Ex Parte Ziemann

Patent Trial and Appeal Board

Mar 26, 2014

12226170 (P.T.A.B. Mar. 26, 2014)

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UNITED STATES PATENT AND TRADEMARK OFFICE 6
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 9
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Ex parte ANDREAS ZIEMANN 12
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Appeal 2012-004518 15
Application 12/226,170 16
Technology Center 3700 17
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Before JOHN C. KERINS, LYNNE H. BROWNE, and 21
THOMAS F. SMEGAL, Administrative Patent Judges. 22
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SMEGAL, Administrative Patent Judge. 24
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DECISION ON APPEAL 26
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Appeal 2012-004518
Application 12/226,170
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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
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Appeal 2012-004518
Application 12/226,170
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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
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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
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(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
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Application 12/226,170
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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
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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
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Application 12/226,170
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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AFFIRMED 21
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