board’s affirmance of the Examiner’s rejection of the claims in view of prior art that is different from the prior art cited by the Examiner in the present appeal. See Appeal No. 2017-000526. Appeal 2020-006242 Application 15/067,886 4 Figure 2 of Miller depicts front manifold 21 with an inlet chamber 39 that communicates with the inlet ends of heat exchange tubes 27 constituting the first pass across the heater, wherein the inlet chamber 39 also has a wall 38 with (i) a by-pass passage 51 therethrough to provide a by-pass across the first two passes across the heater represented by the heat-exchange tube pairs 27 and 28; and (ii) a flow regulator with openings 53 intercommunicating the chambers 39 and 46 to by-pass the entire heat exchanger and divert water flow directly from the inlet pipe 43 to the outlet pipe 49, wherein openings 53 may be provided with a spring biased valve plate 54 to regulate the flow through the heat exchanger. See Miller 3:36–61, 4:7–12. Miller also discloses that “[i]n a two-pass heater where the heat-exchange pairs 29 and 30 would not be used, the passage 51 could constitute an exterior tube interconnecting the chambers 39 and 34, thereby by-passing only the first pass across the heater,” however, “for simplicity of construction and to avoid this piping, a four-pass heater is more readily adapted to the invention.” Id. at 3:65–72. Appeal 2020-006242 Application 15/067,886 5 The Examiner finds that Miller fails to disclose, inter alia, “a gate valve controlled bypass chamber,” and the Examiner relies on McIntire for teaching a pool heater with a gate controlled bypass chamber (i.e., baffle 17, gate valve 18). Final Act. 4 (citing McIntire 3:30, Fig. 1). The Examiner reasons that it would have been obvious to have provided Miller’s pool- water circulation system with a gate controlled bypass chamber, as taught by McIntire, “to provide a regulated bypass.”4 Id. Appellant argues, inter alia that “[t]he Examiner’s obviousness determinations again are conclusory and lack adequate factual support,” referencing the Board’s prior decision in the present application: Appeal No. 2018-000876.5 Appeal Br. 9. First, Appellant contends that “Miller already teaches a bypass within the manifold that is well regulated by plate valve 54” and that the Examiner fails “to explain why a skilled person would seek to add another regulated bypass to Miller when one already exists.” Id. at 11; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit articulated 4 The Examiner relies on Wah for teaching electrically activating and deactivating the heating device and on Hornsby for teaching an automatic actuator for positioning the gate. Final Act. 4–5 (citations omitted). 5 In the prior decision, the Examiner proposed modifying a bypass valve in a pool water solar heating system to include a pendulum valve assembly used in the context of a semiconductor manufacturing to provide an easily operable rotary diverter, whereupon the Board determined that the Examiner’s rationale lacked adequate factual support. Dec. 3–4, 8. Here, however, the Examiner’s rejection is based upon entirely different prior art references, and the Examiner’s findings and rationales for the proposed modifications are distinguishable from the rationale for combining the prior art in the prior decision, as acknowledged by Appellant. See Appeal Br. 10. Appeal 2020-006242 Application 15/067,886 6 reasoning with rational underpinning), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner responds that “providing a regulated bypass chamber with user controlled bypass valve in view of McIntire would provide additional functionality of a user controlled heater bypass in addition to Miller’s existing over-pressure relief mechanism.” Ans. 3. The Examiner explains that “Miller’s existing over-pressure relief mechanism . . . is a pressure dependent valve whose purpose is . . . to compensate for variations in supply pressure.” Id. (citing Miller 4:37). The Examiner reasons that “one of ordinary skill in the art would recognize that providing a regulated bypass chamber with bypass valve shown in McIntire would provide an additional feature of a user controlled bypass function,” in that McIntire’s gate allows Miller’s water heater to be bypassed by the pool water when the heater is not in use. Id. at 3–4. The Examiner provides a “non-limiting exemplary schematic Figure of the combination of Miller and McIntire,” reproduced below. Ans. 5. The Examiner’s exemplary schematic depicts an equation showing Miller’s Figure 2 depiction of manifold 21 added with McIntire’s Figure 3 depiction of a wood burning automatic swimming pool heater have an external pool water tubing with a gate valve 18, which combined are illustrated by the Appeal 2020-006242 Application 15/067,886 7 Examiner as including a “bypass with a valve” between the inlet and outlet tubes of and external to Miller’s manifold 21. Id. Appellant argues correctly that claim 18 requires that the gate is positioned at least partially within the chamber. Reply Br. 4. Although the Examiner indicates that the schematic Figure depicting the Examiner’s proposed combination is non-limiting and exemplary, the Examiner does not provide an alternative description of a proposed modification that results in McIntire’s bypass valve being at least partially within Miller’s chamber 39, as required by claim 18—in addition to Miller’s regulating valve 53, as specified by the Examiner. We decline to suggest a modification that places McIntire’s gate at least partially within Miller’s chamber, in view of the Examiner’s reasoning that the proposed modification of Miller, in view of McIntyre, is to provide for a regulated bypass, which Miller already incorporates via regulating valve 53, rather than, for example, for the purpose of conserving energy when the heating system is deactivated, as suggested by Hornsby, such that the valves serve different purposes, and also in view of Miller’s suggestion that such a bypass is accomplished by external piping, as discussed supra. Notably, in an ex parte appeal, the Board is basically a board of review, wherein we review rejections made by patent examiners. See Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. Appeal 2020-006242 Application 15/067,886 8 See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014). Accordingly, we cannot sustain the Examiner’s rejection of independent claim 18 and claim 19 depending therefrom. The Examiner relies on the same deficient proposed combination in the rejection of independent claim 24, and therefore, we also cannot sustain the Examiner’s rejection of independent claim 24, and claim 25 depending therefrom. Final Act. 5–7. Rejection II The Examiner’s reliance on Dickinson for disclosing a gate with a solid face fails to cure the deficiencies in the Examiner’s reasoning with respect to modifying Miller, in view of McIntire, as discussed supra. Accordingly, for essentially the same reasons as stated supra, we also cannot sustain the Examiner’s rejection of claims 20 and 21. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 19, 24, 25 103(a) Miller, McIntire, Wah, Hornsby 18, 19, 24, 25 20, 21 103(a) Miller, McIntire, Wah, Hornsby, Dickinson 20, 21 Overall Outcome 18–21, 24, 25 REVERSED Copy with citationCopy as parenthetical citation