Ex Parte Goel et alDownload PDFPatent Trial and Appeal BoardDec 29, 201612566535 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 12/566,535 09/24/2009 Rakesh Goel P080207 2576 116992 7590 01/03/2017 T p.nnoY International Tne EXAMINER c/o Hubbard Johnston, PLLC DECKER, PHILLIP 4849 Greenville Ave., Suite 1490 Dallas, TX 75206 ART UNIT PAPER NUMBER 3749 NOTIFICATION DATE DELIVERY MODE 01/03/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket-rj @hubbardjohnston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAKESH GOEL, STEVE STANLEY, and ERROLL L. EATON Appeal 2015-002575 Application 12/566,535 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and ARTHUR M. PESLAK, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rakesh Goel et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter NEW GROUNDS OF REJECTION. 1 Lennox Industries, Inc. is identified as the real party in interest. Appeal Br. 3. Appeal 2015-002575 Application 12/566,535 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An air blower validator, comprising: an air pressure detector including a first pressure port configured to receive air from inside an air blower housing of an HVAC system; and an air collector configured to deliver said air to said first pressure port, said air collector including a single pressure tap configured to couple to an opening in said air blower housing. Appeal Br. 15 (Claims App.). REJECTIONS 1. Claims 1,2, 4—10, 13—17, and 19—21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schwank (US 2009/0241943 Al, published Oct. 1, 2009) and Conner (US 5,839,374, issued Nov. 24, 1998). 2. Claims 3,11, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schwank, Conner, and Hirano (JP 10-115535 A, published May 6, 1998). 3. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schwank, Conner, and Applicants’ Admitted Prior Art (“AAPA”). Obviousness of claims 1, 2, 4—10, 13—17, and 19—21 Independent claims 1, 8, and 16 Claim 1 recites an air blower validator, “comprising” “an air pressure detector” and “an air collector . . . including a single pressure tap configured to couple to an opening in said air blower housing.” Appeal Br. 15 (Claims App., emphasis added). The Examiner finds that Schwank discloses air collector 180 including elements 174, 176 and pressure taps 196, 198. Final Act. 3 (citing Schwank 145, Fig. 10). The Examiner determines that 2 Appeal 2015-002575 Application 12/566,535 Schwank does not disclose that the air collector includes “a single pressure tap.” Id. The Examiner finds that Conner teaches an air collector including a single pressure tap 48. Final Act. 3 (citing Conner, Fig. 1). The Examiner concludes that it would have been obvious to modify Schwank to include a single pressure tap, as taught by Conner. Id. Figure 10 of Schwank depicts a blower 22 including first pitot tube 174 and second pitot tube 176. Schwank 146, Figs. 10—12. First pitot tube 174 includes pressure sensing end 196, and second pitot tube 176 includes pressure sensing end 198. Id. 46-47, Fig. 10. First pitot tube 174 is adapted to measure impact pressure by the blower, and second pitot tube 176 is adapted to measure static pressure. Id. 147. Schwank describes that each of the pitot tubes 174 and 176 is operatively connected to one of the differential pressure switches 170, 172 that control the operation of the burner assembly. Id. 45, 47, Fig. 14. Appellants contend that the Examiner’s proposed modification of Schwank with Conner would change the principle of operation of Schwank. Appeal Br. 5. According to Appellants, Schwank requires two sensing ports. Id. at 6. Appellants contend that Schwank discloses “that the pitot tube assembly and, in particular, the pitot tubes, are adapted to sense pressure changes and to provide details of these changes to the differential pressure switches.” Id.; see Schwank 147. Appellants contend that Schwank’s principle of operation “is to use two separate pressure tans to sense two separate pressures (impact and static) used with the differential pressure switches.” Id. Appellants assert that modifying Schwank to use a single pressure tap, “at a minimum, would clearly change the principle of operation . . . since Schwank requires sensing both static and impact pressures in order 3 Appeal 2015-002575 Application 12/566,535 to ‘control operation of the burner assembly.’” Id. Appellants also contend that the proposed modification of Schwank would render Schwank unsatisfactory for its intended purpose. Id. at 8. Claim 1 calls for “an air collector” that includes “a single pressure tap.” Although Schwank’s blower 22 shown in Figure 10 includes first pitot tube 174 and second pitot tube 176, we construe “an air collector” in claim 1 to read on first pitot tube 174 alone, rather than both first pitot tube 174 and second pitot tube 176. First pitot tube 174 is coupled to an opening in blower housing 78, and inner leg section 192 and pressure sensing end 196 are located inside blower housing 78. See Schwank 146, Fig. 10. First pitot tube 174 delivers air from inside blower 22 to an associated pressure switch via a tube. See id. ]Hf 45, 47. Accordingly, first pitot tube 174 and the corresponding pressure switch and tube described in Schwank meet all limitations of the air blower validator recited in claim 1. Thus, we disagree with the Examiner and Appellants that Schwank requires any modification in view of Conner to meet the limitations of claim 1. As noted above, claim 1 recites the transition term “comprising.” This term is open-ended and does not exclude additional, unrecited elements. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). The article “an” means “one or more,” absent clear evidence to the contrary. See KCJ Corp. v. Kinetic Concepts, 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article”). Appellants have not established a clear intent to limit “an air collector” to “a single air collector.” Accordingly, the recitation of the transition term “comprising” 4 Appeal 2015-002575 Application 12/566,535 and “an air collector” in claim 1 does not exclude a prior art element that includes these elements, but may include additional features. For example, because claim 1 does not recite “a single air collector,” it does not exclude an air blower validator that includes more than one “air collector.” Accordingly, even if Schwank’s second pitot tube 176 is considered an “air collector,” claim 1 does not exclude second pitot tube 176. For the above reasons, Appellants do not show persuasively that Schwank fails to disclose any limitation of the air blower validator recited in claim 1. In other words, we find that Schwank anticipates claim 1, and thus, renders the claimed air blower validator unpatentable even without the Examiner’s reliance on Conner’s teaching of a single pressure tap. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of obviousness.). Consequently, we sustain the Examiner’s rejection of claim 1. However, because our analysis differs from the Examiner’s, we designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellants with a fair opportunity to respond. For claims 8 and 16, Appellants rely on the same arguments for patentability as those presented for claim 1. Appeal Br. 10. Consequently, we sustain the rejection of claims 8 and 16 for the same reasons as those discussed for claim 1, and designate our affirmance as a new ground of rejection. Dependent claims 2, 4-7, 9, 10, 13—15, 17, and 19—21 Claims 2, 4—7, 9, 10, 13—15, 17, and 19-21 depend, directly or indirectly, from claim 1, 8, or 16. For these dependent claims, Appellants 5 Appeal 2015-002575 Application 12/566,535 rely on the same arguments for patentability as those presented for claim 1. Appeal Br. 10-11. Consequently, we sustain the rejection of claims 2, 4—7, 9, 10, 13—15, 17, and 19-21 for the same reasons as those discussed for claims 1, 8, and 16, and designate our affirmance as a new ground of rejection. Obviousness of claims 3, 11, and 18 Claims 3,11, and 18 depend directly or indirectly from claims 1, 8, and 16, respectively. For these dependent claims, Appellants rely on the same arguments for patentability presented for claims 1, 8, and 16. Appeal Br. 12—13. Thus, we sustain the rejection of claims 3,11, and 18 as unpatentable over Schwank, Conner, and Hirano for the same reasons as those discussed for claims 1, 8, and 16, and designate our affirmance as a new ground of rejection. Obviousness of claim 12 Claim 12 depends indirectly from claim 8. For claim 12, Appellants rely on the same arguments for patentability presented for claim 8. Appeal Br. 13. Thus, we sustain the rejection of claim 12 as unpatentable over Schwank, Conner, and AAPA for the same reasons as those discussed for claim 8, and designate our affirmance as a new ground of rejection. DECISION We affirm the rejection of claims 1, 2, 4—10, 13—17, and 19-21 as unpatentable over Schwank, and Conner. We affirm the rejection of claims 3,11, and 18 as unpatentable over Schwank, Conner, and Hirano. 6 Appeal 2015-002575 Application 12/566,535 We affirm the rejection of claim 12 as unpatentable over Sell wank, Conner, and AAPA. For each of these rejections, we designate our affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). FINALITY OF DECISION This decision contains new grounds 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: When the Board enters such a non-final decision, [Appellants], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] 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 prosecution will be remanded to the examiner. The new ground[s] of rejection [are] binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground[s] of rejection designated in this decision. Should the examiner reject the claims, [Appellants] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 7 Appeal 2015-002575 Application 12/566,535 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED; 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation