Ex Parte van der Meijden et al

Patent Trial and Appeal Board

Feb 26, 2018

14461576 (P.T.A.B. Feb. 26, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/461,576 08/18/2014 Hendrikus Johannes van der Meijden Z0030/916962 4396
23370 7590 02/28/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
CHRISTENSEN, DANIELLE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENDRIKUS JOHANNES VAN DER MEIJDEN
and MICHAEL EDWARD MOORE
Appeal 2017-003211
Application 14/461,576
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
THOMAS F. SMEGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
22-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003211
Application 14/461,576
CLAIMED SUBJECT MATTER
The claims are directed to fluid-powered motors and pumps. Claim
22, reproduced below, is illustrative of the claimed subject matter:
22. An assembly for contacting water flowing in a cleaner of a
swimming pool or spa, comprising:
a. a first hub;
b. a first paddle (i) having a flexible edge and (ii) rotatable
about first and second axes;
c. a second paddle (i) having a flexible edge and (ii)
rotatable about the first and second axes;
d. a first shaft connecting the first and second paddles;
e. a first rotational bearing fitted to facilitate rotation of the
first shaft in the first hub; and
f. a second hub fitted over the first rotational bearing and attached
to the first hub.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sommer US 3,895,893 July 22, 1975
Sommer US 4,465,445 Aug. 14, 1984
Godsall US 6,877,968 Apr. 12, 2005
Van Der Meijden US 8,845,276 Sept. 30, 2014
REJECTIONS
Claims 22-30 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claim 1 of U.S. Patent No. 8,845,276 to
Van Der Meijden and Sommer ’445. This rejection is not contested (App.
Br. 3) and therefore summarily sustained. See, e.g., In re Berger, 279 F.3d
975 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection
of claims under 35 U.S.C. § 112, second paragraph, and on appeal the
Federal Circuit affirmed the Board’s decision and found that the appellant
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Application 14/461,576
had waived his right to contest the indefiniteness rejection by not presenting
arguments as to error in the rejection on appeal to the Board). See also
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can
waive appeal of a ground of rejection”).
Claims 22-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sommer ’893, Sommer ’445 and Godsall.
OPINION
The prior art rejection is argued as a group for which claim 22 is
representative under 37 C.F.R. § 41.50(c)(l)(iv). The Examiner relies on the
Sommer references to demonstrate all aspects of the claimed invention were
known with the exception of the flexible edges. For the flexible edges the
Examiner cites Godsall.
Appellants contend that because Godsall is directed to a water turbine,
i.e., as opposed to a pump, Godsall is non-analogous art. App. Br. 8-9;
Reply. Br 4. Appellants’ argument is inconsistent with the field of endeavor
defined in their own Specification which acknowledges inclusion of devices
whether powering, or powered by, liquids. The Examiner, correctly
considers the structure and function in determining the scope of prior art to
be considered in the obviousness inquiry:1 “both applicant’s invention and
Godsall relate to machines guiding fluid through a housing using rotating
blades.” Ans. 11. The main difference, the direction of work or energy flow,
to or from the fluid, does not amount to something that would disqualify a
reference as prior art to the skilled artisan. Differences in scale or degree
Hn reBigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (“[References [are]
within the same field of endeavor where they have essentially the same
function and structure”) (citations and internal quotations omitted).
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Application 14/461,576
(App. Br. 9) also cannot reasonably be said to be disqualifying. Fluidic
systems of different sizes, and working in different directions, remain
governed by the same general principles of fluid dynamics.
Appellants contend that Sommer ’893 teaches away from the
incorporation of flexible paddles because Sommer ’893 already has flexible
connecting rods. App. Br. 9-10. However, the Examiner is correct that “the
strips were applied to the blades for a different reason (reducing passage of
water past the blades) and [] coupling the low friction, flexible, plastic strips
to the blades would not take away from the functionality of the connecting
rods.”Ans. 11.
Appellants contend the Examiner’s reasoning in support of the
proposed combination is flawed because, “power that otherwise would be
available to move the swimming pool cleaner would instead be utilized to
counter the sealing force, thus producing an undesirable result.” App. Br. 10.
Appellants’ reasoning incorrectly presumes Godsall’s teachings are being
applied to Appellants ’ device used for Appellants ’ stated purpose. The
Examiner is proposing to incorporate Godsall’s flexible edges for a
beneficial effect on efficiency in Sommer’s pump. Ans. 11-12; Final Act.
10-11. It is not necessary for the prior art to serve the same purpose as that
disclosed in Appellants’ Specification in order to support the conclusion that
the claimed subject matter would have been obvious. See In re Lintner, 458
F.2d 1013, 1016 (CCPA 1972). Appellants do not dispute that a reduction in
fluid leakage would increase the output and efficiency of Sommer’s pump.
Thus, the actual basis for the Examiner’s proposed combination stands
uncontroverted.
Lastly, Appellants argue that “rotational bearing” means the bearing
itself must rotate as opposed to just hold something that rotates. App. Br.
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Application 14/461,576
11-12. The Specification refers to the much more specific, “wheels 86”
which are understood based on Figure 3 and the affiliated description (spec.
6-7) to themselves rotate. Instead of defining this particular structural
arrangement, this particular function, or some combination thereof (e.g.,
“rotating/rotable/rotatable bearing/wheels”), Appellants have merely
characterized the bearing as “rotational.” Where Appellants have the
opportunity to define the claimed subject matter as broadly or as narrowly as
they choose, and Appellants choose to omit language and details found in
the Specification, it is not our place to import it. SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). If
Appellants wished to define that the bearing itself is configured to rotate
(Reply. Br. 3), language was certainly available to do so. The Examiner is
correct that the adjective “rotational,” when used to modify “bearing” does
not, without more, necessarily convey that the bearing itself must rotate as
opposed to being configured to allow rotation of something therein. Ans. 12.
Absent compelling reasons to do so, we will not construe the claims to
incorporate limitations that Appellants could have easily included but chose
to omit.
DECISION
The Examiner’s rejections are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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