Ex Parte Cauchy

Board of Patent Appeals and Interferences

Sep 12, 2008

11059703 (B.P.A.I. Sep. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES J. CAUCHY
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Appeal 2008-1707
Application 11/059,703
Technology Center 3700
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Decided: September 12, 2008
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 2, 14, and 15. We have jurisdiction under 35 U.S.C.
§ 6(b)(2002). We affirm-in-part.
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Appellant claims a mobile vehicle temperature controlled compartment that
may be provided in a mobile vehicle console (Specification, col. 1, ll. 5-8). Claim
2, reproduced below, is representative of the subject matter on appeal.
2. A mobile vehicle temperature controlled compartment
comprising:
a housing enclosing a compartment for storage of
articles therein;
a heat exchanger mounted to said compartment;
a thermoelectric system having first and second
heat sinks and a thermoelectric device mounted
therebetween, said first heat sink being in
thermoconductive contact with said heat exchanger;
an electrical power source electrically connected to
said thermoelectric system; and
an air duct assembly having an extension member
in thermoconductive contact with said second heat sink,
an air inflow duct which receives inflow air from an air
source and an air outflow duct which segregates and
exhausts air separate from said inflow air.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Reed US 4,301,658 Nov. 24, 1981

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Claims 2, 14 and 15 stand rejected under 35 USC § 102(b) as anticipated by
Reed.1

ISSUE
The issue before us is whether the Examiner erred in rejecting 2, 14 and 15
under 35 USC § 102(b) as anticipated by Reed. The issue turns on whether Reed
teaches 1) an inlet and outlet duct; 2) an outlet duct that segregates and exhausts air
separate from said inflow air; and 3) an air exit of the air inflow duct is provided
opposite to the extension member.
Rather than repeat the arguments of Appellant or the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii) (2007).

1 Appellant submits a declaration under 37 C.F.R. § 1.132 and argues that the
evidence of record is more than sufficient to rebut a proper showing of prima facie
obviousness under 35 USC § 103(a) (Br. 5-6 and Evidence Appendix). However,
there is no obviousness rejection before us, so this evidence and argument are
inapposite to the appealed rejection. The Examiner acknowledged Appellant’s
Declaration, but found that the Appellant’s tests do not apply to the Reed device
(Answer 7).
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FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).

1. There is no lexicographic definition of the terms “duct” or “segregates and
exhausts air separate from said inflow air” or “opposite to the extension
member” in the Specification.
2. A fan 33 drawn by motor 31 draws air through air inlet opening 6, and blows
the air in a direction indicated by arrow 8, through the parallel fins of
external heat exchanger 13’, and out of air outlet opening 5A (which is also
covered by a plastic grill section of end panel 5) in the direction indicated by
arrow 11’ in Figure 2 (Reed, col. 5, ll. 4-10, Figure 2).
3. As shown in Figure 2, the inlet of Reed is located below and the exit is
located above the extension member. Neither is opposite to the extension
member (Reed, Figure 2).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
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(Fed. Cir. 2004)). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We remind the Appellant that it is his burden to precisely define the
invention, not that of the Examiner. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).

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ANALYSIS
The Appellant argues claims 2 and 15 as a group. We treat claim 2 as
representative.
The Appellant argues that Reed does not even disclose an air duct assembly
or any structural features that would function as an air duct assembly according to
the present invention. In particular, Appellant argues that the cavity 15 of Reed
cannot possibly serve as the air duct assembly of the present invention since the
upper portion of the cavity 15 behind grill 5A is in communication with the lower
portion of the cavity behind grill portion 6 (Br. 4). Appellant further argues that in
Figures 2 and 5 of Reed, the external heat exchangers 13’, 13” do not segregate the
upper part of cavity 15 from the lower part. The Appellant also argues that heat
exchanger 13’ does not extend outwardly to the end panel 5 and spaces are
provided between the fins of the heat exchanger 13’ in order to permit air flow
therethrough (Id.).
The Examiner correctly notes that the Appellant previously argued that a
duct is defined as a pipe, tube, or channel that conveys a substance (Answer 5,
citing page 3, lines 9-10 of Appellant’s Argument filed 4/17/06). The Examiner
found that even accepting this definition, Reed clearly shows inlet and outlet
ducts. Specifically, the Examiner found the space behind grill 5A to be an air
channel leading air from the heat exchanger out through the grill and fan cavity 15
to serve as a duct for airflow across fins 13’ (Answer 5). The Examiner found that
Since the spaces at the inlet and outlet serve to channel
air flow into and out of the fan cavity 15, and fan cavity
15 is a longitudinal channel extending along the length of
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extension member 13’, it is entirely proper and
reasonable to consider the arrangement as being a
channel with inlet and outlet ducts. To argue otherwise is
to unreasonably constrict the meaning of the word,
"duct," even as defined by Appellant himself.
(Id.). We do not find the Appellant’s argument persuasive. We find the
Appellant’s proffered definition of “duct” to be consistent with the ordinary
meaning of duct, and there is no lexicographic definition in the Specification.
Under that definition, we find the Examiner’s interpretation of Reed to disclose
inlet and outlet ducts to be reasonable (Finding of Fact 2).
With respect to the Appellant’s argument that the outlet duct does not
segregate the upper cavity from the lower cavity, the Examiner found that there is
nothing (in claim 2) that requires there to be no space between fins 13a and grill 5
and that, even in the Appellant’s invention, there is a continuous airflow from the
inlet to the outlet, and also open space above fins 58 (Answer 5, citing Figures 2-
4). According to the Examiner, to be segregated, the inlet and outlet must function
as distinct and separate entities, which the inlet and outlet of Reed do. The
Examiner concluded that Reed thus discloses the fundamental advantage of what
Appellant means by segregated (that the inflows and outflows do not intermingle)
(Answer 6; referring to the Appellant’s affidavit for examples of prior art wherein
air travels in and out through a common duct and thus does not have segregated
inlets and outlets). The Appellant responded that the fan cavity in Reed has a
configuration in which “short-circuiting” of the incoming and exhaust air would
inevitably occur (Reply Br. 2). The Appellant provides no explanation why the
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design of Reed would inevitably lead to short-circuiting, and it is not clear from the
record why that would be so.
Claim 2 requires only “an air outflow duct which segregates and exhausts air
separate from said inflow air.” As the Examiner noted, Reed teaches that
A fan 33 . . . draws air through air inlet opening 6, and
blows the air in a direction indicated by arrow 8, through
the parallel fins of external heat exchanger 13’, and out
of air outlet opening 5A . . . in the direction indicated by
arrow 11’ in Figure 2.
(Answer 5, quoting Reed, col. 5, ll. 4-10). We find that the passage of Reed
quoted by the Examiner discloses exhausting air separate from the inflow air,
which segregates that air from the inflow air by exhausting via outlet port 5A
(Finding of Fact 2).
The Appellant thus has failed to show error in the Examiner’s rejection of
claim 2. Claim 15 is not argued separately and thus falls with claim 2. See 37
C.F.R. § 41.37(c)(1)(vii)(2007). See also In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

The Appellant argues that claim 14 is separately patentable because the exit
of the inflow duct would not be provided opposite to external heat exchanger 13’
and 13”. According to the Appellant, Figure 2 of Reed shows the portion of the
end panel opposite the heat exchangers 13’ and 13” is closed so it is impossible to
provide an air exit of the air inflow duct opposite to the extension member as
required by claim 14 (Br. 5).
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The Examiner found that Appellant wishes to constrict the meaning of
“opposite” to only mean that the inlet is directly above the longitudinal length of
the extension member, but does not specify anywhere in the claim the direction in
which the inlet is opposite the extension member (Answer 6). The Examiner thus
concluded that it is entirely reasonable and proper to interpret the term “opposite”
within Appellant's claim to mean that the inlet duct may be opposed to any face of
the extension member. The Examiner further found that the inlet duct in Figure 2
of Reed introduces air directly opposite the lower surface of member 13’ and thus
reads on Appellant’s claim as recited (Id.).
Claim 14 depends from claim 2 and adds the limitation “wherein an air exit
of the air inflow duct is provided opposite to the extension member.” The
Examiner relies on part 13A as the extension member. The Appellant points to
column 3, lines 24-28 and Figure 2 of the Specification for support of the
additional limitation of claim 14 (Br. 2). We do not find anything in the
Specification that provides a lexicographic definition for “opposite to the extension
member.” (Finding of Fact 1). We find that Examiner’s interpretation of the
phrase falls within a broadest reasonable interpretation in light of the
Specification. We do not, however, see where, even under the Examiner’s broad
interpretation, Reed discloses an air exit of the air inflow duct, i.e., opening 6,
located opposite to any face of the extension member. As shown in Figure 2, the
inlet of Reed is located below and the exit is located above the extension member.
Neither is opposite to the extension member (Finding of Fact 3). The Appellant
therefore has shown that the Examiner erred in rejecting Claim 14.
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CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 2 and 15 under 35 U.S.C. § 102(b) as anticipated by Reed. We
conclude that Appellant has shown that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 102(b) as anticipated by Reed.

DECISION
The decision of the Examiner to reject claims 2 and 15 is affirmed. The
decision of the Examiner to reject claim 14 is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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Application 11/059,703

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LV:

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