Ex Parte Omli

Patent Trial and Appeal Board

Jan 8, 2015

12272165 (P.T.A.B. Jan. 8, 2015)

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.
12/272,165 11/17/2008 Kristen Omli 58506/368562 5773
23342 7590 01/09/2015
KILPATRICK TOWNSEND & STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
KIM, SANG K
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
01/09/2015 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
____________________

Ex parte KRISTEN OMLI
____________

Appeal 2012-004006
Application 12/272,165
Technology Center 3600
____________

Before: PATRICK R. SCANLON, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1–4, 6–12, and 14–23. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-004006
Application 12/272,165
- 2 -
THE INVENTION
Appellant’s invention is a reel for storing swimming pool lane lines.
Spec. 2. Claim 1, reproduced below, with paragraph indentation added, is
illustrative of the subject matter on appeal.
1. A pool lane line reeling apparatus for use on a pool
deck surface comprising:
a frame;
an axle that receives a pool lane line
therearound, wherein the axle is rotatably coupled
to the frame;
a manipulandum in communication with the
axle, wherein the axle rotates when the
manipulandum is manipulated;
a lane line guide movably coupled to the
frame, wherein the lane line guide comprises an
axis and defines a path substantially perpendicular
to the axis of the lane line guide to allow passage
of the pool lane line onto the axle; and
an elongated line guide member wherein the
lane line guide traverses along the elongated line
guide member,
wherein the angle between the pool deck
surface and the axis of the lane line guide is less
than 90 degrees.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Arlemark
Genuit
Sanchez
US 4,174,809
US 4,228,553
US 6,055,682
Nov 20, 1979
Oct 21, 1980
May 2, 2000
Appeal 2012-004006
Application 12/272,165
- 3 -
The following rejections are before us for review:
1. Claims 11, 12, and 15–23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sanchez and Arlemark.
2. Claims 1–4, 6–10, 14, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sanchez, Arlemark, and Genuit.
3. Claim 23 is rejected under 35 U.S.C. § 112, second paragraph
(now § 112(b)), as indefinite.
OPINION
Unpatentability of Claims 11, 12, and 15–21 over
Sanchez and Arlemark
Claim 11
The Examiner finds that Sanchez discloses a pool lane line reeling
apparatus substantially as claimed, except that it lacks an explicit disclosure
as to how the line is wound or retracted. Ans. 5–6. The Examiner relies on
Arlemark as disclosing a mechanical means for winding material onto or
unwinding material from a reel. Id. In particular, the Examiner finds that
Arlemark discloses a frame, an axle, a manipulandum, elongated line guide,
a lane line (hose) guide, containing member, and wheels.
In traversing the Examiner’s rejection, Appellant argues that
Arlemark is not analogous prior art. App. Br. 6. Appellant argues that
Arlemark is a different field of endeavor and is not reasonably pertinent to
the particular problem with which the inventor is involved. Id. We
disagree.
A reference qualifies as prior art for a determination under 35 U.S.C.
§ 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d
656, 658 (Fed.Cir.1992).
Appeal 2012-004006
Application 12/272,165
- 4 -
Two separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir.2004). “A reference is reasonably
pertinent if…it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Clay, 966 F.2d at 659. Whether a prior art
reference is “analogous” is a question of fact. Id., at 658
Here, we need not address whether Arlemark is from the same field of
endeavor as we find that it is reasonably pertinent to the particular problem
with which the inventor is involved. Arlemark is directed to winding hose
onto a hose reel. Arlemark, Abstract. Arlemark discloses a runner 7 that is
driven by an endless screw 8 for laying a hose 13 that is wound onto the reel.
Col. 3:1–11. Arlemark and the instantly claimed invention have a similar
purpose in that they both facilitate the orderly winding and unwinding of
elongated material onto/from a reel. “If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.”
Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011) quoting Clay at 659. We think that a mechanism for
winding an irrigation hose onto a reel would have logically commended
itself to an artisan designing a mechanism for winding swimming pool lane
lines onto a reel.
Appellant next argues against the Examiner’s rationale for combining
Sanchez and Arlemark. App. Br. 7. Appellant argues that Arlemark deals
Appeal 2012-004006
Application 12/272,165
- 5 -
with power take-off shafts on farm tractors and, as such, would not be
appropriate for a swimming pool environment. Id. This argument is
unpersuasive. Arlemark teaches the use of a motor to provide power to wind
and unwind a hose. Col. 3:1 – 4:30. A person of ordinary skill in the art
would have been able to distill the teaching of a powered drive for a hose
reel from Arlemark without incorporating all of the other features of a farm
tractor. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures.”).
We have considered Appellant’s other arguments and do not find
them persuasive. We sustain the Examiner’s rejection of claim 11 over
Sanchez and Arlemark.
Claims 12 and 16–21.
In traversing the rejection of claims 12 and 16–21, Appellant relies on
the same arguments that we have previously considered above with respect
to claim 11. For the same reasons expressed above, we sustain the
Examiner’s rejection of claims 12 and 16–21.
Claim 15
Claim 15 depends from claim 11 and adds a limitation directed to an
electric motor. Clms. App’x. Appellant argues that the applied art fails to
disclose an electric motor as claimed. App. Br. 14. In response, the
Examiner contends that Arlemark’s drive motor 33 is inherently electric.
Ans. 15. We disagree.
Arlemark discloses a water turbine 33 that is connected via a
reduction gear assembly 50 to a member that drives the hose reel 5.
Col. 3:24–53. The Examiner has not shown that such water turbine is
Appeal 2012-004006
Application 12/272,165
- 6 -
necessarily electric, and it is at least possible that it could be hydraulic or
mechanical in nature. Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366,
1383 (Fed. Cir. 2009) (indicating an inherent property must necessarily be
present).
We do not sustain the Examiner’s rejection of claim 15.
Unpatentability of Claims 1–4, 6–10 and 14 over
Sanchez, Arlemark and Genuit
Claim 1
The Examiner makes similar fact findings regarding Sanchez and
Arlemark as in the rejection of claim 11. Ans. 6–7. The Examiner relies on
Genuit as disclosing a guide that directs an elongated line (hose) at a
downward angle of less than 90 degrees. Id. As we understand and construe
the language of claim 1, the claimed “axis of the lane line guide” is oriented
in a direction that is perpendicular to the path provided for the lane line
guide and is also substantially perpendicular to the longitudinal axis of the
elongated line guide member (the “defined axis”). In this context, an angle
between the pool deck surface and the “defined axis” of “less than 90
degrees,” as claimed, refers to the orientation of the defined axis as less than
vertical and greater than horizontal so as to be inclined in the direction of the
swimming pool. We review the Examiner’s rejection in light of this
construction.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to modify the
apparatus of Sanchez in view of Arlemark with the teachings of Genuit to
help guide the material during winding and unwinding. Id.
Appeal 2012-004006
Application 12/272,165
- 7 -
In traversing the rejection of claim 1, Appellant argues that a person
of ordinary skill in the art would not look to Genuit to modify Sanchez and
Arlemark to achieve the claimed invention. App. Br. 11. Among other
things, Appellant points out that Genuit’s arm and roller are only used for
deploying, but not for retracting and storing, the vacuum hose. App. Br. 10.
Appellant also points out that Genuit is used with a submerged line (vacuum
hose) in contrast to the instant invention that is used with a floating line. Id.
We agree with Appellant that it is unlikely that a person of ordinary
skill in the art would look to the teachings of Genuit in designing a pool lane
line reel system. The fact that Genuit uses roller 14 to submerge the vacuum
hose and only for deploying, but not retracting, the vacuum hose renders it
unsuitable as a reference to teach the angle between the pool deck surface
and the axis of a lane line guide in a pool lane reeling apparatus.
We do not sustain the rejection of claim 1.
Claims 2–4 and 6–10
Claims 2–4 and 6–10 depend, directly or indirectly, from claim 1.
The Examiner’s rejection of claims 2-4 and 6-10 suffers from the same
infirmity that we have identified above with respect to claim 1. For the same
reasons expressed above, we do not sustain the Examiner’s rejection of
claims 2–4 and 6–10.
Claim 14
Claim 14 depends from claim 11 and adds a limitation that the
manipulandum comprises a crank. Clms. App’x. The Examiner relies on
the combination of Sanchez and Arlemark for all of the limitations of
claim 11 and then relies on Genuit as satisfying the crank limitation. Ans.
6–7, 14–15.
Appeal 2012-004006
Application 12/272,165
- 8 -
Appellant argues that none of applied references discloses a crank
manipulandum. App. Br. 14. This argument has no merit. Genuit discloses
a crank handle. Col. 5:45, Fig. 4.1 We agree with the Examiner that it
would have been obvious to add a crank manipulandum to Sanchez as
modified by Arlemark. Ans. 15. We sustain the rejection of claim 14.
Unpatentability of Claim 22
Claim 22 is an independent claim. Clms. App’x. The Examiner finds
that the combination of Sanchez and Arlemark as well as the combination of
Sanchez, Arlemark, and Genuit disclose all of the elements of claim 22 and
that both combinations would have been obvious to a person of ordinary
skill in the art. Ans. 5–7.
As with claim 1, claim 22 has a limitation directed to the directional
angle of the lane line guide. We do not sustain these rejections for
essentially the same reasons articulated above with respect to claim 1.
Claim 23
Indefiniteness Rejection of Claim 23
The Examiner rejected claim 23 as indefinite, because the meaning of
the term “Captain’s wheel” is unclear. Ans. 4. Appellant argues that the
term is sufficiently clear to one of ordinary skill in the art. App. Br. 13.
However, Appellant does not offer any definition, construction, or

1 “The reel 12 has a cylindrical core 55 instead of the transverse tubular
members 23 employed in the construction of reel 12. Furthermore, the axle
56 is attached at only one end in cantilever fashion to frame 51. The
opposite end of the reel 52 is thus clear of the frame and is free to be rotated
by means of a handle 57 during the rewinding of hose 29.” Genuit, col.
5:40–46.
Appeal 2012-004006
Application 12/272,165
- 9 -
explanation as to how someone of ordinary skill in the art would understand
that the adjective “Captain’s” modifies the meaning of “wheel.”
Appellant directs us to paragraphs 39, 41, 69, and 71 and Figures 2–5
of the Specification and Drawings. App. Br. 13. We have reviewed each of
the paragraphs and each of the drawings and remain unable to discern, with
any specificity, how a “Captain’s wheel” differs from any other wheel. In
particular, nowhere in the Specification is there any disclosure that identifies
the depiction of a wheel in Figures 2–5 as a Captain’s wheel as opposed to a
generic wheel of the hub and spoke variety. Moreover, to the extent that
Appellant believes that “Captain’s wheel” is a well-known term of art,
Appellant provides no extrinsic evidence in the form of a dictionary
definition or any art-specific literature that either defines the term or uses the
term in a context that would allow us to ascertain its meaning. See Evidence
Appendix.
The Patent Act requires that a patent specification shall conclude with
one or more claims “particularly pointing out and distinctly claiming the
subject matter which the inventor . . . regards as the invention.” 35 U.S.C.
§ 112(b) (emphasis added).2 Careful and straightforward claim drafting by
prosecuting attorneys and agents, and rigorous application of the statutory
standard serve an important public notice function within the patent system.
See Predicate logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008).
Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
Patent drafters are in the best position to resolve ambiguities in their claims.

2 Formerly 35 U.S.C. § 112, second paragraph.
Appeal 2012-004006
Application 12/272,165
- 10 -
See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008).
In the instant case, Appellant fails to articulate a meaning for the term
“Captain’s wheel” that would allow the public to reliably distinguish a
Captain’s wheel from other wheels. We sustain the indefiniteness rejection
of claim 23.
Unpatentability of Claim 23 over Sanchez and Arlemark
As we find claim 23 to be indefinite, we find it imprudent to speculate
as to the scope of claim 23 in order to reach a decision regarding the
Examiner’s art rejection over Sanchez and Arlemark, and we therefore
reverse pro forma the unpatentability rejection of claim 1.
In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).

DECISION
1. The decision of the Examiner to reject claims 1–4 and 6–10 is
REVERSED.
2. The decision of the Examiner to reject claims 11, 12, and 16–21
over Sanchez and Arlemark, and Genuit is AFFIRMED.
3. The decision of the Examiner to reject claim 14 over Sanchez,
Arlemark, and Genuit is AFFIRMED.
4. The decision of the Examiner to reject claim 15 over Sanchez and
Arlemark is REVERSED.
5. The decision of the Examiner to reject claim 22 over Sanchez and
Arlemark is REVERSED.
6. The decision of the Examiner to reject claim 23 as indefinite under
35 U.S.C. § 112 is AFFIRMED.
Appeal 2012-004006
Application 12/272,165
- 11 -
7. The decision of the Examiner to reject claim 23 over Sanchez and
Arlemark is REVERSED pro forma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

tkl