Ex Parte Kang et al

Patent Trial and Appeal Board

May 14, 2013

11017431 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PENGJU KANG, THOMAS D. RADCLIFF,
MOHSEN FARZAD, and ALAN M. FINN
____________

Appeal 2011-004613
Application 11/017,431
Technology Center 3700
____________

Before LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pengju Kang et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3, 5, 7-9, 11, 13-15, and
17. Claims 2, 10, and 19-21 are canceled, and claims 4, 6, 12, 16, and 18 are
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to “a method and control for
testing the condition of an air filter.” Spec., para. [0001]. Claims 1, 7, and
13 are independent. Claim 7, reproduced below, is illustrative of the subject
matter on appeal.
7. A control comprising:
a control for changing at least a first variable within an
HVAC system, said control identifying an expected change in a
second variable, and for monitoring a resultant change in the
second variable, said control being programmed to determine
the condition of an air filter based upon a comparison of the
expected change with said resultant change, said change of said
at least said first variable being induced by said control
periodically.
THE EVIDENCE
The Examiner relies upon the following evidence:
Gay US 2,483,896 Oct. 4, 1949
Strupczewski US 4,373,576 Feb. 15, 1983
Harband US 4,474,021 Oct. 2, 1984
Nair US 6,319,114 B1 Nov. 20, 2001
Kang US 7,261,762 B2 Aug. 28, 2007
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 7 and 13 under 35 U.S.C. § 102(e) as anticipated by Kang;1

1 The Examiner withdrew a rejection of claims 9, 11, 14, 15, and 17 under
35 U.S.C. § 102(e) as anticipated by Kang. Ans. 3.
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2. Claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Nair in view of Gay;
3. Claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Nair in view of Gay or Harband or Strupczewski;2
and
4. Claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 103(a) as
unpatentable Gay or Harband or Strupczewski in view of Nair.3
The Final Office Action, from which this appeal is taken, included a
rejection of claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 112,
second paragraph, as being indefinite based on an ambiguity identified by
the Examiner as being in the language of claim 1. Fin. Off. Act. dated Feb.
17, 2010 at p. 2. Appellants submitted an after final amendment to correct
the noted ambiguity. Amdt. After Final dated Apr. 5, 2010. The Examiner
entered the after-final amendment, but did not state in the Advisory Action
whether the rejection for indefiniteness had been overcome. Adv. Act. dated
Apr. 16, 2010. In the Answer, the Examiner explicitly withdrew the
rejection of claims 1, 7, and 13 under 35 U.S.C. § 112, second paragraph,
stating that “the after final amendment was entered because it was agreed
that the 112 second paragraph rejection was overcome.” Ans. 3, 11-12.
While the Examiner did not explicitly withdraw the indefiniteness rejection
of claims 3, 5, 8, 9, 11, 14, 15, and 17, since the basis for the indefiniteness

2 The Examiner entered this as a new ground of rejection in the Examiner’s
Answer. Ans. 8-9.
3 The Examiner entered this as a new ground of rejection in the Examiner’s
Answer. Ans. 10-11.
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rejection was noted in the record as having been overcome by the
amendment entered after-final, we understand there to be no outstanding
rejection of any of the pending claims under 35 U.S.C. § 112, second
paragraph. Id. at 3-4.4
PRINCIPLES OF LAW
37 C.F.R. § 1.131 provides in pertinent part:
(a) When any claim of an application . . . is rejected, the
inventor of the subject matter of the rejected claim . . . may
submit an appropriate oath or declaration to establish invention
of the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based
….
(b) The showing of facts shall be such, in character and weight,
as to establish reduction to practice prior to the effective date of
the reference, or conception of the invention prior to the
effective date of the reference coupled with due diligence from
prior to said date to a subsequent reduction to practice or to the
filing of the application. Original exhibits of drawings or
records, or photocopies thereof, must accompany and form part
of the affidavit or declaration or their absence must be
satisfactorily explained.
37 C.F.R. § 1.131 (2008).

4 The Examiner alludes to a new ground of rejection of claims 5, 8, 11, 14,
and 17 under 35 U.S.C. § 112, second paragraph, in the Response to
Arguments portion of the Answer (Ans. 12), but we see no presentation of
any such rejection under the New Grounds of Rejection portion of the
Answer.
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ANALYSIS
Rejection (1)
Appellants argue that the rejection of claims 7 and 13 under 35 U.S.C.
§ 102(e) is improper because Appellants submitted a declaration under
37 C.F.R. § 1.131 (“131 Declaration”) to show that the invention was
conceived before the filing date of Kang and was reduced to practice. App.
Br. 4. Appellants’ rely on “a simulation of a system incorporating the
invention as described in the patent disclosure form” as evidence that the
invention was reduced to practice, and argue that “given the subject matter
of claims 7 and 13, it is submitted that the computer simulation fully proves
the reduction to practice of the claims.” Id.
The 131 Declaration, signed by the Appellants, attaches an exhibit
that consists of a copy of a redacted Patent Disclosure Form. 131
Declaration, para. 2. The 131 Declaration states that Appellants “have seen
the unredacted Patent Disclosure Form which indicates at 1.(a) a conceived
and 1.(b) a built/tested date before May 6, 2004.” Id. at para. 3. The 131
Declaration also states that Appellants “did simulate a system incorporating
the invention as described in the Patent Disclosure Form as indicated at
1.(b), at before May 6, 2004.” Id. at para. 4. The Patent Disclosure Form
consists of a questionnaire completed by Appellants that asks at 1.(a) when
Appellants conceived the invention and at 1.(b) whether the invention has
been successfully built or tested. Id. at Ex. A. Appellants checked “Yes”
on this form that the invention had been successfully built or tested, and
noted that it was by “[d]igital simulation and anlytical [sic] approach.” Id.
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The Patent Disclosure Form also includes a seven page description entitled,
“System ID Based Air Filter Alarm Technique.” Id. The 131 Declaration
does not specifically point to descriptions or data within this seven page
document accompanying the Patent Disclosure Form to show evidence of
conception or reduction to practice of the control of claim 7 or the method of
claim 13. For example, the 131 Declaration does not explain where the
Patent Disclosure Form specifically evidences conception or reduction to
practice of changing a first variable “periodically.”
Rather, the 131 Declaration consists of vague and general statements
in the broadest terms as to what the Patent Disclosure Form shows along
with an assertion that the Patent Disclosure Form indicates conceived and
reduction to practice dates prior to May 6, 2004. These statements amount
essentially to mere pleading, unsupported by proof or showing of facts. In
re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920
(CCPA 1964). The 131 Declaration does not adequately explain what facts
or data Appellants are relying upon to show a completion of their invention
prior to the critical date. See Borkowski, 505 F.2d at 718.
The Patent Disclosure Form is not clear on its face and it is
Appellants’ burden to explain the content of this Patent Disclosure Form as
proof of acts amounting to reduction to practice. Id. at 719. Absent a clear
explanation pointing out exactly what facts are established in the Patent
Disclosure form and relied on by Appellants, the 131 Declaration based
thereon is of little assistance in enabling us to judge whether there was an
actual reduction to practice of the invention. Id. Rule 131 requires “not a
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statement that facts exist” but an “oath to facts showing a completion of the
invention” and “[t]he showing of facts shall be such, in character and
weight, as to establish reduction to practice, etc.” In re Harry, 333 F.2d at
922 (internal quotations omitted). Appellants’ 131 declaration merely
asserts that facts exist but does not indicate what those facts are or how they
occurred. Id.
Further, Appellants have failed to point to the specific information in
the attached Patent Disclosure Form on which they rely to show conception
of the invention. Neither the 131 Declaration nor the arguments in the
Appeal Brief establish facts sufficient to tie the information found in the
Patent Disclosure Form to the claim limitations in a manner to show
conception of even the basic invention. As such, the attached Patent
Disclosure Form is of little assistance in enabling the Office to judge
whether there was conception of the invention and reduction to practice prior
to the effective date of the prior art.
Even if one were to find that the 131 Declaration provides sufficient
evidence of a simulation of the control, Appellants have not met their burden
to show the specifics of that simulation in sufficient detail to establish that
the simulation conditions were sufficiently similar to those of the intended
environment to evidence that the invention actually works for its intended
purpose. “[P]roof of actual reduction to practice requires a showing that ‘the
embodiment relied upon as evidence of priority actually worked for its
intended purpose.’” DSL Dynamic Sciences Ltd. v. Union Switch & Signal,
Inc., 928 F.2d 1122, 1125 (Fed. Cir. 1991), quoting Newkirk v. Lulejian, 825
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F.2d 1581, 1582 (Fed. Cir. 1987). “On the other hand, tests performed
outside the intended environment can be sufficient to show reduction to
practice if the testing conditions are sufficiently similar to those of the
intended environment.” Id. at 1125. For these reasons, we agree with the
Examiner that the 131 Declaration is insufficient to remove Kang as a
reference. As such, we turn to the substance of the rejection.
Claims 7 and 13 call for changing a system variable within an HVAC
system “periodically.” The Examiner determined that Kang’s disclosure of a
change to fan speed being induced by a control in periods of time,
i.e., occasionally, to control the temperature inside the house satisfied the
requirement of changing the variable periodically. Ans. 5, 13 (noting that
“the plain meaning of ‘periodically’ is occur in periods”). Appellants argue
that “[t]he term ‘periodically’ implies a particular change which is placed
into the system on some schedule to test the filter.” App. Br. 5; see also
Reply Br. 2. The Specification describes only that “[t]he testing of filter
condition can occur periodically on some schedule.” Spec., para. [0025].
The Examiner has proffered a broadest reasonable interpretation of
“periodically” as to “occur in periods” and “occasionally.” This definition
comports with the ordinary meaning of “periodically,” which is defined as
“[f]rom time to time, occasionally.” OXFORD ENGLISH DICTIONARY, Third
Ed. (Dec. 2005), defn. 1.b. (www.oed.com), last visited May 10, 2013.
Appellants do not provide us with any definition of “periodically” provided
in the Specification that would require us to define this term differently from
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its ordinary meaning and do not provide any evidence to show that the
Examiner’s interpretation is unreasonable.
Even if one were to interpret “periodically” in light of the
Specification as calling for the change in the first variable to occur on a
schedule, such an interpretation does not require the schedule to be on a
regular basis or at set intervals. The schedule can be simply whenever there
is a change to the desired temperature of the system.
Kang discloses that the controller 90 “manages fan speed to control
temperature within a desired environment.” Kang, col. 5, ll. 59-61. The
system of Kang is operated to achieve a desired temperature based on input
data (see Ans. 5 citing Kang, figs. 6-8), which results in the controller 90
changing the fan speed according to desired temperature. As such, we agree
with the Examiner that Kang discloses a control that changes a first variable
(i.e., fan speed) periodically, as called for in claims 7 and 13. For these
reasons, Appellants have not demonstrated error in the Examiner’s rejection
of claims 7 and 13 under 35 U.S.C. § 102(e) as anticipated by Kang.
Accordingly, we affirm the anticipation rejection of claims 7 and 13.

Rejection (2)
Appellants offer arguments pertaining to all the claims subject to this
rejection (claims 1, 3, 5, 7-9, 11, 13-15, and 17) and offer additional
arguments for dependent claim 11. App. Br. 5-6; Reply Br. 2. For the
arguments pertaining to all of the claims, we select claim 7 as representative.
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See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We separately consider the
additional argument pertaining to claim 11.
Claim 7
The Examiner found that Nair teaches a system comprising a fan, an
air filter, and a control for changing at least a first variable (fan speed)
within the system and monitoring the resultant change in a second variable
(air temperature) to determine a condition (clogged or not clogged) of the air
filter based on a comparison of an expected change with a resultant change
in the second variable. Ans. 6-7. The Examiner found that Nair does not
teach using such a filter condition notification system in a heat pump. Id. at
7. The Examiner found, however, that heat pumps having filters are old and
well known in the art, such as taught by Gay. Id.; see also Reply Br. 3
(Appellants admitting that “filters existed in heat pumps”). The Examiner
determined that it would have been obvious “to combine the air filter
method and controller system of Nair with the heat pump of GAY for the
purpose of providing the benefits of the invention of Nair (i.e. convenient
and useful information regarding the condition of the filter) to a heat pump
system.” Id. at 7.
Appellants argue that because Nair is directed to maintaining tight
temperature with control in an enclosure that may be utilized by computer
components, there would be no reason to incorporate a heat pump into the
Nair device. App. Br. 5. This argument misunderstands the basis of the
Examiner’s rejection, which does not propose adding a heat pump to the
computer system of Nair. The Examiner made clear in the articulation of the
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rejection that the determination of obviousness was based on a finding that it
would have been obvious to use Nair’s technique of identifying a clogged
filter in a conventional heat pump system.
Appellants further argue that “[n]othing within Nair, et al. would
suggest the inclusion of its method into a heat pump.” Reply Br. 2.
Appellants’ arguments, however, fail to persuasively address the Examiner’s
determination that since “[b]oth systems are air systems having air filters. . .
those of ordinary skill in the art would immediately see that the benefits
would be applicable to both systems.” Ans. 14. This explanation provided
by the Examiner is based on rational underpinnings. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). Appellants
have not asserted or provided evidence to show that application of Nair’s
filter condition technique to a heat pump system such as the system of Gay
would have been beyond the level of skill of one of ordinary skill in the art.
Appellants also argue that “Nair, et al. does not change any variable in
a manner that would meet claims 1, 7, or 13” and that “nothing within Nair,
et al. would disclose a ‘periodic’ test to determine the condition of the air
filter.” App. Br. 5-6. To the extent this argument rests on an unduly narrow
definition of “periodically” as proffered in the arguments against the
anticipation rejection, we do not find this argument persuasive for the same
reason as discussed supra. Further, we agree with the Examiner’s finding
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that Nair’s system is arranged to change the fan speed being induced by the
control periodically. Ans. 7; see also Nair, col. 4, ll. 41-46. Appellants’
argument states that Nair doesn’t disclose a periodic test to determine the
condition of the air filter, but Appellants fail to explain why the Examiner’s
reliance on the disclosure in the cited portion of Nair for this limitation is
misplaced. As such, Appellants have failed to show error in the Examiner’s
rejection of claim 7 as unpatentable over Nair and Gay. We affirm the
rejection of claim 7. Claims 1, 3, 5, 8, 9, 13-15, and 17 fall with claim 7.
Claim 11
Claim 11 depends from claim 8, which depends from claim 7. Claim
8 calls for the control to change a speed of a motor for a fan and to monitor
the resultant change in an air temperature to determine the condition of the
air filter. Claim 11 further calls for the change in the speed of the motor to
be induced by “a particular step change in motor speed.”5
The Examiner found that “Nair teaches a particular step change
(change) in motor speed (column 4, lines 40-45) is forced, and a resultant
change in detected temperature (column 3, lines 7-40; column 5, lines 14-21,
30-38) is monitored to determine the condition of said air filter (34).”
Ans. 7.
Appellants’ argument describes the subject matter of claim 11 and
then states that “[n]orthing [sic] within Nair, et al. or even Gay would meet

5 Claim 11 further recites “and a resultant change in detected temperature is
monitored to determine the condition of said air filter.” This clause is
redundant to the same limitation recited in claim 8.
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such a step change.” App. Br. 6. Appellants’ argument does not directly
address the Examiner’s findings as to the disclosure of Nair or explain why
the Examiner’s finding that Nair discloses the claimed step change in motor
speed is misplaced. Rather, Appellants’ argument amounts to a recitation of
the claim elements and a “naked assertion” that the elements are not found in
the prior art. Such statements do not constitute a separate argument for
patentability of claim 11 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). As such, claim 11 falls with claim 7.

Rejection (3)
The Examiner entered Rejection (3) as a new ground of rejection in
the Answer. Ans. 8-9. Rejection (3) restates Rejection (2), discussed supra,
and adds two prior art references Harband and Strupczewski as alternatives
to Gay in combination with Nair. Ans. 9 (finding that each of Harband and
Strupczewski teach an HVAC system having a heat exchanger, a fan, and a
filter). Appellants’ argument in reply to this new ground was that “[t]here
would be no reason to utilize the structure of Nair, et al. into a system for
monitoring the health of a filter in a heat pump.” Reply Br. 3. We find this
argument not persuasive of error for the same reasons provided supra in our
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analysis of Rejection (2). Accordingly, we affirm Rejection (3) for the same
reasons provided supra in the analysis of Rejection (2).

Rejection (4)
The Examiner entered Rejection (4) as a new ground of rejection in
the Answer. Ans. 10-11. Rejection (4) switches the order of the prior art
references as articulated in Rejections (2) and (3). Id. The Examiner
determined:
[I]t would have been obvious to one of ordinary skill in the art,
at the time the invention was made, to modify Gay, Harband, or
Strupczewski with the filter condition method and controller of
Nair for the purpose of providing automated detection of filter
deterioration and for the purpose of doing so in a simple design,
easy to implement which can be added to existing systems with
little cost to the customer.
Id. at 11. The Examiner adds that despite Nair’s teaching of applying the
controller and method to a computer system, both the HVAC systems of
Gay, Harband, and Strupczewski and Nair’s computer system “are air
systems having air filters” and, as such, “those of ordinary skill in the art
would immediately see that the benefits would be applicable to both
systems.” Id. at 14.
Appellants’ argument in reply to this new ground was that “[t]here
would be no reason to utilize the structure of Nair, et al. into a system for
monitoring the health of a filter in a heat pump.” Reply Br. 3. We find this
argument not persuasive of error for the same reasons provided supra in our
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analysis of Rejection (2). Accordingly, we affirm Rejection (4) for the same
reasons provided supra in the analysis of Rejection (2).

DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3, 5, 7-
9, 11, 13-15, and 17.
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)(1)(iv).

AFFIRMED

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