Ex Parte Rohrer et al

Board of Patent Appeals and Interferences

Feb 5, 2010

11070488 (B.P.A.I. Feb. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN R. ROHRER and JOSEPH M. ENDTER
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Appeal 2009-001292
Application 11/070,488
Technology Center 3700
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Decided: February 5, 2010
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Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-001292
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STATEMENT OF THE CASE
Stephen R. Rohrer and Joseph M. Endter (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s final rejections under 35 U.S.C. § 103(a)
of claims 2, 3 and 5-16 as unpatentable given Weisz (US 3,190,207, issued
Jun. 22, 1965) and Lough (US 4,666,477, issued May 19, 1987) and of claim
4 as unpatentable given Weisz, Lough, and Smith (US 6,106,387, issued
Aug. 22, 2000). We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
REVERSE.
The Invention
The claims on appeal relate to an improvement in air curtain
doorways. The air stream across the doorway counteracts the forces of the
infiltrating air masses on both sides of the doorway.
Claim 14, reproduced below, is illustrative of the subject matter on
appeal.
14. In an air curtain doorway for forming an air curtain
across a doorway between a relatively low temperature area and
a relatively high temperature area, comprising duct work
including a supply air duct at a first side of the doorway, said
supply air duct having a supply air outlet aperture extending
substantially the height of the first side, a return air duct at a
second side of the doorway opposite from the first side and
having a return air inlet aperture extending substantially the
height of the second side, an intermediate air duct extending
between the supply and return air ducts, and an air mover for
moving an air stream through the duct work from the return air
inlet aperture to the supply air outlet aperture, and out of the
duct work through the supply air outlet aperture so as to form
an air curtain flowing from the supply air outlet aperture toward
the return air inlet aperture, and to draw air into the ductwork
through the return air inlet aperture, the improvement wherein:
the return air inlet aperture is adjustable in area.

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The Rejections
Based on Lough teaching an adjustable air damper for a clean room,
the Examiner concludes that it would have been obvious to modify Weisz’s
air curtain system with Lough “in order to maintain the desired flow rates
and pressure gradients (col. 1, ll. 26-27) in the air duct.” Ans. 5. The
Examiner finds that “having a pressure of at least 1″ of water is [an] obvious
matter of design choice to [a] person of ordinary skill in the art at the time of
the invention (MPEP 2144.04) and is given little patentable weight.” Ans. 5.
Contentions
Appellants contend that an adjustable return air inlet aperture as
claimed is not rendered obvious based on the combined teachings of Weisz
and Lough. App. Br. 5-7. Appellants traverse the Examiner’s finding that
having an air mover that creates a static pressure of at least one inch of water
on the upstream side of the air mover is an obvious design choice. App. Br.,
8-9.

OPINION
Issues
The determinative issues in this appeal are:
(1) Whether the combined teachings of Weisz and Lough would
render obvious an air curtain doorway having the return air inlet aperture
being adjustable in area.
(2) Whether the Examiner has adequately provided a convincing line
of reasoning for the conclusion that it is an “obvious matter of design
choice” to have an air mover that creates a static pressure of at least one inch
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of water on the upstream side of the air mover within an air curtain doorway
as claimed.
Pertinent Facts
1. Weisz discloses an air curtain. Figure 8 shows a horizontal cross-
section through the return duct 2. Return duct 2 lacks any features
that can adjust the inlet opening 41.
2. Lough teaches an adjustable damper 14 for clean room systems.
Lough teaches that the damper 14 is located in the air supply system
at or near the ceiling. Lough does not teach locating the damper in a
return duct.
Principles of Law
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the Examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Further, in rejecting claims as
unpatentable on the basis of obviousness, the Examiner must provide “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007).
In other words, it is improper to base a conclusion of obviousness
upon facts gleaned only through hindsight. “To draw on hindsight
knowledge of the patented invention, when the prior art does not contain or
suggest that knowledge, is to use the invention as a template for its own
reconstruction—an illogical and inappropriate process by which to
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determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the
blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138
(Fed. Cir. 1985)).
To support a conclusion that a claim is directed to obvious subject
matter, prior art references must suggest expressly or impliedly the claimed
invention or an Examiner must present a “convincing line of reasoning’ as to
why one of ordinary skill in the art would have found the claimed invention
to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).
When determining whether a rejection based on design choice is appropriate,
the Examiner must review the Specification and ascertain if the limitation in
question is disclosed as serving any advantage or particular purpose, or
whether it solves a stated problem. The Examiner also should explain the
reasoning used to determine that the prior art would have performed equally
as well as the claimed invention. These two steps help present the
aforementioned “convincing line of reasoning.” Ex parte Clapp, 227 USPQ
at 973.
Analysis
Issue (1)
Weisz describes an air curtain lacking a return air inlet aperture that is
adjustable in area. Fact 1. Lough describes an adjustable damper, but that
damper is located on the supply side of an air supply filtration system; not
the return side. Fact 2. As such, Appellants’ argument that the combination
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of Weisz and Lough fail to render obvious having a return air inlet aperture
that is adjustable in area has merit. The Examiner’s rejection overlooks the
context of Lough, namely, that Lough’s adjustable damper is on the supply
side of an air supply system. Further, the Examiner does not cogently
explain how to modify Weisz’s return air inlet with Lough’s teaching of an
adjustable damper. The Examiner should note that
a patent [claim] composed of several elements is
not proved obvious merely by demonstrating that
each of its elements was, independently, known in
the prior art. Although common sense directs one
to look with care at a patent application that claims
as innovation the combination of two known
devices according to their established functions, 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., 550 U.S. at 418.
In this case, the Examiner has not provided a cogent reason to employ
a supply side adjustable damper on a return side air inlet, nor has the
Examiner established that a person of ordinary skill in the art would
reasonably expect to be able to adequately control desired flow rates and
pressure gradients in Weisz (the rationale advanced by the Examiner for
combining the teachings) by providing an adjustable area at the return side
air inlet. Based on the disclosures of Weisz and Lough and the Examiner’s
reasoning to combine Weisz and Lough, this case is not seen as being an
obvious combination of prior art elements or a simple substitution of one
known element for another, leading to predictable results, or any other
indicator of potential obviousness. Rather, given the extensive amount of
modification needed to incorporate Lough’s adjustable damper into the
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return side of Weisz’s air curtain, and the lack of any teaching or suggestion
in Weisz or Lough of any particular result that might be achieved in making
the modification, the conclusion of obviousness appears born from the use of
impermissible hindsight reconstruction in view of Appellants’ Specification.
Issue (2)
The Examiner has not provide any convincing line of reasoning why it
is an “obvious matter of design choice” to have an air mover that creates a
static pressure of at least one inch of water on the upstream side of the air
mover within an air curtain doorway as claimed. Appellants have articulated
that a person of ordinary skill in the art would not reasonably infer or deduce
anything about the air mover of the air curtain of the present invention from
either Weisz or Lough and that there is an advantage of improving the
separation of the two environments on either side of the air curtain.
Consequently, without some line of convincing reasoning on the Examiner’s
part, this situation does not arise to where the combination of Weisz and
Lough differs only by a “minor” difference that the Examiner may
concluded to be a matter of “obvious design choice.”

CONCLUSIONS
Since (a) the rejections proffered by the Examiner are based on a
combination of prior art that fails to render obvious a return air inlet aperture
being adjustable in area, (b) the Examiner has not provided a convincing line
of reasoning to support the conclusion of “design choice.”, and (c) the
Examiner does not rely on Smith to cure the above noted deficiencies, we
are constrained to reverse the obviousness rejections.

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DECISION
The Examiner’s decision to reject the claims is reversed.

REVERSED

mls

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