PTO/SB/58 (04-05)
`Approved for use through 04/30/2007. OMB 0651-0033
`U.S. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`Address to:
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.o. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No. 45639-316477
`
`Date: August 12, 2005
`
`1. E This is a request for inter pa/tes reexamination pursuant to 37 CFR 1.913 of patent number 6 612 713
`issued September 2 2003. The request is made by a third party requester, identified herein below.
`64660 U.S. PTO
`O4
`
`. E a. The name and address of the person requesting reexamination is:
`
` ,illllliililiilllii
`
`Atlanta, Georgia 30336
`
`E b. The real party in interest (37 CFR 1.915(b)(8)) is: Southern Sales & Marketing Group, Inc.
`. E] a. A check in the amount of $_ is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(2);
`[I b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(2)
`to Deposit Account No. __ (submit duplicate of this form for fee processing); or
`E c. Payment by credit card. Form PTO-2033 is attached.
`
`. E Any refund should be made by III check or IZI credit to Deposit Account No. 11-0855.
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`. E A copy of the patent to be reexamined having a double column format on one side of a separate
`paper is enclosed. 37 CFR 1.915(b)(5)
`
`. CI CD-ROM or CD-Ft in duplicate, Computer Program (Appendix) or large table
`I:l Landscape Table on CD
`
`. El Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. — c. are required.
`a. C] Computer Readable Form (CRF)
`b. Specification Sequence Listing on:
`i [I CD-FtOM (2 copies) or CD-Ft (2 copies); or
`ii [I paper
`c. Statements verifying identity of above copies
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is
`included.
`Reexamination of claim(s) g is requested.
`'
`irsclpfijpg géigggmtlpfigggp
`A copy of every patent or printed publication relied upon is submitt
`ebdampmg "
`Form PTO/SB/OB, PTO—1449 or equivalent.
`"
`“'
`An English language translation of all necessary and pertinent non-Ehglfihflahguage patents or printed»6@l3.3
`ublications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.915. The information is required to obtain or retain a benefit by the public which is to file (and by the
`USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 2 hours to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case.
`Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information
`Officer, US. Patent and Trademark Office, U.S. Department of Commerce, PO. Box 1450. Alexandria, VA 22313-1450. DO NOT SEND FEES OFl
`COMPLETED FORMS To THIS ADDRESS. SEND TO: Mall Stop Inter Panes Reexam, commissioner for Patents. P.O. Box 1450,
`Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, ca/I 1-300-PTO9199 and select option 2.
`
`YOT-1003-0001
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`Yotrio Ex. YOT-1003, Page 1
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`YOT-1003-0001
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`Yotrio Ex. YOT-1003, Page 1
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`

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`PTO/SB/58 (ems)
`Approved lor use through 04/30/2007. OMB 0651 -0033
`U.S. Patent and Trademark Otfioe; US. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection ol information unless it displays a valid OMB control number.
`
`b.
`
`12. E The attached detailed request includes at least the following items:
`a.
`A statement identifying each substantial new question of patentability based on prior patents
`and printed publication. 37 CFR 1.915(b)(3)
`An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited prior art to every claim for
`which reexamination is requested. 37 CFR 1.915(b)(1) and (3)
`it is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination.
`37 CFR 1.915(b)(7)
`
`13. IX]
`
`14. E a.
`
`It is certified that a copy of this request has been served in its entirety on the patent owner as
`provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`James E. Walton, Esq.
`1169 N. Burleson Boulevard
`
`Burleson, Texas 76028
`
`Date of Service: August 11, 2005; or
`E] b. A duplicate copy is enclosed since service on patent owner was not possible.
`
`15. E Correspondence Address: Direct all communication about the reexamination to:
`
`IE The address associated with Customer Number:
`OR
`I Finn or
`Individual Name
`
`23370
`
`Address
`
`% zip
`
`on
`Country
`Telephone
`16. E The patent is currently the subject of the following concurrent proceeding(s):
`E] a. Copending reissue Application No.
`C] b. Copending reexamination Control No.
`[I c. Copending lnterferen e No.
`IE d. Copending litiation -"yled:
`4% L.-.
`
`’
`-
`ed Signature For Third Party Requester
`Robert E. Richards
`
`Au ust 12 2005
`Date
`
`29,105
`
`Typed/Printed Name
`
`Registration Number. if applicable
`
`[Page 2 of 2]
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`YOT-1003-0002
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`Yotrio Ex. YOT-1003, Page 2
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`YOT-1003-0002
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`Yotrio Ex. YOT-1003, Page 2
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENTS
`
`In the Reexamination of:
`
`Gregory G. Kuelbs
`
`Patent No.2 6,612,713
`
`Issued: September 2, 2003
`
`Assignee:
`
`WORLD FACTORY, INC.
`
`\/g/guxyx/xgxyxae
`
`Examiner: To be assigned
`
`REQUEST FOR INTER PARTES REEXAMINATION
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`I.
`
`Introduction
`
`Third party requester, Southern Sales & Marketing Group, Inc. (“Southern
`
`Sales”), hereby submits a Request for Inter Partes Reexamination, under the provisions of 37
`
`C.F.R. §l.902 et seq., of Claims 1-5 of the above-referenced U.S. Patent No. 6,612,713
`
`(hereinafter the “’713 patent”) entitled “Umbrella Apparatus” issued to Gregory G. Kuelbs
`
`(“Kuelbs”) and assigned to World Factory, Inc. (“World Factory”) which has a place of
`
`business at 280 Commerce Street, Southlake, Texas 76092.
`
`The ’7l3 patent is presently involved in litigation. On June 13, 2005, World
`
`Factory filed suit against Southern Sales for alleged infringement of the ’713 patent. The
`
`litigation is styled World Factory, Inc. v. Southern Sales & Marketing Group, Inc., Civil
`
`Action No. 4:05-cv-00373, United States District Court for the Northern District of Texas,
`
`Fort Worth Division. World Factory has not yet served Southern Sales with a copy of the
`
`summons or complaint.
`
`Express Mail mailing label number EV334686467US
`Date of Deposit August 12, 2005
`
`Y0T'1°°3‘°°°3
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`Yotrio Ex. YOT-1003, Page 3
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`YOT-1003-0003
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`Yotrio Ex. YOT-1003, Page 3
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`

`
`Inter Parzes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 2
`
`Since the ’7l3 patent is involved in litigation, Southern Sales respectfully
`
`requests that the requested inter partes reexamination proceeding be conducted with “special
`
`dispatch” as having priority over all other cases pursuant to 35 U.S.C. §305 and MPEP
`
`§2261.
`
`It
`
`is believed that at least one “substantial new question of patentability”
`
`exists, as required by 35 U.S.C. 303 for a reexamination, for the reasons provided below. As
`
`further demonstrated below, Southern Sales has complied with all of the requirements for an
`
`inter partes reexamination. Accordingly, it is respectfully requested that an inter partes
`
`reexamination of the ’713 patent, as requested herein, be granted.
`
`II.
`
`Requirements for an Inter Partes Reexamination
`
`The requirements for an inter partes reexamination are set forth in 37 C.F.R. §
`
`1.915 as follow:
`
`37 C.F.R. § 1.915§a[: The first requirement for an inter partes reexamination is
`
`the payment of the fee as set forth in 37 C.F.R. § l.20(c)(2).
`
`In compliance with this
`
`requirement, Form PTO-2038 is enclosed herewith, authorizing a charge in the amount of
`
`$8,800.00. Please charge any deficiency in the fee or credit any overpayment to Deposit
`
`Account Number 11-0855.
`
`37 C.F.R.
`
`§1.915gbgg1g:
`
`The
`
`second requirement
`
`for
`
`an
`
`inter partes
`
`reexamination is an identification of the patent by patent number and every claim for which
`
`reexamination is requested. By this Request, Southern is requesting inter parzes reexamination
`
`of Claims 1-5 of U.S. Patent No. 6,612,713.
`
`ATLLIBOZ 188384.]
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`YOT-1003-0004
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`Yotrio Ex. YOT-1003, Page 4
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`YOT-1003-0004
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`Yotrio Ex. YOT-1003, Page 4
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`

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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 3
`
`37 C.F.R. §1.915gbgg2g and (4): The next requirement for an inter partes
`
`reexamination is a citation of the patents and printed publications which are presented to provide
`
`a substantial new question of patentability. Copies of the references relied upon and referenced
`
`in Sections 1.915(b)(1) through (3), including translations of non-English language documents,
`
`are also required. The patents and printed publications upon which Southern relies for this inter
`
`partes reexamination are as follows:
`
`(1) U.S. Patent No. 5,584,564 (hereinafter “Phyle”) entitled “Battery
`
`Operated Lighting Apparatus,” issued December 17, 1996 to Charles E. Phyle, copy attached
`
`hereto as Exhibit 1. Phyle is not of record in the prosecution history of the ’713 patent.
`
`(2) U.S. Patent No. 5,349,975 (hereinafter “Valdner”) entitled “Air
`
`Cooled Umbrella,” issued September 27, 1994 to Vimagda Valdner, copy attached hereto as
`
`Exhibit 2;
`
`(3) PCT published patent application No. W0 93/00840 entitled
`
`“Multifunction Solar Parasol,” published January 21, 1993, copy attached hereto as Exhibit
`
`3. An English translation of WO 93/00840 is attached hereto as Exhibit 4. WO 93/00840 is
`
`not of record in the prosecution history of the ’713 patent.
`
`(4) U.S. Patent No. 5,172,711 (hereinafter “Mueller et al”) entitled
`
`“Combination Canopy and Fan,” issued December 22, 1992 to Erna Mueller and James
`
`Moores, copy attached hereto as Exhibit 5.
`
`(5) U.S. Patent No. 6,017,188 (hereinafter “Benton") entitled “Patio
`
`Table and Pole Fan Combination,” issued January 25, 2000 to Carolyn Benton, copy attached
`
`hereto as Exhibit 6.
`
`ATLLIB02 lE838-1.1
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`YOT-1003-0005
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`Yotrio Ex. YOT-1003, Page 5
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`YOT-1003-0005
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`

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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 4
`
`37 C.F.R. §1.915gbgg3g: The next requirement for an inter panes reexamination
`
`is a statement pointing out each substantial new question of patentability based on the cited
`
`patents and printed publications, and a detailed explanation of the pertinence and manner of
`
`applying the patents and printed publication to each claim for which reexamination is requested.
`
`Southern hereby provide its statement in compliance with this section below in Section III of this
`
`Request.
`
`37 C.F.R. §1.915gbgg5g: The next requirement for an inter partes reexamination
`
`is a copy of the entire patent including the front face, drawings, and specification/claims (in
`
`double column format) for which reexamination is requested. Southern is attaching such a copy
`
`of the ’713 patent hereto as Exhibit 7.
`
`37 C.F.R. §1.915gbgg6g: The next requirement for an inter partes reexamination
`
`is a certification by the third party requester that a copy of the request has been served in its
`
`entirety on the patent owner at the address provided for in §l.33(c). The name and address of the
`
`party served must also be indicated. The undersigned hereby certifies compliance with the
`
`requirements of 37 C.F.R. §1.915(b)(6), as shown by the Certificate of Service attached to this
`
`Request.
`
`37 C.F.R. §1.915gbgg7z: The next requirement for an inter partes reexamination
`
`is a certification by the third party requester that the estoppel provisions of §1.907 do not
`
`prohibit
`
`this inter partes reexamination. The undersigned, on behalf of Southern, hereby
`
`certifies that the inter partes reexamination requested herein is not prohibited by the estoppel
`
`provisions of 37 C.F.R. §1.907.
`
`37 C.F.R. §1.9l5§b)§8[: The next requirement for an inter partes reexamination
`
`is a statement identifying the real party in interest to the extent necessary for a subsequent person
`
`ATLLIB02 l8S334r|
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`YOT-1003-0006
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`Yotrio Ex. YOT-1003, Page 6
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`YOT-1003-0006
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`Yotrio Ex. YOT-1003, Page 6
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`

`
`Inter Panes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 5
`
`filing an inter partes reexamination request
`
`to determine whether that person is a privy.
`
`Southern is the third party requester herein and the real party in interest under 37 C.F.R. §
`
`1.9l5(b)(8). Southem has its principal place of business at 4400 Commerce Circle, Atlanta,
`
`Georgia 30336.
`
`37 C.F.R. §1.915§cQ: The last requirement for an inter partes reexamination is a
`
`Power of Attorney from the party on whose behalf the request is being filed. Southern Sales has
`
`granted power of attorney to the undersigned, as well as other members of the law firm identified
`
`below.
`
`Address for Correspondence: Please address all correspondence as follows:
`
`Robert E. Richards, Esq.
`Kilpatrick Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309
`404 815-6500 (phone)
`404 815-6555 (facsimile)
`nichards@l<i1patrickstockton.com
`
`III.
`
`Statement Pointing Out Substantial New Questions of Patentability
`
`Pursuant
`
`to 37 C.F.R. § l.9l5(b)(3), Southern hereby provides its statement
`
`pointing out the substantial new questions of patentability of the ’713 patent based on the patents
`
`and printed publication referenced above, as well as Southem’s detailed explanation of the
`
`pertinency and manner of applying those patents and printed publication to each of Claims 1-5 of
`
`the 713 patent.
`
`A.
`
`Prosecution of the ’713 Patent
`
`U.S. patent application Serial No. 10/068,424 was filed on February 7, 2002
`
`(“the ’424 application”) and claimed the benefit of provisional application Serial No.
`
`ATLLIBDZ l88384.l
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`YOT-1003-0007
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`Yotrio Ex. YOT-1003, Page 7
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`YOT-1003-0007
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`Yotrio Ex. YOT-1003, Page 7
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`

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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 6
`
`60/335,933 filed November 2, 2001 and provisional application Serial No. 60/267,018 filed
`
`February 7, 2001. A copy of the prosecution file history is attached hereto as Exhibit 8. The
`
`’424 application was filed with twenty original claims. Original Claim 1 provided as
`
`follows:
`
`1.
`
`An umbrella apparatus comprising:
`a base support portion;
`a pole portion coupled to the base support
`
`portion;
`
`portion;
`
`a canopy portion hingedly coupled to the pole
`
`system for
`electrical power
`rechargeable
`a
`providing electrical power to the umbrella apparatus; and
`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.
`
`On December 9, 2002 the Patent Office issued an Office Action (see Exhibit
`
`8) allowing Claims 16-20, rejecting Claims 1-4, 13 and 14 and objecting to Claims 5-12 and
`
`15. Claims 1, 4, 13 and 14 were rejected under 35 U.S.C. §l02(b) as being completely
`
`anticipated and unpatentable over the patent to Mueller et al. (U.S; Patent No. 5,172,711).
`
`2
`
`The Office Action stated that Mueller et al. disclosed an umbrella apparatus 80, a base
`
`portion 28', a pole portion 16' coupled to the base support portion 28', a canopy portion 12
`
`hingedly coupled to the pole portion 16', and a rechargeable electric power system 26'
`
`providing electrical power to the umbrella apparatus 80. The Office Action also stated that
`
`Mueller et al. disclosed a solar system 82 carried by the pole portion 16 and positioned above
`
`ATLUBU2 |s3334.1
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`YOT-1003-0008
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`YOT-1003-0008
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`

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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 7
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`the canopy 12‘ for collecting solar energy and converting it into electrical energy, the solar
`
`energy system being conductively coupled to the rechargeable batteries 26'.
`
`Claims 2 and 3 were rejected under 35 U.S.C. §l03(a) as being obvious and
`
`unpatentable over the patent to Mueller et al. in View of the patent to Benton (U.S. Patent No.
`
`6,017,188). The Office Action states that it would have been obvious to one of ordinary skill
`
`in the art at the time of the invention to modify the umbrella apparatus of Mueller et al. by
`
`providing positioning of a rechargeable electrical power system and a solar energy system as
`
`taught by Benton.
`
`While indicating the allowability of Claims 5-12 and 15, the Office Action
`
`stated the prior art of record, including Mueller et al. and Benton, did not show or suggest the
`
`invention as claimed. The Office Action specifically stated that the prior art of record did
`
`not show:
`
`a rechargeable electrical power system rechargeable
`from an AC power outlet as recited in Claim 5;
`a lighting system carried by the canopy portion as
`recited in Claim 6;
`
`an electromechanical opening and closing [system for]
`the canopy as recited in Claim 10; and
`a cooling system a fluid reservoir, a mist nozzle
`hydraulically coupled to a pump as recited in Claim 15.
`
`While indicating the allowance of Claims 16-20, the Office Action stated that
`
`the prior art of record, including Mueller et al. and Benton, did not show or suggest the
`
`applicant’s invention as claimed. The Office Action specifically stated that the prior art of
`
`record did not show:
`
`a cooling system as recited in Claim 16;
`a lighting system carried by the canopy portion as
`recited in Claim 16; and
`
`ATLLIBOZ 183386.]
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`YOT-1003-0009
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`Yotrio Ex. YOT-1003, Page 9
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`YOT-1003-0009
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`

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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 8
`
`an electromechanical opening and closing canopy as
`recited in Claim 16.
`
`The applicant responded to the Office Action on February 17, 2003 (see
`
`Exhibit 8).
`
`In response to the rejection of Claims 1, 4, 13 and 14 under 35 U.S.C. §102(b)
`
`and Claims 2 and 3 under 35 U.S.C. §103(a), the applicant cancelled those claims without
`
`disagreeing with the patent examiner’s basis of rejection. The patent applicant amended
`
`Claims 5, 6 and 10 to incorporate all of the limitations of Claim 1 and put them in
`
`independent form. Claim 15 was amended to incorporate the limitations of Claims 1 and 13
`
`and put it in independent form.
`
`Following the cancellation and amendment of claims, as discussed above, the
`
`Patent Office issued a Notice of Allowance (see Exhibit 8). The Notice of Allowance
`
`indicated that Claims 5-12 and 15-20 were allowed‘, and also contained the examiner’s
`
`reasons for allowance of those claims. The examiner stated that the prior art of record,
`
`including Mueller et al. and Benton, did not show or suggest the applicant’s invention as
`
`claimed and did not provide motivation to combine:
`
`a rechargeable electrical power system rechargeable
`from an AC power outlet as recited in Claim 5;
`a lighting system carried by the canopy portion as
`recited in Claim 6;
`
`an electromechanical opening and closing [system for]
`the canopy as recited in Claim 10; and
`a mist nozzle
`a cooling system a fluid reservoir,
`hydraulically coupled to a pump as recited in Claim 15.
`
`The Notice of Allowance also advised the patent applicant as follows:
`
`Any comments considered necessary by applicant must be
`submitted no later than the payment of the issue fee and,
`to
`
`1 Because claims in the ’424 application were cancelled, the claims in the ’7 13 patent were renumbered.
`
`ATLLIBOZ 123334.:
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`YOT-1003-0010
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`YOT-1003-0010
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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 9
`
`avoid delays, should preferably accompany the issue fee. Such
`submissions should be clearly labeled “Comments on Statement
`of Reasons for Allowance.”
`
`On June 3, 2003 the patent applicant paid the issue fee, submitted an amended
`
`drawing and made minor amendments to the specification (see Exhibit 8). The patent
`
`applicant did not submit any comments on the examiner’s reasons for allowance of the
`
`claims.
`
`On July 28, 2003,
`
`the Patent Office approved the amendment of the
`
`specification (see Exhibit 8). Shortly thereafter, the ’713 patent issued on September 2,
`
`2003.
`
`Regarding the independent claims that are the subject of this inter partes
`
`reexamination request;
`
`i.e., Claims 1 and 2 (which were Claims 5 and 6 of the ’424
`
`application, the reasons for allowance given by the examiner were the absence of a teaching
`
`in Mueller et al. and Benton of a rechargeable electrical power system rechargeable from an
`
`AC power outlet (for patent Claim 1), and a lighting system carried by the canopy portion
`
`(for patent Claim 2).
`
`B.
`
`Claim 1 is invalid under 35 U.S.C. §103 in view of WO 93/00840
`and Valdner
`
`Claim 1 of the ’713 patent is invalid under 35 U.S.C. §lO3(a) as being obvious
`
`and unpatentable over WO 93/00840 in view of Valdner.
`
`It would have been obvious to a
`
`person of ordinary skill in the art to which the ’713 patent pertains to provide the umbrella of
`
`WO 93/00840 with a rechargeable electrical power system rechargeable from an AC power
`
`outlet as taught by Valdner. Therefore, the combination of WO 93/00840 and Valdner raises a
`
`substantial new issue of patentability of Claim 1.
`
`ATLLIB02 188384.]
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`YOT-1003-0011
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`Yotrio Ex. YOT—1003, Page 11
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`YOT-1003-0011
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`Inter Partes Reexamination Request
`U.S. Patent No. 6,612,713
`Page 10
`
`Claim 1 of the ’7l3 patent provides as follows:
`
`1.
`
`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;
`system for
`electrical power
`rechargeable
`a
`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 electrical charging system for recharging the
`rechargeable electrical power
`system,
`the electrical
`charging system being adapted to receive power from an
`AC power outlet.
`
`W0 93/00840 discloses an umbrella apparatus 1 comprising a base support
`
`portion 4 and a pole portion (i.e., hollow mast 9) coupled to the base portion. A canopy
`
`portion 8 is hingedly coupled to the pole portion 9. These elements of Claim 1 of the ’713
`
`patent merely define the well known prior art construction of an umbrella, which is also
`
`clearly disclosed in WO 93/00840.
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`WO 93/00840 also discloses a solar energy system (i.e., solar collector 2)
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`carried by the pole portion 9 above the canopy portion 8. The rechargeable batteries 3
`
`provide electrical energy to various accessories, especially a light 12. The solar energy
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`system (i.e., solar collector 2) is adapted to collect solar energy and convert it to electrical
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`energy (i.e., supply power). The solar collector 2 is connected to the rechargeable batteries 3
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`ATLLIBOZ l88384.l
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`for the purpose of recharging them. The AC power cord 14 provides an alternate source of
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`power; i.e., alternate to the power provided by the rechargeable batteries 3.
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`WO 93/00840 describes the umbrella as follows:
`
`During daylight, the solar co11ector(s), positioned on the
`upper part of the canopy of the parasol, recharge(s) the battery
`or batteries concealed in the base, which makes it possible for
`the user to have an independent source of energy for supplying
`power to the different accessories with which said parasol can
`be equipped, so that it can be used by day as a parasol and by
`night as a self-powered standing lamp for places such as: camp
`sites, gardens or the deck of swimming pools where electric
`power is generally not supplied.
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`WO 03/00840 English Translation at page 1.
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`Valdner discloses an air cooled umbrella 10. The umbrella 10 comprises a
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`pole portion (i. e., a rod 12) and a canopy 24 portion hingedly coupled to the pole portion. A
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`rechargeable electrical power system (see Valdner Fig. 8), including a rechargeable handle
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`battery pack 44, provides electrical power to the umbrella apparatus, such as the electric fan
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`30. A solar energy system (i.e., solar cell panel 38) is carried by the pole portion 12 above
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`the canopy 24. The solar cell panel 38 is adapted to collect solar energy and convert it to
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`electrical energy. The solar cell panel 38 is conductively coupled to the rechargeable
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`batteries in the rechargeable handle battery pack 44 (see Valdner Fig. 8). Electrical energy
`
`from the solar cell panel 38 is used to recharge the rechargeable batteries in the rechargeable
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`handle battery pack 44 (see Valdner at col. 2, lines 37-43 and Fig. 8). Valdner also discloses
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`an electrical charging system (i.e., separate charger assembly 54)
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`for recharging the
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`rechargeable electrical power system (id.). The electrical charging system 54 is adapted to
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`receive power from an AC power outlet; i.e., “the separate charger assembly 54, which has
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`ATLLIBUZ 188384.]
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`plugs 56 and 58 for respectively plugging into the rechargeable handle battery pack 44 and
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`an electric house wall socket (not shown) as well known in the
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`(id.).
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`It would have been obvious to a person of ordinary skill in the art to which the
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`’713 patent pertain at the time of the invention of the ’7l3 patent to provide the multifunction
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`solar umbrella of WO 93/00840 with the wiring system as taught in Fig. 8 of Valdner so that
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`the rechargeable batteries of WO 93/00840 could be charged by either the solar collector 2 or
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`the separate charger assembly of Valdner which is adapted to receive power from an AC
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`power outlet. As noted in Valdner, this alternate AC charging system for the rechargeable
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`batteries in the rechargeable handle battery pack 44 is “well known in the
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`Thus, one
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`skilled in the art would be motivated to provide the umbrella of WO 93/00840 with this well
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`known alternate AC recharging system so that the rechargeable batteries 3 of WO 93/00840
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`could be recharged when there was insufficient electrical energy produced by the solar
`
`collector 2 to recharge the rechargeable batteries without having to remove them from the
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`base 4.
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`Thus, Claim 1 of the ’7l3 patent is invalid under 35 U.S.C. §103(a) as being
`
`obvious and unpatentable over WO 93/00840 in view of Valdner. Since WO 93/00840 is not
`
`of record in the ’7l3 patent,
`
`the combination of WO 93/00840 and Valdner raises a
`
`substantial new issue of patentability of Claim 1 of the ’713 patent.
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`C.
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`Claim 2 is invalid under 35 U.S.C. §103 in view of Mueller et aI.,
`Benton and Phyle
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`Claim 2 of the ’7l3 patent is invalid under 35 U.S.C. §lO3(a) as being obvious
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`and unpatentable over Mueller et al. in view of Benton, as applied by the examiner during
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`prosecution of the ’713 patent, and further in view of Phyle. As the patent examiner noted
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`during prosecution of the ’713 patent, the prior art of Mueller et al.
`
`in View of Benton
`
`disclosed all of the elements of Claim 2, except for a lighting system carried by the canopy
`
`portion of the umbrella. Phyle disclose a lighting system carried by the canopy portion of the
`umbrella. Therefore, the combination of Mueller et al., Benton and Phyle raises a substantial
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`new issue of the patentability of Claim 2 of the ’713 patent.
`
`Claim 2 of the ’713 patent provides as follows:
`
`2.
`
`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;
`system for
`electrical power
`rechargeable
`a
`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.
`
`As the examiner in his reasons for granting the ’7l3 patent noted,
`
`the
`
`combination of Mueller et al. and Benton provide all of the elements of Claim 2, except a
`
`lighting system carried by the canopy portion. Mr. Kuelbs, the inventor of the ’7l3 patent, did
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`not disagree with the examiner’s stated reasons for allowance of Claim 2. However, Phyle
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`discloses an umbrella with a battery powered lighting system carried by the canopy portion.
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`ATLLIBUZ 133334.:
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`Therefore, Phyle provides this missing teaching of which the examiner was unaware when he
`
`allowed Claim 2 of the ’7l3 patent.
`
`The disclosures of Mueller et al. and Benton are discussed above and are
`
`incorporated herein by reference.
`
`Phyle discloses an umbrella apparatus 1 including a base support portion (i.e., the
`
`patio table, which does not carry a reference number). The umbrella 1 also includes a pole
`
`portion (i.e., support pole 20) coupled to the base portion; i.e., the patio table, and a canopy 2
`
`portion which is hingedly coupled to the pole portion (see Phyle at col. 2, lines 58-67). The
`
`umbrella 1 also Comprises a lighting system (i.e., lighting device 12) carried by the canopy
`
`portion. As Phyle states at col. 3, lines 7-11:
`
`As shown in FIG. 4, at least one lighting device 12 is secured to a
`rib 22 for providing light thereunder. In the preferred embodiment,
`lighting devices 12 having a substantially elongated configuration
`are used although other lighting device configurations are equally
`appropriate.
`
`The lighting system (i.e.,
`
`lighting device 12) is conductively coupled to and
`
`powered by the electrical power system (z'.e., batteries 60 which provide power to the lighting
`
`device 12) (see Phyle at col. 3, lines 12-52). Phyle describes the lighting device 12 in more
`
`detail, at col. 4, lines 32-38, as follows:
`
`The lighting device 12 includes a light wand 104 having a
`transparent outer sheath 106 and at least one elongated fluorescent
`filament element 108 located therein. This elongated configuration
`is particularly well suited for use in conjunction with the umbrella
`ribs 22 since its elongated arrangement enable the lighting devices
`12 to remain secured to the ribs in any umbrella position.
`
`The motivation for using the lighting device 12 of Phyle in an umbrella, such as in Benton, is
`
`disclosed by Phyle, inter alia, at col. 5, lines 1-8, as follows:
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`It will be appreciated that the lighting apparatus according
`to the present invention enable nighttime use of outdoor structures.
`It is particularly well suited for use in combination with a patio
`table umbrella where battery powered illumination under the
`canopy is desired. Moreover, the lighting apparatus of the present
`invention will not interfere with the movement of the umbrella
`
`canopy between a raised or lowered position.
`
`Accordingly, a person skilled in the art would be motivated to use the lighting
`
`device 12 attached to the underside of the ribs 22 that support the canopy 2, as taught by
`
`Phyle, in the patio table umbrella of Benton so as to permit its nighttime use outdoor and to
`
`provide battery powered illumination under the canopy.
`
`Thus, Claim 2 of the ’713 pa