Ex Parte Chiang et al

Board of Patent Appeals and Interferences

Aug 17, 2011

10736487 (B.P.A.I. Aug. 17, 2011)

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.
10/736,487 12/15/2003 Robert Hong Leung Chiang 060507-1249 3809
26371 7590 08/17/2011
FOLEY & LARDNER LLP
777 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-5306
EXAMINER
ALI, MOHAMMAD M
ART UNIT PAPER NUMBER
3784
MAIL DATE DELIVERY MODE
08/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT HONG LEUNG CHIANG,
EUGENE DUANE DADDIS, JR.,
KWOK KWONG FUNG, and SUE-LI KINGSLEY CHUANG
____________________

Appeal 2009-009585
Application 10/736,487
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Hong Leung Chiang et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 6-18. Claims 1-5 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2009-009585
Application 10/736,487

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THE INVENTION
Appellants’ claimed invention pertains to a refrigerated display case
in, e.g., a supermarket or convenience store, for presenting fresh food or
beverages to customers. Spec. 1. Claim 6, reproduced below, is
representative of the subject matter on appeal.
6. A medium temperature refrigerated merchandiser system
comprising:
an insulated cabinet defining a product display area
maintained in a refrigerated condition at a temperature above 32
degrees F and having a compartment separate from the product
display area;
a relatively high air side pressure drop evaporator
disposed within said compartment;
at least one air circulator disposed within said
compartment in cooperative relationship with said evaporator;
and
an air circulation circuit connecting said product display
area in direct air flow communication with said compartment.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 6-11, 13, 14, 16, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Renard (US 5,502,979, issued Apr. 2,
1996) and Kutscher (US 6,378,605 B1, issued Apr. 30, 2002); and
2. Claims 12, 15, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Renard, Kutscher, and Navarro (US 6,145,327,
issued Nov. 14, 2000).
The Examiner also relies on Jacobus (US 3,309,887, issued Mar. 21,
1967) and Aoki (US 5,214,847, issued Jun. 1, 1993). Ans. 9.
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Application 10/736,487

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OPINION
1. The rejection of claims 6-11, 13, 14, 16, and 18 as being unpatentable
over Renard and Kutscher
Appellants argue the rejected claims as a group. App. Br. 4-7. We
select claim 6 as the representative claim, and claims 7-11, 13, 14, 16, and
18 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Renard discloses the invention substantially
as claimed except that Renard does not state that the evaporator is a
“relatively high air side pressure drop evaporator” as recited in claim 6.
Ans. 4. The Examiner maintains that:
The general concept of sizing an evaporator falls within the
realm of common knowledge as [an] obvious mechanical
expedient and this is illustrated by Kutscher et al., which teach
the use of a high airside pressure drop heat exchanger 10 with
fin density ranging from 3 fins to 10 fins per inch in a heat
exchanging system for the purpose of controlling pressure drop
and cooling temperature range.
Id. The Examiner then concluded that Appellants’ claimed subject would
have been obvious. Id.
Appellants do not dispute that Kutscher discloses a relatively high air-
side pressure drop heat exchanger, but point out that Kutscher also discloses
an embodiment with a lower fin density to reduce the pressure drop. App.
Br. 4, 6. Appellants assert that the conventional practice was to use a low
pressure drop evaporator in “frosting applications” such as a medium
temperature refrigerated merchandiser. App. Br. 6. Thus, argue Appellants,
one would have selected Kutscher’s low pressure drop embodiment because:
[t]here is no teaching, suggestion or motivation in Kutscher et
al. that would have led one designing a medium temperature
refrigerated merchandiser to go against the conventional
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Application 10/736,487

4
practice at the time of the invention and instead select the high
fin density embodiment of the heat exchanger disclosed by
Kutscher et al. to provide a high airside pressure drop
evaporator.
Id.; see also id. at 7 (arguing that one would not have been led to make the
Examiner’s proposed combination “absent motivation in the cited art to [at]
least [] try that higher [fin] density in a ‘frost formation’ environment.”)
Appellants’ arguments are not persuasive as the Supreme Court has rejected
the rigid requirement of a teaching, suggestion or motivation to combine
known elements in order to show obviousness. KSR Int’l. v. Teleflex Inc.,
550 U.S. 398, 418-19 (2007). The Court noted that an obviousness 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.” Id. at
418. The Examiner’s rejection is primarily premised on the “common
knowledge” in the art concerning evaporator sizing, not on any explicit
motivation in Kutscher to combine references’ teachings. Ans. 4.
Further, even if we were to accept as true that it was “conventional” to
use a lower pressure drop evaporator in a medium temperature refrigerated
merchandiser, Appellants offer no persuasive argument or evidence that it
was unknown in the art to use an evaporator with a relatively higher pressure
drop in that environment or that such use would have yielded unpredictable
results. Rather, Appellants’ arguments suggest that the results were known
to persons of ordinary skill. See App. Br. 5.
Additionally, we do not find persuasive Appellants’ argument that
Kutscher does not address or recognize the frost formation problem
purportedly addressed by Appellants’ configuration. See App. Br. 6.
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Application 10/736,487

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“[N]either the particular motivation nor the avowed purpose of the
[Appellants] controls” in an obviousness analysis. KSR Int’l Co., 550 U.S.
at 419.
Appellants have not shown error in the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art to use Kutscher’s
high air side pressure drop evaporator as the evaporator in Renard’s medium
temperature refrigerated merchandiser. See KSR Int’l Co., 550 U.S. at 416
(“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”) We
sustain the rejection of claim 6 as obvious in light of Renard and Kutscher.
Claims 7-11, 13, 14, 16, and 18 fall with claim 6.

2. The rejection of claims 12, 15, and 17 as being unpatentable over
Renard, Kutscher, and Navarro
Dependent claims 12, 15, and 17 call for a plurality of fans spaced at
intervals of about two feet. The Examiner found that Navarro teaches the
use of a plurality of fans along an evaporator coil in a refrigerated case, and
concluded that it would have been obvious to one skilled in the art to space
the fans about two feet apart “in order to achieve uniform flow distribution.”
Ans. 5. Appellants argue that the fans in Navarro’s preferred embodiment
are spaced at less than one foot intervals, but do not point to any flaw in the
Examiner’s reasoning that it would have been obvious to the skilled artisan
to position fans at two foot intervals. App. Br. 8. Furthermore, as with the
previous rejection, Appellants’ argument that Navarro lacks a teaching,
suggestion, or motivation to combine references is not persuasive. See App.
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Application 10/736,487

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Br. 8. Appellants have not convinced us that the Examiner’s decision to
reject claims 12, 15, and 17 is in error.

DECISION
The decision of the Examiner to reject claims 6-18 is affirmed.
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).

AFFIRMED

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