Ex Parte Jerg et al

Patent Trial and Appeal Board

Dec 15, 2016

13058881 (P.T.A.B. Dec. 15, 2016)

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.
13/058,881 02/14/2011 Helmut Jerg 2008P03223WOUS 4783
46726 7590 12/19/2016
RS»H Home. Ann1ianrp.s Pomoratinn
EXAMINER
100 Bosch Boulevard
NEW BERN, NC 28562
KO, JASON Y
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELMUT JERG and KAI PAINTNER
Appeal 2015-004437
Application 13/058,881
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 34—93. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a dishwasher. Claim 34 is illustrative:
34. A dishwasher, comprising:
a washing container;
an air-guiding channel to generate an air flow;
a sorption drying system to dry items to be washed, the
sorption drying system having a sorption container with
reversibly dehydratable sorption material, the sorption container
connected to the washing container by the air-guiding channel;
and
a heater assigned to the reversibly dehydratable sorption
Appeal 2015-004437
Application 13/058,881
material for desorption of the sorption material;
wherein the dishwasher is configured to control a ratio of
a heat output of the heater and an air volume flow of the air
flow which flows through the sorption material to be between
100 W sec/1 and 1250 W sec/1.
The claims stand rejected as follows: claims 34—37, 52—56, 65—73
and 76—93 under 35 U.S.C. § 102(b) over Jerg, claims 34—37, 52—59 and 65—
93 under 35 U.S.C. § 103 over Jerg, claims 38—51, 55, 56, 63 and 64 under
35 U.S.C. § 103 over Jerg in view of Chu, claims 60—62 under
35 U.S.C. § 103 over Jerg in view of Chu and Anderson, and claims 34—93
provisionally on the ground of nonstatutory obviousness-type double
patenting over claims 35—96 of copending application no. 13/055,945,
claims 42—102 of copending application no. 13/056,131, claims 34—93 of
copending application no. 13/059,237, claims 34—90 of copending
application no. 13/059,074, claims 34—93 of copending application
no. 13/059,078 and claims 34—93 of copending application no. 13/059,236.2
1 Citations herein to Jerg are to US 2007/0295360 A1 (published Dec. 27,
2007) which the Examiner relies upon as an English language equivalent of
WO 2006/061293 A1 (Final Act. 5).
2 Application no. 13/055,945 issued as US 9,034,115 on May 15, 2015 and
application no. 13/056,131 issued as US 8,961,705 on Feb. 24, 2015. A
provisional obviousness-type double patenting rejection over claims 14—33
of application no. 13/054,572 is moot because that application stands
abandoned (as of Aug. 11, 2014).
The References
Chu
Anderson
Jerg1
US 5,879,764 Mar. 9, 1999
US 2003/0000106 A1 Jan. 2, 2003
WO 2006/061293 A1 June 15, 2006
The Rejections
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Application 13/058,881
OPINION
We affirm the rejections under 35 U.S.C. § 103 and reverse the
rejection under 35 U.S.C. § 102(b) and the provisional obviousness-type
double patenting rejections.
Rejection under 35 U.S.C. § 102(b)
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
The Appellants’ claim 34, which is the sole independent claim,
requires a dishwasher configured to control the ratio of heat output of a
sorption material heater to air volume flow through the sorption material to
be between 100 W sec/1 and 1250 W sec/1.
Jerg discloses a dishwasher (1) comprising a valve (19) for removing
condensate from dish-drying air circulated through a vertical air duct (17) by
a fan (9), a sorption column (10) containing zeolite beads which adsorb and
store moisture remaining in the circulating air, and an electric heating
element (12) which, in a subsequent washing of dishes, heats the zeolite
beads such that they release the adsorbed water into the circulating air,
thereby providing at least part of the heat needed to heat the dishes and/or
the liquor used to rinse them (H 4, 28, 29; Fig. 1). Removing condensate in
the air before the air reaches the sorption column (10) reduces the sorption
column’s size and space requirement (| 29).
The Examiner finds that Jerg’s dishwasher has the same structure as
that of the Appellants and, therefore, is capable of controlling the
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Application 13/058,881
Appellants’ claim 34’s above-stated ratio, thereby rendering that ratio mere
intended use (Final Act. 6; Ans. 3).
The Appellants’ claim 34’s configuration requirement is a structural
limitation, not an intended use. The Examiner does not establish that Jerg
discloses a dishwasher having that configuration. Accordingly, we reverse
the rejection under 35 U.S.C. § 102(b).
Rejections under 35 U.S.C. § 103
Chu discloses polymer-bound water-adsorbent beads which contain at
least about 10 wt% zeolite and have a preferred maximum size of at least
about 0.1 mm, a preferred bulk density of about 0.6 g/ml, more preferably
about 0.65-0.8 g/ml, and a preferred water adsorption capacity of at least
about 3 wt% (col. 3,11. 1^16, 22-25, 31-33, 46-A7; col. 4,11. 10-13). The
beads can be used in any system wherein conventional inorganic-bound
adsorbent beads are used and, when confined, can treat fluid (gas or liquid)
which is actively circulated through them by a pump, fan or heater (col. 4,
11. 47-54).
The Appellants assert that Chu is nonanalogous art (App. Br. 8—10;
Reply Br. 3 4). The test of whether a reference is from an analogous art is
first, whether it is within the field of the inventor’s endeavor, and second, if
it is not, whether it is reasonably pertinent to the particular problem with
which the inventor was involved. See In re Wood, 599 F.2d 1032, 1036
(CCPA 1979). A reference is reasonably pertinent if, even though it may be
in a different field of endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor’s
attention in considering the inventor’s problem. See In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). The Appellants assert that the problem with
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Application 13/058,881
which they were involved is difficulty in drying a reversibly hydratable
material used in dishwashers whereas the problem to which Chu is directed
is reducing dust released by adsorbent beads between multiple panels in an
insulating glass unit and, therefore, is not reasonably pertinent to the
Appellants’ problem (App. Br. 9).
Jerg is the first named inventor in the present application. The
problem addressed by Jerg and the other inventors in the present application
is lack of optimized sorption/desorption by a confined zeolite in the type of
system used in the Jerg reference (Spec. Tflf 2—6). The Appellants solve that
problem by using in the recited zeolite grain, bed and container
characteristics, desorption heater wattages and zeolite temperatures, and air
flow rates through the zeolite bed. Chu’s disclosure is not limited to the
problem relied upon by the Appellants but, rather, also pertains to use of
confined adsorbent zeolite beads to treat a fluid (gas or liquid) actively
circulated through the confined beads (col. 4,11. 47—54). Hence, Chu
logically would have commended itself to the Appellants’ attention in
considering their problem of determining how to optimize the type of system
disclosed by Jerg wherein confined zeolite is used to adsorb water from
circulating air. Chu, therefore, is analogous art.
The Appellants assert that Chu does not disclose the Appellants’
recited fill height (claims 39-45) or average fill density (claims 47—51)3
(App. Br. 10-11; Reply Br. 4—6).
3 The Appellants’ assertion that the Examiner has the burden of establishing
the meaning of the Appellants’ claim term “fill density” is incorrect
(App. Br. 11; Reply Br. 5—6). The Appellants are required by
35 U.S.C. § 112, second paragraph to provide claims having a clear
meaning.
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That assertion is deficient in that the Appellants are attacking Chu
individually when the rejection is based on a combination of Jerg and Chu.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d
754, 757-58 (CCPA 1968).
The Appellants assert that Jerg does not disclose the Appellants’
recited heat output/air volume ratio (claim 34) or sorption system
dimensions (claims 85—87) (App. Br. 5—8; Reply Br. 1—3, 6—7).
Jerg discloses a dishwasher comprising a reversibly-hydratable
sorption system which is similar in structure and compactness to that of the
Appellants and functions the same way, i.e., removing condensate from
dish-drying air circulated through a vertical air duct by a fan, storing in
confined zeolite beads (Jerg’s sorption column (10); the Appellants’ sorption
container (SB)) moisture remaining in the circulating air, and releasing the
adsorbed water by heating the zeolite with an electric heater to produce
heated, moist air used to heat the rinse liquor and/or dishes in a subsequent
wash (Jerg, || 4, 28, 29; Fig. 1; Spec. Tflf 5, 13, 15, 17, 40; Fig. 3). Jerg is
silent as to the sorption system’s heat output/air volume ratio or sorption
system dimensions. Consequently, one of ordinary skill in the art, through
no more than ordinary creativity, would have optimized those features
through no more than routine experimentation. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). If one of ordinary skill in the art
were unable to do so, Jerg’s disclosure would be nonenabling under
35 U.S.C. § 112, first paragraph. Chu, as indicated above, provides zeolite
characteristics for use by one of ordinary skill in the art as a starting point
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Application 13/058,881
for optimizing the zeolite-related features of a sorption system such as that
of Jerg in which a circulating gas is treated by confined zeolite beads. Due
to the similarities in structure (compare Jerg’s Fig. 1 and the Appellants’
Fig. 3) and purpose (as pointed out above), there is reason to believe that
optimizing Jerg’s sorption system would lead to results including those
obtained through the Appellants’ optimization of their sorption system.
Thus, we are not persuaded of reversible error in the rejections under
35U.S.C. § 103.
Obviousness-type double patenting rejections
The Examiner’s sole rationale for the obviousness-type double
patenting rejections is that “[ajlthough the claims at issue are not identical,
they are not patentably distinct from each other because they are
substantially directed toward the same invention, a subgenus of the
copending application (and thus anticipated), or an obvious variant” (Final
Act. 5).
That bald assertion is insufficient for establishing that the Appellants’
recited claim features would have been prima facie obvious to one of
ordinary skill in the art over those recited in the relied-upon applications’
claims. Accordingly, we reverse the obviousness-type double patenting
rejections.
DECISION/ORDER
The rejection of claims 34—37, 52—56, 65—73 and 76—93 under
35 U.S.C. § 102(b) over Jerg is reversed. The rejections under
35 U.S.C. § 103 of claims 34—37, 52—59 and 65—93 over Jerg, claims 38—51,
55, 56, 63 and 64 over Jerg in view of Chu and claims 60—62 over Jerg in
view of Chu and Anderson are affirmed. The rejections of claims 34—93
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provisionally on the ground of nonstatutory obviousness-type double
patenting over claims 35—96 of copending application no. 13/055,945,
claims 42—102 of copending application no. 13/056,131, claims 34—93 of
copending application no. 13/059,237, claims 34—90 of copending
application no. 13/059,074, claims 34—93 of copending application
no. 13/059,078 and claims 34—93 of copending application no. 13/059,236
are reversed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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