Ex Parte ThomassonDownload PDFPatent Trial and Appeal BoardDec 30, 201612072209 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 12/072,209 02/25/2008 Samuel L. Thomasson 7187-A-16 4107 77553 7590 12/30/2016 MARVIN A. GLAZER 2141 E. HIGHLAND AVE SUITE 155 PHOENIX, AZ 85016 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 12/30/2016 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 SAMUEL L. THOMASSON ____________ Appeal 2015-002099 Application 12/072,209 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and BRENT M. DOUGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Samuel L. Thomasson (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 2 and 4–7 under 35 U.S.C. § 103(a) as unpatentable over Elia (US 5,317,670; iss. May 31, 1994) and Fanney (US 5,293,447; iss. Mar. 8, 1994). Claims 1 and 3 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-002099 Application 12/072,209 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “a water heater powered by electricity from a photovoltaic solar panel.” Spec. 1:3–4, Figs. 1. Claim 6, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 6. A system for heating water comprising in combination: a) a first water tank having a water inlet for coupling to a source of water and having a water outlet; b) a first heater element associated with the first water tank for selectively heating water therein; c) a solar panel for generating electricity when exposed to the sun; d) a first sensor associated with the first water tank for sensing a temperature of water within the first water tank; e) a control circuit coupled to the solar panel, to the first sensor, and to the heater element, for selectively applying electricity generated by the solar panel to the heater element within the first water tank; f) a second water tank having a water inlet coupled to the water outlet of the first water tank, and having a water outlet for supplying hot water to a user; g) a second heater element associated with the second water tank for selectively heating water in the second water tank; Appeal 2015-002099 Application 12/072,209 3 h) a second sensor associated with the second water tank for detecting whether water within the second water tank is at, or below, a first desired maximum temperature; i) said control circuit being configured to allow water within the first water tank to be heated to a temperature higher than the first desired maximum temperature. ANALYSIS Independent claim 6 recites, in relevant part, a control circuit “configured to allow water within the first water tank to be heated to a temperature higher than the first desired maximum temperature [of the second water tank].” Br. 18–19, Claims App. The Examiner finds that Elia discloses the system of claim 6 except “a solar panel wherein the control circuit is coupled to the solar panel to the first heater element.” Final Act. 2. The Examiner relies on Fanney to show it is well known in the art that “a solar panel or collector is provided to absorb the solar radiation to generate electricity wherein the generated electricity is suppl [ied] to power a heating element in a water tank to heat water therein.” Id. at 2–3. The Examiner further finds that Fanney “teaches that the heating element is powered in proportion to available sunlight, i.e., the heating element is powered if sufficiently adequate sunlight is available.” Id. at 3. The Examiner concludes that, in view of Fanney, it would have been obvious to “adapt Elia with the first tank that is powered by a solar energy and set the water temperature in the first tank at a temperature that is higher than the first maximum temperature or any other desired (second) temperatures of the second water as a matter of routine experimentation[]” because “it is known Appeal 2015-002099 Application 12/072,209 4 to require less heat to [] already heated water.” Final Act. 3. The Examiner further concludes that a skilled artisan would be motivated to “utilize the solar power in the first tank to a higher temperature (to also compensate for heat loss) than the second tank so less energy is spent to power and heat the second water tank as the first heated water is supplied to the second tank,” and, consequently, “save energy to power the second heating element for heating the water in the first or second water temperatures.” Id.; see also id. at 4; Ans. 4–5.1 The Examiner also notes that “the manner of operating, i.e., the setting of different temperatures, does not differentiate the device from the prior art. MPEP 2114. II.” Id.; see also id. at 4; Ans. 4. Appellant does not contest “the Examiner’s assertion that one skilled in the art would have been motivated to replace Elia’s first reserve tank (14) with Fanney’s solar panel (1) and storage tank (18).” Br. 10–11. However, Appellant contends that “it would [not] have been ‘obvious’ to one skilled in the art,” in view of Elia and Fanney, “to configure the modified Elia system to allow water within the first (i.e., solar-powered, or reserve) water tank to be heated to a temperature higher than the maximum temperature desired within the second (i.e., demand) water tank, as recited in claim 6.” Id. at 11. In particular, Appellant contends that “Fanney states that ‘heater 18 may be employed as a preheater to supply water which has been partially heated to a downstream electric or fossil-fueled water heater’. . . Thus, Fanney teaches that storage tank 18 only partially heats the water in tank 18 toward the actual desired temperature.” Id. at 13 (citing Fanney, 4:42–44). Appellant concludes that “Fanney in no way suggests a configuration in which the 1 We refer to the Examiner’s Answer mailed October 31, 2014. Appeal 2015-002099 Application 12/072,209 5 water in the first, reserve tank is permitted to exceed the desired maximum water temperature in the demand tank.” Br. 13. At the outset, given the Examiner’s finding that the heating element of Fanney “is powered if sufficiently adequate sunlight is available” (Final Act. 3 (emphasis added)), we fail to see how modifying Elia with the solar panel 1 and storage tank 18 of Fanney would necessarily make the heating system of Elia “more efficient” by lessening “concerns over the peak and non-peak hours,” as asserted by the Examiner. See Final Act. 3, 4; see also Ans. 4; Fanney, 4:38–41 (emphasis added) (“The heater 18 may also comprise a further heating element 28 to be connected to a residential utility power supply or the like for heating water when the intensity of incident solar radiation is inadequate to do so.”). Appellant correctly points out that “Fanney does not address sensing or tracking the temperature of the water in Fanney’s storage tank 18. In fact, the only temperature sensor described by Fanney is temperature sensor 62 (see Fig. 5) for sensing ambient air temperature.” Br. 9; see also Fanny, 6:32–40. Moreover, the Examiner acknowledges Appellant’s assertion that “Fanney teaches [] partially heated water.” Ans. 5 (emphasis added); see also Br. 13. Column 7, lines 28–32, of Fanney merely discloses that the subject matter described in Fanney is to “be interpreted as illustrative only and not be taken in a limiting sense.” See Ans. 5. In this case, the Examiner fails to provide sufficient evidence or technical reasoning that modifying Elia with the solar panel 1 and tank 18 of Fanney results in water within the first water tank being heated to a temperature higher than the first desired maximum temperature of the second water tank or that such a process is merely “a matter of routine experimentation.” See Final Act. 3, 4; see also Ans. 4–5; Br. 9, 13–14. Appeal 2015-002099 Application 12/072,209 6 Lastly, we note that claim 6 recites “said control circuit being configured to allow water within the first water tank to be heated to a temperature higher than the first desired maximum temperature [of the second water tank].” Br. 19, Claims App. (emphasis added). In other words, claim 6 recites a configured control circuit meaning the function which follows implies something about the structure of the claimed apparatus, namely, that it requires at least a control circuit configured to perform the allowing function. The language “configured to . . .” cannot simply be dismissed as intended use; rather, such language must be construed in light of the underlying disclosure in the specification. See Final Act. 3, 4; see also Ans. 4; In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014). Appellant’s Specification describes that “[c]ontrol circuit 15 [] provides feedback to microprocessor 16, e.g. power level to heater element 14, voltage and current data on solar panel 11.” Spec. 3:27–28, Fig. 1. The Specification further describes: [C]ontrol circuit 15 could include a switch, closed at least during daylight, to couple panel 11 directly to heater 14. The cold water entering inlet 27 mixes with the water stored in tank 19 [first tank], cooling the stored water. Similarly, the warmed water entering tank 31 [second tank] from pipe 32 mixes with the water in tank 31 [second tank], transferring heat to the water in tank 31 [second tank]. Thus, even though the water in tank 19 [first tank] may be at 160°F, the water is isolated from a user and is cooled by mixing in tank 31 [second tank]. Spec. 4:19–25, Fig. 1; see also Br. 5. In this case, the Examiner fails to provide sufficient evidence or technical reasoning that control circuit 13 of the modified Elia heating system is “configured to” allow water within the first water tank to be heated Appeal 2015-002099 Application 12/072,209 7 to a temperature higher than the first desired maximum temperature of the second water tank. See Final Act. 2–3, 4; see also Ans. 4. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of independent claim 6 and its dependent claims 2, 4, 5, and 7 as unpatentable over Elia and Fanney. DECISION We REVERSE the decision of the Examiner to reject claims 2 and 4– 7 as unpatentable over Elia and Fanney. REVERSED Copy with citationCopy as parenthetical citation