Ex Parte Hirst

Board of Patent Appeals and Interferences

Feb 25, 2002

08704217 (B.P.A.I. Feb. 25, 2002)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte B. MARK HIRST
____________
Appeal No. 2000-0946
Application No. 08/704,217
____________
ON BRIEF
____________
Before ABRAMS, STAAB and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4.
Claims 6-11 stand allowed and claim 5 stands objected to as depending from a rejected
claim. No other claim is pending in this application.
BACKGROUND
The appellant’s invention relates to power control systems and, more particularly,
to a method and apparatus for determining the source voltage supplied to
a resistive heating element (specification, page 1). Representative claim 1 is
reproduced infra in the opinion section of this decision.
Appeal No. 2000-0946
Application No. 08/704,217
Page 2
1 The examiner has withdrawn the other rejections, based on Hinman and Chidzey, set forth in the
final rejection. See page 3 of the answer.
The following prior art references have been relied upon as evidence of
obviousness in the rejections before us on appeal:
Oishi et al. (Oishi) 4,432,211 Feb. 21, 1984
Tamura et al. (Tamura) 4,549,073 Oct. 22, 1985
The following are the only rejections before us on appeal.1
(1) Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Tamura.
(2) Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Oishi.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and answer (Paper Nos. 6 and 10) for the examiner's complete reasoning in
support of the rejections and to the brief (Paper No. 9) for the appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
Appeal No. 2000-0946
Application No. 08/704,217
Page 3
respective positions articulated by the appellant and the examiner. For the reasons
which follow, we shall sustain both of the examiner’s rejections.
Pursuant to the claim groupings set forth on page 4 of appellant’s brief and in
accordance with 37 CFR § 1.192(c)(7), we shall decide the appeal of rejections (1) and
(2) on the basis of representative claim 1, with claims 2-4 standing or falling therewith.
Representative claim 1 reads as follows:
1. An apparatus for determining a voltage of a power
source, said apparatus comprising:
a heating element;
a means for sensing a temperature of said heating
element; and
a controller means for allowing a portion of power
from said power source to said heating element, said
controller means through said means for sensing measuring
a rate of change in said temperature of said heating
element, said voltage being proportional to said rate of
change.
In rejecting claim 1 as being unpatentable over each of Tamura and Oishi, the
examiner finds that each of these patents discloses a heating element (resistive heating
element 2 of Tamura; heater 20 of Oishi), means for sensing the temperature of
the heating elements (resistance sensing means 8 of Tamura; the current detecting
circuit of Oishi) and a controller for determining the rate of change of temperature in the
heating elements via the temperature sensing means. According to the examiner,
[i]t should be noted that if the supply voltage increases or
decreases then a proportion would exist between the voltage
input and the rate of change detected. For instance, it is
obvious and inherent that if the voltage input increased then
Appeal No. 2000-0946
Application No. 08/704,217
Page 4
the rate of change of temperature would proportionately
increase [final rejection, page 3].
Although the rejections before us are obviousness rejections under 35 U.S.C. §
103(a), the examiner’s position appears to be that all of the limitations of claim 1 are
met by each of the applied patents. The examiner’s statements on pages 4 and 5 of
the answer to the effect that the rate of change in heating element temperature sensed
by Tamura and Oishi is proportional to the input voltage over the heating element clarify
that the examiner has determined that the limitation “said voltage being proportional to
said rate of change” in claim 1 is met by each of Tamura and Oishi.
Tamura discloses a current controller for a resistive heating element wherein a
sensing current generator 6 supplies a sensing current IS to the heating element 2 for
use by the resistance measuring means 8 in measuring the resistance (and hence the
temperature) of the heating element. As explained in column 9, line 16, through column
10, line 68, upon initialization of the controller, prior to a calibration phase, the
controller measures the slope of the resistance measurements as a function of time
using a slope detection circuit 174 to determine whether the heating element is at
ambient temperature. Once the resistance of the heating element at ambient
temperature has been determined and stored and the controller calibrated to precisely
ascertain temperature from measured resistance in accordance with equation (1) in
column 2 of Tamura, a heating current supply 4 supplies a heating current IH to the
heating element to raise the temperature of the heating element. Periodically, the
Appeal No. 2000-0946
Application No. 08/704,217
Page 5
heating current supply IH is cut off from the heating element and the sensing current IS
is supplied to the heating element so that the resistance measuring means can
measure the resistance to determine whether the desired heating element temperature
has been reached.
Appellant does not challenge the examiner’s findings that Tamura discloses a
heating element, means for sensing temperature of the heating element and a
controller means for measuring a rate of change in temperature of the heating element
through the means for sensing temperature (see brief, pages 10 and 11). However,
appellant contends that, because Tamura “fails to teach or suggest the rate of
temperature change is detected while the power is active, as required in claim 1,” the
examiner’s rejection is improper (brief, page 11). This characterization of Tamura is, of
course, inaccurate, as the rate of change of resistance (temperature) is determined
while the sensing current generator 6 supplies sensing current IS to the heating
element, that is, while the power is active. Further, the examiner’s determination that
the rate of change sensed by Tamura’s slope detection circuit is proportional to the
input voltage applied across the heating element during the supply of sensing current IS
thereto appears reasonable on its face and has not specifically been challenged by
appellant.
Appellant’s argument (brief, page 11) that Tamura fails to teach or suggest that,
by measuring the rate of temperature change of the heating element while the power
Appeal No. 2000-0946
Application No. 08/704,217
Page 6
2 Claim 1 is distinct from allowed claim 6 in this regard.
3 The preamble of a claim does not limit the scope of the claim when it merely states a purpose or
intended use of the invention. See In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994).
4 To anticipate, every element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation v. Genentech, Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). It is not necessary that the reference
teach what the subject application teaches, but only that the claim read on something disclosed in the
reference, i.e., that all of the limitations in the claim be found in or fully met by the reference. Kalman v.
Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
supply is activated, the power source voltage can be determined is unavailing, as claim
1 does not positively recite a controller means which uses the rate of temperature
change to determine the power source voltage.2 It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982). The language in the preamble of claim 1
“for determining a voltage of a power source,” merely sets forth an intended use of the
claimed apparatus and does not constitute positive recitation of structure for carrying
out such use.3
After reviewing the Tamura patent in light of the arguments in appellant’s brief,
we conclude that Tamura discloses each and every element recited in appellant’s claim
1. A disclosure that anticipates4 under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of obviousness."
Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See
Appeal No. 2000-0946
Application No. 08/704,217
Page 7
also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974). Thus, the
examiner’s rejection of representative claim 1, as well as claims 2-4 which are grouped
therewith, as being unpatentable over Tamura is sustained.
Turning now to the examiner’s rejection of claims 1-4 as being unpatentable over
Oishi, we note that Oishi measures the current flowing through a defrosting heater 20
and calculates the gradient or rate of decrease of the current to determine the point A,
as shown in Figure 4, at which the frost begins to melt and the point B, as shown in
Figure 4, at which frost removal is completed. Appellant (brief, pages 11-12) concedes
that the examiner
is correct in that Oishi, appears to disclose a heating
element (20), means for sensing the temperature of the
heating elements (22, 23), and a controller for determining
the rate of change of temperature of the heating elements
via the temperature sensing means (23, 24).
However, appellant argues on page 12 of the brief that the examiner’s obviousness
rejection should be reversed because: (1) Oishi fails to teach or suggest that by sensing
the rate of change the supply voltage can be determined, (2) there is no teaching in
Oishi that the voltage of the power source can vary, (3) Figure 4 clearly shows that the
rate of change of the temperature of the heating element is not proportional to the
supply voltage, and (4) the Oishi reference is not analogous art with respect to
appellant’s invention.
Appeal No. 2000-0946
Application No. 08/704,217
Page 8
Appellant’s first argument is not persuasive of any error on the examiner’s part
because, as discussed supra, claim 1 does not positively recite structure for
determining or calculating supply voltage from the measured rate of temperature
change. As for appellant’s second argument, we perceive no requirement in claim 1
that the power source provide a variable voltage.
Appellant’s statement that Figure 4 shows that the rate of change of the heating
element temperature is not proportional to the supply voltage is not well founded. While
appellant appears to be correct that the voltage applied to the heating element is kept
essentially constant, the changing slope of the current vs. time curve merely
illustrates that the rate of temperature change is a function of other variables, such as
melting of frost on the heating element, for example, in addition to the source voltage.
This is not inconsistent with the examiner’s finding that the rate of temperature change
is proportional to the source voltage. The supply of a higher voltage, and consequently
a higher current, to the heating element would reasonably be expected to increase the
temperature of the heating element at a higher rate, thereby also increasing the
resistance of the heating element at a higher rate. While the curve in Figure 4 does
flatten out (i.e., zero slope), regardless of voltage, over certain portions thereof, such as
during the melting of the frost, for example, claim 1 does not require that the voltage be
proportional to the rate of temperature change at all times or for any particular length of
time.
Appeal No. 2000-0946
Application No. 08/704,217
Page 9
Finally, notwithstanding appellant’s argument that Oishi is not analogous art with
respect to appellant’s invention, appellant has not offered any explanation in support of
this contention. Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d
1058, 1060 (Fed. Cir. 1992). See also In re Deminski, 796 F.2d 436, 442, 230 USPQ
313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). We are informed by the present specification (page 1, line 14) that
appellant’s invention “relates generally to power control systems.” Likewise, the Oishi
patent relates to a power control system for controlling the power applied to a heating
element of a defrosting apparatus. We therefore consider Oishi and appellant’s
invention to be from the same field of endeavor. Moreover, even if Oishi were not
considered to be from the same field of endeavor as appellant’s invention, Oishi is
generally concerned with the same problem addressed by appellant, namely,
monitoring the temperature response of a resistive heating element to ensure that only
the necessary power is applied to the resistive heating element, and thus still is
reasonably pertinent to the particular problem with which appellant is involved.
Appeal No. 2000-0946
Application No. 08/704,217
Page 10
Accordingly, we conclude that the Oishi patent is analogous art with respect to
appellant’s invention.
For the foregoing reasons, the arguments in appellant’s brief do not persuade us
of any error in the examiner’s determination that the subject matter of claim 1 is
unpatentable over Oishi. Therefore, rejection (2) is sustained as to claim 1, as well as
claims 2-4 which are grouped therewith.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-4 under 35 U.S.C.
§ 103(a) is affirmed.
Appeal No. 2000-0946
Application No. 08/704,217
Page 11
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
jdb/vsh
Appeal No. 2000-0946
Application No. 08/704,217
Page 12
HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400