Ex Parte Stevens et al

Patent Trial and Appeal Board

Jan 31, 2018

13523715 (P.T.A.B. Jan. 31, 2018)

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.
1576-0837 7906
EXAMINER
ADJAGBE, MAXIME M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
13/523,715 06/14/2012
10800 7590 01/31/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
William M. Stevens
01/31/2018 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 WILLIAM M. STEVENS, MARK D. CAPLAN,
YOON SHIN SHIK, and ROBERT J. VAN HOUTEN
Appeal 2016-004305
Application 13/523,715
Technology Center 3700
Before KEN B. BARRETT, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BROWN.
Opinion Dissenting filed by Administrative Patent Judge WARNER.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William M. Stevens et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—3, 8, 10, 11, 18,
19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Robert Bosch LLC and Robert Bosch GmbH
as the real parties in interest. Appeal Br. 2.
Appeal 2016-004305
Application 13/523,715
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. An airflow assembly, comprising:
a fan having a number of fan blades;
a shroud including (i) a plenum defining a plenum opening
located adjacent to said number of fan blades, said plenum
configured to guide an airflow through said plenum opening in a
first direction, and (ii) a barrel extending from said plenum so as
to surround said plenum opening, wherein said plenum further
defines at least one airflow opening spaced apart from said
plenum opening and configured to pass at least a portion of said
airflow therethrough in a second direction that is opposite to said
first direction;
a plurality of ribs, each of said plurality of ribs extending
inwardly from said barrel; and
a fan support attached to said plurality of ribs and
configured to support said fan;
wherein said at least one airflow opening is not an
attachment structure or a guiding structure,
wherein said at least one airflow opening is not configured
to receive a fastening member, and
wherein said at least one airflow opening does not function
as a water drain.
Appeal Br. 22 (Claims App.).
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Application 13/523,715
REJECTION2’3
Claims 1—3, 8, 10, 11, 18, 19, 21, and 22 stand rejected under 35
U.S.C. § 102(a) as anticipated by Desai (US 2006/0048924 Al, published
Mar. 9, 2006).4
ANALYSIS
Claim 1 recites, inter alia, that “said plenum [is] configured to guide
an airflow through said plenum opening in a first direction” and “said
plenum further defines at least one airflow opening spaced apart from said
plenum opening and configured to pass at least a portion of said airflow
therethrough in a second direction that is opposite to said first direction.'1'’
Appeal Br. 22 (Claims App.) (emphasis added). The Examiner finds that
Desai discloses at least one airflow opening 711 configured to pass at least a
portion of an airflow in a second direction that is opposite to a first direction
through which the airflow is guided through a plenum opening. Final Act.
3^4 (citing Desai, Figs. 5a, 5b), 12 (including annotated Figure 5a indicating
the location of the “plenum opening”). The Examiner determines that the
airflow assembly of Desai discloses all of the “claimed structures” and,
therefore, is capable of performing the function of “passing] at least a
2 A rejection of claims 1—6, 8—14, and 18—22 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. Ans. 6—7; Final Act. 2.
3 A rejection of claims 4—6, 9, 12—15, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Desai and “Engineering Expedient” has been withdrawn.
Ans. 7; Final Act. 7.
4 Claim 17 was canceled in an Amendment after Final (filed June 17, 2015),
which was entered by the Examiner (see Advisory Action dated July 1,
2015).
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Application 13/523,715
portion of said airflow therethrough in a second direction that is opposite to
the first direction.” Id. at 4.
Appellants dispute the Examiner’s finding that Desai’s air passage
openings 711 are “configured to pass at least a portion of said airflow
therethrough in a second direction that is opposite to said first direction,” as
claimed. Appeal Br. 7. Appellants contend that Desai does not describe
how the openings 711 respond to an airflow guided through the fan opening
704 by the shroud body 701. Id. at 9. Appellants point out that Desai does,
however, describe airflow through other similar slots in shroud body 701,
noting that Desai teaches that the slots 809, 810 in the shroud and the slots
709, 710 in the fluid reservoir allow airflow through them “from the front to
the back of the reservoir.” Id. (citing Desai 26, 40, Figs. 5a, 5b).
Appellants assert that slots 711, 811 likewise are configured to pass an
airflow through them in the same direction as the airflow through fan
opening 704. Id. (citing Desai Tflf 26, 40, Figs. 5a, 5b).
The Examiner responds that Desai’s device is “not structurally
different” from the claimed invention. Ans. 7. According to the Examiner:
In Desai just like in any fan assembly, rotation of the fan
generates airflow out of the fan (first direction) through the
plenum opening and because of the proximity of the opening
(711) to the plenum opening and due to the fact that the airflow
out of the fan plenum opening is at a higher pressure than the
surrounding air, a portion of that air would be drawn into the fan
assembly through opening (711) (second direction).
Ans. 7—8 (emphasis added). The Examiner states that Desai is not required
to explicitly describe how opening 711 responds to the airflow guided
through the fan opening because the disputed limitation is a functional
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Application 13/523,715
limitation and “a direct result of the operation of the fan assembly as well as
principles of physics.” Id. at 8.
Appellants’ Figures 1 and 2 illustrate an airflow assembly 100
including a plenum 216 defining a plenum opening 272 through which an
airflow 144 passes in the downstream direction 148. See Spec. H 22, 49.
Airflow assembly 100 additionally includes an airflow opening 324 spaced
from plenum opening 272 and extending through plenum 216. See id. 1133,
34, Figs. 1, 5. The Specification describes that when airflow 144 passes
through plenum opening 272, this creates a low air pressure region within a
plenum space 268 as compared to the air pressure outside of plenum space
268, causing an airflow 332 through opening 324 in the upstream direction
264. See id. 1 50, Fig. 5. Appellants state that the Specification emphasizes
how the airflow opening is “specially located and oriented” to provide the
claimed function. Appeal Br. 8 (citing Spec. H 46, 50).
Figure 5a of Desai is a front view of the shroud 700 showing a
plurality of air passage openings 711 spaced from a fan opening 704, and
Figure 5b is a rear view of the shroud showing a corresponding plurality of
air passage openings 811 spaced from a fan opening 804. See Desai H 52,
54. A fluid reservoir 702 provided on shroud 700 includes slots 709, 710
aligned with shroud holes 809, 810 to allow air passage therethrough. See
id. 151. Appellants contend that “[tjhere is no disclosure in Desai that any
of the openings or slots are configured to pass an airflow in a direction that
is opposite to the direction of another airflow through another opening or
slot.” Reply Br. 3.
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Application 13/523,715
We agree with Appellants that Desai explicitly describes air flow that
is the direction from the front to the back of the module. For example, Desai
describes, “/t]he present invention provides for the flow through of air from
the ‘front’ to the ‘back’ of a module, including its constituent parts, at
specific areas of the module.” Id. 138 (emphasis added). As Desai
identifies Figure 5a as a front view, we understand that such “front to back”
flow of air is in direction from the front face shown in Figure 5 a to the rear
face shown in Figure 5b.
We additionally agree with Appellants that Desai does not explicitly
describe what direction air flows through air passage openings 711 shown in
Figure 5a. The Examiner’s position that rotation of the fan in Desai
generates airflow out of the fan in a first direction through the plenum
opening and a portion of the surrounding air would be drawn into the fan
assembly through opening 777 in a second direction is unclear. Ans. 7—8.
Desai discloses that air flow is from the front to the back, which implies that
air flows out of the rear face of the fan shown in Figure 5b. To the extent it
is the Examiner’s position that surrounding air would be drawn through front
face via opening 711, this airflow would appear to be in the same front to
back direction as the airflow through the fan. Claim 1, however, requires
“an airflow through said plenum opening in a first direction” and “at least
one airflow opening . . . configured to pass at least a portion of said airflow
therethrough in a second direction that is opposite to said first direction.'1'’
Appeal Br. 22 (Claims App. (emphasis added)). This two-directional flow
of air occurs in the claimed airflow assembly during operation of the fan.
See, e.g., Spec, 48—50, Figs. 1,5. The Examiner does not explain
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Appeal 2016-004305
Application 13/523,715
adequately how or why such two-directional airflow would be produced
during operation of the fan in Desai’s device.
Although it is not necessary that Desai describe explicitly the
performance of the claimed function associated with the airflow opening, it
is incumbent upon the Examiner to explain adequately how Desai discloses a
an airflow assembly comprising a shroud including an airflow opening
configured so as to perform that function, in addition to a configuration that
would provide “an airflow through said plenum opening in a first direction,”
which is opposite to the direction through which air passes through the
airflow opening. “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). Despite the explicit description in Desai noted by Appellants,
the Examiner does not explain adequately how the disputed limitation is,
nevertheless, “a direct result of the operation of the fan assembly as well as
principles of physics.” Ans. 8. Figure 5 A of Desai shows that shroud 701
includes eight openings 711. The Examiner does not indicate, however,
which of these multiple openings 711 is considered the “opening 711.” Nor
does the Examiner explain adequately why the airflow direction through any
particular one of these multiple openings 711 would be the “second
direction,” or different from the airflow direction through other ones of the
openings 711. Accordingly, the Examiner does not establish by a
preponderance of the evidence, or by adequate technical reasoning, that any
one of Desai’s air passage openings 711 is configured to provide the claimed
function of the at least one airflow opening, while also meeting all other
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Application 13/523,715
claim limitations. Thus, we do not sustain the rejection of claim 1, or of
claims 2, 3, 8, and 21 depending therefrom, as anticipated by Desai.
Claim 10 recites, inter alia, “a plenum defining a plenum opening,
said plenum configured to guide at least a portion of said flow of air though
said plenum opening in a first direction as an airflow” and “said plenum
includes a rim structure that defines at least one airflow opening configured
to pass at least a portion of said airflow therethrough in a second direction
that is opposite to said first directionAppeal Br. 25 (Claims App.)
(emphasis added). The Examiner’s findings for claim 10 are substantially
the same as for claim 1. Final Act. 5. Thus, we do not sustain the rejection
of claim 10, or of claims 11, 18, 19, and 22 depending therefrom, as
anticipated by Desai.
DECISION
The Examiner’s decision to reject claims 1—3, 8, 10, 11, 18, 19, 21,
and 22 is reversed.
REVERSED
8
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM M. STEVENS, MARK D. CAPLAN,
YOON SHIN SHIK, and ROBERT J. VAN HOUTEN
Appeal 2016-004305
Application 13/523,715
Technology Center 3700
Before KEN B. BARRETT, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge, dissenting.
I respectfully dissent.
As discussed above, the disputed issue in this case is whether Desai
discloses “at least one airflow opening” that is “configured to pass” at least a
portion of airflow therethrough in the opposite direction of airflow that
would pass through a plenum opening, as the airflow opening is recited in
the claims. See Appeal Br. 6—12; Reply Br. 2-4; Final Act. 3—6; Ans. 7—10.
Both Appellants’ arguments and, it appears, the majority opinion focus on
the operation of airflow actually moving through the recited opening(s) in a
given direction, and a lack of express disclosure in Desai as to the direction
of airflow actually moving through air passage openings 711 relied on by the
Examiner. See Appeal Br. 7—9; Reply Br. 3^4; Majority Opinion, supra
at 4, 6—8.
Appeal 2016-004305
Application 13/523,715
In my view, however, such operation during use is beyond the scope
of the claims, which simply recite a structural configuration of the claimed
opening.
The claims at issue are apparatus claims that are directed to structure
(namely, an airflow assembly including a shroud with a plenum that defines
both a plenum opening and the disputed airflow opening(s) “configured to”
pass back therethrough a portion of airflow), rather than to any method or
process (actual use or operation) where airflow must actually move in any
particular direction. See Appeal Br. 22—28 (Claims App.). As our reviewing
court has consistently held, claims directed to an apparatus—as here—must
be distinguished from the prior art in terms of structure rather than use. See
In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997); see also Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“apparatus claims cover what a device is, not what a device does'”); In re
Casey, 370 F.2d 576, 580 (CCPA 1967) (the manner in which a device is to
be used is not germane to the issue of patentability of the device itself).
Thus, although the “configured to” recitation must of course be considered
in construing the claims, this functional recitation must result in some
structural distinction over the identified structure of Desai in order to
provide a patentable difference.
It is in this identification of any structural distinction between the
airflow opening(s) recited and the air passage openings 711 of Desai (as
opposed to a shortcoming of express disclosure in Desai of actual airflow
movement through such openings during operation) where I depart from the
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Application 13/523,715
decision reached by my colleagues.1 On this point, neither Appellants nor
the majority opinion identifies what structural features or limitations (if any)
would be objectively imparted to the “at least one airflow opening” by the
“configured to” functional recitation (that would not likewise be present in
Desai). To the extent that any such structural features or limitations would
be imparted, they are neither apparent from Appellants’ disclosure nor
identified by Appellants in their briefing.
Instead, in my view, the Examiner has made a sufficient finding that
Desai discloses the same structure as the disputed airflow opening(s)
claimed. Final Act. 4 (noting that “the airflow assembly of Desai disclose[s]
all [Appellants’] claimed structures and therefore [is] capable of performing
the function” recited); see id. at 3—5; Ans. 7 (explaining that “[t]he device of
Desai is not structurally different from [Appellants’] invention as claimed”)
(emphasis added).
More specifically, I am of the opinion that the Examiner’s stated
finding—that Desai’s air passage openings 711 are structurally equivalent to
the claimed airflow opening(s)—is supported by a preponderance of the
1 As discussed above, the operational consideration of whether airflow
actually passes through Desai’s air passage openings 711 in a reverse
direction (expressly disclosed or not) is beyond the scope of the apparatus
claims here and, thus, is not germane to the structure of the openings
themselves. In other words, although I agree with my colleagues (see
Majority Opinion, supra at 4, 6) and Appellants (see Appeal Br. 9; Reply
Br. 3) that Desai does not expressly disclose a direction of airflow actually
passing through air passage openings 711 during operation, this lack of
express disclosure regarding operation is insufficient to identify a patentable
distinction as to the structure between the claimed airflow opening(s) recited
and the air passage openings 711 of Desai.
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evidence. See Spec. Tflf 34—35 (describing disputed airflow opening 324 as
being “spaced apart from” the plenum opening, extending through the
plenum, and being defined solely by a rim in the plenum); Desai, Figs. 5a,
5b (depicting air passage openings 711 that match such description).2
Although Appellants indicate that some disclosed embodiments of the
disputed airflow opening(s) include dimensional and/or dispositional details
that may be indicative of a special configuration to pass back therethrough a
portion of airflow (see Appeal Br. 8; Spec. Tflf 46-47), the Examiner
correctly reminds Appellants that such constraints “are not recited” in the
claims, and that exemplary details from the Specification “are not read into”
the claims (Ans. 8 (citing In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993)). Moreover, as Appellants acknowledge, it is “a ‘differential in air
pressure [that] causes the airflow 332 to advance . . . through the [disputed]
airflow opening 324,’” as opposed to any structural feature of the airflow
opening itself. Appeal Br. 8 (quoting Spec. 1 50).
Consequently, the identified air passage openings 711 relied on by the
Examiner (as depicted in Figures 5a and 5b of Desai) seem to be structurally
21 note that, although Appellants generally allege that disputed airflow
opening 324 “is specially located and oriented” to provide the “configured
to” functional recitation (Appeal Br. 8), a review of the drawings from both
Appellants and Desai reveals that the claimed and identified openings are
substantially the same—they are all elongated holes spaced away from the
plenum opening (compare Appellants’ Figs. 1, 3, 6, 7 (depicting various
embodiments of the claimed openings), with Desai’s Fig. 5a (cited by the
Examiner)). Further, Appellants’ Specification discloses that such openings
can also vary in number, shape, size, etc., which would account for any
slight discrepancies depicted between examples of the claimed opening(s)
and the identified openings of Desai. See, e.g., Spec. 159-72.
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indistinguishable from the claimed airflow opening(s) and appear to be
capable of passing airflow therethrough in either direction, thereby making
them “configured to” pass an airflow back through (in the opposite direction
as the plenum airflow) in the same way that Appellants’ disputed airflow
opening is so configured. In this regard, Appellants do not set forth factual
evidence or persuasive technical reasoning to identity error in the
Examiner’s position that Desai’s air passage openings 711—structurally
equivalent to the claimed airflow opening(s), as explained above—are thus
equally capable of performing the recited function. See Final Act. 4;
Ans. 8—9.
In sum, Appellants’ arguments do not apprise me of a patentable
structural distinction between the “at least one airflow opening” recited in
the claims and Desai’s air passage openings 711 relied on in the rejection.
Accordingly, I would sustain the Examiner’s finding of anticipation.
5