`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 12/755,766.
`Decided: August 14, 2019
`WILLIAM J. BARBER, Ware, Fressola, Maguire & Barber
`LLP, Monroe, CT, for appellants.
` SARAH E. CRAVEN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for appellee
`Andrei Iancu. Also represented by THOMAS W. KRAUSE,
` ______________________
`Before REYNA, WALLACH, and TARANTO, Circuit Judges.
`REYNA, Circuit Judge.
`Humberto Valenzuela Meza, Jeffrey Brian Schopperle,
`and Jesus Estrada appeal from a decision by the Patent


`Trial and Appeal Board affirming an examiner’s rejection
`of their patent application claims as obvious. Because sub-
`stantial evidence supports the Board’s determination of ob-
`viousness, we affirm.
`I. The ’766 Application
`Inventors Meza, Schopperle, and Estrada (together,
`“Meza”) filed U.S. Patent Application No. 12/755,766 (“the
`’766 application”) with the United States Patent and
`Trademark Office (“USPTO”). The ’766 application is di-
`rected to an improved method and pump apparatus for re-
`moving water from pool covers and sumps while avoiding
`ice formation in the impeller cavity of the pump.
`The ’766 application discloses that the ability for
`pumps to operate at temperatures near or below the freez-
`ing point of water is beneficial in the pool and sump pump
`industries. J.A. 22. To provide for such operation, the ’766
`application teaches cycling a pump impeller to avoid ice
`buildup in the impeller cavity during low ambient temper-
`atures. J.A. 23. The preferred embodiment of the inven-
`tion includes a pump motor, an impeller, a sensor
`controller, and two types of sensors: a temperature sensor
`and a set of high and low water level sensors. J.A. 26–27.
`The temperature sensor signals the controller to rotate the
`pump impeller to prevent water from freezing in the impel-
`ler cavity when the ambient temperature nears freezing.
`J.A. 26–27. The water level sensors signal the controller to
`turn on the pump when the water reaches a high limit and
`turn off the pump when the water reaches a low limit. J.A.
`27. Figure 1 of the ’766 application depicts the claimed
`pump apparatus:


`J.A. 61.
`The claims at issue require the temperature sensor to
`operate independently from the water level sensors. J.A.
`15–17. Independent claim 14 is representative and recites:
`14. A method for removing water from a pool cover
`or sump and avoiding ice formation in an impeller
`cavity of a pump, comprising:
`receiving in a signal processor of a control-
`ler in a pump arranged on a pool cover or
`in a sump first signaling from a tempera-
`ture sensing device containing information
`about the ambient temperature in relation
`to the pump during a temperature sensing,
`and second signaling from a field effect
`level sensing device during a level sensing
`containing information about a high water
`level sensed in order to turn the pump on
`when the water is at a higher level, and
`also about a low water level sensed in order
`to turn the pump off when the water is at a
`lower level; and


`providing from the signal processor of the
`controller to a motor in the pump corre-
`sponding signaling containing information
`for initiating cycling of an impeller of the
`pump at low operating temperatures to
`avoid ice formation in an impeller cavity,
`but not for level sensing, for turning the
`pump on when the water is at the higher
`level to rotate the impeller for removing
`water from the pool cover or in the sump,
`and for turning the pump off when the wa-
`ter is at the lower level;
`the temperature sensing being independent
`of the level sensing.
`J.A. 15 (emphasis added).
`II. Prior Art References
`A. Mayleben
`U.S. Patent Application Publication No. 2008/0229819
`(“Mayleben”) relates to a method and apparatus for control-
`ling a pump using a capacitive sensor that detects the level
`of a liquid. J.A. 467, 485. Mayleben discloses a preferred
`embodiment in which a sump pump system includes a
`pump, a sensor, and a liquid discharge pipe. J.A. 486. Ac-
`cording to Mayleben, the sensor “monitors the level of a liq-
`uid” and “serves as a switch for activating and deactivating
`the pump . . . based on that level.” Id. When the level
`reaches a predetermined high limit, the sensor activates
`the pump, which begins to remove the liquid via the dis-
`charge pipe. Id. According to Mayleben, its pump system
`may include additional features, including a temperature
`sensor that “monitor[s] the temperature of the [pump]” and
`signals the controller to turn off the pump when the device
`becomes too hot. J.A. 491.


`B. Leone
`U.S. Patent Application Publication No. 2005/0095150
`(“Leone”) relates
`to centrifugal multistage pumps.
`J.A. 462. Leone discloses a microcontroller that includes
`software to control the pump motor. J.A. 463. Leone
`teaches that the software can “include limitations of the
`pump’s functioning in relation to temperature.” J.A. 464.
`Leone also teaches that the microcontroller is combined
`with a water temperature sensor and can “start the pump
`when the temperature is about 0° C[,] causing an inten-
`tional increase in water temperature . . . [and] assuring
`therefore an efficient protection against the fluid in the
`pump freezing and damaging the pump.” J.A. 465.
`III. Proceedings Before the USPTO
`On October 23, 2014, an examiner issued a Final Office
`Action rejecting claims 14 and 16–21 of the ’766 applica-
`tion. J.A. 272–79. Relevant to this appeal, the examiner
`rejected independent claims 14 and 21 as obvious over
`Mayleben in view of Leone.1 J.A. 273. The examiner found
`that Mayleben discloses every limitation of claims 14 and
`21 except for “cycling the impeller at a low operating tem-
`perature to avoid ice formation in the impeller cavity.”
`J.A. 273–74. The examiner relied on Leone to fill this gap,
`finding that Leone “teaches a water pump having impel-
`lers . . . and a temperature sensor which monitors the
`1 Congress amended § 103 when it passed the Leahy-
`Smith America Invents Act (“AIA”) in 2011. Pub. L. No.
`112–29, § 3(c), 125 Stat. 284, 287 (2011). Because the ’766
`application does not contain a claim having an effective fil-
`ing date on or after March 16, 2013 (the effective date of
`the AIA amendments), or a reference under 35 U.S.C.
`§§ 120, 121, or 365(c) to any patent or application that ever
`contained such a claim, pre-AIA § 103 applies. Id. § 3(n)(1),
`125 Stat. at 293.


`ambient temperature and cycles the pump when the tem-
`perature reaches 0°C” to avoid ice formation in the impeller
`cavity Id. The examiner found that Mayleben teaches that
`“additional or supplemental features and processes are
`within the scope of [Mayleben’s] invention.” J.A. 274. On
`this basis, the examiner determined that it would have
`been obvious to a person of ordinary skill in the art to mod-
`ify Mayleben’s controller to include the additional feature
`of Leone’s temperature sensor. Id. The examiner deter-
`mined that this combination met the limitation of “[t]he
`temperature sensing being independent of the level sens-
`ing” because “separate devices would be used to measure
`the water level and ambient temperature.” Id.
`The examiner rejected Meza’s argument
`Mayleben’s fluid-level sensor is dependent on its tempera-
`ture sensor. Meza argued that this dependency is demon-
`strated by Mayleben’s teaching that the pump
`deactivated when the device gets too hot. J.A. 276. The
`examiner disagreed, explaining that “[f]or two features to
`be ‘independent,’ one feature would not require the pres-
`ence of the other feature to function” and finding that “[t]he
`fluid level based controller feature of Mayleben does not re-
`quire the presence of the temperature based controller fea-
`ture to function” and vice-versa. Id. The examiner also
`pointed to claim 19 of the ’766 application, which depends
`on claim 14 and requires turning off the pump when the
`ambient temperature drops below freezing. Id. The exam-
`iner explained that “[s]uch a feature is analogous to
`Mayleben, which provides the feature of turning off the
`pump . . . when the ambient temperature is above a high
`temperature.” J.A. 276–77.
`Meza appealed the examiner’s rejection to the Patent
`Trial and Appeal Board (“Board”), raising the same argu-
`ments made to the examiner. J.A. 325, 333–34. In addi-
`tion, Meza argued that Mayleben “teaches away from
`integrating any temperature-based controller functionality
`together with its fluid-level-based controller functionality


`and making the two pump controller functionalities inde-
`pendent of one another.” J.A. 335; see also J.A. 337.
`The Board sustained the examiner’s rejection of all
`claims. J.A. 2. The Board rejected Meza’s argument that
`Mayleben only teaches dependent level- and temperature-
`sensing functionalities. J.A. 4–6. The Board found that
`although Mayleben discloses deactivating the pump when
`the device becomes too hot, there is no disclosure in
`Mayleben that either the level sensor or temperature sen-
`sor is affected when the pump deactivates. J.A. 6. The
`Board further found that Mayleben only teaches deactivat-
`ing the pump when it overheats, and teaches nothing about
`deactivating the pump at low temperatures. J.A. 6–7. Ac-
`cording to the Board, Meza therefore failed to show why the
`addition of Leone’s temperature-based impeller rotation,
`which occurs only at low temperatures, would not work
`with Mayleben’s level-based pumping system. Id.
`The Board also rejected Meza’s “teaching away” argu-
`ment. The Board found that nothing in Mayleben criti-
`cizes, discredits, or otherwise discourages the addition of a
`temperature sensor that cycles the pump impeller to avoid
`ice formation and is independent of level sensing. J.A. 8.
`Further, the Board found there was no evidence in the rec-
`ord demonstrating why “cycling at low temperatures would
`depend on level sensing, because these functions are sepa-
`rate controller functions.” J.A. 8–9. The Board found that
`Leone’s controller functionality cycles at low temperatures,
`and thus would not depend on “Mayleben’s ‘hot’ tempera-
`ture sensor.” J.A. 9. Accordingly, the Board determined
`that the examiner did not err in rejecting the claims of the
`’766 application. Id.
`Meza timely appeals. We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(a) (2012).


`We review Board decisions in accordance with the Ad-
`ministrative Procedure Act (“APA”), 5 U.S.C. § 706(2)
`(2012). In re Durance, 891 F.3d 991, 1000 (Fed. Cir. 2018).
`Under the APA, we set aside the Board’s decisions if they
`are “arbitrary, capricious, an abuse of discretion, or other-
`wise not in accordance with law” or “unsupported by sub-
`stantial evidence.” 5 U.S.C. § 706(2); Vicor Corp. v.
`SynQor, Inc., 869 F.3d 1309, 1320 (Fed. Cir. 2017). We re-
`view the Board’s factual determinations for substantial ev-
`idence and its legal conclusions de novo. ACCO Brands
`Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir.
`2016). Substantial evidence is “such relevant evidence as
`a reasonable mind might accept as adequate to support a
`conclusion.” HTC Corp. v. Cellular Commc’ns Equip., LLC,
`877 F.3d 1361, 1367 (Fed. Cir. 2017) (quoting In re Gart-
`side, 203 F.3d 1305, 1312 (Fed. Cir. 2000)).
`Obviousness is a question of law with underlying fac-
`tual findings relating to the scope and content of the prior
`art, differences between the prior art and the claims at is-
`sue, the level of ordinary skill in the pertinent art, and any
`objective indicia of non-obviousness. Acorda Therapeutics,
`Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1328 (Fed. Cir.
`2018) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007)); Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359, 1364 (Fed. Cir. 2015).
`Meza raises three arguments on appeal. First, Meza
`argues that substantial evidence does not support the
`Board’s finding that the combination of Mayleben and Le-
`one teaches the independent operation of the water-level-
`and temperature-sensing functionalities claimed in the
`’766 application. Second, Meza argues that the Board
`erred in finding that Mayleben does not teach away from
`including level-sensing functionality that operates inde-
`pendently from temperature-sensing functionality. Third,
`Meza argues that the Board improperly shifted the burden


`of proof to establish non-obviousness by asking Meza to ex-
`plain why Mayleben’s pump would not work as claimed in
`the ’766 application with the addition of Leone’s tempera-
`ture-sensing and cycling functionality.
`I. Obviousness under 35 U.S.C. § 103(a)
`Meza argues that the Board erred by finding that the
`prior art rendered obvious the claimed limitation of the
`“[t]he temperature sensing being independent of the level
`sensing.” Appellant’s Br. 13–20. Meza contends that
`Mayleben discloses a system where the level-sensing func-
`tionality is dependent on the temperature-sensing func-
`tionality because if the temperature sensor indicates that
`the device is overheating, it signals the controller to deac-
`tivate the pump. Id. at 15–16 (citing J.A. 491 (Mayleben,
`¶ 70)). According to Meza, deactivating the pump results
`in “completely stop[ping] all of Mayleben’s level-sensing-
`based controller functionality” because the pump cannot be
`turned on even if the water reaches a predetermined high
`level. Id. at 18–19. Meza further contends that Leone does
`not fill the gap in Mayleben because Leone does not disclose
`operating the pump in response to sensed fluid level,
`thereby failing to teach independent operation of the level-
`sensing and temperature-sensing functionalities. Id. at
`14–16. We disagree.
`Meza conflates Mayleben’s pumping functionality with
`its level-sensing functionality. See Appellant’s Br. 18–19
`(arguing that if Mayleben’s pump is deactivated, all level-
`sensing functionality “completely stops”); Reply Br. 4–5
`(arguing that Mayleben’s level-sensing functionality is de-
`pendent on its temperature-sensing functionality because
`“Mayleben discloses that the pumping functionality does
`not work when its temperature sensing deactivates its
`pump” (emphasis added)).
`The claims of the ’766 application, however, do not re-
`quire that the temperature-sensing functionality be inde-
`pendent from the pumping functionality. Rather, the


`claims require “[t]he temperature sensing [to be] independ-
`ent of the level sensing.” J.A. 15 (emphasis added). As both
`the Board and the examiner correctly explained, nothing in
`Mayleben suggests that deactivating the pump would af-
`fect the sensing functionality of either the level or temper-
`ature sensors. J.A. 5–6 (citing J.A. 380 (Examiner’s
`Answer)). To the contrary, Mayleben teaches that once the
`water level drops below a predetermined low point, “the
`sensor unit 14 deactivates the pump 12.” J.A. 486
`(Mayleben, ¶ 37). If deactivating the pump also deac-
`tivated the level-sensing functionality, as Meza asserts,
`then Mayleben’s level sensor could not detect when the wa-
`ter level again reached a predetermined high point, and
`could not reactivate the pump.
`Dependent claim 19 of the ’766 application, which de-
`pends on claim 14, similarly contradicts Meza’s depend-
`ency argument. Claim 19 requires turning off the pump
`when the ambient temperature drops below freezing.
`J.A. 16. As the examiner explained, this limitation is anal-
`ogous to Mayleben’s feature of turning off the pump when
`the temperature becomes too hot. J.A. 276, 381. Thus, if
`Mayleben’s level-sensing functionality is dependent on its
`temperature-sensing functionality, then so is the level-
`sensing functionality of the present invention dependent
`on its temperature-sensing functionality—an outcome that
`would effectively read out the “being independent of” limi-
`tation from the claims at issue. See Callicrate v.
`Wadsworth Mfg., Inc., 427 F.3d 1361, 1369 (Fed. Cir. 2005)
`(holding that it is improper to read out a limitation clearly
`required by the claim language and specification); Unique
`Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir.
`1991) (“All the limitations of a claim must be considered
`Meza argues the deficiencies of Mayleben and Leone
`individually, but fails to address what is taught by the com-
`bination of the references. We have held that a finding of
`obviousness cannot be overcome “by attacking references


`individually where the rejection is based upon the teach-
`ings of a combination of references.” Bradium Techs. LLC
`v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (quoting In
`re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)) (in-
`ternal quotation marks omitted). Here, the Board found
`that a person of ordinary skill in the art would modify
`Mayleben’s disclosed pump to add Leone’s impeller cycling
`functionality because Mayleben teaches using additional
`features with its pump, and explained that “[i]t is the ad-
`ditional feature of using a temperature sensor for cycling
`at low temperatures, as taught by Leone, that the Exam-
`iner uses as the basis for the rejection.” J.A. 7. Thus, the
`Board found that the combination of Mayleben and Leone
`discloses every limitation of the claims at issue. We con-
`clude that substantial evidence supports this finding.
`II. Teaching Away
`Meza argues that Mayleben teaches away from includ-
`ing both temperature-sensing and level-sensing function-
`alities in one pump device, while still making the two
`sensing functionalities operate independently. Appellant’s
`Br. 15–16, 23–29. In support, Meza relies on the same gen-
`eral argument that Mayleben’s level-sensing functionality
`depends on its temperature-sensing functionality.
`The Board correctly rejected Meza’s argument that
`Mayleben teaches away from independent sensing func-
`tionalities. A prior art reference teaches away if it criti-
`cizes, discredits, or otherwise discourages the solution
`claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`As the Board correctly found, nothing in Mayleben criti-
`cizes, discredits, or discourages from adding separate tem-
`perature-sensing functionality that cycles an impeller at
`low temperatures to avoid ice formation. J.A. 8. To the
`contrary, Mayleben discloses that additional features may
`be added to its pump. J.A. 491 (Mayleben, ¶ 70).
`Meza argues that the presence in Mayleben’s pump of
`an internal temperature sensor teaches away from


`independent operation of the two sensing functionalities.
`Mayleben, however, teaches that its internal temperature
`sensor is optional. J.A. 491 (Mayleben, ¶ 70). Although a
`person of ordinary skill in the art may prefer an embodi-
`ment of Mayleben’s pump that includes an internal tem-
`perature sensor, it is well-established that “the teaching
`away inquiry does not focus on whether a person of ordi-
`nary skill in the art would have merely favored one dis-
`closed option over another disclosed option.” Bayer
`Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1327
`(Fed. Cir. 2017).
`In light of the foregoing, we hold that substantial evi-
`dence supports the Board’s determination that the asserted
`claims of the ’766 application are obvious over Mayleben in
`view of Leone.
`III. Burden of Proof During Prosecution
`Unlike with issued patents, during patent prosecution
`proceedings “the concept of prima facie obviousness estab-
`lishes the framework for the obviousness determination
`and the burdens the parties face.” ACCO Brands, 813 F.3d
`at 1365 (citing Kennametal, Inc. v. Ingersoll Cutting Tool
`Co., 780 F.3d 1376, 1384 (Fed. Cir. 2015)). When examin-
`ing patent claims, the initial burden rests with the patent
`examiner to set out a prima facie case that the claims at
`issue are obvious over the prior art. Id. The burden then
`shifts to the applicant to produce evidence or argument
`supporting patentability. In re Cyclobenzaprine Hydro-
`chloride Extended-Release Capsule Patent Litig., 676 F.3d
`1063, 1080 n.7 (Fed. Cir. 2012); In re Sullivan, 498 F.3d
`1345, 1351 (Fed. Cir. 2007); In re Piasecki, 745 F.2d 1468,
`1472 (Fed. Cir. 1984). The examiner weighs the prima fa-
`cie evidence against the rebuttal evidence to determine
`whether the entirety of the evidentiary record supports a
`finding of obviousness by a preponderance of the evidence.
`ACCO Brands, 813 F.3d at 1366 (citing Rambus Inc. v. Rea,


`731 F.3d 1248, 1255 (Fed. Cir. 2013)); In re Glaug, 283 F.3d
`1335, 1338 (Fed. Cir. 2002).
`Meza faults the Board for requiring him to explain why
`the prior art does not teach level-sensing functionality in-
`dependent from temperature-sensing functionality, and
`why Leone’s feature of impeller cycling would not work in
`Mayleben. Appellant’s Br. 18, 21, 25 (citing J.A. 5–8).
`Meza argues that by doing so, the Board improperly shifted
`the burden to him to establish non-obviousness. Id. We
`The Board determined that the examiner established a
`prima facie case of obviousness by determining that the
`combination of Mayleben and Leone disclosed all of the lim-
`itations of the claims of the ’766 application. J.A. 4; see also
`J.A. 273–76. Meza was then required to “produce evidence
`or argument supporting patentability.” Sullivan, 498 F.3d
`at 1351; see also Cyclobenzaprine, 676 F.3d at 1080 n.7.
`The Board concluded that Meza failed to do so because
`Meza did not address the basis for the examiner’s rejection.
`For example, the Board explained that the examiner’s
`rejection was based on Mayleben’s express disclosure that
`its pump may include additional features, such as the ad-
`ditional feature of sensing a low temperature and cycling
`its impeller to avoid ice formation, as disclosed in Leone.
`J.A. 4–6. The Board also explained that the examiner
`found that this additional temperature-sensing feature
`would work independently from Mayleben’s level-sensing
`feature because “two separate independently functioning
`devices . . . perform [these] separate and independent
`tasks.” J.A. 5. The Board then stated that Meza did not
`explain or provide evidence demonstrating why Mayleben’s
`pump could not be modified to include such an additional
`feature or why “cycling at low temperatures would depend
`on level sensing, because these functions are separate con-
`troller functions.” J.A. 6–9. The Board pointed out that
`Meza’s rebuttal arguments
`focused on an alleged


`dependency between Mayleben’s level-sensing functional-
`ity and its internal temperature-sensing functionality. See
`J.A. 6–7, 9. For his part, Meza never explained why Le-
`one’s separate external temperature sensing and cycling
`functionality would not work with Mayleben’s pump. On
`this basis, the Board concluded that Meza failed to rebut
`the examiner’s prima facie obviousness case. We find no
`reversible error in the Board’s conclusion.
`We have considered Meza’s remaining arguments and
`find them unpersuasive. We agree with the Board that
`claims 14 and 16–21 of the ’766 application are obvious
`over Mayleben in view of Leone. We therefore affirm.
`No costs.

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