Ex Parte Karas et al

Patent Trial and Appeal Board

Jul 27, 2017

13675054 (P.T.A.B. Jul. 27, 2017)

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.
13/675,054 11/13/2012 Lawrence C. Karas 83226656 1264
28395 7590 07/31/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER ZERPHEY, CHRISTOPHER R
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE C. KARAS, PAUL BRYAN HOKE,
MEGHAN CRUSOE ANDERSON, and ERIC R. YERKE
Appeal 2016-000505
Application 13/675,054
Technology Center 3700
Before: LINDA E. HORNER, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—12 and 15—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to an air conditioning condensate drain line
assembly. Claims 1, 9, and 15 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. An air conditioning condensate drain line assembly
comprising:
Appeal 2016-000505
Application 13/675,054
a drain housing having a drain hole that has an inlet and an
outlet adapted to receive and release a condensate to an external
environment; and
a freely rotating paddle wheel rotatably disposed in the
drain hole, the paddle wheel having a set of paddles having distal
ends disposed near an interior surface of the drain housing to
inhibit contaminants from passing back up through the drain
hole.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hsu US 6,247,324 B1 June 19, 2001
Vagedes US 6,772,538 B2 Aug. 10, 2004
Kim US 2007/0023162 A1 Feb. 1, 2007
Mikio JP 2008-095993 Apr. 24, 2008
(English Translation)
REJECTIONS
I. Claims 1—8 are rejected under 35 U.S.C. § 102(b) as anticipated
by Hsu.
II. Claims 9—12 and 15—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hsu and Kim.
III. Claims 1—8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mikio and Vagedes.
IV. Claims 9—12 and 15—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Mikio, Vagedes, and Kim.
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Application 13/675,054
OPINION
Rejection I
Appellants argue that Hsu does not teach “a drain housing having a
drain hole that has an inlet and an outlet adapted to receive and release a
condensate to an external environment... as recited by independent claim
1.” Appeal Br. 4 (emphasis added). Appellants explain that because Hsu’s
“air conditioning apparatus . . . returns condensate back to a cooling coil” it
does not “release condensate to an external environment.” Id. at 5.
As noted by the Examiner, claim 1 does not define “what is the
external environment,” nor does the claim provide any frame of reference
for the term “external.” Ans. 14. The Specification does discuss an
environment surrounding a vehicle (Spec. 10), however the claim is not
limited to a drain line assembly for a vehicle. Thus, we are not informed of
error in the Examiner’s position that Hsu’s condensate is drained “to an
environment 60 which is an external environment in that it is external to the
other components of the system.” Ans. 14.
Appellants also argue that Hsu does not teach “a freely rotating
paddle wheel disposed in the drain hole as recited by independent claim 1.”
Appeal Br. 4 (emphasis added). Appellants explain that Hsu teaches “a
mechanically driven impeller 32, which is not a freely rotating paddle
wheel.” Id. at 6. Appellants further argue that rotation of Hsu’s impeller 32
is tied to and controlled by “the motor 21.” Id.
The Examiner takes the position that the only requirement for free
rotation of “the paddle wheel... of Hsu ... [is that] it must be able to freely
rotate without obstruction or impedance.” Ans. 14. The Examiner also
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Application 13/675,054
determines that “freely rotating is a term of degree” and that there will
always be some “resistance to rotation” (i.e. friction). Id. at 14—15.
Though Appellants’ Specification does not use the term “freely
rotating,” it describes the paddle wheel as “rotating] about an axis of
rotation in response to force exerted by condensate that flows through the
drain hole.” Spec. 1 5; see also id. at |22. ft is clear that in the preferred
embodiment, flow from the condensate is all that is required for the paddle
wheel to rotate. Thus, we agree with the Examiner that “freely rotating”
requires that the paddle wheel “must be able to freely rotate without
obstruction or impedance” (Ans. 14), but we do not agree that Hsu’s
impeller 32 is able to freely rotate without obstruction or impedance as it is
directly connected to the motor 21, which impedes the free rotation of the
impeller.
Thus, we do not sustain the rejection of claim 1 or its dependent
claims as anticipated.
Rejection II
Appellants argue that independent claim 9 is allowable over the
combination of Hsu and Kim, because they do not teach or suggest “paddles
provided with a small gap between adjoining paddles permitting condensate
to flow through the outlet and inhibiting] contaminants from passing
through the drain housing.” Appeal Br. 7. Appellants similarly argue that
independent claim 15 is allowable because Hsu and Kim do not teach or
suggest “a paddle wheel having a set of paddles that at least partially block
the drain hole to inhibit contaminants from entering the drain tube.” Id. at 9.
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Application 13/675,054
The Examiner relies on Hsu for teaching the claimed paddle wheels
and paddles. Final Act. 6—8. Appellants do not identify any specific
structural differences between the paddles on Hsu’s impeller 32 and the
paddles required of claims 9 and 15. See generally. Appeal Br. 7—10. Still
further, Appellants’ argument focuses on the functioning of Hsu’s water
pump and how this is different from the claim language, but the argument
does not show that Hsu’s paddles do not perform the claimed functions of
“permitting condensate to flow through the outlet and inhibits contaminants
from passing through the drain housing” or “at least partially blocking] the
drain hole to inhibit contaminants from entering the drain tube.” See
generally, id. Appellants bear the burden to prove that the prior art does not
possess the functional characteristic, once, as is the case here, the Examiner
has shown a sound basis for believing the claimed structure to be the same
as the prior art structure. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). Thus, we are not informed of error in the Examiner’s rejection.
Appellants also argue that claim 15 is allowable over Hsu because
Hsu does not teach or suggest that “the paddle wheel rotates about an axis of
rotation in response to force exerted by condensate that flows through the
drain hole.” Appeal Br. 9.
We agree with the Examiner “that at times such as shut off of the
drive, the remaining inertial energy and any head pressure within the
condensate will to some degree impart a force for rotation to the paddle
wheel.” Ans. 15. As this is all that is required by claim 15, we are not
informed of error in the Examiner’s rejection.
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Rejection III
In the obviousness rejection of claim 1, the Examiner relies on Mikio
for teaching the drain housing with a “resistance mechanism [] configured to
inhibit contaminants from passing back up through the drain,” and on
Vagedes for teaching a paddle wheel “configured to inhibit contaminants
from entering” a duct. Final Act. 9—10. The Examiner determines that it
would have been obvious “to have replaced the resistance mechanism of
Mikio with the paddle wheel of Vagedes in order to prevent contaminants1
from entering the system and further to prevent egressing particles from
blocking the outlet.” Id. at 10. In addition, or alternatively, the Examiner
determines that replacing Mikio’s resistance mechanism with Vagedes’
paddle wheel is an obvious simple substitution of “one known solution for
another to obtain predictable results.” Id.
Appellants argue that Vagedes does not teach or suggest a paddle
wheel “to inhibit contaminants from passing back up through the drain hole”
because Vagedes uses a flap to do this, while the paddle wheel is only used
“to frighten rodents.” Appeal Br. 11—12. However, as noted by the
Examiner “in addition to the paddle wheel ‘frightening’ rodents it’s physical
presence within the drain housing prevents or inhibits unwanted
contaminants (such as pests and rodents) from entering due to its partial
blockage of the housing.” Ans. 17. This is all that is required by the claim.
The Examiner does not rely on Vagedes’s flap in the rejection, and the fact
that at certain times the flap prevents unwanted contaminants from entering
1 We note that Mikio includes “small animals and insects” among the
contaminants to be prevented from entering the system (Mikio Abstract) and
Vagedes is mainly directed at preventing “birds and rodents” (Vagedes
Abstract) from entering the duct which can be considered “small animals.”
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the duct does not take away the teaching that the paddle wheel prevents
unwanted contaminants from entering the duct. Thus, we are not informed
of error in the Examiner’s rejection.
Further, Appellants’ argument is directed against Vagedes
individually, where the rejection is based on the combination of Mikio and
Vagedes. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted)
(explaining that obviousness must be considered in light of “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). For this reason, we are not informed of error in
the Examiner’s rejection.
Appellants also argue that the reasoning provided by the Examiner to
combine Mikio and Vagedes is 1) inadequate and 2) relies entirely on “the
reasoning as taught by the inventor in the present application.” Appeal Br.
12—13. Though Appellants’ state that there is “no underlying piece of
evidence within the record that provides rational underpinnings for the
reason to combine” {id. at 12), Appellants do not identify error in the
Examiner’s two different reasons for combining the references from the
Office Action (Final Act. 10) and repeated above. Appellants do state that
the reasoning is hindsight (Appeal Br. 13), however, Appellants do not
identify any teachings of the present application relied upon by the Examiner
that are not also present in the cited prior art. Thus, we are not informed of
error in the rejection.
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Rejection IV
Concerning the rejection of independent claims 9 and 15 over Mikio,
Vagedes, and Kim, Appellants essentially repeat the arguments discussed
above that Vagedes does not teach or suggest a paddle wheel “to inhibit
contaminants from passing back up through the drain hole” because Vagedes
uses a flap to do this, while the paddle wheel is only used “to frighten
rodents.” Compare Appeal Br. 11—12 (claim 1) with id. at 13—14 (claim 9)
and id. at 15—16 (claim 15). We are not informed of error in the Examiner’s
rejection for the same reasons discussed above.
DECISION
The Examiner’s rejection of claims 1—8 as anticipated is reversed.
The Examiner’s rejections of claims 1—12 and 15—20 as obvious are
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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