Ex Parte Shpringer et al

Patent Trial and Appeal Board

Jul 20, 2018

13275359 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/275,359
69054 7590
RECHES PA TENTS
211 North Union St.
Suite 100
FILING DATE
10/18/2011
07/24/2018
Alexandria, VA 22314
FIRST NAMED INVENTOR
Jacob Shpringer
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.
8291-US 2408
EXAMINER
CRANE, LAUREN ASHLEY
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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):
OREN@I-P.CO.IL
RECHES0@012.NET.IL
MAIL@I-P.CO.IL
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB SHPRINGER, JEAN-PAUL VILLACAMP A,
and EHUD NAGLER
Appeal2017-010146
Application 13/275,359 1
Technology Center 3700
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1-5, 7-10, and 12-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
According to Appellants, the invention "concerns a pool cover
winding system [that] uses a water-powered piston motor." Spec. 1, 11. 6-7.
1 According to Appellants, the real party in interest is Maytronics Ltd.
Brief 3.
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Application 13/275,359
Claim 1 is the only independent claims on appeal. Below, we reproduce
claim 1 (with formatting added), as representative of the appealed claims.
1. A pool cover winding system comprising:
(a) a shaft for receiving a pool cover wound around it;
(b) first and second end supports that are stationary and are
configured for supporting said shaft rotatably;
( c) a bidirectional piston motor mechanically linked to said first
end support and said shaft, said bidirectional piston motor being
configured to operate under fluid pressure supplied to a first inlet
to generate rotation in a first direction for winding a pool cover
around said shaft, and to operate under fluid pressure supplied to
a second inlet to generate rotation in a second direction for
unwinding a pool cover from said shaft; and
( d) a valve arrangement for selectively connecting a source of
water pressure to each of said first and second inlets;
wherein said shaft is at least partially hollow, and
wherein said bidirectional piston motor is deployed primarily
within said shaft.
REJECTIONS AND PRIOR ART2
The Examiner rejects the claims as follows:
I. claims 1-3, 7-9, 12, 13, 16-19, 23, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Last (US 5,184,357, iss. Feb. 9,
1993) (hereinafter "Last '357"), Vorbach et al. (US 3,885,255,
2 See Non-Final Office Action ("Non-Final Action") mailed Apr. 5,
2016, 2-8.
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Application 13/275,359
iss. May 27, 1975) (hereinafter "Vorbach), and Colin et al.
(US 4,675,922, iss. June 30, 1987) (hereinafter "Colin); 3
II. claims 4 and 14 under 35 U.S.C. § I03(a) as unpatentable over
Last '357, Vorbach, Colin, and Meikle et al.
(US 2011/0163249 Al, pub. July 7, 2011) (hereinafter
"Meikle);
III. claims 10 and 20 under 35 U.S.C. § I03(a) as unpatentable over
Last '357, Vorbach, Colin, and Last (US 2002/0046817 Al,
pub. Apr. 25, 2002) (hereinafter "Last '817");
IV. claims 21, 22, 24, and 25 under 35 U.S.C. § I03(a) as
unpatentable over Last '357, Vorbach, Colin, and Stuhr
(US 4,077,305, iss. Mar. 7, 1978);
V. claims 5 and 15 under 35 U.S.C. § I03(a) as unpatentable over
Last '357, Vorbach, Colin, and Last (US 2001/0034906 Al,
pub. Nov. 1, 2001) (hereinafter "Last '906"); and
VI. claims 27-30 under 35 U.S.C. § I03(a) as unpatentable over
Last '357, Vorbach, Colin, and Last (US 5,327,590, iss.
July 12, 1994) (hereinafter "Last '590").
ANALYSIS
Rejection I
Based on our review of the record, including Appellants' Appeal
Brief, and the Examiner's Non-Final Office Action and Answer, Appellants
3 Although the Examiner appears to reject claim 11 as obvious (see, e.g.,
Non-Final Action 2), based on our review of the record, we agree with
Appellants that claim 11 is canceled (see, e.g., Brief, Claims App.).
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Application 13/275,359
do not persuade us that the Examiner errs in rejection claims 1-3, 7-9, 11-
13, 16-19, 23, and 26 as obvious based on Last '357, Vorbach, Colin. Thus,
we sustain the rejection.
Appellants argue that "V orbach cannot be used as a prior art
reference[ ] as he teaches away from the claim[ ed] invention and from other
references such as Colin and Last." Brief 9; see also Brief 8-11, n.b. at 11
("Accordingly[,] Vorbach [t]eaches away from the claimed invention (first
and second end supports that are stationary and are configured for
supporting said shaft rotatably) and also teaches away from Colin (see
[F]igure 1 )."). This argument is not persuasive, however.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) ( citations and internal quotation marks omitted). See also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives). As the Examiner explains, "[i]n this case,
V orbach was used as a teaching reference to show a motor being located
within a shaft, while Last ['357] teaches a pool cover with stationary
supports." Answer 6. Appellants do not establish persuasively that, in fact,
anything in Last '357, Vorbach, or Colin teaches away from a combination
in which first and second end supports are stationary and are configured for
supporting a shaft rotatably-rather, Appellants establish no more than what
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the Examiner acknowledges, i.e., that Vorbach itself fails to disclose these
recitations of claim 1. See Brief 9-11.
Appellants also argue that "Last ['357] fails to cure the deficiencies of
Vorbach[,] and fails to teach or suggest wherein said shaft is at least
partially hollow, and wherein said bidirectional piston motor is deployed
primarily within said shaft." Brief 12; see also Brief 11-12. This argument
is not persuasive, however. For the reasons discussed above, Appellants do
not persuade us that there is a deficiency in the Examiner's reliance on
Vorbach. Further, "Vorbach was used as a teaching to show a motor located
within a cover shaft" (Answer 6), and "Last ['357] teaches a partially hollow
cover shaft (see Fig[ure] 2)" (id. at 7). Still further, we agree with the
Examiner that it would have been obvious to dispose Last '357's motor in its
partially hollow shaft, based on Vorbach's teaching. See Non-Final
Action 4--5.
Appellants additionally argue that "Colin also cannot be used as a
prior art reference as he teaches [a] motor having a FIXED direction."
Brief 12; see also Brief 12-15. This argument it not persuasive, however,
because the Examiner, in fact, relies on "Last ['357 to teach] ... a
bidirectional motor," rather than Colin. Answer 7 ( citation omitted); see
also Non-Final Action 3.
Thus, based on the foregoing, we sustain claim 1 's rejection.
Inasmuch as Appellants do not argue separately the rejection of claims 2, 3,
7-9, 11-13, 16-19, 23, and 26 that depend from claim 1, we also sustain the
dependent claims' rejection.
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Rejection II
Appellants argue that the rejection of claims 4 and 14, which depend
from claim 1, is in error because "[t]here is no motivation to add the
teachings of Meikle to the teachings of Last ['357], Vorbach[,] and Colin."
Brief 16. Appellants do not, however, argue against the Examiner's
proffered motivation for combining the references (see, e.g., Non-Final
Action 5), and, thus, Appellants do not establish Examiner error. Further, to
the extent that Appellants are arguing that Meikle is non-analogous art,
Appellants do not persuade us that the Examiner errs in finding that Meikle
is in the same field of endeavor as Last '357, which appears to be in the
same field of endeavor as Appellants' invention. See Answer 7; see In re
Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (For a prior art reference to be
analogous art, "a reference [must be] either in the field of the applicant's
endeavor or reasonably pertinent to the problem with which the inventor was
concerned ... based on the judgment of a person having ordinary skill in the
art.") (citation omitted)). Thus, based on the foregoing, we sustain the
rejection of claims 4 and 14.
Re} ection III
Appellants do not argue the rejection of claims 10 and 20 that depend
from claim 1. Thus, we sustain the rejection.
Re} ection IV
Appellants do not argue the rejection of claim 21 that depends from
claim 1. Thus, we sustain claim 21 's rejection.
Appellants argue that the rejection of claim 22, which depends from
claim 1, is in error because "the mere fact that [Stuhr] teaches two pistons is
not sufficient [to render the claims obvious]-[']The mere fact that a certain
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thing may result from a given set of circumstances is not sufficient.' In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)."
Brief 17. This does not show error in the Examiner's express reason for
using multiple pistons, however. See Answer 8. Therefore, we sustain
claim 22' s rejection.
Appellants argue that the rejection of claim 24, which ultimately
depends from claim 1, is in error because
Stuhr teaches ... two connector[ s] 9 and 10 for providing fluid-
one at an elevated pressure and a second as a reduce pressure ...
to a pair of pistons 8-but does not teach or suggest main water-
flow manifold is configured to provide water pressure input or
drainage connection to each cylinder as a function of an angular
position of the cylinder.
Brief 17-18. In response, the Examiner finds that "Stuhr teaches multiple
pistons and inherently teaches a water or liquid input and output[,] because
the motor includes hydraulic piston. The combination yields a water input
and output to each cylinder. Further, Colin also teaches a hydraulic motor
that includes a water input (23) and a water output (24)." Answer 8. Be that
as it may, the Examiner does not address Appellants' specific argument that
Colin fails to disclose the configuration of the main water flow manifold, as
claimed. As a result, Appellants persuade us that the Examiner's does not
support adequately the finding that Colin discloses the claimed main water
flow manifold. Thus, we do not sustain claim 24's rejection, or the rejection
of claim 25 that depends from claim 24.
Rejection V and VI
Appellants do not argue against the rejections of claims 5, 15, and 27-
30 that depend from claim 1. Thus, we sustain the rejections of these
dependent claims.
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DECISION
We AFFIRM the Examiner's obviousness rejections of claims 1-5, 7-
10, 12-23, and 26-30.
We REVERSE the Examiner's obviousness rejection of claims 24
and 25.
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Application 13/275,359
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED-IN-PART
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