Ex Parte Weiss

Board of Patent Appeals and Interferences

Aug 17, 2010

11120785 (B.P.A.I. Aug. 17, 2010)

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.
11/120,785 05/03/2005 Cory A. Weiss 109044-00008 4000
7590 08/18/2010
MILLER, CANFIELD, PADDOCK AND STONE, P.L.C.
Suite 2500
150 West Jefferson
Detroit, MI 48226
EXAMINER
ST CLAIR, ANDREW D
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
08/18/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CORY A. WEISS
____________________

Appeal 2009-009137
Application 11/120,785
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009137
Application 11/120,785

2
STATEMENT OF THE CASE
Cory A. Weiss (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-3, 5, 6, 9 and 10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to a damper control device
for a fireplace (Spec. 1: para. [02]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A damper control device comprising, in
combination:
a damper movable by a motor between a
closed position and an open position;
a thermoelectric device;
a battery having a voltage; and
a controller comprising a comparator circuit
which compares an input voltage from the
thermoelectric device with a reference voltage
based upon the voltage of the battery;
wherein when the input voltage is greater
than or equal to the reference voltage, the
comparator circuit transmits a damper signal to
move the damper to the open position;
wherein the comparator circuit maintains a
predetermined time delay corresponding to a time
between when the input voltage is removed from
the comparator circuit and when the reference
voltage is reapplied at the motor; and the battery is
mounted in a box which also houses the
comparator circuit and the motor to move the
damper.
Appeal 2009-009137
Application 11/120,785

3
THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 1-3, 5, 6, 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weiss (US 6,257,871 B1, issued July 10, 2001) in view of
Habegger (US 5,039,006 , issued August 13, 1991), Crouse (US 4,846,400,
issued July 11, 1989) and Channing (US 4,404,613, issued September 13,
1983).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Weiss, Habegger, Crouse and Channing would
have led a person having ordinary skill in the art to a damper control device
having a battery and a comparator circuit, as called for in independent claim
1 (App. Br. 9).

ANALYSIS
Appellant argues claims 1-3, 5, 6, 9 and 10 as a group (App. Br. 8-10).
As such, we select claim 1 as representative of the group, and claims 2, 3, 5,
6, 9 and 10 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2009).
The Examiner made specific findings and conclusions of obviousness
regarding the teachings of Weiss, Habegger, Crouse and Channing and how
they relate to the claimed invention (Ans. 3). We agree with the Examiner’s
rationale and adopt them as our own.
Appeal 2009-009137
Application 11/120,785

4
Appellant contends that none of the cited references describes the
claimed damper control device having a battery and a comparator circuit, as
called for in independent claim 1 (App. Br. 9).
We find that Appellant argues the cited references individually, while
the Examiner’s conclusion of obviousness is based on a combination of
references. Thus, we find that Appellant’s contentions lack merit because
the test for obviousness is whether the references, taken as a whole, would
have suggested Appellant's invention to a person having ordinary skill in the
art at the time the invention was made. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references.).
Appellant contends that all of the references teach away from the use
of a battery and the need for a comparator circuit since the references that
disclose a damper show the damper electrically connected to a power source
and do not require a battery (App. Br. 9). We find that Weiss and Crouse
describe two different types of power sources. We find that just because
there are differences between Weiss and Crouse is insufficient to establish
that such references teach away from any combination thereof. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
Further, we find that the Examiner’s rationale (Ans. 4) is based on
sound reasoning, that is, the substitution of Crouse’s battery for the power
source of Weiss is the substitution of one element for another known in the
field yielding predictable results. See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
Appeal 2009-009137
Application 11/120,785

5
known in the field, the combination must do more than yield a predictable
result.”).
Appellant contends that applying the device of Weiss to a furnace
damper would require extensive non-obvious changes (App. Br. 9-10).
We agree with the Examiner (Ans. 8) and conclude that independent
claim 1 calls for a damper control device, not a furnace damper as Appellant
would have us believe. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It
is well established that limitations not appearing in the claims cannot be
relied upon for patentability.).
Even assuming arguendo that Appellant is correct that extensive non-
obvious changes would be required to apply Weiss’ damper to a furnace2,
Appellant does not specifically point to where the combined teachings of
Weiss, Habegger, Crouse and Channing do not describe the claimed damper
control device, or provide evidence as to why the combined teachings of
Weiss, Habegger, Crouse and Channing would not have been obvious to a
person having ordinary skill in the art. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”).
Appellant contends that “[t]he Examiner mistakenly and
impermissibly mixes and matches elements from four different references”
(App. Br. 10).

2 Weiss describes that the invention relates to gas-fired appliances such as
fireplaces (col. 1, ll. 6-10).
Appeal 2009-009137
Application 11/120,785

6
We find that the number of references does not itself negate the
obviousness of the combined teachings of the references. See In re Gorman,
933 F.2d 982, 987 (Fed. Cir. 1991) (“The large number of cited references
does not negate the obviousness of the combination, for the prior art uses the
various elements for the same purposes as they are used by appellants,
making the claimed invention as a whole obvious in terms of 35 U.S.C.
§ 103.”).
We affirm the rejection of independent claim 1 and claims 2, 3, 5, 6, 9
and 10 fall with claim 1.

CONCLUSION
The Examiner has not erred in concluding that the combined teachings
of Weiss, Habegger, Crouse and Channing would have led a person having
ordinary skill in the art to a damper control device having a battery and a
comparator circuit, as called for in independent claim 1.

DECISION
The decision of the Examiner to reject claims 1-3, 5, 6, 9 and 10 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED
Klh

MILLER, CANFIELD, PADDOCK AND STONE, P.L.C.
SUITE 2500
150 WEST JEFFERSON
DETROIT, MI 48226