Ex Parte Nadel et al

Patent Trial and Appeal Board

May 1, 2017

12623986 (P.T.A.B. May. 1, 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.
12/623,986 11/23/2009 Fredric NADEL 121266.0106 7445
27557 7590 05/03/2017
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
05/03/2017 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):
B elay @ blankrome. com
W ashingtonDocketing @ blankrome. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIC NADEL, MOSHE MICHAEL SIEGEL,
and QIANLI FU
Appeal 2015-001079
Application 12/623,986
Technology Center 3700
Before LYNNE H. BROWNE, WILLIAM A. CAPP, and
ERIC C. JESCHKE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1, 3—8, 10-18, and 20-25. We have jurisdiction under 35
U.S.C. § 6(b).1
We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our discretionary authority under 37 C.F.R.
§ 41.50(b).
'This matter came before the Board for a regularly scheduled oral hearing
April 19, 2017.
Appeal 2015-001079
Application 12/623,986
THE INVENTION
Appellants’ invention relates to cooling/heating units. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A wall or window casing for securing a heating/cooling
unit comprising:
a top side;
a bottom side;
a first lateral side orthogonally formed to the top side and
bottom side; and
a second lateral side parallel to said first lateral side;
wherein each of said top side, bottom side, first lateral side
and second lateral side is double walled to have a first wall
comprising an inner wall and a second wall separate from the
first wall, said second wall comprising an outer wall, and a
space between the inner wall and the outer wall, and said casing
further comprising an insulating material located in the space
between the inner wall and the outer wall, and wherein the inner
wall of each side forms an opening configured to removably
receive the heating / cooling unit.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Smith US 3,308,634 Mar. 14, 1965
Nervina US 4,840,041 June 20, 1989
Yazawa JP 2000-055403 Feb. 25, 2000
Duncan US 2006/0201089 A1 Sept. 14, 2006
Ha US 2007/0039342 A1 Feb. 22, 2007
The following rejections are before us for review:
1. Claims 1, 3—6, 8, 10, 12, 14—16, and 20-25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Ha and Yazawa.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ha, Yazawa, and Nervina.
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Application 12/623,986
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ha, Yazawa, and Smith.
4. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ha, Yazawa, and Smith.
OPINION
Unpatentability of Claims 1, 3—6, 8, 10, 12, 14—16, and 20—25
over Ha and Yazawa
Claim 1
The Examiner finds that Ha discloses the invention substantially as
claimed except for the casing being double walled and sandwiching
insulation material therebetween. Non-Final Action 2—3. The Examiner
relies on Yazawa for this feature and concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
modify Ha to include a double-walled, insulated casing as taught by
Yazawa. Id. According to the Examiner, a person of ordinary skill in the art
would have done this to mitigate vibration noise. Id.
Appellants traverse the Examiner’s rejection by arguing that
Yazawa’s double-walled component is part of the air-conditioner unit rather
than a casing.
[T]he sandwich panel of Yazawa forms the outer part of the air
conditioner. Indeed, the title of Yazawa is “a sandwich panel for
air conditioner” and the industrial application is a “sandwich
panel used for the outer casing of an air conditioner, etc.” ... If
Yazawa taught an air conditioner casing as defined by the
present claims, it would discuss the use of the casing in a wall or
window opening. However, Yazawa makes no mention of a wall
or window opening. Quite simply, Yazawa does not teach a wall
or window casing (as claimed), but an air conditioner having an
outer casing that includes a sandwich panel.
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Application 12/623,986
Appeal Br. 4 (emphasis omitted). Similarly, Appellants argue that Yazawa
does not teach or suggest that a casing (that receives the air conditioner) can
be double-walled, as claimed. Reply Br. 2.
Appellants’ arguments focus on whether Yazawa is a sandwich panel
“for” or “of’ an air conditioner. Id. According to Appellants, any ambiguity
in Yazawa’s language favors Appellants’ position. Id. at 1. Appellants
contend that “[t]o the extent the teachings of Yazawa are unclear, the
Examiner has failed to carry that burden and the rejection should be
reversed.” Id.
The structure of Yazawa’s panel is illustrated in Drawing 3.
Drawing 3 shows an inner plate 2 and an outer plate 4. Interposed between
the two plates is foam 14. Id. Drawing 3; 4—6. The completed panel is
attached to frame 12 of an air conditioner by means of screws 13. Id.
Abstract, | 6. In the English language abstract of Yazawa, the sandwich
panel is described as a “sandwich panel used for a face board or the like of
an air conditioner.” In the machine-generated translation of the body of the
text of Yazawa, the invention is described as relating to the sandwich panel
for the outer casing of an air conditioner. Id. 11. Elsewhere, it is described
as a “sandwich panel for air conditioners.” Id. 3, 4.
We reject Appellants’ contention that the Examiner has failed to make
out a prima facie case of obviousness based on an alleged ambiguity
regarding whether Yazawa’s structure is “for” or “of’ an air conditioner. It
is well established that, as persons of scientific competence in the fields in
which they work, examiners are responsible for making findings, informed
by their scientific knowledge, as to the meaning of prior art references to
persons of ordinary skill in the art and the motivation those references would
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Application 12/623,986
provide to such persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).
Absent legal error or contrary factual evidence, those findings can establish
a prima facie case of obviousness. Id. The controversy over “for” and “of’
relates to the accuracy of a machine translation of a Japanese reference. We
view the Examiner’s findings as being informed by a reading of the entire
disclosure of Yazawa, including an analysis of the drawings that accompany
the text of the disclosure. Taking the teachings of Yazawa, as a whole, we
are not persuaded that the Examiner erred in finding that Yazawa’s structure
is, or is at least capable of being used as, a window or wall casing rather than
an integral component of a completed air conditioner unit. Under the
particular facts of this particular case, we accord little weight to a machine
translation generating a preposition as “for” or “of’ when translating from
Japanese to English.2
Furthermore, the Examiner makes clear that Yazawa is only cited as
teaching the concept of double-walled insulation. Ans. 13. Whether
Yazawa is directed to a wall or window casing that receives a completed air
conditioner unit or is directed to a completed air conditioner unit with a
double-walled, insulated outer housing, it still is useful for teaching the use
of insulated sandwich walls in conjunction with window or wall air
conditioning installations. It is well established that it is not necessary for
the prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016
2There is no indication in the record that Appellants made any effort
to obtain their own translation of Yazawa by a qualified, competent human
translator.
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Application 12/623,986
(CCPA 1972). “A reference may be read for all that it teaches, including
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418-421
(2007). Similarly, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. KSR, 550 U.S. at 417. In this
case, there is an opening in a wall or window to receive an air conditioning
unit. Under the Examiner’s proposed combination, interposed between the
fenestration opening and the wall or window frame will be a double-walled,
insulated casing as claimed because Ha teaches a casing which is modified
by Yazawa to have a double-walled, insulated sandwich structure.
Appellants next argue that Yazawa teaches away from placing a
double-walled panel into a sleeve by instead placing the double-walled panel
in the air conditioner itself. Appeal Br. 6. This argument is not persuasive
of Examiner error. A reference does not teach away if it merely discloses an
alternative invention but does not “criticize, discredit, or otherwise
discourage” investigation into the invention claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have not directed us to any
language in Yazawa that criticizes, discredits, or otherwise discourages
investigation into using double-walled, insulated structure for a wall or
window casing.
We have considered Appellants’ remaining arguments and find them
to be being without merit. In view of the foregoing discussion, we
determine the Examiner’s findings of fact are supported by a preponderance
of the evidence and that the Examiner’s legal conclusion of unpatentability
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is well-founded. Accordingly, we sustain the Examiner’s unpatentability
rejection of claim 1. However, because our underlying fact finding,
reasoning and analysis differs somewhat from the Examiner’s final rejection,
we designate our affirmance as a NEW GROUND OF REJECTION
pursuant to our discretionary authority under 37 C.F.R. § 41.50(b).
Claims 3—6, 12, 14—16, 20, 23, and 25
Appellants do not argue for the separate patentability of claims 3—6,
12, 14—16, 20, 23, and 25 apart from arguments presented with respect to
claim 1, which we have previously considered. Consequently, we sustain
the rejection of claims 3—6, 12, 14—16, 20, 23, and 25 and, for the same
reasons expressed above, hereby designate our affirmance as a NEW
GROUND OF REJECTION. See 37 C.F.R. § 41.37(c)(iv) (failure to
separately argue claims); 37 C.F.R. § 41.50(b).
Claims 8, 10, 21, 22, and 24
Claim 83
Claim 8 depends from claim 1 and adds the limitation: “wherein said
casing is received in a house wall or window opening.” Claims App.
Appellants argue that “the prior art does not teach a double-walled casing
that is received in a house wall or window opening. If anything, the
3 Our governing rule requires that an Appeal Brief set forth separate
arguments for patentability under either separate headings or sub-headings.
See 37 C.F.R. § 41.37(c)(iv) (“any claims(s) argued separately or as a
subgroup shall be argued under a separate subheading that identifies the
claims(s) by number”). In that regard, the Appeal Brief does not conform to
our rules as Appellants argue all grounds of rejection and all claims of all
grounds under rejection under a single heading without providing any
subheadings. Nevertheless, Appellants devote individual paragraphs within
the body of the argument section of the Appeal Brief to separate claims. See
Appeal Br. 6.
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Application 12/623,986
combination of Ha and Yazawa teach a double-walled air conditioner that is
received in a single-walled housing 310.” Appeal Br. 6 (emphasis omitted).
Figure 6 of Ha discloses “a receiving hole 320 [] formed on the indoor
wall 300 to receive the air conditioner 100.” Ha, Fig. 6,1 55 (emphasis
omitted). Ha further discloses that “housing 310 is inserted in the receiving
hole and the air conditioner 100 is mounted in the housing 310.” Id. In
view of our discussion that the Examiner’s proposed combination teaches a
window or wall casing with a double-walled, insulated structure, we find
that Appellants’ argument is not persuasive of Examiner error and we
sustain the rejection of claim 8 and, for the same reasons expressed above,
designate our affirmance as a NEW GROUND OF REJECTION.
Claim 10
Claim 10 is an independent claim that is substantially similar in scope
to claim 1 except that it is recited as a method claim rather than an apparatus
claim. Claims App. In rejecting claim 10, the Examiner makes similar
findings to that of the rejection of claim 1 discussed above. Non-Final
Action 4—5.
Appellants argue only that “the Examiner does not explain why the
alleged functional limitation is not entitled to any patentable weight in a
method claim.” Appeal Br. 6. Our controlling rule requires that arguments
for patentability “shall explain why the examiner erred.” 37 C.F.R.
§ 41.37(c)(iv). We do not consider Appellants’ conclusory statement to rise
to the level of a separate argument for patentability and we sustain the
rejection of claim 10 and designate our affirmance as a NEW GROUND OF
REJECTION. Id.
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Application 12/623,986
Claim 21
Claim 21 depends from claim 1 and adds the limitation: “wherein
said casing is separate from the heating / cooling unit.” Claims App.
Appellants argue that Ha and Yazawa, at best, teach a double-walled air
conditioner that is separate from a housing 310. Appeal Br. 6. We find this
argument unpersuasive for essentially the same reason that we find the
argument for claim 8 unpersuasive and we sustain the rejection of claim 21,
designating our affirmance as a NEW GROUND OF REJECTION.
Claims 22 and 24
Appellants argue that the prior art does not teach that the
heating/cooling unit has a housing and that the housing is removably
received in the opening of a double-walled casing. Appeal Br. 6. In view of
the depiction of air conditioner 100 in Figure 6 of Ha, Appellants’ argument
cannot be sustained by the evidence of record and we sustain the rejection of
claims 22 and 24, designating our affirmance as a NEW GROUND OF
REJECTION.
Unpatentability of Claims 7, 13, 17, and 18
over Combinations Based on Ha and Yazawa
Appellants do not argue for the separate patentability of claims 7, 13,
17, and 18. In view of our decision to sustain the rejection of the
independent claims from which of these claims depend, we sustain the
rejection of claims 7, 13, 17, and 18, designating our affirmance as a NEW
GROUND OF REJECTION.
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Appeal 2015-001079
Application 12/623,986
DECISION
The Examiner’s decision to reject claims 1, 3—8, 10-18, and 20-25 is
AFFIRMED, but we designate the affirmance as a NEW GROUND OF
REJECTION.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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 prosecution 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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
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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