Ex Parte Porat

Patent Trial and Appeal Board

Feb 25, 2013

10942158 (P.T.A.B. Feb. 25, 2013)

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.
10/942,158 09/15/2004 Joseph Porat 206,596 2470
7590 02/26/2013
ABELMAN, FRAYNE & SCHWAB
10th Floor
666 Third Ave.
New York, NY 10017-5621
EXAMINER
ZHENG, LOIS L
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
02/26/2013 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 PORAT
________________

Appeal 2012-001104
Application 10/942,158
Technology Center 1700
________________

Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001104
Application 10/942,158

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A. Introduction1, 2
Joseph Porat (“Porat”) timely appeals under 35 U.S.C. § 134(a) from
the final rejection3 of claims 11-15 and 21-33. We have jurisdiction under
35 U.S.C. § 6. We affirm.
The subject matter on appeal relates to methods of cleaning pools
such as swimming pools with robotic cleaners that contain an
electrochemical chlorine generator that converts a chemical containing
chlorine in the pool water to “chlorine.” The 158 Specification defines the
term “chlorine” as synonymous with the terms “sodium hypochloronte” [sic,
hypochlorite, OCl-] and “chlorine ions.” (Spec. 1, ll. 8-10.) The chemical
containing chlorine may be, for example, sodium chloride (table salt).4 A
pump circulates pool water across the electrode plates of the electrochemical
chlorine generator and distributes the resulting chlorinated water into the

1 Application 10/942,158, Pool Cleaner with Integral Chlorine Generator,
filed 15 September 2004. The specification is referred to as the
“158 Specification,” and is cited as “Spec.” The real party in interest is
listed as Fluidra, S.A. of Barcelona, Spain, by acquisition from Aquatron,
Inc. (Appeal Brief, filed 9 February 2011 (“Br.”), 2.)
2 Heard 13 February 2013. The Official Transcript, which was not available
when this Opinion was entered, will be made of record.
3 Office action mailed 9 March 2010 (“Final Rejection”; cited as “FR”).
4 According to the Specification, a concentration in the range of 1000 parts
per million (ppm) to about 3000 ppm is desirable for efficient chlorine
generation, and the average person is said not to find this level
objectionable. (Spec. 5, ll. 5-6.) Human tears are said to contain about
3200 ppm NaCl. (Id. at l. 7.) A 25,000 gallon pool is said to require
about 630 pounds of salt. (Id. at 4, ll. 9-10.)
(A pool 20′ × 40ʹ filled 50″ deep contains about 25,000 gallons of
water. One gallon is 231 cubic inches:
(25,000 × 231 = 5,775,000 ≈ 20 × 40 × 12 × 12 × 50 = 5,760,000.)
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Application 10/942,158

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pool. The level of chlorine can be monitored and the chlorine generator
turned off or on as needed. The movement of the robotic cleaner may also
be controlled.
Representative Claim 11 reads:
A method of releasing a bactericidal amount of chlorine in
the water of a pool that contains a dissolved chlorine-
containing chemical compound, the method including:
a. placing into the pool an automated, self-propelled pool
cleaner having
a housing,
drive means for moving the pool cleaner over the
submerged bottom wall and, optionally, the side wall
surfaces of the pool to be cleaned,
a pump for moving water through the housing,
an outlet in the housing through which the water is
discharged,
an integral electrochemical chlorine generator secured
to the housing,
a source of electrical power operatively connected to
the electrochemical generator and
control means for initiating and terminating the drive
means and the functioning of the integral
electrochemical chlorine generator,
the electrochemical chlorine generator comprising
a plurality of negative and positive conductive
plates arranged in a parallel spaced-apart array to
form a plurality of passageways,
the array being positioned in the flowpath of water
moving through the housing while the pool cleaner
is submerged;
b. activating the pool cleaner drive means to thereby move
the pool cleaner across a submerged surface of a wall of
the pool;
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Application 10/942,158

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c. initiating the operation of the pump to move water
through the housing and
discharging the water through the outlet in the housing as a
pressurized stream to thereby create a zone of turbulent
mixing with the pool water in the vicinity of the outlet;
d. initiating the operation of the chlorine generator to
thereby produce chlorine from the chlorine-containing
compound dissolved in the water;
e. passing flowing water moving through the housing over
the plates of the electrochemical chlorine generator; and
f. discharging chlorine ion-containing water from the
generator inside the submerged moving pool cleaner
through the housing outlet and into the mixing zone to
thereby distribute a bactericidal amount of chlorine ions
into the pool water.
(Claims App., Br. 33-34; indentation, some paragraphing, and emphasis
added.)
All dependent claims depend, directly or indirectly, from claim 11.
The only other independent claim, claim 32, recites, in Jepson form, largely
the same subject matter as claim 33, which depends from claim 11 and adds
the further (repeatable) steps “(e)” [sic, (g)] of stopping the drive means
while allowing the chlorine generator to continue to operate, and “(f)”
[sic: (h)] of subsequently reactivating the drive means after a predetermined
period of time.
Claim 24 depends from claim 11 and requires that the chlorine
generator be turned off and on in response to “information corresponding to
the chlorine concentration in the pool water.” (Claims App., Br. 36.)
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Application 10/942,158

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The Examiner maintains the following grounds of rejection:5
A. Claims 11, 13-15, 21-23, 32, and 33 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Denkewicz6 and Tremblay.7
B. Claims 12, 24, 25, 27, 28, 30, and 31 stand rejected under 35
U.S.C. § 103(a) in view of the combined teachings of
Denkewicz, Tremblay, and Collier.8
C. Claims 26 and 29 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Denkewicz, Tremblay,
Collier, and Honda.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We find initially that, with respect to Rejection A, Porat has not
presented distinct substantive arguments for the separate patentability of
claims other than claim 11. Accordingly, the remaining claims stand or fall
with claim 11. With Respect to Rejection B, Porat has not presented
substantive arguments for the separate patentability of any claim other than
claim 24. As Porat has presented no arguments with respect to Rejection C,
claims 26 and 29 stand or fall with claim 24, from which they depend.

5 Examiner’s Answer mailed 21 June 2011 (“Ans.”).
6 Raymond P. Denkewicz, Jr. et al., Automatic Swimming Pool Cleaners
and Associated Components and Systems, U.S. Patent 5,882,512 (1999).
7 Mario Elmen Tremblay, Electrolysis Device For Treating a Reservoir of
Water, U.S. Patent Application Publication 2005/0067300 A1 (2005).
8 Richard B. Collier, Automated Chlorine Generator, U.S. Patent 4,724,059
(1988).
9 Nobuaki Honda, Integrated Sensor Device and Measuring System Using
the Same, U.S. Patent 6,798,184 B2 (2004).
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Claim 11
Porat argues that Denkewicz is “limited to a semi-automated
mechanism for dispensing a solid sanitizing chemical or antibacterial
compound into a swimming pool filled with fresh water.” (Br., sentence
bridging 12-13.) In contrast, Tremblay “requires the presence of an
ionizable compound in the water in order to provide an electrolyte solution
which can then form a disinfectant.” (Id. at 14, ll. 3-5.) Moreover, Porat
argues that Tremblay only discloses floating devices—playtoys, such as a
duck—intended to disinfect very small bodies of water, such as bathwater
for babies. (Id. at 14-15.) According to Porat, because the electrodes are
suspended below the hollow housing of the toy floating element, and
because the toy must be moved manually, the devices described by
Tremblay are not subject to safety hazards arising from the accumulation of
hydrogen within the body of the floating housing. Porat argues that this
hazard is avoided in the claimed invention by the requirement that flowing
water move through the housing over the plates of the electrochemical
chlorine generator. (Id. at 16.) The differences in scale and the differing
locations of the chlorine-dispersing devices (on the bottom of the pool
versus on the surface of the pool), in Porat’s view, are “significant,” and the
changes and adaptations required are “nonobvious, inventive, and
patentable.” (Id. at 18, 2d full para.)
These arguments are unpersuasive for several reasons. First, the term
“pool” is not limited as to size. We shall not read limitations into a claim,
and we shall not base patentability on limitations that are not present in a
claim. Second, Tremblay discloses that the reservoir solution can comprise
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residual halide ions at concentrations ranging from 35,000 ppm (sea water)
to, most preferably, less than 200 ppm. (Tremblay 3 [0042].) In particular,
Tremblay discloses that tap water is a particularly preferred electrolytic
solution (id. at 6 [0069]), and that as little at 0.1 ppm of “mixed oxidant”
products of the electrochemical cell will provide effective treatment of
harmful microorganisms in the reservoir solution (id. at [0074]). Porat has
not come forward with any credible evidence or argument demonstrating
that a bactericidal amount of chlorine will not be produced by the Tremblay
electrochemical cell under the disclosed conditions. Third, Porat has not
come forward with evidence that the level of skill in the relevant arts was so
low that artisans would not have readily adapted the robotic device taught by
Denkewicz to use an in situ source of chlorine, such as the electrochemical
cell taught by Tremblay, or that the modifications of the electrochemical cell
necessary to deal with an appropriate rate of flow for a larger body of water
would have required undue experimentation. The disclosure of Tremblay
suggests that the level of skill includes rather detailed knowledge about the
operation of electrolysis cells, biocidal requirements, and pumping
requirements. Similarly, Denkewicz indicates that automated chemical and
mechanical pool cleaning systems are well known, and that numerous
references are available to guide the implementation of various
modifications.
During oral argument, Porat emphasized that the Examiner had given
insufficient weight to the Williams Declaration10 regarding the mature state

10 Declaration of George E. Williams, signed 8 February 2008, and provided
in the Evidence Appendix to the Brief.
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of the relevant pool cleaning and water purification arts and the failure of
persons skilled in those arts to come forward with a robotic self-propelled
electrochemical chlorinator for swimming pools despite some 40 years
during which the combination might have been presented. (Br. 21-25.)
Porat expressly declined to argue that unexpected results in the form of
commercial success weighed for patentability, or that there was evidence
that a long standing problem had been solved after the failure of others to
solve the problem.
Our reviewing court has considered similar arguments and found them
unpersuasive:
Iron Grip places significant emphasis on the fact that, before
it filed for the '015 patent, there was no three-grip plate being
offered in the retail market. It argues that the absence of
such a three-grip plate in light of the prior art speaks to the
nonobviousness of its invention. However, Iron Grip has
presented no evidence of a long-felt need for three-grip
weight plates or the failure of others. Absent a showing of
long-felt need or the failure of others, the mere passage of
time without the claimed invention is not evidence of
nonobviousness. See In re Wright, 569 F.2d 1124, 1127
(C.C.P.A.1977).
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25
(Fed. Cir. 2004). There are many reasons why an apparently “obvious”
combination or modification may not be brought to market. On the present
record, the evidence that has been presented in favor of patentability does
not outweigh the evidence marshaled by the Examiner in favor of
unpatentability.
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Claim 32
Porat argues that claim 32 requires halting the movement of the pool
cleaner while continuing the operation of the electrochemical cell and the
dispersal of the chlorinated water. (Br. 25-26.) Neither Denkewicz nor
Tremblay, in Porat’s view, discloses a cleaner that can perform this function.
In particular, Porat argues, the only means of propelling the Denkewicz
cleaner is by the discharge of the water that also distributes the chlorine.
(Id. at 27.) Similarly, according to Porat, Tremblay does not disclose a
mode of operation in which the pool cleaner body can remain stationary
while the chlorine ions continue to be discharged below the water line of the
floating body. (Id. at 28.) Porat concludes that the rejection of claims 32
and 33 should be reversed. (Id. at 28-29.)
Porat, however, appears to have overlooked or misapprehended the
Examiner’s finding (FR, para. bridging 2-3 and at 5, 3d para.; Ans. 5, 1st
para; at 7, 3d full para.; and at 14-15) that Tremblay discloses at
paragraph [0067] a control system that can automatically shut off current to
the electrolysis cell, pumping means, or propulsion means, or any
combination thereof.
The ability to control the propulsion, the electrolysis cell, and the
pumping separately or in combination would have suggested, reasonably,
that the motion of the pool cleaner and the production of chlorine could be
controlled independently, including in the manner required by claim 32.
We conclude that Porat has failed to show harmful error in the
rejection of claims 32 and 33.
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Claim 24
Porat argues that the relevance of Collier has not been established,
urging that Collier “specifically teaches (col. 3, ll. 12-15) placing the
probe (37) in the internal piping of his obviously complex apparatus, and
not in the body of the pool water as is clearly disclosed and claimed
[in representative claim 24] by the applicant.” (Br. 29, last para.) Only
hindsight, in Porat’s view, accounts for the combination of the teachings of
Collier with those of Denkewicz and Tremblay proposed by the Examiner.
(Id.)
Claim 24 requires that initiation and termination of the operation of
the chlorine generator be “in response to information corresponding to the
chlorine concentration in the pool water.” (Claims App., Br. 35-35.) This
language does not require that a sensor or a measurement be made external
to a cleaner. Because Collier Figure 3 shows that pool water is drawn into
the disclosed automated chlorine generator, and the concentration of
hypochlorite is measured by probe 37, “information corresponding to the
chlorine concentration in the pool water” is generated, as required by
claim 24. We decline to read limitations into the claims from preferred
embodiments in the Specification. We also find that Porat does not dispute
that the remaining limitations recited in claim 24 are met or would have been
suggested by Collier.
Control of the generation of a material critical to a process in response
to the detected concentration of that material is a standard feature of
chemical processes, as illustrated by Collier, which is concerned with the
same chemical reaction, the generation of “chlorine,” as Tremblay, for the
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same general purpose (disinfecting water) as both Tremblay and Denkewicz.
We find the Examiner has come forward with ample evidence in support of
motivation for the proposed combination of teachings, and we affirm the
rejection of claim 24.
C. Order
We AFFIRM the rejection of claims 11, 13-15, 21-23, 32, and 33
under 35 U.S.C. § 103(a) in view of the combined teachings of Denkewicz
and Tremblay.
We AFFIRM the rejection of claims 12, 24, 25, 27, 28, 30, and 31
under 35 U.S.C. § 103(a) in view of the combined teachings of Denkewicz,
Tremblay, and Collier.
We AFFIRM the rejection of claims 26 and 29 under
35 U.S.C. § 103(a) in view of the combined teachings of Denkewicz,
Tremblay, Collier, and Honda.
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

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