Ex Parte ZiemannDownload PDFPatent Trial and Appeal BoardMar 26, 201412226170 (P.T.A.B. Mar. 26, 2014) Copy Citation 1 2 3 4 5 UNITED STATES PATENT AND TRADEMARK OFFICE 6 ___________ 7 8 BEFORE THE PATENT TRIAL AND APPEAL BOARD 9 ___________ 10 11 Ex parte ANDREAS ZIEMANN 12 ___________ 13 14 Appeal 2012-004518 15 Application 12/226,170 16 Technology Center 3700 17 ___________ 18 19 20 Before JOHN C. KERINS, LYNNE H. BROWNE, and 21 THOMAS F. SMEGAL, Administrative Patent Judges. 22 23 SMEGAL, Administrative Patent Judge. 24 25 DECISION ON APPEAL 26 27 28 Appeal 2012-004518 Application 12/226,170 2 STATEMENT OF THE CASE 1 Andreas Ziemann (Appellant) seeks review under 35 U.S.C. § 134 of a 2 final rejection of claims 13-46, the only claims pending in the application on 3 appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4 SUMMARY OF DECISION 5 We AFFIRM. 6 CLAIMED SUBJECT MATTER 7 Appellant’s claimed subject matter relates to a dryer with an insertion 8 region for receiving either condensation or extraction elements (Spec. 1: ll. 9 25-26). 10 An understanding of the invention can be derived from a reading of 11 exemplary claim 13, which is reproduced below. 12 13. A dryer comprising: 13 a compartment in which an item to be dried is retained; 14 a process air guide assembly of modular construction, 15 the process air guide assembly having an insertion region 16 configured to alternatively receive therein a first air conducting 17 element for forming a condensation dryer and a second air 18 conducting element for forming an extraction air dryer; and 19 a selected one of the first air conducting element for 20 forming a condensation dryer or a second air conducting 21 element for forming an extraction air dryer disposed in the 22 insertion region, wherein both the first and second air 23 conducting elements are compatibly configured with respect to 24 the insertion region (emphasis added). 25 26 27 28 Appeal 2012-004518 Application 12/226,170 3 REFERENCES 1 The Examiner relies upon the following prior art: 2 Whyte US 3,032,887 May 8, 1962 3 Lambert US 3,229,382 Jan. 18, 1966 4 Watts GB 2 258 720 A Feb. 17, 1993 5 6 REJECTIONS ON APPEAL 7 1. Claims 13-46 stand rejected under 35 U.S.C. § 112, first paragraph, 8 for failing to comply with the written description requirement. 9 2. Claims 13-27, 30-32, 35-38 and 41-44 stand rejected as anticipated 10 under 35 U.S.C. § 102(b) by Watts. 11 3. Claims 13-27, 30-32, 35-38 and 41-44 stand rejected as being 12 unpatentable under 35 U.S.C.§ 103(a) over Watts. 13 4. Claims 28, 33, 39 and 45 stand rejected as being unpatentable under 14 35 U.S.C. § 103(a) over Watts and Lambert. 15 5. Claims 29, 40 and 46 stand rejected as being unpatentable under 16 35 U.S.C. § 103(a) over Watts and Whyte. 17 6. Claim 34 stands rejected as being unpatentable under 35 U.S.C. 18 §103(a) over Watts, Lambert and Whyte. 19 FINDINGS OF FACT 20 We find that the following numbered findings of fact (FF), which 21 appear in the Analysis below, are supported by at least a preponderance of 22 the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) 23 Appeal 2012-004518 Application 12/226,170 4 (explaining the general evidentiary standard for proceedings before the U.S. 1 Patent and Trademark Office (“PTO”)). 2 Facts Related to Appellant’s Disclosure 3 FF1. The Specification contains no lexicographic definition of “a 4 process air guide assembly of modular construction” stating at page 1, line 3 5 “the invention relates to a tumble-dryer which is of modular construction”, 6 at page 1, line 30 “[a] dryer according to the invention is of modular 7 construction” and in original claim 1 “[a] dryer, which is of modular 8 construction”. 9 FF2. The Specification states at page 1, lines 30-32 that “[a] dryer 10 according to the invention[]comprises a process air guide in which a first air 11 conducting element can be inserted to form a condensation dryer or a second 12 air conducting element can be inserted to form an extraction air dryer”. 13 FF3. The Specification contains no lexicographic definitions of 14 “insertion region”, “first air conducting element” or “second air conducting 15 element” stating at page 2, lines16-19 that “[t]he two air conducting 16 elements are preferably each designed compatibly in terms of their insertion 17 in the insertion region. Regardless of which air conducting element is 18 therefore inserted, in particular installed, in the insertion region, the insertion 19 region may therefore remain unchanged”. 20 Facts Related to the Prior Art 21 Watts 22 FF4. Watts states that: 23 The invention is applicable to condenser 24 dryers, in which case the duct includes a 25 Appeal 2012-004518 Application 12/226,170 5 condenser, to heat recovery dryers, in which case 1 there is heat exchange between the hot moist air 2 passing down the duct from the drum, and air 3 about to enter the drum, as well as to arrangements 4 in which the hot moist air leaving the drum is 5 simply ducted away. 6 Watts, page 2, lines 16-21. 7 8 FF5. Watts states that “[t]his air then passes through a 9 large number of tubes 9 flattened in the horizontal direction 10 over the outside of which a fan 10 driven by the motor 5 blows 11 air drawn from the exterior in the direction of the arrows X”. 12 FF6. Watts states that “[t]he invention is not restricted to condenser 13 dryers, and a non-condenser dryer, but which does have a form of heat 14 recovery, will now be described with reference to Figure 2 of the drawings. 15 Like parts have been given like reference numerals in both drawings.” 16 Watts, page 5, line 23-page 6, line 3. 17 FF7. Watts states that “[t]he invention is also applicable to tumble 18 dryers in which there is no heat recovery i.e. in which the outlet air through 19 the square tubes 17 is vented to the atmosphere and the inlet to the centre of 20 the fan 12 is taken directly from the atmosphere.” Watts, page 7, lines 4-8. 21 ANALYSIS 22 Claims 13-46 rejected under 35 U.S.C. § 112, first paragraph, for 23 failing to comply with the written description requirement. 24 Claims 13-23, 30-34 and 41-46 25 We are not persuaded by Appellant’s argument that the Examiner 26 erred in finding that the original patent application, filed October 8, 2008, 27 Appeal 2012-004518 Application 12/226,170 6 fails to provide the required written description support for recitation of “a 1 process air guide assembly of modular construction” in claims 13-23 and 30-2 34 and “configuring the common insertion and installation region to be 3 modular” in claims 41-46. Appellant cites to page 1 and original claim 1 to 4 support disclosure of “a process air guide assembly of modular 5 construction”. Appellant also argues that “[p]age 3, lines 27 and 28 indicate 6 that, in the dryer according to the invention, essentially only one component, 7 the air conducting element, is replaced and a condensation dryer or an 8 extraction air dryer is therefore provided” (Reply Br. 2). 9 However, the Examiner found that “[t]he original specification 10 simply does not show any support for ‘a process air guide of modular 11 construction’ that is designed so that it is compatible with either a 12 condensation dryer or an extraction dryer. The air guide assembly could not 13 be used in an alternative interchangeable manner with the condensation 14 dryer and extraction dryer” (Ans. 14-15). See also FF1. We find that the 15 general mention of a “dryer, which is of modular construction” does not 16 establish possession of the claimed “process air guide of modular 17 construction”. We also find that the illustrations of heat exchanger system 16 18 of condensation dryer 1 (Figure 1) and extraction air guide 16’ of extraction 19 dryer 1’ (Figure 2) are so dissimilar in appearance that they provide no 20 support for Appellant’s assertion that the Specification is in compliance with 21 the first paragraph of 35 U.S.C. § 112 regarding claims 13-23, 30-34 and 41-22 46. 23 “[T]he test for sufficiency [of the written description] is whether the 24 disclosure of the application relied upon reasonably conveys to those skilled 25 in the art that the inventor had possession of the claimed subject matter as of 26 Appeal 2012-004518 Application 12/226,170 7 the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 1 (Fed. Cir. 2010) (en banc) (citations omitted). “And while the description 2 requirement does not demand any particular form of disclosure, or that the 3 specification recite[s] the claimed invention in haec verba, a description that 4 merely renders the invention obvious does not satisfy the requirement.” Id. 5 at 1352 (internal citations omitted). 6 Accordingly, we sustain the Examiner’s rejection of claims 13-23, 30-7 34 and 41-46 under 35 U.S.C. § 112, first paragraph. 8 Claims 24-29 and 35-40 9 We agree with Appellant that independent claims 24 and 35 do not 10 recite “a process air guide assembly of modular construction” (Reply Br. 1). 11 Therefore, we do not sustain the Examiner’s rejection of claims 24-29 and 12 35-40 for failing to comply with the written description requirement of 35 13 U.S.C. § 112, first paragraph. 14 Claims 13-27, 30-32, 35-38 and 41-44 as anticipated by Watts. 15 Claims 13-24, 26, 27, 30-32, 35-38 and 41-44 16 Appellant advances similar arguments for independent claims 13, 24, 17 30, 35 and 41 (App. Br.13-15) and does not separately argue dependent 18 claims 14-23, 26, 27, 31, 32, 36-38 and 42-44. We select claim 13 as the 19 representative claim for this group and the remaining claims stand or fall 20 with claim 13. 37 C.F.R. § 41.37(c)(1)(vii) (2011). 21 We have considered Appellant’s arguments raised in the Briefs but do 22 not find them persuasive to demonstrate reversible error in the Examiner’s 23 position. Appellant first argues that “Watts does not teach or suggest first 24 Appeal 2012-004518 Application 12/226,170 8 and second air conducting elements are compatibly configured with respect 1 to the insertion region of a process air guide assembly of modular 2 construction per claim 13” (App. Br. 13). Appellant then argues that while 3 Figures 1 and 2 of Watts disclose a condensation dryer and an extraction 4 dryer, “the figures are schematic sketches only” and “there is no teaching or 5 suggestion that Watts has an insertion region configured to alternatively 6 receive therein a first air conducting element for forming a condensation 7 dryer and a second conducting element for forming an extraction air dryer” 8 (App. Br. 14). 9 Appellant also contends at page 14 of the Appeal Brief that in Watts, 10 “there is no indication in the whole document that both dryers shown in the 11 drawings can include a single frame work dryer, with the differences limited 12 to interchangeable air conducting elements”. Appellant also argues that 13 “there is no teaching or suggestion that Watts has an insertion region 14 configured to alternatively receive therein a first air conducting element for 15 forming a condensation dryer and a second conducting element for forming 16 an extraction air dryer” (App. Br. 14). 17 We determine the scope of the claims in patent applications not solely 18 on the basis of the claim language, but upon giving claims “their broadest 19 reasonable interpretation consistent with the specification and . . . in light of 20 the specification as it would be interpreted by one of ordinary skill in the 21 art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) 22 (citations omitted). It is the Appellant’s burden to precisely define the 23 invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 24 1997). 25 Appeal 2012-004518 Application 12/226,170 9 However, Appellant hasn’t pointed to the specification or other 1 disclosure containing lexicographic definitions of “insertion region”, “first 2 air conducting element” or “second air conducting element”, that are 3 inconsistent with the Examiner’s finding that Watts shows “‘a first air 4 conducting element 6’ and ‘a second air conducting element 16, 18’ are 5 compatibly configured with respect to the insertion region” (Ans. 16 citing 6 Figures 1 and 2, region between 8, 11). The Examiner also finds that “Figs. 7 1 and 2 of Watts show an identical insertion and installation region same as 8 applicant’s Figs. 3 and 4” (Ans. 17). See FF2-7. 9 Appellant summarizes the foregoing arguments at page 15 of the 10 Appeal Brief, contending that Watts does not disclose other limitations 11 recited in the independent claims 24, 30, 35 and 41, stating that 12 Moreover, independent claims 13, 24, 30, 35 and 13 41 include structural language and technical 14 features, e.g., referring to mating structures in the 15 insertion region and the first and second air 16 conducting elements, as well as a modular 17 construction, one or more portions that are 18 compatible with the common insertion and 19 installation region, a common insertion and 20 installation region to form an exact fit with the 21 selected air conducting element or that remains 22 essentially unchanged regardless of whether the 23 first or second air conducting element is engaged 24 and operatively received in the insertion and 25 installation region”. (Underlines 26 omitted)(emphasis added). 27 28 We find the foregoing summary to merely be pointing out various 29 claim limitations. A statement which merely points out what a claim recites 30 Appeal 2012-004518 Application 12/226,170 10 will not be considered an argument for separate patentability of the claim. 37 1 C.F.R. § 41.37(c). Thus we agree with the Examiner’s findings of fact as set 2 forth at pages 5-8 of the Answer that the claims are anticipated by Watts. 3 We note that anticipation “is not an ‘ipsissimis verbis’ test.” In re 4 Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo N.V. v. United States, 5 Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n. 11 (Fed. Cir. 1986)). 6 Furthermore, “[a]n anticipatory reference . . . need not duplicate word for 7 word what is in the claims. Anticipation can occur when a claimed 8 limitation is 'inherent' or otherwise implicit in the relevant reference.” 9 Standard Havens Prods. Inc. v. Gencor Indus., Inc., 953 F2d 1360, 1369 10 (Fed. Cir. 1991) (citing Tyler Refrigeration v. Kysor Indus. Corp., 777 F.2d 11 687, 689 (Fed. Cir.1985)). 12 For the foregoing reasons, we sustain the Examiner’s rejection of 13 claims 13-24, 26, 27, 30-32, 35-38 and 41-44 as being anticipated by Watts. 14 Claim 25 15 Appellant argues that dependent claim 25 is not anticipated by Watts 16 because the claim “specifies that each of the first and second air conducting 17 elements includes at least a portion to form an exact fit with the common 18 insertion and installation region” (App. Br.16). However, this argument for 19 the patentability of dependent claim 25 is merely a restatement of a claim 20 limitation and a bald assertion that the limitation is not shown in Watts. In re 21 Lovin, 652 F. 3d 1349 (Fed. Cir. 2011) (“ we hold that the Board reasonably 22 interpreted Rule 41.37 to require more substantive arguments in an appeal 23 brief than a mere assertion of the claim elements and naked assertion that the 24 Appeal 2012-004518 Application 12/226,170 11 corresponding elements were not found in the prior art”). For that reason, we 1 sustain the rejection of dependent claim 25 as anticipated by Watts. 2 Claims 13-27, 30-32, 35-38 and 41-44 stand rejected as being 3 unpatentable under 35 U.S.C.§ 103(a) over Watts. 4 Because we have affirmed the rejection of claims 13-27, 30-32, 35-38 5 and 41-44 as being anticipated by Watts under 35 U.S.C. § 102(b) as 6 discussed supra, we find it unnecessary to reach a decision about the 7 cumulative rejection of claims 13-27, 30-32, 35-38 and 41-44 under 35 8 U.S.C. § 103(a) as unpatentable over Watts. See 37 C.F.R. § 41.50(a) (1) 9 (“The affirmance of the rejection of a claim on any of the grounds specified 10 constitutes a general affirmance of the decision of the examiner on that 11 claim . . . .”). 12 Claims 28, 33, 39 and 45 rejected under 35 U.S.C. § 103(a) as 13 unpatentable over Watts and Lambert. 14 Appellant argues that “[w]hile Lambert may teach a bearing, it does 15 not teach the claimed opening that is structured to exactly fit with either air 16 conducting element” (App. Br. 17, see also Reply Br. 7). However, 17 nonobviousness cannot be established by attacking the references 18 individually when the rejection is predicated upon a combination of prior art 19 disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 20 As the Examiner points out, “the claimed opening that is structured to 21 exactly fit with either air conducting element was taught by Watts . . . . 22 Lambert patent is used by examiner for the teaching of providing the end 23 plate 26 of a clothes dryer with a front bearing to rotatably support the 24 container 10 (col. 1, lines 26-29)” (Ans. 21). 25 Appeal 2012-004518 Application 12/226,170 12 For the foregoing reason, we sustain the rejection of claims 28, 33, 39 1 and 45 as being unpatentable over Watts and Lambert. 2 Claims 29, 40 and 46 rejected under 35 U.S.C. § 103(a) as 3 unpatentable over Watts and Whyte. 4 We are not persuaded by Appellant’s arguments that the Examiner 5 failed to establish a prima facie showing of obviousness in rejecting claims 6 29, 40 and 46 over Watts and Whyte. Appellant first argues that “it is 7 irrelevant if Whyte discloses a support for only a single type of air 8 conducting unit” because “[t]he examiner has not addressed the feature in 9 the claim that the upper support surface supports either the first or second air 10 conducting units” (App. Br. 17-18). Appellant also argues that “the 11 Examiner has . . . not pointed to any elements in Watts that constitutes an 12 upper support surface - there is no reference number associated with the 13 Examiner’s upper support surface as specified on page 21 of the Examiner’s 14 Answer” (Reply Br. 7). 15 The Examiner found, however, and we agree, that “it would have been 16 obvious to one skilled in the art to modify the dryer and the method of 17 manufacturing a dryer of Watts to provide the upper support surface of the 18 bottom group component of Watts with an upstanding member and to 19 support the motor by the upstanding member as taught by Whyte et al. in 20 order to securely support the motor” (Ans. 21-22). 21 We also find that Appellant provides no evidence that the upper 22 support surface would perform any differently with either the first or second 23 air conducting unit recited by claims 29, 40 and 46. Thus, Appellant’s 24 argument is nothing more than a naked assertion of what the prior art does 25 Appeal 2012-004518 Application 12/226,170 13 not show which is insufficient to overcome an obviousness rejection. The 1 mere existence of differences between the prior art and the claim does not 2 establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). 3 For the foregoing reasons, we sustain the Examiner’s rejection of 4 claims 29, 40 and 46 as being unpatentable over Watts and Whyte. 5 Claim 34 rejected under 35 U.S.C. § 103(a) as unpatentable over 6 Watts, Lambert and Whyte. 7 We are not persuaded by Appellant’s arguments that the Examiner 8 failed to establish a prima facie showing of obviousness in rejecting claim 9 34 over Watts, Lambert and Whyte. As with claims 29, 40 and 46, 10 Appellant again contends that “[t]he examiner has not addressed the feature 11 in the claim that the upper support surface supports either the first or second 12 air conducting units, so it is irrelevant if Whyte discloses a support for only a 13 single type of air conducting unit” (App. Br. 18). Appellant also repeats the 14 arguments presented in the Reply Brief for the patentability of claims 29, 40 15 and 46. 16 Here again, we find that Appellant provides no evidence that the 17 upper support surface would perform any differently with either “the 18 condensation dryer componentry or the extraction dryer componentry” as 19 recited by claim 34. Thus, Appellant’s argument is nothing more than a 20 naked assertion of what the prior art does not show which is insufficient to 21 overcome an obviousness rejection. The mere existence of differences 22 between the prior art and the claim does not establish nonobviousness. 23 Dann v. Johnston, 425 U.S. at 230. 24 25 Appeal 2012-004518 Application 12/226,170 14 DECISION 1 The rejection of claims 13-23, 30-34 and 41-46 under 35 U.S.C. § 2 112, first paragraph, is AFFIRMED. 3 The rejection of claims 24-29 and 35-40 under 35 U.S.C. § 112, first 4 paragraph, is REVERSED. 5 The rejection of claims 13-27, 30-32, 35-38 and 41-44 as anticipated 6 under 35 U.S.C. § 102(b) by Watts is AFFIRMED. 7 The rejection of claims 28, 33, 39 and 45 as unpatentable under 35 8 U.S.C. § 103(a) over Watts and Lambert is AFFIRMED. 9 The rejection of claims 29, 40 and 46 as unpatentable under 35 U.S.C. 10 § 103(a) over Watts and Whyte is AFFIRMED. 11 The rejection of claim 34 as unpatentable under 35 U.S.C. § 103(a) 12 over Watts, Lambert and Whyte is AFFIRMED. 13 We do not reach the rejection of claims 13-27, 30-32, 35-38 and 41-44 14 as unpatentable under 35 U.S.C. § 103(a) over Watts as we have sustained 15 the rejection of those claims as being anticipated by Watts. 16 No time period for taking any subsequent action in connection with 17 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18 § 1.136(a)(1)(iv) (2011). 19 20 AFFIRMED 21 22 llw 23 24 Copy with citationCopy as parenthetical citation