Ex Parte Donnelly et al

Patent Trial and Appeal Board

Feb 27, 2013

11480154 (P.T.A.B. Feb. 27, 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.
11/480,154 06/30/2006 Donald E. Donnelly 7578W-000397/US 1233
28997 7590 02/28/2013
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
NDUBIZU, CHUKA CLEMENT
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
02/28/2013 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 DONALD E. DONNELLY and THOMAS J. FREDRICKS
____________

Appeal 2010-005923
Application 11/480,154
Technology Center 3700
____________

Before KEN B. BARRETT, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Donald E. Donnelly and Thomas J. Fredricks (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 2 and 4-
13. Appellants cancelled claims 1, 3, and 14-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-005923
Application 11/480,154

2

The Claimed Subject Matter
The claimed subject matter relates to a system for communicating an
abnormal condition of a fuel fired water heating appliance to an occupant of
a space. Spec. 1, para. [0005]. Claim 2 (the sole independent claim),
reproduced below, is representative of the subject matter on appeal.
2. A system for monitoring the operation
of a fuel fired water heater, comprising:
a fuel fired water heater having a burner, a
gas valve, a high temperature condition sensing
means for switching at a preset temperature that is
disposed adjacent the burner, and at least one other
sensor disposed on the water heater that is
configured to sense the presence of a harmful level
of carbon monoxide and also configured to sense
the concentration level of flammable vapors;
a water heater controller mounted on the
water heater for controlling the operation of the
fuel fired water heater, the controller being capable
of monitoring the high temperature sensing means
and the at least one other sensor to detect an
abnormal condition, and being capable of
responding to an abnormal condition by wirelessly
transmitting a signal including a message
indicating the presence of an abnormal condition,
wherein the water heater controller responds to the
abnormal condition by commencing successive
wireless transmissions of a signal including a
message indicating the presence of an abnormal
condition; and
a thermostat having a display device that is
disposed at a location remote from the fuel-fired
water heater, the thermostat being capable of
receiving the wirelessly transmitted message and
responsively displaying a text message on the
thermostat's display device of the abnormal
condition for the fuel fired water heater.
Appeal 2010-005923
Application 11/480,154

3
The Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 2, 4-10, and 13 as unpatentable over Brandt (US
RE37,745 E, reissued Jun. 18, 2002), Winick (US 2005/0270151 A1,
published Dec. 8, 2005), and Ando (US 7,163, 609 B2, issued Jan. 16,
2007); and
II. claims 11 and 12 as unpatentable over Brandt, Winick, Ando,
and Greene (US 6,377,925 B1, issued Apr. 23, 2002).

OPINION
Rejection I – Obviousness based on Brandt, Winick, and Ando
Appellants argue claims 2, 4-10, and 13 as a group and we select
independent claim 2 as the representative claim. See App. Br. 7-131; see
also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 4-10 and 13 fall with claim
2.
First, Appellants contend that although Ando discloses “a flammable
gas sensor capable of measuring carbon monoxide or hydrocarbon” (Ando,
col. 1, ll. 15-16), Ando is measuring by-products of combustion, as opposed
to flammable vapors not yet combusted which one of ordinary skill in the art

1 Appellants’ 14-page Appeal Brief, excluding appendices, does not include
page numbers thereon; however, page 1 begins with the caption “IN THE
UNITED STATES PATENT AND TRADEMARK OFFICE,” and pages
2-14 are consecutive therefrom.
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Application 11/480,154

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would understand claim 2’s language to be reciting in light of Appellants’
Specification. App. Br. 8; Reply Br. 22 (citing Ando, col. 1, l. 31).
Appellants’ Specification discloses that the at least one other sensor
128 may be “a carbon monoxide sensor capable of sensing the concentration
of carbon monoxide gas” (Spec. 4, para. [0014]), “a Metal Oxide
Semiconductor (MOS) sensor, which has low electrical conductivity in clean
air, but increases when exposed to carbon monoxide presence (Spec. 4-5,
para. [0015]), and “an electrochemical sensor that is further capable of
detecting the presence of a flammable vapor” (Spec. 5, para [0016]). The
Specification then indicates that “the at least one other sensor 128 may
comprise two or more of the above sensors for detecting the presence of one
or more gasses within or around the appliance.” Therefore, the Examiner’s
finding that Brandt discloses at least one other sensor 40 disposed on the
water heater configured to sense the presence of a harmful level of carbon
monoxide or CO, and also a sensor 30 configured to sense the concentration
level of flammable vapors (Ans. 3 (citing Brandt, col. 5, ll. 10-13, 53-56,
and Fig. 1)) appears to satisfy the claim limitation of “at least one other
sensor disposed on the water heater that is configured to sense the presence
of a harmful level of carbon monoxide and also configured to sense the
concentration level of flammable vapors” (App. Br., Clms. App’x.).
To the extent that claim 2 may be reciting a single sensor that is
capable of sensing both carbon monoxide and flammable vapors, the
Examiner finds that Ando discloses a single sensor which is capable of

2 Appellants’ 7-page Reply Brief does not include page numbers thereon;
however, page 1 begins with the caption “IN THE UNITED STATES
PATENT AND TRADEMARK OFFICE,” and pages 2-7 are consecutive
therefrom.
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5
sensing both carbon monoxide and flammable vapors. In response to
Appellants’ contention that Ando senses only combusted flammable vapors,
the Examiner notes that claim 2 does “not recite that the flammable vapors
are vapors produced before combustion.” The Examiner also notes that
“Ando’s sensor is also capable of measuring air/fuel ratio and the fuel is
expected to be a non-combusted vapor (column 1[,] line 13),” and thus, “[i]n
both [Appellants’] and Ando’s inventions[,] flammable vapors are likely to
include vapors produced before and vapors produced after combustion.” As
the Examiner’s rejection appears to be combining Brandt’s two sensors 30,
40 into a single sensor that can perform both functions as taught by Ando for
the purpose of reducing costs, we agree with the Examiner that it would
have been obvious to one of ordinary skill in the art to do so.
Second, Appellants contend that
Brandt does not teach or suggest a controller
configured to respond to an abnormal condition by
wirelessly transmitting a signal including a
message indicating the presence of an abnormal
condition, wherein the water heater controller
responds to the abnormal condition by
commencing successive wireless transmissions of
a signal including a message indicating the
presence of an abnormal condition.
App. Br. 9. The Examiner finds that Brandt is “capable of responding to an
abnormal condition by transmitting a signal (through electric wires)
including a message indicating the presence of an abnormal condition” since
Brandt’s water heater controller 10 “monitors a number of operational
conditions that impact safety,” and “[u]pon issuance of a signal that any of
these conditions are outside [of] operating parameters or are failing to
function, . . . emit[s] an audio and/or visual alarm which details the type of
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Application 11/480,154

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malfunction that has occurred.” Ans. 4 (citing Brandt, col. 3, l. 64 through
col. 4, l. 3). The Examiner also finds that Winick discloses a control system
including a controller 12, a transceiver 30 capable of wireless transmission
to remote receivers, and a thermostat 14 capable of receiving wirelessly
transmitted messages and displaying messages. Ans. 5 (citing Winick p. 7,
paras. [0058]-[0061]). Thus, Appellants’ contention attacking Brandt
individually is not persuasive as the Examiner is relying upon a combination
of Brandt and Winick to disclose the subject matter of the second and third
paragraphs of the body of claim 2. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(One cannot show nonobviousness by attacking references individually
where the rejections are based on a combination of references). To the
extent that Appellants are contending that Brandt’s audio and/or visual alarm
does not constitute a signal including a message, we are not persuaded
because Brandt’s “[c]ontrol panel 20 contains an auditory alarm 22, a visual
display 24 which functions as a visual alarm and displays the temperature of
the water and the set temperature.” Thus, Brandt’s capability of displaying a
message is indisputable regardless of what the content of the message is that
Brandt actually displays.
Third, Appellants also contend that in view of Winick’s teachings, a
person of ordinary skill in the art would merely have used Winick’s carbon
monoxide sensor in rooms within a home, rather than disposed on a water
heater and “would not have considered modifying Winick to include a
carbon monoxide and flammable vapor sensor on a water heater, and a
controller configured to wirelessly transmit a signal including a message of
an abnormal condition and a thermostat that displays a text message of the
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Application 11/480,154

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condition.” App. Br. 9-10. We are not persuaded by Appellants’ contention
as Brandt teaches a carbon monoxide sensor disposed on the water heater
and the Examiner is not modifying Brandt to move the sensor from its
location on the water heater. Nor is the Examiner modifying Winick as
suggested by Appellants. Rather, the Examiner is modifying Brandt by
Winick’s teachings merely to include a thermostat capable of receiving
wireless signals and to make Brandt’s controller be capable of sending
signals including messages wirelessly to the thermostat.
Fourth, Appellants contend that Brandt’s disclosure of triggering an
auditory alarm 22 does not teach or suggest a controller configured to
respond to an abnormal condition by commencing successive wireless
transmissions of a signal including a message indicating the presence of an
abnormal condition, nor does Brandt teach a thermostat receiving the
wirelessly transmitted message and responsively displaying a text message
on the thermostat’s display device of the abnormal condition. App. Br. 10.
The Examiner responds, and we agree, that the combination of Brandt and
Winick teach the disputed claim limitation. Ans. 11. More particularly,
Brandt teaches “[t]he transmission is successive since both temperature and
concentrations would be transferred for both audio and visual display,” and
Winick teaches wireless technology for transmitting information between
the controller, the sensors, and a thermostat display, wherein the thermostat
is capable of receiving the wirelessly transmitted message from the
controller and displaying a text message on the thermostat’s display device.
Id.
Fifth, Appellants contend that one of ordinary skill in the art would
use Winick’s teachings to position a wireless carbon monoxide sensor in a
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room of a home, and there is no apparent reason why it would have been
obvious to one of ordinary skill in the art to modify the teaching of Winick
to arrive at the subject matter of claim 2. App. Br. 11. As explained supra,
Brandt teaches the sensors being disposed on the water heater. The
Examiner’s proposed modification of Brandt is not relocating the sensors so
that they are no longer located on the water heater by the teachings of
Winick, nor is the Examiner modifying Winick.
Sixth, Appellants contend that the combination of Brandt and Winick
would only have resulted in the predictable outcome of Brandt’s water
heater shutting off when Winick’s wireless carbon monoxide room sensor
detected carbon monoxide, but would not have arrived at the subject matter
of claim 2. App. Br. 12. We are not persuaded by this contention as it is
mere speculation on Appellants’ part. The Examiner relied on Winick’s
teachings of wireless technology to modify Brandt’s wired controller and
Brandt already discloses issuing a signal about conditions outside of the
normal operating parameters. Brandt, col. 3, l. 64 to col. 4, l. 3. Therefore,
we see no reason, and Appellants have not explained, why it would only
have been obvious to one of ordinary skill in the art to use Winick’s teaching
to turn off Brandt’s water heat, rather than to wirelessly transmit a signal
including a message about an abnormal condition.
Finally, Appellants contend that there is no articulated reason why a
person of ordinary skill in the art would have modified the teachings of
Brandt, Winick, and Ando in a manner that would have resulted in the
subject matter of claim 2, because the Examiner has not pointed to any
disclosure in the cited references of the claimed features, but rather has
relied upon impermissible hindsight using Appellants’ disclosure as a road
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9
map. App. Br. 12-13. We are not persuaded by Appellants’ contention.
First, we note that the teachings of Winick and Ando have not been
modified; rather, the Examiner only proposes to modify the control system
of Brandt by the teachings of Winick and Ando. Second, the Examiner has
pointed to disclosure in all of the Brandt, Winick, and Ando references, the
combination of which addresses all of the claimed features. Most
importantly, the Examiner, with the proposed modification of Brandt’s
control system for a water heater, articulates a reason with a rational
underpinning, namely, in order to reduce costs and provide a water heater
control that can function remotely from the water heater, as to why a person
of ordinary skill in the art would have modified Brandt in view of the
teachings of Winick and Ando. Ans. 4-5 and 12-14. Thus, we are not
persuaded that the Examiner has relied upon impermissible hindsight.
Accordingly, we sustain the Examiner’s rejection of independent
claim 2, and claims 4-10 and 13 falling therewith, under 35 U.S.C. § 103(a)
as unpatentable over Brandt, Winick, and Ando.

Rejection II – Obviousness based on Brandt, Winick, Ando, and Greene
Appellants argue that Greene does not cure the deficiency of the
combination of Brandt, Winick, and Ando to teach or suggest the subject
matter of independent claim 2. App. Br. 13-14; Reply Br. 6. As we found
no deficiency with respect to the combination of Brandt, Winick, and Ando
for the reasons discussed supra, we sustain the Examiner’s rejection of
claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over Brandt,
Winick, Ando, and Greene.

Appeal 2010-005923
Application 11/480,154

10
DECISION
We affirm the Examiner’s decision to reject claims 2 and 4-13.
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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