Ex parte Swan

Board of Patent Appeals and Interferences

Apr 26, 1999

08517946 (B.P.A.I. Apr. 26, 1999)

Application for patent filed August 22, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROSS M. SWAN
____________
Appeal No. 98-2186
Application No. 08/517,9461
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and PATE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-2186
Application No. 08/517,946
2
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15, which are all of the claims
pending in this application.
Appellant’s invention relates to an apparatus and method
for conditioning air within the enclosed space of a building.
Independent claims 1 and 9 are representative of the subject
matter on appeal and a copy of those claims may be found in
the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Watkins 3,173,353 Mar. 16,
1965
Sassmann 4,292,927 Oct. 6,
1981
Lestage 5,092,520 Mar. 3,
1992
An additional prior art reference of record in the
present application relied upon by this panel of the Board in
a new ground of rejection entered pursuant to 37 CFR §
1.196(b) is:
Appeal No. 98-2186
Application No. 08/517,946
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Bobjer et al. (Bobjer) 4,515,070 May 7,
1985

Claims 1 through 5 and 8 through 13 stand rejected under
35 U.S.C. § 103 as being unpatentable over Lestage in view of
Watkins.
Claims 6, 7, 14 and 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Lestage in view of Watkins as
applied above, and further in view of Sassmann.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the final rejection (Paper
No. 7, mailed December 4, 1996) and the examiner's answer
(Paper No. 11, mailed December 2, 1997) for the examiner's
reasoning in support of the rejections, and to appellant’s
brief (Paper No. 10, filed November 6, 1997) and reply brief
(Paper No. 12, filed February 5, 1998) for appellant’s
arguments thereagainst.
Appeal No. 98-2186
Application No. 08/517,946
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review we have reached the determinations
which follow.
Looking to the examiner's prior art rejection of appealed
claims 1 through 5 and 8 through 13 under 35 U.S.C. § 103 as
being unpatentable over Lestage in view of Watkins, we note
that as has been set forth on pages 2-3 appellant’s
specification, the Lestage patent discloses an air extraction
apparatus for dehumidifying air in a basement or other
enclosed area of a building. The Lestage apparatus is very
similar to that defined in independent claim 1 on appeal, with
the exception that the fan (8) of Lestage is seen to be at the
outlet end of conduit (6) instead of being located "adjacent
the bottom floor" as required in appellant’s claims on appeal.
In accordance with appellant’s drawings and the disclosure at
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Application No. 08/517,946
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page 5, lines 5-19, of the specification, we understand the
language "adjacent the bottom floor" in claim 1, and similar
language in method claim 9, to require that the fan (42, 46)
be located at the inlet end (50) of a discharge conduit (e.g.,
44) and closely adjacent the floor of the bottom level of a
building, usually the basement floor as seen at (14) in
appellant’s Figure 1.
Recognizing the above-noted deficiency in Lestage, the
examiner turns to the heat retrieving device of Watkins,
noting that this device has the fan or pump (28) thereof
located adjacent the floor (12). The examiner concludes that
it would have been obvious to one of ordinary skill in the art
to move the fan (8) of Lestage so that it is located adjacent
the floor (1) therein, in view of Watkins, for the purpose of
making it easier to remove the fan for cleaning or repair
purposes.
In our opinion, the examiner’s rejection is merely an
improper hindsight attempt to reconfigure and reconstruct the
device of Lestage based on appellant’s own teachings and not
Appeal No. 98-2186
Application No. 08/517,946
6
on any fair teachings or suggestions found in Lestage and
Watkins. Like appellant, we note that both Lestage and Watkins
teach or suggest that the fan or pump member of the respective
systems therein be located at the discharge end of the
associated conduit (6 of Lestage and 16 of Watkins) instead of
being "connected to said air inlet end of said conduit means"
as required in claim 1 on appeal and "adjacent the [or a]
bottom floor" so as to remove air at the floor level and
discharge the air through the associated conduit to the
exterior of the building, as set forth in both claims 1 and 9
on appeal. As a further point, we observe with regard to this
rejection that the examiner has made no attempt at all to
address the limitations of claims 5, 8 and 13 on appeal. For
these reasons, we will not sustain the examiner’s rejection of
claims 1 through 5 and 8 through 13 on appeal under 35 U.S.C.
§ 103.
With regard to the examiner's rejection of claims 6, 7,
14 and 15 under 35 U.S.C. § 103 based on Lestage, Watkins and
Sassmann, we share appellant’s view as expressed on pages 9
and 10 of the brief, and again conclude that the examiner’s
Appeal No. 98-2186
Application No. 08/517,946
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proposed combination of these patents is completely
unsupported by the teachings of the references themselves and
is based on
Appeal No. 98-2186
Application No. 08/517,946
8
impermissible hindsight derived solely from appellant’s own
disclosure. For that reason, the examiner’s rejection of
these claims under 35 U.S.C. § 103 will likewise not be
sustained.
As is apparent from the foregoing, the decision of the
examiner rejecting claims 1 through 15 of the present
application is reversed.
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new ground of rejection against
appellant’s claims 1 through 3 and 9 through 12 on appeal.
Claims 1 through 3 and 9 through 12 are rejected under
35 U.S.C. § 103 as being unpatentable over Bobjer. In our
opinion, it would have been obvious to one of ordinary skill
in the art at the time of appellant’s invention to have
utilized the ventilation device of Bobjer on a bottom or
basement floor of a building to condition the air within an
enclosed space during the painting of said space (as generally
disclosed in Bobjer), or at any other time that an owner may
Appeal No. 98-2186
Application No. 08/517,946
9
desire. In this context, we note that the device of Bobjer
includes a conduit means (14) and a fan means (9) mounted on
or adjacent the floor (3) of an enclosed space within the
building and connected to an air inlet end of the conduit
means (14) for removing air from the floor level and
discharging the air through the conduit means and a wall
opening (5) to the exterior of the building. With particular
regard to the requirement of claim 12 on appeal, we are of the
view that operating the fan of Bobjer in an enclosed space on
the bottom or basement floor of a building would inherently
"regulate humidity in the enclosed space" by drawing the
relatively heavy humid air near the floor out through the
conduit means (14) and allowing less humid air from adjacent
the ceiling (2) to replace it.
With respect to appellant’s evidence of commercial
success, we note that the items supplied by appellant appear
to present
merely laudatory comments about the invention, or the general
concept of the invention, with little factual information
being provided. While such praise of the invention may well
Appeal No. 98-2186
Application No. 08/517,946
10
lead appellant to the conclusion that the Dehumid "Mother’s
Helper" or other Dehumid units are destined to enjoy
commercial success, these expectations by appellant do not
provide any substantial evidence which can be said to outweigh
the evidence of obviousness relied upon by this panel of the
Board in our new ground of rejection above. While we may
accept appellant’s personal view, and that expressed in the
letters, that the invention is meritorious, we cannot conclude
that such
Appeal No. 98-2186
Application No. 08/517,946
11
recognition alone forms any basis to overcome the strong
evidence of obviousness that we have relied upon above in the
form of the Bobjer patent.
One major area of weakness in appellant’s evidence is the
lack of any indication that the various units referred to in
the letters are in fact like the apparatus set forth in the
claims before us on appeal. Where it is asserted that
commercial success of the invention supports a conclusion of
nonobviousness, the appellant is required to demonstrate a
nexus between the merits of the claimed invention and the
evidence of commercial success. See Cable Electric Products,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1027, 226 USPQ 881, 888
(Fed. Cir. 1985). No such nexus has been established by the
"evidence" presented by appellant in the present case.
Moreover, we also observe that no evidence is offered as to
other factors of significance in establishing commercial
success, such as total market demand, market share, growth of
market share or the extent to which appellant's air
conditioning assembly has displaced other assemblies in the
market. Nor is there evidence to show that sales of
Appeal No. 98-2186
Application No. 08/517,946
12
appellant’s units were due to the claimed features of the
invention and not to other factors like preferential pricing
relative to competing products and substantial advertising.
In view of the foregoing, we are satisfied that when all
the evidence is considered, the totality of the evidence
submitted by appellant cannot be accorded substantial weight,
so that, on balance, the evidence of nonobviousness fails to
outweigh the evidence of obviousness relied upon by this panel
of the Board in our new ground of rejection.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that "[a] new ground of rejection shall
not be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
Appeal No. 98-2186
Application No. 08/517,946
13
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts
relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in
which event the application will be remanded to
the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136 (a).
REVERSED; 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
Appeal No. 98-2186
Application No. 08/517,946
14
)
)
)
WILLIAM F. PATE )
Administrative Patent Judge )
CEF/sld
Appeal No. 98-2186
Application No. 08/517,946
15
Hodgson, Russ, Andrews, Woods
& Goodyear
Intellectual Property Practice Group
180 One M & T Plaza
Buffalo, NY 14203-2391
Shereece
Appeal No. 98-2186
Application No. 08/517,946
APJ FRANKFORT
APJ
APJ
REVERSED
Prepared: March 20, 2000