Ex Parte Sarver et al

Patent Trial and Appeal Board

Sep 19, 2012

10835223 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHARLIE H. SARVER, RUSH B. HORTON, GUY RAMSEY,
and JOEY CHANDLER
____________________

Appeal 2010-009138
Application 10/835,223
Technology Center 3600
____________________

Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009138
Application 10/835,223
2
STATEMENT OF THE CASE
Charlie H. Sarver et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-9 and 24-26. Claims 10-23 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Invention
Appellants’ invention pertains to a transformer enclosure with a roof
structure, the roof structure having a roof bottom panel with a roof airflow
aperture. Independent claim 1, reproduced below, is illustrative:
1. A transformer enclosure, comprising:
a base structure;
a wall structure secured to the base structure and defining an
interior space;
a transformer disposed in the interior space;
an inlet airflow aperture located in a lower portion of the wall
structure; and
a roof structure securedly disposed over the wall structure and
having an overhang portion extending outward, beyond the wall
structure, the overhang portion including a side panel extending
between a roof top panel and a roof bottom panel, the roof bottom
panel being disposed below the roof top panel, extending away from
the wall and having a roof airflow aperture, whereby air enters the
transformer enclosure through the inlet air flow aperture, is heated by
the transformer, rises to the overhang portion and flows downwardly
out of the transformer enclosure through the roof air flow aperture.

Appeal 2010-009138
Application 10/835,223
3
The Rejection
The Examiner relies upon the following as evidence of
unpatentability:
Rohatyn US 2,927,736 March 8, 1960
Kilian US 6,220,956 B1 April 24, 2001
The Examiner rejected claims 1-9 and 24-26 under 35 U.S.C. § 103(a)
as unpatentable over Rohatyn and Kilian.

Claim Grouping
Appellants argue independent claim 1 and dependent claims 2-9 and
24-26 as a group. Br. 3-5. Accordingly, we select claim 1 as representative,
and we treat claims 2-9 and 24-26 as standing or falling with representative
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2007).

ANALYSIS
The Examiner finds that Rohatyn discloses a transformer enclosure
that meets the limitations of claim 1 except that each of Rohatyn’s roof
airflow apertures has a different location than specified in claim 1. Ans. 3.
Figure 3 of Rohatyn is reproduced below with annotations that we have
added to identify certain portions that the Examiner found to meet certain
limitations of claim 1:

App
App

Ann
Exam
roof
that
locat
its ro
Ans.
eal 2010-0
lication 10
otated Figu
Regardin
iner corre
airflow ap
air does, in
ion of the
of airflow
3. This d
09138
/835,223
re 3 is a s
g the airfl
ctly finds
ertures (A
fact, flow
roof airflo
apertures
iffers from
ectional vi
ow throug
that air is
ns. 3), as R
out of its
w aperture
“directed
the positi
4
ew of Roh
h the roof
capable of
ohatyn di
roof airflo
s, the Exa
straight ou
on of the r
atyn’s tran
airflow ap
exiting th
scloses at
w apertur
miner find
t of the sid
oof airflow
sformer e
ertures, th
rough Roh
column 6,
es. Regard
s that Roh
e horizon
aperture

nclosure.
e
atyn’s
lines 6-10
ing the
atyn has
tally.”
specified

App
App
in cl
apert
throu
airflo
know
a roo
anno
Ann
pane
eal 2010-0
lication 10
aim 1, whi
ure, where
gh the roo
The Exa
w apertur
n in the f
f bottom p
tations we
otated Figu
l.
09138
/835,223
ch require
by air . . .
f airflow
miner find
e located i
ield of ven
anel. Id.
have adde
re 2 of Ki
s “the roof
flows dow
aperture.”
s that Kili
n a roof bo
tilation sy
at 3-4. Fig
d to ident
lian show
5
bottom p
nwardly o

an disclose
ttom pane
stems to lo
ure 2 of K
ify these f
s a roof air
anel . . . ha
ut of the t
s a roof st
l, demons
cate a roo
ilian is rep
eatures:
flow open
ving a roo
ransforme
ructure w
trating tha
f airflow a
roduced b
ing in a ro
f airflow
r enclosur
ith a roof
t it was
perture in
elow with

of bottom
e

Appeal 2010-009138
Application 10/835,223
6
In view of Kilian’s disclosure of locating a roof airflow aperture in a
roof bottom panel, the Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time of the invention to modify
Rohatyn’s transformer enclosure by moving its roof airflow apertures to its
roof bottom panels, thereby arriving at Appellants’ claimed invention.
Id. at 4. The Examiner finds that a person of ordinary skill in the art would
have recognized a number of reasons for doing so, including protecting the
roof airflow apertures from crosswinds and rain, promoting aesthetics by
hiding the roof airflow apertures, inhibiting animals from roosting in the
airflow apertures, and because “such placement of vents is well known in the
art of building construction and is widely used from small dwellings to large
buildings.” Id. at 6. See also Id. at 4-5.
Appellants dispute the Examiner’s reasoning for combining the
teachings of Rohatyn and Kilian, and Appellants argue that Kilian teaches
away from the claimed invention. Br. 3-5. Thus, Appellants’ arguments
present only questions of fact. See Hynix Semiconductor Inc. v. Rambus
Inc., 645 F.3d 1336, 1353 (Fed. Cir. 2011) (“the rationale for combining
references is a question of fact”); In re Harris, 409 F.3d 1339, 1341 (Fed.
Cir. 2005) (whether a reference teaches away from a claimed invention is a
question of fact).
Appellants argue that “the reasoning provided by the Examiner for
combining the Rohatyn Patent and the Kilian Patent, i.e, ‘to protect the vents
from crosswinds and rain’ is ineffectual because these benefits are already
achieved by the louvers 116 of the Rohatyn patent (see column 4, lines 13-
16).” Br. 4-5. In response, the Examiner finds that louvers would not
completely solve the problem of rain entering Rohatyn’s roof airflow
apertures, noting that the louvers have to be open during venting. Ans. 5-6.
Appeal 2010-009138
Application 10/835,223
7
The Examiner further finds that moving a roof airflow aperture to the
location disclosed by Kilian would address this problem. Ans. 6.
Appellants do not respond to this.
We agree with the Examiner. Rohatyn identifies a need to inhibit
moisture from entering the roof airflow apertures. Rohatyn, col. 4, ll. 13-16.
While Rohatyn suggests that its louvers meet this need, we agree with the
Examiner that a person of ordinary skill in the art would have recognized
that the louvers would not completely keep rain out of the roof airflow
apertures, particularly in the presence of crosswinds. As noted by the
Examiner, “[t]his problem will be solved by the simple change in placement
of the vent” (Ans. 6), in that a person of ordinary skill in the art would have
readily appreciated from Kilian’s disclosure of locating a roof airflow
aperture in a roof bottom panel that this arrangement would protect against
influx of rain better than Rohatyn’s disclosed position of the roof airflow
aperture in the side of the roof structure. Consequently, we agree with the
Examiner’s finding that a person of ordinary skill in the art would have had
reason in view of Kilian to move Rohatyn’s roof airflow apertures to the
roof bottom panel to better protect against crosswinds and rain.
Appellants do not dispute the Examiner’s findings regarding other
reasons that a person of ordinary skill in the art would have recognized for
moving Rohatyn’s apertures to the roof bottom panel.
Appellants do further traverse the rejection based on the following
assertions:
More importantly, however, the Kilian Patent
teaches drawing air into the attic using the soffit
fan 30. In fact, the soffit 30 fan does not even
constitute an air flow aperture until the fan 44
starts to draw in air and thereby open the louvers
Appeal 2010-009138
Application 10/835,223
8
36. In contrast, in the transformer enclosure of
claim 1, air is recited as flowing out of the aperture
in the roof bottom panel. In other words, the soffit
fan 30 operates directly opposite of what is being
claimed.
Br. 5. Based on these assertions, Appellants argue that Kilian teaches away
from the claimed invention. Id.
We find these arguments unpersuasive. The Examiner relies on
Kilian only for its disclosure of the location of a roof airflow aperture in a
roof bottom panel. Ans. 5. Appellants’ arguments that the airflow aperture
exists only some of the time and that Kilian discloses directing air into the
aperture simply have no bearing on the location of the roof airflow aperture.
The above-discussed merits of Kilian’s disclosed location for the aperture
apply independent of the opening and closing of the louvers 36 and the
direction of flow through the aperture, and these features are thus irrelevant
to the Examiner’s proposed combination.
Additionally, Appellants have not established that Kilian teaches
away from the proposed combination. A reference teaches away from the
invention if the reference criticizes, discredits, or otherwise discourages
modifying a reference to arrive at the claimed invention. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). “The prior art’s mere disclosure of
more than one alternative does not constitute a teaching away.” Id.
While Kilian discloses some things that differ from some of the
limitations of claim 1, Appellants have not identified any part of Kilian that
criticizes, discredits, or otherwise discourages implementing any of the
features of Appellants’ claimed invention. Indeed, Appellants do not allege
that Kilian criticizes, discredits or discourages any feature of the claimed
invention. Rather, Appellants merely assert that Kilian discloses directing
Appeal 2010-009138
Application 10/835,223
9
air through the aperture in the opposite direction of what the claim specifies.
Br. 5. Appellants have not persuasively explained how the disclosure of
directing air into a roof airflow aperture would have discouraged a person of
ordinary skill in the art from directing air out of a roof airflow aperture, as
recited in Appellants’ claim 1 and as disclosed in Rohatyn.

DECISION
We affirm the Examiner’s decision regarding claims 1-9 and 24-26.
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

mls