Ex Parte Caves et al

Patent Trial and Appeal Board

Feb 1, 2016

12338355 (P.T.A.B. Feb. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/338,355 12/18/2008
23409 7590 02/03/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Andrew Robert Caves
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
010121-8168-00 5288
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW ROBERT CAVES, ANDREW WILLIAM
PHILLIPS, BRIAN THOMAS BRANECKY, WILLIAM
LOUIS MEHLHORN, THOMAS G. VAN SISTINE, ROBERT
EUGENE OLSON, and ZHONGSHENG NIU
Appeal2014-001202
Application 12/338,355
Technology Center 3700
Before, JENNIFERD. BAHR, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 6-8, 10, 14--21, 27, and 29-34. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants state that the Real Party in Interest on this appeal is AOS
Holding Company. Appeal Br. 2.
Appeal2014-001202
Application 12/338,355
THE CLAIMED SUBJECT MATTER
Claims 1 and 10, reproduced below, are illustrative of the claimed
subject matter. The italicized claim language highlights the salient claim
limitations for the analysis set forth below.
1. A storage-type water heater comprising:
a tank for supporting water to be heated;
a first heating bank including a first heating element with
a first heating surface and a second heating element with a
second heating surface;
a first relay connected to the first heating bank;
a second heating bank including a third heating element
with a third heating surface and a fourth heating element with a
fourth heating surface;
a second relay connected to the second heating bank; and
a controller for selectively operating the first relay and
the second relay, the controller including instructions for,
selecting a mode from at least,
a no-sequencing mode, wherein the first relay and
the second relay are operated concurrently, and
a sequencing mode, wherein the first relay and the
second relay are operated sequentially, and
operating the first relay to supply power to the first
heating bank, and operating the second relay to supply
power to the second heating bank, basing the operation
on the selected mode.
10. A method for operating a storage-type water heater including
a first heating bank including a first heating element with
a first heating surface disposed within a tank,
a first relay connected to the first heating bank,
a second heating bank including a second heating
element with a second heating surface disposed within the tank,
a second relay connected to the second heating bank, and
a controller for selectively operating the first relay and
the second relay, the method comprising:
selecting a mode from at least,
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Application 12/338,355
a no-sequencing mode, wherein the first relay and the
second relay are operated concurrently, and
a sequencing mode, wherein the first relay and the
second relay are operated sequentially, and
operating the first relay to supply power to the first
heating bank, and operating the second relay to supply power to
the second heating bank, basing the operation on the selected
mode.
REJECTIONS
The following rejections are before us for review:
1. Claim 32 is rejected under 35 U.S.C. § 112, paragraph 2.
2. Claims 10 and 14 are rejected under 35 USC§ 102(b) as
anticipated by Wilson (U.S. 6,242,720 Bl, iss. June 5, 2001).
3. Claims 1, 6, 19, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson in view ofBrognano et al (U.S.
4,289,954, iss. Sept. 15, 1981 ).
4. Claims 7, 8, 15-18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilson in view of Demaline (U.S.
5,968,393, iss. Oct. 19, 1999).
5. Claims 29,30, and 31 2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson and Brognano as applied to claims 1, 6,
19, and 27, and further in view ofDytch (U.S. 4,638,147, iss. Jan.
20, 1987).
6. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as
2 The Examiner clarifies that claim 3 1 "was supposed to be incorporated
with" this rejection. Ans. 4--5. In light of our disposition of this rejection,
Appellants are not prejudiced by our treatment of this rejection as including
claim 31.
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Application 12/338,355
unpatentable over Wilson as applied to claims 10 and 14 above,
and further in view of Dytch.
ANALYSIS
Indefiniteness Rejection
As Appellants do not address the rejection of claim 32 under
35 U.S.C. § 112, second paragraph, Appellants have waived any argument
of error, and we summarily sustain the rejection. See Appeal Br. 9; In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); J~yatt v_ Dudas,
551F.3d1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance
without consideration of the substantive merits is appropriate where an
appellant fails to contest a ground of rejection); see also 37 C.F.R.
§ 41.31 ( c) ("An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office."); 37 C.F.R. § 41.39(a)(l)
("An examiner's answer is deemed to incorporate all of the grounds of
rejection set forth in the Office action from which the appeal is taken ...
unless the examiner's answer expressly indicates that a ground or rejection
has been withdrawn.").
Anticipation and Obviousness Rejections
Appellants contend that the Examiner erred in rejecting claim 1 as
unpatentable over Wilson in view of Brognano. In particular, Appellants
contend that "Wilson does not disclose 'a controller ... selecting a mode
from at least, a no-sequencing mode ... , and a sequencing mode."'
Appeal. Br. 14. Appellants further contend that "Brognano does not
disclose, teach, or suggest 'a controller ... selecting a mode from at least, a
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Application 12/338,355
no sequencing mode ... , and a sequencing mode."' Id. Appellants
interpose the same contentions in connection with claims 6, 19, and 27.
Appeal. Br. 14- 16.
Appellants define a no-sequencing mode in the specification as "all
heating banks (e.g., heating banks 100, 105, and 110) are energized
concurrently to heat water in the tank 20 during a heating cycle, and all
heating banks are dienergized [sic] concurrently." Spec. i-f 0036.
Sequencing modes are defined as the heating banks being "de-energized in a
First-On-Last-Off sequence" or a "First-On-First-Off sequence." Spec.
i-10037.
The Examiner made the following findings in connection with the
prior art references, which we adopt as supported by substantial evidence:
a) The Examiner found that Wilson contains a
processor 24 (controller, Fig. 1) which executes a power on
routine (Fig.2a and 2b) to control power applied to the heating
elements 16 and 18131 through power supplies 26 and 28 (Col 2,
lines 15-19). The processor 24 runs a power on routine
(sequencing mode, Fig.2a and 2b) where the lower heating
element 14 is powered on by power supply circuit 28 (step 70,
Fig. 2b) and while the step 7 6 is satisfied, heating element 14 and
the upper heating element 16 is powered on by power supply
circuit 26 (step 82, Fig. 2b ).
Final Act. 5.
b) The Examiner found Brognano discloses "heater elements 19a-19c
(first heating bank[, ]Fig. 1) and 20a-20c (second heating bank,
Fig. 1) with each heater elements having a surface." Id. 6.
c) The Examiner found that Demaline teaches
a hot water controller (Fig.6) where tank 106 has two setpoints
of 50 degrees and 25 degrees Celsius (col 2, lines 41-46). When
3 The heating elements in Wilson are item numbers 14 and 16. Appeal Br. 8.
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50 degrees [C]elsius is used for a[n] upper portion of the tank
and 25 degrees [C]elsius is used for a lower portion of the tank
then one is greater than the other. With regards to claim 18,
Demaline teaches a microcontroller (controller[, ]col 7 line 52)
which control operates the upper tank heating element (second
heating bank, lines 56-57), and thereafter operates a lower
element (first heating bank, lines 60-63).
Final Act 8 - 9 (emphasis omitted).
d) The Examiner found that
Dytch et al teaches a microprocessor controlled electric water
heater 10 having heating elements 17-21 (Fig. 1) controlled by
control means 30 in a mode where elements 18-21 being turned
on then element 17 turned on and turned off (progressive, col 9,
lines 1-4) or a mode where element 17 is switched on and then
elements 18-21 is turned off (linear, col 9, lines 29-32).
Final Act. 9.
The Examiner does not cite to any portion of Wilson, Brognano,
Demaline, or Dytch that discloses, teaches or suggests "a no-sequencing
mode, wherein the first relay and the second relay are operated
concurrently." Based upon our independent review of \Vilson, Brognano,
Demaline, and Dytch, we find that none of these references discloses "a
controller ... selecting a mode from at least, a no-sequencing mode ... , and
a sequencing mode." Appeal Br. 21 (Claims App).
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966) (noting that 35 U.S.C. § 103 leads to three basic factual inquiries: (1)
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Application 12/338,355
the scope and content of the prior art; (2) the differences between the prior
art and the claims at issue; and (3) the level of ordinary skill in the art).
Furthermore, the Examiner's obviousness rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSRint'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
Our reviewing court has also held:
With respect to core factual findings in a determination of
patentability, . . . the Board cannot simply reach conclusions
based on its own understanding or experience - or on its
assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the
record in support of these findings.
In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
In this case, the Examiner does not cite to any prior art disclosing "a
controller ... selecting a mode from at least, a no-sequencing mode ... , and
a sequencing mode." Nor has the Examiner otherwise provided "articulated
reasoning with some rational underpinning to support the conclusion of
obviousness" in the absence of "precise teachings directed to the specific"
claim limitation. KSR, 550 U.S. 398 at 1741. Instead, the Examiner
appears to attempt to read the limitation in question out of the claim by
"disagree[ing] that the controller selects a mode because the claim language
states the 'controller include instructions for selecting a mode from at least'
which mean[ s] the controller still has to be activated by someone or
something in the system which could be a user." Ans. 9; see also id. at 11.
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This explanation is unavailing. Even assuming that the claim limitation "the
controller including instructions for, selecting" encompasses instructions for
selecting from at least the two recited modes based on user input, the
Examiner does not identify instructions included in Wilson's processor 24
for selecting from at least a no-sequencing mode and a sequencing mode, as
called for in independent claims 1 and 19. The Examiner also does not
identify instructions included in Wilson's processor 24 for selecting an
operation based on at least a no-sequencing mode and a linear sequencing
mode, as called for in independent claim 27. For these reasons, we reverse
the Examiner's rejection of claims 1, 6, 19, and 27 under 35 USC§ 103(a).
Appellants next contend that the Examiner erred in rejecting claims 10
and 14 under 3 5 USC § 102(b) as anticipated by Wilson. Appellants
contend, similar to claim 1, that Wilson does not disclose "selecting from at
least a no-sequencing mode ... , and a sequencing mode." Appeal Br. 16.
Appellants rely on MPEP 2131 and argue that to anticipate a claim, the prior
art reference must contain each and every element of the claim. Id. As
stated above, we find that the no-sequencing mode is not disclosed in Wilson
and that the Examiner does not cite to any disclosure in Wilson of selecting
from at least a no-sequencing mode and a sequencing mode. Therefore, the
Examiner does not show by a preponderance of the evidence that Wilson
anticipates claim 10 or 14. Consequently, we reverse the Examiner's
rejection of claims 10 and 14 under 35 USC §102(b).
As the Examiner does not point to any teaching in Brognano,
Demaline, and Dytch that would remedy the deficiency in Wilson, the
rejections of dependent claims 7, 8, 15-18, 20, 21, 29-31, 33, and 34 under
35 USC§ 103(a) are reversed.
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DECISION
The Examiner's decision rejecting claim 32 under 35 U.S.C. § 112,
second paragraph, is AFFIRMED.
The Examiner's decision rejecting claims 1, 6-8, 10, 14-21, 27,
29--31, 33, and 34 under 35 U.S.C. § 102 or§ 103 is REVERSED.
AFFIRMED-IN-PART
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