Ex Parte Kooken et alDownload PDFPatent Trial and Appeal BoardAug 5, 201613291251 (P.T.A.B. Aug. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/291,251 11/08/2011 91854 7590 08/09/2016 Lincoln Electric Company/Perkins COIE LLP 700 Thirteenth Street, NW Suite 600 Washington, DC 20005-3960 FIRST NAMED INVENTOR Todd Kooken 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. 072056-8104.USOO 1670 EXAMINER SINGH, AMIT K ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 08/09/2016 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): wdcle@perkinscoie.com patentprocurement@perkinscoie.com desiree _ cunin @lincolnelectric.com PTOL-90A (Rev. 04/07) TJJ\.HTED STi\TES Pi\TENT i\.ND TR .. A.DElVLA.RK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TODD KOOKEN and LIFENG LUO Appeal2014-007207 Application 13/291,251 Technology Center 3700 Before: LYNNE H. BROWNE, MICHELLE R. OSINSKI, 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 rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ). Appeal2014-007207 Application 13/291,251 CLAIMED SUBJECT MATTER The claims are directed to a system and method for real-time adjustment and operation of a cooling fan in a welding or cutting system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A welding or cutting power system, comprising: a signal conversion module which receives an AC input signal and converts said AC input signal to a welding or a cutting output signal and outputs said output signal to a load, where said signal conversion module comprises a component which increases in temperature during operation of said signal conversion module; a cooling fan to cool said component of said signal conversion module, a motor coupled to said fan to operate said cooling fan, a temperature sensor which senses a temperature of said component and generates a temperature feedback signal corresponding to the sensed temperature, and a fan controller which controls a rotational speed of said fan based on at least said temperature feedback signal, wherein as said sensed temperature of said component incrementally changes, said fan controller incrementally and directly changes-said rotational speed. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cunningham Simon Hirst Thommes Li Ga gas Nelson us 4,191,875 us 4,549,052 us 5,789,723 US 7,319,206 B2 US 7,725,050 B2 US 2008/0185376 Al US 2010/0206869 Al 2 Mar. 4, 1980 Oct. 22, 1985 Aug. 4, 1998 Jan. 15,2008 May 25, 2010 Aug. 7, 2008 Aug. 19, 2010 Appeal2014-007207 Application 13/291,251 REJECTIONS I. Claims 8 and 9 are rejected under 35 U.S.C. § 112, i-f 1 as failing to comply with written description requirement. II. Claims 1-28 are rejected under 35 U.S.C. § 112, i-f 2 as being indefinite, with specific reference to features of claims 1, 5, 8, 17, 23, 27, and28. III. Claims 1, 4, 7, 10-13, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gagas, Simon, and Thommes. IV. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gagas, Simon, Thommes, and Cunningham. V. Claims 3, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gagas, Simon, Thommes, and Hirst. VI. Claims 5, 6, 14, 15, 21, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gagas, Simon, Thommes, and Li. VII. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gagas, Simon, Thommes, and Nelson. VIII. Claims 17, 20, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thommes, Gagas, and Simon. IX. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Thommes, Gagas, Simon, and Hirst. X. Claims 19 and 23-26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thommes, Gagas, Simon, and Li. 3 Appeal2014-007207 Application 13/291,251 OPfNION Claims 1 and 17 are independent. Claims 2-16, 21, 22, and 27 depend directly or indirectly from claim 1. Claims 18-20, 23-26, and 28 depend directly or indirectly from claim 17. We address the rejections below where we: 1) reverse the rejection of claims 8 and 9 under 35 U.S.C. § 112, i-f 1; 2) reverse the rejections of claims 1-28 under 35 U.S.C. § 112, i-f 2; and 3) affirm the rejections of claims 1-28 under 35 U.S.C. § 103(a), which we designate as new grounds of rejection. Rejection I: 35 U.S.C. § 112, first-paragraph "Second Component" The Examiner finds Appellants' Specification does not provide a written description of the term "second component" in claim 8. Final Act. 4--5. Claim 8 requires "a second temperature sensor that senses a temperature of a second component" where "said component is said buck switch and said second component is said boost switch." Appellants argue the Examiner errs because "those skilled in the art would recognize that the claimed 'second component' can be either switch [123] or switch [125]" described in the Specification. Appeal Br. 6. The Specification states "the temperature signal processor 111 has at least two temperature sense leads L 1 and L2 which are coupled to sensors S 1 and S2 which sense the temperatures of the IGBT switches 123 and 125." Spec. 12, see also Reply Br. 6. 4 Appeal2014-007207 Application I3/29I,25I The Examiner does not address the substance of this argument, but rather takes issue with a typographical error where Appellants listed the switches as "SI" and "S2" ratherthan "I23" and "I25." Answer I9. 1 The fundamental factual inquiry is whether the Specification conveys with reasonable clarity to an ordinarily skilled artisan that Appellants were in possession of the invention as claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d I555, I564 (Fed. Cir. 2003). "The written description requirement does not require the applicant 'to describe exactly the subject matter claimed, [rather] the description must clearly allow persons of ordinary skill in the art to recognize [the applicant] invented what is claimed."' Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (quoting In re Gosteli, 872 F.2d I008, IOI2 (Fed. Cir. I989)). Appellants have shown that one of ordinary skill in the art would recognize that Appellants have invented what is claimed. We accordingly do not sustain the Examiner's rejection under 35 U.S.C. § I I2, first paragraph. Rejection II: 35 U.S.C. § 112, second paragraph2 "Welding or Cutting Output Signal" The Examiner found the term "welding or cutting output signal" in claims I and I 7 unclear. Specifically, the Examiner states: "it is unclear 1 Appellants acknowledge that in the Appeal Brief the switches were erroneously indicated as SI and S2 rather than I23, I25. Reply Br. 6. This typographical error does not change the analysis. 2 The rejection of claims I-28 under 35 U.S.C. § I I2, second paragraph, based on the indefiniteness of "sensed temperature" and for insufficient 5 Appeal2014-007207 Application 13/291,251 where this signal is [in Figure 1] because there are two outputs from the output circuit 105." Final Act. 5. Appellants explain: As recognized by those skilled in the art, the output of output circuit 105 forms a current loop with torch 131 and the workpiece (shaded box in Figures 1 and 3). The welding current loop is formed such that, depending on the polarity of the welding output, the output current from output circuit 105 flows either from the torch 131 to the workpiece or from the workpiece to the torch 131 via the arc formed by torch 131. Appeal Br. 20; see also Reply Br. 8-9. Thus, the "two outputs" in Figure 1 is really a current loop which would have a single output from the output circuit 105. The Examiner does not address Appellants' argument, but reiterates that Figure 1 shows two outputs from output circuit 105. Answer 20. The Examiner fails to explain why the fact that Figure 1 shows two outlets renders the claim limitation at issue indefinite. We find that the claim term "welding or cutting output signal" in claims 1 and 17 is sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph as it informs, with reasonable certainty, those skilled in the art about the scope of the invention. Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph rejection on this basis. "First Temperature Range" and "Second Temperature Range" The Examiner states that the terms "first temperature range" and "second temperature range" in claims 5 and 23 are unclear. Final Act. 5. antecedent basis for limitations in claims 1, 5, and 17 (Final Act. 5) has been withdrawn by the Examiner and is not before us on appeal (Ans. 18). 6 Appeal2014-007207 Application 13/291,251 The Examiner provides no explanation of the rejection until the Answer where he states the terms are indefinite because the original disclosure only uses the terms "plurality of temperature ranges," "equal temperature ranges," and "incremental temperature ranges." Answer 20. Appellants argue "that those skilled in the art would not find the 'first temperature range' and the 'second temperature range' indefinite when read in context with the surrounding claim language" which specifies that these are temperature ranges from among the "plurality of temperature ranges." Reply Br. 10. We agree and find that the terms "first temperature range" and "second temperature range" in claims 5 and 23 are sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph rejection on this basis. "Second Component" and "Second Temperature of a Second Component" The Examiner states that the terms "second component" and "second temperature of a second component" in claim 8 are unclear. Final Act. 5. The Examiner explains the rejection by pointing to the 35 U.S.C. § 112, first paragraph rejection where claim 8 is rejected because the term "second component" is not used in Appellants' Specification. Answer 20. Appellants correctly argue that: those skilled in the art would recognize that, in non-limiting exemplary embodiments as illustrated in Figures 1 and 3, the claimed "second component" will be one of the switches 123 and 125. See also, e.g., Specification at par. 16. In addition, those skilled in the art would also recognize that the "temperature of a 7 Appeal2014-007207 Application 13/291,251 second component" refers to the temperature of the respective switch 123 or 125 as sensed by S 1 or S2, respectively. Appeal Br. 21-22 (citing Spec. i-fl6, Figs. 1and3). We find that the terms "second component" and "second temperature of a second component" in claim 8 are sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph rejection on this basis. "Second Cooling Fan" The Examiner states that the term "second cooling fan" in claims 27 and 28 is unclear. Final Act. 5. The Examiner explains the rejection stating: The feature "second cooling fan" is indefinite because the original disclosure does not describe in a definite manner what exactly the "second cooling fan" is. The original specification merely states "a second fan (not shown)" (page 9, line 7 of paragraph 21) and "a second fan is activated to provide additional cooling" (page 9, lines 6-7 ofparagraph22). This lack of support in a definite manner is further illustrated by the applicant amending FIG. 1 on 12 August 2013, in a response after the final rejection, to insert a second fan 117'. Answer 20-21. The Examiner's statements cannot support a finding of indefiniteness. To the contrary, the Examiner's statements describing the second fan with support from the Specification show that the term "second cooling fan" in claims 27 and 28 is sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph rejection on this basis. 8 Appeal2014-007207 Application 13/291,251 "Feedback Signal;; The Examiner states that the term "temperature feedback signal" in claim 1 is unclear. Non-Final Act. 4; Final Act. 20. 3 Specifically, he finds that "[i]t is unclear where the feedback is being accomplished or what is the feedback loop." Non-Final Act. 4. But then the Examiner goes on to explain that he understands the meaning of the term. Final Act. 20. He states: "[t]he term 'feedback' in claims 1 and 17 is used by the claim to mean 'a signal from a temperature sensor to a temperature signal processor,' for example, as described paraphrased in paragraph(s) 13 of the specifications as filed." Id. This statement shows that the term "feedback signal" is sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph as it informs, with reasonable certainty, those skilled in the art about the scope of the invention. At the same time, the Examiner goes on to state that "the accepted meaning [for feedback signal] is 'a signal which is fed back, typically, in a feedback loop, where the signal which is fed back is tapped from a feedforward signal.' The term is indefinite because the specification does not clearly redefine the term." Id. Thus, the Examiner's position is that the 3 The 112 rejection of claim 1 related to the term "feedback signal" or "temperature feedback signal" is not included in the listing of rejections in the Final Action. See Final Act. 4--19. At the same time, the Examiner addresses the rejection in a "Response to Arguments" section of the Final Action and makes clear that the rejection is maintained. See id. at 19--20. The Examiner also does not list this rejection in the Answer (see Answer 3- 18), but again addresses it in a "Response to Arguments" section of the Answer under the heading "Rejections Under 35 USC § 112" (see id. at 18 and 21-22). Thus for the purpose of this Appeal, we address the rejection as its non-inclusion in the "Claim Rejections" section of the Final Action appears to be an error. 9 Appeal2014-007207 Application 13/291,251 Appellants' use of the term is improper as it is "contrary to its ordinary meaning" and has not been clearly redefined in the Specification. Id. Appellants respond with evidence in the form of citations from the prior art (Ralph J. Smith, Controls, Devices and Systems (4th ed. 1984)) to show that the use of "feedback signal" in the context of process control is a generally understood concept. Appeal Br. 24--25. Appellants argue that this shows that the term "feedback signal" in claim 1 is not inconsistent with accepted meanings. Id. at 26. The Examiner does not accept Appellants' arguments, but rather offers additional examples in the art of the use of the term "feedback" consistent with his preferred definition of the term. Answer 21-22. The Examiner does not provide any evidence that shows that Appellants' use of the term "feedback signal" in the context of the claims is inconsistent with accepted meanings or that it is unclear. We find that the claim term "feedback signal" is not used contrary to its ordinary and customary meaning and that the Examiner, rather than applying the broadest reasonable interpretation, is applying an unnecessarily narrow understanding to the term. The Examiner's statements cannot support a finding of indefiniteness. To the contrary, the Examiner's statements describing the feedback signal with support from the Specification show that the term "feedback signal" in claim 1 is sufficiently clear to satisfy the requirements of 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain the 35 U.S.C. § 112, second paragraph rejection on this basis. 10 Appeal2014-007207 Application 13/291,251 35 U.S.C. § 103(a) Rejections We address with particularity the merits of the rejections of claims 1, 5, 11, 12, 13, 21 and 22 below. Rejection III Claims 1, 4, 7, 10, and 27 Appellants argue claims 1, 4, 7, 10, and 27 as a group. Appeal Br. 34. We select claim 1 as the representative claim, and claims 4, 7, 10, and 27 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv). In rejecting claim 1, the Examiner relies primarily on the welding power source and welding output signal of Thommes, the signal conversion module of Simon, and the temperature control system of Gagas. Final Act. 6-7. In particular, the Examiner finds that Gagas discloses: 1) "a motor coupled to said fan to operate said cooling fan," 2) "a temperature sensor which senses a temperature of said component and generates a temperature feedback signal corresponding to the sensed temperature," and 3) "a fan controller which controls a rotational speed of said fan based on at least said temperature feedback signal, wherein as said sensed temperature of said at least one component incrementally changes said fan controller incrementally and directly changes said rotational speed." Final Act. 6-7 (internal citations omitted). The Examiner finds that Simon discloses: 1) "a cartridge fan 20," 11 Appeal2014-007207 Application 13/291,251 2) "a solid state circuitry 19 which processes an AC signal and outputs an AC signal," 3) the solid state circuitry "is connected to a load of induction heaters 59 60 "and ' ' 4) the solid state circuitry "provides cooling for the solid state circuitry." Id. at 7 (internal citations omitted). The Examiner finds that Thommes discloses: 1) "a power source capable of receiving any input voltage over a wide range of input voltages and includes an input rectifier that rectifies the ac input into a de signal," 2) "de voltage stage converts the de signal to a desired de voltage," 3) "an inverter inverts the de signal into a second ac signal," and 4) "[a]n output transformer receives the second ac signal and provides a third ac signal that has a current magnitude suitable for welding." Id. at 7. We adopt the Examiner's above findings concerning Gagas, Simon, and Thommes. We further find that Gagas and Simon both teach ways of dealing with excess heat through cooling systems. See, e.g., Gagas i-fi-1 44, 45, 51; Simon, col. 2, 11. 10-12. We also find that Thommes teaches a welding power source (welding or cutting power system of claim 1) that receives an input voltage and converts it into a signal with "a current magnitude suitable for welding" (signal conversion module of claim 1 ). Thommes, Abstract. We find that Thommes discloses a cooling fan 110. Id. at col. 4, 1. 32. We find that the presence of the cooling fan in Thommes 12 Appeal2014-007207 Application 13/291,251 suggests to one of skill in the art that the Thommes device necessarily includes a motor to operate the cooling fan. We also find that issues with excess heat in welding power supplies were a known problem in the prior art at the time of invention. This is evidenced by the cooling fan in Thommes, which suggests the existence of a component which increases in temperature during operation of said signal conversion module and which must be cooled by the cooling fan, as well as, Appellants' "Description of the Related Art" section of their Specification which describes the state of the prior art. The "Description of the Related Art" states: As welding technology and applications have advanced so have the demands on welding and cutting power supplies. These increased demands require power supplies to provide increased power density and output power capabilities. With these demands come ever increasing demands on the internal components of the power supply. For example, many internal components have a significant temperature rise during operation and thus are required to be cooled. This can be done with a fan, but the use of a fan to cool components has not been optimized. Specification i-f 2 (Description of the Related Art). As shown above, the prior art teaches all of the elements of claim 1. The known issues surrounding excess heat in welding power supplies would have provided one of skill in the art with reasons to modify Thommes. One skill in the art would be led to incorporate the motor, temperature sensor, and fan controller of Gagas into the welding power source of Thommes in order to control the cooling fan of Thommes, and would be led to incorporate the signal processing circuitry of Simon into the welding power source of Thommes in order to process the signals of Thommes. 13 Appeal2014-007207 Application 13/291,251 Appellants make a number of arguments concerning why the combination of Gagas, Simon, and Thommes is improper based on the Examiner's reasoning for the combination. Appeal Br. 29--33. As we do not rely upon the reasoning of the Examiner (Final Act. 9), these arguments are moot. Appellants also contest the Examiner's findings pertaining to Gagas. See Appeal Br. 28. In particular, Appellants argue that Gagas does not sense the temperature of a component of the signal conversion module as required by claim 1, but rather the heat of the exhaust gas. Id. Thus, the sensed temperature "would not provide a direct indication of component temperatures." Id. The Examiner responds that "if a sensor detects the temperature of the exhaust stream, it is the temperature detection of a component, albeit in an indirect manner." Answer 22. Appellants also contest this finding. Reply Br. 23-24. Gagas teaches a "heat management system" designed to reduce problems in the prior art such as "elevated temperature levels in the housing that may cause component failure." Gagas i-fi-13 and 7; see also id. i-fi-15-16 (Background of the Invention). As noted by Appellants, one of the primary embodiments of Gagas teaches measuring the temperature of the exhaust air. Id. i1 5 8. In another embodiment, Gagas teaches an induction cook top with "an electronic temperature sensor located inside or on the cook top, within the housing, or in the top trim such that the temperature inside or on the cook top can be accurately detected." Id. i175. In still another embodiment, a distributed temperature sensor (DTS) is described "which may be 14 Appeal2014-007207 Application 13/291,251 contained on a strip, may be placed at any suitable location within the housing, e.g., along the bottom or top of the housing." Id. i-f 79. We determine that a "housing" could be a component of the claimed "signal conversion module." We further find that Gagas teaches temperature sensors that are in contact with the housing which would measure a temperature of the housing. In addition, we find that Gagas teaches monitoring temperature to prevent component failure and suggests monitoring the temperature of the components that might fail because of excess heat. Thus, Appellants' argument is unconvincing. Appellants also argue that because Gagas does not teach the signal conversion module it cannot sense a temperature of a component of the signal conversion module. Appeal Br. 27. This argument does not address the combined teachings of references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. 800 F.2d 1091, 1097, (Fed. Cir. 1986). For these reasons, we sustain the Examiner's decision rejecting claims 1, 4, 7, 10, and 27. As our conclusion is based on additional findings and relies on a different rationale for combining the teachings of Thommes, Gagas, and Simon, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to react to the rejection. Claim 11 Claim 11 depends from claim 10, which depends from claim 1. Claim 11 adds that the "display screen displays said status of said signal conversion 15 Appeal2014-007207 Application 13/291,251 module such that, when said sensed temperature is at or below a threshold temperature level, a first status indication is displayed and when said sensed temperature is above said threshold level, a second status indication is displayed." Appeal Br. 45 (Claims App.). The Examiner relies on Gagas to teach the display screen, as well as the additional features of claim 11. Final Act. 8. Appellants argue that Gagas "paragraph 0078 merely discloses that '[t]he information, e.g., the conditions in the housing, may be displayed to the user on an output display.' There is no disclosure or suggestion in Gagas of displaying the claimed 'first status indication' or the claimed 'second status indication' as set forth in claim 11." Appeal Br. 34. The Examiner responds "Gagas discloses that the conditions in the housing may be displayed. Since those conditions are changeable, paragraph 0078 reads on the claimed first status indication and second status indication." Answer 25. Appellants further respond that "there is no disclosure or suggestion that the housing conditions are displayed based on the sensed temperature being 'at or below a threshold temperature level."' Reply Br. 25. As noted by the Examiner, Gagas teaches displaying changeable conditions within the housing, one of which is temperature. Thus, a first temperature and a second temperature could be displayed which are first and second status indications, one of which can be "at or below a threshold temperature level." For these reasons, we have not been apprised of error in the Examiner's rejection of claim 11, and we sustain the Examiner's decision rejecting claim 11. By virtue of claim 11 encompassing the subject matter of the claim from which it depends, we likewise designate our 16 Appeal2014-007207 Application 13/291,251 affinnance of claim 11 as a new ground of rejection under 37 C.F.R. § 41.50(b). Claim 12 Claim 12 depends from claim 10 and adds: "said display screen displays a maintenance status of said fan." Appeal Br. 45 (Claims App.). The Examiner again relies on Gagas to teach the display screen, as well as the additional features of claim 12. Final Act. 8. The Examiner's position is that the phrase "conditions in the housing may be displayed" in Gagas "reads on the maintenance status of the fan." Answer 25. Appellants argue that "[t]here is no disclosure or suggestion in Gagas of displaying the claimed 'maintenance status of said fan' as set forth in claim 12." Appeal Br. 34. Appellants further argue that "the only example in Gagas for 'conditions in the housing' is the temperature in the housing" and that "[a ]bsent additional disclosure, there is no reasonable basis to contend that 'conditions in the housing' also includes 'maintenance status of said fan."' Reply Br. 26. Therefore, it is argued, the Examiner is using improper hindsight reasoning. Id. Appellants' contention that temperature is the only example of conditions in the housing in Gagas is incorrect. Gagas states: "the system may feature any variety of ... sensor used to detect a condition in the housing, e.g. temperature, resistance, magnetic field, or current." Gagas i-f 72. Gagas also teaches that other types of sensors are used to measure other "conditions in the housing" such as backpressure and fan speed. Id. i-fi-1 5 8, 72. We also note that Gagas explicitly states that: "[ n Jo maintenance 17 Appeal2014-007207 Application 13/291,251 is required [for the cooling system], except for the fans. Id. il 51 (emphasis added). We find that the above teachings of Gagas support the Examiner's position that "conditions in the housing may be displayed" in Gagas "reads on the maintenance status of the fan." For these reasons, we have not been apprised of error in the Examiner's rejection of claim 12, and we sustain the Examiner's decision rejecting claim 12. By virtue of claim 12 encompassing the subject matter of the claim from which it depends, we likewise designate our affirmance of claim 12 as a new ground of rejection under 37 C.F.R. § 41.50(b). Claim 13 Claim 13 depends from claim 12 and adds: "said displayed maintenance status is based on at least one of a predetermined maintenance schedule and fan speed feedback signal." Appeal Br. 45 (Claims App.). The Examiner relies on Gagas to teach the fan speed feedback signal, as well as the additional features of claim 13. Final Act. 8. Appellants argue that "Gagas does not disclose or suggest the claimed 'maintenance status of said fan' -- let alone that the 'maintenance status is based on at least one of a predetermined maintenance schedule and fan speed feedback signal' as set forth in claim 13." Appeal Br. 35. The Examiner found that "fan speed is a condition in the housing." Answer 25. In addition, as noted above, Gagas teaches monitoring the fan speed, which can be a displayed condition in the housing. The Examiner further states: "A condition displayed to the user will cause a user input 18 Appeal2014-007207 Application 13/291,251 which will be entered into the electronic controls for changing fan speed, reading on the claimed 'fan speed feedback signal."' Id. For these reasons, we have not been apprised of error in the Examiner's rejection of claim 13, and we sustain the Examiner's decision rejecting claim 13. By virtue of claim 13 encompassing the subject matter of the claim from which it depends, we likewise designate our affirmance of claim 13 as a new ground of rejection under 37 C.F.R. § 41.50(b) .. Rejections IV, V, and VII As claims 2, 3, 8, 9, and 16 depend from claim 1 (directly or indirectly), and Appellants rely on the same arguments and reasoning we found unpersuasive in connection with claim 1 (Appeal Br. 35, 39), we affirm the rejections of claim 2 as unpatentable under 35 U.S.C. § 103(a) over Gagas, Simon, Thommes, and Cunningham; claims 3, 8, and 9 as unpatentable under 35 U.S.C. § 103(a) over Gagas, Simon, Thommes, and Hirst; and claim 16 as unpatentable under 35 U.S.C. § 103(a) over Gagas, Simon, Thommes, and Nelson. By virtue of claims 2, 3, 8, 9, and 16 encompassing the subject matter of the claims from which they depend, we likewise designate our affirmance of claims 2, 3, 8, 9, and 16 as new grounds of rejection under 37 C.F.R. § 41.50(b). 19 Appeal2014-007207 Application 13/291,251 Rejections VIII and IX Appellants state that the Examiner's analysis for claims 1 and 17 is similar and therefore relies on the arguments over the rejection of independent claim 1 for independent claim 17. Appeal Br. 40. Claims 18, 20, and 28 depend from claim 17. For all of these claims, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with claim 1. Appeal Br. 40-41. Therefore we sustain the rejections of claims 17, 20, and 28 as unpatentable under 35 U.S.C. § 103(a) over Thommes, Gagas, and Simon; and claim 18 as unpatentable under 35 U.S.C. § 103(a) over Thommes, Gagas, Simon, and Hirst. The designation of the affirmance of the rejection against independent claim 1 as a new ground of rejection because our reasoning differs from the reasoning provided by the Examiner applies equally to independent claim 17, and we designate our affirmance of independent claim 1 7 a new ground of rejection under 37 C.F.R. § 41.50(b). By virtue of claims 18, 20, and 28 encompassing the subject matter of the claims from which they depend, we likewise designate our affirmance of claims 18, 20, and 28 as new grounds of rejection. Rejection VI Claims 5, 6, 14, and 15 Appellants argue claims 5, 6, 14, and 15 as a group. Appeal Br. 38. We select claim 5 as the representative claim, and claims 6, 14, and 15 stand or fall with claim 5. See 37 C.F.R. § 41.37(c)(iv). Claim 5 depends from claim 1 and adds "a plurality of temperature ranges," "each ... associated with a different rotational speed setting" where 20 Appeal2014-007207 Application 13/291,251 the "fan controller incrementally changes said rotational speed" based on a sensed temperature of the component. Appeal Br. 44 (Claims App.). The Examiner relies on the teachings of Li for these features. Final Act. 11-12. Appellants argue that one of skill in the art would not have combined the teachings of Li and Gagas. Appeal Br. 36-37. This is because "the cooling system in Li is designed to selectively cool different surface areas of a heated drum that have overheated" while "the cooling system in Gagas uses an electronic cooling device 150, which uses the Peltier effect, to cool the housing 124" generally. Id. at 37 (emphasis omitted). Appellants' argument focuses on details of Gagas and Li which are not relied upon by the Examiner in making the rejection of claim 5. The Examiner relies on "the control of multispeed fans as taught by Li," rather than whether the fan is selectively cooling a surface or generally cooling a housing. Final Act. 13. Appellants further argue that "Gagas does not disclos[ e] or even remote[ly] suggest that selective cooling of a surface would be desirable in its system." Appeal Br. 3 7. But, this is not required. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 407 (reversing the requirement for a motivation or suggestion to combine the prior art to be found in the prior art). As per the Supreme Court's test in KSR, the Examiner has provided a reason for the combination with a "rational underpinning to support the legal conclusion of obviousness." Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see Final Act. 13. Appellants do not directly address the Examiner's stated reason to combine the teachings of Li with Gagas. Appellants also argue that Gagas teaches away from combination with Li. Appeal Br. 3 7. They focus on one embodiment of Gagas with a 21 Appeal2014-007207 Application 13/291,251 thermoelectric cooling device that uses the Peltier effect to cool the housing, rather than selective cooling of the surface as taught by Li. Id. Appellants argue that Gagas' method of cooling the air inside the housing teaches away from Li's method of cooling selective surfaces. Id. They also imply that Gagas' method is a more efficient way of cooling. Id. Appellants further argue that Li teaches away from combination with Gagas: "unlike Li, there is no need to cool only certain surface areas [in Gagas] while maintaining the heat in other surface areas. Accordingly, Appellant[ s] submit[] that Li teaches away from the type of cooling required by Gagas (at a minimum, there is no evidence that shows that selectively cooling surfaces of a cook top will be advantageous to the system in Gagas in order to render obvious such a modification)." Reply Br. 28. The Examiner correctly responds that "disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments." Answer 26. For these reasons, we have not been apprised of error in the Examiner's rejection of claim 5. We affirm the rejection of claim 5, and claims 6, 14, and 15 which fall therewith, as unpatentable under 35 U.S.C. § 103(a) over Gagas, Simon, Thommes, and Li. By virtue of claims 5, 6, 14, and 15 encompassing the subject matter of the claims from which they depend, we likewise designate our affirmance of claims 5, 6, 14, and 15 as a new ground of rejection under 37 C.F.R. § 41.50(b). Claims 21and22 Claims 21 and 22 each depend from claim 6, which depends from claim 5. Claim 21 adds an "incremental temperature range [of each 22 Appeal2014-007207 Application 13/291,251 temperature range in said plurality of temperature ranges] is 0.001to20° F." Claim 22 is identical to claim 21, except the range is "0.001 to 5° F." Appeal Br. 47 (Claims App.). The Examiner states that "it would have been an obvious matter of design choice, to a person having ordinary skill in the art, to use the temperature and temperature ranges taught by Gagas (paragraph(s) 0053) and Li (C1L52 through C2L28) because Applicant has not disclosed that the claimed temperature ranges provide an advantage, are used for a particular purpose, or solve a stated problem." Final Act. 13. The Examiner further states that "A person having ordinary skill in the art, furthermore, would have expected Applicant's invention to perform equally well with the temperature and temperature ranges taught by Gagas (paragraph(s) 0053) and Li (C1L52 through C2L28) because Gagas or Li does not disclose the temperature and temperature ranges taught by Gagas (paragraph(s) 0053) and Li (C1L52 through C2L28) are critical." Appellants argue that Gagas does not disclose or suggest "incremental temperature range [ s]," or the claimed ranges of claims 21 and 22. Appeal Br. 38-39. In addition, Appellants argue that the need to show criticality is not applicable because "the concept of incremental temperature ranges as set forth in claims 21 and 22 is not disclosed in Gagas - let alone any disclosure of ranges that overlap." Id. at 39. In so arguing Appellants fail to address the rejection over Li. The Examiner states that the features of claim 21 and 22 were obvious over the teachings of Gagas and the teachings of Li. In particular, the Examiner finds that Li teaches varying fan speed "from off to a speed set by the controller based on a temperature below or above the threshold" in support of the 23 Appeal2014-007207 Application 13/291,251 incremental nature of the change in fan speed and temperature. Final Act. 12. Because Appellants do not address Li, we have not been apprised of error in the Examiner's rejection of claims 21 and 22 over Li, and we sustain the rejection of claims 21 and 22. By virtue of claims 21 and 22 encompassing the subject matter of the claims from which they depend, we likewise designate our affirmance of claims 21 and 22 as a new ground of rejection under 37 C.F.R. § 41.50(b). Rejection X In connection with the rejection of claims 19 and 23-26, Appellants rely on the same arguments and reasoning we found unpersuasive in connection with claims 5, 6, 17, 21, and 22. Appeal Br. 41. Therefore we affirm the rejections of claims 19 and 23-26 as unpatentable under 35 U.S.C. § 103(a) over Thommes, Gagas, Simon, and Li. By virtue of claims 19 and 23-26 encompassing the subject matter of the claims from which they depend, we likewise designate our affirmance of claims 19 and 23-26 as a new ground of rejection under 37 C.F.R. § 41.50(b). DECISION The Examiner's rejection under 35 U.S.C. § 112, first paragraph of claims 8 and 9 is REVERSED. The Examiner's rejections under 35 U.S.C. § 112, second paragraph of claims 1-28 are REVERSED. The Examiner's rejections under 35 U.S.C. § 103(a) of claims 1-28 are AFFIRMED, and designated NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b). 24 Appeal2014-007207 Application 13/291,251 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 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 25 Copy with citationCopy as parenthetical citation