prior art. Claim 65 is therefore obvious under 35 U.S.C. § l03(a), and hence unpatentable, for the
`
`same reasons set forth by the Examiner in rejecting Claim 64, and further in view of the fact that
`
`making an element separable is not a patentable distinction.
`
`C.
`
`Discussion of the prior art references submitted by Appellant in comments that the
`
`Examiner has refused to consider and has expunged from the record.
`
`U.S. Patent No. 54055384 to Hun_g, identified in the submission that has been expunged from
`
`the record, discloses a solar-powered light (10) in which a rechargeable battery (26) charged by a
`
`solar panel (32) both reside within a common housing comprised of an upper housing (34) and base
`
`(16). The housing is supported atop a post (see Fig. 1).
`
`U.S. Patent No. 6,406,163 to Yang discloses a solar-powered light comprising a solar cell
`
`panel (1) that charges a battery (30). The solar cell panel (1) is mounted atop a post (4), and the
`
`battery (30) is mounted beneath the solar panel inside the post (see, e. g., Fig. 11).
`
`U.S. Patent No. 6 729 742 to Wismuth discloses a solar powered light having a housing (2)
`
`sitting on the upper end of a pole (3). Solar cells (5) are located in the top part of the housing (2), and
`
`a module containing a battery and circuitry is also contained in the housing (2).
`
`U.S. Patent No. 5 758 948 to Hale discloses a seasonal decoration in the general shape of a
`
`Christmas tree. Light supporting strips (12) that are C-shaped in cross-section (3:4—8) are mounted
`
`to a central supporting shaft (14). The lighting strips are movable from an extended position (Fig. 1)
`
`to a position in which they are collapsed against the pole for storage (Fig. 6). A housing (70) is
`
`located at the top of the shaft (14). Light sockets (30) are mounted in the C-shaped channel of the
`
`light supporting strips so that a bulb (15) extends outwardly. Conductors (3 6) extend at least partially
`
`within the C-shaped channel (see Fig. 9).
`
`D.
`
`Claims under appeal that are unpatentable over prior art references submitted by
`
`Appellant that the Examiner has refused to consider and expunged from the record.
`
`Claim 2————was allowable because of the limitation that the rechargeable electrical power
`
`system and the solar energy system be contained within a common housing. None of the prior art of
`
`record shows this feature. However, Hung and Yang, identified in the submission that has been
`
`expunged from the record, disclose a solar-powered light in which a solar energy system and a
`
`rechargeable electrical power system are contained within a common housing sitting atop a post.
`
`Because of the advantages inherent in combining solar cell and battery within a common housing,
`
`and in view of the teaching of supporting the housing atop a post, it would have been obvious to
`
`modify the combination of WO 93/00840 and Phyle by placing the solar cell and battery within a
`
`common housing atop the pole, thus rendering Claim 2 unpatentable.
`
`US2000 lZ1l6S1l.l
`
`YOT-1003-1665
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`Yotrio Ex. YOT-1003, Page 1665
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`YOT-1003-1665
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`Yotrio Ex. YOT-1003, Page 1665
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`

`
`(viii) Claims appendix. An appendix containing a copy of the claims to be reviewed on
`
`appeal is attached as Exhibit A.
`
`(ix) Evidence appendix. None.
`
`(x) Related proceedings appendix. Appellant has no knowledge of any related proceedings.
`
`Respectfully submitted:
`
`@741-<&..a4.
`
`Counsel for Southern Sales & Marketing Group,
`Inc.
`
`Reg. No. 31,871
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street
`Suite 2800
`
`Atlanta, Georgia 30309-4530
`Tel. (404) 745-2409
`Fax (404) 541-3368
`Attorney Docket: 45639-3 16477
`
`USZ000 l21l65ll.l
`
`YOT-1003-1666
`
`Yotrio Ex. YOT-1003, Page 1666
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`YOT-1003-1666
`
`Yotrio Ex. YOT-1003, Page 1666
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`

`
`EXHIBIT A
`
`LISTING OF CLAIMS UNDER APPEAL
`
`USZOOO 12107218‘!
`
`YOT-1003-1667
`
`Yotrio Ex. YOT-1003, Page 1667
`
`YOT-1003-1667
`
`Yotrio Ex. YOT-1003, Page 1667
`
`

`
`2.
`
`(Amended) An umbrella apparatus comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion hingedly coupled to the pole portion;
`
`a power module carried by the pole portion above the canopy portion, the
`
`power module having an upper portion and a lower portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus, the rechargeable electrical power system being
`
`disposed in the lower portion of the power module;
`
`a solar energy system carried by the [pole portion above the canopy
`
`portion] upper portion of the power module, the solar energy system
`
`being adapted to collect solar energy and convert the solar energy into
`
`electrical energy, the solar energy system being conductively coupled to
`
`the rechargeable electrical power system, such that the solar energy
`
`collected and converted into electrical energy recharges the rechargeable
`
`electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system.
`
`3.
`
`(Amended - Confirmed) [The] A3 umbrella apparatus [according
`
`to claim 2,] comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`YOT-1003-1668
`
`Yotrio Ex. YOT-1003, Page 1668
`
`YOT-1003-1668
`
`Yotrio Ex. YOT-1003, Page 1668
`
`

`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system;
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system;
`
`wherein the lighting system comprises:
`
`a plurality of rib members coupled to the canopy portion; and
`
`a plurality of cold cathode tube elements carried by the rib members, each
`
`cold cathode tube element being conductively coupled to and powered
`
`by the rechargeable electrical power source.
`
`4.
`
`(Original) The umbrella apparatus according to claim 2, wherein
`
`the lighting system comprises:
`
`a plurality of rib members coupled to the canopy portion; and
`
`a plurality of light emitting diode elements carried by the rib members,
`
`each light emitting diode element being conductively coupled to and
`
`powered by the rechargeable electrical power source.
`
`5.
`
`(Original) The umbrella apparatus according to claim 2, wherein
`
`the lighting
`
`system comprises:
`
`a plurality of rib members coupled to the canopy portion; and
`
`YOT-1003-1669
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`Yotrio Ex. YOT-1003, Page 1669
`
`YOT-1003-1669
`
`Yotrio Ex. YOT-1003, Page 1669
`
`

`
`a plurality of fluorescent light elements carried by the rib members, each
`
`fluorescent light element being conductively coupled to and powered by
`
`the rechargeable electrical power source.
`
`8.
`
`(Amended - Confirmed) [The] Ap umbrella apparatus [according
`
`to claim 7,] comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy; the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`an electromechanical opening and closing system for opening and closing
`the canopy portion, the electromechanical opening and closing system
`
`being conductively coupled to and powered by the rechargeable
`
`electrical power system;
`
`wherein the electromechanical opening and closing system comprises:
`
`an electric motor carried by the pole portion;
`
`a control system for controlling the electric motor;
`
`a gear system coupled to the electric motor; and
`
`a cable and pulley system coupled to the gear system and the canopy
`
`portion;
`
`YOT-1003-1670
`
`Yotrio Ex. YOT-1003, Page 1670
`
`YOT-1003-1670
`
`Yotrio Ex. YOT-1003, Page 1670
`
`

`
`wherein the opening and closing of the canopy portion is achieved by the
`
`electric motor in response to selective operation of the control system;
`
`a.n.9l
`
`wherein the control system comprises:
`
`a receiver conductively coupled to the electric motor;
`
`a remote transmitter for transmitting an encoded signal to the receiver; and
`
`a decoder conductively coupled to the receiver for decoding the encoded
`
`signal from the transmitter.
`
`10.
`
`(Confirmed) An umbrella apparatus comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a combination of two or more of the following modular systems:
`
`a lighting system carried by the canopy portion;
`
`an electromechanical opening and closing system for opening and closing
`
`the canopy portion; or
`
`a cooling system;
`
`YOT-1003-1671
`
`Yotrio Ex. YOT—1003, Page 1671
`
`YOT-1003-1671
`
`Yotrio Ex. YOT-1003, Page 1671
`
`

`
`wherein each modular system is configured to be interchanged with each
`
`other, each modular system being conductively coupled to and powered
`
`by the rechargeable electrical power system.
`
`11.
`
`(Confirmed) The umbrella apparatus according to claim 10,
`
`wherein the lighting system comprises:
`
`a plurality of rib members coupled to the canopy portion; and
`
`a plurality of cold cathode tube elements carried by the rib members, each
`
`cold cathode tube element being conductively coupled to and powered
`
`by the rechargeable electrical power source.
`
`12.
`
`(Confirmed) The umbrella apparatus according to claim 10,
`
`wherein the lighting system comprises:
`
`a plurality of rib members coupled to the canopy portion; and
`
`a plurality of light emitting diode elements carried by the rib members,
`
`each light emitting diode element being conductively coupled to and
`
`powered by the rechargeable electrical power source.
`
`l3.
`
`(Confirmed) The umbrella apparatus according to claim 10,
`
`wherein the cooling system comprises:
`
`a fluid reservoir operably associated with the umbrella apparatus;
`
`at least one mist nozzle coupled to the canopy portion, each mist nozzle
`
`being in fluid communication with the fluid;
`
`a conduit creating fluid communication between the fluid reservoir and
`
`each mist nozzle; and
`
`a pump for pumping the fluid from the reservoir through each mist nozzle.
`
`14.
`
`(Confirmed) The umbrella apparatus according to claim 10,
`
`wherein the electromechanical opening and closing system comprises:
`
`YOT-1003-1672
`
`Yotrio Ex. YOT—1003, Page 1672
`
`YOT-1003-1672
`
`Yotrio Ex. YOT-1003, Page 1672
`
`

`
`an electric motor carried by the pole portion; a control system for
`
`controlling the electric motor;
`
`a gear system coupled to the electric motor; and
`
`a cable and pulley system coupled to the gear system and the canopy
`portion;
`
`wherein the opening and closing of the canopy portion is achieved by the
`
`electric motor in response to selective operation of the control system.
`
`49.
`
`1 flew) An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion having a plurality of rib members, the canopy portion
`
`being hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system;
`
`wherein the lighting system includes multiple discrete lighting elements
`
`positioned along a rib member, each lighting element being recessed
`
`within the rib member and being conductively coupled to the
`
`YOT-1003-1673
`
`Yotrio Ex. YOT-1003, Page 1673
`
`YOT-1003-1673
`
`Yotrio Ex. YOT-1003, Page 1673
`
`

`
`rechargeable electrical power system by an electrical conductor, the
`
`electrical conductor also being recessed within the rib member.
`
`50.
`
`mew) The umbrella apparatus according to claim 49, wherein the
`
`lighting system includes multiple discrete lighting elements along each rib
`
`member.
`
`52.
`
`gfiew) An umbrella apparatus comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion having a pluralig of rib members, the canopy portion
`
`being hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a_ligl1ting gym carried Iggcanopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system‘,
`
`wherein the lighting system includes multiple discrete lighting elements
`
`positioned along a rib member,‘ and
`
`wherein each lighting element is fully recessed within the corresponding
`
`rib member.
`
`YOT-1003-1674
`
`Yotrio Ex. YOT—1003, Page 1674
`
`YOT-1003-1674
`
`Yotrio Ex. YOT-1003, Page 1674
`
`

`
`53.
`
`mew] The umbrella apparatus according to claim 52, further
`
`comprising:
`
`a translucent cover over the lighting elements.
`
`55.
`
`{flew} The umbrella apparatus according to claim 52, further
`
`comprising:
`
`wires for conductively coupling the lighting elements to the rechargeable
`
`electrical power source, the wires being fully recessed within the rib
`
`members.
`
`56.
`
`(flew) An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion having a pluralipg of rib members, the canopy portion
`
`being hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system adapted to collect solar energy and convert the solar
`
`energy into electrical energy, the solar energy system being conductively
`
`coupled to the rechargeable electrical power system, such that the solar
`
`energy collected and converted into electrical energy recharges the
`
`rechargeable electrical power system‘, and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system, the lighting system comprising a pluralig of lighting
`
`elements carried by the rib members, each lighting element being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system,‘
`
`YOT-1003-1675
`
`Yotrio Ex. YOT-1003, Page 1675
`
`YOT-1003-1675
`
`Yotrio Ex. YOT-1003, Page 1675
`
`

`
`wherein the rechargeable electrical power system and the solar energy
`
`system each form a separate component part of a power module that is
`
`carried by the pole portion above the canopy portion.
`
`57.
`
`g_l1Iew)A patio umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion hingedly coupled to the pole portion, the canopy portion
`
`having a plurality of rib members;
`
`a crank housing coupled to the pole portion, the crank housing being
`
`adapted to partially house a system for opening and closing the canopy
`
`portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus, the rechargeable electrical power system being
`
`disposed below the canopy portion;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system, the lighting system comprising a plurality of lighting
`
`elements carried by the rib members, each lighting element being
`
`conductively coupled to and powered by the rechargeable electrical
`
`YOT-1003-1676
`
`Yotrio Ex. YOT-1003, Page 1676
`
`YOT-1003-1676
`
`Yotrio Ex. YOT-1003, Page 1676
`
`

`
`power system via conductors, the conductors being recessed within the
`
`rib members.
`
`58.
`
`(flew) The patio umbrella apparatus according to claim 57, further
`
`comprising:
`
`a switch carried by the crank housing for controlling the system for
`
`opening and closing the canopy portion.
`
`60.
`
`fiewj An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion having a plurality of rib members, the canopy portion
`
`being hingedly coupled to the pole portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system’, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system;
`
`wherein the lighting system includes a plurality of lighting elements, each
`
`lighting element being recessed within a corresponding rib member and
`
`being covered by a translucent cover carried by the corresponding rib
`
`member.
`
`YOT-1003-1677
`
`Yotrio Ex. YOT—1003, Page 1677
`
`YOT-1003-1677
`
`Yotrio Ex. YOT-1003, Page 1677
`
`

`
`61.
`
`(New) An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion having a pluralifl of rib members, the canopy portion
`
`being hingedly coupled to the pole portion;
`
`a power unit carried by the pole portion above the canopy portion;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus, the rechargeable electrical power system
`
`forming a component part of the power unit; a solar energy system for
`
`collecting solar energy and converting the solar energy into electrical
`
`energy, the solar energy system being conductively coupled to the
`
`rechargeable electrical power system, such that the solar energy
`
`collected and converted into electrical energy recharges the rechargeable
`
`electrical power system, the solar energy system also forming a
`
`component part of the power unit; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system and having a pluralig of lighting elements, each lighting
`
`element being carried by a rib member and being conductively coupled
`
`to the rechargeable electrical power system via a conductor carried by
`
`the corresponding rib member.
`
`65.
`
`mew] The patio umbrella apparatus according to claim 64,
`
`wherein the discuss-shaped module is releasably coupled to the pole portion.
`
`70.
`
`( flew) An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`YOT-1003-1678
`
`Yotrio Ex. YOT-1003, Page 1678
`
`YOT-1003-1678
`
`Yotrio Ex. YOT-1003, Page 1678
`
`

`
`a canopy portion being hingedly coupled to the pole portion, the canopy
`
`portion having a pluralig of rib members, each rib member having a
`
`recessed longitudinal channel;
`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system, the lighting system comprising a pluralifl of lighting
`
`elements carried by the rib members, each lighting element being
`
`disposed within the channel and being conductively coupled to and
`
`powered by the rechargeable electrical power source.
`
`71.
`
`(flew) The umbrella apparatus according to claim 70, further
`
`comprising:
`
`a transparent cover disposed over each channel.
`
`72.
`
`gplewg An umbrella apparatus, comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion;
`
`a canopy portion being hingedly coupled to the pole portion, the canopy
`
`portion having a plurality of rib members;
`
`YOT-1003-1679
`
`Yotrio Ex. YOT-1003, Page 1679
`
`YOT-1003-1679
`
`Yotrio Ex. YOT-1003, Page 1679
`
`

`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus;
`
`a solar energy system carried by the pole portion above the canopy
`
`portion, the solar energy system being adapted to collect solar energy
`
`and convert the solar energy into electrical energy, the solar energy
`
`system being conductively coupled to the rechargeable electrical power
`
`system, such that the solar energy collected and converted into electrical
`
`energy recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system,
`
`wherein the lighting system comprises:
`
`a plurality of discrete lighting elements carried by each rib member;
`
`wherein each discrete lighting element is conductively coupled to and
`
`powered by the rechargeable electrical power source and is recessed
`
`within a corresponding rib member, the discrete lighting elements being
`
`conductively coupled to the rechargeable electrical power system by
`
`electrical conductors, the electrical conductors also being recessed
`
`within the rib members.
`
`74.
`
`{flew} An umbrella apparatus comprising:
`
`a base support portion;
`
`a pole portion coupled to the base support portion‘,
`
`a canopy portion hingedly coupled to the pole portion;
`
`a power module carried by the pole portion above the canopy portion, the
`
`power module having an upper portion and a lower portion;
`
`YOT-1003-1680
`
`Yotrio Ex. YOT-1003, Page 1680
`
`YOT-1003-1680
`
`Yotrio Ex. YOT-1003, Page 1680
`
`

`
`a rechargeable electrical power system for providing electrical power to
`
`the umbrella apparatus, the rechargeable electrical power system being
`
`disposed in the lower portion of the power module;
`
`a solar energy system disposed in the upper portion of the power module,
`
`the solar energy system being adapted to collect solar energy and
`
`convert the solar energy into electrical energy, the solar energy system
`
`being conductively coupled to the rechargeable electrical power system,
`
`such that the solar energy collected and converted into electrical energy
`
`recharges the rechargeable electrical power system; and
`
`a lighting system carried by the canopy portion, the lighting system being
`
`conductively coupled to and powered by the rechargeable electrical
`
`power system.
`
`YOT-1003-1681
`
`Yotrio Ex. YOT-1003, Page 1681
`
`YOT-1003-1681
`
`Yotrio Ex. YOT-1003, Page 1681
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`

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`EXHIBIT B
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`REQUESTER’S COMMENTS OF SEPTEMBER 14, 2009
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`(expunged from prosecution record)
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`USZOOD |2l07219.1
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`YOT-1003-1682
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`Yotrio Ex. YOT-1003, Page 1682
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`YOT-1003-1682
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`Yotrio Ex. YOT-1003, Page 1682
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Reexamination of:
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`Gregory G. Kuelbs
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`Control No. 95/000,104
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`Patent No.: 6,612,713
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`Issued: September 2, 2003
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`Assignee: WORLD FACTORY, INC.
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`§/\/\J\/\/$/\-/%%%
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`Examiner: Margaret Rubin
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`Art Unit: 3992
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`REPLACEMENT COMMENTS OF THIRD PARTY REQUESTER TO PATENT
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`OWNER’S RESPONSE IN INTER PARTES REEXAMINATION AND TO OFFICE
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`ACTION
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`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`Madame:
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`In response to the Inter Partes Reexamination Communication dated August 28, 2009,
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`third party requester, Southern Sales & Marketing Group, Inc. (“Southern Sales”), pursuant
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`to 37 CFR §§ 1.947 and 1.948, hereby submits its replacement comments to the “Response to
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`Office Action in Inter Partes Reexamination” by the patent owner, World Factory, Inc.
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`(“World Factory”), filed April 17, 2009.
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`CLAIMS 1, 47, 48, 51, AND 63 ARE UNPATENTABLE BECAUSE
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`THEY BROADEN THE SCOPE OF THE PATENT
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`The Federal Circuit standard for determining whether a claim has been broadened is
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`as follows: “A claim of a reissue application is broader in scope than the original claims if it
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`US2000 ll$03020.|
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`YOT-1003-1683
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`Yotrio Ex. YOT-1003, Page 1683
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`YOT-1003-1683
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`Yotrio Ex. YOT-1003, Page 1683
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`

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`Comments by Third Party Requester
`Control No. 95/000,104
`Page 2
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`contains within its scope any conceivable apparatus or process which would not have
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`infringed the original patent....” Tillotson, Ltd. v. Walbro Corp., 831 F2d at 1037, 4 USPQ2d
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`at 1453 n.2. The same broadening test is applied to claims in reexamination. Anderson v.
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`International Eng ’g & A/.0’g., 160 F.3d at 1349, 48 USPQ2d at 1634.
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`For the purposes of the following analysis, the “conceivable apparatus” will be an
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`apparatus that consists of the elements of the amended or new claim. If a device consisting of
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`the elements of the amended or new claim does not infringe the patent claim, the amended or
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`new claim impermissibly broadens the patent.
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`Amended Claim 1
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`Patent Claim l—A device of amended Claim 1 does not infringe patent Claim 1. The
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`device of amended Claim 1
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`lacks “an electrical charging system for recharging the
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`rechargeable electrical power system, the electrical charging system being adapted to receive
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`power from an AC power outlet.” Thus a device according to amended Claim 1 does not
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`infringe patent Claim 1.
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`Patent Claims 2—S—A device of amended Claim 1 does not infringe patent Claims 2-
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`5. The device of patent Claims 2-5 requires “a solar energy system carried by the pole
`portion.” “Carried” means “to sustain the weight or burden of.” Thus patent Claims 2-5
`require that the Weight of the solar energy system be borne by the pole portion above the
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`canopy portion. In contrast, amended Claim 1 requires only that the solar energy system be
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`“carried by a module coupled to the pole.” Thus a hypothetical device according to amended
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`,
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`
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`Solar energy system
`“coupled” to pole but
`not “carried by’ the
`pole
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`
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`USZOOO ll503020,1
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`YOT-1003-1684
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`Yotrio Ex. YOT-1003, Page 1684
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`YOT-1003-1684
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`Yotrio Ex. YOT-1003, Page 1684
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`

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`Comments by Third Party Requester
`Control No. 95/000,104
`Page 3
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`Claim 1 could include a module sitting on the ground beside the umbrella, coupled to the
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`pole portion above the canopy portion but without the weight of the module being borne by
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`the pole portion (see diagram). Thus a hypothetical device could infringe amended Claim 1
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`without infringing patent Claims 2-5.
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` —A device
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`according to amended Claim 1
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`lacks
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`an
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`electromechanical opening and closing system for opening and closing the canopy portion, as
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`required by patent Claims 6-8. Thus a device according to amended Claim 1 does not
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`infiinge patent Claims 6-8.
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`Patent Claim 9—A device according to amended Claim 1 lacks a cooling system as
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`required by patent Claim 9. Thus a device according to amended Claim 1 does not infringe
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`patent Claim 9.
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`Patent Claims 10-14-—A device according to amended Claim 1 lacks a combination
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`of two or more modules (lighting, cooling, canopy lift mechanism), as required by patent
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`Claims 10-14. Thus a device according to amended Claim 1 does not infringe patent Claims
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`10-14.
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`CONCLUSION: Because a hypothetical device consisting of the limitations of
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`amended Claim 1 would not infringe any of the claims of the original patent, Claim 1 as
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`amended impermissibly broadens the scope of the patent and is not allowable.
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`New Claim 47
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`Patent Claim 1—A device according to new Claim 47 lacks an electrical charging
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`system being adapted to receive power from an AC power outlet, as required by patent Claim
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`1. Thus a device according to new Claim 47 does not infringe patent Claim 1.
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`Patent Claims 2—5—A device according to new Claim 47 lacks a lighting system
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`carried by the canopy portion, as required by patent Claims 2-5. Thus a device according to
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`new Claim 47 does not infringe patent Claims 2-5.
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`Patent Claims 6—8——A device according to new Claim 47 lacks an electromechanical
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`opening and closing system for opening and closing the canopy portion, as required by patent
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`Claims 6-8. Thus a device according to new Claim 47 does not infringe patent Claims 6-8.
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`US2000 11503020.]
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`YOT-1003-1685
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`Yotrio Ex. YOT-1003, Page 1685
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`YOT-1003-1685
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`Yotrio Ex. YOT-1003, Page 1685
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`

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`Comments by Third Party Requester
`Control No. 95/000,104
`Page 4
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`Patent Claim 9-A device according to new Claim 47 lacks a cooling system as
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`required by patent Claim 9. Thus a device according to new Claim 47 does not infringe
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`patent Claim 9.
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`Patent Claims l0-l4——A device according to new Claim 47 lacks a combination of
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`two or more modules (lighting, cooling, canopy lift mechanism), as required by patent
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`Claims 10-14. Thus a device according to new Claim 47 does not infringe patent Claims 10-
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`14.
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`CONCLUSION: Because a hypothetical device consisting of the limitations of new
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`Claim 47 would not infringe any of the claims of the original patent, Claim 47 impermissibly
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`broadens the scope of the patent and is not allowable.
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`New Claim 48
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`Patent Claim l—-A device according to new Claim 48 lacks an electrical charging
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`system being adapted to receive power from an AC power outlet, as required by patent Claim
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`1. Thus a device according to new Claim 48 does not infringe patent Claim 1.
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`Patent Claims 2—5—A device according to new Claim 48 lacks a lighting system
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`“being conductively coupled to and powered by the rechargeable electrical power system,”
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`as required by patent Claims 2-5. Thus a device according to new Claim 48 does not infringe
`patent Claims 2-5.
`I
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`Patent Claims 6-8—A device according to new Claim 48 lacks an electromechanical
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`opening and closing system for opening and closing the canopy portion, as required by patent
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`Claims 6-8. Thus a device according to new Claim 48 does not infringe patent Claims 6-8.
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`Patent Claim 9—A device according to new Claim 48 lacks a cooling system as
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`required by patent Claim 9. Thus a device according to new Claim 48 does not infringe
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`patent Claim 9.
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`Patent Claims 10-14—A device according to new Claim 48 lacks a combination of
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`two or more modules (lighting, cooling, canopy lift mechanism), as required by patent
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`Claims 10-14. Thus a device according to new Claim 48 does not infringe patent Claims 10-
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`14.
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`US2000 1 l503020.l
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`YOT-1003-1686
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`Yotrio Ex. YOT-1003, Page 1686
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`YOT-1003-1686
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`Yotrio Ex. YOT-1003, Page 1686
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`

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`Comments by Third Party Requester
`Control No. 95/000,104
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