Ex Parte Velado et al

Patent Trial and Appeal Board

Jul 28, 2017

13796894 (P.T.A.B. Jul. 28, 2017)

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.
13/796,894 03/12/2013 Nicholas F. VELADO MARKETSPECTRUM-002-US 9421
62008 7590 08/01/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
WONG, ALBERT KANG
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS F. VELADO and FERNANDO A. VELADO
Appeal 2015-007635
Application 13/796,894
Technology Center 3600
Before JAMES P. CALVE, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1, 3, 5, 8, 11—16, and 21—25.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The cover page of the rejection omits claim 16, however, it is clear from
the body of the rejection and the parties’ briefing that claim 16 is included in
this appeal.
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Application 13/796,894
THE INVENTION
Appellants’ invention relates to watercraft monitoring and
communication equipment. Spec. 14. Claim 16, reproduced below, is
illustrative of the subject matter on appeal.
16. A sensing unit for an autonomous onboard
monitoring and communications system for watercraft,
comprising:
at least one temperature sensor;
at least one ultrasonic water level sensor;
a power supply connector;
a power out connector;
one or more audio emitters;
a visual indicator;
a wireless network communications interface; and
a control unit configured to:
receive input from the at least one temperature
sensor and the at least one ultrasonic water level
sensor;
determine, based on the input, a distance
between the at least one temperature sensor and a
surface;
compare the distance to at least one threshold
distance;
provide electrical power to a device connected
to the power out connector if the distance exceeds
the at least one threshold distance;
determine a value of a condition, wherein the
condition comprises the ambient temperature; and
operate one or more of the audio emitters, the
visual indicator, and the wireless network
communications interface if the condition value is
outside a condition value range.
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Application 13/796,894
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Velado2 US 2011/0095914 A1 Apr. 28, 2011
Cantolino3 US 2014/0044559 A1 Feb. 13,2014
The following rejections are before us for review:
1. Claims 1, 3, 5, 8, 11—15, and 21—25 are rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as the
invention.
2. Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Velado.
3. Claims 1, 3, 5, 8, 11—15, 21, and 23—25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Velado and Cantolino.
4. Claims 1, 3, 5, 8, 11—15, and 21—25 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement.
5. Claim 23 is rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of the claim upon which it depends, or for failing to include all the
limitations of the claim upon which it depends.
2 Velado names the same inventors as the application currently under appeal.
Velado was filed on June 28, 2010, published on April 28, 2011, and issued
as US 8,531,316 B2 on September 10, 2013. The instant application was
filed March 12, 2013. Velado and the instant application share significant
portions of their respective Specifications and Figures in common.
3 Cantolino was filed on October 17, 2013, and is a continuation of non­
provisional application No. 12/932,474, filed on February 25, 2011.
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Application 13/796,894
OPINION
Indefiniteness
Claim 1
With respect to claim 1, the Examiner notes that the claim recites “at
least one sensor,” meaning that it arguably reads on a device with only one
sensor. Non-Final Action 2. However, elsewhere the claim recites “at least
one temperature sensor” and “at least one ultrasonic water level sensor.”
Claims App., claim 1. The Examiner states that it is not clear if the system
comprises one sensor or a plurality of sensors. Non-Final Act. 2. The
Examiner also states that it is not clear what is meant by a “condition value.”
Id. The Examiner further states that it is not clear what the “external device”
is. Id. The Examiner further states that it is not clear how the external
device and its associated connector are related to the other elements of the
claim. Id.
Appellants argue that, since the claim uses a “comprising” transition,
the claim language with respect to at least one sensor, at least one
temperature sensor, at least one level sensor is appropriate. Appeal Br. 4—5.
We disagree. The claim is susceptible to being interpreted as requiring as
few as one sensor based on the plain meaning of the limitation “at least one
sensor for sensing a condition” or at least two sensors based on the recited
temperature sensor and ultrasonic water level sensor. Such ambiguity can be
corrected easily during examination because an applicant has the opportunity
to amend the claims to clarify their proper scope. See In re Skvorecz, 580
F.3d 1262, 1267 (Fed. Cir. 2009).
Appellants argue that the term “condition” is used extensively
throughout the Specification and refers to various “ambient conditions.”
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Application 13/796,894
Appeal Br. 5. Appellants further argue that claim 1 explicitly recites that a
“condition value” is “determined” — based on the temperature data and the
water level data input. Id. It is unclear to us, however, whether a “condition
value” refers to just a temperature value or to just a water level value that is
based on temperature or water level data, as claimed, or to some other value
that reflects the result of a numerical calculation or some other combination
based on a temperature reading together with a water level reading. In this
regard, Appellant represents that paragraphs 91—92 disclose this claimed
subject matter. Appeal Br. 3 (Summary of Claimed Subject Matter). These
paragraphs merely describe how control module 1001 calculates water level
based on data detected by ultrasonic sensors 1014. The Specification also
discloses events and “conditions” 172 that include, but are not limited to,
security events, vessel location tracking, vital vessel events, and personal
emergency response needs. Spec. 124.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). Here, claim 1 is sufficiently unclear
that the Examiner’s rejection is meritorious.
We sustain the indefmiteness rejection of claim 1 and of claims 3, 5,
8, 11—15, and 21—25 that depend therefrom.
Claim 3
The Examiner separately states that “the ultrasonic temperature
sensor” in claim 3 lacks an antecedent basis. Non-Final Action 2.
Appellants do not challenge this rejection in their Appeal Brief. See
generally Appeal Br. We summarily sustain the separate indefmiteness
rejection of claim 3.
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Claim 22
The Examiner separately states that claim 22 does not make sense.
Non-Final Action 3. Appellants do not challenge this rejection, which is
summarily sustained.
Unpatentability of Claim 16
over Velado
The Examiner finds that Velado discloses the invention substantially
as claimed and concludes that it would have been obvious to use
conventional alarm means such as visual and audio indicators. Id. at 7.
Appellants do not separately argue for the patentability of claim 16
apart from arguments directed to the Examiner’s rejection of other claims
over the combination of Velado and Cantolino, and therefore Appellants rely
on arguments regarding alleged deficiencies in Cantolino and the lack of
combinability of Cantolino with Velado. See generally Appeal Br., id. at 6
(“Claims 1 and 16 are the independent claims under consideration and each
contain similar limitations.”). Such arguments do not address the rejection
of claim 16 as unpatentable over Velado.
Under the circumstances, we are not apprised of error with respect to
the Examiner’s unpatentability rejection of claim 16 and such rejection is
hereby sustained.
Unpatentability of Claims 1, 3, 5, 8, 11—15, 21, and 23—25
over Velado and Cantolino
Notwithstanding our affirmance of the indefmiteness rejections, we
will reach the prior art rejections as Appellants’ claims are unpatentable
under any reasonable construction of the indefinite claim language. The
unpatentability rejections of all pending claims, including independent
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claims 1 and 16, are argued under a single heading. Appeal Br. 6—9.
Appellants argue that Velado does not teach or suggest each and every
limitation of claims 8 and 13. Id. at 6. Appellants describe claims 8 and 13
as “independent” claims when, in fact, they depend, either directly or
indirectly, from claim 1. Id. at 11 (Claims App.). Based on the content of
Appellants’ arguments, however, it appears to us that Appellants actually
intended to focus their attention on the rejection of claim 1, as the Examiner
determined was the case.4
Appellants argue that Velado is silent with respect to determining a
condition based on temperature and water level data. Appeal Br. 6.
Appellants argue that Cantolino does not cure such deficiency. Id.
Appellants argue that there is nothing in Cantolino that would teach or
suggest using both temperature and water level with respect to any aspect of
the pump. Id.
In response, the Examiner states that Velado teaches a system for
monitoring conditions within a boat and takes appropriate actions if detected
conditions are abnormal. Ans. 3. According to the Examiner, actions that
are deemed appropriate include initiating an alarm and turning on a pump.
Id. The Examiner finds that Velado senses temperature using a temperature
sensor and water level via an ultrasonic distance sensor and that, if the water
level is above a threshold, a pump is initiated to lower the water level. Id.
at 3^4.
While temperature is sensed, Velado does not teach the effect
of temperature data on pump operations. One of ordinary skill
in the art at the time of the invention in designing a pumping
4 Appellants argue elsewhere against a “rejection based on NPL.” Appeal
Br. 9. This argument is not understood as the only references cited in the
Non-Final Action are Velado and Cantolino.
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system would be aware of conditions that would affect the
operation of a pump. Cantolino teaches a temperature
controlled pump system. The system in Cantolino detects
temperature and operates a pump. However, Cantolino
recognizes that if the temperature falls to a point where the
water may become frozen, the resultant ice may damage the
pump. Thus, the pump is disabled when such a condition is
detected.
Id. at 4.
Specifically in response to Appellants’ argument that Cantolino does
not each or suggest using both temperature and water level with respect to
any aspect of the pump, the Examiner states that such is irrelevant as
Cantolino is relied on solely for teaching that one should not operate a pump
in freezing conditions because such operations may damage the pump. Id.
Cantolino is directed to a control system for a swimming pool
recirculating pump. Cantolino, Abstract. Cantolino explains that a pool
pump may be damaged if there is insufficient flow of water through the
pump due to various conditions including blockage, freezing, or a leak in the
system. Id. ]f 35. Cantolino measures water temperature in a conduit
between a swimming pool and a pump. Id. 142. When water reaches a
predetermined minimum temperature the system is turned on to circulate
water through the system to prevent freezing. Id.
The Examiner errs in finding that Cantolino turns the swimming pool
pump off in the event of low temperature. Non-Final Action 5. To the
contrary, Cantolino turns the pump on in response to low temperatures.
Cantolino 142.5 This raises the question of whether the Examiner’s error is
reversible error or harmless error.
5 Persons familiar with swimming pool operations understand that standing
water in pipes freezes before moving water in pipes and that pumps are
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In the instant case, Appellants disclose a system that detects water
temperature and then alerts the vessel owner to take appropriate action “in
order to mitigate risk of damage to, for example, water lines. Spec. 1 66.* * * 6
Velado expressly discloses the use of temperature sensors to detect freezing
temperatures and alert a vessel owner accordingly. Velado, 1 68. Whether
Cantolino turns the pump off or on as a function of the approach of freezing
temperatures, Cantolino teaches that it was known to alter the operation of a
pump if a specified temperature criteria is met. In other words, Cantolino
shows that it was known to “execute an action” if a condition is outside of a
value range within the meaning of claim 1. Consequently, we determine that
the Examiner’s error regarding whether Cantolino turns a pump on or off in
response to freezing temperatures is harmless error.
Next, Appellants argue that the Examiner’s reasoning for combining
Velado and Cantolino is insufficient under prevailing law. Appeal Br. 8
(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). In response, the
Examiner states that the reason for making the combination is to include
pump protection. “Cantolino provides a teaching for the state of knowledge
within the field by teaching that a temperature controlled pump should
include protection against freezing conditions. In doing so, it also provides
routinely operated during low temperature to keep water flowing through
underground lines so that the lines are not ruptured by the expansion that
occurs when water freezes into ice.
6 Appellants monitor water temperature to mitigate risk of damage to “water
lines.” Spec. 1 66. As we interpret Appellants’ Specification and Cantolino,
both are reasonably construed as turning a pump “on” during freezing
conditions to prevent the rupture of water lines from the freeze expansion of
standing water in the lines. Thus, we recognize the applicability of the
teachings of Cantolino to Appellants’ invention.
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the motivation for modifying such a pumping system.” Ans. 4—5. While we
disagree with the Examiner’s underlying fact finding that Cantolino turns the
pump off instead of on when faced with freezing conditions, we do agree
with the Examiner that Cantolino more generally teaches that it was known
to alter the operation of a pump when confronted with freezing temperatures
in order to protect equipment. Viewed in this manner, the Examiner has
stated an adequate rationale for making the proposed combination.
In view of the foregoing discussion, we sustain the Examiner's
unpatentability rejection of claim 1 and, for the same reasons, we sustain the
rejection of claims 3, 5, 8, 11—15, 21, and 23—25 that are not separately
argued.
35 U.S.C. § 112, First Paragraph
Non-Enablement
In view of our decision to sustain the indefiniteness and art rejections,
we do not reach the Examiner’s non-enablement rejection. See 37 C.F.R. §
41.50(a)(1).
35 U.S.C. § 112, Fourth Paragraph
Improper Dependent Form
In view of our decision to sustain the art rejection of all pending
claims, we do not reach the Examiner’s rejection of claim 23 under
35 U.S.C. § 112, fourth paragraph, as being of improper dependent form.
See 37 C.F.R. § 41.50(a)(1).
DECISION
The decision of the Examiner to reject claims 1, 3, 5, 8, 11—16, and
21—25 is 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)(l)(iv).
AFFIRMED
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