Ex Parte Fry

Board of Patent Appeals and Interferences

May 25, 2011

11049391 (B.P.A.I. May. 25, 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.
11/049,391 02/03/2005 Warren C. Fry 1076
7590 05/26/2011
Warren C. Fry
108 Lebanon Church Road
Pittsburgh, PA 15236
EXAMINER
RAHIM, AZIM
ART UNIT PAPER NUMBER
3784
MAIL DATE DELIVERY MODE
05/26/2011 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 WARREN C. FRY
____________________

Appeal 2009-011827
Application 11/049,391
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and WILLIAM V.
SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011827
Application 11/049,391
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of controlling an air conditioner unit comprising:
(a) measuring an enclosed space temperature of an
enclosed space;
(b) selecting a user desired temperature-set;
(c) controlling the air conditioner unit cooling on time
and the unit off time dependent upon the temperature difference
between the enclosed space temperature and the desired
temperature-set to reduce heat within the enclosed space to
maintain the difference between the enclosed space temperature
and the desired temperature-set during the unit cooling on time.

References
The Examiner relies upon the following prior art references:
Knoll US 4,293,028 Oct. 6, 1981
Grald US 4,889,280 Dec. 26, 1989
Khadkikar US 6,079,121 Jun. 27, 2000

Rejections
I. Claims 1-7, 10-15, and 17-22 are rejected under 35 U.S.C. §
102(b) as anticipated by Grald.
II. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grald and Knoll.
III. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grald and Khadkikar.

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Application 11/049,391
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SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS of REJECTION.

OPINION
Reviewing the record before us, Appellant and the Examiner are in
disagreement over limitation (c) in independent claims 1 and 19, requiring
control of (or means to control) an air conditioner unit’s cooling on and off
time depending on the temperature difference between the temperature of an
enclosed space (e.g., a room) and a temperature-set (e.g., thermostat set
point). See, e.g., Appeal Br. 9-10; Ans. 13-14. In particular, the control
“reduce[s] heat within the enclosed space to maintain the difference”
between the two temperatures “during the unit cooling on time.” An
analysis of the claim language reveals that the root cause of the dispute
between the Examiner and Appellant is likely because claims 1 and 19 are
indefinite.
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002). If the language of a
claim is such that a person of ordinary skill in the art could not interpret the
metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 U.S.C. § 112, second
paragraph, is appropriate. Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986); Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must
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Application 11/049,391
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be provided in order to allow the public to determine the scope of the
claimed invention.”). In addition, if the claims are inherently inconsistent
with the description, definitions, and examples appearing in the
specification, a rejection of the claim under 35 U.S.C. § 112, second
paragraph, is likewise appropriate. In re Cohn, 438 F.2d 989, 993 (CCPA
1971). Because Appellant has the opportunity to amend the claims during
prosecution, broad interpretation reduces the possibility that the claim, once
issued, will be interpreted more broadly than is justified. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969); see also Ex parte Miyazaki, 89 USPQ2d
1207, 1212 (BPAI 2008) (adopting a lower threshold for ambiguity of
claims during prosecution).
Reviewing claims 1 and 19, we note that the claimed method and
system would actually prevent cooling below the measured space
temperature. According to the claims, once the two temperatures are
measured, the difference is maintained, not reduced. Thus, if a room is 75ºF
and the set point is 70ºF, the 5ºF difference must be maintained. If the room
begins heating, the air conditioning must immediately cool the room to
maintain the 5ºF difference. If the room begins cooling, the air conditioning
must immediately heat the room to likewise maintain the 5ºF difference.
Thus, the first ambiguity in this claim is that the air conditioner is required to
“reduce heat” to maintain the difference, but if the room begins cooling, the
air conditioner cannot heat the room by reducing heat. Similar anomalies
occur upon changes to the temperature-set.
An inconsistency in claims 1 and 19 becomes apparent when reading
the claims in light of the Specification. While the claims require the air
conditioning unit to “maintain the difference,” i.e., not allow the enclosed
space temperature to approach or diverge from the temperature-set, the
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Specification describes something different. We do not find any disclosure
in the Specification or claims as originally filed describing a particular
control scheme for the unit to “maintain the difference” during a cooling
cycle as claimed. Instead, the Specification describes that the unit operates
by controlling the cooling on and off time based on the temperature
difference. Spec. 9 (“cooling on and off time [is] a function of [the
temperature difference]”). In particular, looking at figure 3B, a combination
of temperature, temperature-set, and humidity are scaled to provide V1,
indicating the difference between temperature and temperature-set. Spec. 7.
This V1 is fed into the circuit of figure 3C, wherein V1 is split into V2
(representing a curved, or scaled, V1, see also, e.g., fig. 6) and through
circuitry causing V1 to be a positive value when temperature is greater than
or equal to temperature-set, called V1 >= MIN (confusingly, at times also
referred to as “V1”). Id. When V1 >= MIN is high, cooling is initiated;
when V1 >=MIN is low, cooling is stopped, unless certain time constraints
are not met. Spec. 7-8. Thus, the air conditioning unit will stop cooling
when there is no difference between the temperature and temperature-set,
i.e., the room has been cooled to the temperature-set. This is a typical
thermostat operation. In addition, however, an “on time stop” (i.e. stop
current cooling cycle) circuit stops cooling when a timer circuit hits a
specified limit, unless V2 (scaled temperature difference) is over a certain
amount, at which time the cooling continues until V2 drops below that
certain amount. Spec. 8 (presumably, this covers the condition when the
room is much hotter than the temperature-set). Thus, through various
circuitry depicted in figure 3D, the air conditioner controller provides a
duty-cycle based mode of operation when there is a temperature difference
between the sensed (enclosed space) temperature and the temperature-set.
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See, e.g., Spec. 8-10 (describing a preferred embodiment). Accordingly,
when there is a greater temperature difference (i.e., higher V2) the air
conditioner runs longer than if there is a lower temperature difference. We
find no portions of the Specification discussing a control scheme designed to
“maintain the difference” between enclosed space temperature and
temperature-set1. Instead, the Specification clearly intends the difference
between enclosed space temperature and temperature-set to vary.
Consequently, we find that limitations requiring the unit to “maintain
the difference between the enclosed space temperature and the desired
temperature-set during the unit cooling on time” in claims 1 and 19 are
ambiguous and inexplicably inconsistent with the Specification. See Cohn,
438 F.2d at 993; Orthokinetics, 806 F.2d at 1576. Claims 2-18 and 20-22
depend from claims 1 and 19 and thus contain the same indefinite language.
Because claims 1-22 are indefinite, the prior art rejections must fall because
they are necessarily based on a speculative assumption as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
Accordingly, we do not sustain any of the Examiner’s rejections under 35
U.S.C. §§ 102 and 103. It should be understood, however, that our decision
in this regard is based solely on the indefiniteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejection.
As we discuss above, we find no description in the Specification of a
device that “maintain[s] the difference between the enclosed space

1 Such a control scheme would likely require keeping V2 (scaled
temperature difference) at a certain voltage, and scaling would likely no
longer be necessary as the difference is maintained whether there is a large
difference or a small difference.
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temperature and the desired temperature-set during the unit cooling on time”
as required by claims 1 and 19. The purpose of the written description
requirement in 35 U.S.C. § 112, first paragraph, is to convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, the
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Because we find no
such description in the Specification, we find that the application does not
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, Appellant was in possession of the invention as now claimed.
Claims 2-18 and 20-22 depend from claims 1 and 19 and likewise contain
the same unsupported limitations.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-22 under 35 U.S.C. § 112, second paragraph, as indefinite and under §
112, first paragraph, for failing to comply with the written description
requirement. As explained above, claims 1 and 19 are ambiguous and
inexplicably inconsistent with the Specification. Further, claims 1 and 19
contain limitations not supported by the written description as originally
filed. Claims 2-18 and 20-22 depend from claims 1 and 19 and likewise
contain the same inconsistency and lack of written description.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-22 and enter new grounds of rejection for claims 1-22.

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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
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).

REVERSED; 37 C.F.R. § 41.50(b)

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