Ex Parte Hsu et al

Patent Trial and Appeal Board

Feb 23, 2016

12109910 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/109,910 04/25/2008
60601 7590 02/24/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Chia-Ming Hsu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
094112237PUS1 4415
EXAMINER
MCDOWELL, LIAM J
ART UNIT PAPER NUMBER
PTAB
MAILDATE DELIVERY MODE
02/24/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHIA-MING HSU and SHUN-CHEN CHANG
Appeal2014-001100
Application 12/109,9101
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision of March 5, 2013, rejecting claims 1, 2, 4--17, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Delta Electronics,
Inc. Appeal Br. 2.
Appeal2014-001100
Application 12/109 ,910
Illustrative Claim
1. A frame, comprising:
a main body having an airflow inlet and an airflow outlet;
and
a plurality of guiding elements disposed in the main body
and located at the airflow outlet, wherein each of the guiding
elements comprises an inclined part and an axial extended part,
and the inclined part meets the axial extended part at an angle;
wherein the inclined part has a first height, the axial
extended part has a second height, and a ratio of the first height
to the second height is between 0.2 and 5;
wherein the axial extended part of each of the guiding
elements guides airflow away from the frame in a direction
perpendicular to a radial direction of the airflow outlet, and the
axial extended part is parallel to a vertical direction of the
airflow outlet.
Appeal Br. 12, Claims App.
The Cited References
Capdevila et al. US 5,577,888
(hereinafter "Capdevila")
Lin et al. US 7,238,004 B2
(hereinafter "Lin")
Chen CN 2679401
The Rejections
Nov. 26, 1996
July 3, 2007
Feb. 16,2005
The Appellants seek review of the following rejections:
I. The rejection of claims 1, 2, 5-7, 9-12, 14--16, and 20 under 35
U.S.C. § 102(b) as anticipated by Capdevila or, in the alternative, under 35
U.S.C. § 103(a) as unpatentable over Capdevila. Final Action 3-9.
II. The rejection of claims 1, 5-7, and 10 under 35 U.S.C. § 102(b)
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as anticipated by Chen. Final Action 10-12.2
III. The rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Capdevila. Final Action 12-14.
IV. The rejection of claims 8 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Capdevila in view of Lin. Final Action 14--15.
ANALYSIS
Rejection I
On appeal, the Appellants have grouped claims 1, 2, 5-7, 9-12, 14--
16, and 20 together. Appeal Br. 6-8. The discussion herein is directed to
claim 1 alone. See 37 C.F.R. § 41.37(c)(iv).
The Examiner found that Capdevila discloses all the limitations of
claim 1 and, specifically - relying upon measurements made from
Capdevila's Figure 4- each "guiding element" having "a ratio of the first
height to the second height ... between 0.2 and 5." Final Action 4.
The Appellants argue that the Examiner erred because measurements
of Capdevila's Figure 4 may not be relied upon for such teaching, as Figure
4 is not drawn to scale. Appeal Br. 6-7.
The sole issue on appeal, as to Rejection I, is whether the Examiner
properly relied upon Capdevila's Figure 4, although not drawn to scale, for
teaching that "a ratio of the first height to the second height is between 0.2
and 5," as claimed. As explained below, the Examiner properly relied upon
Figure 4 of Capdevila and thus the rejection of claim 1 is sustained.
2 Claims 1, 5-7, and 10 were also rejected, in the alternative, under 35
U.S.C. § 103(a) as unpatentable over Chen (Final Action 10-12); however,
the Examiner has withdrawn this alternative rejection (Answer 6).
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Application 12/109 ,910
Drawings, like references in any other form, are "evaluat[ ed] and
appl[ied] ... on the basis of what they reasonably disclose and suggest to
one skilled in the art." In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)
(quoting In re Baum, 374 F.2d 1004, 1009 (CCPA 1967)). Accordingly,
"Description for the purposes of anticipation can be by drawings alone as
well as by words." In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (quoting
In re Eager, 47 F.2d 951, 953 (CCPA 1931)).
This principle, though, is subject to the caveat that "patent drawings
do not define the precise proportions of the elements and may not be relied
upon to show particular sizes if the specification is completely silent on the
issue." Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956
(Fed. Cir. 2000). See also Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1149
(Fed. Cir. 2005); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) ("Absent
any written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.'') But cf Cummins-
Allison Corp. v. SBM Co., Ltd., 484 Fed. App'x 499, 507 (Fed. Cir. 2012)
(nonprecedential) ("As long as a person of skill in the art could derive the
claimed dimensions from the patent's disclosure, there is no additional
requirement that the specification must explicitly disclose the precise
proportions or particular sizes.")
When applying these diverging concepts, precedent reveals that the
propriety of relying upon a particular drawing depends upon the content of
the drawing and the nature of the purported teaching at issue. Even if not to
scale, drawings can teach quantitative relationships among the elements
depicted that do not depend upon their actual dimensions. For example,
Vas-Cath Inc. v. Mahurkar and In re Heinle- both considering whether
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drawings could provide written-description support under 35 U.S.C. § 112,
an issue analogous to that of determining the teachings of drawings for prior
art purposes - demonstrate that drawings alone can teach ratios of the
elements depicted. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed.
Cir. 1991) (concerning claims requiring "a return lumen diameter
substantially less than 1.0 but substantially greater than 0.5 times the
diameter of the combined lumens"); In re Heinle, 342 F.2d 1001, 1007
(CCP A 1965) (concerning claimed "circumferential width of each of said
apertures being approximately one-fourth of the circumference of said
core.")
Similarly, Mraz, 455 F.2d at 1072, demonstrates that unscaled
drawings can teach quantitative angular features, which - like ratios of
measurements made from drawings - are unaffected by the actual sizes of
the items shown.
By contrast, precedent indicates that drawings, without any indication
of scale, cannot convey actual linear dimensions. Thus, in Wright, 569 F.2d
at 1127, a prior art drawing of a barrel that was not drawn to scale could not
teach a particular barrel element having a "length of roughly Yz to 1 inch."
The instant appeal concerns the capacity of Capdevila's Figure 4 to
teach a ratio of the lengths of two elements - the very type of information
addressed in Vas-Cath and Heinle and, as discussed above, information that
is independent of the actual sizes or scale of drawings. Because even an
unscaled drawing may teach a relationship between structures that is set
forth as a ratio, the Examiner properly relied upon Figure 4 of Capdevila, in
concluding that claim 1 is anticipated.
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Although the Examiner relied upon measurements made of the device
depicted in Figure 4, such measurements are only evidence of the ratio of
the heights of the two elements, rather than evidence of the actual heights of
structures themselves. In this case, the Examiner found that the ratio of the
first height to the second height is about 3. 7, which meets the language of
the limitation at issue. Final Action 2--4.
Accordingly, the Examiner's rejection of claim 1 and the other claims
grouped with it (in Rejection I) are sustained. Because the Examiner's § 102
determination is sustained herein, we do not address the alternative § 103
ground of Rejection I.
Rejection II
The issue here is essentially the same as that just addressed regarding
Rejection I - namely, whether the Examiner properly relied upon Figure 6 of
Chen although not drawn to scale, for teaching the same claimed ratio of
heights discussed above. Final Action 10-11. For reasons similar to those
provided in regard to Rejection I, the Examiner's rejections of claims 1, 5-7,
and 10 as anticipated under § 102 by Chen are sustained.
Rejection III
Dependent claims 4 and 13 add to their respective independent claims
(claims 1 and 11) a further limitation requiring that "the sum of the first
height and the second height" (of each of the recited "guiding elements")
"exceeds 15 millimeters" when the "frame" "is sized as 3 8 x 3 8 millimeters."
Appeal Br. 12, 13, Claims App.
On appeal, the Appellants have grouped claims 4 and 13 together.
Appeal Br. 10-11. The discussion herein is directed to claim 4 alone. See
37 C.F.R. § 41.37(c)(iv). As explained below, the rejection is not sustained.
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In view of his determination that "Capdevila discloses the frame as
claimed in claim 1," the Examiner rejected dependent claim 4 under§ 103,
based upon his further application of Capdevila. Final Action 13. Pursuant
to the discussion of Rejection I above (sustaining the rejection of claim 1
under § 102), the Examiner's rejection of dependent claim 4 is here regarded
as based upon the § 102 ground of rejection for claim 1, as opposed to the
Examiner's alternative§ 103 ground. See Final Action 4--5, 13.
The Examiner cited In re Aller, 220 F.2d 454, 456 (CCPA 1955), for
the proposition that "it is not inventive to discover the optimum or workable
ranges [for an element] by routine experimentation" and concluded that it
would have been obvious to modify Capdevila to meet the limitation of
claim 4 "as a matter of satisfying design requirements." Id. at 13.
The Appellants contend that the Examiner failed to establish a prima
facie case of obviousness because the Examiner did not show that the
claimed "sum of the first height and the second height is a result-effective
variable (i.e., a variable that achieves a recognized result)," such that
"optimum or workable ranges" for the claimed sum of the heights might be
achieved through routine experimentation. Appeal Br. 10-11.
In response to the Appellants' argument, the Examiner contends that
Capdevila teaches "that the components should be sized according to space
requirements" and also teaches "guiding elements (30) slightly longer than
the fan blades (22)." Answer 7 (citing Capdevila col. 4, 11. 19-21). The
Examiner also proposes that "38mm x 38mm fans are usually either 28mm
in depth or 38mm in depth (square fan)." Id. Thus, the Examiner argues, a
person of ordinary skill in the art would modify Capdevila' s embodiment to
fit the hypothetical dimensions, by "choosing a workable size based upon
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the overall fan size and the space available," such that the combined
"guiding element" heights would be either "19.38 mm" or "14.28 mm.,"
thereby satisfying the limitation that the sum of the heights "exceeds 15
millimeters." Id.
The Appellants' argument directs us to flaws in the Examiner's
analysis. The Examiner does not demonstrate that the teachings of
Capdevila reveal the sum of the "guiding element" heights to be a result-
effective variable that would lead a person of ordinary skill in the art "to
discover ... workable ranges [for the combined heights] by routine
experimentation," per the Examiner's purported reliance upon Aller. See
Final Action 13. Instead, in attempting to provide such a basis for making
the proposed modification to Capdevila, the Examiner misunderstood and
mistakenly applied Capdevila's alleged teachings. The Examiner assumed
that Capdevila was referring to cross-sectional profiles of the identified
elements, in its description of "airfoils'' (the structures that the Examiner
matched to the "guiding elements" of the Appellants' claim) being "slightly
longer" than the "fan blades." See Answer 7 (citing Capdevila, col. 4, 11. 19-
20). Indeed, it is the cross-sectional profile of a Capdevila "airfoil" (in
Capdevila's Figure 4) that the Examiner relied upon for purposes of
determining the ratio of the heights of the respective "inclined part" and
"axial extended part" (discussed above, in regard to Rejection I). Answer at
3. Yet, Capdevila' s remark that the disclosed "airfoils" were "slightly
longer" than the "fan blades" actually refers to the radial, longitudinal
dimensions of these structures - not any dimensions of their cross-sectional
profiles.
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This factual finding, concerning the Examiner's mistaken reading of
Capdevila, is evident because Capdevila's description of the "airfoils" as
being "slightly longer" than the "fan blades" refers to its Figure 3, which
shows the longitudinal, radial dimension of the "airfoils" and the related text
of Capdevila emphasizes the radial, longitudinal dimensions of both the "fan
blades" and the "airfoils," by specifically referring to these structures as
"radially-extending fan blades" and "elongated airfoils." Capdevila, col. 4,
11. 3-7, 18-21 (emphasis added). Additionally, this passage points out that
the "airfoils" "extend between motor support 28 and a circumferential ring
32" (id. at col. 4, 11. 20-21 ), thus further emphasizing their radial,
longitudinal dimension shown in Figure 3.
As further support for this factual finding, in reference to Capdevila' s
Figures 5-8, Capdevila explains that "[fJan blades 22 extend from hub 54 to
ring 38 with this distance referred to as blade length." Id. at col. 4, 1. 67---col.
5, 1. 2 (emphasis added). This remark indicates that the "length'' of the "fan
blades," in Capdevila, refers to the radial, longitudinal dimension thereof.
As still further support for this finding, the cross-sectional features of
Capdevila' s "airfoils" and "fan blades" are addressed in paragraphs separate
from the comparison of their radial, longitudinal lengths. Thus, a separate
paragraph focuses on Figure 4, which distinctly addresses the cross-sectional
features of an "airfoil." See id. at col. 4, 11. 31-32 ("Turning now to FIG. 4,
which is a sectional view of a stator airfoil 30 .... ") (emphasis added).
Likewise, the cross-sectional features of Capdevila' s "fan blades" are
discussed in a separate paragraph that is directed to Figure 9 of Capdevila.
See id. at col. 5, 11. 11-13 ("Referring to FIG. 9, this Figure illustrates the
angles and pertinent portions of fan blades 22 in reference to a schematic
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cross-sectional view.") (emphasis added).
Altogether, these remarks indicate that the portion of Capdevila
stating that "elongated airfoils 30 ... are slightly longer than fan blades 22"
(id. at col. 4, 11. 19-20) was addressing the radial, longitudinal dimensions of
these structures, as opposed to their cross-sectional dimensions.
Accordingly, the Examiner erroneously inferred that the cited portion of
Capdevila taught the relative heights (i.e., cross-sectional dimensions) of the
disclosed "fan blades" and "airfoils." See Answer 7.
Compounding the foregoing error, the Examiner applied his mistaken
reading of Capdevila to dimensions (28 mm and 38 mm) that he contended
are "usually" the depths of"38 mm x 38 mm fans." Answer 7. Yet, the
Examiner has not identified any source for this "usual[]" depth information.
Id. Moreover, Capdevila pertains to an automobile engine radiator fan (see
Capdevila, col. 1, 11. 6-8) and, although Capdevila does not recite particular
dimensions, Capdevila;s embodiment would likely be significantly larger
than 3 8 mm x 3 8 mm. Thus, the Examiner erred further by adapting
Capdevila to a 38 mm x 38 mm envelope having depths of either 28 mm or
38 mm, without any identified factual basis that it might be reasonable to fit
Capdevila's embodiment to such dimensions. See Answer 7.
In view of the foregoing, the Examiner's conclusion of obviousness of
claim 4 is based upon a flawed application of Aller and an erroneous factual
finding as to Capdevila' s teachings.
Accordingly, because claims 4 and 13 are grouped together, the
Examiner's rejections of claims 4 and 13 as unpatentable under§ 103 based
upon Capdevila (i.e., Rejection III) are not sustained.
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Rejection IV
Although the Appellants appeal Rejection IV, the Appellants have not
presented any argument as to the identified claims (claims 8 and 1 7) other
than the arguments addressing Rejection I. Appeal Br. 11. Because
Rejection I is sustained, as discussed above, the Examiner's rejections of
claims 8 and 17 (i.e., Rejection IV) are sustained also.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 2, 5-12, 14--
17, and 20.
We REVERSE the Examiner's decision rejecting claims 4 and 13.
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)(l )(iv).
AFFIRMED-IN-PART
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