Ex Parte Vinson et al

Patent Trial and Appeal Board

Mar 27, 2013

10783162 (P.T.A.B. Mar. 27, 2013)

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.
10/783,162 02/20/2004 Wade D. Vinson 200400249-1 7167
7590 03/28/2013
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
DWIVEDI, VIKANSHA S
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
03/28/2013 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 WADE D. VINSON, JOHN P. FRANZ AND YOUSEF JARRAH
____________

Appeal 2010-007125
Application 10/783,162
Technology Center 3700
____________

Before ANNETTE R. REIMERS, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Wade D. Vinson, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-13, 16-21 and 24-34. Claims
14, 15, 22 and 23 are canceled. 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).
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CLAIMED SUBJECT MATTER
Claims 1, 11, 20, 25 and 34 are independent. Claim 1, reproduced
below, is illustrative of the claims on appeal:
1. A cooling fan for an electronic device, comprising:
a three-phase DC motor comprising a stator and a rotor
comprising a rare earth magnet; and
an impeller comprising a hub to house the three-phase
DC motor and a plurality of blades extending from the hub,
wherein the impeller has an impeller diameter and each blade
has a blade height that is at least 25 % of the impeller diameter.

REFERENCES RELIED ON BY THE EXAMINER
Dehmer US 1,755,633 Apr. 22, 1930
Harmsen US 5,184,938 Feb. 9, 1993
Leupold US 5,280,209 Jan. 18, 1994
Herbert US 5,445,215 Aug. 29, 1995
Neely US 5,588,804 Dec. 31, 1996
von der Heide US 5,652,470 Jul. 29, 1997
Horng US Des. 398,978 Sep. 29, 1998
Bradbury US 6,129,528 Oct. 10, 2000
Seki US 2004/0170501 A1 Sep. 2, 2004

THE REJECTIONS
The following claims are rejected under 35 U.S.C. § 103(a) as
unpatentable over von der Heide and one or more of the other references
listed above: claim 1 over von der Heide and Leupold; claims 2-4 over von
der Heide, Leupold and Dehmer; claims 5 and 6 over von der Heide,
Leupold and Bradbury; claims 7 and 8 over von der Heide, Leupold and
Harmsen; claim 10 over von der Heide, Leupold and Neely; claims 11, 13,
16, 17, 19-21 and 30-33 over von der Heide, Leupold, Dehmer, Bradbury
and Harmsen; claims 25, 26 and 29 over von der Heide, Leupold and
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Herbert; claim 27 over von der Heide, Leupold, Herbert, Dehmer, Bradbury
and Harmsen; claims 9, 12 and 24 over von der Heide, Leupold, Dehmer,
Bradbury, Harmsen and Seki; claim 28 over von der Heide, Leupold,
Herbert and Seki; claim 18 over von der Heide, Leupold, Dehmer, Bradbury,
Harmsen and Horng; and claim 34 over von der Heide, Leupold, Dehmer,
Bradbury, Harmsen, Herbert and Horng.

ANALYSIS
Claims 1 and 34
Claims 1 and 34 each call for a cooling fan for an electronic device
having a three-phase DC motor housed in the hub of an impeller, wherein
each blade of the impeller “has a blade height that is at least 25% of the
impeller diameter.”
Appellants’ Specification discloses that the impeller for an electronic
device must occupy only the limited space available while achieving
performance requirements. Spec., para. [0027]. A problem in meeting this
goal, according to the Specification, is that blade height is limited by the size
of the motor that is housed in the hub of the impeller. Id. at [0028]. The
Specification discloses that a three-phase DC motor is more efficient than a
conventional single phase DC motor and can be used to reduce the hub
diameter and increase the blade height for a given size of impeller diameter,
resulting in the displacement of more air than with the conventional motor.
Id. As disclosed in the Specification, in an illustrated embodiment, the blade
height is approximately 25% of the impeller diameter, as compared with
20% in a comparable fan using a conventional DC motor. Id.
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The Examiner’s position is that blades being at least 25% of the
impeller diameter “presents no novel or unexpected result over the blade and
impeller relationship.” Ans. 4 (emphasis omitted); see also id. at 15-16.
While acknowledging Appellants’ disclosure in the Specification concerning
the combination of a three-phase DC motor housed in the hub of the impeller
and a blade height of approximately 25% of the impeller diameter, discussed
above, the Examiner determines that “[s]uch a relationship between the
blade height and the impeller diameter in lieu of those used in the references
solves no stated problem and would be an obvious matter of design choice
within the skill of the art.” Id. at 5. The Examiner then concludes that
it would have been obvious to one of ordinary skill in the art to
modify [v]on der Heide[’s] system to lengthen blades 141 and
modify the overall impeller diameter to achieve a 25% ratio in
order to maximize the predictable airflow results. (See KSR
decision, Rationale A, Combining prior are elements according
to known methods to yield predictable results.)
Id.
Appellants argue that “the Examiner has provided no references,
whatsoever, that mention the existence of a ‘blade and impeller diameter
relationship,’ outside of the Appellants’ own application” and that “the
Examiner [has not] provided any references for electronic cooling fans that
indicate that blade height was a choice at all at the time of filing, much less
‘an obvious design choice,’ as alleged.” App. Br. 19. We agree. A claimed
modification to the prior art may be obvious if the claimed structure
performs the same function as in the prior art and it presents no novel or
unexpected result over the prior art. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and “would be an obvious matter of design choice
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within the skill of the art”). However, when the claimed structure performs
differently from the prior art, a finding of obvious design choice is
precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
design choice precluded when claimed structure and the function it performs
are different from the prior art). Here, Appellants maintain in their
Specification that the combination of a three-phase DC motor housed in the
hub of an impeller and a blade height of approximately 25% of the impeller
diameter, is structurally different from the prior art fans and performs a
different function, in that the combination may displace more air than the
prior art fans for a given amount of available impeller space in an electronic
device.
Accordingly, we do not sustain the rejections of claims 1 and 34.
Claims 2-10 and 30
In rejecting dependent claims 2-10 and 30 over von der Heide,
Leupold and one or more of Dehmer, Bradbury, Harmsen and Neely, the
Examiner relies on the same rationale as relied on in rejecting claim 1,
discussed supra, with respect to the limitation requiring the blade height to
be at least 25% of the impeller diameter. Ans. 6-8. Accordingly, for the
reasons discussed supra in connection with claim 1, we do not sustain the
rejections of claims 2-10 and 30.

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Claims 11, 13, 16, 17, 19-21, 31 and 321
Appellants argue claims 11, 13, 16, 17, 19-21, 31 and 32 as a group.
App. Br. 24-25. Accordingly, we select claim 11 as representative, and
claims 13, 16, 17, 19-21, 31 and 32 stand or fall with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Claim 11 recites that “the stagger angle increases from about
24 degrees to 30 degrees at the hub to about 50 degrees to 56 degrees at the
tip; or the camber angle decreases from about 26 degrees to 32 degrees at the
hub to about 9 degrees to 15 degrees at the tip; or a combination thereof.”
As to the recited stagger and camber angles, the Examiner finds that
the combination of von der Heide, Leupold, Bradbury and Harmsen
discloses the general conditions of the claimed invention except for the
express disclosure of a stagger angle of approximately 29 degrees at the hub
and a stagger angle of approximately 56 degrees at the tip and a camber
angle of approximately 29 degrees at the hub and approximately 12 degrees
at the tip. Ans. 10. The Examiner concludes that it would have been
obvious to a skilled person at the time of the invention to employ the recited
stagger and camber angles, “since the claimed values are merely an optimum
or workable range.” Id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955),
for the proposition that where the general conditions of a claim are disclosed
in the prior art, discovering the optimum or workable ranges involves only
routine skill in the art).

1 We discuss claim 33 below in connection with claim 25, from which claim
33 depends. Claim 30 is discussed above in connection with claim 1, from
which claim 30 depends.
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Appellants’ arguments are largely unresponsive to the Examiner’s
reasoning. While acknowledging Bradbury’s disclosure of stagger angle
values increasing from 41.8 degrees at the hub to 65.7 degrees at the tip of a
blade, Appellants argue that Bradbury does not disclose “stagger angle
ranges at either the root or the tip” and that Bradbury’s stagger angle values
are outside the claimed ranges. App. Br. 20-21 and 24-25. Appellants argue
with respect to the claimed camber angles that Harmsen does not disclose
“workable values” or provide “guidance as to what might be appropriate
camber angles at the hub or the tip of the blade.” Id. at 22 and 24-25. We
note that Appellants do not address Bradbury’s disclosure of camber angles
decreasing from 47.8 degrees at the hub to 19.3 degrees at the tip of a blade.
See Bradbury, fig. 20. Nor do Appellants directly address the Examiner’s
reasoning that the claimed values are merely an optimum or workable range.
See Ans. at 10.
Our reviewing court has stated the applicable legal principles as
follows:
“[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Aller, 220 F.2d
at 456. This rule is limited to cases in which the optimized
variable is a “result-effective variable.” In re Antonie, 559 F.2d
618, 620 (CCPA 1977); see [In re ]Boesch, 617 F.2d [272,] 276
[(CCPA 1980)] (“[D]iscovery of an optimum value of a result
effective variable . . . is ordinarily within the skill of the art.”).
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). On the
record before us, we agree with the Examiner that optimizing the stagger and
camber angles disclosed in the cited prior art, particularly Bradbury, to
obtain the stagger and camber angles recited in claim 11, would have
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involved only routine skill in the art. Bradbury clearly discloses that the
stagger and camber angles, from the hub to the tip of a blade, are result-
effective variables affecting aerodynamic fan performance (Bradbury, col. 7,
l. 50 - col. 8, l. 3; col. 11, ll. 1-24; fig. 20), and thus discovery of the
optimum values claimed was within the skill in the art. See Applied
Materials, 692 F.3d at 1295.
Accordingly, we sustain the rejection of claim 11, and claims 13, 16,
17, 19-21, 31 and 32 fall therewith.
Claims 12, 24 and 282
In the rejections of claims 12, 24 and 28, the Examiner finds that Seki
discloses an impeller having a “solidity” of approximately one at the
maximum chord length, as claimed. Ans. 13-14. Appellants argue that
Seki’s definition of “solidity” is different from the express definition in the
Specification. App. Br. 27-28 (comparing Seki, para. [0013] and Spec.,
para. [0029]). Appellants further argue that “if the solidity of the apparatus
in the Seki application were to be calculated using the method described in
the present application, the numbers would be much lower than 1, given the
very large spacing between the blades.” Id. at 28. As Appellants’ argument
appears to be correct and the Examiner does not respond to Appellants’
argument in the Answer, we do not sustain the rejection of claims 12, 24
and 28.

2 We discuss claim 9 above.
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Claims 25, 26, 27, 29 and 33
Claim 25 calls for a pair of finger guards secured to opposite sides of
a fan housing having “a top that extends crosswise over the pair of finger
guards and overhangs the flow path outside the pair of finger guards.”
In the rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable
over von der Heide, Leupold and Herbert, the Examiner reasons that “[i]t
would have been obvious to one of ordinary skill in the art to provide a fan
finger guard, as fan finger guard[s] are well known accessories and are
available for most AC DC fans to protect the user as disclosed by Herbert
(Col. 1 ll. 66-68 to Col. 2 ll. 1-9).” Ans. 16. Appellants do not dispute that
the cited prior art satisfies the requirement of claim 25 for a pair of finger
guards secured to opposite sides of a fan housing having a top that extends
crosswise over the pair of finger guards, but rather argue that the Examiner’s
rejection does not explicitly address the requirement of claim 25 for “an
overhanging top piece of the fan housing.” See App. Br. 26. Appellants
further assert that they “find no mention of such an overhanging top piece of
the fan housing in any of the cited references.” Id. However, we find that
Herbert discloses a fan in a duct or shroud (housing) having a top piece (top)
that overhangs the flow path outside the fan blades (potential finger guard
locations). E.g., Herbert, col. 3, l. 66 – col. 4, l. 22; col. 7, l. 60 – col. 8, l. 2;
col. 8, ll. 53-59; figs. 1, 13 and 14. As such, Appellants have not provided
persuasive argument or evidence of error in the Examiner’s obviousness
analysis.
Accordingly, we sustain the rejection of claim 25. Appellants do not
argue the separate patentability of dependent claims 26, 27, 29 and 33. App.
Br. 25-27. Accordingly, we also sustain the rejections of those claims.
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Claim 18
Claim 18 calls for the electronic device of claim 11 including “a
second cooling fan in series with the first cooling fan.” (Emphasis added).
In the rejection of claim 18, the Examiner finds that Horng discloses fans in
series. Ans. 14 (referencing Horng, fig. 1). Horng’s Figure 1 depicts the
ornamental design of a heat dissipation fan that comprises two fan units
disposed side-by-side above a series of fin-shaped, heat transfer elements.
Appellants argue that the claim term “in series” requires the airflow from the
first fan to pass directly through the second fan. App. Br. 29 (citing Spec.,
para. [0018], fig. 2). Based on this proposed claim construction, Appellants
further argue that Horng does not disclose fans in series, but rather in
parallel. App. Br. 29.
While we appreciate that, in Appellants’ illustrative embodiment,
either the first fan is blowing air through the second fan or the second fan is
drawing air through the first fan (Spec., para [0018]), the plain meaning of
“in series” is broader than Appellants’ proposed construction of that term.
See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim
must be given their plain meaning unless the plain meaning is inconsistent
with the specification). In the context of claim 18, the plain meaning of
“series” consistent with the Specification is “a group of usu. three or more
things or events standing or succeeding in order and having a like
relationship to each other: a spatial . . . succession of . . . things: a group that
has or admits an order of arrangement exhibiting progression.”3 The term
“in series” simply means in such a group or succession. For these reasons,

3 WEBSTER’S THIRD NEW INT’L DICTIONARY, UNABRIDGED (entry n, def. 1),
accessed at http://lionreference.chadwyck.com (last visited Mar. 22, 2013).
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we are not persuaded of error in the Examiner’s finding that Horng discloses
fans in series.
Accordingly, we sustain the Examiner’s rejection of claim 18.
NEW GROUND OF REJECTION
We enter a New Ground of Rejection under 35 U.S.C. § 103(a) of
claims 12 and 24 as unpatentable over von der Heide, Leupold, Dehmer,
Bradbury and Harmsen and claim 28 as unpatentable over von der Heide,
Leupold, Herbert and Bradbury.
Claim 12 depends from claim 11, claim 24 depends from claim 20 and
claim 28 depends from claim 25. Each of these dependent claims recites
that “the impeller has a solidity of approximately one at the maximum chord
length.”
We adopt and incorporate by reference the Examiner’s findings and
reasoning with respect to the rejections of independent claims 11, 20 and 25.
We additionally find that: Bradbury defines solidity “as the chord length at
the particular radial station divided by the blade spacing in dimensionless
units,” where “[t]he blade spacing is the distance between adjacent blades at
a given radius and is further defined by dividing 2 r by the number of
blades” (Bradbury, col. 11, ll. 34-38); Bradbury discloses an impeller having
a solidity, as so defined, of 0.9871 at the maximum chord length (id. at fig.
20); Bradbury’s solidity of 0.9871 is approximately one; Bradbury discloses
that solidity is a result-effective variable affecting fan performance
(Bradbury, col. 11, ll. 1-49, fig. 20); and discovery of the optimum value of
solidity claimed (i.e., “approximately one”) was within the skill in the art
(Bradbury, col. 11, ll. 50-56). We determine that optimizing the solidity of
the impeller at the maximum chord length to achieve a desired fan
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performance was disclosed in Bradbury, and thus arriving at the optimum
value of solidity of approximately one as claimed would have involved only
routine skill in the art. See Applied Materials, 692 F.3d at 1295.
Accordingly, pursuant to 37 C.F.R. § 41.50(b), we enter a New
Ground of Rejection of claims 12, 24 and 28 under 35 U.S.C. § 103(a).

DECISION
We affirm the rejections of claims 11, 13, 16-21, 25-27, 29 and 31-33.
We reverse the rejections of claims 1-10, 12, 24, 28, 30 and 34.
We enter a New Ground of Rejection of claims 12, 24 and 28.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides
that Appellants must, WITHIN TWO MONTHS, exercise one of the
following options:
(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 proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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; 37 C.F.R. § 41.50(b)

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