Ex Parte Kristensson et al

Patent Trial and Appeal Board

Apr 27, 2016

10567914 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/567,914 0210712006 Jan Kristensson
881 7590 04/29/2016
STITES & HARBISON PLLC
1800 Diagonal Road
SUITE 325
ALEXANDRIA, VA 22314
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.
P09965USOO/MP 5898
EXAMINER
MILLER, SAMANTHA A
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
iplaw@stites.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN KRISTENSSON, DAN KRISTENSSON, and
PAL SVENSSON
Appeal2013-010638
Application 10/567,914 1
Technology Center 3700
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jan Kristensson et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 2-18, 20, 21, and 25-30.
Appellants' representative presented oral argument on April 21, 2016. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
According to Appellants, the real party in interest is AIRSONNETT
AB. Br. 1 (filed Aug. 23, 2012).
Appeal2013-010638
Application 10/567,914
INVENTION
Appellants' invention relates to "an air supply device for obtaining
zones of clean air in premises." Spec. 1, 11. 1-2.
Claim 25, the sole independent claim, is representative of the claimed
invention and reads as follows:
25. An air supply device for obtaining a distinct zone of air in
a premises, compnsmg:
a housing having an air inlet to which air is supplied
under pressure and an air permeable body positioned to
discharge air from the housing having a lower temperature than
that of the premises,
the air permeable body including an inner part formed of
a porous material to offer resistance to air from the air inlet
flowing through the air permeable body,
the air permeable body further including an outer part
located adjacent to essentially the entire exterior of the inner
part,
the outer part comprising a plurality of passages which
are packed together against each other,
the passages having inlet ends adjacent the exterior of the
inner part and positioned to receive the air which passes
through the inner part,
the passages extending outwardly away from the inner
part to outlet ends, the passages being generally rectilinear and
of uniform thickness, each passage having substantially the
same diameter along its entire length from its inlet end to their
outlet end, and the passages having a length at least four times
their width,
such that the partial airstreams coming out of the outlet
ends and into said zone are generally rectilinear and
substantially laminar, providing uniformly distributed partial
airstreams of reduced turbulence in said zone.
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Application 10/567,914
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claim 25 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement
requirement.
II. The Examiner rejected claim 25 under 35 U.S.C. § 112, second
paragraph, for being indefinite.
III. The Examiner rejected claims 2, 5-8, 10-18, 20, 21, and 25-30
under 35 U.S.C. § 103(a) as being unpatentable over
Kristensson (US 5,167,577, iss. Dec. 1, 1992), Strongin (US
5,716,268, iss. Feb. 10, 1998), and German Patent (DE 26 08
792 A, pub. Sept. 8, 1977)2.
IV. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent,
and McLaughlin (US 6,368,207 Bl, iss. Apr. 9, 2002).
V. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent,
and Gottschalk (EP 0 787 954 Bl, pub. May 24, 2000).
2 As both Appellants and Examiner refer to DE 26 08 792 A as the
"German Patent," we shall follow suit for consistency purposes. We derive
our understanding of this reference from the translation contained in the
image file wrapper of this application. All references to the text of this
document are to portions of the translation.
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Application 10/567,914
VI. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent,
and Briggs (US 6,132,318, iss. Oct. 17, 2000).
ANALYSIS
Rejection I
The Examiner finds that although "the [S]pecification does show []
tubes 17 are packed together against each other, however it does not show 'a
plurality of passages which are packed together against each other'."
Final Act. 2 (transmitted March 16, 2012). According to the Examiner,
"[ t ]his is unclear because the passages are not packed together against each
other, but the tubes are." Ans. 14.
"The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosure in the patent coupled
with information known in the art without undue experimentation." United
States vs. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). In this
case, although we appreciate that Appellants' Specification describes that
tubes 17 are packed against each other, and not passages 16, nonetheless, we
do not agree that the amount of experimentation required to determine that
tubes 17 are packed against each other, and not passages 16, is undue. See
In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). Moreover, we note that
the Examiner explicitly acknowledges that, "a plurality of passages which
are packed against each other will be considered a plurality of tubes which
are packed together against each other." Final Act. 2; see also Br. 3--4.
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Application 10/567,914
As such, the Examiner has not provided evidence or reasoning that
shows that a person of ordinary skill in the art could not have practiced,
without undue experimentation, the claimed invention. The Examiner's
statement as to what Appellants' Specification fails to describe is not
sufficient for establishing that undue experimentation would have been
required. Moreover, the Examiner has not specifically discussed any of the
Wands factors in establishing that Appellants' disclosure is non-enabling.
See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 25 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
Rejection II
The Examiner finds that the phrase "substantially laminar" is
indefinite as "air [flow] has to be either laminar, in transition, or turbulent."
Final Act. 3.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether those skilled in the art would understand what is claimed when the
claim is read in light of the Specification. Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In this case,
"[ w ]ords of approximation, such as 'generally' and 'substantially,' are
descriptive terms commonly used in patent claims 'to avoid a strict
numerical boundary to the specified parameter."' See Playtex Prods., Inc. v.
Proctor and Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005). As such, we
agree with Appellants that a skilled artisan would understand from
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Application 10/567,914
Appellants' Specification and drawings that Appellants have used the term
"substantially" as a term of approximation to mean mostly and to allow
some deviation from a specified parameter. See Br. 4. In other words, we
agree with Appellants that the phrase "substantially laminar" envisions some
amount of deviation from "precisely laminar." See id.
Accordingly, we do not sustain the rejection of claim 25 under 35
U.S.C. § 112, second paragraph, as being indefinite.
Rejection III
Appellants do not present arguments for the patentability of claims 2,
5-8, 10-18, 20, 21, and 26-30 apart from claim 25. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 25 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 5-8, 10-18, 20, 21, and 26-30 standing or falling with claim
25.
The Examiner finds that Kristensson discloses, inter alia, an air
supply device including housing 1, an air inlet 7, and air permeable body 9
having a porous inner part 13 and an outer part wire net or PVC covering 16
having a plurality of passages, but fails to disclose,
passages having a length at least four times their width or the
length of each passage is 4-10 times greater than their width; all
or almost all passages are of equal length; the passages are
defined by tubes; the passages being generally rectilinear and of
uniform thickness; or each passage having substantially the
same diameter along its entire length from its inlet end
to their outlet end.
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Application 10/567,914
Final Act. 5-7 (citing Kristensson, col. 2, 11. 18-19, 38--40, and 50-59; col.
3, 5-24; Fig. 1); see also Ans. 14. Nonetheless, the Examiner finds that
Strongin discloses a plurality of packed rectilinear passages (cells 10) having
the same width/diameter "d" along their length and having a length that is at
least four times their width "d." See id. at 7 (citing Strongin, col. 2, 11. 23-
26 and Figs. 3, 4). The Examiner concludes that it would have been obvious
for a person of ordinary skill in the art "to have modified the passages of
Kristensson in view of the passage width and length of STRONGIN in order
to promote uniformity and to smooth-out the turbulence of jets." Id. (citing
Strongin, col. 2, 11. 22-23).
The Examiner further finds that the combined teachings of
Kristensson and Strongin do "not teach [that] the outer part is long in (the)
direction of air flow than the inner part, the passages extending outwardly
away from the inner part to outlet ends, or the passages are slanted in order
to fit a curved surface." Id. at 7-8. However, the Examiner finds that the
German Patent discloses a plurality of radial passages 3 that extend
outwardly away from inner part 2 to outlet ends 4 and that is slanted in order
to fit a curved surface. Id. at 8 (citing German Patent, p. 3, 11. 3--4 and Fig.
1 ). Thus, the Examiner determines that it would have been obvious for a
person of ordinary skill in the art "to have modified the air system of
Kristensson in view of STRONGIN in view of the teaching of the German
Patent in order to reduce the exhaust velocity and the investment and energy
expenditure is reduced." Id. (citing German Patent, p. 3, 11. 5-7 and 13).
After describing the teachings of each of Kristensson, Strongin, and
the German Patent (see Br. 5-7), Appellants argue that Kristensson fails to
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Application 10/567,914
disclose an outer part, as called for by claim 25, which generates a
"substantially laminar" flow. See id. at 8. Appellants further argue that
Strongin's cells 10 are not packed together, but rather form a honeycomb
arrangement and thus are not "generally rectilinear and/or of uniform
thickness." See id. at 9. Appellants also contend that because the passages
in the German Patent "extend outwardly as part of a honeycomb in straight
lines from a curved surface, the passages cannot possibly be of uniform
cross section from end to end." Id. at 10.
We are not persuaded by Appellants' arguments because Appellants'
arguments are not commensurate with the Examiner's rejection, which is
based on a combination of Kristensson, Strongin, and the German Patent. It
is well established that 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). Although we appreciate that Kristensson fails to
disclose all of the structural limitations of the claimed air supply device,
nonetheless, Kristensson's air supply device including porous layer 13 and
wire net 16 "generate[s] a continuous, turbulent-free slow air flow," i.e.,
"substantial laminar" air flow. See Kristensson, col. 2, 11. 55-58. We also
do not agree with Appellants' position regarding Strongin's cells 10 because
Strongin specifically shows in the longitudinal and bottom views of Figures
3 and 43, respectively, a plurality of generally rectilinear and uniform
3 Strongin describes Figure 3 as a longitudinal section of an enlarged
view of portion A and Figure 4 as a bottom view of Figure 3 along arrow B.
See Strongin, col. 2, 11. 52-58.
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Appeal2013-010638
Application 10/567,914
thickness passages, i.e., cells 10, that "smooth out the turbulence of jets" by
having a length "l" to diameter "d" ratio of at least 10: 1. See Strongin, col.
2, 11. 22-26.
Furthermore, although Appellants are correct that the passages in the
German Patent that extend from a curved surface "cannot possibly be of
uniform cross section from end to end," nonetheless, we note that claims 25
is not so limiting. It is well established that limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Here, claim 25 requires "passages being generally
rectilinear and of uniform thickness." Br. 19 (emphasis added). As noted
above, the term "generally" is used as a term of approximation to mean
"mostly" so that the claimed "passages being rectilinear and of uniform
thickness" is not limited to completely rectilinear and uniform passages from
end to end, as Appellants argue. Accordingly, claim 25 does not exclude the
German Patent's mostly rectilinear and uniform passages, i.e., conical
nozzles/passages. Moreover, we agree with the Examiner that like the
German Patent, "Appellant[s'] invention [also] teaches jets [that] are
rectilinear and on a curved surface." Ans. 15 and 17-18; compare German
Patent, Fig. 1 with Appellant's Drawings, Fig. 1.
Appellants further argue that the Examiner's reasoning to combine the
teachings of Kristensson, Strongin, and the German Patent is based on
"conclusory statements ... supported only by statements of reasons having
nothing to do with the purpose of the present invention." Br. 10-11.
According to Appellants, "the Examiner is apparently substituting the
elongated cells of Strongin for the holes in the PVC wire mesh of
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Appeal2013-010638
Application 10/567,914
Kristensson" and then "taking Strongin's cells 10 and putting them onto a
curved surface," as taught by the German Patent. Id. at 12-13. Appellants
contend that, "the Examiner does not provide one scintilla of evidence that
there is a suggestion, motivation or teaching in the prior art of why one of
ordinary skill in the art would combine these references to render claim 25
obvious." Id. at 11.
At the outset, we do not agree with Appellants' description of the
Examiner's rejection. More specifically, the Examiner is not substituting
Strongin's cells 10 for Kristensson's holes in wire net 16, as Appellants
argue, but rather is modifying Kristensson's holes in wire net 16 to have a
length "l" to diameter "d" ratio of at least 10: 1, as taught by Strongin. See
Final Act. 7. Additionally, the Examiner is not putting Strongin's cells 10
onto a curved surface, but rather in view of the German Patent, is modifying
the air supply device of Kristensson and Strongin to fit the passages on a
curved surface. See id. at 8.
Furthermore, we note that Appellants' arguments appear to be holding
the Examiner to the old teaching, suggestion, or motivation ("TSM")
standard where there must be some suggestion or motivation, either in the
references themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to combine reference
teachings; such a standard is not required. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). The proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
teachings of Kristensson, Strongin, and the German Patent. See KSR, 550
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Application 10/567,914
U.S. at 418 (stating that "rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness" (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006))). In this case, Appellants' conclusory assertions fail to point out the
error in the rationale provided by the Examiner, namely, "to promote
uniformity and to smooth-out the turbulence of jets" and "to reduce the
exhaust velocity and the investment and energy expenditure." Ans. 18.
Given that Strongin's cells 10, having a length "l" to diameter "d" ratio of at
least 10: 1, "smooth out the turbulence of jets" and the German Patent's
radial passages arranged in a dome-shaped configuration reduces the exit
velocity of the air flow, the Examiner's reasoning has rational
underpinnings. See Strongin, col. 2, 11. 22-23 and German Patent, p. 3, 11. 5-
7.
Lastly, Appellants argue that Strongin "is non-analogous art in that
removal of deleterious impurities from a room and providing purified air in a
clean space [as the claimed invention does] are not within the same field of
endeavor and Strongin is not reasonably pertinent to the particular problem
with which the present invention is concerned." Br. 13. According to
Appellants, "[t]he present invention provides purified air to a clean air
space," whereas "Strongin is directed to a very different purpose of
essentially stirring up air in a room (essentially the opposite purpose of the
present invention)." Id.
"Criteria for deten11ining \vhether prior art is analogous may be
summarized as '( 1) whether the art is form the same field of endeavor~
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Application 10/567,914
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is
. l d ,., 5 . ·1· }Jf. . J> ., 1 B" ··1B "6 c L' "d I"-",;;; mvo ve . , czents zc astzc roas., nc. v. wtage ,11 , / 6 r .J .J..,_,
1359 (Fed. Cir. 2014) (citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992) ). In this case, the inventor is concen1ed with an "air supply device for
obtaining zones of clean air in premises." Spec. 1, 11. 1-2; see also Br. 13.
As such, an inventor seeking to provide a zone of pure intake air would look
for suitable ways to reduce turbulent airflow. See Spec. 3, 11. 14--22. As we
have noted above, Strongin discloses smoothing turbulence of air jets by
providing to a plurality of generally rectilinear and uniform thickness
passages, i.e., cells 10, a length "l" to diameter "d" ratio of at least 10: 1. See
Strongin, col. 2, 11. 22-26. Thus, Strongin discloses a potential way to
reduce turbulent airflow, namely, by providing cells 10 a length "l" to
diameter "d" ratio of at least 10: 1. Consequently, in contrast to Appellants'
position, the Strongin reference is analogous art.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 25, and claims 2, 5-8, 10-18, 20, 21, and
26-30, falling with claim 25, as being unpatentable over Kristensson,
Strongin, and German Patent.
Rejections IV-VI
With respect to Rejections IV-VI, Appellants do not provide
additional substantive arguments other than the arguments presented supra.
See Appeal Br. 14. Accordingly, for the same reasons as stated above, we
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Application 10/567,914
sustain the rejections under 35 U.S.C. § 103(a) of claim 3 as unpatentable
over Kristensson, Strongin, German Patent, and McLaughlin; of claim 4 as
unpatentable over Kristensson, Strongin, German Patent, and Gottschalk;
and of claim 9 as unpatentable over Kristensson, Strongin, German Patent,
and Briggs.
SUMMARY
The Examiner's decision to reject claim 25 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the enablement requirement, is
reversed.
The Examiner's decision to reject claim 25 under 35 U.S.C. § 112,
second paragraph, for being indefinite, is reversed.
The Examiner's decision to reject claims 2, 5-8, 10-18, 20, 21, and
25-30 under 35 U.S.C. § 103(a) as being unpatentable over Kristensson,
Strongin, and German Patent is affirmed.
The Examiner's decision to reject claim 3 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent, and
McLaughlin is affirmed.
The Examiner's decision to reject claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent, and
Gottschalk is affirmed.
The Examiner's decision to reject claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over Kristensson, Strongin, German Patent, and Briggs is
affirmed.
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Application 10/567,914
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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