Ex Parte Kayser

Patent Trial and Appeal Board

Feb 28, 2017

13860596 (P.T.A.B. Feb. 28, 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.
13/860,596 04/11/2013 Kenneth W. Kayser 051433-000005USC1 8644
70001 7590 03/02/21
NIXON PEABODY LLP
70 West Madison Street, Suite 3500
CHICAGO, IL 60602
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH W. KAYSER
Appeal 2015-004175
Application 13/860,596
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant Kenneth W. Kayser appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1 and 3—11. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-004175
Application 13/860,596
THE CLAIMED SUBJECT MATTER
The claims are directed to “a hot water system, and more particularly,
to a combination of an intermediate water heater and a point-of-use water
heater. Spec. 12. Claim 1, the only independent claim, is reproduced
below:
1. A water heater system comprising:
a primary water heater including a storage tank in which
water is initially received at an initial temperature, the primary
water heater being controllable to heat the water to an
intermediate temperature that is higher than the initial
temperature and at a room temperature of approximately 75°
Fahrenheit; and
at least one point-of-use water heater coupled to the
primary water heater for receiving the water from the primary
water heater after the water has been heated to the intermediate
temperature, the point-of-use heater being controllable to heat
the received water to a point-of-use temperature, the point-of-use
temperature being at least about 115 degrees Fahrenheit.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Hanson US 2,760,047 Aug. 21, 1956
Boe US 4,568,821 Feb. 4, 1984
Eddas US 5,020,127 May 28, 1991
Deutsch US 5,351,337 Sept. 27, 1994
Lund US 6,774,276 B1 Aug. 10, 2004
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hanson.
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2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson and Lund.
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson and Eddas.
4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson and Deutsch.
5. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson and Boe.
Appellant seeks our review of these rejections.
ANALYSIS
The Rejection of Claims 1, 5, 7, and 8 as Unpatentable Over Hanson
Appellant argues claims 1, 5, 7, and 8 as a group. Br. 3^4. We select
claim 1 as the representative claim, and claims 5, 7, and 8 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Hanson discloses all of the limitations of
claim 1 including (1) hot water heater 10 (e.g., primary water heater) that
employs electric heating elements 12 and 14 for heating incoming, initial-
temperature water up to a range of 140—160° F, and (2) heating element 42
(e.g., point of use water heater) for heating water from heater 10 up to a
range of 160-180°F. Final Act. 2—3 (citing Hanson 2:65—69, 4:1—3, Fig. 1);
see also Ans. 3^4; see also Hanson 3:34—37. The Examiner finds that the
cited temperature ranges are maximum ranges, and any temperature below
the range is possible and within a workable range. Ans. 3^4. The Examiner
explicitly finds that Hanson’s apparatus “is fully capable of achieving
temperatures of 75 F and 115 F.” Ans. 4. The Examiner states that Hanson
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Application 13/860,596
does not disclose the temperature ranges recited in claim 1, but determines
that “where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only ordinary skill in
the art.” Final Act. 3 (citation omitted).
Appellant asserts that the Examiner’s rejection is wrong for several
reasons. First, Appellant argues that the Examiner’s determination that
“discovering the optimum or workable ranges involves only ordinary skill in
the art” is wrong because
the difference between Applicant's room temperature (e.g., 75°
F.) and the 160° F. minimum temperature of Hanson is not
simply a matter of finding an optimal or workable range. This is
a huge difference that significantly reduces water-heating costs
even for an average consumer. The greatly reduced temperature
used by Applicant reduces the heat lost from major lengths of
water pipes leading from the primary water heater to the various
points of use, which in turn significantly reduces the amount of
energy required, and thus the cost of energy consumed, in the hot
water system. This is not a trivial matter, and would have been
done long ago if it were truly just a simple matter of optimization.
Br. 3^4.
Appellant’s argument is not commensurate with the scope of claim 1.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating limitations not
appearing in the claims cannot be relied upon for patentability). Claim 1
merely recites that the primary heater is “controllable1 to heat water to an
intermediate temperature” which is (1) higher than an initial incoming
1 Neither Appellant nor the Examiner construe the term “controllable.”
An ordinary meaning of “control” is “regulate” and “a device or mechanism
used to regulate or guide the operation of a machine, apparatus, or system.”
The Merriam-Webster Dictionary, https://www.merriam-
webster.com/dictionary/controllable (last visited February 23, 2017).
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Application 13/860,596
temperature and (2) approximately 75° F. Appellant does not contest the
Examiner’s finding that Hanson discloses a heater capable of heating water
from an initial temperature to a temperature of 75° F. Thus, Appellant does
not contest that Hanson discloses a heater controllable to heat water from an
initial temperature to a temperature of 75° F, as recited in claim 1 (see, e.g.,
Ans. 4), and, thus, do not show error by the Examiner.
Claim 1 also recites that the point-of-use heater is “controllable to
heat the received water to a point-of-use temperature” that is “at least about
115 degrees Fahrenheit.” The Examiner correctly finds that Hanson
discloses a point-of-use heater capable of heating water up to a desired
temperature such as 115°F. Ans. 4; see, e.g., Hanson 3:34—37 (stating that
the maximum required water temperature is 160—180° F, which encompasses
115° F). Appellant does not question whether Hanson’s heating element 42
would be capable of heating received water at an intermediate temperature
of approximately 75° F to a point-of-use temperature of at least about 115° F.
Accordingly, we are not persuaded that Hanson’s heating element 42 is not
controllable to heat water received from the primary water heater to a
temperature of at least 115° F, as recited in claim 1.
Hanson discloses that water temperature affects water heating
economics, heat loss in pipes, and energy efficiency (see, e.g., Hanson 1:47—
70, 2:23—41), and, thus, is a result-effective variable. See In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.”). “[WJhere the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Id. at 1295 (citation omitted);
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Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007)
(“[Discovery of an optimum value of a result effective variable ... is
ordinarily within the skill of the art [and thus obvious].”). Appellant does
not explain why using the heater and point-of-use heater to heat water to
approximately 75° F and 115° F, respectively, as recited in claim 1, was
beyond the capabilities of a person of ordinary skill in the art, or produced
any unexpected results. Appellant’s argument does not show error by the
Examiner.
Second, Appellant argues that Hanson “clearly teaches away from the
present Applicant's invention which heats the water entering the pipes only
to room temperature. This is an operating principle entirely different from
that of Hanson.” Br. 4. Appellant explains that:
Heating water to a desired final temperature in a central heater,
and then providing devices to maintain that temperature in the
pipes leading to the points of use, is the antithesis of heating the
water to only room temperature in the central heater, and then
heating the water to the desired final temperature only at the
point of use. Each of these two different operating principles
necessarily teaches away from the other, because they are based
on two fundamentally different and mutually exclusive
principles of operation.
Id. In response to the rejection of claim 6, Appellant also argues that
Hanson expressly teaches against the use of point-of-use heaters
when he states:
[“]It is desired to point out that this equipment is not to serve the
purpose of a spot heater which has been employed in the past to
initially heat the water, giving it its full temperature rise at or
adjacent to the discharge faucet. Such arrangements are costly
to install, and the high cost of electric current in such a large
portion of our country prohibits the use of electric heating to
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Application 13/860,596
make the initial heat input into the water to give it its optimum
usable temperature.
The principal object of this present invention therefore is
to provide a method and means to achieve the method for
maintaining hot water up to its working temperature and to
ensure that it will be delivered to the user without delay when he
turns on the hot water faucet. [”]
Br. 6 (quoting Hanson, 2:14—27).
Appellant’s argument is not persuasive. Hanson expressly states the
economic reasons, not technical feasibility issues, drive the preference for
using primary heater 10, rather than the point-of-use heater 42, to initially
heat the water in the pipes. Hanson, 1:47—53. Hanson states that
“[ejconomy, whether it is in the home or commercial building requires the
water to be heated by the most economical means.” Hanson, 1:47-49. As
discussed above, Hanson discloses that primary heater 10 is controllable to
heat water up to 75°F or higher, and point-of-use heater 42 is controllable to
heat water up to 115°F or higher (see, e.g., id. at 1:71—2:5), but explains:
It is well recognized that there is a very appreciable difference
between maintaining water at a given temperature level than to
initially put the heat input into the water to bring it from a supply
temperature up to the temperature desired in the premises.
Economy required that this initial input of heat to raise the
temperature of the water initially is best supplied by a central
heating plant, and the method of this present invention merely
contemplates the maintaining of this temperature.
Hanson, 2:5—14 (emphasis added). Hanson further explains the economic
preference for primary heater 10 because point-of-use heaters 42 are “costly
to install, and the high cost of electric current in such a large portion of our
country prohibits the use of electric heating to make the initial heat input
into the water to give it its optimum usable temperature.” Id. at 2:18—22.
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“A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (citations omitted). Here, Hanson expresses a preference
for the primary heater alternative based on economic reasons, not technical
issues, and recognizes that the point-of-use heater is a technologically
feasible alternative. As the Supreme Court stated, it often may be the case
that “market demand, rather than scientific literature, [will] drive design
trends. Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). Hanson does not teach away from
claim 1.
For the above reasons, the rejection of claim 1 is sustained. Because
Appellant does not identify any further distinctions for claims 5, 7, and 8,
these claims fall with claim 1.
The Rejection of Claim 3 as Unpatentable Over Hanson and Lund
Claim 3 recites “an uninsulated water pipe connected between the
primary water heater and the at least one point-of-use water heater.” The
Examiner finds that Hanson does not disclose this limitation, but Lund’s
uninsulated pipe could be used in the discharge lines of Hanson. Final Act.
3^4.
Appellant argues that the Examiner’s combination of Hanson and
Lund “would be counter-intuitive” because “Lund has nothing to do with hot
water heating systems, but rather discloses a system for transporting fluid
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hydrocarbons containing water through a treatment and transportation
system including a pipeline.” Br. 5. In response, the Examiner explains that
the “use of the uninsulated pipe with Lund may have a different use, but
[the] examiner is citing [Lund] for the simple use of the uninsulated pipe.”
Ans. 5. The Examiner also explains that Lund more broadly teaches that the
use of uninsulated pipes “allows for the fluid temperature to be sufficiently
the same as the surround area which could help with heat loss.” Id.
We agree with the Examiner. Appellant’s assumption that all hot
water pipes between a hot water heater and outlet/faucet are insulated is
unsupported attorney argument. We agree that Lund discloses uninsulated
pipes.2 We also are not persuaded by Appellant’s argument that the
Examiner’s reasoning to explain why a pipe between the primary water
heater and the point-of-use water heater would be uninsulated—to help with
heat loss as taught by Lund considering that the fluid temperature is about
the same as the surrounding area in the claimed system (final Act. 4)—lacks
rational underpinnings.
Lor the reasons above, the rejection of claim 3 is sustained.
2 To facilitate further prosecution, we note that the Examiner’s finding
that Hanson does not disclose uninsulated pipes is erroneous. Hanson
discloses that heating element 42 is wrapped around uninsulated pipe 24
between heater 10 and faucet 32. See, e.g., Hanson, Tigs. 2 and 4 (enlarged
views of pipe 24); Tig. 1 (disclosing large runs of pipe without insulation on
pipe 24); 3:55—64. If Hanson’s pipe 24 is insulated, it would be difficult for
heating element 42 to heat pipe 24 through the insulation. We also note that
it is well known that many, if not most, water pipes in homes in the United
States are uninsulated.
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The Rejection of Claim 4 as Unpatentable Over Hanson and Eddas
Claim 4 recites “each of the primary water heater and the point-of-use
water heater include a 6 kilowatt heater.” The Examiner finds that Hanson
does not disclose the output of heater elements 12, 14, 38, 40, 42, but finds
that Eddas discloses three heaters 46A, 46B, 46C, each having an output of 6
kilowatts. Final Act. 4—5. Appellant argues that “using Eddas’ heating
element in place of either or both of Hanson’s heating elements would not
meet the requirements of’ claim 1. Br. 5. The Examiner, however, finds
that Hanson’s heaters “can be adapted and tuned to have a power output of 6
kilowatts,” not that Eddas’ heaters are replacing Hanson’s heaters. Ans. 5.
Appellant does not address the rejection as articulated by the Examiner, and,
thus, does not show error by the Examiner. The rejection of claim 4 is
sustained.
The Rejection of Claim 6 as Unpatentable Over Hanson and Deutsch
Claim 6 recites “the point-of-use water heater includes a pressure
sensor for detecting when the point-of-use device is turned ON.” The
Examiner finds that Hanson’s point-of-use heater 42 does not disclose the
recited pressure sensor, but it would be obvious to modify Hanson with
pressure sensor 26 which reacts to a low pressure when a tap is opened as
taught by Deutsch. Final Act. 5. Appellant’s argument that Hanson does
not disclose, and teaches away from, point-of-use heaters (Br. 6) is not
persuasive for the same reasons as discussed above with respect to claim 1.
In addition, Appellant’s argument that there “is absolutely no need for
any such pressure sensor in the Hanson system because that system has
nothing to do with whether a tap is open or closed” (Br. 6) is not persuasive.
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Appellant does not persuasively explain why the Examiner’s reasoning as to
why one of ordinary skill in the art would use a pressure sensor in Hanson—
to avoid a dry operation (Final Act. 5) considering that Hanson indicates that
“it is only necessary to maintain temperature at the time the faucet is opened
and until such time as the full supply of hot water is readily available from
the heating source 10 (Hanson, 3:18-21)—lacks rational underpinnings.
Appellant does not explain why a person of ordinary skill in the art would
not want to know when Hanson’s heater 42 is on, and why Hanson’s heater
42 could not be modified with Deutsch’s pressure sensor 26. Because
Appellant does not show error by the Examiner, the rejection of claim 6 is
sustained.
The Rejection of Claims 9 and 10 as Unpatentable Over Hanson and Boe
Claim 9 recites that “the at least one point-of-use water heater is
deemed to be a higher-priority heater than the primary water heater.” Claim
10 recites that “the programmable controller determines electrical power
priority after each one of one or more predetermined time intervals until at
least one of the two more of the primary water heater and the at least one
point-of-use water heater is OFF.”
Appellant argues that the Examiner’s rejection erroneously determines
that the combination of Hanson and Boe disclose these limitation. See Final
Act. 5—6; Br. 6-7. First, Appellant argues that claims 9 and 10
“distinguish[] over Hanson for all the same reasons discussed above with
respect to claim 1.” Br. 6. We determined that claim 1 does not distinguish
over Hanson, for the reasons discussed above.
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Second, Appellant’s argument that “the Hanson system has nothing to
do with point-of-use heaters and, in fact, expressly teaches against their use”
(Br. 6—7) is not persuasive because, as discussed above with respect to claim
1, Hanson discloses point-of-use heater 42, and does not teach away from
their use.
Finally, Appellant’s argument that the Examiner’s combination of
Hanson and Boe “would [have] be[en] counter-intuitive” because “Boe is
cited only as disclosing a point-of-use heater 2 that can be given priority if
the water in a solar preheat tank is insufficient” (Br. 6) is not persuasive.
The Examiner, however, finds that Hanson’s identified primary and point-
of-use heaters can be adapted to use Boe’s teaching that (1) point-of-use
heater (i.e., solar collectors) can be given greater priority than primary heater
(i.e., heater 2) and (2) point-of-use heater can be cycled to provide heat if the
water in the primary heater is insufficient and will turn off when not needed.
Final Act. 5—6 (citing Boe, 8:14—16, 18—25; Figs. 1, 2a; Ans. 6 (citing Boe,
8:14—16, 18—25; Figs. 1, 2a). Appellant does not address the rejection as
articulated by the Examiner, and, thus, do not show error by the Examiner.
For the foregoing reasons, the rejection of claims 9 and 10 is sustained.
DECISION
For the above reasons, the Examiner’s rejections of claims 1 and 3—11
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)(l)(iv).
AFFIRMED
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