Ex parte Elliott

Board of Patent Appeals and Interferences

Sep 13, 2001

09110348 (B.P.A.I. Sep. 13, 2001)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANK S. ELLIOTT
____________
Appeal No. 2001-1355
Application No. 09/110,348
____________
ON BRIEF
____________
Before McQUADE, NASE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Frank S. Elliott appeals from the final rejection (Paper
No. 15) of claims 1 through 5, 7 through 9 and 11, all of the
claims pending in the application.
THE INVENTION
The invention relates to a “portable apparatus for
cooling and heating air in a room or the like and, more
particularly, to the cooling of air by using ice and ice water
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Application No. 09/110,348
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for cooling through a heat exchanger” (specification, page 1).
Representative claim 1 reads as follows:
1. Apparatus for cooling an area comprising in
combination:
housing means for holding a quantity of liquid cooling
medium including an insulated wall, a bottom wall, and a rim;
a support wall disposed on the rim of the housing means
and removable for adding the liquid cooling medium to the
housing;
a liquid cooling medium in the housing means below the
support wall;
a heat exchanger disposed on the support wall above the
liquid cooling medium;
pump means for pumping the liquid cooling medium to the
heat exchanger;
means for circulating air through the heat exchanger and
to the area to be cooled; and
a top closing the housing means and disposed on the
support wall and the housing means and enclosing the heat
exchanger and the means for circulating air, and removable
with the support wall for adding the liquid cooling medium to
the housing.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Karge 2,198,822 Apr. 30, 1940
MacCracken 2,885,189 May 5, 1959
Little 4,821,354 Apr. 18, 1989
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THE REJECTIONS
Claims 1 through 5, 7 and 8 stand rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter the
appellant regards as the invention.
Claims 1 through 5, 7 through 9 and 11 stand rejected
under 35 U.S.C. § 112, first paragraph, as being based on a
specification that fails to comply with the written
description requirement of this section of the statute.
Claims 1 through 4 and 7 through 9 stand rejected under
35 U.S.C. § 103 as being unpatentable over Karge in view of
MacCracken.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Karge in view of MacCracken and
Little.
Attention is directed to the appellant’s brief (Paper No.
19) and to the examiner’s answer (Paper No. 20) for the
respective positions of the appellant and the examiner with
regard to the merits of these rejections.
DISCUSSION
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I. The 35 U.S.C. § 112, second paragraph, rejection of claims
1 through 5, 7 and 8
We shall summarily sustain this rejection inasmuch as the
appellant has not challenged the examiner’s contention that
claims 1 through 5, 7 and 8 are indefinite due to a lack of
proper antecedent basis for the term “the housing” in parent
claim 1.
II. The 35 U.S.C. § 112, first paragraph (written
description), rejection of claims 1 through 5, 7 through 9 and
11
This rejection rests on the examiner’s determination that
“[r]egarding claims 1 and 9, the originally filed
specification failed to disclose a removable support wall and
a top/dome removable with the support wall” (answer, page 3).
As indicated above, independent claim 1 recites a cooling
apparatus comprising, inter alia, a removable support wall
disposed on the rim of the housing means and a top disposed on
the support wall and removable with the support wall for
adding liquid cooling medium to the housing (means).
Independent claim 9, which recites a dome instead of a top,
contains similar limitations.
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The test for compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The content of the drawings may also be considered in
determining compliance with the written description
requirement. Id.
Although the appellant’s original disclosure does not
expressly describe the support wall 50 or the top/dome 30, 32,
as being removable from the housing 12, it stands to reason
that these elements are necessarily removable to allow ice
blocks 90 to be placed in the housing. The recitation that
the top or dome is removable “with” the support wall merely
signifies that both
elements are removable, and not, as implied by the examiner,
that they are somehow structurally interrelated for joint
removal. Thus, the disclosure of the application as
originally filed would reasonably convey to the artisan that
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the appellant had possession at that time of a cooling
apparatus comprising a removable support wall and top/dome as
recited in independent claims 1 and 9.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, rejection of claims 1 and 9, or of
dependent claims 2 through 5, 7, 8 and 11.
III. The 35 U.S.C. § 103 of claims 1 through 4 and 7 through 9
as being unpatentable over Karge in view of MacCracken
Karge, the examiner’s primary reference, discloses “an
apparatus that melts ice for the purpose of air conditioning
or cooling and drying the atmosphere of a room” (page 1,
column 1, lines 1 through 4). As shown in Figures 1 through
3, the apparatus includes an ice chest 1 having a side access
door 2, blocks of ice 4-8 within the chest, tanks 10 and 12
for receiving and holding cold water derived from the ice,
pumps 19 and 25 for drawing water from the respective tanks,
and a fan and air conditioning unit housing 22 having a
support wall mounting coils 21 and 28 for receiving cold water
from the pumps and a fan 43 for moving air into housing 22,
through the coils and out through a grille 44 into the
surrounding room.
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As conceded by the examiner (see pages 4 and 5 in the
answer), the Karge apparatus does not meet the limitations in
claims 1 and 9 requiring the support wall to be removably
disposed on the rim of the housing means and the top/dome to
be disposed on and removable with the support wall for adding
liquid cooling medium (water and ice) to the housing means.

MacCracken discloses a personal thermal device “in which
liquid is circulated through a flexible panel for supplying
heat to or carrying heat away from a person’s body” (column 1,
lines 17 through 19). The device includes a circulator 14
which communicates with the flexible panel 10 through a pair
of flexible tubes 12. The circulator comprises a container 22
for holding the cooling/heating liquid, a removable threaded
cover 26 which allows the container to be filled or recharged
with the liquid, a pump 28 mounted on the cover for
circulating the liquid between the container and the flexible
panel, and a protective hood 31 carried by the cover.
In proposing to combine Karge and MacCracken to reject
independent claims 1 and 9 (see pages 4 and 5 in the answer),
the examiner concludes that it would have been obvious in view
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of MacCracken’s disclosure of a removable top (hood 31) and
support wall (cover 26) on the rim of a housing (container 22)
to employ a similar arrangement in the Karge apparatus to
facilitate replacing or installing the cooling medium.
Obviousness cannot be established by combining prior art
absent some teaching or suggestion supporting the combination;
in other words, the mere fact that prior art may be modified
in a manner proposed by an examiner would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The
proposed combination of Karge and MacCracken would involve a
complicated and extensive reconstruction of the Karge
apparatus beginning with the placement of the air conditioning
and fan unit housing 22 over the ice chest 1. The alleged
incentive for this dubious change, to facilitate the
installation or replacement of the cooling medium, does not
stand up in view of Karge’s side access door 2 which would be
far superior to the removable support wall and top/dome
embodied by the proposed modification in terms of easy
addition and replacement of the cooling medium. In this
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light, it is apparent that the only suggestion for combining
Karge and MacCracken so as to arrive at the invention set
forth in claims 1 and 9 stems from hindsight knowledge
impermissibly derived from the appellant’s disclosure.

Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of independent claims 1 and 9, and dependent
claims 2 through 4, 7 and 8, as being unpatentable over Karge
in view of MacCracken.
As Little’s disclosure of a portable cooling mat assembly
comprising a submersible pump does not cure the foregoing
deficiency in the basic Karge-MacCracken combination, we also
shall not sustain the standing 35 U.S.C. § 103 rejection of
claims 5 and 11 as being unpatentable over Karge in view of
MacCracken and Little.
SUMMARY
The decision of the examiner:
a) to reject claims 1 through 5, 7 and 8 under 35 U.S.C.
§ 112, second paragraph, is affirmed;
b) to reject claims 1 through 5, 7 through 9 and 11 under
35 U.S.C. § 112, first paragraph, is reversed;
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c) to reject claims 1 through 4 and 7 through 9 under 35
U.S.C. § 103 as being unpatentable over Karge in view of
MacCracken is reversed; and
d) to reject claims 5 and 11 under 35 U.S.C. § 103 as
being unpatentable over Karge in view of MacCracken and Little
is reversed.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2001-1355
Application No. 09/110,348
11
H. GORDON SHIELDS
7830 N 23RD AVENUE
PHOENIX, AZ 85021
GJH
Appeal No. 2001-1355
Application No. 09/110,348
APJ McQUADE
APJ NASE
APJ BAHR
AFFIRMED-IN-PART
June 13, 2002