Joseph BertagnolliDownload PDFPatent Trials and Appeals BoardNov 12, 202014097237 - (D) (P.T.A.B. Nov. 12, 2020) 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. 14/097,237 12/04/2013 Joseph J. Bertagnolli JB001CIP 9784 114490 7590 11/12/2020 C. Allen Black Law Office 1579 Montgomery Rd Allison Park, PA 15101 EXAMINER EVANS, EBONY E ART UNIT PAPER NUMBER 3647 MAIL DATE DELIVERY MODE 11/12/2020 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 JOSEPH J. BERTAGNOLLI ____________ Appeal 2020-001872 Application 14/097,237 Technology Center 3600 ____________ Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2020-001872 Application 14/097,237 2 THE INVENTION Appellant’s invention relates to deicing fluids held in containers. Spec. 2. Claim 1, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 1. A kinetic deicing system comprising, a pump in a contained fluid wherein the fluid is at a temperature below a freezing point of the fluid; wherein the pump is in electrical communication with an electrical current source; and wherein the pump circulates the fluid circumferentially thereby deicing the contained fluid. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Sare US 3,373,821 Mar. 19, 1968 Moore US 4,584,966 Apr. 29, 1986 Testa US 5,692,454 Dec. 2, 1997 Northrop US 6,460,483 B1 Oct. 8, 2002 The following rejections are before us for review: 1. Claims 1–4, 7–9, 11–14, and 17–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Testa and Sare. 2. Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Testa, Sare, and Northrop. 3. Claims 10 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Testa, Sare, and Moore. Appeal 2020-001872 Application 14/097,237 3 OPINION Unpatentability of Claims 1–4, 7–9, 11–14, and 17–19 over Testa and Sare Claim 1 The Examiner finds that Testa discloses the invention substantially as claimed except for explicitly disclosing that the fluid is below its freezing temperature, for which the Examiner relies on Sare. Final Act. 3. 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 operate Testa’s pump in sub- freezing temperatures. Id. According to the Examiner, a person of ordinary skill in the art would have done this to keep the fluid from freezing. Id. Appellant concedes that the claimed device is “simple,” but, nevertheless, argues that the Examiner misconstrues the term “below” as it relates to a liquid’s freezing point. Appellant contends that the fluid contemplated in claim 1 has been “super-cooled” to a temperature that is “below,” not merely “at” its freezing point. Appeal Br. 1. In response, the Examiner explains that the rejection is based on an interpretation that the word “below” means a point below where the liquid would freeze. Ans. 3. “Sare clearly teaches that it is known to use a pump to circulate water having a temperature below its freezing point.” Id. at 4. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Appeal 2020-001872 Application 14/097,237 4 Appellant’s Specification teaches that: The term “deicing” is to be construed as mitigating freezing, crystallization or gelling of fluids as well as preventing freezing, crystallization or gelling of the fluid when the fluid temperature drops below the fluid’s freezing point. For example a kinetic deicing system is “deicing” a fluid where the system is imparting kinetic energy into a fluid in anticipation of the ambient temperature dropping below the freezing point of the fluid. Spec. 3 (emphasis added). [T]he pump should be able to sufficiently move enough fluid to deice the fluid when the ambient temperature is below freezing. Where the fluid is water in a livestock watering tank, the pump should operate to deice the water to the extent that animals can drink ad libitum in sub-freezing temperatures. Id. at 5 (emphasis added). The primary product application envisaged by Appellant is prevention of freezing in livestock water troughs. Id. at 1. Regardless of the specific temperature that a fluid freezes “at,” Appellant’s invention contains no teaching, apparatus, or mechanism to drive the temperature of the fluid in the container to a so-called “super cooled” point that is “below” its freezing point. See generally Spec. Appellant does not mention the chemistry and physics involved in “super” cooling of a fluid until, for the first time, in the Appeal Brief. As explained in the above quoted passages from Appellant’s Specification, the object of the invention is to keep livestock drinking water from freezing when the “ambient temperature” drops below the freezing point of the fluid, i.e., “sub-freezing temperatures.” Spec. 5. When ambient air temperatures are above the freezing point for a sufficient period, we can expect the fluid (water) temperature to also be above its freezing point. As the ambient air cools, we can reasonably expect the water temperature to Appeal 2020-001872 Application 14/097,237 5 lower until it reaches its freezing point, at which time we can reasonably expect water at the surface of the container to begin to freeze. Given the complete dearth of disclosure in Appellant’s Specification regarding any chemical or physical mechanism by which ordinary watering trough liquid reaches “super cooled” temperatures, we have no basis for believing that Appellant’s cattle trough water is any more or less super cooled than the water in Testa and Sare when exposed to similar ambient conditions. Appellant’s inartful use of the word “below” in claim 1 is insufficient to distinguish the claimed invention over the prior art. Thus, in view of the non-technical manner that terms relating to below freezing temperatures (or similar expressions) are used in the Specification, together with the fact that the Specification does not clearly delineate between sub-freezing ambient air temperatures and fluid temperatures, we agree with the Examiner that a person of ordinary skill in the art would construe the phrase “at a temperature below a freezing point of the fluid” in claim 1 as broad enough to encompass a temperature that is “at” the freezing point. Appellant next argues that the Examiner errs in construing the term “circumferentially” as it is used in claim 1. Appeal Br. 3. In response, the Examiner points out that fluid may be contained in containers that are cylindrical, ovoid, rectangular, cubit or other shape. Ans. 4. Appellant’s Specification explains that: The fluid may be recirculated in any direction that deices the fluid . . . The term “recirculating pump” is intended to be construed broadly to include any means known in the art to circulate, move, or otherwise impart kinetic energy into a fluid by means of an intake and output. Spec. 3–4. Appeal 2020-001872 Application 14/097,237 6 A person of ordinary skill in the art would understand that, due to operation of a pump, fluid in the container “circulates” in a manner that generates a current and that the current may be stronger (or faster) toward the periphery of the container as compared to toward the middle of the container. A person of ordinary skill in the art would understand that if a fluid current is initiated near the periphery of a container due to action of a pump, well known hydrologic principles would likely come into play to cause a slower moving “eddy” current to form toward the center of the container. Appellant provides a single drawing that depicts fluid output 14 and fluid intake 13, together with arrow “A” that purportedly shows a circulation path of the fluid. See Fig. 1. Appellant’s Specification discloses no apparatus or other mechanism to cause the fluid to circulate in a manner that conforms to the shape of a substantially perfect geometric circle. See generally Spec. Appellant next attempts to distinguish Sare because it causes vertical fluid currents that draws water from lower depths in the container where the fluid is warmer. Appeal Br. 4. In response, the Examiner states that Sare merely teaches that it is well-known in the art to use a pump to circulate a liquid to inhibit freezing. Ans. 5. In the rejection before us, the Examiner relies on Testa, not Sare, as teaching a pump that circulates fluid circumferentially. Non-Final Act. 3. Thus, Appellant’s argument is viewed as an individual attack on the Sare reference, when the rejection is based on a combination of Testa and Sare. However, it is well settled that non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of Appeal 2020-001872 Application 14/097,237 7 references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). As between the Examiner and Appellant, the Examiner has stated the more persuasive position. Both Appellant and Sare impart movement to fluid to inhibit freezing. A person of ordinary skill in the art would understand, based on well-known physical principles of heat transfer that stirring a fluid, whether initially and/or primarily in a horizontal or a vertical direction will tend to make the temperature of the body of fluid more uniform. Appellant presents neither evidence nor persuasive technical reasoning that circulating fluid “circumferentially” produces new or unexpected results compared to imparting movement to fluid in a direction that is not “circumferentially” See generally Appeal Br. Moreover, Appellant’s argument that Sare moves water vertically fails to account for any substantially horizontal rotational movement of the water that is imparted by Sare’s impeller. In any event, Testa teaches circumferential flow, while Sare is merely relied on to show that it was known to impart motion to water to inhibit freezing. Non-Final Act. 3. Appellant presents neither evidence nor persuasive technical reasoning to support a finding that current flow in Testa does not have a circumferential directional component. See Testa, Fig. 1. Furthermore, a cursory review of Appellant’s Figure 1 and the accompanying description thereof in Appellant’s Specification does not support a view that more than ordinary skill is required to arrive at the claimed invention. In view of the foregoing discussion, we sustain the Examiner’s unpatentability rejection of claim 1. Appeal 2020-001872 Application 14/097,237 8 Claims 2 and 13 Claim 2 depends from claim 1 and claim 13 depends from independent claim 12. Claims App. The two claims are argued together. Appeal Br. 5. Claim 2 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that Testa does not disclose that residual ice formation is forced to a center of the contained fluid. Appeal Br. 5. This argument is not persuasive. Testa discloses a substantially hemispherical basin where recirculated water is added at the top and drained from the bottom. Testa, Fig. 1. Anyone who has watched water drain from the bottom of a basin is familiar with the cyclonic or circumferential direction that the flow assumes as it drains. This well-known principle is captured in the Examiner’s finding that “any floating ice would be pulled to the center by the current being created by drain pipe 28.” Non-Final Act. 4. Appellant presents neither evidence nor persuasive technical reasoning that rebuts the Examiner’s finding. We are not apprised of error and, therefore, sustain the rejection of claims 2 and 13. Claim 3 Claim 3 depends from claim 2 and adds the limitation: “wherein the water is at a temperature below the freezing point of the water.” Claims App. Appellant argues that the prior art does not disclose water that is super cooled. Appeal Br. 5–6. Appellant’s argument is based on an argument for a proposed construction of the phrase “at a temperature below a freezing point of the fluid” that we previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Id. We sustain the rejection of claim 3. Appeal 2020-001872 Application 14/097,237 9 Claims 4 and 14 These claims are argued together. Appeal Br. 6. Claim 4 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 4 depends from claim 2 and adds the limitation: “wherein the water is contained in an open top receptacle selected from the group consisting of a livestock water trough, water tank, bucket, pond, pool, and birdbath.” Claims App. Testa discloses an open basin bird bath. Testa, Fig. 1. The Examiner’s finding that Testa discloses a bird bath is amply supported by the record. Appellant’s argument that the prior art does not disclose a livestock trough is of no moment where Appellant explicitly included “birdbath” in the Markush group of claim 4. We sustain the rejection of claims 4 and 14. Claims 7, 8, 9, 17, 18, and 19 Appellant does not argue for the separate patentability of these claims apart from arguments presented with respect to claim 1, which we have previously considered. We sustain the Examiner’s unpatentability rejection of claims 7, 8, 9, 17, 18, and 19. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Claim 11 Claim 11 is an independent claim that differs in scope to claim 1 primarily in that its preamble contains a “consisting essentially of” transition phrase. Claims App. The container in claim 11 is explicitly limited to a livestock water trough or container. Id. Appellant argues that the Examiner errs in failing to limit circumferential flow to a pattern of “rigid body rotation.” Appeal Br. 11. Appellant repeats its earlier argument about the phrase “at a temperature Appeal 2020-001872 Application 14/097,237 10 below a freezing point of the fluid. Id. We previously considered these arguments and found them unpersuasive with respect to claim 1 and find them equally unpersuasive here. Appellant next argues that the “consisting essentially of” transition limits the claim so as to exclude the piping of Testa’s bird bath and the “warming water” of Sare. Id. Appellant argues that its Specification specifically excludes the use of heaters. Id. at 12. The Federal Circuit provides the following guidance on interpretation and application of the transition phrase — “consisting essentially of.” “Consisting essentially of” is a transition phrase commonly used to signal a partially open claim in a patent. Typically, “consisting essentially of” precedes a list of ingredients in a composition claim or a series of steps in a process claim. By using the term “consisting essentially of,” the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention. PPG Industries v. Guardian Industries Corp., 156 F.3d 1352, 1354 (Fed. Cir. 1998) (emphasis added). Consistent with prevailing law, the Examiner responds to Appellant’s argument in the following manner: In response to appellant’s argument that the transitional phrase “consisting essentially of which excludes the elements of piping and tubing found in Testa and the element of warming water” for the purposes of searching for and applying prior art . . . absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” Ans. 8 (citing PPG, 156 F.3d at 1355). The Examiner further states that: The specification discloses on page 4 lines 1–4 that the pump is intended to be construed broadly to include any means known Appeal 2020-001872 Application 14/097,237 11 in the art to circulate, move or otherwise impart kinetic energy into a fluid by means of an intake and output . . . or any other form or pump. If an appellant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. Id. (citing In re De Lajare, 337 F.2d 870 (CCPA 1964)). Appellant’s Specification explicitly discloses that the pump is in fluid communication with intake 13 and output 14. Spec. 3. Testa’s pump is disposed in the pedestal of the bird bath. Testa, Fig. 1. There is no limitation or other indication in claim 11 that the pump must be disposed in the water trough and immersed in the water. There is similarly no limitation or other indication that limits the length of intake and output conduits 13 and 14. There is, moreover, no indication in the Specification or in Appellant’s Appeal Brief that the disposition of the pump and the length of the conduits effect the basic and novel properties of the invention. See generally Spec., Appeal Br. Here, Appellant makes no effort to describe, much less establish with evidence and carry a burden of proof, as to what the purported basic and novel properties of the invention actually are. De Lajarte, 337 F.2d at 874. In the absence of any analysis by Appellant as to what the basic and novel properties of the invention are, we are not apprised of error and sustain the rejection of claim 11. Claim 12 Claim 12 is an independent claim that is substantially similar in scope to claim 1 except that it recites a method instead of an apparatus. Claims App. Appellant argues that the Examiner errs in relying on the same Appeal 2020-001872 Application 14/097,237 12 apparatus prior art references that we used in the rejection of claim 1. Appeal Br. 7. Appellant also argues that the Examiner fails to make appropriate findings regarding a motivation to combine the prior art. Id. In response, the Examiner explains that, under prevailing law, when a prior art device is the same as a device described in Appellant’s Specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. Ans. 6 citing In re King, 801 F.2d 1324 (Fed. Cir. 1986); MPEP 2112.02. The legal principles recited by the Examiner are correctly and appropriately applied to the issue before us. Id. Furthermore, the Examiner’s rationale for combining the prior art, namely, to prevent freezing, is sufficient to support the rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, Appellant’s argument appears to be predicated on the assumption that a person of ordinary skill in the art is a layman engaged in livestock husbandry. Appeal Br. 7. The level of skill in the art can often be determined from a review of the prior art. Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). We find no basis for lowering the level of ordinary skill to that of a lay cattle rancher. Based on the prior art of record, we discern the level of ordinary skill to be someone engaged in the design of fluid containment and recirculation systems. Appellant’s invention is well within the sphere of such skill level. We are not apprised of error and, therefore, sustain the Examiner’s rejection of claim 12. Appeal 2020-001872 Application 14/097,237 13 Unpatentability of Claims 5, 6, 15, and 16 over Testa, Sare, and Northrop Claims 5 and 15 Appellant argues claims 5 and 15 as a group. Appeal Br. 8–9. Claim 5 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 5 depends from claim 1 and adds the limitation: “wherein the pump is a recirculating pump that recirculates the fluid by means of an impeller, propeller, jet, peristaltic pump, bilge pump, piston pump, or a combination thereof.” Claims App. The Examiner notes that, although Testa discloses a pump, it is silent as to whether it uses an impeller. Non-Final Act. 6. The Examiner relies on Northrop as disclosing a device that uses a pump that has an impeller. Id. Appellant argues that Northrop’s pump does not circulate water circumferentially. Appeal Br. 8–9. We have previously found that Testa circulates circumferentially as claimed in connection with claim 1. Northrop merely supplies missing detail in Testa regarding a particular type of pump. Appellant’s argument is an individual attack on Northrop where the rejection before us is based on a combination of three references. However, it is well settled that non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. We sustain the rejection of claims 5 and 15. Claims 6 and 16 Appellant argues claims 6 and 16 as a group. Appeal Br. 9. Claim 6 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 6 depends from claim 1 and adds the limitation: “wherein the pump recirculates the fluid at Appeal 2020-001872 Application 14/097,237 14 a rate of 2,000 gallons/hour (GPH), 1,500 GPH, 530 GPH, 500 GPH, 250 GPH, 100 GPH, 50 GPH, 25 GPH, or 10 GPH.” Claims App. The Examiner relies on Northrop as disclosing a pump that circulates at a rate of 25 GPH or 10 GPH. Non-Final Act. 6. Appellant does not dispute that Northrop’s pump operates at the claimed rate but, nevertheless, argues that Northrop’s pump is used to raised water vertically, not circumferentially. Appeal Br. 9. This is another individual attack on Northrop and is equally ineffective regarding claim 6 as it is regarding claim 5 discussed above. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. We sustain the rejection of claim 6 and 16. Unpatentability of Claims 10 and 20 over Testa, Sare, and Moore Appellant argues claims 10 and 20 as a group. Appeal Br. 9–10. Claim 6 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 10 depends from claim 1 and adds the limitation: “wherein circulation is controlled by a thermostatic control device in electrical communication with the pump.” Claims App. The Examiner relies on Moore as disclosing a thermostat. Non-Final Act. 7. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to use a thermostat in Testa. Non-Final Act. 7. Appellant does not dispute that Moore discloses the use of a thermostat but, nevertheless, argues that Moore contains a number of features that are different than the claimed invention. Appeal Br. 9–11. This argument is not persuasive. The use of thermostats is ubiquitous in a wide variety of systems where temperature control is desired. We agree Appeal 2020-001872 Application 14/097,237 15 with the Examiner that it would have been obvious to include a thermostat in Testa. We view Moore as but one example of the ubiquitous and varied uses of thermostats. We sustain the Examiner’s rejection of claim 10 and 20. CONCLUSION Claims Rejected § References Affirmed Rev’d 1-4, 7-9, 11-14, 17-19 103 Testa, Sare 1-4, 7-9, 11-14, 17-19 5, 6, 15, 16 103 Testa, Sare, Northrop 5, 6, 15, 16 10, 20 103 Testa, Sare, Moore 10, 20 Overall Outcome 1-20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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