Ex Parte 7857600 et alDownload PDFPatent Trial and Appeal BoardJun 30, 201695002005 (P.T.A.B. Jun. 30, 2016) 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. 95/002,005 06/01/2012 7857600 96964-01285 7743 26710 7590 07/01/2016 QUARLES & BRADY LLP Attn: IP Docket 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI 53202-4426 EXAMINER DOERRLER, WILLIAM CHARLES ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 07/01/2016 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 ____________________ HAYWARD INDUSTRIES, INC. Requester/Cross-Appellant v. PENTAIR LTD, et al. Patent Owner/Appellant ____________________ Appeal 2016-002726 Reexamination Control 95/002,005 Patent U.S. 7,857,600 B21 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued on December 28, 2010 to Robert M. Koehl (hereinafter the ’600 patent). Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 2 STATEMENT OF THE CASE The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s rejection of claims 1–36. The Requester cross-appeals from the non-adoption of certain proposed rejections. See Req. Br. 3. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). Oral arguments were presented in this case on May 17, 2016, a transcript of which will be entered into the record in due course. We are informed that the ’600 patent is the subject of litigation in the United States District Court for the Eastern District of North Carolina (Case No. 5: 11-CV-459, Pentair Water Pool and Spa, Inc. and Danfoss Drives A/S v. Hayward Industries, Inc. and Hayward Pool Products, Inc.), and also is a continuation of United States Patent Application No. 10/730,747, now U.S. Patent No. 8,540,493, which is related to (A) U.S. Patent Nos. 8,641,385; 8,444,394; 7,990,091; 7,983,877; 7,976,284; 7,821,215; 7,815,420; 7,751,159; 7,704,051; 7,686,587; 7,612,510; and 7,572,108, (B) U.S. Application Nos. 11/980,096; 12/973,778; 14/322,744; 14/338,939; 14/444,782; 14/446,018; and 14/444,812, (C) Reexamination Control Nos. 95/002,007 and 95/002,008, and (D) Case IPR2013-00287. PO App. Br. 1– 2. We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed “generally to pumps and pumping methods and more particularly to pump motor controllers and control methods.” Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 3 Spec., col. 1, ll. 12-14. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of detecting a foreign object obstruction in a pool or spa, the pool or spa being coupled to a pump and a motor, the method comprising: measuring a voltage and a current being provided to the motor; determining a power factor based on the voltage and the current; determining whether a fault condition has occurred due to the presence of a foreign object obstruction in the pool or spa based on the voltage, the current, and the power factor; shutting down the motor when the fault condition has occurred; and indicating to a user that the fault condition has occurred. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tibbits Miller Marshall Kierstead Nielsen Wagoner McDonough Møller Johnson Koehl (“’408 PGP”2) McKain Moeller Keown US 4,420,787 US 4,703,387 US 4,841,404 US 4,864,287 US 5,577,890 US 5,614,812 US 6,227,808 US 6,354,805 US 2002/0093306 A1 US 2002/0123408 A1 US 6,468,052 US 2002/0176783 A1 US 6,842,117 Dec. 13, 1983 Oct. 27, 1987 June 20, 1989 Sept. 5, 1989 Nov. 26, 1996 Mar. 25, 1997 May 8, 2001 Mar. 12, 2002 July 18, 2002 Sept. 5, 2002 Oct. 22, 2002 Nov. 28, 2002 Jan. 11, 2005 Mehlhorn US 2005/0226731 A1 Oct. 13, 2005 2 Pre-Grant Publication Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 4 Robert S. Carrow, Electrician’s Technical Reference, Variable Frequency Drives, Delmar (2001) (hereinafter “Carrow”). REJECTIONS Claims 1–3, 5, 16, 17, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Miller. RAN 11. Claims 4, 5, 16, 17, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller. RAN 12. Claims 4, 5, 16, 17, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller and Kierstead. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and McDonough. RAN 13. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Miller. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain, McDonough, and Miller. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Kierstead. RAN 14. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Johnson. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Marshall. RAN 15. Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 5 Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Tibbits. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Nielsen. RAN 16. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKain and Keown. Id. Claims 1–6, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonough and McKain. Id. Claims 1–6, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonough and Miller. RAN 17. Claims 1–6, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonough, McKain, and Miller. Id. Claims 1–6, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonough and Johnson. RAN 18. Claims 1–6, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonough, McKain, and Johnson. Id. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 102(b) as anticipated by Mehlhorn. RAN 19. Claims 1–5, 15–18, 25, 26, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mehlhorn. Id. Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 6 Claims 1–5, 16, 17, 25, 26, and 33–36 stand rejected under 35 U.S.C. § 102(b) as anticipated by Kierstead. Id. Claims 1–5, 16, 17, 25, 26, and 33–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kierstead. RAN 20. Claims 1–5, 16, 17, 25, 26, and 33–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kierstead and Miller. Id. Claims 1–5, 16, 17, 25, 26, and 33–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kierstead, Miller, and McDonough. RAN 21. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the ’408 PGP and Mehlhorn. Id. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the ’408 PGP, Mehlhorn, and Moeller. RAN 22. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the ’408 PGP, Mehlhorn, Moeller, and Møller. RAN 23. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wagoner and Moeller. Id. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wagoner, Moeller, and Carrow. RAN 24. Claims 33 and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wagoner, Moeller, and Kierstead. Id. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moeller and Wagoner. Id. Claims 5–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moeller, Wagoner, and Carrow. RAN 25. Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 7 Claims 33 and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Moeller, Wagoner, and Kierstead. Id. OPINION Priority We first deal with the issue of priority, as the Examiner determined that the ’600 patent was not entitled to the priority of its parent application, and thus cited an intervening reference, Mehlhorn, as well as the published version of the parent application itself (’408 PGP) in a number of the rejections. See, e.g., RAN 33–34. The main basis for the Examiner’s finding is that because the claims recite, e.g., “determining whether a fault condition has occurred due to the presence of a foreign object obstruction in the pool or spa based on the voltage, the current, and the power factor” (emphasis added), where the voltage and the power factor are constants, “it is unclear how a determination of a blockage can be based on a constant.” Id. We disagree with the Examiner because even if something is a constant, a determination can still be made while taking that constant into account. As the Patent Owner states, “the decision on what level of current to use as a fault trigger must take the operating conditions into account, and critical to those operating conditions are the DC bus voltage and the power factor correction that maintains that DC bus voltage.” PO App. Br. 7–8. Accordingly, we agree that the ’600 patent sufficiently provides written descriptive support for the claim language at issue, thus disqualifying Mehlhorn and the parent application as prior art against the ’600 patent. As Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 8 such, we reverse all rejections based upon either the ’408 PGP and/or Mehlhorn. Claim Construction The majority of the rest of the arguments regarding the remaining rejections rely upon claim construction arguments, with the Patent Owner arguing for a considerable number of narrowing claim constructions that would limit the claims essentially to what is disclosed in the ’600 patent. See, e.g., PO App. Br. 12–23, and 25–27. The Patent Owner’s claim construction positions are, however, of dubious merit for at least the following reasons. During examination of a patent application, a claim is given its broadest reasonable construction and read “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and internal quotation marks omitted). Claim terms are generally given their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”) (internal citations omitted). Reading a claim in light of the Specification, to thereby interpret limitations explicitly recited in the claim, however, is a quite different thing from reading limitations of the Specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations having no express basis in the claim. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). Although the claims are interpreted in light of the Specification, Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 9 limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). As stated by the Requester, the Patent Owner “seeks to impermissibly incorporate limitations into the [original] claims that are nowhere recited (‘variable speed,’ ‘regulating,’ ‘correction,’ ‘constant,’ ‘fixed,’ ‘set voltage,’ and/or ‘PFC rectifier,’ etc.)” and then argues that the cited references fail to teach these narrower limitations. Req. Resp. Br. 10–11. Regarding these limitations, for example, the Patent Owner argues that “the claimed method involves fixing the voltage and correcting the power factor such that the current is reliably indicative of a foreign object detection.” PO App. Br. 12. We do not disagree that the ’600 patent Specification discloses these features, nor even that the claims may be read to encompass these features, but nowhere in the original claims is there mention of fixing voltage or correcting the power factor such that the claims are properly interpreted to require such features. Claim 1 recites only “determining a power factor based on the voltage and the current.” The Specification goes into lengthy detail describing the function of the power factor correction and converter/rectifier module (PFC) 34 (see, e.g., col. 7, l. 34–col. 8, l. 3), but curiously, the Patent Owner never originally claimed a PFC, nor any power factor correction. The only such step recited in claim 1 is determining the power factor and then assessing whether a fault has occurred based on the power factor, current, and voltage. While it may be a fair reading of the original claims that such power factor correction is within the scope of the claims, we disagree that the broad language used in the claims requires power factor correction. Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 10 Specifically regarding the term “determining,” the Patent Owner concedes that “figuring out” is one customary meaning of the term “determine.” See PO App. Br. 9. The Patent Owner goes onto assert that another possible meaning of “determining” is “regulate”, and argues that, given the context of the ’600 patent, we should limit the term to this regulating construction. Id. While we do not disagree that the one skilled in the art reading the disclosure of the ’600 patent would understand that “determine” could include “regulate” in relation to power factor, we also cannot ignore that, as the Requester states, the ’600 patent uses some form of the term “determine” 67 times and “[e]ach and every time the word is used it means ascertaining or ‘figuring out.’” Req. Resp. Br. 3 (emphasis omitted). From this usage in the Specification, it is clear to us that the Patent Owner knew how to differentiate “determining” from something akin to “regulating” in the disclosure, but when choosing terms for the claims, elected to use the word “determining,” which is broader than “setting” or “regulating.” Accordingly, we decline to narrow this term to exclude the definition as used throughout the Specification of “figuring out.” Additionally, the Patent Owner’s expert, Dr. Collins, further explains numerous differences between the prior art and the subject matter of the ’600 patent, but again, such differences are not reflected in the original claim language. For example, Dr. Collins explains at length the differences between fixed versus variable speed motor operation, but nowhere in claim 1 is there mention of a variable speed motor. Relatedly, the discussion of how power factor differs between line-connected and variable speed drives is essentially irrelevant because the original claims are not limited to variable Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 11 speed motors. Similarly, while we appreciate Dr. Collins’ explanation of how a PFC rectifier works, the Patent Owner has not limited the original claims to a method involving a PFC rectifier because no such rectifier is actually claimed. In summation, we do not necessarily disagree with the Patent Owner that the ’600 patent discloses and describes various things Dr. Collins discusses (and that the Patent Owner would like to limit the claims as to defining), but in order for these differences to have meaning in relation to the rejections at issue, they must clearly be reflected in the original claim language, which they are not. The simple recitation of “determining” cannot be so limited in relation to the power factor to a method involving only power factor correction. Similarly, nothing in the language of “based on” limits the claims only to variable speed motors or fixed voltage situations. We agree with the Requester that the Patent Owner’s attempts to narrow the claim language at issue amounts to impermissibly reading limitations from the Specification into the claims when the Specification does not require such narrowed construction. As much as some of the prior art may fail to disclose variable speed motors, fixed voltage, and power factor correction, among other things, the original claims likewise fail to claim these features by way of the use of the broad language contained therein. Rejections of Claims 1–5, 15–18, 25, 26, and 33–36 We agree with the Requester that the Patent Owner relies solely on its claim construction arguments, which we decline to adopt for the reasons stated supra. Req. Resp. Br. 11. Accordingly, the rejections involving claims 1–5, 16, 17, 25, 26, 34, and 36 as anticipated by or unpatentable over Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 12 Miller alone or unpatentable over Miller and Kierstead are affirmed. Likewise the Patent Owner relies solely on its claim construction arguments for the rejections of claims 1–5, 15–18, 25, 26, 34, and 36 involving McKain as the primary reference in combination with various secondary references (Req. Resp. Br. 11–12) and these rejections are affirmed as well. We similarly affirm the rejections of claims 1–5, 6, 15–18, 25, 26, 34, and 36 based upon McDonough (Req. Resp. Br. 12) and the rejections of claims 1– 5, 16, 17, 25, 26, and 33–36 based upon Kierstead (Id.). Rejection of Claims 5–36 Based upon Wagoner Other than arguing that Moeller fails to teach the specific recitation of the application of the method to a spa or pool pump, the Patent Owner does not argue that specific limitations from dependent claims 5–36 are absent from the proposed combination. See PO App. Br. 28–29; PO Reb. Br. 8–9. The Patent Owner argues only that the combination is improper. Id. We first agree with the Requester that the Patent Owner fails to address the basis for the rejection by arguing that “Moeller does not base its fault detection on power factor, because its power factor is not regulated.” Req. Resp. Br. 14; see also PO App. Br. 29. The rejection does not rely upon Moeller, but instead uses Wagoner for this feature. See, e.g., Req. Resp. Br. 14. Next, we also agree that, while different from the Patent Owner’s motivation for using power factor correction, the Requester has proffered a rational basis upon which a person of ordinary skill in the art would have found it obvious to combine Wagoner and Moeller, namely that “the use of power factor correction provides energy savings and incentives.” Req. Resp. Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 13 Br. 13 (citing Emadi Dec. ¶ 64). As stated by the Requester, we are persuaded that “[a] person of ordinary skill in the art would provide a variable speed motor circuit with power factor correction (as in Wagoner) together with power-based evaluations for determining the presence of a foreign object obstruction leading to the pump (as in Moeller).” Req. Resp. Br. 13. In response, the Patent Owner refers to purported limitations from claim 1 that are allegedly missing in the references (PO App. Br. 29), but as discussed supra, these limitations are actually impermissible attempts to read limitations from the Specification into the claims. Furthermore, given the broad language contained in claim 1 and the fact that the combination of Wagoner and Moeller teaches obstruction detection and power factor correction, we are not persuaded that the combination fails to teach these limitations. The Patent Owner’s arguments amount to attacking the references individually rather than the combination as a whole. See PO App. Br. 29, PO Reb. Br. 8–9. In summation, we are not persuaded by the Patent Owner’s arguments against the combination of Moeller and Wagoner and agree that the Requester has demonstrated that there would have been sufficient reason for combining the two references, and that all of the limitations of the claims as interpreted supra are present in the proposed combination. As to the limitation regarding a spa or pool pump, we agree that Moeller’s description of a reservoir with piping in paragraph 4 generically describes the same general environment of a spa or pool. Even if this were insufficient to describe a spa or pool as claimed, however, we also agree that Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 14 Carrow, which the Patent Owner does not argue other than to say it does not cure the deficiencies of Wagoner and Moeller, is properly combinable with Wagoner and Moeller and does specifically teach a spa or pool pump. See Carrow pp. 159–160. Secondary Considerations of Nonobviousness Although the Patent Owner alleges that the secondary considerations of nonobviousness should establish that the claimed method was not obvious, we agree with the Requester that it is the Patent Owner’s burden to satisfy the nexus requirement. Req. Resp. Br. 15. First, we note that, to the extent any claims are anticipated, secondary considerations are inapposite and cannot overcome such rejections. Furthermore, as the Examiner states, the conclusion that the Intelliflo and Intellipro VS+SVRS pumps utilize the claimed invention “is a conclusion, without supporting facts.” RAN 36. We see no persuasive analysis of how the alleged commercial embodiment encompasses each and every limitation of any of the claims thus rendering it impossible to determine the existence, or lack thereof, between the claimed invention and the evidence purported to establish commercial success. Also, as the Examiner states, “[t]he [Pickard] declaration does not establish the premium is based solely on the SVRS functionality.” Id.; see also Req. Resp. Br. 15. Thus, it would appear that there may be other factors unrelated to the claims, which the Patent Owner has not addressed, that could account for the alleged commercial success. When evidence is presented, it is our duty to consider all evidence anew. See, e.g., In re Eli Lilly and Co., 902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that objective evidence of non-obviousness in any given Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 15 case may be entitled to more or less weight depending on its nature and its relationship with the merits of the invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538˗39 (Fed. Cir. 1983). Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of non-obviousness provided by the Appellants. Having considered all of the evidence submitted, we do not find the Patent Owner’s secondary considerations evidence sufficient to overcome the prima facie case of obviousness set forth by the Examiner. Remaining Rejections and Requester’s Appeal Having sustained rejections of all pending claims, we decline to reach the remaining rejections as cumulative of those already considered. Likewise, the Requester’s Appeal is moot in that it adds only cumulative rejections to those already sustained. Thus, we decline to reach the Requester’s appeal. DECISION The Examiner’s rejection of claims 1–36 is AFFIRMED. 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). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2016-002726 Patent US 7,857,600 B2 Reexamination Control 95/002,005 16 Patent Owner: QUARLES & BRADY LLP ATTN: IP DOCKET 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI, 53202-4426 Third Party Requester: STEVEN E. HALPERN MCCARTER & ENGLISH, LLP(NEWARK) 100 MULBERRY STREET, FOUR GATEWAY CENTER NEWARK, NJ 07102 Copy with citationCopy as parenthetical citation