Ex Parte Seccuro et al

Patent Trial and Appeal Board

Apr 6, 2017

12969760 (P.T.A.B. Apr. 6, 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.
12/969,760 12/16/2010 Scott Seccuro P090108 (1718.225) 4855
134338 7590 04/07/2017
Bell Nunnally & Martin LLP
3232 McKinney Avenue, Suite 1400
Dallas, TX 75204
EXAMINER
MA, KUN KAI
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
04/07/2017 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 SCOTT SECCURO, TODD COLLINS, and SUBODH SHARMA
Appeal 2015-007329
Application 12/969,760
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott Seccuro et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1—20, as set forth in the
Final Action dated July 31, 2014 (“Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Heatcraft Refrigeration Products LLC as the real party
in interest. Appeal Br. 1.
Appeal 2015-007329
Application 12/969,760
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter “relates to a modular evaporator
and components thereof for use within a walk-in cooler and other types of
refrigeration systems.” Spec. 1, para. 101. Claims 1, 14, and 16 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. An evaporator for use with a cooler, comprising:
a housing;
the housing mounted within a refrigerated space of the
cooler about a ceiling thereof;
a coil assembly mounted within the housing; and
a replaceable fan module positioned within the housing;
wherein the replaceable fan module comprises a horizontal
fan mounted therein substantially parallel to the ceiling such that
the horizontal fan pulls an airflow through the coil assembly and
turns the airflow into the cooler.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1—20 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. Claims 1—4, 7, 10, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Maynard (US 3,712,078, iss. Jan. 23, 1973)
and Spiller (US 2010/0031684 Al, pub. Feb. 11, 2010).
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maynard, Spiller, and Wolfe (US 2010/0018246 Al, pub. Jan.
28,2010).
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Application 12/969,760
4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maynard, Spiller, Wolfe, and Ha (US 6,857,288 B2, iss. Feb.
22, 2005).
5. Claims 8 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maynard, Spiller, and Gonsalves (US 5,927,389,
iss. July 27, 1999).
6. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maynard, Spiller, Lee (US 2010/0064719 Al, pub. Mar. 18,
2010), and Correll (US 5,980,207, iss. Nov. 9, 1999).
7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maynard, Spiller, and Vithani (US 2005/0095121 Al, pub.
May 5, 2005).
8. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maynard, Gonsalves, and Christensen (US
6,373,698 Bl, iss. Apr. 16, 2002).
9. Claims 16 and 18—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maynard, Lee, and Correll.
10. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maynard, Lee, Correll, Ha, and Wolfe.
ANALYSIS
First Ground of Rejection: Indefiniteness
Appellants do not contest the indefiniteness rejection of claims
1—20. See Appeal Br. 5—11 (Appellants arguing only the obviousness
rejections of claims 1—20); id. at 4-5 (omitting the indefmiteness rejection
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Appeal 2015-007329
Application 12/969,760
from the list of rejections to be reviewed on appeal). Consequently,
Appellants have waived any argument of error, and we summarily sustain
the rejection of claims 1—20 under 35 U.S.C. § 112, second paragraph, as
indefinite. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir.
2002) (holding that the Board did not err in sustaining a rejection
under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal).
Second through Tenth Grounds of Rejection: Obviousness
As set forth below in the new ground of rejection, claims 1—20
are indefinite for reasons in addition to those identified by the Examiner in
the first ground of rejection. Accordingly, we cannot sustain the prior art
rejections of these claims under 35 U.S.C. § 103(a), because to do so would
require speculation as to the scope of the claims. See In re Steele, 305 F.2d
859, 862—63 (CCPA 1962) (holding that the Board erred in affirming an
obviousness rejection of indefinite claims because the rejection was based
on speculative assumptions as to the meaning of the claims). It should be
understood, however, that our decision to reverse these rejections is based
solely on the indefmiteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1—20 under 35 U.S.C.
§112, second paragraph, as indefinite.
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Appeal 2015-007329
Application 12/969,760
Claims 1—13 and 16—20
Independent claim 1 recites “a horizontal fan mounted therein
substantially parallel to the ceiling.” Appeal Br. 13 (Claims App.).
Independent claim 16 recites a similar limitation. Id. at 15 (“a horizontally
positioned backward incline centrifugal fan mounted therein substantially
parallel to the ceiling”). The scope of “horizontal fan” (claim 1) and
“horizontally positioned” fan (claim 16) is unclear. The Specification does
not explain what structural limits, if any, the terms “horizontal” and
“horizontally positioned” place on the fan, as recited in the claims.2 It is
unclear what orientation is meant by the fan being “horizontal” or
“horizontally positioned.” For example, it remains unclear what feature of
the fan is oriented horizontally. For example, the horizontal feature could be
the fan axis of rotation or the plane in which the fan blades rotate.
Additionally, because the feature of the claimed fan whose orientation
renders the fan “horizontal” or “horizontally positioned” is unclear, it is also
unclear what the limitation “mounted substantially parallel to the ceiling”
requires. Namely, the claim does not identify what point of reference on the
fan would be used to determine if the fan is substantially parallel to the
ceiling. Rather, the claims are amenable to at least two plausible
constmctions, i.e., the feature of the fan that is “horizontal” or “horizontally
positioned” and parallel to the ceiling is the axis of rotation of the fan, or the
feature is the plane in which the fan blades rotate. “[I]f a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
2 The term “horizontal” does not appear anywhere in the Specification.
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Application 12/969,760
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.” Ex parte Miyazaki, 2008 WL 5105055 *5
(BPAI 2008) (precedential). As such, one of ordinary skill in the art would
not be able to ascertain the metes and bounds of a “horizontal” and
“horizontally positioned” fan that is parallel to the ceiling when the claims
are read in light of the Specification.
Claims 1 and 16 additionally recite that the “fan pulls an airflow
through the coil assembly and turns the airflow into the cooler.” Appeal Br.
13, 15 (Claims App.) (emphasis added). This language also renders the
claims indefinite because it is unclear what limits, if any, the term “turns”
places on the structure of the horizontal fan. The Specification describes
that “fan 390 pulls the airflow through the coil assembly 260 and turns the
flow into the cooler 110 or other refrigerated space.” Spec., para. 125.
However, Figure 1 depicts evaporator 100 with an indicator depicting the
airflow as traveling in a horizontal direction from left to right. Further,
Figure 2 shows that fan 390 pulls air through coil assembly 260 (to the right
of the fan) and pushes it out through grill 420 (to the left of the fan). In this
regard, the airflow through coil assembly 260 does not appear to turn into
the cooler. Rather, the airflow exiting grill 420 into the cooler appears to
have the same orientation as the air pulled through coil assembly 260 (i.e.,
the airflow entering the coil and exiting the grill appears to remain in the
same horizontal plane). As such, the metes and bounds of the language
reciting that the fan “turns the airflow into the cooler” is not clear to those
skilled in the art when the claims are read in light of the Specification.
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Appeal 2015-007329
Application 12/969,760
For the above reasons, claims 1 and 16, and their dependent claims
2—13 and 17—20, are indefinite.
Claims 14 and 15
Independent claim 14 recites “positioning a replaceable fan module
into the evaporator housing and substantially parallel to the ceiling.” Appeal
Br. 15 (Claims App.). This limitation is indefinite for the same reason that
the similar limitation recited in claims 1 and 16 is indefinite. Namely, it is
unclear what aspect of the fan module must be positioned substantially
parallel to the cooler ceiling. In other words, the claim does not specify any
particular structural feature of the fan module (e.g., a surface or a dimension)
as a point of reference for determining whether the fan module is parallel to
the ceiling. The Specification does not recite the term “parallel” anywhere,
much less define a particular reference point on the fan module for
positioning it parallel to the cooler ceiling. As such, one of ordinary skill in
the art would not be able to ascertain the metes and bounds of “positioning a
replaceable fan module into the evaporator housing and substantially parallel
to the ceiling” when the claims are read in light of the Specification.
Accordingly, independent claim 14 and its dependent claim 15 are
indefinite.
DECISION
The decision of the Examiner to reject claims 1—20 under 35 U.S.C.
§112, second paragraph, as indefinite is AFFIRMED.
The decision of the Examiner to reject claims 1—20 under 35 U.S.C.
§ 103(a) is REVERSED.
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Appeal 2015-007329
Application 12/969,760
We enter a new ground of rejection of claims 1—20 under 35 U.S.C.
§112, second paragraph, as indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, § 41.50(b)
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