Ex Parte 6223548 et al

Board of Patent Appeals and Interferences

Oct 7, 2009

90006567 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PORT-A-COOL, LLC1
Appellant and Patent Owner
____________________

Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B12
Technology Center 3900
____________________

Decided: October 8, 2009
____________________

Before CAROL A. SPIEGEL, JOHN C. KERINS and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Port-A-Cool, LLC is the real party in interest; the original assignee,
General Shelters of Texas, S.B., Ltd., having a thirty percent interest in Port-
A-Cool, LLC (App. Br. 1).
2 Issued May 1, 2001 to Calvert.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

2
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a final rejection of claims 1, 3, 5-9, 17-21,
24-27 and 29. Claims 2, 4, 10-16, 22, 23, 28 and 31-35 have been found
patentable and/or confirmed. We have jurisdiction under 35 U.S.C. §§
134(b) and 306 (2002).
The U.S. 6,223,548 B1 patent (hereinafter “‘548 patent”) was
involved in two infringement actions:
1. Gen. Shelters of Texas, S.B., Ltd. v. Advanced Radiant Sys.,
Civil Action No. H-01-3140; and
2. Gen. Shelters of Texas, S.B., Ltd. v. Quietaire Cooling, Inc.,
Civil Action No. H-01-4395.
(App. Br. 2).
According to the Appellant, both of these proceedings have been
administratively closed in view of the present reexamination proceeding, but
are subject to reinstatement upon conclusion of the present reexamination
proceeding (App. Br. 2).
In addition to the arguments submitted in the Appeal Brief and the
Reply Brief, the Appellant also relies on the Declarations of Messrs. Calvert
and Campbell.

INVENTION
The Patentee claims a cooler housing which can be used in a portable
evaporative cooler and a method of making the same wherein the cooler
housing is supported on a base that is integrally formed with the housing.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

3
Representative independent claims 1 and 24 read as follows (App. Br.,
App’x 2; emphasis added):
1. A cooler housing supported on a base, having an exterior,
an interior, and front and rear openings, wherein the base is
integrally formed with the housing, the housing further
comprising at least one brace integrally formed to the interior
capable of supporting at least one evaporative cooling pad
positioned within the rear opening of the housing.

24. A method of making a cooler housing supported on a
base, having an exterior, an interior, and front and rear openings
comprising the steps of:
(a) integrally forming the housing with a base; and
(b) forming at least one evaporative cooling pad support
within an interior side of the housing.

Independent claim 17 also recites a cooler housing having an
integrally formed base and an integrally formed brace.
In addition, claims 9 and 21 are directed to an evaporative cooler
including a cooler housing of claims 1 and 17, respectively. Representative
claim 9 reads (App. Br., App’x 2):
9. An evaporative cooler comprising the cooler housing of
claim 1.

REJECTIONS
The Examiner relies on the following in rejecting the claims:
1. Calvert 5,606,868 Mar. 4, 1997
2. Strasser 6,001,436 Dec. 14, 1999
3. Deposition of Phil Calvert taken June 19, 1998 (hereinafter
“Deposition”) in a patent infringement action unrelated to the ‘548 patent
presently being reexamined.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

4
The Examiner rejected claims 1, 3, 5, 6, 8, 9, 17, 18, 20, 21, 24, 25,
27, 29 and 30 under 35 U.S.C. § 103(a) as obvious over Calvert3.
The Examiner also rejected claims 1, 3, 5, 6, 8, 9, 17, 18, 20, 21, 24,
25, 27, 29 and 30 under 35 U.S.C. § 103(a) as obvious over Calvert and the
Deposition4.
The Examiner rejected claims 7, 19 and 26 under 35 U.S.C. § 103(a)
as obvious over Calvert and Strasser.
Except for arguments directed to the stability of the claimed unit
(claims 9 and 21), the Appellant has not separately argued any particular
claim on appeal. Therefore, we decide this appeal on the basis of claims 1
and 9. 37 C.F.R. § 41.37(c)(1)(vii).
We AFFIRM.

ISSUES
The following issues have been raised in the present appeal.

3 The Appellant’s Answer does not identify claim 8 as having been rejected
(App. Br. 3). This appears to be a typographical error in view of the record
(Final Off. Action 2; Ans. 4). In addition, the Examiner identified claim 26
as being rejected (Ans. 4). However, this also appears to be a typographical
error since it is inconsistent with the Examiner’s explicit finding that Calvert
does not describe resin transfer molding recited therein and reliance on
Strasser in combination with Calvert to reject claim 26 (Ans. 6).

4 The Examiner identified claim 26 as being rejected (Ans. 4). However,
this appears to be a typographical error since it is inconsistent with the
Examiner’s explicit finding that Calvert does not describe resin transfer
molding recited therein and reliance on Strasser in combination with Calvert
to reject claim 26 (Ans. 6).
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

5
1. Whether the Appellant has shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to make the frame of the evaporative cooler described in Calvert integral
with the housing thereof.
2. Whether the Appellant has shown that the Examiner erred in
finding that Calvert describes a housing including an integrally formed brace
capable of supporting an evaporative cooling pad.
3. Whether the Appellant has shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to eliminate the frame and caster of the evaporative cooler described in
Calvert, and to use the bottom of the housing as an integrally formed base
for small evaporative cooler units.
4. Whether the Appellant has shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to utilize resin transfer molding as used in the manufacture of a turbocharger
housing described in Strasser to form the cooler housing of Calvert.
5. Whether the Appellant has established nonobviousness of the
claimed invention through evidence of secondary considerations including
long-felt need, commercial success and copying.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Calvert describes a portable evaporative cooling unit 10
including a housing 12 with a front opening 46 to which a motor-driven fan
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

6
42 is mounted, and a rear opening 20 to which air-permeable pad media
sections 22 are disposed (col. 3, ll. 29-30, 37-40; col. 4, ll. 5-9; Abst.; figs. 1
and 2).
2. Calvert also describes that the housing 12 terminates in fixed
pad retainers 70 which, together with the removable pad retainer 28, holds
the air-permeable pad media sections 22 from each side (col. 4, ll. 53-56; fig.
3). The cross-section of the housing 12 of Calvert illustrates that the fixed
pad retainers 70 are integrally formed at the end of the housing 12 (fig. 4).
3. Calvert further discloses that the housing 12 is mounted on a
frame 14 and that casters 16 are attached to the bottom of the frame 14 to
provide portability to the evaporative cooling unit 10 (col. 3, ll. 31-34; fig.
1).
4. According to the Appellant, in a Deposition conducted on June
19, 1998, in a litigation relating to Patent Number Des. 362,905, Mr. Phillip
D. Calvert answered various questions with respect to 24" and 16" models of
Port-A-Cool devices as follows:
Q. Let's go back to the Port-A-Cool fans, not necessarily the
36-inch, how the Port-A-Cool fans generally are built. If we
look at the 36-inch Port-A- Cool fan as they're built today, does
that fan have a stand?

A. As they're built today, as in right now, this very instant
on our production line?

Q. Yes, sir.

A. I'm going to give you a double answer here and say yes
and no. And let me clarify that and say first off it's not a stand
in the sense that the caddy was a stand on the previous model of
the - because now I'm talking about the Port-A-Cool 2000.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

7

Q. Okay, sir.

A. As a matter of fact, for nomenclature purposes I call it a
frame; and it is simply just that. It's a frame of tube steel
wherein the casters attached to that and then the entire housing
set down over it.

Q. Okay, sir. Sounds like you're talking about caddies versus
frames at this point; is that right?

A. I think that's fair, yes.

Q. If you'll take a look back at the '904 or '905 patent, is
there any depiction of either a caddy or a frame in any of those
drawings?

A. No.

Q. Is there a stand in those drawings?

A. No.

Q. Do those fan housing that are depicted by the '905 patent
just sit on the floor?

A. They can, yes.

Q. Were they designed to sit on the floor or were they
designed for use -

A. That's not as simple an answer as the question might
indicate. No and yes. Again, the 36 was designed specifically to
set on a stand, while the 24 was designed to go either way and
the 16 only goes without a stand.

(The Appellant’s legal representative John Wilson Jones provided an
excerpt of p. 60, l. 1 through p. 61, l. 25 on Nov. 24, 2008, while
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

8
pages 8 and 9 of the Appeal Brief reproduced an excerpt of p. 59
through p. 60, l. 24).

5. The Declaration of Mr. Phillip D. Calvert, dated December 27, 2006,
states:
A. In May, 1995, the concept of an even smaller PORT-A-
COOL® unit was considered and the 16" model was designed
with the [sic] its first production occurring in mid-1996. This
unit was considered a table-top or bench-top model. The
housing of this 16-inch model was not integrally formed with a
base which supported the housing. As a result, the unit was
unstable. Exhibit D is a copy of a brochure of the 16 inch model
which [sic]. The gentleman's arm rested on the top of the unit to
provide the necessary support to the unit to prevent the unit
from falling. Other promotional shots were taken with the
models set forth in Exhibit D wherein the unit was supported to
prevent tip over. See, Exhibit E. As noted in Exhibit D and
Exhibit E, the bottom of the housing of the 16" model did not
extend across the entire width or length of the housing. This is
indicative that the bottom of the housing of the 16" model could
not have supported the housing.
(¶ 10).

B. In the Office Action of September 27, 2006, the
Reexamination Examiner states that in the Deposition of Phil
Calvert, Exhibit 10 filed with the Reexamination Request, pg.
60, line 25 to pg. 61, line 4, I "indicated that the frame and
caster arrangement would be superfluous in a situation where a
smaller unit were used". This deposition was taken on June 19,
1998. The 24-inch fan and the 16-inch fan that is being
referenced in the deposition pertained to the units discussed
above. To the question as to if the housings "sit on the floor or
were they designed for use -", I responded that "the 36 was
designed specifically to set on a stand, while the 24 was
designed to go either way and the 16 only goes without a
stand." No further questions were directed to either the 24 or 16
inch models after that statement. My answer provided on June
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

9
19, 1998 is consistent with the facts, i.e., the 36 inch unit was
designed to set on a stand and thus always set on the floor; the
16 inch was designed as a "table-top" and thus was not
designed to go with a stand and the 24 inch was designed to
either sit on the floor or not sit on the floor. In the latter
situation, the 24 inch model required casters. No 24 inch model
of evaporative cooler designed or sold by General Shelters,
prior to 1998, was designed to sit by itself, i.e., without a stand.
As stated in paragraph 9, the 24 inch model of PORT-A-
COOL®, first sold in 1998, was the first 24 inch model that did
not require a stand because the base and housing of this unit
were integrally formed.
(¶ 19).

6. The Declaration of Mr. Phillip D. Calvert, dated December 27, 2006,
also establishes, inter alia, that:
A. Competitors’ products Mega-Breez, CoolSpace and
QuietCool were introduced into the marketplace after the
introduction of PORT-A-COOL® 2000 products developed in
January 1995 which featured the use of a separate caddy base.

B. The legal counsel for General Shelters rendered an
opinion that at least some of the claims reexamined would be
infringed by these Competitors' products which include an
integrally formed base that supports the housing.
(¶¶ 21-23).

7. The Declaration of Mr. Rick Campbell, dated December 27, 2006,
states:
In 1998, General Shelters introduced the PORT-A-COOL®
2000 evaporative cooling unit. . . . [which] had a base that was
integrally formed with the housing, . . . . From that point
forward, the only evaporative cooler unit marketed by General
Shelters was the PORT-A-COOL® 2000 product line wherein
the base was integrally formed with the housing.
(¶ 11).
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

10

General Shelters marketed and advertised the PORT-A-
COOL® 2000 as a unitary construction. For instance, see the
attached Exhibit B. As a result of the increased benefits
provided by the unitary construction of the PORT-A-COOL®
2000 unit, sales activities of evaporative coolers of General
Shelters spiked sharply. The increased sales activity of the
PORT-A-COOL® product line of General Shelters has
consistently remained strong after introduction of the PORT-A-
COOL® 2000 product line.
(¶ 12).

8. The Declaration of Mr. Rick Campbell also includes a table tabulating
the number of PORT-A-COOL® products sold during 1994 to 2004 (¶ 12).
The table is reproduced below:

The table reproduced above tabulates the number of PORT-A-COOL®
products sold during 1994 to 2004.

9. Strasser describes a turbocharger housing that may be manufactured
using compression molding, injection molding or resin transfer molding (col.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

11
3, ll. 9-11; col. 9, ll. 1-59). Hence, Strasser establishes that resin transfer is a
well known molding technique for forming components such as housings.

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
In KSR, the Supreme Court explained “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR, 550 U.S. at 417. Moreover, the Supreme Court also
stated that “if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.

Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

12
Secondary Considerations
In Graham, the Supreme Court stated that “secondary considerations
[such] as commercial success, long felt but unsolved needs, failure of others,
etc., might be utilized to give light to the circumstances surrounding the
origin of the subject matter sought to be patented. As indicia of obviousness
or nonobviousness, these inquiries may have relevancy.” See Graham, 383
U.S. at 17-18. Thus, objective evidence of secondary considerations must be
considered in making an obviousness decision. See Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial
obviousness determination is reconsidered anew in view of the proffered
evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). A
“nexus” must be established between the merits of the claimed invention and
the evidence of secondary considerations in order for the evidence to be
given substantial weight. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995).
Long-felt Need
Establishing long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 539
(CCPA 1967). To show that there was a long-felt need, the Appellant must
present affidavits or other factual evidence of “a failure of others to provide
a feasible solution to [a] long-standing problem” and evidence “that experts
did not forsee” the solution claimed. See In re Piasecki, 745 F.2d 1468, 1475
(Fed. Cir. 1984).
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

13
Commercial Success
If evidence of commercial success is relied upon, the Appellant must
offer proof “that the sales were a direct result of the unique characteristics of
the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996). The objective evidence is not
commensurate in scope (coextensive) with the claimed subject matter if the
claims are broader in scope than the scope of the objective evidence, e.g., if
the product included elements or features not recited in the claims which
may be responsible for the commercial success or praise. See Joy Techs.,
Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990) (and cases cited
therein), aff'd, 959 F.2d 226 (Fed. Cir. 1992).
The evidence must also demonstrate commercial success in the
relevant market. See id. at 229-30 (a very weak showing of commercial
success, if any, is shown where there is no indication of whether the number
of units sold represents a substantial quantity in the relevant market); see
also In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[I]nformation solely on numbers of units sold is insufficient to establish
commercial success.”); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51
(Fed. Cir. 1983) (“There was no evidence of market share, of growth in
market share, of replacing earlier units sold by others or of dollar amounts,
and no evidence of a nexus between sales and the merits of the invention.
Under such circumstances, consideration of the totality of the evidence,
including that relating to commercial success, does not require a holding that
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

14
the invention would have been nonobvious at the time it was made to one
skilled in the art.”).
Copying
More than the mere fact of copying, however, is necessary to make
that action significant because copying may be attributable to other factors,
such as a lack of concern for patent property or contempt for the patentee’s
ability to enforce the patent. Cable Elec. Prods., Inc. v. Genmark, Inc.,
770 F.2d 1015, 1028 (Fed. Cir. 1985). Further, alleged copying is not
persuasive of nonobviousness when the copy is not identical to the claimed
product, and the other manufacturer had not expended great effort to develop
its own solution. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317
(Fed. Cir. 1985).

ANALYSIS
Rejection of claims 1, 3, 5, 6, 8, 9, 17, 18, 20, 21, 24, 25, 27, 29 and
30 as obvious over Calvert
The Examiner rejected these claims as obvious, contending that
Calvert discloses the invention substantially as claimed except that the
support frame 14 (i.e., separate base) “is not an integrally formed structure
with the housing.” (Ans. 4; FF 1 and 3). However, the Examiner contends
that it would have been obvious to one of ordinary skill in the art to make
the frame integral with the housing and that merely making separate parts
integral involves only routine engineering design citing In re Larson, 340
F.2d 965, 968 (CCPA 1965) (Ans. 4 and 5).
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

15
The Appellant contends that Calvert fails to disclose the claim
limitation “integrally formed” and fails to disclose a cooler housing
supported by an integrally formed base (App. Br. 4). In this regard, the
Appellant contends that nothing in Calvert “even suggest[s] that the bottom
50 of the housing supports the housing or is capable of supporting the
housing” and that the bottom portion of the Calvert housing “is incapable of
maintaining the position of the housing to keep it from falling over and thus
is incapable of supporting it.” (App. Br. 6). However, the Examiner is
rejecting the claims contending that integrally forming the support frame
(i.e., separate base) of Calvert would have been obvious to one of ordinary
skill in the art (Ans. 4 and 5; citing In re Larson, 340 F.2d 965, 968 (CCPA
1965)). Hence, the issue of whether the bottom of the housing is capable of
supporting the housing to keep it from falling over is immaterial because the
described support frame (i.e., separate base) of Calvert provides the recited
support. Rather, the issue before us is whether integrally forming the
support frame (i.e., separate base) with the housing of Calvert would have
been obvious to one of ordinary skill in the art.
In that regard, the Appellant argues that there is no per se rule that
making parts integral is obvious and that all relevant facts must be
considered (Reply Br. 1 and 2; citing, inter alia, Krementz v. S. Cottle Co.,
148 U.S. 556 (1893)). While we agree with the Appellant that there is no
per se rule that making parts integral is obvious, the Examiner did not
contend that there was such a per se rule. To the contrary, the Examiner
stated that making the support frame integral with the housing would have
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

16
been obvious “absent any teaching of criticality or unexpected result by
Applicants.” (Ans. 5).
In reviewing the relevant facts of this case, we agree with the
Examiner that integrally forming the support frame (i.e., separate base) of
Calvert with the housing would have been obvious to one of ordinary skill in
the art. No differences in function or unexpected results are attained by
integrally forming the support frame with the housing. KSR, 550 U.S. at
417. Such an integrally formed support frame would function to support the
housing of the evaporative cooler, as would have been expected by one of
ordinary skill. There is no persuasive evidence that making the support
frame integral with the housing would have been beyond the skill of one of
ordinary skill in the art. Id. In this regard, the claimed invention merely
applies the well known technique of making various structural features
integral to yield predictable results. Id.
The Appellant further contends that the obviousness rejection based
on design choice is inappropriate when there is no teaching or suggestion in
the cited prior art (Reply Br. 3). However, the Supreme Court has rejected
the rigid requirement of a teaching, suggestion or motivation in order to
establish obviousness. KSR, 550 U.S. at 418-19. In this regard, the Federal
Circuit has also held that teaching, motivation, or suggestion may be implicit
from the prior art as a whole, rather than expressly stated in the references.
See In re Kahn, 441 F.3d at 988. For instance, implicit motivation to
combine has been found to exist when the improvement is technology-
independent and the combination of references results in a product that is
more desirable (e.g., “stronger, cheaper, cleaner, faster, lighter, smaller,
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

17
more durable, or more efficient.”). Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
In such situations, the proper question is whether one of ordinary skill in the
art possesses knowledge and skills rendering him capable of combining the
prior art references. Id. Thus, in view of the above, we agree with the
Examiner that integrally forming the support frame (i.e., separate base) of
Calvert with the housing would have been obvious to one of ordinary skill in
the art.
The Appellant further contends that the Examiner’s statements
regarding the bottom portion of Calvert’s housing being considered a base is
contrary to the previous concession that the Calvert reference alone does not
raise a substantially new question of patentability and thus, should be
discarded (App. Br. 7; Reply Br. 4). While the record indicates that such
statements were made by the Examiner, such statements are immaterial to
the current rejection under 35 U.S.C. § 103 contending that making the
frame (i.e., base) integral with the housing would have been obvious (Ans. 4,
5, 11, 12). In particular, the Examiner set forth the rejection and
summarized that “[t]he essence of the actual rejection is based on the case
law supporting the fact that making integral things that are formed separately
and later assembled into one structure amounts to an obvious choice in
design.” (Ans. 12). Thus, we do not consider the issue of whether the
bottom portion of the Calvert housing is a base as an issue before us with
respect to the present rejection.
Likewise, the Appellant’s additional arguments relying on the
Declarations of Messrs. Calvert and Campbell to establish instability of the
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

18
prior art housings (Reply Br. 4 and 5) are not particularly pertinent to the
rejection before us. Moreover, the Appellant’s argument that the finality of
the rejection based on Calvert in combination with “common sense” and
“simple physics” is improper (App. Br. 6 and 7) is not persuasive because
the Examiner’s comments were made in response to Appellant’s arguments
(Ans. 12) and is not the basis for the rejection at hand.
The Appellant also contends that Calvert fails to disclose an integrally
formed brace. (App. Br. 4). We disagree. As the Examiner found, Calvert
clearly discloses this limitation in Figure 4, which shows the cross sectional
view of the housing 12 having a fixed pad retainer 70 integrally formed
thereon (FF 2; Ans. 4 and 8). The Appellant argues that Figure 4 of Calvert
is erroneous and inconsistent with the teachings of Calvert which states a
“[h]ousing 12 is also formed over the top of spray bar 64 and terminating in
fixed pad retainer 70, which works in conjunction with removal of pad
retainer 28 to hold the pads 22 from each side.” (Reply Br. 3; citing Col. 4,
ll. 54-56; emphasis added by the Appellant). The Appellant contends that
because a phrase similar to “terminating in” is used to describe an inlet
conduit 94 which is not integrally formed with an inlet fitting 36 and
because Calvert does not reference the brace as being integrally formed with
the housing, Figure 4 is erroneous (Reply Br. 3; citing col. 4, ll. 36-38).
The Appellant’s argument is not persuasive. The cited portion of
Calvert is not inconsistent with what is shown in Figure 4 of Calvert,
namely, that the housing 12 ends or terminates in a fixed pad retainer 70.
Drawings can be relied upon for what they reasonably disclose and suggest
to one of ordinary skill in the art. See In re Aslanian, 590 F.2d 911, 914
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

19
(CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). We find it
immaterial that Calvert chose to describe the fixed pad retainer 70
functionally separate from the housing 12. That does not mean that the fixed
pad retainer 70 is not integrally formed with the housing 12 or that the
drawing is erroneous. Moreover, the mere fact that similar terminology was
used elsewhere in the Specification to describe non-integrally formed
components is not persuasive because the terminology used is not
inconsistent with integrally formed components. Therefore, we do not find
the Appellant’s argument persuasive.
In view of the above, the Appellant has not shown that the Examiner
erred in concluding that it would have been obvious to make the frame of the
evaporative cooler described in Calvert integral with the housing thereof. In
addition, the Appellant has also not shown that the Examiner erred in finding
that Calvert describes a housing including an integrally formed brace
capable of supporting an evaporative cooling pad. Thus, the Appellant has
not shown that the Examiner erred in rejecting claims 1, 3, 5, 6, 8, 9, 17, 18,
20, 21, 24, 25, 27, 29 and 30 as being obvious over Calvert.

Rejection of claims 1, 3, 5, 6, 8, 9, 17, 18, 20, 21, 24, 25, 27, 29 and
30 as obvious over Calvert in view of the Deposition
The Examiner rejects these claims over Calvert in view of the
Deposition contending that Mr. Phillip Calvert indicated that:
the frame and caster arrangement would be superfluous in a
situation where a smaller, or stand alone unit [was] used. As
such, merely removing the frame and caster base from the ‘868
housing would have been obvious design expedient in instances
where smaller housings are used, thus leaving the resultant
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

20
structure to have a base that is actually a part of the housing
bottom, i.e., an integrally formed base.

(Ans. 5 and 6). In essence, the Examiner contends that for smaller
evaporative cooling units, it would have been obvious to one of ordinary
skill in the art to eliminate the frame and caster, and to use the bottom of the
housing as an integrally formed base. The relevant portion of the Deposition
is reproduced supra (FF 4).
The Appellant contends that the Examiner’s reliance on the
Deposition is misplaced because the statements of the Deposition are “taken
out of context and thus mischaracterized.” (App. Br. 7). While conceding
that the 24” unit on the market prior to June 19, 1998 (date of the
Deposition) was “designed to have the option to sit on the floor without
casters,” and that the smaller 16” unit was “designed as a ‘table-top’ without
a stand”, the Appellant relies on the Declaration of Calvert to contend that
both of these units were actually unstable (App. Br. 9).
We agree with the Examiner. The evidence of record establishes that
whereas the 36” unit was designed to be set on a stand, the 24” unit was
designed to be used with or without a stand (i.e., to sit on the floor), and the
16” unit was specifically designed to be used without a stand (FF 2). In this
regard, the Declaration clarifies that the 16” unit was actually designed as a
“table-top” unit (FF 3A and 3B). Thus, the statements of the Deposition
support the Examiner’s contention that it would have been obvious to one of
ordinary skill in the art that the stand is not necessary for smaller evaporative
cooling units and that designing the bottom of the housing to support the
housing would have been obvious.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

21
The Appellant’s reliance on the Declaration of Calvert establishing
that both the 24” unit and the 16” unit were unstable and that the bottom part
of the housing did not support the units (App. Br. 9 and 10) is misplaced.
The fact that the commercially sold 24” and 16” units were “unstable” does
not detract from the fact that the housings thereof were designed for use
without a stand.
In addition, as the Examiner correctly observes (Ans. 16), the issue of
stability is argued by the Appellant (App. Br. 9) with respect to a finished
evaporative cooling unit, but most of the rejected claims (with the exception
of claims 9 and 21) are merely directed to a cooler housing and a method of
making the same (i.e., not to an evaporative cooler unit). The claims do not
recite that the recited housing stably supports the evaporative cooling unit
with all of its associated sub-components. Moreover, the Examiner’s
rejection is that it would have been obvious to have the bottom part of the
housing support the cooler’s housing, not that Calvert or the commercialized
evaporative coolers describe this feature. Hence, the Appellant’s arguments
are not persuasive of Examiner error with respect to the claims on appeal.
The Appellant’s further argument that the Examiner’s reasoning based
on “unassembled state” or “completed fan” is unclear and improper (Reply
Br. 5) is not persuasive. Calvert clearly describes an evaporative cooling
unit which includes a housing as one of its sub-components (FF 1), such
housing being the subject of most of the claims.
With respect to claims 9 and 21, while these claims do recite an
evaporative cooler which comprises the cooler housing of claims 1 and 17,
respectively, claims 9 and 21 do not set forth any additional recitations as to
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

22
the structure or function of the housing or the evaporative cooler. As such,
Calvert satisfies the recitations of claim 9 and 21 in that it describes an
evaporative cooling unit.
Thus, the evidence of record supports the conclusion that providing an
integrally formed base for smaller evaporative cooling units would have
been obvious to one of ordinary skill in the art. Hence, the Appellant has not
shown that the Examiner erred in rejecting claims 1, 3, 5, 6, 8, 9, 17, 18, 20,
21, 24, 25, 27, 29 and 30 under 35 U.S.C. § 103(a) as obvious over Calvert
and the Deposition.

Rejection of claims 7, 19 and 26 as obvious over Calvert in view of
Strasser
The Examiner rejected these claims, stating that the modified device
of Calvert substantially discloses the invention claimed except for the
housing being formed by “resin transfer,” as recited in these claims (Ans. 6).
The Examiner relies on Strasser as teaching that resin transfer is a well
known molding technique for forming a strong lightweight housing (FF 9) to
thereby conclude that it would have been obvious to make Calvert's housing
using the resin transfer method of Strasser (Ans. 6). We agree with the
Examiner.
The Appellant’s contention that there is lack of motivation for one of
ordinary skill in the art to combine Calvert with Strasser in the manner
suggested by the Examiner is not persuasive. Again, the Supreme Court has
rejected the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to establish obviousness. KSR, 550 U.S.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

23
at 418-19. Indeed, the claimed invention merely applies the known molding
technique to form the housing, and the Appellant has not established that
application thereof for the formation of housings is beyond the skill of a
person of ordinary skill in the art. Id. at 417. The Appellant’s further
argument that Strasser does not cure the deficiencies of Calvert (App. Br.
17) is not persuasive since we have concluded that the Examiner’s rejection
based on Calvert is not deficient.
Therefore, in view of the above, the Appellant has not shown that the
Examiner erred in rejecting these claims as obvious over the combination of
Calvert and Strasser.

Secondary Considerations
The Appellant contends that the evidence of secondary considerations
establishes nonobviousness of the claimed invention. In particular, the
Appellant contends that the Declarations of Messrs. Campbell and Calvert
establish that the claimed invention satisfied a long-felt need (App. Br. 14;
citing Campbell Decl. ¶¶ 7-10; Calvert Decl. ¶¶ 11 and 12).
However, to show that there was a long-felt need, there must be
factual evidence of “a failure of others to provide a feasible solution to [a]
long-standing problem” and evidence “that experts did not forsee” the
solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984);
In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The cited portions of the
Declarations of Messrs. Calvert and Campbell merely establish the
development and commercialization of the Appellant’s evaporative coolers,
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

24
but do not establish prior existence of a long-felt need for which others
failed to provide a solution.
The Appellant further contends that “[o]thers were aware of the
existence of the problem solved by [the] Appellant as evidenced by the
copying of the claimed invention of [the] Appellant.” (Reply Br. 7). The
Appellant contends that “after introduction of the claimed invention into the
marketplace, at least three parties introduced units into the marketplace
which infringed the claims that are the subject of the instant reexamination.
In fact, one of these parties abandoned its own earlier design in favor of the
claimed invention. In addition, it is believed that a third party abandoned its
earlier-styled evaporative cooling unit and ‘adopted’ the claimed invention
of Patentee.” (App. Br. 16; citing Calvert Decl. ¶¶ 21-23).
However, we fail to see how evidence of copying necessitates the
conclusion that the copiers were aware of the problem alleged to be solved
by the Appellant. The Appellant argues that, in view of copying by others,
“[a]n inference can certainly be drawn that competitors recognized the
problem and adopted the solution offered by the Appellant, as discussed in
the Calvert Declaration.” (Reply Br. 7). However, even if this inference can
be drawn, it is but one of potentially several or many inferences that could
be drawn, and is not an adequate or persuasive substitute for factual
evidence. We also note that the mere fact of copying is not necessarily
dispositive of nonobviousness. Cable Electric Prods., Inc. v. Genmark, Inc.,
770 F.2d at 1028. Indeed, while the Appellant has alleged copying by
others, the proffered evidence alleges that these competitors’ products would
have infringed at least some of the claims of the ‘548 patent (FF 6) without
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

25
establishing that the competitors’ products are, in fact, copies of the
Appellant’s claimed PORT-A-COOL® products. Pentec, Inc. v. Graphic
Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985). Furthermore, there is
no evidence in the record establishing that the copiers expended any effort to
develop a similar device. Id.
The Appellant also contends that the Declaration of Mr. Campbell
establishes commercial success of the claimed invention (FF 7; App. Br. 15).
The cited portions of the Campbell Declaration declare that sales activities
of evaporative coolers of General Shelters spiked sharply upon marketing of
the PORT-A-COOL® 2000 product and sets forth the number of units of
PORT-A-COOL® products sold between the years 1994 and 2004 (FF 7 and
8; ¶¶ 12 and 13).
However, the evidence in the record does not establish a sufficient
nexus between the claimed invention and the alleged commercial success of
the PORT-A-COOL® products, or establish that the sales were a direct
result of the integrally formed base. See In re GPAC, Inc., 57 F.3d at 1580;
In re Huang, 100 F.3d at 140. For instance, the evidence in the record does
not establish that the sales were not primarily due to the performance of
other components of the evaporative cooler, marketing, etc. Moreover, the
evidence relied upon merely sets forth the number of units sold without
additional supporting evidence, such as the size of the market and growth in
market share. Thus, we do not view the evidence of commercial success as
particularly persuasive. In re Huang, 100 F.3d at 140; In re Baxter Travenol
Labs., 952 F.2d at 392; Kansas Jack, Inc. v. Kuhn, 719 F.2d at 1150-51.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

26
While we acknowledge that it is not necessary that the evidence
negate all other potential factors that may contribute to commercial success
(Reply Br. 6), the Appellant fails to realize that supplementing mere sales
numbers with such evidence increases the persuasive weight of the alleged
commercial success. Not much probative weight can be accorded to mere
sales numbers and such nominal evidence does not persuade us of
nonobviousness.
Thus, having reconsidered the initial obviousness determination anew
in view of the proffered evidence of alleged long-felt need, commercial
success, and copying by others, we conclude that the Appellant has not
established nonobviousness of the claimed invention through secondary
considerations sufficient to rebut the Examiner's conclusion of obviousness.

CONCLUSIONS
1. The Appellant has not shown that the Examiner erred in
concluding that it would have been obvious to make the frame of the
evaporative cooler described in Calvert integral with the housing thereof.
2. The Appellant has not shown that the Examiner erred in finding
that Calvert describes a housing including an integrally formed brace
capable of supporting an evaporative cooling pad.
3. The Appellant has not shown that the Examiner erred in
concluding that it would have been obvious to eliminate the frame and caster
of the evaporative cooler described in Calvert, and to use the bottom of the
housing as an integrally formed base for small evaporative cooler units.
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

27
4. The Appellant has not shown that the Examiner erred in
concluding that it would have been obvious to utilize a known resin transfer
molding as used in Strasser to form the cooler housing of Calvert.
5. The Appellant has not established nonobviousness of the
claimed invention through evidence of secondary considerations.

ORDERS
1. The Examiner’s rejection of claims 1, 3, 5, 6, 8, 9, 17, 18, 20,
21, 24, 25, 27, 29 and 30 under 35 U.S.C. § 103(a) as obvious over Calvert
is AFFIRMED.
2. The Examiner’s rejection of claims 1, 3, 5, 6, 8, 9, 17, 18, 20,
21, 24, 25, 27, 29 and 30 under 35 U.S.C. § 103(a) as obvious over Calvert
and the Deposition is AFFIRMED.
3. The Examiner’s rejection of claims 7, 19 and 26 under 35
U.S.C. § 103(a) as obvious over Calvert and Strasser is AFFIRMED.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

bim
Appeal 2009-001702
Reexamination Control No. 90/006,567
U.S. Patent No. 6,223,548 B1

28

FOR PATENT OWNER:

JONES & SMITH, LLP
2777 ALLEN PARKWAY
SUITE 800
HOUSTON, TX 77019-2141

FOR THIRD PARTY REQUESTER:

JOHN M. BRADSHAW, ESQ.
WOODARD, EMHARDT, NAUGHTON, MORIARTY & MCNETT
111 MONUMENT CIRCLE
SUITE 3700
INDIANAPOLIS, INDIANA 46204-5137