ZODIAC POOL SYSTEMS, LLC

Patent Trials and Appeals Board

Jun 30, 2021

2020006242 (P.T.A.B. Jun. 30, 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.
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.
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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.
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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.
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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.
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Application 15/067,886

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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
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Application 15/067,886

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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.
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Application 15/067,886

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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