Ex Parte Nylykke

Patent Trial and Appeal Board

Nov 14, 2017

12858228 (P.T.A.B. Nov. 14, 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.
12/858,228 08/17/2010 Morten Nylykke 6495-0421 5439
35301 7590 11/16/2017
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
ARANT, HARRY E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
patentdocket @ ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORTEN NYLYKKE
Appeal 2016-002831
Application 12/858,228
Technology Center 3700
Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Morten Nylykke (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated October 23, 2014 (“Final Act.”), rejecting claims 1 and 4—13. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies MAERSK CONTAINER INDUSTRI A/S as the
real party in interest. Appeal Br. 2.
Appeal 2016-002831
Application 12/858,228
BACKGROUND
The disclosed subject matter relates to a method for dehumidifying a
refrigeration system. Spec., Abstract.2 Claims 1, 12, and 13 are
independent. Claim 1 is reproduced below, with bracketed letters and
numbers added to identify certain clauses:
1. A dehumidification method for a
refrigeration system, the refrigeration system
comprises a refrigeration circuit, a control unit, a
cooling compartment, a target air temperature, a
target air moisture percentage;
[A] wherein the refrigeration circuit
comprises:
a compressor,
an expansion valve,
a condenser,
an evaporator;
[B] wherein the cooling compartment
comprises a cooling space for cooling air, which is
separated from the rest of the cooling compartment
and which defines an air flow channel for providing
cooled air into the cooling compartment, the cooling
space comprising:
[B.l] means to blow air through the
cooling space,
[B.2] the evaporator,
[B.3] a temperature sensor placed
close to the surface of the evaporator,
[B.4] a moisture sensor arranged
upstream of the evaporator,
2 Citations to the Specification refer to the Substitute Specification
filed on August 17, 2010, as amended.
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[B.5] heating elements arranged
downstream of the evaporator;
[C] wherein the control unit determines a first
shift condition to shift from a dehumidification
mode to a re-establish mode, and a second shift
condition to shift from the re-establish mode to the
dehumidification mode; and
[D] the dehumidification method comprising
the steps of:
the control unit entering the
refrigeration system into the
dehumidification mode,
the control unit shifting the
refrigeration system to the re-establish mode
when the first shift condition is reached,
the control unit shifting the
refrigeration system to the dehumidification
mode when the second shift condition is
reached,
repeating the steps of shifting to the re­
establish mode and shifting to the
dehumidification mode until the target air
moisture percentage is reached;
[E] wherein the dehumidification mode
comprises the steps of:
[E. 1] blowing air over the evaporator,
[E.2] measuring with the moisture
sensor an air moisture percentage and air
temperature of air blown through the cooling
space before the air reaches the evaporator,
[E.3] determining by the control unit a
dew point temperature based on the measured
air moisture percentage and air temperature
of the air blown through the cooling space,
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[E.4] determining by the control unit a
target evaporator surface temperature that is
lower than the dew point temperature,
[E.5] regulating by the control unit a
surface temperature of the evaporator by
controlling the refrigeration circuit so the
surface temperature of the evaporator
corresponds to the determined target
evaporator surface temperature, and
[E.6] warming up the air with the
heating elements after the air passes over the
evaporator; and
[F] wherein the re-establish mode comprises
the steps of:
letting refrigerant into the evaporator;
and
blowing air over the evaporator to cool
the air temperature in the cooling
compartment down to the target air
temperature.
Claim 13 is reproduced below, with bracketed letters added to identify
the clauses:
13. A dehumidification method for a
refrigeration system comprising the steps of:
[A] a control unit running the refrigeration
system in a normal mode in which refrigerant is let
into an evaporator and air is blown over the
evaporator in a cooling space for cooling air, the
cooling space in a cooling compartment, separated
from the rest of the cooling compartment, and
defines an air flow channel for providing cooled air
into the cooling compartment to cool the air
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temperature in the cooling compartment down to a
target air temperature;
[B] the control unit switching the
refrigeration system from the normal mode to a
dehumidification mode in which a dew point
temperature is determined based on a measurement
of air moisture percentage and a measurement air
temperature of the air blown through the cooling
space, and regulating a surface temperature of the
evaporator to be lower than the determined dew
point temperature; and
[C] the control unit switching from the
dehumidification mode back to the normal mode;
[D] wherein the control unit switches the
refrigeration system from the normal mode to the
dehumidification when the air temperature inside
the cooling compartment is less than a specified
amount different from the target air temperature;
[E] wherein the control unit switches the
refrigeration system from the dehumidification
mode to the normal mode when the temperature
inside the cooling compartment is more than a
specified amount different from the target air
temperature.
EVIDENCE RELIED ON BY THE EXAMINER
Lundstrom
Polkinghome
US 4,350,021
US 4,843,833
US 5,129,234
US 5,578,753
US 6,029,466
US 6,070,110
US RE37,630 E
Sept. 21, 1982
July 4, 1989
July 14, 1992
Nov. 26, 1996
Feb. 29, 2000
May 30, 2000
Apr. 9, 2002
July 3, 2008
Sept. 17, 2009
Alford
Weiss
Wieszt
Shah
Behr
Zhou
Matsui
US 2008/0156891 A1
US 2009/0230202 A1
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Yamashita Machine Translation of Japanese June 15, 1999
Publication No. 11-159928 A
REJECTIONS
1. Claims 1, 7, 9, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Alford, Lundstrom, and Wieszt.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Behr.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Matsui.
4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Shah.
5. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Weiss.
6. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Zhou.
7. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alford, Lundstrom, Wieszt, and Polkinghome.
8. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita and Shah.
DISCUSSION
Rejections 1 through 7 — Claims 1 and 4—12
Appellant argues the patentability of the two independent claims in
Rejection 1—claims 1 and 12—as a group and does not provide separate
arguments for either dependent claim in Rejection 1. Appeal Br. 11—21. We
select claim 1 as representative, with the remaining claims standing or
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falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). Appellant does
not present any additional arguments for the patentability of dependent
claims 4—6, 8, 10, and 11, which are subject to Rejections 2 through 7.
Appeal Br. 21—24. Accordingly, the outcome as to Rejections 1 through 7
turns on the analysis of the rejection of claim 1.
A. Clause E.2 of Claim 1
As to clause E.2 (as identified above), the Examiner cited Alford,
column 4, lines 59 to 69, and stated that “the moisture sensor is constantly
monitoring the temperature and humidity level.” Final Act. 3. Appellant
provides six arguments under a heading reciting clause E.2. Appeal Br. 12—
17. We address each argument in turn.
First, Appellant argues that Alford does not teach or suggest clause
E.2 and states that “[a]s recited in claim[] 1 . . . and show[n] in Figure 1 [of
the Specification], . . , the claimed moisture sensor (8) is arranged upstream
of the evaporator (5) in the cooling space (3), which is separate from cooling
compartment (2).” Appeal Br. 12. Appellant argues that, as shown in its
Figure 1, “Alford does not teach or suggest a moisture sensor arranged
upstream of the evaporator 34 in the supply duct 36 (i.e., cooling space) to
measure an air moisture percentage and air temperature of air blown through
the supply duct 36 (i.e., cooling space) before the air reaches the evaporator
34.” Id. at 13.
With this argument, Appellant does not address the rejection as
articulated. Although certain individual aspects of the Final Office Action
could be understood as indicating that the Examiner relies entirely on Alford
to satisfy clause E.2 (see Final Act. 3), the Rejection as a whole shows that
the Examiner relies on other references to modify Alford to address clause
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E.2. For example, the Examiner found that Lundstrom teaches “a moisture
sensor arranged upstream of the evaporator,” as recited in clause B.4, and
provided reasoning to relocate the moisture sensor of Alford based on the
teaching of Lundstrom. Final Act. 4; see also Alford, col. 4,11. 10—14
(discussing sensor means 52 in control 10). The Examiner also found that
Wieszt teaches “a temperature sensor placed close to the surface of the
evaporator,” as recited in clause B.3 (Final Act. 4), and provided reasoning
to relocate the temperature sensor of Alford based on Wieszt (id. at 5). See
also Alford, col. 2,11. 51—54 and col. 3,11. 13—18 (discussing thermostat 16).
Thus, in the modified process as proposed, the temperature sensor and
moisture sensor would be located as required by clauses B.3 and B.4, and
those locations would be within the identified “cooling space”—duct 36 in
Alford.
To the extent Appellant argues that the moisture sensor of Alford in
view of Lundstrom does not measure both “air moisture percentage” and
“air temperature,” we note that the Examiner relies on the temperature
sensor of Alford (as modified by the location of Wieszt) to measure “air
temperature” and the moisture sensor of Alford (as modified by the location
of Lundstrom) to measure “air moisture percentage.” See Ans. 18
(“Lundst[r]6m is relied upon to teach a humidity sensor being placed within
the cooling space and is upstream of the evaporator and Wies[z]t is being
relied upon to teach a temperature sensor placed close to the surface of an
evaporator.”); see also Appeal Br. 15 (arguing that Lundstrom’s “humidity
sensor 14 measures only humidity” rather than “both ‘air moisture
percentage AND air temperature'''’'’).
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Second, Appellant argues “that there is no motivation o[r] suggestion
to modify Alford to move thermostat 16 and humidity control 10 inside
supply duct 36 upstream of the evaporator 34.” Appeal Br. 14. Appellant
argues, “even assuming the allegedly ‘old and well-known’ principles [(see
Final Act. 4)] to be true, Alford specifically chose to place the thermostat 16
and humidity control 10 in the enclosure 12 (i.e., cooling compartment), not
in the supply duct 36 (i.e., cooling space),” and therefore, “any motivation to
modify Alford in view of Lundstrom as proposed by the Examiner could
only have come by way of hindsight. . . .” Appeal Br. 14—15.
Appellant does not substantively address, or show error in, the
findings that (1) Lundstrom teaches “a moisture sensor arranged upstream of
the evaporator,” as recited in clause B.4, or (2) Wieszt teaches “a
temperature sensor placed close to the surface of the evaporator,” as recited
in clause B.3. See Final Act. 4. Moreover, although Appellant contends that
the Examiner engaged in hindsight reconstruction, Appellant does not
address the reasoning provided by the Examiner to modify Alford based on
Lundstrom (Final Act. 4), or based on Wieszt (id. at 5). See Ans. 17
(addressing the modification based on Lundstrom, stating “[sjince the
rejection offers the motivation of providing protection for the sensor and
thus increasing the reliability of the system, which would clearly be
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, the rejection is proper”). We determine that
the reasoning statements support a prima facie case of obviousness as to
clause E.2. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see
also In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an
“impermissible hindsight” argument as “essentially a repackaging of the
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argument that there was insufficient evidence of a motivation to combine the
references”). By not addressing the reasoning statements, Appellant has not
shown error in the relevant findings or the conclusion as to obviousness.
Third, Appellant argues that “even assuming arguendo, that it would
have been obvious to modify Alford to move thermostat 16 and humidity
control 10 inside supply duct 36 upstream of the evaporator 34, it still would
not have been obvious to modify Alford’s dehumidification mode to
include” clause E.2 because “Alford does not teach or suggest that, as part of
the dehumidification mode, the air moisture percentage and air temperature
of air blown through the cooling space should be measured before the air
reaches the evaporator.” Appeal Br. 15.
Nonobviousness cannot be established by attacking references
individually when the rejection is based on a combination of prior art. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Appellant
argues that Alford alone does not satisfy all aspects of clause E.2; for the
reasons stated regarding the two arguments above, however, Appellant has
not shown error in the determination that the modified process overall would
satisfy clause E.2.
Fourth, Appellant argues that “Lundstrom does not provide any
teaching or suggestion to modify Alford’s dehumidification mode to
include” clause E.2. Appeal Br. 15. Appellant contends that “Lundstrom
does not teach or suggest that the measurement of humidity sensor 14 is used
in a dehumidification mode that is alternated with a re-establish mode” and
that “Lundstrom teaches that the humidity measured by humidity sensor 14
is used to prevent icing of the evaporator, not dehumidifying air.” Id.
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Contrary to this argument, the Supreme Court has made clear that an
express teaching, suggestion, or motivation in the prior art is not a
requirement for an obviousness determination. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418—19 (2007) (holding that when the teaching-
suggestion-motivation test is applied as a rigid and mandatory formula, it is
incompatible with Supreme Court precedent). Moreover, as to the alleged
differences between Lundstrom and claim 1, Appellant has not shown that
the alleged differences undermine the findings or reasoning relied on to
support the conclusion of obviousness. See Final Act. 2—6; KSR, 550 U.S. at
420 (“[Fjamiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
Fifth, Appellant argues that “Wieszt discloses an air conditioner for
achieving a desired air conditioning effect in a vehicle interior” and that
“[t]he air conditioner disclosed by Wieszt measures the temperature and
moisture of the outside air that is drawn into the air conditioner, not the air
blown through the cooling space.” Appeal Br. 16.
With this argument, Appellant does not address the rejection as
articulated. The Examiner does not rely on Wieszt alone regarding clause
E.2. Instead, as discussed above, the Examiner relies on Alford as modified
by certain teachings of Lundstrom and Wieszt.
Sixth, Appellant argues that, even assuming Wieszt teaches clause
E.2, “there is no suggestion or motivation to modify Alford’s
dehumidification mode in view of such a teaching.” Appeal Br. 16—17.
Appellant argues that “Wieszt does not teach or suggest that the
measurements of the temperature and moisture of the outside air that is
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drawn into the air conditioner are used in a dehumidification mode that is
alternated with a re-establish mode” and that “Wieszt teaches that the
measurements of the temperature and moisture of the outside air that is
drawn into the air conditioner are used to prevent icing of the evaporator and
precipitation on the outside of the vehicle windows, not dehumidifying air.”
Id. at 17.
As discussed above in response to the second argument, Appellant
does not address the reasoning provided to modify Alford based on Wieszt.
Final Act. 5. Moreover, as to the alleged differences between Wieszt and
claim 1, Appellant has not shown that the alleged differences undermine the
findings or reasoning relied on to support the conclusion of obviousness.
See Final Act. 2-6; KSR, 550 U.S. at 420.
As to the argument that “[b]y measuring the air moisture percentage
and air temperature of the air blown through the cooling space, the
dehumidification process of the present invention may be performed more
efficiently than when the air moisture percentage and air temperature of the
air are measured elsewhere in the refrigeration system as in the cited prior
art” (Appeal Br. 17), for the reasons stated above in response to the first
argument, in the modified process, the temperature sensor and moisture
sensor would be located as required by clauses B.3 and B.4, and those
locations would be within the identified “cooling space”—duct 36 in Alford.
B. Clause E.3 of Claim 1
As to clause E.3, the Examiner cited Wieszt, column 4, lines 4 to 13,
and stated, “determining by the control unit (8) a dew point temperature
based on the measured air moisture percentage and air temperature of the air
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blown through the cooling space.” Final Act. 5. Appellant provides two
arguments under a heading reciting clause E.3. Appeal Br. 17—18.
First, Appellant argues that “Wieszt does not teach or suggest
determining a dew point temperature based on the air moisture percentage
and air temperature measured by a moisture sensor arranged in the cooling
space upstream of the evaporator” because “Wieszt discloses a uniform dew
point sensor that. . . determines the dew point temperature Tp of the outside
air based on the measured temperature and moisture of the outside air that is
drawn into the air conditioner, not the air blown through the cooling space.”
Appeal Br. 17—18.
With this argument, Appellant does not address the rejection as
articulated. Although certain individual aspects of the Final Office Action
could be understood as indicating that the Examiner relies entirely on Wieszt
regarding clause E.3 (see Final Act. 5), the Rejection as a whole shows that
the Examiner relies on other references as well. As discussed above in
response to the first and second arguments regarding clause E.2, the
Examiner relied on Lundstrom and Wieszt to teach the recited locations of
the “moisture sensor” and “temperature sensor,” respectively, and the
Examiner provided reasoning to modify Alford based on those teachings.
See Final Act. 2—5. Thus, in the modified process as proposed, the
temperature sensor and moisture sensor would be located as required by
clauses B.3 and B.4, and those locations would be within the identified
“cooling space”—duct 36 in Alford.
Second, Appellant argues that, even assuming Wieszt teaches clause
E.3, “there is no suggestion or motivation to modify Alford’s
dehumidification mode in view of such a teaching.” Appeal Br. 18.
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Appellant argues that “Wieszt does not teach or suggest that the
determination of dew point temperature, based on measurements of the
temperature and moisture of the outside air that is drawn into the air
conditioner, is used in a dehumidification mode that is alternated with a re­
establish mode” and that “Wieszt teaches that the determination of a dew
point temperature is used to prevent icing of the evaporator and precipitation
on the outside of the vehicle windows, not dehumidifying air.” Id.
As discussed in response to the second argument regarding clause E.2,
Appellant does not address the reasoning provided to modify Alford based
on Wieszt. Final Act. 5. Moreover, as to the alleged differences between
Wieszt and claim 1, Appellant has not shown that the alleged differences
undermine the findings or reasoning relied on to support the conclusion of
obviousness. See Final Act. 2—6; KSR, 550 U.S. at 420.
C. Clause E.4 of Claim 1
As to clause E.4, the Examiner cited Wieszt, column 4, line 64 to
column 5, line 4, and stated that “the evaporator temperature would need to
be set to a temperature lower than the dew point in order for condensation to
take place making it an inherent feature of any dehumidification process.”
Final Act. 5. Appellant provides two arguments under a heading reciting
clause E.4. Appeal Br. 18—20.
First, Appellant argues that Wieszt does not “teach or suggest” clause
E.4 because (1) “Wieszt does not teach or suggest that the evaporator
demand temperature TVA is lower than the dew point temperature” and (2)
“the[re] is no indication that T/t -T/> (difference between the measured air
temperature TA and the dew point temperature TP) is lower than the dew
point temperature.” Appeal Br. 19; see also Wieszt, col. 5,11. 1—4 (“Next,
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the smaller of these two values is chosen as the preliminary evaporator
temperature setpoint TwS, i.e., the preliminary evaporator temperature
setpoint T[vjvs is determined by the relationship T( Ks=min (Tva, T.i—7».”).
Appellant argues that “the Examiner is raising an improper inherency
argument.” Appeal Br. 19. Appellant contends that Wieszt “teaches
choosing preliminary evaporator temperature setpoint Tvvs in order to
prevent icing of the evaporator and precipitation on the outside of the
vehicle windows, not dehumidifying air.” Id.
When an examiner shows a sound basis for finding that the claimed
and prior art products are structurally identical or substantially identical, the
burden shifts to an appellant to show that the “prior art products do not
necessarily or inherently possess the characteristics of [the] claimed
product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, we
determine that the Examiner’s explanation supports a prima facie case that
the identified “target evaporator surface temperature”—preliminary
evaporator temperature setpoint T vvs in Wieszt—is lower than the dew point
temperature, as required by clause E.4. On this issue, the Examiner states:
Wieszt teaches that in order for condensation to take place (and
thus dehumidification) the temperature of the evaporator must be
set low enough for moisture to condense on the evaporator (col
1, lines 47—52). It was general knowledge to a person of ordinary
skill in the art at the time of the invention that in order for
condensation to place that the temperature of the evaporator must
be set lower than the [dew point] temperature. Since Wieszt
teaches that the temperature of the evaporator is set to ensure that
condensation takes place (see col 5, lines 50—54 and lines 65—
66), the target evaporator surface temperature must be set lower
than the dew point temperature.
Ans. 22. Appellant does not address this position (see, e.g., Reply Br. 7) and
has not shown that the evaporator in Wieszt lacks the claimed characteristic.
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Second, Appellant argues that, even assuming Wieszt teaches clause
E.4, “there is no suggestion or motivation to modify Alford’s
dehumidification mode in view of such a teaching.” Appeal Br. 20.
Appellant argues that “Wieszt does not teach or suggest that the
determination of a preliminary evaporator temperature setpoint Tvvs is used
in a dehumidification mode that is alternated with a re-establish mode” and
that “Wieszt teaches that the determination of preliminary evaporator
temperature setpoint T vvs is used to prevent icing of the evaporator and
precipitation on the outside of the vehicle windows, not dehumidifying air.”
Id.
As discussed in response to the second argument regarding clause E.2,
Appellant does not address the reasoning provided to modify Alford based
on Wieszt. Final Act. 5. Moreover, as to the alleged differences between
Wieszt and claim 1, Appellant has not shown that the alleged differences
undermine the findings or reasoning relied on to support the conclusion of
obviousness. See Final Act. 2—6; KSR, 550 U.S. at 420.
D. Clause E.6 of Claim 1
As to clause E.6, the Examiner found that Wieszt “discloses wherein
heating elements (5) are arranged downstream the evaporator (col 4, lines 3—
4) and wherein the dehumidification mode comprises the step of warming
the air with the heat elements after the air passes over the evaporator (col 5,
lines 56—58).” Final Act. 6. Appellant provides two arguments under a
heading reciting clause E.6. Appeal Br. 20-21.
First, Appellant argues that “even assuming the allegedly ‘old and
well-known’ principles [(see Final Act. 6)] to be true, Alford specifically
chose to place the heater 40 upstream of the evaporator 34 to heat the air
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before it passes over the evaporator 34, not downstream of the evaporator 34
to heat the air after it passes over the evaporator 34” and therefore, “any
motivation to modify Alford in view of Wieszt as proposed by the Examiner
could only have come by way of hindsight. . . Appeal Br. 20.
Although Appellant contends that the Examiner engaged in hindsight
reconstruction, Appellant does not address the reasoning provided by the
Examiner to modify Alford based on Wieszt (Final Act. 6). See Ans. 24
(addressing the modification based on Wieszt, stating “[sjince the rejection
offers the motivation of heating up the air after the moisture is removed from
the air as taught by W[ie]szt, the rejection is proper”). We determine that
the reasoning statement supports a prima facie case of obviousness as to
clause E.6. See Oetiker, 977 F.2d at 1445; Cree, 818 F.3d at 702 n.3. By
not addressing the reasoning provided, Appellant has not shown error in the
relevant findings or the conclusion as to obviousness.
Second, Appellant argues that, even assuming “it would have been
obvious to modify Alford in view of Wieszt to place a heating element
downstream of the evaporator [as recited in clause B.5], it would not have
been obvious to warm up the air with the heating elements after the air
passes over the evaporator as part of a dehumidification mode that is
alternated with a re-establish mode.” Appeal Br. 21. Appellant argues that
“Wieszt does not teach or suggest that the heating element is used in a
dehumidification mode that is alternated with a re-establish mode” but rather
“teaches that the heating element is used to regulate the temperature inside
the vehicle.” Id.
As discussed in response to the first argument regarding clause E.6,
Appellant does not address the reasoning provided to modify Alford based
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on Wieszt. Final Act. 6. Moreover, as to the alleged differences between
Wieszt and claim 1, Appellant has not shown that the alleged differences
undermine the findings or reasoning relied on to support the conclusion of
obviousness. See Final Act. 2—6; KSR, 550 U.S. at 420.
For the reasons above, we sustain the rejection of independent claim
1. Claims 4—12 fall with claim 1.
Rejection 8 — Claim 13
A. Clause B of Claim 13
As to clause B, the Examiner relied on Yamashita, stating:
the control unit switching the refrigeration system from the
normal mode to a dehumidification mode (see annotated figure 4
[on Final Act. 15]) in which a dew point temperature (Td) is
determined based on a measurement of air moisture percentage
(5) and a measurement air temperature (T) of the air blown
through the cooling space (10023) for cooling air and regulating
a surface temperature (Te) of the evaporator to be lower than the
determined dew point temperature (10032, line 8).
Final Act. 13. Appellant provides two arguments addressing clause B.
Appeal Br. 24—25, 27.
First, Appellant references the findings set forth in the prior
paragraph, and states that “Appellant could not find any indication in the
translation of Yamashita relied on by the Examiner that the surface
temperature Te of the evaporator is regulated to be lower than the dew point
temperature Td in a dehumidification mode between tl and t2 as indicated in
the Examiner’s annotations of Yamashita’s Figure 4.” Appeal Br. 25.
In response, the Examiner quotes portions from lines 6 through 11 of
paragraph 32 of Yamashita, and states that Yamashita “thus does teach the
surface temperature Te of the evaporator is regulated to be lower than the
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dew point temperature Td in a dehumidification mode between tl and t2.”
Ans. 25—26. Appellant does not address this position in the Reply Brief.
See, e.g., Reply Br. 8 (addressing certain arguments regarding claim 13).
We are not apprised of error based on this argument for the reasons stated by
the Examiner, as provided above.
Second, Appellant argues that even assuming “it would have been
obvious to modify Yamashita to blow air over the evaporator and to provide
the cooling space in a cooling compartment separated from the rest of the
cooling compartment” as generally recited in clause A, “it would not have
been obvious to operate the modified system of Yamashita in ‘ a
dehumidification mode in which a dew point temperature is determined
based on a measurement of air moisture percentage and a measurement air
temperature of the air blown through the cooling space, and regulating a
surface temperature of the evaporator to be lower than the determined dew
point temperatureas recited in [clause B in] claim 13.” Appeal Br. 27.
The Examiner responds that “[s]ince Yamashita discloses an enclosed
cooling compartment ([elements] 5 [and] 15, fig 3,10021) all the air would
circulate through the cooling space and thus air which is measured by the
temperature sensor and moisture sensor would be blown through the cooling
space.” Ans. 27 (emphasis added). Appellant does not address this position
in the Reply Brief. See, e.g., Reply Br. 8.
Appellant’s argument does not apprise us of error. We understand
Appellant as implicitly asserting that, based on the language “the air blown
through the cooling space,” clause B requires that the structure(s)
performing the recited “measurement of air moisture percentage and a
measurement air temperature” must be located within the “cooling space.”
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We understand that the Examiner takes the position that the scope of clause
B would include an embodiment in which the structure(s) performing the
recited “measurement[s]” are located within the identified “cooling
compartment,”3 but not within the “cooling space,” so long as the “air”
would eventually be “blown through the cooling space” during the
“dehumidification method.”
Here, we agree with the Examiner’s position that the language at issue
in clause B would include the embodiment discussed above. Further,
although the Specification does describe an embodiment with temperature
sensor 14 and moisture sensor 8 within cooling space 3 (see Spec. 132; Fig.
1), when construing a claim term, one should not import narrower
definitions for terms based on specific embodiments disclosed in the
specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993);
see also Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc., 340 F.3d
1298, 1306-07 (Fed. Cir. 2003) (stating that “the mere fact that the patent
drawings depict a particular embodiment of the patent does not operate to
limit the claims to that specific configuration”).
B. Clause A of Claim 13
As to clause A, the Examiner found that Yamashita discloses “a
control unit (6) running the refrigeration system in a normal mode (see
3 See Yamashita 121 (discussing Figure 3 and stating “that the cold
storage 5 and the freezer compartment 15 are arranged up and down,” that
“the temperature sensor 7 and the relative humidity sensor 8 are provided by
the cold storage 5 arranged [in] the upper part” and that “the temperature
sensor 7 detects the temperature in the cold storage 5 as the temperature
inside T, and the relative humidity sensor 8 detects the relative humidity in
the cold storage 5”).
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annotated figure 4 [on Final Act. 15]) in which refrigerant is let into an
evaporator (4),” but the Examiner also stated that
Yamashita does not explicitly disclose wherein air is blown over
the evaporator to cool the air temperature in a cooling
compartment down to a target air temperature or where the
cooling space is in a cooling compartment, separated from the
rest of the cooling compartment, and defines an air flow channel
for providing cooled air into the cooling compartment.
Final Act. 13. The Examiner took “Official Notice that it is old and well
known in the art of refrigeration to provide a fan to blow air over the
evaporator and to provide the cooling space in a cooling compartment
separate from the rest of the cooling compartment and thus would have been
obvious to a person of ordinary skill in the art at the time of the invention.”
Id. Appellant provides two arguments for clause A. Appeal Br. 26—27.
First, Appellant states that ‘“[ojfficial notice unsupported by
documentary evidence should only be taken by the examiner where the facts
asserted to be well-known, or to be common knowledge in the art are
capable of instant and unquestionable demonstration as being well-known’”
(quoting MPEP § 2144.03 (A)) and Appellant argues that “the Examiner’s
factual assertion” provided above “is not the type of assertion that the
Examiner could have ‘instantly or unquestionably demonstrated as being
well known.’” Appeal Br. 26—27.
The Examiner responds:
Blowing air over the evaporator and providing a cooling space in
a cooling compartment, separated from the rest of the cooling
compartment is notoriously old and well known. For example,
Alford teaches blowing air (via blower 20) over the evaporator
(34) and to provide a cooling space (36) in a cooling
compartment (12), separated from the rest of the cooling
compartment (fig 1).
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Ans. 26. Appellant does not address this position in the Reply Brief. See,
e.g., Reply Br. 8. Because the Examiner has provided documentary
evidence to support the assertion of Official Notice (see MPEP
§ 2144.03(C)), we are not apprised of error based on this argument.
Second, Appellant argues that “[e]ven assuming arguendo that ‘it is
old and well known to blow air over the evaporator and to provide the
cooling space in a cooling compartment, separated from the rest of the
cooling compartment, ’ the Examiner provides no suggestion or motivation
for modifying the system taught by Yamashita” and therefore, “any
motivation to modify Yamashita as proposed by the Examiner could only
have come by way of hindsight. . . .” Appeal Br. 27.
The Examiner responds:
The motivation of blowing air over the evaporator and providing
a cooling space separated from the cooling compartment is
within the realm of general knowledge of a person of ordinary
skill in the art at the time of the invention; the motivation being
circulating cooled air through the cooling compartment while
protecting the evaporator coils.
Ans. 26—27. Appellant does not address this position in the Reply Brief.
See, e.g., Reply Br. 8.
We determine that the reasoning statement provided supports a prima
facie case of obviousness as to clause A. See Oetiker, 977 F.2d at 1445;
Cree, 818 F.3d at 702 n.3. By not addressing the reasoning provided,
Appellant has not shown error in the relevant findings or the conclusion as to
obviousness.
C. Clauses D and E of Claim 13
The Examiner stated that Yamashita did not explicitly disclose the
aspects recited in clauses D and E, but the Examiner stated that Shah:
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discloses a method for controlling humidity wherein the control
unit (26) switches the refrigeration system from the normal mode
to the dehumidification (44, fig 4) when the air temperature
inside the cooling compartment (“enclosed space”, Col 3, line
27) is less than a specified amount different from the target air
temperature (Tsp, fig 4, see col 6, lines 22—25); wherein the
control unit switches the refrigeration system from the
dehumidification mode to the normal mode (41) when the
temperature inside the cooling compartment is more than a
specified amount different from the target air temperature
(T>Tsp, Fig 4).
Final Act. 13—14. Appellant provides two arguments addressing clauses D
and E. Appeal Br. 27—28.
First, Appellant argues that “it would not have been obvious to apply
these temperature thresholds taught by Shah as conditions for switching
between a dehumidification mode and a normal mode as described in claims
or as asserted by the Examiner with respect to Yamashita” because although
Shah teaches that the HVAC system switches to a
dehumidification mode when the temperature TisTsp-3 Tsp, Shah does not teach or suggest that
these temperature conditions apply to switching between a
dehumidification mode and a normal mode as described in
claims or as asserted by the Examiner with respect to Yamashita.
Appeal Br. 28.
The Examiner responds with an annotated version of Figure 4 of
Shah, and by stating, “the temperature condition of T > Tsp will switch the
system from dehumidification mode (44) to normal mode (41)” and thus,
“Shah does suggest temperature conditions which apply to switching
between a dehumidification mode and normal mode.” Ans. 27—28.
Appellant does not address this position in the Reply Brief. See, e.g., Reply
Br. 8.
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We are not apprised of error based on this argument for the reasons
stated by the Examiner, as provided above. Moreover, to the extent the
alleged differences between Shah and claim 1 exist, Appellant has not
shown that the alleged differences undermine the findings or reasoning
relied on to support the conclusion of obviousness. See Final Act. 13—14;
KSR, 550 U.S. at 420.
Second, as to clause E specifically, Appellant argues that “Shah does
not teach or suggest switching to a normal mode when the temperature T is
more than a specified amount different from the target air temperature (i.e.,
T > Tsp + X),” but rather, “Shah only teaches switching to a normal mode
when the temperature T is T > Tsp,” in other words, “when the temperature
T is any amount more than Tsp.” Appeal Br. 28.
The Examiner responds that “[z]ero is being interpreted as the
[‘Jspecified amount[’]” recited in clause E, and “[tjherefore Shah is being
interpreted as teaching switching to a normal mode when the temperature T
is more than a specified amount (‘any amount’) different from the target air
temperature.” Ans. 28—29.
Appellant’s argument does not apprise us of error. As an initial
matter, we note that under the broadest reasonable interpretation standard,
steps of a claimed method that occur only if a condition precedent is met
may not need to be performed to practice the claimed method, and thus may
need not be shown in the prior art to set forth a prima facie case of
obviousness. See Ex parte Schulhauser, Appeal 2013-007847, 2016 WL
6277792 at *3—*5 (PTAB Apr. 28, 2016) (precedential). Here, if the
condition recited in clause D is met, clause E would not be reached; thus,
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clause E need not be shown in the prior art to set forth a prima facie case of
obviousness.
In the Reply Brief, Appellant argues that “the Examiner’s
interpretation that zero is the specified amount is contrary to the ordinary
and customary meaning of the term ‘specified amount’” because that term
“would ordinarily and customarily be interpreted to mean a non-zero
number.” Reply Br. 8. Appellant does not provide evidence—but rather
only attorney argument—to support this assertion. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
We turn now to Appellant’s argument that “the [Specification clearly
describes the ‘specified amount’ as a non-zero number.” Reply Br. 8 (citing
Spec. 125, which provides that the “preselected number of degrees can for
instance be a difference of 5° C”). Although the Specification does describe
an embodiment with a “specified amount” of 5° C, when construing a claim
term, one should not import narrower definitions for terms based on specific
embodiments disclosed in the specification. See Van Geuns, 988 F.2d at
1184; cf. Reply Br. 8 (“Thus, Shah does not teach or suggest switching to a
normal mode when the temperature T is more than a specified amount
different from the target air temperature (i.e., T > Tsp + X, where X is a non­
zero number).”). Here, Appellant has not demonstrated that “specified
amount” should be limited to non-zero numbers.
For these reasons, we sustain the rejection of claim 13.
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DECISION
We affirm the decision to reject claims 1 and 4—13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
26