Ex Parte Martin et al

Patent Trial and Appeal Board

Feb 7, 2019

14490744 (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/490,744 09/19/2014
28395 7590 02/11/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Douglas Raymond Martin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83465002 8923
EXAMINER
HOBSON, STEPHEN
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
02/11/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS RAYMOND MARTIN,
KENNETH JAMES MILLER, and KENNETH J. JACKSON
Appeal 2018-004268
Application 14/490,744
Technology Center 1700
Before KAREN M. HASTINGS, BRIAND. RANGE, and
SHELDON M. MCGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-5 and 7-13 2 under 35 U.S.C. § 103(a) as unpatentable
over at least the combined prior art of Forsberg (US 6,182,453 B 1, pat. Feb.
6, 2001 ), SARRA, "Disinfection Methods" on the Sustainability of semi-
Arid Hydrology and Riparian Areas website published Sept. 12, 2011 and
accessed at
1 Appellant is the Applicant, Ford Global Technologies, LLC, which is also
stated to be the real party in interest (Appeal Br. 2).
2 Numerous other references were applied to dependent claims 10-12 (Final
Action 12-17). Appellant does not present any separate arguments to these
rejections (Appeal Br. 3---6).
Appeal 2018-004268
Application 14/490,744
https://web.archive.org/web/20110912235243/http:/lcierzo.SAHRA.arizona.
edu/programs/akyw/disinfection.html, Kaastra (US 2007 /0000906 Al, pub.
Jan. 4, 2007), Miami (How to Purify Your Drinking Water" North Miami
Beach Florida published Aug. 27, 2013 and accessed at
https://web.archive.org/web/20130827211351/http://www.citynmb.com/inde
x.asp?Type=B BASIC&SEC={29A 1A7C9-956A-4B72-BI3C-
57F75F2C599B}>) and Frasure (US 6,508,208 Bl, Jan. 21, 2003), and of
claim 21 over the combined prior art of Fors berg, SARRA, and Jin ( CN
202264679, pub. Jun. 6, 2012).
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Claims 1 and 21 are illustrative ( emphasis added to highlight key
limitations in dispute):
Claim 1. A system for harvesting clean drinking
water in a vehicle comprising:
a heat-exchanger;
a reservoir fluidly connected with and configured to
collect water from the heat-exchanger;
a heating element configured to heat water within the
reservoir; and
a controller coupled with the heating element and
programmed to boil the water in the reservoir and purge the
water from the reservoir after a first predetermined period of
time elapsing from the water reaching a boiling temperature.
Claim 21. A vehicle water harvesting system
compnsmg:
a heat-exchanger;
a reservoir fluidly connected with and configured to
collect water from the heat-exchanger;
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Application 14/490,744
a heating element configured to heat water within the
reservoir; and
a controller programmed to activate the heating element
to boil the water in the reservoir and in response to the water
cooling to a predetermined temperature below a boiling
temperature after reaching the boiling temperature, indicate
that the water is ready to drink.
(Appeal Br. Claims Appendix).
Appellant's arguments are directed to the "controller" feature of
independent claims 1 and 21 (Appeal Br. 4--7). Thus, dependent claims 2-5,
and 7-13 stand or fall with claim 1.
ANALYSIS
Upon consideration of the evidence in this appeal and each of
Appellant's contentions as set forth in the Appeal Brief filed Oct. 2, 2017, as
well as the Reply Brief filed March 14, 2018, we determine that Appellant
has not demonstrated reversible error in the Examiner's rejection (e.g., Ans.
4--22 (mailed Jan. 25, 2018)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir.
2011) (explaining the Board's long-held practice of requiring Appellants to
identify the alleged error in the Examiner's rejection). We sustain the
rejection for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
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Application 14/490,744
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
As found by the Examiner, there is no doubt that a skilled artisan
knew how to construct a system for harvesting clean drinking water in a
vehicle, as exemplified in Forsberg (col. 36, 1. 63 to col. 37, 1. 2; Ans. 4, 5,
12; see also Appellant's Background section, Spec. ,r 3 (the concept of
harvesting water from a vehicle has been disclosed in prior art references)).
Appellant also does not dispute the Examiner's determination that it would
have been obvious to replace the UV sterilization of Forsberg with a heating
element for sterilization of water as exemplified in SARRA and Kaastra
(Appeal Br. generally).
With respect to claim 1, Appellant's arguments that Forsberg teaches
away from purging the system because Forsberg recirculates the water
(Appeal Br. 5; Reply Br. 3) and because Frasure (which purges a limited
amount of water from a hot water heater on a periodic basis) is non
analogous art (Appeal Br. 6) are not persuasive of error in the Examiner's
rejection because it fails to adequately consider the prior art as a whole, and
the inferences that one of ordinary skill would have drawn therefrom, and
thus do not adequately address the Examiner's obviousness position
(generally Ans.).
If a reference is not within the relevant field of endeavor, it may still
be properly considered if it is reasonably pertinent to the problem the
inventor faced; that is, if it would have logically commended itself to an
inventor's attention. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In KSR
Int'! Co., 550 U.S. at 419-420 the Supreme Court observed that:
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Application 14/490,744
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [unpatentable] under§ 103. One of the ways in which a
patent's subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for
which there was an obvious solution encompassed by the
patent's claims.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("[t]he Supreme Court's decision in KSR . .. directs us to construe the scope
of analogous art broadly," stating that "familiar items may have obvious
uses beyond their primary purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle").
There is no doubt from the applied references that it was a known
problem that sterilized water must be dumped (Miami) or re-sterilized
(Fors berg) after enough time has passed for the water to become
recontaminated/unsafe to consume. Specifically, the Examiner only relies
upon Frasure to exemplify that it is known to use a controller to purge water
in a reservoir after a predetermined period of time (Ans. 6). See In re Keller,
642 F.2d 413, 425-26 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art."); see also e.g., In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (it is well established that in evaluating references it is
proper to take into account not only the specific teachings of the references
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Application 14/490,744
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom).
As aptly pointed out by the Examiner, one of ordinary skill in the art
would have readily inferred that it would have been obvious to use such an
automatic control purge system (as exemplified in Frasure) on the
Forsberg/SAHRA/Kaastra water sterilization system, especially since it was
known that water must be discarded after a certain period of time after
sterilization as exemplified by Miami (e.g., Ans. 6, 19). Further, Forsberg
teaches that control circuits may be used, e.g., to recirculate the water
through the sterilization and to operate system valves (col. 39, 11. 1---6; col.
39, 11. 35--44). Forsberg teaches recycling/purging the water- one of
ordinary skill would have readily inferred that recirculating the water so as
to be re-sterilized is akin to purging some of the water from the reservoir to
re-sterilize it.
Indeed, the "purging" of claim 1 appears to encompass Forsberg's
recirculation of the water to re-sterilize same, since Appellant has not
directed us to any limiting definition that, e.g., requires the water to be
discarded, or that the reservoir must be completely emptied of the water. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it is
well established that "the PTO must give claims their broadest reasonable
construction consistent with the specification" and if the Specification does
not provide a definition for claim terms, the PTO applies a broad
interpretation, noting that as "applicants may amend claims to narrow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee.").
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Application 14/490,744
Accordingly, Appellant has not provided persuasive technical
rationale or any credible evidence to refute the Examiner's obviousness
determination (generally Ans.; Appeal Br.; Reply Br.). KSR, 550 U.S. at
416 ( the predictable use of prior art elements according to known methods
for their established functions is likely to be obvious when it does no more
than yield predictable results). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
With respect to claim 21, Appellant's argument that Jin does not
disclose indicating the water is ready to drink after boiling (Appeal Br. 7;
Reply Br. 4) is not persuasive of error in the Examiner's obviousness
determination. Appellant does not dispute the Examiner's determination
that it would have been obvious to replace the UV sterilization of Forsberg
with a heating element for boiling sterilization of water as exemplified in
SARRA and Kaastra (Appeal Br. generally). As found by the Examiner,
Kaastra exemplifies the use of a controller coupled with a temperature
sensor to sterilize water via boiling (Ans. 17). As also found by the
Examiner, Jin is, like Forsberg, directed to a water purification system in a
vehicle and provides a temperature display gauge so the user knows the
water temperature, for e.g., use of hot water to make instant noodles or other
drinks (e.g., Ans. 18; Jin abstract, ,r,r 3, 4). One of ordinary skill would have
readily inferred that such a temperature display is indeed an indication of the
appropriate water temperature, whether it be hot enough for a hot drink mix
or cool enough to drink per se. Further, Forsberg does teach that control
circuits may be used to "actuate indicator lights and distinctive audible
signals" (col. 39, 11. 9--10). Appellant has not shown error in the Examiner's
determination that one of ordinary skill in the art, using no more than
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Application 14/490,744
ordinary creativity, would have used a controller "to activate the heating
element to boil the water" and a temperature gauge to "indicate that the
water is ready to drink" as recited in claim 21 after it has been sterilized via
boiling of the water purification system of Forsberg/SAHRA/Kaastra (e.g.,
Ans. 16-18, 22).
The decision of the Examiner 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).
AFFIRMED
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