Ex Parte Piccione

Patent Trial and Appeal Board

Oct 30, 2014

12174813 (P.T.A.B. Oct. 30, 2014)

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.
12/174,813 07/17/2008 David Piccione Aspen-005 9438
26604 7590 10/30/2014
KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
10/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID PICCIONE1
____________________

Appeal 2012-008565
Application 12/174,813
Technology Center 3700
____________________

Before MAHSHID D. SAADAT, CAROLYN D. THOMAS, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–20. App. Br. 4, 15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to drain pans built beneath an evaporator
coil to receive condensate from the coils in an air conditioning system.
Spec. 28, Abstract. An auxiliary drain pan is built into the system beneath a

1 The real party in interest according to Appellant is Aspen Manufacturing.
App. Br. 2.
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primary drain pan to receive overflow condensate from the primary drain
pan. Id. Both the primary and auxiliary drain pan may drain through drain
lines in the housing unit or plenum. Id. The assembly construction may
reduce time and costs associated with storing, transporting, installing,
leveling, and plumbing individual components. Id.

Evidence Considered
Pierce US 3,678,993 July 25, 1972
Martin, Sr. US 5,664,431 Sept. 9, 1997
(hereafter “the Martin ’431 patent)
Polk et al. US 5,904,053 May 18, 1999
Martin, Sr. US 2005/0047974 A1 Mar. 3, 2005
Kaminski US 6,895,770 B1 May 24, 2005

Examiner’s Rejections
Appellant seeks review of the following rejections:
I. Claims 1–20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
II. Claims 1, 4–9, 11, 13, and 15–19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kaminski and Pierce.
III. Claims 2, 3, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaminski, Pierce and Martin, Sr.
IV. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaminski, Pierce and Polk.
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IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaminski, Pierce and the Martin ’431 patent.

ANALYSIS
I. Rejection of claims 1–20 under 35 U.S.C. § 112
We are not persuaded the Examiner erred in concluding that claims
1–20 are indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
The Examiner rejects Claim 1–20 under 35 U.S.C. § 112, second
paragraph (2011) because a clause within independent claims 1 and 13
makes the scope of the claimed subject matter indefinite. Ans. 4–5.
Specifically, the Examiner finds that the recitation, “said primary drain pan
comprising walls that define at least one primary drain hole” (claim 1 lines
6–7), and the similar recitation of claim 13, are unclear because one of
ordinary skill in the art would not understand how the walls of a drain pan
can define a primary drain hole. Ans. 18. The Examiner reasons
Appellant’s recited claim language could be interpreted as the four walls
themselves defining a primary drain hole, which would simply be an
opening at the top of the four defined walls. Id. However, the Examiner
notes that the Specification suggests Appellant likely meant to claim “the
primary drain pan comprises walls and there is at least one primary drain
hole within one of the walls of the primary drain pan. . . .” Id. See MPEP
2143.03 (“A claim limitation which is considered indefinite cannot be
disregarded.”). Thus, the Examiner concludes that by using the language
“walls that define at least one primary drain hole,” Appellant has made the
claim unnecessarily vague and one of skill in the art would not understand
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the metes and bounds of the recitation. Ans. 18. We agree with the
Examiner.
Appellant chose not to amend the claim language. Instead, Appellant
responds that one of ordinary skill in the art would understand the scope of
the invention and therefore the claims are not indefinite. App. Br. 16–18;
Reply Br. 3–5. Appellant argues that “any solid (including walls) with an
opening ‘defines’ at least to some extent the opening by the boundary or
outline of the solid that encloses the opening.” App. Br. 17, 18 (“[I]f an
opening is provided in a wall, then it is clear that the outline or boundary of
the opening in the wall must define an opening.”). Appellant admits “that it
is possible the claim could mean that all four walls define the drain hole,”
but the public should review the Specification to determine such an
interpretation is not intended. Reply Br. 4. Finally, Appellant argues “[i]t is
common sense that technically any number of interpretations can be made of
open ended claims.” Id. at 5. We are not persuaded by Appellant’s
contentions.
“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as the invention.” 35 U.S.C. § 112, ¶ 2 (2011). In determining
whether a claim is indefinite, “we employ a lower threshold of ambiguity
when reviewing a pending claim for indefiniteness than those used by post-
issuance reviewing courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential). Our precedential Miyazaki decision “hold[s]
that if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
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unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Id.
We employ this standard because of our “duty to guard the public against
patents of ambiguous and vague scope” and “because the applicant has an
opportunity and a duty to amend the claims during prosecution to more
clearly and precisely define the metes and bounds of the claimed invention
and to more clearly and precisely put the public on notice of the scope of the
patent.” Id. at 1211–12.
Appellant fails to recognize the Miyazaki standard and instead relies
upon post-issuance case law for the proposition that “[o]nly when a claim
remains insolubly ambiguous without a discernible meaning after all
reasonable attempts at construction must a court declare it indefinite.”2 App.
Br. 16 (quoting Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370
F.3d 1354, 1366 (Fed. Cir. 2004)). However, as discussed above, during
prosecution when an Applicant has an opportunity to amend claims, we
apply the Miyazaki standard. See, e.g., In re Packard, 751 F.3d 1307, 1311–
12 (Fed. Cir. 2014) (affirming an indefiniteness rejection from the Patent
Trial and Appeal Board, which applied the Miyazaki standard, but not
addressing the appropriateness of the standard).
In this case, Appellant admits that the claim is amenable to two or
more plausible claim constructions. Specifically, Appellant admits the

2 The “insolubly ambiguous” standard for post-issuance indefiniteness
analysis was also recently rejected by the Supreme Court. Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2123, 2130 (2014) (“To tolerate
imprecision just short of that rendering a claim ‘insolubly ambiguous’ would
diminish the definiteness requirement’s public-notice function and foster the
innovation-discouraging ‘zone of uncertainty,’ against which this Court has
warned.”) (internal citation omitted).

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clause “said primary drain pan comprising walls that define at least one
primary drain hole” can be interpreted as “all four walls define the drain
hole;” yet, such an interpretation is admittedly not what Appellant attempts
to claim. Claim 1; Reply Br. 4; see also Ans. 18 (“As currently written
within claim 1, said primary drain pan comprising walls that define at least
one primary drain hole could be interpreted as the four walls shown and the
four walls defined a primary drain hole (opening at the top of the four
defined walls).”). Because both the Examiner and Appellant acknowledge
that the claims are amenable to two or more plausible claim constructions,
this issue falls squarely within the precedential holding of Miyazaki, and we
conclude Appellant’s claims are indefinite.
Therefore, we sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 112, ¶ 2, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.

II. Rejection of claims 1, 4–9, 11, 13, and 15–19 under 35 U.S.C.
§ 103(a)
A. Claim 1
Appellant argues claim 1 is nonobvious under 35 U.S.C. § 103(a)
based on the combination of Kaminski and Pierce. App. Br. 19–28; Reply
Br. 6–15. Claim 1 recites:
1. An air conditioning system, comprising:
an evaporator coil;
a housing surrounding said evaporator coil, said housing
defining an input for airflow;
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a primary drain pan formed within said housing
positioned to receive condensate from said evaporator coil, said
primary drain pan comprising walls that define at least one
primary drain hole, said walls of said primary drain pan being
operable to contain said condensate within said walls until said
condensate is directed to said at least one primary drain hole;
and
at least one auxiliary drain pan formed within said
housing and operatively in communication with said primary
drain pan for receiving overflow from said primary drain pan.
App. Br. 38, Claims Appendix. Appellant’s arguments center on the theme
that the modification of Kaminski by Pierce would not physically work or
would render one or both of the references unsatisfactory for their intended
purpose. App. Br. 19–28; Reply Br. 6–13. Because many of Appellant’s
arguments are repetitive and challenge the references individually for
features not relied upon by the Examiner to teach, we first consider the
scope of the Examiner’s rejection.
The Examiner relies upon Kaminski as the primary reference for
teaching both a primary drain pain and the auxiliary drain pain of claim 1.
Ans. 5–6. As depicted below, figure 1 of Kaminski discloses a housing unit
with a primary drain pan (12) with an auxiliary drain pain (10) below the
primary drain pan, but anchored outside the housing.
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Kaminski’s Figure 1 is reproduced below.

Figure 1 of Kaminski depicts a condensate secondary drain pan below a
primary drain pan mounted underneath a fan coil unit.
Kaminski, col. 3, ll. 54–56. The Examiner finds primary drain pan (12) has
walls and also has a drain hole where pipe (20) is inserted. Ans. 5–6. The
Examiner finds that the auxiliary drain pan (10) is operatively in
communication with the primary drain pan (12) for receiving overflow. Id.
at 6. The Examiner further finds Kaminiski does not explicitly teach the
auxiliary drain pan formed within the housing, as required by claim 1. Id.
The Examiner then relies upon Pierce for teaching an auxiliary drain pan
may be formed within the same housing as a primary drain pan. Id. (citing
Pierce Fig. 5). The Examiner does not rely upon Pierce as teaching any
other structure or function (i.e., condensate flow) for claim 1. See Ans. 19
(“Kaminski was solely being modified to have the auxiliary drain pan
formed within the housing for the evaporator coil.”). See also Final Off.
Act. 4 (Apr. 27, 2011). The Examiner concludes that
It would have been obvious to a person of ordinary skill in the
art at the time of invention to modify Kaminski with the
teachings of Pierce to include the auxiliary drain pan formed
within said housing in order to decrease the footprint of the air
conditioning system, as having the auxiliary drain pan formed
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within the housing allows the system to be more compact,
taking up less space were [sic] it is to be installed.
Ans. 6.
Appellant makes several arguments regarding the auxiliary pan of
Kaminski not being able to fit within the housing unit under the primary
drain pan. Appellant argues that Kaminski requires the auxiliary drain pan
be sized to cover the entire area underneath the primary pan. App. Br. 22;
Reply Br. 6–7. Appellant cites Kaminski disclosure that the side walls
should sufficiently extend laterally beyond the primary pan (12) in order to
catch any overflow that may occur. Id. Similarly, Appellant argues that
Kaminski teaches an auxiliary pan 10 with a frustoconical or sloping bottom
disposed beneath the coil housing 14, and because of the frustoconical
bottom, the auxiliary pan 10 must be mounted beneath the coil housing 14
using straps 24. App. Br. 24 (citing Kaminski, col. 4, ll. 2730, Figs. 1 &
4). Mounting this abnormal shape in the housing would require the housing
to be larger and thus defeat the Examiner’s motivation to combine the
references according to Appellant. Id. at 25. We do not find Appellant’s
arguments related to size and shape persuasive because one of skill in the art
would be capable of making minor design changes in sizing to accommodate
the auxiliary pan of Kaminski into the housing.
Minor differences between the prior art and a claimed device may be a
matter of design choice absent evidence to the contrary. See In re Rice,
341 F.2d 309, 314 (CCPA 1965). Based upon Pierce’s teaching to combine
the auxiliary drain pan of Kaminski into the housing with the primary pan,
we find it within the purview of one of ordinary skill in the art to make
minor design changes in size and shape to fit the auxiliary drain pan into the
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chamber. In response to Appellant’s argument that the side walls of the
auxiliary pan must extend laterally beyond the primary pan, we conclude
that one of ordinary skill in the art would realize that reducing the
dimensions of the primary pan and extending the side walls of the auxiliary
pan to the edge of the housing to create a small overlap would be the most
logical design choice. Although the Examiner also proposes another
potential design change in the Answer that involves extending the edges of
the auxiliary pan through the walls of the housing (Ans. 20) to collect
overflow, we find the Examiner’s final rejection simply requires “[h]aving
the auxiliary drain pan formed within the housing” to allow the air
conditioning system to be more compact. Ans. 4. Having considered
Appellant’s arguments with respect to the auxiliary pan extending through
the walls (Reply Br. 6–8), we find these arguments unpersuasive because the
Final Office Action, from which Appellant seeks review, requires no such
structural modification in the combination. See also Ans. 24 (“once Pierce
is combined with Kaminski the auxiliary pan would be positioned at least
partially directly beneath said primary pan . . . all of the auxiliary drain pan
would be directly beneath the primary pan”).
Likewise, one of ordinary skill in the art would understand how to
integrate the auxiliary pan of Kaminski into the housing, despite the
auxiliary pan having a slight frustoconical shape in some embodiments. See
Kaminski’s Fig. 4. Although Appellant is correct that one embodiment of
Kaminski requires an auxiliary pan with a frustoconical shape, Kaminski
also informs one of skill in the art “it is well known in the art that other
geometrical shapes may be used which creates a sloping surface from any
point on the upper surface of the bottom panel 30 to the outlet 42 thereof.”
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Kaminski, col. 4, ll. 42–46; see also id. Figs. 6–8. For example, Figure 6 of
Kaminski teaches an alternative embodiment with a drain line attachment
and hole on the side of the secondary pan. See id. at col. 5, ll. 42–46 (“a
condensate secondary pan has a drain pipe attachment means 66 integrally
attached beneath the front sidewall 32 for installations desiring a side
mounting configuration of the secondary drain pipe”). These teachings,
along with the knowledge of one of ordinary skill in the art, would allow the
auxiliary pan of Kaminski to be mounted within “the fan coil unit 14 using
any conventional means,” and also sized to fit within the fan coil unit.
Kaminski, col. 4, ll. 27–28. A person of ordinary skill in the art would have
known at the time of invention that the placement of the auxiliary pan of
Kaminski within the housing and beneath the primary pan, as taught by
Pierce, would serve the function of collecting overflow from the primary pan
and further be advantageous in that the footprint of the coil housing would
be decreased.
Appellant argues that the proposed modifications to Kaminski would
change its operation, or render it unsatisfactory for its intended purpose.
App. Br. 19–24; Reply 10–11. Generally, if a proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make the proposed
modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Appellant’s arguments suggest that the Examiner is attempting to bodily
incorporate the structure of Pierce into Kaminski. App. Br. 20 (“Kaminski
and Pierce clearly have incompatible functions and shapes and are clearly
directed to entirely different problems”); Reply Br. 10–11. The Examiner
only relies on Pierce for teaching a secondary drain pan capable of being
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mounted in a coil housing with a primary drain pan. Ans. 6, 19 (“the
modification is merely to move the auxiliary pan of Kaminski into the
housing to make the unit more compact”). The Examiner does not attempt
to physically combine any structure of Pierce into Kaminski and it is also not
necessary for two references to be physically combinable. See In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”) (citations omitted). We have considered
Appellant’s arguments related to how Pierce’s structure and function could
not be modified to fit within Kaminski. However, because the Examiner
relies upon Pierce simply to provide a motivation to move Kaminski’s
auxiliary drain pan within the same housing, we find these arguments
unpersuasive.
Similarly, Appellant argues that Pierce does not have a distinct
primary and auxiliary pan as required by claim 1, and what the Examiner has
renamed a primary pan is simply a sloped guide that guides all condensate
from the coil into an auxiliary pan. App. Br. 20; Reply Br. 10–11. We agree
with the Examiner (Ans. 19) that these arguments are unpersuasive because
Pierce identifies a distinct drain pain (20) and an auxiliary drain pan (22)
wherein the drain pan (20) is mounted within the housing below the
auxiliary drain pan (22) as depicted in Figure 5. See Pierce, col. 3, ll. 30–35.
Because Pierce provides the motivation for one of ordinary skill in the art to
mount both a primary and an auxiliary drain pan within the coil housing
unit, with the pans being “operatively in communication with” one another,
we find Appellant’s arguments related to the shape and functionality of
Pierce unpersuasive. Claim 1. The suggested modification is merely to
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move the auxiliary pan of Kaminski into the housing to make the unit of
Kaminski more compact, which Pierce teaches.
B. Claims 4, 5, 15, and 16
Appellant separately argues the patentability of claims 4, 5, 15, and 16
but makes no new argument except for pointing out the Examiner
improperly cited Figure 4 of Pierce, instead of Figure 5. App. Br. 28–29;
Reply Br. 14. We find this argument unpersuasive and rely on our analysis
and reasoning set forth for claim 1.
C. Claims 6–9, 18, and 19
Dependent claim 6 recites: “The air conditioning system of claim 1,
wherein a plenum comprises at least a portion of said housing, said plenum
being operable to define multiple air flow outlets.” App. Br. 39.
Dependent claim 7 recites: “The air conditioning system of claim 1,
wherein a plenum is interconnectable to said housing, and said at least one
auxiliary drain pan is positioned at least partially in said plenum, said
plenum being operable to define multiple air flow outlets.” Id.
Dependent claim 8 recites: “The air conditioning system of claim 6,
wherein said at least one auxiliary drain pan extends into said plenum.” Id.
Dependent claim 9 recites: “The air conditioning system of claim 6,
wherein drain holes for said at least one auxiliary drain pan are formed in
said plenum.” Id.
Claims 18 and 19, dependent from claim 13, recite similar limitations.
App. Br. 40–41.
Appellant argues that the combination of Kaminski and Pierce do not
teach or suggest a plenum comprising a portion of the housing capable of
defining multiple air flow outlets, where the auxiliary drain pan may be
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positioned at least partially in said plenum. App. Br. 30–33. Further,
Appellant contends that modifying Pierce to provide a specific position for
the plenum would be contrary to and frustrate the intended purpose of Pierce
and therefore it would not be obvious to teach this modification in light of
Pierce. Id.
The Examiner finds, however, “that Kaminski already teaches a
plenum (interior space defined by housing 14)[, which] comprises a portion
of the . . . housing.” Ans. 25. The Examiner only relies on Pierce for the
same reason as in claim 1, “Pierce teaches an auxiliary pan positioned at
least partially in a plenum (defined by housing 32).” Id. at 26. The
Examiner finds once Kaminski’s auxiliary drain pan is integrated within the
housing as taught by Pierce, the plenum would be defined in Kaminski as
the space enclosed by the housing including 18. Id. Therefore, the auxiliary
pan would be positioned at least partially in the plenum. Id. at 25–26. The
Examiner finds a plenum is simply any structure capable of defining an air
space and interior space 14 of Kaminski meets this definition. Id. at 25. The
single flow outlet (outlet by 18) of Kaminski meets the required “air flow
outlets” limitation after it is modified to incorporate multiple air flow outlets
as required by claim 6. Id. The Examiner reasons “it would have been
obvious to a person of ordinary skill in the art at the time of invention to
utilize multiple air flow outlets, since it has been held that mere duplication
of essential working parts of a device involve only routine skill in the art.”
Id.
Appellant does not challenge the Examiner’s definition of “plenum.”
In our determination, we accord the claims their “broadest reasonable
interpretation consistent with the specification.” In re Am. Acad. of Sci.
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Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004) (citations omitted).
We agree with the Examiner that the broadest reasonable interpretation of
the term “plenum” as used in the heating, ventilating, and air-conditioning
field is an air flow passage or space. See, e.g., Elite Licensing, Inc. v.
Thomas Plastics, Inc., 250 F. Supp. 2d 372, 383–84 (S.D.N.Y. 2003)
(defining “air plenum”). Pursuant to this definition, we agree with the
Examiner that the housing (14) of Kaminski teaches a plenum. Appellant
recognizes the housing unit for the coils may also serve as a plenum because
Appellant states that admitted prior art U.S. Patent No. 5,062,280, “discloses
an air conditioning apparatus with an enclosure which both houses a
conditioning coil and serves as a plenum for transferring air to one or more
conduits. . . . An enclosure serves as a coil housing and as a plenum.” Spec.
7–8. Certain Appellant arguments contradict the teachings of the
Specification and the admitted prior art, and as such, we find them
unpersuasive. See App. Br. 30 (“The Examiner does not show that the
Kaminski housing is made of materials suitable for a plenum . . . the coil
housing is made of hard material unsuited for use as a plenum.”).
Appellant also argues “[t]he Examiner does not articulate what or
where the pans in the so modified Kaminski pans will now be placed in the
so modified Kaminski housing or how that will affect their operation.”
Reply 15. Appellant argues that “the Examiner tells us that Kaminski 18 is
the plenum” and thereafter makes a series of arguments based upon this
premise. See, e.g., App. Br. 32. We find these arguments unpersuasive
because the Examiner relies upon a portion of housing 14 of Kaminski as the
plenum. See Ans. 7. The Examiner is also not modifying or enlarging the
plenum of Kaminski, but simply recognizing that the portion of the housing
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(14) nearer the outlet port (18) would be the plenum and the auxiliary drain
pan may extend into this portion. The primary drain pan and the auxiliary
drain pan would also be within the housing and a portion of the plenum.
The auxiliary pan of Kaminski is positioned at least partially in the plenum
below the primary drain pan and water would not flow upwards against
gravity to drain away from the pans as Appellant contends. Finally, we
agree with the Examiner it would have been obvious to one of skill in the art
to add one or more air flow outlets to Kaminski in order to serve multiple
areas of a structure.
Because Appellant’s arguments against the rejection of claims 1, 4–9,
11, 13, and 15–19 are unpersuasive, we also sustain the Examiner’s rejection
of those claims under 35 U.S.C. § 103(a).

III. Rejection of claims 2, 3, and 14 under 35 U.S.C. § 103(a)
Claims 2 and 3, each dependent from claim 1, require “said primary
drain pan and said at least one auxiliary drain pan are plumb with respect to
each other,” and the “auxiliary drain pan forms a bottom of said housing,”
respectively. Claim 14, dependent from independent claim 13, similarly
requires the auxiliary drain pan also forms a bottom of the housing.
The Examiner relies upon Martin for teaching a primary and auxiliary
drain pan plumb to one another. Ans. 12, 28. As explained by the
Examiner, “it would have been obvious to a person of ordinary skill in the
art at the time of invention to modify the combined teachings of Kaminski
and Pierce with the teachings of Martin to include a primary drain pan and
an auxiliary drain pan that are plumb with respect to each other” (id. at 13)
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so “that condensate does not leave the primary pan and cause damage to the
other components inside of the air conditioner housing” (id. at 28).
Appellant argues that because Martin is positioned and plumbed
outside of the housing (10) it does not teach plumbing the primary and
auxiliary drain pans. App. Br. 34. We find Appellant’s argument
unpersuasive. Appellant’s arguments focus on aspects of the combination of
prior art for which Martin was not relied upon to teach. App. Br. 34; Reply
Br. 16. The Examiner relies upon Martin as teaching a primary and
auxiliary drain pan being plumb with one another, which it teaches. See
Martin, Fig. 1B. Further, we find that ensuring two drain pans are plumb so
they do not leak is recognized by a person of ordinary skill in the art. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
Because Appellant’s arguments against the rejection of claims 2, 3,
and 14 are unpersuasive, we also sustain the Examiner’s rejection of those
claims under 35 U.S.C. § 103(a).

IV. Rejection of claims 10 and 20 under 35 U.S.C. § 103(a)
Claims 10 depends from claim 1 and further requires, “drain holes for
said at least one auxiliary drain pan are formed in said housing.” App. Br.
39. Claim 20, dependent from independent claim 13, recites a similar
limitation. Id. at 41.
The Examiner finds that Kaminski as modified above teaches or
suggests the invention as disclosed but fails to explicitly teach drain holes
for the auxiliary pan are formed in the housing. Ans. 14–16. The Examiner
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relies upon Polk as teaching this limitation. Id. at 14, 29. The Examiner
modifies Kaminski in light of the teaching of Polk to incorporate multiple
drain holes for the auxiliary pan formed through the housing. Id.
Appellant argues that the structure of Polk’s pans (at right angles)
cannot be ignored and this orientation would prevent one of skill in the art
from combing Polk with Kaminski and Pierce. App. Br. 35; Reply Br. 17.
We are not persuaded by Appellant’s arguments related to the
orientation of Polk’s drain pans. The Examiner relies upon Polk as teaching
drain holes from a drain pan extending through a housing as taught in Polk
Figure 1 (holes in wall 46). Ans. 15. As such, we agree with the Examiner
that Polk teaches drain holes in a housing for an auxiliary pan. Further, we
observe that Kaminski alone suggests the limitation of “drain holes for said
at least one auxiliary drain pan are formed in said housing.” Figure 1 of
Kaminski depicts the primary drain line (20) extending from the primary
drain pan (12) through the housing. As explained, the “primary pan being in
fluid communication with a primary drain line to convey said condensate
safely away from an enclosure.” Kaminski, col. 6, ll. 31–33. Once the
auxiliary drain pan is mounted within Kaminski as taught by Pierce, one of
skill in the art would understand that the drain pipe of Kaminski’s auxiliary
pan could be “integrally attached beneath the front sidewall” and then pass
through the side wall of the housing similar to the primary drain line as
shown in Figure 1. Kaminski, col 5, ll. 40–45.
Because Appellant’s arguments against the rejection of claims 10 and
20 are unpersuasive, we also sustain the Examiner’s rejection of those
claims under 35 U.S.C. § 103(a).

Appeal 2012-008565
Application 12/174,813

19

V. Rejection of claim 12 under 35 U.S.C. § 103(a)
Claims 12 depends from claim 1 and further requires, “primary drain
pan nests within said at least one auxiliary drain pan.” App. Br. 39.
The Examiner further modifies Kaminski based on the teachings of
the Martin ’431 patent to have the primary pan nest within an auxiliary pan
to prevent water from overflowing into the surrounding environment. Ans.
17, 29. The Examiner finds that Martin teaches in Figures 2b and 2c, a
primary drain pan which nests within an auxiliary drain pan 30, 40. Id. at
17. The Examiner concludes
It would have been obvious to a person of ordinary skill in the
art at the time of invention to modify the combined teachings of
Kaminski and Pierce with the teachings of Martin to include the
primary drain pan nested within said at least one auxiliary drain
pan in order to prevent water damage from occurring if water
overflows out of the primary pan.
Id.
Appellant argues the Examiner must be proposing “Kaminski should
be further modified so that the auxiliary pan is positioned with the bottom at
a right angle with respect to the primary pan.” App. Br. 36. Appellant’s
argument presumes an orientation that the Examiner does not adopt, and is
therefore unpersuasive. See Ans. 29 (“Kaminski was being further modified
by Martin to have the primary pan nest within an auxiliary pan . . . not to
have the auxiliary pan positioned with a bottom at a right angle with respect
to the primary pan.”).
Because Appellant’s arguments against the rejection of claim 12 are
unpersuasive, we also sustain the Examiner’s rejection of this claim under
35 U.S.C. § 103(a).

Appeal 2012-008565
Application 12/174,813

20

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 1–20 under 35 U.S.C. §§ 112 and 103(a).

DECISION
As such, we AFFIRM the Examiner’s Final Rejection of claims 1–20.
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)(iv).

AFFIRMED

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