Ex Parte Egusquiza

Board of Patent Appeals and Interferences

Dec 22, 2009

10917045 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDUARD EGUSQUIZA
____________

Appeal 2009-000014
Application 10/917,045
Technology Center 3700
____________

Decided: December 22, 2009
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-000014
Application 10/917,045

2
STATEMENT OF THE CASE
Eduard Egusquiza (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 2, 4, 5, 7 and 8, the only
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to a hand-drying device having a
volute defining a spiral air passage of increasing cross-sectional dimension
in a direction extending from its input to its output, a motor, and a nozzle
that narrows from where it connects to the output conduit to its opening.
(Appeal Br., Claims Appendix, Claim 1). Independent claim 1 is reproduced
below, as being representative of the overall claimed subject matter:
1. A hand-drying device, comprising:

a volute defining a spiral air passage, the volute
comprising a spiral conduit for air, the conduit
having an input at its center, an output conduit
having an output opening, and a cross section that
increases from the input to the output; and

a motor, located at the center of the volute and
connected to the input of the volute for pulling in
air from the environment at an input velocity and
for passing the air through the volute input to the
volute output to expel the air at an output velocity
that is greater than the input velocity;
Appeal 2009-000014
Application 10/917,045

3
wherein the spiral conduit comprises a cross-
section that progressively increases progressively
[sic] from the input to an output conduit; and

an air outlet nozzle which narrows from where it
connects to the output conduit to the output
opening.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Gross US 1,594,906 Aug. 3, 1926
Kinsworthy US 3,407,995 Oct. 29, 1968
Ranz US 3,775,029 Nov. 27, 1973
Tozier US 4,999,928 Mar. 19, 1991

The Examiner has rejected claims 1, 2, 4, 5, 7 and 8 under 35 U.S.C. §
103(a) as being unpatentable over Gross in view of Kinsworthy, Ranz and
Tozier.

ISSUES
The Examiner concluded that the combined teachings of the Gross,
Kinsworthy, Ranz and Tozier patents render obvious the subject matter of
the claims on appeal.
Appellant contends that the teachings have been improperly
combined, in that no teaching, suggestion, or motivation for combining the
teachings has been established, and that at least one claim element, namely,
a spiral conduit having a cross-section that progressively increases in area, is
not disclosed or suggested by the references.
Appeal 2009-000014
Application 10/917,045

4
The issue to be decided on appeal is whether Appellant has
demonstrated that error exists in the Examiner’s grounds of rejection relying
on the combination of teachings of the four references.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are 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).
FF 1. Kinsworthy discloses a blower 10 having an axial input
opening 13 through which air is blown into a volute or spiral conduit 30.
The axial input opening is not a cross-section of the spiral conduit.
(Kinsworthy, col. 2, ll. 32-37, ll. 48-64; Figs. 1-3).
FF 2. Kinsworthy discloses that the spiral conduit portion of the
blower assembly “extends from adjacent the lip 25 around the blower wheel
12 expanding axially and radially until it terminates in the outlet duct 28.”
(Kinsworthy, col. 2, ll. 53-58; Figs. 1-3).
FF 3. The Examiner states that the reason to modify Gross in view of
Kinsworthy is to increase the efficiency of the fan. (Answer 4-5). Appellant
does not contest that the proposed modification would so increase the fan’s
efficiency. (Appeal Br., passim).
FF 4. The Ranz patent discloses a motor located at the center of the
volute, protruding into and connected to the input of the volute. (Ranz, Figs.
1, 8).
FF 5. A person of ordinary skill in the art would recognize, from at
least the drawing figures of Ranz (see, e.g., Fig. 8), that a motor whose axial
Appeal 2009-000014
Application 10/917,045

5
extent is at least in part surrounded by the blower volute would be more
compact in size than an arrangement, such as that in Gross, in which the
motor is completely disposed externally to the blower volute. The Ranz
blower assembly thus suggests that a more compact arrangement is made
possible by mounting the motor to extend at least partially into the inlet of
the volute. (Ranz, Figs. 1, 8; Gross, Fig. 2).

PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
A claim is unpatentable under 35 U.S.C. § 103(a) if, “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
Appeal 2009-000014
Application 10/917,045

6
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).
Rigid application of a “teaching, suggestion, motivation” test for
nonobviousness is incompatible with Supreme Court precedent. KSR Int’l,
550 U.S. at 419. The Examiner thus need not establish the existence of a
teaching, suggestion, and motivation in combining teachings from prior art
references, rather, the Examiner must provide an articulated reasoning with
some rational underpinning to support a legal conclusion of obviousness. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out
precise teachings directed to the specific subject matter of the claim but can
take into account the inferences and the creative steps that a person of
ordinary skill in the art would employ. KSR Int’l, 550 U.S. at 418.

ANALYSIS
Appellant argues claims 1, 2, 4, and 5 as a group, with no separate
arguments presented for any of the claims. Claim 1 will be taken as the
representative claim for the group, with the remaining claims standing or
falling with claim 1. 37 C.F.R. §41.37(c)(1)(vii) (2009).
Appellant contends that the claim elements directed to a spiral conduit
having a cross-section that progressively increases in area, and includes an
output nozzle with a narrowing cross-section, in combination, is not found in
the cited references, whether viewed individually or in combination.
(Appeal Br. 5). The Examiner found that Kinsworthy discloses a spiral
volute having a cross-section that increases progressively from an input to an
output conduit, and that it would have been obvious to modify the drying
Appeal 2009-000014
Application 10/917,045

7
apparatus in Gross to have such a feature, in order to increase the efficiency
of the airflow and the efficiency of the fan or blower. (Answer 3-5).
In assigning error to the combined teachings of Gross and
Kinsworthy, Appellant argues that Kinsworthy does not disclose a spiral
conduit having a cross-section that progressively increases from the input to
the output of the conduit. (Appeal Br. 5). More specifically, Appellant
contends that, in Kinsworthy, the axial input opening 13 is at least as big as
the output. (Id.). Regardless of the accuracy of that contention, it is not
germane to the claim and rejection at hand, in that the claim calls for the
cross-section of the spiral conduit to increase from the input to the output.
The axial input opening in the Kinsworthy blower is not a cross-section of
the spiral conduit. (FF 1). Kinsworthy clearly discloses, as pointed out by
the Examiner, that the spiral conduit portion of the blower assembly,
“extends from adjacent the lip 25 around the blower wheel 12 expanding
axially and radially until it terminates in the outlet duct 28.” (FF 2). We are
thus not persuaded that Kinsworthy fails to disclose the claimed spiral
conduit having an increasing cross-section.
Appellant challenges the propriety of combining the teachings of
Gross and Kinsworthy, asserting that the Examiner’s stated rationale, to
increase the efficiency of the fan, is not a specific kind of motivation
required to combine references. (Appeal Br. 5). As evidenced later in the
Appeal Brief, Appellant’s arguments are founded in the belief that a
“rigorous application of the requirement for a showing of a teaching or
motivation to combine the prior art references” is the appropriate standard
for determining whether the Examiner erred in reaching the conclusion that
the claimed invention would have been obvious. (Appeal Br. 6). The
Appeal 2009-000014
Application 10/917,045

8
Supreme Court, in KSR, specifically held that a rigid or mandatory
application of a “teaching, suggestion, motivation” test is inconsistent with
its precedent.1 KSR Int’l, 550 U.S. at 419.
The Examiner, in order to meet the burden of establishing a prima
facie case of obviousness, must provide an articulated reason to combine
teachings or modify one prior art device in view of one or more other
teachings, and that reasoning must have some rational underpinning. In re
Kahn, 441 F.3d at 988. The Examiner states that the reason to modify Gross
in view of Kinsworthy is to increase the efficiency of the fan. (Answer 4-5).
Appellant does not contest that the proposed modification would so increase
the fan’s efficiency. (FF 3). The Examiner supports the stated rationale to
combine the teachings with specific citations to the Kinsworthy disclosure
regarding the volute configuration as being responsible for preventing the
formation of vortexes and providing a substantially constant pressure in the
volute, both asserted by the Examiner as contributing to increased efficiency
of the fan. (Answer 4-5). Appellant does not contest that the evidence
relied upon by the Examiner provides a rational underpinning for the
reasoning advanced.
Appellant posits that, if increasing the efficiency of a motor [sic, fan]
were a valid rationale for combining references in an obviousness rejection
of a combination patent, there would be very few combination patents
granted. (Appeal Br. 5). The number of patents that might or might not be
granted for any particular reason is not a factor in assessing the obviousness

1 The Appeal Brief (“Second Amended Brief on Appeal”) was filed on May
7, 2007, approximately one week subsequent to the date of the Supreme
Court decision in KSR.
Appeal 2009-000014
Application 10/917,045

9
or non-obviousness of a claimed invention. We do note that increasing the
efficiency of a fan or motor clearly qualifies, under appropriate conditions,
as a rationale for combining references. In KSR, the Supreme Court noted
that any of: (a) a simple substitution of one known element for another to
obtain predictable results; (b) the use of a known technique to improve
similar devices (methods, or products) in the same way; and/or (c) applying
a known technique to a known device (method, or product) ready for
improvement to yield predictable results, can support a conclusion of
obviousness. KSR Intl, 550 U.S. at 416-17. In addition, the Federal Circuit
has repeatedly held that, “an implicit motivation to combine exists not only
when a suggestion may be gleaned from the prior art as a whole, but when
the ‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable,
or more efficient.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)(emphasis added).
Here, the modification of the Gross dryer to have a spiral air conduit
that increases in cross-sectional dimension from input to outlet, in order to
improve the efficiency of the fan, appears to satisfy each and every one of
the three rationales identified in KSR, and the rationale comports with the
holding in DyStar.
The Examiner concluded that it would have been obvious, in view of
Ranz, to mount the fan motor of Gross at the air inlet in order to provide a
smaller, more compact fan. (Answer 4, 6). Appellant contends that the
Examiner has cited to no evidence of such a teaching, nor does Ranz provide
Appeal 2009-000014
Application 10/917,045

10
any teaching, suggestion or motivation to modify Gross as proposed.
(Appeal Br. 6-7).
Appellant does not appear to be arguing that Ranz does not disclose a
motor located at the center of the volute and connected to the input of the
volute.2 Rather, Appellant appears to be contending that Ranz does not
explicitly teach that its motor/volute arrangement results in a smaller, more
compact fan. What a reference explicitly teaches is not, however, the
limiting factor in an obviousness analysis. A reference must be considered
not only for what it expressly teaches, but also for what it fairly suggests. In
re Baird, 16 F.3d 380 (Fed. Cir. 1994). A person of ordinary skill in the art
would recognize, from at least the drawing figures of Ranz (see, e.g., Fig. 8),
that a motor whose axial extent is at least in part surrounded by the blower
volute would be more compact in size than an arrangement, such as that in
Gross, in which the motor is completely disposed externally to the blower
volute. The Ranz blower assembly thus suggests that a more compact
arrangement is made possible by mounting the motor to extend at least
partially into the inlet of the volute. (FF 5).
Appellant’s apparent insistence on requiring that a specific teaching,
suggestion or motivation to combine the teachings of Ranz with those of
Gross and Kinsworthy be established is, as discussed above, not consistent
with Supreme Court precedent. The Examiner has stated a rationale for
employing the teaching or suggestion in Ranz in modifying the construction

2 To the extent that this is an argument Appellant is advancing, the Ranz
patent appears to clearly show such a structure (FF 4), and Appellant has not
specified why the Ranz motor/volute arrangement can not be construed as
meeting those claim elements.
Appeal 2009-000014
Application 10/917,045

11
of the Gross dryer. Appellant has not demonstrated that the reasoning or
rationale is flawed, or that it lacks any rational underpinning.
The Examiner further concluded that it would have been obvious, in
view of the Tozier patent, to further modify the dryer device of Gross to
include a nozzle at the outlet in order to provide a more concentrated airflow
at a higher velocity to allow for quicker drying. (Answer 4, 6). Appellant
argues that Gross does not teach or suggest a nozzle, and that the test for
obviousness is not simply finding each element of a claimed invention in a
separate piece of prior art. (Appeal Br. 7). Appellant further invokes the
tenet that the claimed subject matter cannot be used as a blueprint to piece
together isolated prior art teachings. (Id.).
We do not disagree with any of Appellant’s above contentions,
however they do not, individually or collectively, demonstrate that the
Examiner erred in concluding that it would have been obvious to modify the
Gross dryer device to include a nozzle. The Examiner does not rely on
Gross as teaching or suggesting the provision of a nozzle on the device; that
teaching is found in the Tozier patent. Appellant’s contentions directed to
the obviousness inquiry and the prohibition against using the claims as a
blueprint are accurate in the abstract, but Appellant does not elaborate as to
how or why those point to error in the specific ground for rejection at hand.
More particularly, as was the case with the combination of the Ranz patent
with Gross, Appellant has not shown that the articulated reasoning is flawed
or that it lacks any rational underpinning.
Appellant separately discusses independent claim 7 and claim 8
depending therefrom, however the argument presented is identical to one
presented with respect to claim 1, namely that the cited combination of
Appeal 2009-000014
Application 10/917,045

12
references does not teach providing a volute having a cross-section which
progressively increases from the input to an output conduit and passing the
air from the output conduit through a nozzle whose cross-sectional area
progressively narrows to an output nozzle. As discussed above with respect
to claim 1, and for the same reasons, we are not persuaded of error in the
Examiner’s findings and conclusion directed to claims 7 and 8.

CONCLUSION
Appellant has not established that the Examiner erred in rejecting
claims 1, 2, 4, 5, 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Gross, Kinsworthy, Ranz and Tozier.
DECISION
The decision of the Examiner to reject claims 1, 2, 4, 5, 7 and 8 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) (2007).

AFFIRMED

mls

MICHAEL J. BUCHENHORNER
701 BRICKELL AV. #3000
MIAMI, FLORIDA 33131