Ex Parte Acker

Board of Patent Appeals and Interferences

Jun 22, 2004

10010691 (B.P.A.I. Jun. 22, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LARRY K. ACKER
____________
Appeal No. 2004-1332
Application No. 10/010,691
____________
ON BRIEF
____________
Before GARRIS, WARREN, and KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-13 which are all of the claims in the application.
The subject matter on appeal relates to a demand hot water
recirculation system. With reference to the Appellant’s drawing,
the system comprises a hot water source 12, at least one plumbing
fixture 18 having a hot water inlet, a conduit 26, 24 for enabling
circulation of hot water from the source to the plumbing fixture
and return to the hot water source, a pump 30 for circulating hot
water through the conduit, a switch 36 for generating control
Appeal No. 2004-1332
Application No. 10/010,691
2
signals and a controller 40, responsive to a plurality of control
signals, for activating the pump based on a statistical analysis of
control signal timing. This appealed subject matter is adequately
represented by independent claim 1 which reads as follows:
1. A demand hot water recirculation system comprising:
a hot water source;
at least one plumbing fixture having a hot water inlet;
a conduit, in fluid communication with said hot water source
and the plumbing fixture hot water inlet, for enabling circulation
of hot water from said hot water source to the plumbing future
[sic, fixture] and return to said hot water source;
a pump for circulating hot water through the conduit;
a switch for generating control signals; and
a controller, responsive to a pluralilty of control signals,
for activating said pump based on a statistical analysis of control
signal timing.
The references set forth below are relied upon by the Examiner
as evidence of obviousness:
Barrett et al. (Barrett) 4,870,986 Oct. 3, 1989
Houlihan 5,775,372 July 7, 1998
Appeal No. 2004-1332
Application No. 10/010,691
1 As indicated on page 3 of the brief, the appealed claims
will stand or fall together. Accordingly, in assessing the
merits of the above noted rejection, we will focus on
representative independent claim 1 since this is the broadest
claim on appeal. See 37 CFR § 1.192(c)(7)(2003).
3
All of the appealed claims stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Houlihan in view of Barrett1.
We refer to the brief and to the answer for a complete
discussion of the opposing viewpoints expressed by the Appellant
and by the Examiner concerning this rejection.
OPINION
We will sustain this rejection for the reasons set forth in
the answer and below.
Houlihan discloses all aspects of the here claimed invention
including the use of a preprogrammed controller for activating a
hot water circulating pump except that patentee’s preprogrammed
controller is not disclosed as being based on a statistical
analysis of control signal timing as required by appealed
independent claim 1. Nevertheless, we agree with the Examiner’s
conclusion that it would have been obvious for an artisan with
ordinary skill to effectuate Houlihan’s controller based on a
statistical analysis of control signal timing in view of Barrett’s
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teaching of programing a controller or central processing unit for
a priority of operation based on a statistical analysis (see lines
49-57 in column 16). In this way, the controller programming
desired by Houlihan would have been effected via a parameter,
namely, statistical analysis which Barrett evinces was known in the
prior art as suitable for this purpose.
In support of his position that the Examiner’s rejection is
improper, the Appellant argues that “Barrett ... is a non enabling
disclosure” (brief, page 4). More specifically, it is the
Appellant’s position that “[t]he single line statement in Barrett
that ‘[t]he specific priority may be established by the user or
based on a statistical analysis’ is a mere ‘germ’ of an idea”
(brief, page 4) which would not enable an artisan to practice
Barrett’s aforequoted objective.
We are unpersuaded by the Appellant’s argument for a number of
reasons.
First, because the Barrett reference is a US patent, it is
presumptively valid and thus enabled. 35 U.S.C. § 282. Further,
it is well settled that the burden of proving the inoperability
(i.e., nonenablement) of a U.S. patent is not insubstantial. In re
Weber, 450 F.2d 1403, 1407, 160 USPQ 549, 553 (CCPA 1969); In re
Michalek, 162 F.2d 229, 231-32, 74 USPQ 107, 109 (CCPA 1947). On
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the record before us, the Appellant has proffered no evidence
whatsoever in support of his assertion that the Barrett disclosure
is not enabling. For this reason alone, the Appellant has failed
to carry his burden of proving that Barrett’s presumptively valid
patent is in fact nonenabling.
In addition, the Appellant has erroneously categorized
Barrett’s column 16 disclosure as “a mere ‘germ’ of an idea”
(brief, page 4). In fact, the Barrett patent contains disclosure
beyond column 16 concerning the programming of his controller or
central processing unit for a priority of operation. For example,
lines 35-53 in column 30 and particularly the paragraph bridging
columns 30 and 31 include specific disclosure regarding the use of
software for programming patentee’s central processing unit so that
the functions performed thereby are based on priorities, conditions
and limitations imposed by the software.
Finally, the Appellant’s nonenablement position is undermined
by the fact that his own specification disclosure provides even
less teaching than Barrett vis-à-vis effectuating a controller
based on statistical analysis. In particular, the most detailed
teaching in the subject specification regarding this statistical
analysis feature appears on page 7, and this teaching merely states
that statistical analysis is performed without specifying any
Appeal No. 2004-1332
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mechanism by which such performance is achieved. Apparently, at
the time this application was filed, the Appellant believed those
skilled in the art would be able to practice his invention not
withstanding the aforementioned lack of specificity. From our
perspective, if those skilled in the art would be able to
effectuate the Appellant’s statistical analysis feature based on
his specification disclosure, certainly these artisans likewise
would be able to practice the statistical analysis feature of
Barrett based on patentee’s more complete disclosure.
In addition to the above, we observe that the Appellant
presents the unembellished statement that “the Barrett...reference
does not disclose a controller for activating a pump based on a
statistical analysis of control signal timing (see claim 1)”
(brief, page 5). Presumably, the Appellant advanced this statement
in an attempt to show nonobviousness. However, one cannot show
nonobviousness by attacking references individually where the
rejection, as here, is based on a combination of references. This
is because the test for obviousness is what the combined teachings
of the applied references would have suggested to those of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881-82 (CCPA 1981).
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For the reasons set forth above and in the answer, it is our
determination that the Examiner has established a prima facie case
of obviousness which the Appellant has failed to successfully rebut
with argument and/or evidence of nonobviousness. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). We shall sustain, therefore, the Examiner’s § 103 rejection
of claims 1-13 as being unpatentable over Houlihan in view of
Barrett.
The decision of the Examiner is affirmed.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
BRG/jrg
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WALTER A. HACKLER
2372 S.E. BRISTOL, SUITE B
NEWPORT BEACH, CA 92660-0755