Ex Parte Beggs

Patent Trial and Appeal Board

Aug 29, 2013

11360783 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/360,783 02/23/2006 Bruce R. Beggs 080.001US1 2592
97462 7590 08/29/2013
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
ABDUR RAHIM, AZIM
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
08/29/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRUCE R. BEGGS
____________

Appeal 2011-009503
Application 11/360,783
Technology Center 3700
____________

Before: JAMES P. CALVE, WILLIAM A. CAPP and JILL D. HILL,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claim 3 as indefinite under 35 U.S.C. § 112, second paragraph
and claims 1-10 and 19-20 as anticipated under 35 U.S.C. § 102(b) by
Kumar (US 6,478,084 B1, iss. Nov. 12, 2002). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention is a temperature control system. Spec. 5.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system for controlling a temperature range and
conserving energy comprising:
a thermostat; and a device for altering or maintaining the
temperature range; wherein the thermostat directs temperatures
to be altered and maintained by the device to conserve energy
use by input of at least a target temperature and wherein the
thermostat allows input of a setback range for the target
temperature,
wherein, the setback range is set at a temperature
difference that is only lower than the target temperature when
the thermostat is in a heating mode and the setback range is set
at a temperature difference that is only higher than the target
temperature when the thermostat is in a cooling mode.

OPINION
Indefiniteness
The Examiner rejected claim 3 as indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant regards as
the invention. Ans. 4. Claim 3 depends from claim 1 and adds the
limitation: “wherein the thermostat directs a cooling device and the heating
device can be set at a target temperature and the setback range can be set at a
temperature difference that is only higher than the target temperature.”
Clms. App’x. The Examiner states that it is unclear how the heating device
setback range can be set higher than the target temperature when the system
is in a cooling mode. Id. For examination purposes, the Examiner
substituted the word “cooling” for “heating,” such that the claim would read
as follows:
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3. The system of claim 1 wherein the thermostat directs a
cooling device and the cooling [heating] device can be set at a
target temperature and the setback range can be set at a
temperature difference that is only higher than the target
temperature.
Id. Clms. App’x. (cooling substituted for heating in the original claim).
Appellant traverses the rejection, arguing that the Examiner
misinterpreted the claim. App. Br. 9. Appellant argues that claim 3 is
definite because it depends from claim 1, which is directed to a system that
both heats and cools. Id.
The governing section of the Patent Code provides, in pertinent part,
that:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
35 U.S.C. § 112. Section 112 places the burden of precise claim drafting on
the applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in
the art would understand what is claimed when the claim is read in light of
the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
After studying claims 1 and 2, we think that claim 3 is amenable to
two or more plausible claim constructions and is, therefore, indefinite. See
Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI Nov. 19, 2008) (precedential).
In claim 2, the thermostat directs a heating device with a setback range that
is only lower than the target temperature. Clms. App’x. In claim 3, the
thermostat directs “a cooling device.” Id. However, it then recites “the
heating device” with no antecedent basis in either claim 1 or claim 3. Id. In
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claim 3, the recited setback range is higher than the target temperature,
however, since the claim is directed to “the thermostat” for a cooling system,
we agree with the Examiner that it is unclear how the recited heating device
is assigned a setback temperature that is higher than the target temperature.
The first point of ambiguity is what is controlling the heating device if the
only claimed thermostat is directing a cooling device? The second point of
ambiguity relates to setting a setback temperature differential for a heating
system that is higher than the target temperature. If the temperature rises
above the target temperature, plus the setback differential, does the heating
device turn on or off? If the heating device is on (it should already be off),
does it stay on or turn off? If the heating device is off (it should be off),
does it stay off or turn on?
The Examiner’s proposed substitution of “cooling device” for
“heating device” in claim 3 potentially resolves the ambiguity, however,
Appellant argues for a different meaning than the Examiner and, in any
event, it is not the function of the Examiner or the Board to re-write
Appellant’s claims. See Becton Dickinson and Co. v. C.R. Bard, Inc., 92
F.2d 792, 799 (Fed. Cir. 1990) (“Nothing in any precedent permits judicial
redrafting of claims.).
We sustain the Section 112, paragraph 2 rejection of claim 3.
Unpatentability of Claims 1-10, 19 and 20
Appellant argues claims 1-10, 19 and 20 as a group. App. Br. 9-12.
We select claim 1 as representative of claims 1, 2, 4-10, 19 and 20 . See 37
C.F.R. § 41.37(c)(1)(vii) (2011). Claim 3 is treated separately below.
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Claims 1, 2, 4-10, 19 and 20
The Examiner finds that Kumar discloses all of the elements of
claim 1. Ans. 4-5. In particular, the Examiner finds that Kumar discloses
setting upper and lower limits of a deadband, such that the setback range is
set at a temperature difference that is only lower than the target temperature
when the thermostat is in a heating mode and is only higher than the target
temperature when the thermostat is in a cooling mode. Ans. 5.
Appellant traverses the Examiner’s rejection by arguing that Kumar
fails to disclose setback points at specific temperatures that are higher only
for a cooling setting and lower only for a heating setting. App. Br. 10.
Appellant argues that use of the term “only” in claim 1 limits the claim to
single sided set-back points. Id.
The Examiner responds that Kumar teaches the claimed limitations
and, in particular, states that Kumar explains that a variable deadband can be
set for both heating and cooling. Ans. 8-9, citing Kumar, col. 1, line 64 –
col 2, line 5 and col. 3, lines 28-33. According to the Examiner, since
multiple deadband magnitudes can be used, this necessarily includes “only
higher” and “only lower” settings. Id. Furthermore, the Examiner states
that it is well known to one of ordinary skill in the art that the deadband for
cooling would be above a set point and the deadband for heating would be
below a set point. Ans. 9.
Appellant’s argument based on single-sided set-backs is not
persuasive. Appellant does not challenge the Examiner’s finding that it is
well known for a cooling deadband to be above a set point for cooling and
that it is also well known for a heating deadband to be below a set point for
heating. A person of ordinary skill would understand that if the temperature
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in Kumar’s system rose to the upper limit of the deadband, only the cooling
mode of the system would be activated and if the temperature dropped to the
lower limit of the deadband, only the heating mode of the system would be
activated. Consequently, we sustain the Examiner’s anticipation rejection of
claims 1, 2, 4-10, 19 and 20 over Kumar.
Claim 3
If a claim is indefinite, it cannot be construed. Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Without a discernible
claim construction, an anticipation analysis cannot be performed. Id. For
this reason, a claim cannot be both anticipated and indefinite. See In re
Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011). In view of our decision to
sustain the indefiniteness rejection of claim 3 above, we reverse, pro forma,
the Examiner's prior art rejection of claim 3.

DECISION
The decision of the Examiner to reject claim 3 as indefinite under 35
U.S.C. § 112, second paragraph is AFFIRMED.
The decision of the Examiner to reject claims 1, 2, 4-10, 19 and 20 as
anticipated by Kumar is AFFIRMED.
The decision of the Examiner to reject claim 3 as anticipated by
Kumar is REVERSED pro forma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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