Ex Parte Niedermann et al

Patent Trial and Appeal Board

Nov 29, 2016

12460055 (P.T.A.B. Nov. 29, 2016)

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.
12/460,055 07/13/2009 Dirk Niedermann WAC10271P00040U S 9312
32116 7590 12/01/2016
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
docketing @ woodphillips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK NIEDERMANN and KELVIN LI
Appeal 2015-001174
Application 12/460,055
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dirk Niedermann and Kelvin Li (Appellants)1 appeal under 35 U.S.C.
§ 134 from the Examiner’s final decision rejecting claims 1—16 and 18—21.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is Wachsmuth &
Krogmann, Inc. App. Br. 1.
2 The rejection of claim 17 is withdrawn. Ans. 7—8.
Appeal 2015-001174
Application 12/460,055
SUMMARY OF INVENTION
Appellants’ claimed invention relates to “an appliance requiring a
continuous intake of atmospheric air during operation thereof.” Spec. 11.
Claim 1, reproduced below from page 16 (Claims Appendix) of the Appeal
Brief, is illustrative of the claimed subject matter:
1. A portable appliance comprising:
a housing defining a space; and
operating components in the space,
the housing having a top and bottom,
the operating components comprising an air moving
mechanism for causing atmospheric air to be drawn into the
housing space to at least one of: a) cool at least one of the
operating components; b) be treated by at least one of the
operating components; and c) cause movement of a fluid within
the housing space,
the housing having a first wall with a downwardly facing
surface in which an inlet opening is defined through which
atmospheric air is drawn into the housing space,
the housing further comprising a spacing wall that
underlies the inlet opening and bounds in conjunction with the
first wall an intake space through which atmospheric air is
guided in a generally horizontal path towards the inlet opening,
the portable appliance configured to be supported stably
in an operative position upon an upwardly facing, subjacent
support surface so that the upwardly facing, subjacent support
surface underlies the inlet opening.
REJECTION
Claims 1—16 and 18—21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hou (US 8,025,270 B2, iss. Sept. 27, 2011),
Widerby (US 4,109,564, iss. Aug. 29, 1978), and Modlin (US 7,712,249 Bl,
iss. May 11, 2010).
2
Appeal 2015-001174
Application 12/460,055
ANALYSIS
Claims 1—16
The Examiner finds that Hou discloses the invention substantially as
claimed in independent claim 1, including, inter alia, a portable appliance
having a housing with an air intake opening on a bottom surface thereof, but
does not disclose a spacing wall. Final Act. 2—3 (citing Hou, 2:48—51,
Fig. 1). The Examiner finds that Widerby discloses a spacing wall
underlying an inlet opening to define an intake space, and reasons that it
would have been obvious to a skilled artisan to include Widerby’s spacing
wall with Hou’s appliance to control the amount of air that flows into and
through Hou’s housing. Id. at 4 (citing Widerby, Fig. 2), 6; see also Ans. 9.
The Examiner finds that Modlin discloses the stable support of an appliance
on a support surface such that the support surface underlies the appliance air
inlet opening, and reasons that it would have been obvious to a skilled
artisan to support the Hou appliance, as modified by Widerby, on a support
surface as taught by Modlin. Final Act. 6 (citing Modlin, Fig. 2).
Appellants traverse, arguing, inter alia, that although the result of
incorporating Widerby’s cover disc 8 into Hou’s appliance “might be to
control the amount of air flow, this general result is not a reason to make
the combination in the first place, and none has been stated.” App. Br. 11.
Continuing, Appellants allege that “the only motivation that one skilled in
the art would have to modify Hou’s appliance is to replicate [Appellants’]
invention.” Id. We are persuaded by Appellants’arguments.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
3
Appeal 2015-001174
Application 12/460,055
obviousness. See In re Fine, 837 F.2d 1071, 1073—74 (Fed. Cir. 1988).
Although the analysis need not identify explicit teachings directed to the
claimed subject matter, “it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.’ '’ KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 401 (2007) (emphasis added). As such, ‘“there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.’” Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner proposes to include Widerby’s cover disc 8 as the
recited spacing wall with Hou’s appliance to create an intake space and
thereby control flow of air into and through the Hou appliance. Final Act. 4,
6; see also Ans. 9. However, the Examiner has not established how the
inclusion of Widerby’s cover disc would control the flow of air into Hou’s
appliance, or why a skilled artisan would wish to control output in this
manner. We note that, although not explicitly relied upon by the Examiner,
Widerby discloses that the width—and therefore the volume of the
Examiner-defined intake space—between cover disc 8 and hood 13 is
adjustable via slots 16. See Widerby 2:19-22. However, even if the
Examiner relies upon this adjustability as the proffered “control,” the
Examiner has not established that reducing the volume of the air flow path
would reduce the amount of air drawn in by Hou’s fan 302 rather than, for
example, merely altering the velocity at which the air is drawn.
Furthermore, in Widerby, cover disc 8, as part of the disclosed
ventilation element, is provided to spread or direct fresh air into a room. See
4
Appeal 2015-001174
Application 12/460,055
Widerby, 1:33—37. Widerby describes that cover disc 8 has “a flat, but
somewhat convex” configuration for this particular purpose. Id. at 1:38—39.
The Examiner has failed to establish how the inclusion of Widerby’s cover
disc 8, shaped for diffusing the output of air, would function to control the
intake of air.
We therefore find the Examiner has failed to set forth a rational
underpinning for the proposed combination of Hou and Widerby.
Accordingly, for the foregoing reasons, we reverse the Examiner’s
rejection of independent claim 1 as being unpatentable over Hou, Widerby,
and Modlin. Because claims 2—16 depend from claim 1, and the Examiner’s
use of Hou, Widerby, and Modlin with respect to those claims does not
remedy the foregoing error for claim 1, we likewise reverse the Examiner’s
rejection of claims 2—16.
Claims 18—20
Independent claim 18 requires a spacing wall similar to that of
independent claim 1. App. Br. 20 (Claims Appendix). The Examiner rejects
claim 18 similarly to the rejection of claim 1 (Final Act. 2—7), and
Appellants rely on the arguments discussed above in regards to the rejection
of claim 1 (App. Br. 12). Accordingly, for the same reasons as discussed
above, we also reverse the rejection of claim 18 as being unpatentable over
Hou, Widerby, and Modlin. Because claims 19 and 20 depend from claim
18, and the Examiner’s use of Hou, Widerby, and Modlin with respect to
those claims does not remedy the foregoing error for claim 18, we likewise
reverse the Examiner’s rejection of claims 19 and 20.
5
Appeal 2015-001174
Application 12/460,055
Claim 21
Independent claim 21 requires a spacing wall similar to that of
independent claim 1. App. Br. 21 (Claims Appendix). The Examiner rejects
claim 21 similarly to the rejection of claim 1 (Final Act. 2—7), and
Appellants rely on the arguments discussed above in regards to the rejection
of claim 1 (App. Br. 12—13). Accordingly, for the same reasons as discussed
above, we also reverse the rejection of claim 21 as being unpatentable over
Hou, Widerby, and Modlin.
DECISION
The Examiner’s decision to reject claims 1—16 and 18—21 is reversed.
REVERSED
6