Ex Parte Choi

Board of Patent Appeals and Interferences

Nov 28, 2011

10683600 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/683,600 10/09/2003 Michael Choi 81044302 1017
36865 7590 11/28/2011
ALLEMAN HALL MCCOY RUSSELL & TUTTLE, LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
EXAMINER
JIANG, CHEN WEN
ART UNIT PAPER NUMBER
3784
MAIL DATE DELIVERY MODE
11/28/2011 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 MICHAEL CHOI
____________

Appeal 2010-000764
Application 10/683,600
Technology Center 3700
____________

Before KEN B. BARRETT, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Choi (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 14, 15, 19, and 20. Appellant cancelled
claims 1-13 and 16-18. Appellant’s representative presented oral argument
on November 10, 2011. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-000764
Application 10/683,600

2
The Claimed Subject Matter
Claim 14, reproduced below, is representative of the subject matter on
appeal.
14. A method of operating a climate control
system in a passenger vehicle traveling on the
road, the method comprising:
directing a flow of air to a passenger
compartment of the vehicle via a duct, where the
duct has a bend and where a blower fan is coupled
to said duct upstream of said bend and where
a set of radial vanes is located in said duct; and
operating the blower fan to generate said
flow of air in said duct, where said radial vanes
protrude inwardly into said flow of air in said duct,
and said vanes are located downstream of
said fan and upstream of said bend, said vanes
reducing noise otherwise caused by air flowing
around said bend.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zarnick (US 5,728,980, issued Mar. 17, 1998) and
Kawanishi (US 6,078,671, issued Jun. 20, 2000).1

1 Although the Examiner set forth the grounds of rejection as being
unpatentable over Zarnick in view of Kawanishi or vice versa, i.e.,
Kawanishi in view of Zarnick, we note that “where a rejection is predicated
on two references each containing pertinent disclosure which has been
pointed out to the applicant, we deem it to be of no significance, but merely
a matter of exposition, that the rejection is stated to be on A in view of B
instead of on B in view of A, or to term one reference primary and the other
secondary.” In re Bush, 296 F.2d 491, 496 (CCPA 1961).

Appeal 2010-000764
Application 10/683,600

3
Claims 14, 15, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zarnick and Choi (US 5,722,357, issued Mar. 3, 1998).

SUMMARY OF DECISION
We REVERSE.

OPINION
Obviousness based on Zarnick and Kawanishi
The Examiner finds that Zarnick discloses claim 14’s method of
operating a climate control system substantially as claimed since Zarnick’s
prior art device would necessarily or inherently perform the claimed method.
Ans. 3-4. The Examiner acknowledges that Zarnick is directed to a duct
silencer for a building, but the Examiner interprets “[b]uildings and vehicles
[to be] intended use of noise reduction technique[s for] ventilation
system[s].” Ans. 3. With respect to claim 14’s step of “directing a flow of
air to a passenger compartment of the vehicle via a duct” (App. Br. 27), the
Examiner indicates that Zarnick discloses the noise reduction to be
downstream of the blower of the air conditioning unit so that it would have
been obvious to one of ordinary skill in the art to provide this noise
reduction device in the air conditioning unit of a vehicle. Ans. 3-4.
Appellant contends that even if Zarnick and Kawanishi are combined,
their combination fails to disclose claim 14’s step of “directing a flow of air
to a passenger compartment of the vehicle via a duct” (App. Br. 27). App.
Br. 10, 13, and 18.
We agree with Appellant that the combination of Zarnick and
Kawanishi does not teach or suggest directing air flow to the passenger
Appeal 2010-000764
Application 10/683,600

4
compartment of vehicle. Zarnick discloses a duct silencer of plastic panels
12 which is positioned after a bend and downstream from the furnace blower
or fan in a building’s heating and ventilating system 10. Fig. 1, col. 1, ll. 53-
55, and col. 2, ll. 2 and 21-22. Zarnick fails to disclose that the duct 15, 16,
17, 18, and 20 and silencer 12 directs air to the passenger compartment of a
vehicle. Although the Examiner alleges that it would be obvious to one of
ordinary skill in the art to provide Zarnick’s noise reduction device in a
vehicle’s air conditioning unit, there is no disclosure in Zarnick to support
that this is the case. Kawanishi is equally as silent as Zarnick that the
silencer 16 disclosed therein, which is stated to be adapted to be mounted on
an air duct (Abstract), directs air flow to the passenger compartment of a
vehicle. Kawanishi simply never discusses in what environment, such as
building, vehicle, etc., the silencer is used. Thus, since neither Zarnick nor
Kawanishi teach or suggest the use of their devices to direct air flow to the
passenger compartment of a vehicle and since the Examiner has failed to
adequately explain why it would have been obvious to a person of ordinary
skill in the art to do so, we are persuaded by Appellant’s contention.
Moreover, we do not agree with the Examiner’s interpretation of the
vehicle in claim 14 as being a recitation of intended use. Rather, the term
“the vehicle” is a structural component of claim 14’s method step, “directing
a flow of air to a passenger compartment of the vehicle via a duct.” In other
words, the claim requires the step of “directing a flow of air” to be
performed “to a passenger compartment of the vehicle via a duct.” As such,
evidence or technical analysis addressing “the vehicle” as a structural
component of claim 14 is required in order to sustain a rejection under 35
U.S.C. § 103(a) and the Examiner has failed to provide this.
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Application 10/683,600

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In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Zarnick and
Kawanishi. Claim 15 is dependent upon and falls with claim 14 and thus,
we also do not sustain the Examiner’s rejection of claim 15 under 35 U.S.C.
§ 103(a) as unpatentable over Zarnick and Kawanishi.
Obviousness based on Zarnick and Choi
The Examiner’s rejection based on Zarnick and Choi relies on the
same findings with respect to Zarnick as discussed supra in the section
entitled “Obviousness based on Zarnick and Kawanishi.” Ans. 19-24.
Appellant contends that even if Zarnick and Choi are combined, their
combination fails to disclose claim 14’s step of “directing a flow of air to a
passenger compartment of the vehicle via a duct” (App. Br. 27). App. Br. 19
and 24.
We agree with Appellant that the combination of Zarnick and Choi
does not teach or suggest directing air flow to the passenger compartment of
a vehicle. As discussed supra, Zarnick’s duct silencer is used in a building’s
heating and ventilating system and Zarnick does not teach or suggest that it
would be obvious to a person of ordinary skill in the art to direct air flow to
a passenger compartment of a vehicle. Choi discloses noise suppression in
the intake system of an internal combustion engine. Title. Choi does not
teach or suggest directing air flow to the passenger compartment of a
vehicle. Thus, since neither Zarnick nor Choi provide support for the
Examiner’s conclusion that it would have been obvious to one of ordinary
skill in the art to use the resulting device from the combination of Zarnick
and Choi to direct air flow to the passenger compartment of a vehicle, we are
persuaded by Appellant’s contention.
Appeal 2010-000764
Application 10/683,600

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Moreover, for the reasons discussed supra in the section entitled
“Obviousness based on Zarnick and Kawanishi,” we do not agree with the
Examiner’s interpretation of the vehicle in claim 14 as being a recitation of
intended use and the Examiner has failed to provide evidence or technical
analysis addressing “the vehicle” as a structural component of claim 14 in
order to sustain a rejection under 35 U.S.C. § 103(a).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Zarnick and Choi.
Claims 15, 19, and 20 are dependent upon and fall with claim 14 and thus,
we also do not sustain the Examiner’s rejection of claims 15, 19, and 20
under 35 U.S.C. § 103(a) as unpatentable over Zarnick and Choi.

DECISION
We reverse the Examiner’s decision to reject claims 14, 15, 19, and
20.

REVERSED

Klh