Ex Parte Vilhunen

Patent Trial and Appeal Board

Feb 14, 2013

11346234 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUHANI VILHUNEN
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Appeal 2010-010715
Application 11/346,234
Technology Center 3700
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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2
STATEMENT OF THE CASE
Juhani Vilhunen (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-19. Although both the Examiner and
Appellant classify claim 19 as pending and rejected (App. Br. 1; Ans. 2;
Fin. Rej. 1), neither the Examiner nor Appellant identifies any pending
rejection of claim 19. Thus, this appeal involves only claims 1-18.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A flat surface dryer (1), comprising a sealed targeting box (2)
with its replacement and exhaust air ports (12, 31; 20), and an
air fan (3), the flat surface dryer (1) being an air circulating flat
surface dryer, including means (19, 21, 28, 30) for regulating
the amounts of replacement air and exhaust air with respect to
the total amount of air circulated by the air fan (3), and means
for sealing the targeting box against a flat surface to be dried.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hatakenaka
Gardner
Paterson
US 4,561,800
US 4,571,849
US 6,845,570 B2
Dec. 31, 1985
Feb. 25, 1986
Jan. 25, 2005

1 We leave it to the Examiner to clarify the status of claim 19 upon return of
jurisdiction to the Examiner.
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Rejections
Appellant requests our review of the following rejections by the
Examiner:
I. claims 10-13 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention;
II. claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable over
Gardner and Paterson; and
III. claims 14-18 under 35 U.S.C. § 103(a) as being unpatentable over
Hatakenaka and Paterson.
OPINION
Rejection I – indefiniteness
The Examiner correctly determined that the limitation “means for
regulating rotational speed of the air fan” in claim 10 is a means-plus-
function limitation as provided by 35 U.S.C. § 112, sixth paragraph. Ans. 4.
The sixth paragraph of 35 U.S.C. § 112 states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
As our reviewing court stated in In re Dossel, 115 F.3d 942, 946 (Fed.
Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
1994)),
[a]lthough paragraph six statutorily provides that one may use
means-plus-function language in a claim, one is still subject to
the requirement that a claim "particularly point out and
distinctly claim" the invention. Therefore, if one employs
means-plus-function language in a claim, one must set forth in
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the specification an adequate disclosure showing what is meant
by that language. If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by the second
paragraph of section 112.
In order to satisfy the requirement to “particularly point out and
distinctly claim,” the Specification must disclose “[s]ufficient structure [to]
‘permit one of ordinary skill in the art to know and understand what
structure corresponds to the means limitation’ so that he may ‘perceive the
bounds of the invention.’” In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir.
2011) (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340-41
(Fed. Cir. 2008).
Appellant points to the distributing box 4 and the throttle 21 as the
structure disclosed in the Specification for performing the function of
regulating rotational speed of the air fan. Reply Br. 4-5. However, while
Appellant’s Specification discloses that the distributing box 4 has therein
“all necessary electric/regulating devices, e.g.[,] for regulating a heating
element/elements 5” (Spec., p. 4, ll. 29-31), the Specification does not
specifically describe the distributing box as including regulating devices for
regulating fan speed. Appellant’s Specification also describes monitoring
and adjusting circulation air temperature by varying the heating element
setups (Spec, p. 5, ll. 28-32), but, once again, makes no mention of varying
or regulating fan speed. Likewise, Appellant’s Specification describes
adjusting the exhaust port or exhaust passage opening 20 “by means of a
mechanical/electrically operated throttle 21” to regulate the rate of air
discharged through the exhaust port, and hence the corresponding rate of
supply of replacement air through the opening 12 (Spec., p. 7, ll. 10-18), but
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fails to describe any connection between the throttle position and the fan
speed.
In short, Appellant does not point to, and we do not find, any
description in Appellant’s Specification of structure for regulating rotational
speed of the air fan. Thus, Appellant fails to set forth an adequate disclosure
showing what is meant by “means for regulating rotational speed of the air
fan” in claim 10, thereby in effect failing to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112. See Ans. 5-6. We sustain the rejection of claim 10 and of its dependent
claims 11-13 under 35 U.S.C. § 112, second paragraph.
Rejection II - obviousness based on Gardner and Paterson
The Examiner found that Gardner discloses the invention of claim 1,
with the exception of the claimed means for sealing. Ans. 8. The Examiner
found that Paterson discloses a sealing means in another dryer and
determined it would have been obvious to provide Gardner’s dryer “with a
seal for the purpose of optimizing energy usage in a drying environment,
thereby minimizing cost and increasing efficiency.” Id.
Gardner’s fan blows a downdraft of air through an aperture 16 and
across the underside of the tray 12 toward the annular gap 13. Col. 3, ll. 25-
28. The downdraft will blow any ground-lying liquid toward the annular
gap, where it will be drawn up into the machine and deposited into the
chamber defined by parts 12, 17, and 18. Col. 3, ll. 36-41.
Gardner’s machine creates “no appreciable horizontal ‘blowout’ of air
about the machine’s periphery,” because the fan draws its intake air from the
annular gap 13. Col. 5, ll. 4-7. Thus, the liquid over which the machine
moves will not be blown onto the machine operator or nearby persons. Col.
5, ll. 8-10. Moreover, according to Gardner, “it is not necessary to use any
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form of flexible skirt to try to contain the cushion of air on which the
machine hovers. Such skirts are notoriously expensive and easily damaged
when used on more conventional forms of hovering craft.” Col. 5, ll. 10-14
(emphasis added).
Consequently, Gardner suggests that adding a skirt or similar structure
to seal the machine to the surface to be dried would make the machine more
costly and subject to damage without affording any appreciable benefit or
efficiency. The Examiner proffers no evidence or technical reasoning to
support the assertion that adding a seal to Gardner’s machine would
optimize energy usage or otherwise reduce cost. Thus, the Examiner’s
articulated reason for modifying Gardner to add a seal lacks rational
underpinnings. See App. Br. 7-8 (arguing modifying Gardner to include the
resilient seal of Paterson would not have been obvious in view of Gardner’s
teachings at column 5, lines 10-14).
While apparently not relying on such finding to support the rejection,
the Examiner asserts that “Gardner teaches a means for sealing because the
air flow of that teaching forms a sealing means such that air forms a seal
similar to an air curtain found when entering a large store and blower fans
keep the air conditioning inside the large store.” Ans. 10. However, the air
flow alluded to by the Examiner clearly is not the structure (“sealing 7”)
disclosed in Appellant’s Specification for sealing the targeting box against
the surface to be dried (Spec., p. 4, ll. 32-34; fig. 1), and the Examiner does
not articulate any analysis showing that the air flow of Gardner’s machine
performs the claimed function in substantially the same way to achieve
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substantially the same result as the corresponding structure described in the
Specification (i.e., the “sealing 7”) so as to be an equivalent thereof.2
For the above reasons, we do not sustain the Examiner’s rejection of
claim 1 and its dependent claims 2-13 as unpatentable over Gardner and
Paterson.
Rejection III – obviousness based on Hatakenaka and Paterson
The Examiner’s rejection of claims 14-18 is grounded in part on the
Examiner’s incorrect finding that Hatakenaka discloses the step of
“regulating the ratio of exhaust air and the amount of air circulated by a fan”
of claim 14 at column 3, lines 4-44. Ans. 9. This incorrect finding is
predicated on an improper claim construction and erroneous findings
regarding the disclosure of Hatakenaka.
The Examiner improperly construed claim 14 as reciting “‘regulating
the ratio’ . . . as an alternative embodiment” to using means for adjusting the
size of the supply and/or exhaust port. See Ans. 12. The method of claim 14
explicitly requires regulating the ratio of exhaust air and the amount of air
circulated by a fan. Claim 14 further specifies that the regulating be
performed by one or both of guiding the flow to the exhaust port and using
means for adjusting the size of the supply and/or exhaust port.
Moreover, the Examiner erred in finding that Hatakenaka’s movable
frames 21 and movable branches 7b “adjust a ratio of air exhausted to the
road surface” (Ans. 13). Displacement of Hatakenaka’s movable frames 21

2 An equivalent structure under 35 U.S.C. § 112, sixth paragraph “performs
the claimed function in substantially the same way to achieve substantially
the same result as the corresponding structure described in the
specification.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1316 (Fed. Cir. 2005) (quoting Odetics, Inc. v. Storage Tech.
Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999)).
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and movable branches 7b merely adjusts the width of road surface over
which the blowing pores 8 are disposed. See col. 3, l. 4 – col. 4, l. 17;
compare fig. 2 with fig. 3. Such displacement does not alter either the size
or number of blowing pores through which the hot air is blown, does not
adjust the size of a supply port, and does not adjust the amount of air that
passes through the blowing pores. See App. Br. 13. Moreover, the air
blown through blowing pores 8 is recycled to the apparatus, not exhausted
from the heating apparatus (see col. 2, l. 63 - col. 3, l. 1; col. 3, ll. 62-65),
and thus substantially represents the amount of air circulated by the fan. See
App. Br. 12-13.
We do not sustain the rejection of claims 14-18 as unpatentable over
Hatakenaka and Paterson, because it is predicated on an improper claim
construction and erroneous findings regarding the disclosure of Hatakenaka.
DECISION
The Examiner’s decision rejecting claims 1-18 is affirmed as to claims
10-13 and reversed as to claims 1-9 and 14-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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