Ex Parte Laing

Board of Patent Appeals and Interferences

Mar 24, 2010

10819455 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte OLIVER LAING1
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Appeal 2009-005770
Application 10/819,455
Technology Center 3700
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Decided: March 25, 2010
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Before MICHAEL W. O'NEILL, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The Appeal Brief identifies Oliver Laing, Karsten Laing and Birger Laing
as the real parties in interest (App. Br. 4). However, an assignment recorded
at Reel 02398, Frame 0285 subsequent to the appeal briefing identifies the
real party in interest as ITT Manufacturing Enterprises, Inc.
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The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-3, 7 and 9-28. Claims 4-6 and 8 have been previously canceled
(App. Br. 6). We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
The claimed invention is directed to a method and an apparatus for
making hot water available, which transports hot water through a hot water
line, even during periods of non-withdrawal (Spec. ¶ [0007]). The
throughput of water is interrupted at most, for pause times selected to have a
length so as to prevent substantial cooling of the hot water (Spec. ¶ [0045]).
In use, the claimed invention immediately provides hot water when a tap
connection is opened (Spec. ¶ [0107]).
Independent claims 1 and 23 read as follows (App. Br. 19 and 22,
Claims App'x.; emphasis added):
1. A method for making hot water available in a domestic
water installation, said domestic water installation comprising a
source of hot water, a hot-water line and one or more tap
connections for hot water connected to the hot-water line, the
method comprising:
transporting water from said source of hot water through
said hot-water line, during periods of non-withdrawal through
said one or more tap connections, such that a temperature
profile of water in said hot water line is substantially
temporally constant and varying spatially monotonically along
said hot-water line;
wherein said step of transporting includes a substantially
permanent throughput of water through the hot water line with
at most periodic pause times, said pause times having a length
selected to prevent substantially cooling of water in said hot-
water line.

23. A water-supply system, comprising:
a supply of hot water;
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a hot water line;
one or more tap connections for hot water connected to
the hot water line; and
a control device adapted to control transport of water
through said hot water line, during periods of non-withdrawal
of hot water by said tap connections, such that a temperature
profile of water in said hot water line is substantially
temporally constant and varying spatially monotonically along
said hot-water line;
wherein the transport of water includes a substantially
permanent throughput of water through the hot water line with
at most periodic pause times, said pause times having a length
selected to prevent substantially cooling of water in said hot-
water line.

Independent claim 18 (directed to a control device for a water-supply
system) and independent claim 22 (directed to a circulation pump for a
water-supply system) each recite the emphasized features noted in
independent claim 23 (App. Br. 21-22, Claims App'x.).

The evidence relied upon by the Examiner in rejecting the claims is:
Lujan, Jr. ("Lujan") US 4,606,325 Aug. 19, 1986

The Examiner rejected claims 1-2, 7 and 9-28 under 35 U.S.C.
§ 102(b) as anticipated by Lujan.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Lujan.

We AFFIRM-IN-PART.

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ISSUES
The following issues have been raised in the present appeal:
1. Whether the Examiner erred in finding that Lujan describes a
method in which a length of "periodic pause times" is selected "to prevent
substantially cooling of water in said hot-water line."
2. Whether the Examiner erred in finding that Lujan describes an
apparatus which allows for selection of a length of "periodic pause times . . .
to prevent substantially cooling of water in said hot-water line."
3. Whether the Examiner erred in concluding that Lujan renders
obvious a method for making hot water available having a specific
temperature range between 27° C and 35° C.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Lujan describes a water distribution system with a recirculating
cooled hot water supply line 44 that allows a user to recirculate cooled
hot water back to a hot water heater 11 rather than waste it if the water
temperature is not suitable (col. 2, ll. 55-57; col. 3, ll. 8-15; Fig. 1).
2. The system of Lujan includes an in-line temperature gauge 24,
a centrifugal pump 27, on/off control means 30, a timer clock control
means 33, and a thermostat control means 36 (col. 3, ll. 25-42; Fig. 1).
3. In the system of Lujan, the manual on/off control means 30
may be used to continuously recirculate the hot water (col. 4, ll. 2-5,
11-14).
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4. In the system of Lujan, the thermostat control means 36 may be
used so that the recirculation of the hot water continues until the set
thermostat temperature is reached (col. 4, ll. 5-7, 11-14).
5. In the system of Lujan, the timer clock 33 may be used to set a
predetermined time interval in which the system circulates the hot
water periodically, independent of any particular water temperature
(col. 3, ll. 48-52; col. 4. ll. 7-10; Fig. 1).

PRINCIPLES OF LAW
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference." Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). Analysis of whether a claim is patentable over the prior art
under 35 U.S.C. § 102 begins with a determination of the scope of the claim.
"It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover, "where the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on." In re Swinehart, 439 F.2d
210, 213 (CCPA 1971). Thus, functional limitations directed to intended
uses in an apparatus claim do not serve to distinguish the claimed apparatus
from prior art apparatuses inherently capable of performing the claimed
function. In re Schreiber, 128 F.3d at 1478-79.
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ANALYSIS
Anticipation Rejection Over Lujan
The Examiner rejects claims 1-2, 7 and 9-28 as anticipated by Lujan
(Ans. 3). The Appellant disagrees and contends that the Examiner failed to
establish a prima facie case of anticipation.
In particular, the Appellant initially contends that Lujan does not
describe a "substantially permanent transport of water through the pipes in
order to have a substantially temporally constant, or continuous, temperature
profile" based on the thermostatic controlled embodiment of Lujan (App. Br.
12-14). However, as the Examiner noted, the use of the on/off control
means 30 in Lujan provides continuous transport of water through the pipes
(FF 1, 3; Ans. 3-4), which would result in the substantially constant
temperature profile claimed.
The Appellant also contends that in Lujan, the recirculation is attained
by connection to the cold water supply before entering the source of hot
water (App. Br. 14). While we do not dispute that in Lujan, that both the
cold water supply and the recirculating hot water supply line 44 are
connected together immediately prior to the input pipe of the hot water
heater 11, the claims do not preclude such an implementation. As such, this
argument is not persuasive since it is not based on limitations appearing in
the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
The Appellant also contends that Lujan does not describe "pause
times having a length selected to prevent substantially cooling of the water
in said hot-water line" which are specified in order to maintain a specified
temperature profile (App. Br. 15).
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We first observe that treatment of the noted claim limitation directed
to the selection of the length of "periodic pause times" differs depending on
the claim. With respect to independent claim 1 which recites a "method for
making hot water available," we agree with the Appellant that Lujan fails to
specifically describe a method including selection of the recited "periodic
pause times" having a length to prevent substantially cooling of the water in
the hot-water line. In our view, whereas the presence of a timer clock 33 in
Lujan may suggest selection of periodic "on" times to ensure availability of
hot water during/for certain times, it does not suggest a method in which
periodic pause times is selected to prevent cooling of the water. Any
implicit selection of the pause time by virtue of selection of the periodic
"on" time would be directed to the time period for which hot water is not
immediately necessary, thereby suggesting that the hot water would be
allowed to cool.
However, with respect to independent claims 18, 22 and 23 that are
directed to an apparatus (i.e., control device, circulation pump, or water-
supply system, respectively), we observe that the recited functional
limitation is satisfied by the timer clock 33 of Lujan. In this regard, the
timer clock 33 is capable of being used to turn the system on and off (FF 2,
5) so that the disclosed device operates in the manner claimed, i.e., such that
the length of periodic pause times is "selected to prevent substantially
cooling of water in said hot-water line." In other words, the timer clock 33
is capable of being set so that the circulation is off for only a short duration
in which the water in the hot-water line would not substantially cool.
The Appellant's additional general arguments based on intended use
of the claimed invention (App. Br. 15) do not structurally distinguish these
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claims from the system of Lujan, and thus, are not persuasive. In re
Schreiber, 128 F.3d at 1477 ("[r]ecitation of a new intended use for an old
product does not make a claim to that old product patentable").
The Appellant's further contention that Lujan does not describe
continuous running of the recirculation (Reply Br. 2) is contrary to the
disclosure of Lujan (FF 3).
Therefore, in view of the above, the Examiner's anticipation rejection
of independent claim 1, as well as claims 2, 7 and 9-17 that ultimately
depend from claim 1, is not sustained. However, the Examiner's anticipation
rejection of independent claims 18 and 22, as well as claims 19-21 and 23-
28 that ultimately depend therefrom, is sustained, no persuasive arguments
being separately submitted with respect to these dependent claims.

Obviousness Rejection Over Lujan
Claim 3 further recites that the specific temperature of the temperature
profile is between 27°C and 35°C at one of the tap connections.
The Examiner's obviousness rejection of claim 3 is based on Lujan, as
applied to independent claim 1, with the Examiner concluding that the
selection of the specific temperature range would have been obvious as a
matter of design choice (Ans. 3, 5). However, the Examiner's rejection fails
to address the "periodic pause times" limitation we discussed supra with
respect to the rejection of claim 1 from which claim 3 ultimately depends.
As such, the Examiner's rejection of claim 3 is not sustained. The
Appellant's specific arguments with respect to claim 3 (App. Br. 16-18) are
moot.

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CONCLUSIONS
1. The Examiner erred in finding that Lujan describes a method in
which a length of "periodic pause times" is selected "to prevent substantially
cooling of water in said hot-water line."
2. The Examiner did not error in finding that Lujan describes an
apparatus which allows for selection of a length of "periodic pause times . . .
to prevent substantially cooling of water in said hot-water line."
3. The Examiner's rejection based on Lujan is insufficient to
establish obviousness of the recited method for making hot water available
at a specific temperature range.

DECISION
1. The Examiner's rejection of claims 1-2, 7 and 9-17 under 35
U.S.C. § 102(b) as anticipated by Lujan is REVERSED.
2. The Examiner's rejection of claims 18-28 under 35 U.S.C.
§ 102(b) as anticipated by Lujan is AFFIRMED.
3. The Examiner's rejection of claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Lujan is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

Appeal 2009-005770
Application 10/819,455

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