Uy, Dindo et al.

Patent Trials and Appeals Board

Jan 31, 2020

14728678 - (D) (P.T.A.B. Jan. 31, 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.
14/728,678 06/02/2015 Dindo Uy 61222-946747 9143
23370 7590 01/31/2020
KILPATRICK TOWNSEND & STOCKTON LLP
MAILSTOP: IP DOCKETING - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
PAN, YUHUI R
ART UNIT PAPER NUMBER
2116
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DINDO UY, DAVID GOLDMAN, DAVID NIBLER, and
E. KEITH McQUEEN
____________

Appeal 2019-000784
Application 14/728,678
Technology Center 2100
____________

Before TREVOR M. JEFFERSON, JAMES B. ARPIN, and
SCOTT RAEVSKY, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the rejections of
claims 1, 6, 15, and 16. Final Act. 2.2 Claims 2–5 and 7–14 are cancelled.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Zodiac Pool Systems LLC.
Appeal Br. 3.
2 In this Decision, we refer to Appellant’s Amendment (“Amdt.,” filed
February 12, 2018), Appeal Brief (“Appeal Br.,” filed August 9, 2018), and
Reply Brief (“Reply Br.,” filed November 7, 2018); the Final Office Action
(“Final Act.,” mailed March 12, 2018) and the Examiner’s Answer (“Ans.,”
mailed September 27, 2018); and the originally-filed Specification (“Spec.,”
filed June 2, 2015). Rather than repeat the Examiner’s findings and
determinations and Appellant’s contentions in their entirety, we refer to
these documents.
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Amdt. 2–3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s claimed subject matter relates to methods
for controlling one or more components of a recreational water
circulation system or modifying one or more characteristics of
the water contained within a vessel such as a pool or spa. The
invention relates more particularly to special-purpose controllers
which may function without need to receive instructions from
any master controller.
Spec., 1:9–13. In particular, the claimed subject matter relates to methods
for controlling spas or pools, “in which a device may communicate
wirelessly with pool and spa control equipment both (1) via the Internet (or
router as part of a local area network [LAN]) and (2) directly (i.e. point-to-
point).” Id. at 2:10–12.
As noted above, claims 1, 6, 15, and 16 stand rejected. Claim 1 is
independent, and claims 6, 15, and 16 depend directly from claim 1. Appeal
Br. 13–14 (Claims App.).
Claim 1, reproduced below with disputed limitation emphasized, is
representative.
1. A method of controlling pool or spa equipment,
comprising:
a. providing a controller configured to communicate
wirelessly in each of the following communication manners: (i)
a first communication manner in which the controller
communicates directly with a mobile device; and (ii) a second
communication manner in which the controller communicates
indirectly with the mobile device via the Internet and a router
communicatively connected to the Internet;
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b. manually engaging a switch of the controller so as to
selectively configure the controller from communicating in the
second communication manner to communicating in the first
communication manner;
c. causing a communicative connection between the
controller and the pool or spa equipment; and
d. causing transmission of information, from the mobile
device to the controller, for further transmission to the pool or
spa equipment so as to change an operating characteristic of the
pool or spa equipment.
Id. at 13 (emphasis added).
REFERENCES AND REJECTION
The Examiner relies upon the following references in rejecting the
claims:
Name3 Number Pub’d Filed
Keirstead US 2011/0195664 A1 Aug. 11, 2011 Feb. 7, 2011
Yamasaki4 US 2015/0110074 A1 Apr. 23, 2015 Dec. 30, 2014
Specifically, claims 1, 6, 15, and 16 stand rejected as unpatentable under 35
U.S.C. § 103 as obvious over the combined teachings of Keirstead and
Yamasaki. Final Act. 2–7.
Appellant contests the obviousness rejection of independent claim 1
and relies on the alleged deficiencies in the rejection of the independent
claim to overcome the rejection of the dependent claims. Appeal Br. 12.
Because we determine that affirmance of the rejection of independent claim
1 is dispositive, except for our ultimate decision, we do not discuss the

3 All reference citations are to the first named inventor only.
4 Yamasaki claims the benefit of a foreign priority application filed July 2,
2012.
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merits of the rejection of claims 6, 15, and 16 further herein. We review the
appealed rejection of independent claim 1 for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. We address the rejection of claim 1 below.
ANALYSIS
1. Obviousness of Claim 1 Over Keirstead and Yamasaki
As noted above, the Examiner rejects independent claim 1 as obvious
over the combined teachings of Keirstead and Yamasaki. Final Act. 4–6.
The Examiner finds that Keirstead teaches or suggests limitations (a), (c),
and (d), as recited in claim 1. Id. at 4 (citing Keirstead ¶¶ 7, 29, 30, 35, 47,
Figs. 3, 4A). However, the Examiner acknowledges that Keirstead “does not
explicitly teach:
b. manually engaging a switch of the controller so as to selectively
configure the controller from communicating in the second communication
manner to communicating in the first communication manner.” Id. at 4–5.
Nevertheless, the Examiner finds that Yamasaki teaches or suggests
this limitation. Id. at 5 (citing Yamasaki ¶¶ 68, 73, Fig. 5). Further, the
Examiner finds that a person of ordinary skill in the relevant art would have
had reason to combine the teachings of Keirstead and Yamasaki to achieve
the method recited in claim 1. Id. at 5–6 (citing Yamasaki ¶ 6).
Appellant contends that the Examiner erred in rejecting claim 1 as
obvious over the combined teachings of Keirstead and Yamasaki for three
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reasons. Appeal Br. 6–12; Reply Br. 3–6. For the reasons given below, we
are not persuaded of dispositive Examiner error.
a. Keirstead Does Not Teach Away From the Proposed Combination
with Yamasaki
Appellant contends:
Clear is that the system of the Keirstead application selects the
communications means automatically based on proximity,
avoiding use of any manually-engageable switch. As stated in
the Keirstead application:
If the wireless device 6 is in the proximity of the spa 1
(refer to circle marked A), the wireless device 6
communicates with the spa 1 directly. If the wireless
device 6 is not in the proximity of the spa 1 but is in the
proximity of the home server 31 (refer to circle marked B),
the wireless device 6 communicates with the spa 1 through
the home server 31. If the wireless device 6 is not in the
proximity of the home server 31, the wireless device
communicates with the spa 1 through Internet networks
32.
See Keirstead, p. 4, ¶ 0047; see also id., Figs. 4A-B. No
manually-engageable switch thus is even contemplated by the
Keirstead application, as none is needed. The automatic
selection disclosed by the Keirstead application hence teaches
away from using a manually-engageable switch to do so,
precluding any prima facie basis from existing for any
obviousness rejection based on its teachings.
Appeal Br. 6–7. We disagree.
Although Keirstead discloses that the wireless device may select a
communications manner automatically, Appellant does not show that
Keirstead is limited to this selection method. Further, we do not find where
Keirstead discloses that it is limited to automatic selection or prohibits
manual selection of a communication manner.
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“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 Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000); see DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it
merely expresses a general preference for an alternative invention[.]”
(emphasis added)).
Initially, we note that, to the extent an embodiment disclosed in
Keirstead implies a preference for automatic, rather than manual, switching;
we do not find Keirstead’s teachings limited to a single embodiment. Such a
preference does not amount to a teaching away. Ans. 3 (citing In re Mouttet,
686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives
exist in the prior art does not mean that an inferior combination is inapt for
obviousness purposes.”)); see Appeal Br. 8 (“The Examiner does not dispute
that systems of the Keirstead application state ‘preferences’ for wholly
automatic switching, clearly diminishing any motivation for a skilled artisan
to do the opposite.”). Further, we note that Keirstead teaches the use of
manual selection means in other contexts, and Appellant does not show
Keirstead expressly disparages such means in any context. See Ans. 4
(citing Keirstead ¶ 38, Fig. 4B(i)).
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Here, we are not persuaded that Keirstead’s relative silence regarding
the means of selection of a communication manner would have discouraged
a person of ordinary skill in the relevant art from following the path set out
in Yamasaki or would have led such a person in a direction divergent from
the path that was taken by Appellant. See Appeal Br. 7 (citing Polaris
Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018)).
Consequently, we are not persuaded that Keirstead teaches away from its
combination with the teachings of Yamasaki to achieve the method recited
in claim 1.5
b. Combining Yamasaki’s “Touch Panel” Teaching With Keirstead’s
Teachings Would Lead to “Optimum” Communications Means
Appellant contends:
Although the Examiner contends that such a skilled person
would do so ‘in order to select optimum wireless
communications means,” see [Final Act. 6 (quoting Yamasaki
¶ 6 (emphasis added by Appellant))], this would not result from
adding a manually-engageable touch panel to the system of the
Keirstead application. Indeed, that system already automatically
selects the optimal communications path based on proximity
(presumably as a proxy for signal strength), so any manually-
engageable switch necessarily would change the automatic
optimal selection to some other non-optimum path.
Appeal Br. 8–9; see Reply Br. 5–6. Appellant, however, misunderstands the
Examiner’s combination of Keirstead’s and Yamasaki’s teachings.

5 Generally, replacing a manual activity with an automatic or mechanical
means is not sufficient to distinguish over the prior art. MPEP
§ 2144.04(III) (citing In re Venner, 262 F.2d 91, 95 (CCPA 1958)). The
converse also seems generally true.
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Yamasaki discloses:
[I]t is expected that electronic appliances having a wireless
communication function in conformity with a conventional
wireless LAN standard and a wireless communication function
in conformity with a WiGig standard will come into use in future.
As a result, a technology of selecting optimum wireless
communication means will be required in the wireless
communication apparatus which has a plurality of wireless
communication means. . . . In this case, the communication
control unit switches over the priority based on the information
about a location to use the wireless communication apparatus
input from the user operation unit and controls the
communication means selecting unit according to the priority
after the switch-over process.
Yamasaki ¶ 6; see Final Act. 6; Ans. 5. Thus, Yamasaki teaches that the
switch from one communication manner to another may be achieved by the
“communication control unit,” and, referring to step S1 of Figure 5,
Yamasaki further teaches that this switching may be achieved by input and
output unit 280 that may include a touch panel. Yamasaki ¶¶ 68, 73; see
Final Act. 5; Ans. 5. Therefore, the Examiner persuades us that a person of
ordinary skill in the relevant art would have understood Yamasaki to teach
that a touch panel, e.g., a manual switching means, may be used to achieve
desirable switching to an optimum communication means.
c. Yamasaki Is Analogous Art
In order to rely on a reference as a basis for rejection of
the applicant’s invention, the reference must either be in the field
of the applicant’s endeavor or, if not, then be reasonably
pertinent to the particular problem with which the inventor was
concerned.
In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (emphasis added).
Appellant contends that Yamasaki is neither in the same field of endeavor
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nor reasonably pertinent to the problem with which claim 1 is concerned.
Appeal Br. 9–10. We disagree.
The Examiner finds that Keirstead, Yamaguchi, and the instant
application are related to the field of communicating using multiple
communication protocols and the teachings of Yamasaki are reasonably
pertinent to the particular problem with which Keirstead and the instant
application are related, namely, “selecting a wireless communication means
among multiple wireless communication means.” Ans. 6. Although we
agree with Appellant that the Examiner’s identification of the field of
endeavor may be somewhat broad, we are persuaded that the Examiner is
correct in finding that the teachings of Yamasaki are reasonably pertinent to
the problem with which claim 1 and Keirstead are concerned. See Yamasaki
¶¶ 6, 17, 58; Keirstead ¶¶ 29, 30, 47; Spec., 1:19–2:7. Thus, we are
persuaded that Yamasaki is analogous art.
We are not persuaded that the Examiner erred in rejecting claim 1, as
obvious over the combined teachings of Keirstead and Yamasaki.
Consequently, we sustain the obviousness rejection of claim 1.
2. Dependent Claims 6, 15, and 16
Each of claims 6, 15, and 16 depends directly from independent
claim 1. Appeal Br. 13–14 (Claims App.). As noted above, Appellant
challenges the rejection of dependent claims 6, 15, and 16 for the same
reasons as their base claim. See id. at 12. Because we are not persuaded the
Examiner erred with respect to the obviousness rejection of claim 1, we also
are not persuaded the Examiner erred with respect to the obviousness
rejection of claims 6, 15, and 16. For this reason, we sustain the rejection of
those claims.
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DECISIONS
1. The Examiner did not err in rejecting claims 1, 6, 15, and 16 as
obvious over the combined teachings of Keirstead and Yamasaki.
2. Thus, on this record, claims 1, 6, 15, and 16 are unpatentable.
CONCLUSION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1, 6, 15, and 16.
In summary:
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1, 6, 15, 16 103 Keirstead,
Yamasaki
1, 6, 15, 16
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED