Ex parte HELT

Board of Patent Appeals and Interferences

Jan 31, 2001

08652740 (B.P.A.I. Jan. 31, 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for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT W. HELT
____________
Appeal No. 1999-1051
Application No. 08/652,740
____________
ON BRIEF
____________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3, 6-11,
14, 15 and 17-20, which are all of the claims pending in this application. However, in the
Answer, the examiner indicated that claims 15 and 17-20 now were considered to be
allowable, leaving claims 1-3, 6-11 and 14 before us on appeal.
We AFFIRM-IN-PART.
Appeal No. 1999-1051 Page 2
Application No. 08/652,740
BACKGROUND
The appellant's invention relates to an apparatus for generating a spark (claims 1-3
and 6-8), a gas burning appliance (claims 9-11), and a residential gas furnace (claim 14).
An understanding of the invention can be derived from a reading of exemplary claims 1, 9
and 14, which appear in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Lister 3,260,299 Jul. 12, 1966
Kaduki et al. (Kaduki) 4,073,611 Feb. 14, 1978
Wallace et al. (Wallace) 4,483,672 Nov. 20, 1984
Phillips et al. (Phillips) 5,409,373 Apr. 25, 1995
Morita et al. (Morita) 5,550,704 Aug. 27, 1996
Claims 1-3 and 6-11 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Kaduki in view of Phillips, Morita and Lister.
Claims 10 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Kaduki in view of Phillips, Morita, Lister and Wallace.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 13) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 12) for the appellant's arguments thereagainst.
Appeal No. 1999-1051 Page 3
Application No. 08/652,740
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
All of the rejections are under 35 U.S.C. § 103. The test for obviousness is what the
combined teachings of the prior art would have suggested to one of ordinary skill in the art.
See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the claimed invention. See Ex
parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite
motivation must stem from some teaching, suggestion or inference in the prior art as a
whole or from the knowledge generally available to one of ordinary skill in the art and not
from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The appellant’s invention is directed to an improvement in apparatus for generating
a spark for igniting devices such as gas appliances. It is pointed out in the specification
Appeal No. 1999-1051 Page 4
Application No. 08/652,740
that it has become common in the prior art to utilize high voltage step up transformers to
provide the operating voltage for the spark gaps in this type of apparatus, along with
sensitive microprocessors and microcontrollers to implement circuit control functions.
According to the appellant, the high voltage and the spark generated by the transformers
can give rise to electromagnetic interference (EMI), which causes the microprocessors
and microcontrollers to malfunction. It is a major objective of the claimed invention to
eliminate or reduce this problem. As manifested in independent claim 1, the invention
comprises two spaced electrodes forming a spark gap, a high voltage step up transformer
“in close proximity” and connected to the spark gap and supporting at least one of the
electrodes, a circuit that is susceptible to malfunction due to EMI “located remotely” with
respect to the spark gap and the transformer, and a shell encasing the transformer and a
“root” of the at least one electrode and providing enhanced EMI protection. Independent
claim 9 incorporates these features into a gas burning appliance.
The examiner has assembled four references to support the conclusion that the
subject matter of claim 1 is unpatentable under Section 103. The first of these is Kaduki,
which discloses, in schematic form, the required two spaced electrodes and an
unspecified type of ignition means connected to a suitable electric power source. Kaduki
makes no mention of the problem to which the appellant has directed his inventive efforts.
Kaduki does not disclose the claimed high voltage step up transformer or positively
Appeal No. 1999-1051 Page 5
Application No. 08/652,740
establish that there is an ignition means in close proximity to the spark gap. It also fails to
disclose a transformer that supports at least one of the electrodes, a circuit that is
susceptible to malfunction due to EMI and is located remotely with respect to the spark
gap and a transformer, or a shell encasing the transformer and a root of the electrode and
providing enhanced EMI protection.
According to the examiner, the use of transformers to provide the energy to create a
spark between electrodes to ignite a furnace in the prior art is disclosed by Phillips, and it
would have been obvious to one of ordinary skill in the art to utilize such a device in the
Kaduki system. We note here that the Phillips transformer is not specified as being of the
high voltage step up type, but the appellant has acknowledged on page 1 of the
specification that such has been used in the prior art. Whether the Phillips transformer is in
“close proximity” to the spark gap is open to argument, but it is clear that the transformer
does not “support” an electrode, in the context in which this is disclosed in the appellant’s
invention. There is no disclosure in Phillips from which to conclude that there is a circuit
that is susceptible to malfunction due to EMI generated by the spark gap and the
transformer, much less that it is located remote from these elements. Nor does Phillips
teach encasing a transformer and a root of an electrode in a shell to provide enhanced EMI
protection. For this, the examiner looks to Morita, directed to an ignition coil for an internal
combustion engine, which teaches insulating the primary coil and the core from high
Appeal No. 1999-1051 Page 6
Application No. 08/652,740
tension components by filling the casing in which all are contained with insulating resin, and
Lister, which discloses a transistorized fuel burner ignition system in which a transformer is
“potted” in a suitable epoxy, for unspecified reasons.
The examiner has taken elements from each of the above-described references
and combined them in such a manner as to meet the terms of the claims, apparently based
upon the fact that the individual elements recited can be found in the prior art and such
premises as the electrical circuit in Kaduki “appears to be spaced or remote” from the
transformer and spark gap and the claimed arrangements “would have been obvious” for
various reasons (Answer, pages 5 and 6). However, the mere fact that the prior art
structure could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). From our perspective, there is no teaching, suggestion or
incentive which would have led one of ordinary skill in the art to pick and choose certain
elements from each of the three secondary references and then incorporate them into the
Kaduki system in the manner proposed by the examiner other than the hindsight afforded
one who first viewed the appellant’s disclosure. This, of course, is not a proper basis for a
rejection under 35 U.S.C. § 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
Appeal No. 1999-1051 Page 7
Application No. 08/652,740
In keeping with the specification, we interpret “EMI housing” to mean a housing that1
will provide enhanced EMI protection.
It therefore is our conclusion that a prima facie case of obviousness has not been
established with regard to the subject matter recited in independent claims 1 and 9, and
we will not sustain the rejection of these claims or of claims 2, 3, 6-8, 10 and 11, which
depend therefrom.
We reach the opposite conclusion with regard to independent claim 14. This claim
is not nearly as detailed as claims 1 and 9, since it does not require a specific type of
transformer, that the transformer support at least one electrode, any particular spacing
between certain of the components, and a circuit that would be susceptible to malfunction
from EMI. Claim 14 merely recites a housing, a heat exchanger and a gas burner
operatively associated and located in the housing, a gas line providing gas to the burner, a
spark ignitor for igniting the gas in the burner, and an EMI housing substantially enclosing1
the spark ignitor.
It is our view that, except for the EMI housing, all of the elements recited in the claim
are disclosed by Kaduki, considering that it would be inherent that the apparatus therein
disclosed be located within an overall housing and that the gas flame heats some sort of a
heat exchanger that also is located in that housing, as per Wallace. It is our further view
that one of ordinary skill in the art would have found it obvious to provide an EMI housing
substantially enclosing the spark ignitor, suggestion being found in the explicit teachings of
Appeal No. 1999-1051 Page 8
Application No. 08/652,740
We are bound to consider the disclosure of a reference for what it fairly teaches2
one of ordinary skill in the art, including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would reasonably have been expected to
draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)
and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In an obviousness assessment, skill is presumed on the part of the artisan, rather3
than the lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
Morita and Lister and in self-evident advantages of separating by suitable protective2
means components which would adversely affect the performance of one another, which is
within the skill that must be accorded one of ordinary skill in the art. In this regard, Morita3
and Lister insulate components from one another by filling the casings in which they are
located with epoxy, which the artisan would have recognized was for the purpose of
protecting one from the influence of the other.
We conclude that the combined teachings of Kaduki, Phillips, Morita, Lister and
Wallace establish a prima facie case of obviousness with regard to the subject matter of
claim 14, and we will sustain the rejection of this claim. While we have carefully
considered the arguments raised by the appellant in rebuttal, we find them not to be
persuasive, noting that some of the arguments are directed to elements which are not
present in the claim, and that although none of the references explicitly mention EMI, Morita
and Lister utilize as their protective shells the same material as disclosed by the appellant,
and therefore it can be expected also to reduce EMI.
Appeal No. 1999-1051 Page 9
Application No. 08/652,740
Claim 10, which depends from independent claim 1, was rejected along with claim
1. For reasons set forth above that have to do with the lack of a prima facie case of
obviousness being established with regard to claim 1, we did not sustain that rejection of
claim 10. The examiner also has chosen to reject claim 10 along with claim 14. Although
we have sustained the rejection of claim 14, we will not sustain the second rejection of
claim 10, in view of the fact that further consideration of Wallace fails to overcome the
problems we found with the rejection of parent claim 1.
SUMMARY
The rejection of claims 1-3 and 6-11 as being unpatentable over Kaduki in view of
Phillips, Morita and Lister is not sustained.
The rejection of claim 10 as being unpatentable over Kaduki in view of Phillips,
Morita, Lister and Wallace is not sustained.
The rejection of claim 14 as being unpatentable over Kaduki in view of Phillips,
Morita, Lister and Wallace is sustained.
The decision of the examiner is AFFIRMED-IN-PART.
Appeal No. 1999-1051 Page 10
Application No. 08/652,740
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 1999-1051 Page 11
Application No. 08/652,740
THE TRANE COMPANY
PATENT DEPARTMENT 12-1
3600 PAMMEL CREEK ROAD
LA CROSSE , WI 54601
APPEAL NO. 1999-1051 - JUDGE ABRAMS
APPLICATION NO. 08/652,740
APJ ABRAMS
APJ STAAB
APJ COHEN
DECISION: AFFIRMED-IN-PART
Prepared By:
DRAFT TYPED: 14 Aug 01
FINAL TYPED: