Ex Parte Toy

Patent Trial and Appeal Board

May 9, 2018

14556575 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/556,575 12/01/2014
1009 7590 05/11/2018
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
FIRST NAMED INVENTOR
Mark A. Toy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1527-507 Cont. 6406
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
05/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. TOY
Appeal2017-007391
Application 14/556,575
Technology Center 3700
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
21-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal2017-007391
Application 14/556,575
CLAIMED SUBJECT MATTER
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A fan system installed in a location having a floor and a
ceiling, the fan system comprising:
a rotatable hub;
a plurality of fan blades secured to the hub;
a motor in communication with the hub, wherein the motor
is operable to drive the hub at a selectable rate of rotation;
a motor controller in communication with the motor,
wherein the motor controller is configured to select the rate of
rotation at which the motor drives the hub;
an upper temperature sensor positioned near the ceiling,
wherein the upper temperature sensor is configured to sense the
temperature of air near the ceiling, wherein the upper
temperature sensor is in communication with the motor
controller; and
a lower temperature sensor positioned near the floor,
wherein the lower temperature sensor is configured to sense the
temperature of air near the floor, wherein the lower temperature
sensor is in communication with the motor controller;
wherein the motor controller is configured to
automatically adjust the rate of rotation at which the motor drives
the hub from a first non-zero rate of rotation to a second non-zero
rate of rotation based at least in part on differences between
temperatures communicated from the upper temperature sensor
and temperatures communicated from the lower temperature
sensor.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takegawa
Mehta
Colter
us 5,477,698
us 5,627,527
US 6,375,563 Bl
2
Dec. 26, 1995
May 6, 1997
Apr. 23, 2002
Appeal2017-007391
Application 14/556,575
Nanno
Aker, Jr.
Horiuchi
US 2003/0121905 Al July 3, 2003
US 2005/0252983 Al Nov. 17, 2005
US 2009/0014545 Al Jan. 15, 2009
REJECTIONS
I. Claims 21-23 and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Takegawa and Mehta. 1
II. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Takegawa, Mehta, and Colter.
III. Claims 26-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Takegawa, Mehta, Colter, and Nanno.
IV. Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Takegawa, Mehta, and Horiuchi.
V. Claim 36 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Takegawa, Mehta, and Acker, Jr.
DISCUSSION
New Ground of Rejection for Claims 33-35
Claim 33 depends from claim 32. Appeal Br. 21 (Claims App.).
Claim 32 requires the step of "adjusting the rate of rotation at which the
motor drives the hub from a first non-zero rate of rotation to a second non-
zero rate of rotation based at least in part on differences between the upper
and the lower temperatures." Id. Claim 33 further limits this step by
1 Although the statement of this rejection includes claims 34 and 35, claims
34 and 35 depend from claim 33 which is not included in this rejection.
Final Act. 2. Further, claims 34 and 35 are addressed with claim 33 in
Rejection IV. Id. at 16-18. Thus, we understand the inclusion of claims 34
and 35 in the statement of this rejection to be a typographical error.
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Application 14/556,575
requiring "wherein the adjusting step comprises adjusting the rate [of] 2
rotation to a first speed in the first mode and a second speed in the second
mode, wherein the first speed is slower than the second speed." Id.
An ordinary and customary meaning of the claim term "speed" is "the
rate of motion or progress. Dictionary. com.
http://www.dictionary.com/browse/speed?s=t (last visited May 4, 2018).
Applying this definition to claim 33, one skilled in the art would understand
the claim term "speed" to mean "rate of rotation." Thus, one skilled in that
art would consider the claimed first and second speeds to be the previously
recited first and second non-zero rates of rotation (claim 32). However, one
skilled in that art would also understand the use of the article "a" (as in "a
first speed" and "a second speed" set forth in claim 3 3) to signal the
introduction of a new element or feature. Thus, it is unclear if the first and
second speeds recited in claim 33 are the same as the first and second non-
zero rates of rotation recited in claim 32. As claim 33 is subject to two
different interpretations, the meaning of claim 3 3 is unclear
Accordingly, claim 33 is indefinite. Likewise, claims 34 and 35,
which depend from claim 33, are also indefinite.
2 Claim 33 refers back to the adjusting step (i.e. the step of "adjusting the
rate of rotation"). See Appeal Br. 21 (Claims App.). Accordingly, we
understand the use of the word "or" rather than "of' as recited in the
adjusting step of claim 32 to be a typographical error.
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Appeal2017-007391
Application 14/556,575
Rejection I: Obviousness of Claims 21-23 and 30-32
Based on Takegawa and Mehta
Claims 21-23, 30 and 31
Appellant argues claims 21-23, 30, and 31 together. Appeal Br. 12.
We select claim 21 as the representative claim, and claims 22, 23, 30, and 31
stand or fall with claim 21. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Takegawa discloses all of the limitations of
claim 21 except for a motor that "is operable to drive the hub at a selectable
non-zero rate of rotation and wherein the motor controller is configured to
select the rate of rotation at which the motor drives the hub." Non-Final
Act. 5. The Examiner finds that Mehta discloses "an apparatus and method
for thermostatically controlling the operation of a multiple speed fan"
wherein the motor "is operable to drive a hub ... at a non-zero selectable
rate of rotation ... and wherein a motor controller ... is configured to select
the rate of rotation at which the motor drives the hub." Id. at 5 (citing Mehta
3: 19-28, Table 3). Based on these findings, the Examiner determines that it
would have been obvious "to modify the fan system of Takegawa with a
motor that is operable to drive the hub at a selectable rate of rotation and
wherein the motor controller is configured to automatically select the rate of
rotation at which the motor drives the hub." Id. The Examiner indicates that
the reason for the proposed modification is to control "the operation of a fan
by inputting a desired temperature range in order to maintain user comfort in
a convenient manner." Id.
Appellant contends that the Examiner's reasoning is conclusory and
unfounded. See Appeal Br. 10-12. In support of this contention, Appellant
argues that the Examiner's reasoning is flawed "because it would not lead a
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Application 14/556,575
skilled artisan to combine the references and arrive at the claimed
invention." Id. at 11. Appellant further notes that "an invention 'is not
proved obvious merely by demonstrating that each element was,
independently, known in the prior art .... "' and argues that the Examiner
"ignores the fact that Takegawa is a complete teaching and has no need for
the motor controller configured to select the rate of rotation at which the
motor drives the hub in Mehta." Id. (citing KSR Int 'l. Co. V. Teleflex Inc.,
550 U.S. 398, 418 (2007).
KSR expanded the sources of information for a properly flexible
obviousness inquiry to include market forces; design incentives; the
"interrelated teachings of multiple patents"; "any need or problem known in
the field of endeavor at the time of invention and addressed by the patent";
and the background knowledge, creativity, and common sense of the person
of ordinary skill. Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (citing KSR 550 U.S. at 418-21). Consequently,
obviousness inquiries "may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion." Id. In
this instance, the Examiner's reasoning relies on common sense supported
by Mehta's disclosure. Appellant does not challenge the Examiner's
findings or explain why the Examiner's articulated reasoning is flawed.
Moreover, we are not aware of any requirement that the Examiner's
reasoning lead a skilled artisan to the proposed combination. Likewise, we
are not aware of any requirement that a prior art reference need the proposed
modification. Rather, the test for obviousness is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
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Application 14/556,575
of the combined teachings of the references. See In re Keller, 642 F.2d 413,
425 (CCP A 1981 ). Thus, Appellant does not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
21, and claims 22, 23, 30, and 31, which depend therefrom.
Claim 32
The Examiner's rejection of claim 32 is similar to the rejection of
claim 1 discussed supra, and relies upon essentially the same articulated
reasoning. See Non-Final Act. 8-11. Appellant contends that claim 32 is
unpatentable "[f]or the same reasons discussed above with respect to claim
21." Appeal Br. 12. Particularly, Appellant argues that "the Examiner's
statement for the combination cannot qualify as an articulated reason
because at best, the statement simply makes unfounded, conclusory
statement about the potential benefits of the proposed combination." Id.
(emphasis omitted).
For the reasons discussed supra, Appellant's arguments do not apprise
us of error. Accordingly, we sustain the Examiner's decision rejecting claim
32.
Rejections II: Obviousness of Claims 24 and 25
Based on Takegawa, Mehta, and Colter
Claims 24 and 25 depend from claim 21. Appeal Br. 19 (Claims
App.). Appellant does not present separate patentability arguments for these
claims. Rather, Appellant contends that "[ f]or at least the reasons stated
above in Section I, claim 21 is not rendered obvious by Takegawa and
Mehta, and Colter does not rectify the flaws in the rejection of claim [2] 1.
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Accordingly, each of claims 24 and 25 are also not obvious over the cited
references." Appeal Br. 17 (citation omitted).
As discussed supra, Appellant's contentions with respect to claim 21
do not apprise us of error. Thus, Appellant's argument is unconvincing.
Accordingly, we sustain the Examiner's decision rejecting claims 24 and 25.
Rejection III: Obviousness of Claims 26-29
Based on Takegawa, Mehta, Colter, and Nanna
Claims 26-29 depend from claim 21. Again, Appellant does not
provide separate patentability arguments for these claims. Rather, Appellant
argues that N anno "does not rectify the shortcomings noted above in Section
I with respect to claim 21. Therefore, claims 26-29 are also not rendered
obvious by the cited references." Appeal Br. 17.
For the reasons discussed supra, Appellant's argument is
unconvincing. We sustain the Examiner's decision rejecting claims 26-29.
Rejection IV: Obviousness of Claims 33-35
Based on Takegawa, Mehta, and Horiuchi
Having determined that claims 33-35 are indefinite, we cannot sustain
the rejections of these claims under 35 U.S.C. § 103(a) because to do so
would require speculation as to the scope of the claims. See In re Steele, 305
F.2d 859, 862-63 (CCPA 1962) (Holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a)).
For this reason, we do not sustain the Examiner's decision rejecting
claims 3 3-3 5.
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Application 14/556,575
Rejection V: Obviousness of Claim 36
Based on Takegawa, Mehta, and Acker
The Examiner finds that Takegawa and Mehta fail to disclose or
suggest a humidity sensor as claimed. See Non-Final Act. 19. The
Examiner finds that Acker "teaches a ventilation system with [a] humidity
responsive ventilation controller" which monitors a rooms humidity level
and receives a relative humidity reading from a humidity sensor. Id. The
Examiner further finds that in Acker the hub is driven at least in part based
on the humidity reading. See id. (citing Acker i-f 12). Based on these
findings, the Examiner determines that it would have been obvious "to
modify the fan system of Takegawa in view of Mehta with [the] humidity
sensor configuration of Acker, Jr." Id. at 20. The Examiner reasons that
"[p ]roviding control based on humidity would provide comfort to the
occupants in the building." See id.
Noting that "Acker merely discloses an on/off controller based on
humidity (i.e. 'adjusting between a speed of zero and a standard speed'),
Appellant contends that "turning the fan on and off is not the same as
'adjusting the rate of rotation,' which necessarily implies the fan is operating
at a certain speed, rather than being 'off."' Appeal Br. 16. In support of this
contention, Appellant argues that"[ c ]laim 36 clearly requires that the
controller be capable of adjusting the rate of rotation based on at least two
conditions: a difference in temperature between the two temperature sensors,
and a humidity reading." Id. (emphasis omitted).
Appellant's argument is not responsive to the rejection as articulated
by the Examiner, which relies upon Mehta's teaching of adjusting the rate of
rotation between two non-zero rates of rotation. See Non-Final Act. 10-11.
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Application 14/556,575
Moreover, the rejection relies upon the combined teachings of Takegawa,
Mehta, and Acker for meeting the limitation at issue. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097, (Fed. Cir. 1986).
Appellant further contests the rationale underlying the Examiner's
reasoning for the proposed modification in a manner similar to that
discussed supra with respect to claims 21 and 32. See Appeal Br. 16.
However, Appellant does not explain why the Examiner's reasoning, which
is founded on common sense, is flawed. Thus, Appellant does not apprise us
of error.
26.
For these reasons, we sustain the Examiner's decision rejecting claim
DECISION
The Examiner's rejections of claims 21-32 and 36 are AFFIRMED.
The Examiner's rejection of claims 33-35 is REVERSED.
We enter a NEW GROUND OF REJECTION for claims 33-35 under
35 U.S.C. § 112(b).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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Application 14/556,575
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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