Joseph Bertagnolli

Patent Trials and Appeals Board

Nov 12, 2020

2020001872 (P.T.A.B. Nov. 12, 2020)

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.
14/097,237 12/04/2013 Joseph J. Bertagnolli JB001CIP 9784
114490 7590 11/12/2020
C. Allen Black Law Office
1579 Montgomery Rd
Allison Park, PA 15101
EXAMINER
EVANS, EBONY E
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
11/12/2020 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
____________________

Ex parte JOSEPH J. BERTAGNOLLI
____________

Appeal 2020-001872
Application 14/097,237
Technology Center 3600
____________

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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THE INVENTION
Appellant’s invention relates to deicing fluids held in containers.
Spec. 2. Claim 1, reproduced below with paragraph indentation added, is
illustrative of the subject matter on appeal.
1. A kinetic deicing system comprising,
a pump in a contained fluid
wherein the fluid is at a temperature below a freezing point
of the fluid;
wherein the pump is in electrical communication with an
electrical current source; and
wherein the pump circulates the fluid circumferentially
thereby deicing the contained fluid.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Sare US 3,373,821 Mar. 19, 1968
Moore US 4,584,966 Apr. 29, 1986
Testa US 5,692,454 Dec. 2, 1997
Northrop US 6,460,483 B1 Oct. 8, 2002
The following rejections are before us for review:
1. Claims 1–4, 7–9, 11–14, and 17–19 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Testa and Sare.
2. Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Testa, Sare, and Northrop.
3. Claims 10 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Testa, Sare, and Moore.

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OPINION
Unpatentability of Claims 1–4, 7–9, 11–14, and 17–19
over Testa and Sare
Claim 1
The Examiner finds that Testa discloses the invention substantially as
claimed except for explicitly disclosing that the fluid is below its freezing
temperature, for which the Examiner relies on Sare. Final Act. 3. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to operate Testa’s pump in sub-
freezing temperatures. Id. According to the Examiner, a person of ordinary
skill in the art would have done this to keep the fluid from freezing. Id.
Appellant concedes that the claimed device is “simple,” but,
nevertheless, argues that the Examiner misconstrues the term “below” as it
relates to a liquid’s freezing point. Appellant contends that the fluid
contemplated in claim 1 has been “super-cooled” to a temperature that is
“below,” not merely “at” its freezing point. Appeal Br. 1. In response, the
Examiner explains that the rejection is based on an interpretation that the
word “below” means a point below where the liquid would freeze. Ans. 3.
“Sare clearly teaches that it is known to use a pump to circulate water having
a temperature below its freezing point.” Id. at 4.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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Appellant’s Specification teaches that:
The term “deicing” is to be construed as mitigating freezing,
crystallization or gelling of fluids as well as preventing
freezing, crystallization or gelling of the fluid when the fluid
temperature drops below the fluid’s freezing point. For
example a kinetic deicing system is “deicing” a fluid where the
system is imparting kinetic energy into a fluid in anticipation of
the ambient temperature dropping below the freezing point of
the fluid.
Spec. 3 (emphasis added).
[T]he pump should be able to sufficiently move enough fluid to
deice the fluid when the ambient temperature is below freezing.
Where the fluid is water in a livestock watering tank, the pump
should operate to deice the water to the extent that animals can
drink ad libitum in sub-freezing temperatures.
Id. at 5 (emphasis added).
The primary product application envisaged by Appellant is prevention
of freezing in livestock water troughs. Id. at 1. Regardless of the specific
temperature that a fluid freezes “at,” Appellant’s invention contains no
teaching, apparatus, or mechanism to drive the temperature of the fluid in
the container to a so-called “super cooled” point that is “below” its freezing
point. See generally Spec. Appellant does not mention the chemistry and
physics involved in “super” cooling of a fluid until, for the first time, in the
Appeal Brief. As explained in the above quoted passages from Appellant’s
Specification, the object of the invention is to keep livestock drinking water
from freezing when the “ambient temperature” drops below the freezing
point of the fluid, i.e., “sub-freezing temperatures.” Spec. 5. When ambient
air temperatures are above the freezing point for a sufficient period, we can
expect the fluid (water) temperature to also be above its freezing point. As
the ambient air cools, we can reasonably expect the water temperature to
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lower until it reaches its freezing point, at which time we can reasonably
expect water at the surface of the container to begin to freeze. Given the
complete dearth of disclosure in Appellant’s Specification regarding any
chemical or physical mechanism by which ordinary watering trough liquid
reaches “super cooled” temperatures, we have no basis for believing that
Appellant’s cattle trough water is any more or less super cooled than the
water in Testa and Sare when exposed to similar ambient conditions.
Appellant’s inartful use of the word “below” in claim 1 is insufficient to
distinguish the claimed invention over the prior art.
Thus, in view of the non-technical manner that terms relating to below
freezing temperatures (or similar expressions) are used in the Specification,
together with the fact that the Specification does not clearly delineate
between sub-freezing ambient air temperatures and fluid temperatures, we
agree with the Examiner that a person of ordinary skill in the art would
construe the phrase “at a temperature below a freezing point of the fluid” in
claim 1 as broad enough to encompass a temperature that is “at” the freezing
point.
Appellant next argues that the Examiner errs in construing the term
“circumferentially” as it is used in claim 1. Appeal Br. 3. In response, the
Examiner points out that fluid may be contained in containers that are
cylindrical, ovoid, rectangular, cubit or other shape. Ans. 4. Appellant’s
Specification explains that:
The fluid may be recirculated in any direction that deices the
fluid . . . The term “recirculating pump” is intended to be
construed broadly to include any means known in the art to
circulate, move, or otherwise impart kinetic energy into a fluid
by means of an intake and output.
Spec. 3–4.
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A person of ordinary skill in the art would understand that, due to
operation of a pump, fluid in the container “circulates” in a manner that
generates a current and that the current may be stronger (or faster) toward
the periphery of the container as compared to toward the middle of the
container. A person of ordinary skill in the art would understand that if a
fluid current is initiated near the periphery of a container due to action of a
pump, well known hydrologic principles would likely come into play to
cause a slower moving “eddy” current to form toward the center of the
container. Appellant provides a single drawing that depicts fluid output 14
and fluid intake 13, together with arrow “A” that purportedly shows a
circulation path of the fluid. See Fig. 1. Appellant’s Specification discloses
no apparatus or other mechanism to cause the fluid to circulate in a manner
that conforms to the shape of a substantially perfect geometric circle. See
generally Spec.
Appellant next attempts to distinguish Sare because it causes vertical
fluid currents that draws water from lower depths in the container where the
fluid is warmer. Appeal Br. 4. In response, the Examiner states that Sare
merely teaches that it is well-known in the art to use a pump to circulate a
liquid to inhibit freezing. Ans. 5. In the rejection before us, the Examiner
relies on Testa, not Sare, as teaching a pump that circulates fluid
circumferentially. Non-Final Act. 3. Thus, Appellant’s argument is viewed
as an individual attack on the Sare reference, when the rejection is based on
a combination of Testa and Sare. However, it is well settled that non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
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references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
As between the Examiner and Appellant, the Examiner has stated the
more persuasive position. Both Appellant and Sare impart movement to
fluid to inhibit freezing. A person of ordinary skill in the art would
understand, based on well-known physical principles of heat transfer that
stirring a fluid, whether initially and/or primarily in a horizontal or a vertical
direction will tend to make the temperature of the body of fluid more
uniform. Appellant presents neither evidence nor persuasive technical
reasoning that circulating fluid “circumferentially” produces new or
unexpected results compared to imparting movement to fluid in a direction
that is not “circumferentially” See generally Appeal Br. Moreover,
Appellant’s argument that Sare moves water vertically fails to account for
any substantially horizontal rotational movement of the water that is
imparted by Sare’s impeller. In any event, Testa teaches circumferential
flow, while Sare is merely relied on to show that it was known to impart
motion to water to inhibit freezing. Non-Final Act. 3. Appellant presents
neither evidence nor persuasive technical reasoning to support a finding that
current flow in Testa does not have a circumferential directional component.
See Testa, Fig. 1. Furthermore, a cursory review of Appellant’s Figure 1 and
the accompanying description thereof in Appellant’s Specification does not
support a view that more than ordinary skill is required to arrive at the
claimed invention.
In view of the foregoing discussion, we sustain the Examiner’s
unpatentability rejection of claim 1.
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Claims 2 and 13
Claim 2 depends from claim 1 and claim 13 depends from
independent claim 12. Claims App. The two claims are argued together.
Appeal Br. 5. Claim 2 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that Testa does not disclose that residual ice
formation is forced to a center of the contained fluid. Appeal Br. 5. This
argument is not persuasive. Testa discloses a substantially hemispherical
basin where recirculated water is added at the top and drained from the
bottom. Testa, Fig. 1. Anyone who has watched water drain from the
bottom of a basin is familiar with the cyclonic or circumferential direction
that the flow assumes as it drains. This well-known principle is captured in
the Examiner’s finding that “any floating ice would be pulled to the center
by the current being created by drain pipe 28.” Non-Final Act. 4. Appellant
presents neither evidence nor persuasive technical reasoning that rebuts the
Examiner’s finding.
We are not apprised of error and, therefore, sustain the rejection of
claims 2 and 13.
Claim 3
Claim 3 depends from claim 2 and adds the limitation: “wherein the
water is at a temperature below the freezing point of the water.” Claims
App. Appellant argues that the prior art does not disclose water that is super
cooled. Appeal Br. 5–6. Appellant’s argument is based on an argument for a
proposed construction of the phrase “at a temperature below a freezing point
of the fluid” that we previously considered and found unpersuasive with
respect to claim 1 and find equally unpersuasive here. Id. We sustain the
rejection of claim 3.
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Claims 4 and 14
These claims are argued together. Appeal Br. 6. Claim 4 is
representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 4 depends from claim 2
and adds the limitation: “wherein the water is contained in an open top
receptacle selected from the group consisting of a livestock water trough,
water tank, bucket, pond, pool, and birdbath.” Claims App. Testa discloses
an open basin bird bath. Testa, Fig. 1. The Examiner’s finding that Testa
discloses a bird bath is amply supported by the record. Appellant’s
argument that the prior art does not disclose a livestock trough is of no
moment where Appellant explicitly included “birdbath” in the Markush
group of claim 4. We sustain the rejection of claims 4 and 14.
Claims 7, 8, 9, 17, 18, and 19
Appellant does not argue for the separate patentability of these claims
apart from arguments presented with respect to claim 1, which we have
previously considered. We sustain the Examiner’s unpatentability rejection
of claims 7, 8, 9, 17, 18, and 19. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to
separately argue claims constitutes a waiver of arguments for separate
patentability).
Claim 11
Claim 11 is an independent claim that differs in scope to claim 1
primarily in that its preamble contains a “consisting essentially of” transition
phrase. Claims App. The container in claim 11 is explicitly limited to a
livestock water trough or container. Id.
Appellant argues that the Examiner errs in failing to limit
circumferential flow to a pattern of “rigid body rotation.” Appeal Br. 11.
Appellant repeats its earlier argument about the phrase “at a temperature
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below a freezing point of the fluid. Id. We previously considered these
arguments and found them unpersuasive with respect to claim 1 and find
them equally unpersuasive here.
Appellant next argues that the “consisting essentially of” transition
limits the claim so as to exclude the piping of Testa’s bird bath and the
“warming water” of Sare. Id. Appellant argues that its Specification
specifically excludes the use of heaters. Id. at 12.
The Federal Circuit provides the following guidance on interpretation
and application of the transition phrase — “consisting essentially of.”
“Consisting essentially of” is a transition phrase commonly
used to signal a partially open claim in a patent. Typically,
“consisting essentially of” precedes a list of ingredients in a
composition claim or a series of steps in a process claim. By
using the term “consisting essentially of,” the drafter signals
that the invention necessarily includes the listed ingredients and
is open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention.
PPG Industries v. Guardian Industries Corp., 156 F.3d 1352, 1354 (Fed.
Cir. 1998) (emphasis added).
Consistent with prevailing law, the Examiner responds to Appellant’s
argument in the following manner:
In response to appellant’s argument that the transitional phrase
“consisting essentially of which excludes the elements of piping
and tubing found in Testa and the element of warming water”
for the purposes of searching for and applying prior art . . .
absent a clear indication in the specification or claims of what
the basic and novel characteristics actually are, “consisting
essentially of” will be construed as equivalent to “comprising.”
Ans. 8 (citing PPG, 156 F.3d at 1355). The Examiner further states that:
The specification discloses on page 4 lines 1–4 that the pump is
intended to be construed broadly to include any means known
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in the art to circulate, move or otherwise impart kinetic energy
into a fluid by means of an intake and output . . . or any other
form or pump. If an appellant contends that additional steps or
materials in the prior art are excluded by the recitation of
“consisting essentially of,” applicant has the burden of showing
that the introduction of additional steps or components would
materially change the characteristics of applicant’s invention.
Id. (citing In re De Lajare, 337 F.2d 870 (CCPA 1964)).
Appellant’s Specification explicitly discloses that the pump is in fluid
communication with intake 13 and output 14. Spec. 3. Testa’s pump is
disposed in the pedestal of the bird bath. Testa, Fig. 1. There is no
limitation or other indication in claim 11 that the pump must be disposed in
the water trough and immersed in the water. There is similarly no limitation
or other indication that limits the length of intake and output conduits 13
and 14. There is, moreover, no indication in the Specification or in
Appellant’s Appeal Brief that the disposition of the pump and the length of
the conduits effect the basic and novel properties of the invention. See
generally Spec., Appeal Br. Here, Appellant makes no effort to describe,
much less establish with evidence and carry a burden of proof, as to what the
purported basic and novel properties of the invention actually are.
De Lajarte, 337 F.2d at 874.
In the absence of any analysis by Appellant as to what the basic and
novel properties of the invention are, we are not apprised of error and sustain
the rejection of claim 11.
Claim 12
Claim 12 is an independent claim that is substantially similar in scope
to claim 1 except that it recites a method instead of an apparatus. Claims
App. Appellant argues that the Examiner errs in relying on the same
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apparatus prior art references that we used in the rejection of claim 1.
Appeal Br. 7. Appellant also argues that the Examiner fails to make
appropriate findings regarding a motivation to combine the prior art. Id.
In response, the Examiner explains that, under prevailing law, when a
prior art device is the same as a device described in Appellant’s
Specification for carrying out the claimed method, it can be assumed the
device will inherently perform the claimed process. Ans. 6 citing In re King,
801 F.2d 1324 (Fed. Cir. 1986); MPEP 2112.02.
The legal principles recited by the Examiner are correctly and
appropriately applied to the issue before us. Id. Furthermore, the
Examiner’s rationale for combining the prior art, namely, to prevent
freezing, is sufficient to support the rejection. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)(requiring an obviousness conclusion to be based on
explicit articulated reasoning with rational underpinning) cited with approval
in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Furthermore, Appellant’s argument appears to be predicated on the
assumption that a person of ordinary skill in the art is a layman engaged in
livestock husbandry. Appeal Br. 7. The level of skill in the art can often be
determined from a review of the prior art. Litton Indus. Prods., Inc. v. Solid
State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). We find no basis
for lowering the level of ordinary skill to that of a lay cattle rancher. Based
on the prior art of record, we discern the level of ordinary skill to be
someone engaged in the design of fluid containment and recirculation
systems. Appellant’s invention is well within the sphere of such skill level.
We are not apprised of error and, therefore, sustain the Examiner’s
rejection of claim 12.
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Unpatentability of Claims 5, 6, 15, and 16
over Testa, Sare, and Northrop
Claims 5 and 15
Appellant argues claims 5 and 15 as a group. Appeal Br. 8–9.
Claim 5 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 5 depends
from claim 1 and adds the limitation: “wherein the pump is a recirculating
pump that recirculates the fluid by means of an impeller, propeller, jet,
peristaltic pump, bilge pump, piston pump, or a combination thereof.”
Claims App. The Examiner notes that, although Testa discloses a pump, it is
silent as to whether it uses an impeller. Non-Final Act. 6. The Examiner
relies on Northrop as disclosing a device that uses a pump that has an
impeller. Id.
Appellant argues that Northrop’s pump does not circulate water
circumferentially. Appeal Br. 8–9. We have previously found that Testa
circulates circumferentially as claimed in connection with claim 1. Northrop
merely supplies missing detail in Testa regarding a particular type of pump.
Appellant’s argument is an individual attack on Northrop where the rejection
before us is based on a combination of three references. However, it is well
settled that non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. Merck, 800 F.2d at 1097; Keller, 642 F.2d
at 425.
We sustain the rejection of claims 5 and 15.
Claims 6 and 16
Appellant argues claims 6 and 16 as a group. Appeal Br. 9. Claim 6
is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 6 depends from
claim 1 and adds the limitation: “wherein the pump recirculates the fluid at
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a rate of 2,000 gallons/hour (GPH), 1,500 GPH, 530 GPH, 500 GPH, 250
GPH, 100 GPH, 50 GPH, 25 GPH, or 10 GPH.” Claims App. The
Examiner relies on Northrop as disclosing a pump that circulates at a rate
of 25 GPH or 10 GPH. Non-Final Act. 6.
Appellant does not dispute that Northrop’s pump operates at the
claimed rate but, nevertheless, argues that Northrop’s pump is used to raised
water vertically, not circumferentially. Appeal Br. 9. This is another
individual attack on Northrop and is equally ineffective regarding claim 6 as
it is regarding claim 5 discussed above. Merck, 800 F.2d at 1097;
Keller, 642 F.2d at 425.
We sustain the rejection of claim 6 and 16.
Unpatentability of Claims 10 and 20
over Testa, Sare, and Moore
Appellant argues claims 10 and 20 as a group. Appeal Br. 9–10.
Claim 6 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 10 depends
from claim 1 and adds the limitation: “wherein circulation is controlled by a
thermostatic control device in electrical communication with the pump.”
Claims App. The Examiner relies on Moore as disclosing a thermostat.
Non-Final Act. 7. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time the invention was made to
use a thermostat in Testa. Non-Final Act. 7.
Appellant does not dispute that Moore discloses the use of a
thermostat but, nevertheless, argues that Moore contains a number of
features that are different than the claimed invention. Appeal Br. 9–11.
This argument is not persuasive. The use of thermostats is ubiquitous in a
wide variety of systems where temperature control is desired. We agree
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with the Examiner that it would have been obvious to include a thermostat in
Testa. We view Moore as but one example of the ubiquitous and varied uses
of thermostats.
We sustain the Examiner’s rejection of claim 10 and 20.
CONCLUSION
Claims
Rejected
§ References Affirmed Rev’d
1-4, 7-9,
11-14, 17-19
103 Testa, Sare 1-4, 7-9,
11-14, 17-19

5, 6, 15, 16 103 Testa, Sare, Northrop 5, 6, 15, 16
10, 20 103 Testa, Sare, Moore 10, 20
Overall
Outcome
1-20

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