Ex Parte Ashworth

Board of Patent Appeals and Interferences

Oct 7, 2010

10974353 (B.P.A.I. Oct. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NICHOLAS ASHWORTH
____________________

Appeal 2009-009434
Application 10/974,353
Technology Center 3700
____________________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009434
Application 10/974,353

2
STATEMENT OF THE CASE
Nicholas Ashworth (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-29. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to changing the visual
appearance of a housing of a thermostatic controller by attaching a
decorative faceplate to cover a decorative surface of the housing (Spec. 1:
para. [0005]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A thermostatic controller apparatus,
comprising:
a housing having a front face thereof
defining a decorative surface of the housing and
adapted for optional attachment of a decorative
faceplate covering the decorative surface of the
housing, the front face including at least one
aperture therethrough;
a controller positioned within the housing,
the controller configured to control at least one
heating, ventilating or air conditioning (HVAC)
appliance to control a temperature of an
environment based on a predetermined
temperature setting; and
a user interface including at least a visual
display positioned in one of the apertures of the
housing.

Appeal 2009-009434
Application 10/974,353

3
THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 11-18 and 22-29 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 11-18 and 22-29 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.
3. Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Ray (US 2,273,375, issued Feb. 17, 1942).
4. Claims 11-15, 18 and 22-29 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Hollinger (US 5,675,125, issued Oct. 7, 1997).
5. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ray in view of Herbert (US 5,834,695, issued Nov. 10, 1998).
6. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hollinger in view of Reese (US 5,837,937, issued Nov. 17,
1998).
7. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hollinger in view of Prenderville (US 6,444,909 B1, issued Sep.
3, 2002).
8. Claims 8-10 and 19-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray in view of Hollinger.

Appeal 2009-009434
Application 10/974,353

4
ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that the disclosure of the application relied upon does not reasonably convey
to those skilled in the art that the inventor had possession of the subject
matter called for in claims 11-18 and 22-29 as of the filing date (App. Br. 6);
(2) whether the Examiner erred in concluding that claims 11-18 and 22-29
are indefinite for failing to particularly point out and distinctly claim
Appellant’s invention (App. Br. 8); (3) whether the Examiner erred in
finding that Ray describes “a user interface including at least a visual display
positioned in one of the apertures of the housing,” as called for in
independent claim 1 (App. Br. 10, 11); (4) whether the Examiner erred in
concluding that the term “thermostatic controller” is not positively recited in
claims 11 and 22, and thus finding that Hollinger anticipates the invention,
as called for in independent claims 11 and 22 (App. Br. 12): and (5) whether
the Examiner erred in concluding that the combined teachings of Ray and
Hollinger would have led a person having ordinary skill in the art to “a user
interface including at least a visual display positioned in one of the apertures
of the housing,” as called for in independent claim 19 (App. Br. 10, 11).

ANALYSIS
Issue 1: Claims 11-18 and 22-29
Appellant contends that the application, as filed, complies with the
written description requirement of 35 U.S.C. § 112 (App. Br. 6). Appellant
contends that the original disclosure includes the Specification with original
claims and drawings, as filed (App. Br. 6). Appellant contends that “a
thermostatic controller includes numerous vents through the sidewalls of the
Appeal 2009-009434
Application 10/974,353

5
housing to allow ambient air flow therethrough so that the thermostatic
controller can accurately sense the temperature of the space for which it is to
provide temperature control,” wherein such vents are clearly shown in the
sidewalls of the disclosed embodiments in the originally filed drawings, e.g.,
fig. 2-4 (App. Br. 6-7).
The Examiner found that independent claims 11 and 22 call for the
limitation “attachment of a decorative faceplate ‘without interfering with
ambient air flow through the thermostatic controller housing,’” which was
not described in the original disclosure (Ans. 4). The Examiner found that
“the vents cited by [A]ppellant are not identified in the drawings or
[S]pecification,” and that “[w]hile one of ordinary skill in the art would
know that the housing may have vents, one does not have to assume that
specific unlabeled structure in the drawings represents vents” (Ans. 12).
"[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
This test "requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art."
Id. "Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Id. This inquiry is a question of fact. Id.
(citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985)).
Appeal 2009-009434
Application 10/974,353

6
“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.” Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
Appellant’s Specification describes the invention as a thermostatic
controller apparatus 10 (Spec. 4: para. [0053]). We find that a thermostatic
controller must have vents, that is, some sort of holes to allow the
thermostatic controller to function, which includes accurately sensing the
temperature of the space for which it is providing temperature control. We
find that the invention recited in independent claims 11 and 22 calls for a
thermostatic controller, and as such, must have vents.
We agree with Appellant that, although unlabeled, vents are shown in
the sidewalls of the thermostatic controller’s housing in the originally filed
drawings (see figs. 2-4).
Further, we find that the vents must be unblocked or the thermostatic
controller would not operate properly.
Accordingly, we find that the Examiner’s rationale does not provide
sufficient basis to find that a person having ordinary skill in the art would
not understand that the inventor had possession of the claimed subject matter
as of the filing date, that is, had possession of the attachment of a decorative
faceplate “without interfering with ambient air flow through the thermostatic
controller housing,” as called for in independent claims 11 and 22.
We reverse the rejection under 35 U.S.C. § 112, first paragraph, of
independent claims 11 and 22, and claims 12-18 and 23-29, which,
respectively, depend therefrom.

Appeal 2009-009434
Application 10/974,353

7
Issue 2: Claims 11-18 and 22-29
Appellant contends that the limitation “without interfering with
ambient air flow through the thermostatic controller housing,” as called for
in independent claims 11 and 22 is clear and in compliance with 35 U.S.C.
§ 112, second paragraph (App. Br. 8). Appellant contends that “[t]he
Examiner did not provide any indication why this language is unclear, other
than that it was not described in the text of the application” (App. Br. 9).
The Examiner found that the aforementioned claimed subject matter
was “not described in the original disclosure and it is unclear what is
intended by this limitation” (Ans. 5).
As we found supra, (1) the originally filed Specification describes the
invention as a thermostatic controller apparatus, (2) the originally filed
drawings provide support for the vents, and (3) that the vents of the
thermostatic controller must be unblocked or the thermostatic controller
would not operate properly.
We find that a person having ordinary skill in the art would
understand that the invention called for in independent claims 11 and 22 sets
forth that when attaching the decorative faceplate to the housing, the
decorative faceplate would be attached so that the vents are unblocked to
allow proper operation of the thermostatic controller.
We reverse the rejection under 35 U.S.C. § 112, second paragraph, of
independent claims 11 and 22, and claims 12-18 and 23-29, which,
respectively, depend therefrom.

Appeal 2009-009434
Application 10/974,353

8
Issue 3: Claims 1-3 and 5-7
Appellant contends that Ray does not describe “a user interface
including at least a visual display positioned in one of the apertures of the
housing,” as called for in independent claim 1 (App. Br. 11).
The Examiner found that Ray describes all of the limitations called for
in independent claim 1. In particular, the Examiner found the following:
Ray provides a visual display comprising indices on the
faceplate (38) and a knob (36) mounted in one of the apertures
of the housing. The knob provides the user interface and the
knob and the indicator (37) on the knob are part of the visual
display for the controller, the knob assembly constitutes part of
the visual display and the knob assembly is positioned in the
aperture of the housing as seen in Figures 2 and 3.
(Emphasis added) (Ans. 14).
Claim 1 calls for, inter alia, “the front face including at least one
aperture therethrough, . . .a user interface including at least a visual display
positioned in one of the apertures of the housing.”
A person having ordinary skill in the art would understand the
limitation “a user interface including at least a visual display positioned in
one of the apertures of the housing” to mean that the “visual display” must
be positioned in one of the apertures, as “positioned in one of the apertures”
refers back to “visual display” and not “user interface.”
We agree with the Examiner that in Ray, the knob 36 provides the
user interface. However, we find that the visual display comprises the
pointer 37 on the knob 36 and the indicia 38 on the front face of plate 14.
While Ray’s knob assembly is positioned in an aperture of the
housing, Ray’s visual display, pointer 37 and indicia 38, is positioned on top
of the plate 14 and not in one of the apertures.
Appeal 2009-009434
Application 10/974,353

9
We reverse the rejection of independent claim 1, and claims 2, 3 and
5-7, which depend therefrom.

Issue 4: Claims 11-15, 18 and 22-29
Preamble as a limitation
Appellant contends that independent claims 11 and 22 positively
recite a thermostatic controller (App. Br. 12, 14).
The Examiner found that a preamble is generally not accorded any
patentable weight where it merely recites the purpose of a process or the
intended use (Ans. 15), and (2) the thermostatic controller is not positively
recited and everything but the faceplate is optional (Ans. 15).
We find that a thermostatic controller is called for in the preamble of
independent claims 11 and 22. We find that both claims 11 and 22 call for,
in the body of the claims, inter alia, particulars of the thermostatic
controller, that is, a housing of the thermostatic controller and an attached
decorative faceplate that does not interfere with the ambient air flow through
the housing of the thermostatic controller. Accordingly, we find that the
preambles of claims 11 and 22 recite a limitation of the claim, namely a
thermostatic controller. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999) (“If the claim preamble, when read in the
context of the entire claim, recites limitations of the claim, or, if the claim
preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then
the claim preamble should be construed as if in the balance of the claim.”).
We find that a thermostatic controller is positively recited in claims 11
and 22.
Appeal 2009-009434
Application 10/974,353

10
Anticipation rejection
Appellant contends that Hollinger, which describes a light switch
apparatus, does not describe a thermostatic controller, as called for in
independent claims 11 and 22 (App. Br. 12, 14).
The Examiner found that Hollinger describes all of the limitations
called for in independent claims 11 and 22. In particular, the Examiner
found that since Hollinger describes that housing 8 can be used with other
electronic devices, Hollinger’s housing is capable of being used with a
thermostatic controller apparatus (Ans. 6-7, 15).
Whether the covering of Hollinger is capable of being used with a
thermostatic controller apparatus is not an element of anticipation. To
establish anticipation, “all of the elements and limitations of the claim must
be shown in a single prior reference, arranged as in the claim.” Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986).
We find that Hollinger describes a screwless outlet box covering, but
does not describe a thermostatic controller, as called for in claims 11 and 22.
We reverse the rejection of independent claims 11 and 22, and claims
12-15, 18 and 23-29, which, respectively, depend therefrom.

Issue 5: Claims 8-10 and 19-21
Independent claim 19 calls for, inter alia, “a user interface including
at least a visual display positioned in one of the apertures of the housing.”
Appeal 2009-009434
Application 10/974,353

11
As we found supra, Ray’s visual display, pointer 37 and indicia 38, is
positioned on top of the plate 14 and not in one of the apertures.
Further, the Examiner has not relied on Hollinger for any teaching that
would remedy the deficiency in Ray (Ans. 10).
Thus we reverse the rejection of independent claim 19 and claims 20
and 21, which depend therefrom.
Further, for the same reasons set forth regarding independent claim 1
supra, we reverse the rejection of claims 8-10, which depend therefrom.

Regarding claims 4, 16 and 17: The Examiner has not relied on
Herbert for any teaching that would remedy the deficiency in Ray (claim 4)
(Ans. 8), and has not relied on any disclosure in Reese (claim 16) or
Prenderville (claim 17) that would remedy the deficiency in Hollinger (Ans.
9).
Therefore, for the same reasons set forth supra regarding independent
claims 1 and 11, we reverse the rejection of dependent claims 4, 16 and 17.

CONCLUSIONS
The Examiner has erred in finding that the disclosure of the
application relied upon does not reasonably convey to those skilled in the art
that the inventor had possession of the subject matter called for in claims
11-18 and 22-29 as of the filing date.
The Examiner has erred in concluding that claims 11-18 and 22-29 are
indefinite for failing to particularly point out and distinctly claim
Appellant’s invention.
Appeal 2009-009434
Application 10/974,353

12
The Examiner has erred in finding that Ray describes “a user interface
including at least a visual display positioned in one of the apertures of the
housing,” as called for in independent claim 1.
The Examiner has erred in concluding that the term “thermostatic
controller” is not positively recited in claims 11 and 22, and has erred in
finding that Hollinger anticipates the invention, as called for in independent
claims 11 and 22.
The Examiner has erred in concluding that the combined teachings of
Ray and Hollinger would have led a person having ordinary skill in the art to
“a user interface including at least a visual display positioned in one of the
apertures of the housing,” as called for in independent claim 19 (App. Br. 9,
11).
DECISION
The decision of the Examiner to reject claims 1-29 is reversed.

REVERSED

Klh

REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107