Ex Parte Steinmann

Patent Trial and Appeal Board

Jul 31, 2017

13573539 (P.T.A.B. Jul. 31, 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.
13/573,539 09/21/2012 Jacob F. Steinmann 2058
7590
Richard P. Fennelly
2320 DePeyster Dr.
Cortlandt Manor, NY 10567-3210
EXAMINER
COLEMAN, RYAN L
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
07/31/2017 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 JACOB F. STEINMAN
Appeal 2016-005219
Application 13/573,539
Technology Center 1700
Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 4—7 of Application
13/573,539 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 18,
2015) 2—8. Appellant1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Jacob F. Steinman, the named inventor, is identified as the real party in
interest. Appeal Br. 1.
Appeal 2016-005219
Application 13/573,539
BACKGROUND
The present application is entitled “Air Conditioner Condenser Coil
Cleaning: Method, Combination, Apparatus.” The application generally
relates to a flexible bag having an adjustable mouth portion adapted to fit
over a condenser coil subassembly of an air conditioning apparatus. Spec.
1—2. The surface of the bag includes apertures to allow the entry of
compressed air and the exit of vacuum air, respectively, through the surface
of the bag. Id. at 2. Additionally, the surface of the bag includes a clear
portion to permit viewing of the cleaning operation. Id. at 3. The
application further describes a method of cleaning a condenser coil
subassembly using the described flexible bag. Id. at 1—2.
Claim 1 is the sole claim at issue and is reproduced below2:
1. A method of cleaning the condenser coil subassembly of
an air conditioning apparatus which comprises: placing a
flexible bag construction over and generally around such
subassembly, but not over and around the subassembly
containing the other components of the air conditioner, said bag
having an adjustable mouth portion that has been fitted over the
condenser coil subassembly and also comprising respective
hole means in the surface of the bag to allow the entry of
compressed air and exit of vacuum air, respectively, from the
enclosed area surrounding the condenser coil subassembly, said
surface of the bag having a portion that is clear to allow for
viewing of the cleaning operation inside the bag; and
supplying compressed air to said enclosed area to loosen and
remove debris from the coils and also vacuum is applied to
remove loosened debris from said enclosed area thereby
resulting in a cleaning of said condenser coil subassembly.
Appeal Br. 10 (Claims App.).
2 Claims 4—7 were canceled by amendment after final submitted May 15,
2015 and entered May 29, 2015.
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Application 13/573,539
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claim 1 is rejected under 35 U.S.C. § 103(a) as obvious over Peters
(US 1,620,390, iss. March 8, 1927) in view of Harmon (US 6,295,696 Bl,
iss. Oct. 2, 2001) and further in view of Yoo (US 2010/0236577 Al, pub.
Sept. 23, 2010). Final Act. 3.
DISCUSSION
The Examiner rejected claim 1 as obvious over Peters in view of
Harmon and further in view of Yoo. Id. at 3. Appellant alleges error on
several bases.
Appellant argues that the Examiner has engaged in an improper
hindsight reconstruction of the prior art. Id. at 2—5. Appellant additionally
argues that a person of ordinary skill in the art would not have combined the
teachings of Harmon and Peters because the Harmon apparatus is not “bag­
like,” not shaped to fit around condenser coils, and does not teach a clear
window for viewing the cleaning operation. Id. at 5—6.
In regard to Yoo, Appellant argues that a person of ordinary skill in
the art would not have combined its teachings with those of the other cited
references because it has no bag-like structure and it teaches to blow debris
in a generally horizontal direction (unlike Peters). Id. at 7.
Appellant additionally cites a recently issued patent, Agorichas (not
cited by the Examiner), in support of the proposition that current technology,
including that reflected in the Agorichas, Harmon and Yoo references,
achieves solutions that differ from claim 1. Id. at 8—9. We address these
arguments in sequence.
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Application 13/573,539
Combination of Peters and Harmon
The Examiner cites Peters as the primary reference which teaches the
use of a flexible bag with an adjustable mouth over the object to be cleaned.
Final Act. 17. Peters further teaches supplying air through an air tube
positioned to pass through the mouth and a hole in the bag for the
application of a vacuum. Id. The Examiner relies upon Harmon as teaching
to use the flexible bag to remove dust from an air conditioning condenser
coil subassembly and to implement a hole in the bag for the air supply.
Final Act. || 9, 12.
Appellant argues that a person of ordinary skill in the art would not
have combined the teachings of Peters and Harmon because Peters teaches
to supply air in a substantially vertical stream while Harmon and Yoo teach
a more horizontal air flow, and modification of the bag of Peters to add a
hole for air entry would breach the air tight surface of Peters’ hood. Appeal
Br. 3. Appellant additionally argues that a person of ordinary skill in the art
would not have combined the teachings of Peters and Harmon because the
Harmon apparatus is not “bag-like,” id. at 5, and the two inventions are not
physically combinable, id. at 6.
In regard to the first argument, that Peters teaches to supply air in a
vertical stream, the Examiner determines that Claim 1, the sole claim at
issue, does not include any limitation requiring that the airflow be horizontal
(or directed in any particular direction). Answer 8. Moreover, the Examiner
finds that Appellant’s assertion that the direction of air flow is “critical” is
unsupported by evidence. Id. We agree with the Examiner that Appellant
has not supplied adequate evidentiary support for the assertion that a person
of ordinary skill in the art would regard the orientation of the airflow as
critical. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An
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Application 13/573,539
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.”); see also Gemtron Corp. v. Saint-Gobain
Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[Ujnswom attorney argument
. . . is not evidence and cannot rebut. . . other admitted evidence.”).
Appellant has simply not demonstrated that the direction of airflow would
cause a person of ordinary skill in the art to regard Peters as technologically
incompatible with Harmon and Yoo.
Appellant’s second argument regarding the Peters reference is that a
person of ordinary skill in the art would not create a hole for ingress of
compressed air so as to avoid breaching the “air tight”3 surface of the hood
taught by Peters. Appeal Br. 3.
In this regard, the Examiner finds that Peters’ teaching that the bag
should be “air tight” does not weigh against inclusion of a hole for air
ingress because one may form an air tight connection between a hole and a
tube. Answer 7. Indeed, Peters teaches a tube for air egress that is
presumably air tight. Id.; Peters 1:108—2:2 (chamber with suction tube
attached is “substantially or approximately sealed against escape of air
currents”).
The Examiner finds that a person of ordinary skill in the art would
have reason to combine the flexible bag of Peters with the air ingress hole of
Harmon to permit air to enter the environment to be cleaned, and that a hole
for air ingress is similar to a hole for air egress and would have been familiar
to one of skill in the art. Answer 5; Final Act. 113. “The combination of
3 Peters describes the hood as “approximately air tight.” Peters 1:8.
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Application 13/573,539
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398,416 (2007).
Appellant’s argument that “there is no way to get a Peters-type hood
in position over the Harmon coils” does not persuade us to the contrary.
Appeal Br. 6. The fact that two prior art devices could not have been
physically combined does not mean that those skilled in the art would not
have found combining features of the two devices to be nonobvious.
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983).
In view of the foregoing, Appellant has failed to demonstrate
reversible error in the Examiner’s determination regarding combination of
the teachings of Peters and Harmon.
Said Surface of the Bag Having a Portion that is Clear
Subsequent to the Final Rejection, Appellant submitted, and the
Examiner entered, an amendment to claim 1 providing “said surface of the
bag having a portion that is clear to allow for viewing of the cleaning
operation inside the bag.” Amendment After Final (May 15, 2015). The
examiner took official notice that “it is well known to have a container be
transparent (that is, "clear") such that a person is advantageously able to see
what is contained by the container.” Answer 6. In view of this finding and
the cited prior art, the Examiner determined claim 1 to be obvious.
Appellant argues that the Examiner has “improperly resorted” to
official notice. Appellant asserts that official notice is proper only for
matters “capable of such instant and unquestionable demonstration as to
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Application 13/573,539
defy dispute.” Appeal Br. 4 (citing In reAhlert, 424 F.2d 1088, 1091
(CCPA. 1970)).
An adequate traversal of an Examiner's finding of Official Notice
must “contain adequate information or argument” to create on its face “a
reasonable doubt regarding the circumstances justifying the ... notice” of
what is well known to an ordinarily skilled artisan. In re Boon, 439 F.2d
724, 728 (CCPA 1971). “To adequately traverse such a finding, an applicant
must specifically point out the supposed errors in the examiner’s action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art.” MPEP § 2144.03(C) (9th ed.,
Nov. 2015).
Here, the noticed fact is that “it is well known to have a container be
transparent.” Appellant does not contest such fact. Rather, Appellant states
that “in view of the Peters teaching of a seemingly opaque hood ... we do
not think that it would be obvious to have this feature.” Appeal Br. 4. Thus,
Appellant contests the ultimate finding of obviousness, but does not directly
dispute that the noticed fact is common knowledge.
Accordingly, Appellant has failed to demonstrate error in the
Examiner’s taking official notice that it is well known to have a container be
transparent.
Time Elapsed Subsequent to Issue of Peters
Appellant additionally argues that the “ancient vintage” of the Peters
reference suggests that the Examiner was guided by hindsight bias in relying
upon its teachings. Appeal Br. 4—5. Appellant relies upon Leo
Pharmaceuticals, which provides as follows:
The elapsed time between the prior art and the '013 patent's filing
date evinces that the '013 patent's claimed invention was not
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obvious to try. Indeed this considerable time lapse suggests
instead that the Board only traverses the obstacles to this
inventive enterprise with a resort to hindsight.
Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir.
2013) (emphasis added). Here, Leo Pharmaceuticals is inapplicable as the
Examiner does not rely upon a theory that the hypothetical combination was
obvious to try. Moreover, “[t]he mere age of the references is not persuasive
of the unobviousness of the combination of their teachings, absent evidence
that, notwithstanding knowledge of the references, the art tried and failed to
solve the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(quoted by In re Ethicon, Inc., 844 F.3d 1344, 1352 (Fed. Cir. 2017)).
Accordingly, the passage of time subsequent to the issue of Peters
does not mitigate its applicability.
The Yoo Reference
The Yoo reference is relied upon by the Examiner only to show “that
when using a combination of blown air and vacuum to remove dust from an
air conditioner, it is advantageous to have the blown air be compressed air.”
Final Act. 115. Appellant argues that Yoo “fails to be suggestive of the
present invention” because it lacks a bag-like structure, blows air in a
horizontal direction, lacks a clear portion, and lacks any teaching relating to
holes for air to enter or leave. Appeal Br. 7.
None of the foregoing is contrary to the Examiner’s finding that Yoo
teaches that it would be advantageous to employ compressed air in cleaning
air conditioning coils. Nor does Appellant argue that there is no reason to
combine this teaching of Yoo with the other teachings cited by the
Examiner. Further, we note that Peters teaches “to direct air under pressure
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to the dust chamber,” Peters 2:25—26, and Harmon teaches to use “high-
pressure air,” Harmon 3:19-24.
Accordingly, the examiner has not been shown to be in error in
relying upon the teachings of Yoo regarding compressed air.
The Agorichas Reference
Appellant additionally cites a recently issued patent, Agorichas, which
was not cited by the Examiner. Appellant argues that Harmon, Yoo and
Agorichas are three generally contemporaneous references directed to the
cleaning of air conditioner coils that present solutions that differ from claim
1. Appeal Br. 8—9.
This argument fails. First, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Here, the
Examiner did not consider Agorichas and Appellant does not argue that the
Examiner erred in declining to consider this uncited reference. Accordingly,
there is no showing of error. Second, “[t]he prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the [ ] application.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not cite to
any portion of Agorichas, Harmon, or Yoo that criticizes, discredits, or
otherwise discourages the combination cited by the Examiner.
Accordingly, Appellant has not shown error in this regard.
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CONCLUSION
In view of the foregoing, the rejection of claim 1 as obvious over
Peters in view of Harmon and Yoo is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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