Ex Parte Stolze

Patent Trial and Appeal Board

Feb 25, 2014

12516659 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREAS STOLZE
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Appeal 2012-002590
Application 12/516,659
Technology Center 3700
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Before: JOHN C. KERINS, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 19-38 as unpatentable under 35 U.S.C. § 103(a) over
Tadano (US 2005/0199016 A1, pub. Sep. 15, 2005) and Honda (US
5,615,556, iss. Apr. 1, 1997) and also over Jording (WO 2006/029953 A1
pub. Mar. 23, 2006) and Honda. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention relates to household appliances. Spec. 1.
Claim 19, reproduced below, is illustrative of the subject matter on appeal.
19. A household appliance for drying a damp item, the
household appliance comprising:
a substantially closed drying air channel through which
an air current can be driven via a fan, the air channel having a
treatment chamber for retaining a damp item to be dried, a
cooling arrangement for cooling the air current and condensing
out moisture from the air current after it has flowed through the
treatment chamber, and a heating arrangement for heating up
the air current before it flows again through the treatment
chamber, the air current flowing sequentially through the
treatment chamber, thereafter through the cooling arrangement
for cooling the air current and condensing out moisture from
the air current after it has flowed through the treatment
chamber, and thereafter through the heating arrangement for
heating up the air current before it flows again through the
treatment chamber, the cooling arrangement having a heat
exchanger, and the heating arrangement having a heat
exchanger; and
a process gas device containing process gas that is
circulated in a regenerative gas circulation process, the heat
exchanger of the cooling arrangement extracting heat from the
air current and providing such heat to the process gas and the
heat exchanger of the heating arrangement providing heat
furnished by the process gas to the air current.
OPINION
Unpatentability over Tadano and Honda
Appellant argues claims 19-38 as a group. App. Br. 6-10. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Tadano discloses all of the limitations of
claim 19 except for using a regenerative gas circulation process in the heat
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pump. Ans. 4-5. The Examiner relies on Honda as disclosing a heat pump
that uses a regenerative gas circulation process in the heat pump. Ans. 5.
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 substitute Honda’s
heat pump for Tadano’s heat pump to achieve the claimed invention. Id.
According to the Examiner, the invention merely substitutes one known
element for another to yield predictable results, citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007). Ans. 10.
Appellant traverses the Examiner’s rejection by arguing that the
Examiner failed to provide an adequate rationale for combining the applied
art. App. Br. 7. In response, the Examiner states that Tadano shows a
conventional clothes dryer that uses a conventional heat pump, with the only
difference between Tadano and the claimed invention being the particular
type of heat pump used. Ans. 9. The Examiner states a person of ordinary
skill in the art would have found it obvious to combine Tadano with Honda’s
Vuilleumier heat pump as such merely would involve substituting one
known element for another to achieve predictable results. Ans. 11-12. We
think the Examiner has stated a sufficient reason to combine the prior art to
make out a prima case of obviousness. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)(requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant argues that it would not have been obvious to combine
Honda with Tadano because Honda is directed to an HVAC system for a
building, not an appliance. App. Br. 7. In response, the Examiner states that
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the operation of Honda’s heat pump would remain unchanged whether used
in a building or an appliance. Ans. 10.
Appellant’s Specification acknowledges that the Vuilleumier heat
pump was a known example of a regenerative gas circulation process at the
time of the invention. Spec. 2. Claim 27, which depends indirectly from
claim 19, claims a Vuilleumier process. Clms. App’x. Appellant offers
neither evidence nor technical reasoning to show that adapting the known
Vuilleumier heat pump process from a building HVAC product application
to a household appliance product application involved more than mere
ordinary skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“ A
person of ordinary skill is also a person of ordinary creativity, not an
automaton”).
Next, Appellant argues that the Examiner is guilty of engaging in an
improper hindsight analysis. App. Br. 8. Appellant does not support this
conclusory argument with any teaching in the Specification that is not
already found in the applied art. In response, the Examiner reiterates that the
invention requires nothing more than substituting one known heat pump for
another, in this case a conventional heat pump using a Vuilleumier process.
Ans. 10. We agree that the Examiner did not engage in improper hindsight.
Finally, Appellant argues that the Examiner’s combination renders
Tadano unsatisfactory for its intended purpose. App. Br. 8. Appellant
argues that Honda places heat exchangers both inside and outside of a
building. App. Br. 9. We are not persuaded by this argument. Tadano
discloses a dry cleaner with a heat pump. Tadano, Abstract. Upon
modification by Honda, Tadano would still exhibit a dry cleaner with a heat
pump, albeit one of the Vuilleumier variety. Appellant offers neither
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evidence nor technical reasoning to show that placement of Vuilleumier heat
exchangers on a household appliance would pose a challenge for a person of
ordinary skill in the art.
In view of the foregoing discussion, we believe the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claims
19-38 over Tadano and Honda.
Unpatentability over Jording and Honda
Appellant once again argues claims 19-38 as a group. App. Br. 10-11.
We select claim 19 as representative. In the second grounds of rejection, the
Examiner substitutes Jording for Tadano as the primary reference. Ans. 6-8.
Otherwise, the ultimate conclusion of obviousness rests on essentially
identical reasoning as the initial grounds of rejection. Id.
Appellant traverses the rejection by raising essentially the same
arguments that we considered with the respect to the first ground of
rejection. App. Br. 10-11. Otherwise, Appellant makes no patentable
distinction between the use of Jording, instead of Tadano, as the primary
reference.
We agree that substitution of Jording for Tadano, as the primary
reference, does not materially change the analysis or the result. For
essentially the same reasons discussed above with respect to the first ground
of rejection, we sustain the Examiner's unpatentability rejection of claims
19-38 over Jording and Honda.
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DECISION
The decision of the Examiner to reject claims 19-38 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)(1)(iv).
AFFIRMED

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