Ex Parte OmliDownload PDFPatent Trial and Appeal BoardJan 8, 201512272165 (P.T.A.B. Jan. 8, 2015) 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. 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 Copy with citationCopy as parenthetical citation