Regal Beloit America, Inc.

Patent Trials and Appeals Board

Nov 18, 2021

2021003615 (P.T.A.B. Nov. 18, 2021)

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.
15/163,134 05/24/2016 Sahand Pirouzpanah 48593-155676 3392
103907 7590 11/18/2021
Thompson Coburn LLP
One US Bank Plaza
St. Louis, MO 63101
EXAMINER
DAVIS, JASON GREGORY
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/18/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@thompsoncoburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAHAND PIROUZPANAH, JOSEPH A. HENRY, and
SHIRISH M. VATKAR
____________

Appeal 2021-003615
Application 15/163,134
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). A video oral hearing in accordance with 37 C.F.R. § 41.47
was held on October 18, 2021.2
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Regal Beloit America, Inc. as the real
party in interest. Appeal Br. 2.
2 A transcript of the proceeding will be entered into the record in due course.
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THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A centrifugal blower for HVACR applications, the centrifugal
blower comprising
a scroll housing, and
a squirrel cage forward-curved blower fan within the scroll
housing,
the blower fan being rotatable about an axis at a first speed,
the blower fan having a radius and a circumference and the
blower fan comprising a plurality of blades having a particular
blade exit angle,
the scroll housing having opposite axial sides and a spline-
shaped wall, the spline-shaped wall extending axially from one
of the axial sides to the other of the axial sides, the spline-shaped
wall extending circumferentially over a range of scroll angles
about the axis, and the spline-shaped wall being within two times
the radius of the blower fan from the axis,
the spline-shaped wall having an axial cross-section that is
adapted and configured such that rotation of the blower fan about
the axis at the first speed causes air to be emitted from between
the blades in such a manner that:
a) the emitted air at each point on the blower fan
circumference within the range of scroll angles, in an axial plane
located between the axial sides of the scroll housing, has an air
velocity with a direction and a deviation angle, the deviation
angle being defined as a difference between the direction of the
air velocity and the blade exit angle, and the deviation angle at
any point on the blower fan circumference does not differ from
the deviation angle at any other point on the blower fan
circumference by more than fifteen percent, and
b) the emitted air in the axial plane has an average tangential
velocity in the space between the blower fan and the spline-
shaped wall at each scroll angle within the range of scroll angles,
the average tangential velocity being defined as an average of
tangential velocities of air at points along a line extending in the
axial plane at the scroll angle from the blower fan to the spline-
shaped wall, and the average tangential velocity at any scroll
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angle does not differ from the average tangential velocity at any
other scroll angle by more than thirty percent.

THE REJECTIONS
I. Claims 1–4 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final
Act. 7–9.
II. Claims 1–4 stand rejected under 35 U.S.C. § 112(b) as
indefinite. Id. at 10–11.
OPINION
Rejection I
The Examiner finds that “[c]laim 1 describes the spline-shaped wall
by the results it achieves when rotating the blower fan rather than by
structure necessary to achieve the results.” Final Act. 8. The Examiner
continues that:
Paragraph 23 attempts to describe a method of configuring
the scroll casing. Various calculations are done using velocity
distributions, and ultimately the conservation of mass is used to
determine a “multinodal spline curve.” The applicant has stated
any number of nodal points can be used, and preferably at least
4 points are used. The applicant has stated the spline curve
defines the contour of the axial cross-section of the scroll.
However, the applicant has not described any particular shape of
the spline curve itself. The shape of the applicant’s spline curve,
and ultimately the cross-section of the wall is unknown.
Id.
The Examiner states that “none of Figure[s] 1–3 clearly show the
entirety of a spline-shaped wall.” Id. at 4. With respect to Figures 1 and 2,
the Examiner states that such figures “show perspective views of two
casings, but based on the perspective, the exact shape of the spline-shaped
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wall is unclear.” Id. The Examiner acknowledges that “Figure 4 does show
a spline-shaped wall, but it is not clear that this wall necessarily produces the
claimed result.” Id. at 5; see also id. at 8–9 (“One exemplary spline curve is
shown in Figure 4, however[,] the curve lacks nodal points” and “appears to
be shown for the purpose of explaining the velocity distributions and range
of scroll angles” as opposed to being “representative of [Appellant’s] scroll
casing.”). The Examiner additionally points out that there is no “support for
Figure 4 showing a cross-section of the walls in either Figure 1 or 2” in
particular. Id. at 5.
Even assuming arguendo that Figure 4 is representative of
Appellant’s scroll casing, the Examiner takes the position that such a Figure
is merely one example of a spline-shaped wall that “produce[s] the claimed
deviation angle,” but “the broadest reasonable interpretation of claim 1
covers every possible spline-shaped wall capable of achieving the results—
including those not described by [Appellant].” Final Act. 9; see also id. at 5
(“At best, [Appellant] has shown possession of one specific embodiment,
and not every possible spline-shaped wall capable of achieving the claimed
result.”). The Examiner consequently finds that Appellant “has not provided
sufficient disclosure to show possession of the claimed invention.” Id. at 9.
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, a specification must describe the claimed invention in sufficient
detail that one skilled in the art can reasonably conclude that the inventor
had possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, the specification must
describe the claimed invention in a manner understandable to a person of
ordinary skill in the art and show that the inventor actually invented the
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claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must
“demonstrate that the patentee possessed the full scope of the invention
recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005).
The written description requirement of 35 U.S.C. 112, first paragraph,
applies to all claims, including original claims that are part of the disclosure
as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit:
The problem [of demonstrating possession for a recited genus] is
especially acute with genus claims that use functional language
to define the boundaries of a claimed genus. In such a case, the
functional claim may simply claim a desired result, and may do
so without describing species that achieve that result. But the
specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to
support a claim to the functionally-defined genus.
Id. at 1349.
Appellant does not contest that the Specification lacks disclosure of
one example of a shape of a spline-shaped wall that meets the functional
claim language, but, rather, points to disclosure of
paragraphs [23 and 25 that] describe configuring the scroll for a
blower fan operating at a given fan speed to produce a blower in
which the airflow deviation angles do not differ by more than a
small percentage circumferentially around the fan, and in which
gradients in the average tangential velocity of the air circulating
around the fan likewise do not differ by more than a small
percentage.
Appeal Br. 11. Appellant contends that “[t]he [S]pecification explains how
to configure the spline-shaped wall based on the blower fan and the
rotational speed of the blower fan,” “[s]o the [E]xaminer’s assertion that the
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[S]pecification shows possession of only one specific embodiment is
incorrect.” Id. at 12. Appellant further contends that “[i]nstead of
describing the shape by a mathematical equation, the [S]pecification
explains to a [person of ordinary skill in the art] how to arrive at a shape to
produce the result.” Id. at 13. Appellant continues that “[t]he [E]xaminer
does not explain why he thinks the shape should be determined in a way
different from what is described in the [S]pecification.” Id.
The Examiner acknowledges Appellant’s argument that the Examiner
“has not recognized and/or appreciated that the spline-shaped wall may be
derived from an iterative mass conservation analytical and computational
process as described in the specification,” but responds that Appellant is
merely “arguing one having ordinary skill in the art would be able to make
the spline-shaped wall” which “is not persuasive regarding the written
description requirement.” Final Act. 4. More particularly, the Examiner
finds that “[t]he process for how to configure a spline-shaped wall described
in paragraphs 22 and 23 is a generalized process which does not result in any
specific apparatus.” Ans. 6 (emphasis omitted). The Examiner continues
that “[b]ased on the claim language, Appellant is claiming every possible
spline-shaped wall capable of producing the claimed results. Therefore, the
claimed invention cover[s] numerous possible apparatuses—including those
not disclosed by . . . Appellant.” Id. at 7 (emphasis omitted); see also id. at
5–6 (emphasis omitted) (“The original disclosure does not support every
spline-shaped wall capable of producing the claimed results[,] and
therefore[,] Appellant does not have possession of the claimed invention. . . .
[T]he claimed invention is not a method claim referring to the steps for how
to configure a blower fan, but rather an apparatus claim.”).
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The “written description” clause of section 112 has been
construed to mandate that the specification satisfy two closely
related requirements. First, it must describe the manner and
process of making and using the invention so as to enable a
person of skill in the art to make and use the full scope of the
invention without undue experimentation. Second, it must
describe the invention sufficiently to convey to a person of skill
in the art that the patentee had possession of the claimed
invention at the time of the application, i.e., that the patentee
invented what is claimed.
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344–45
(Fed. Cir. 2005) (internal citations omitted). In our view, the Examiner’s
concern is that the Specification merely describes one process for
determining a shape of a spline-shaped wall, but does not explicitly show
even one product produced in accordance with that process. Therefore, there
is no clear example in the Specification supporting that the method set forth
in the Specification can be performed and can produce a product meeting the
functionally-defined limitation.
Acknowledging Appellant’s statements that “[t]he configuration of
the scroll is based on a particular fan being driven by a motor at a particular
rotational speed” (Appeal Br. 8) and “[i]f a different blower fan or a
different rotational speed is chosen, it is clear from the disclosure that the
spline-shaped wall will be different” (id. at 12), we note that the
Specification does not specifically disclose a shape of the spline-shaped wall
in connection with a particular fan being driven by a motor at a particular
speed, nor for a particular difference in deviation angle and average
tangential velocity. As explained by the Examiner, “both the radial and
tangential velocities are dependent on the fan properties (fan speed, blade
shape, etc.) and the fan properties are not discussed in” the Specification.
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Final Act. 6; see also Ans. 6 (“While the spline-shaped wall depends on the
blower fan and rotational speed, no quantities are described for either the
blower fan or rotational speed, (such as blade exit angles or rpm).
Consequently, no quantities are given for a resulting cross-section of the
spline-shaped wall—regarding defining features of its shape (such as the
radius of curvature) or the values for the deviation angles or average
tangential velocity.”).
We acknowledge that “Figure 6 shows a graph of the scroll radius as a
function of scroll angle for a scroll in accordance with the invention
compared to prior art scrolls” (Spec. ¶ 15), but the Specification provides no
indication of the particulars of the prior art scrolls, or the blowers which they
are contained within, other than the designation of “Standard Design I” and
“Standard Design II” on Figure 6 itself (id., Fig. 6). The Specification states
that “the difference between the configuration of the scroll (22) of the
blower (20) of the present invention and those of the prior art has a
significant impact on the efficiency of and noise emitted from the blower.”
Id. ¶ 24. Again, Figure 6 and its supporting textual description provides no
indication as to the particulars of the fan and/or the motor for which a
particular shape for the spline-shaped wall or for which the particular scroll
radius as a function of scroll angle is beneficial. In short, there is no
disclosed example illustrating or describing the shape of the scroll that
corresponds to a type of blower fan and its operational speed, nor the
particulars of the deviation angle or average tangential velocity.
In addition, because only one process for making the claimed spline-
shaped wall is disclosed, but the claims are directed to a functionally-defined
product, there can be other spline-shaped walls that meet the
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functionally-defined limitations that were not produced by the disclosed
process at all. See LizardTech, 424 F.3d at 1345 (citing O’Reilly v. Morse,
56 U.S. 62, 112–13 (1853) as “denying a claim for use of ‘electro-
magnetism, however developed for marking or printing intelligible
characters . . . at any distances’ because others ‘may discover a mode of
writing or printing at a distance . . . without using any part of the process or
combination set forth in the plaintiff’s specification’). In other words,
Appellant has not shown possession of any and all shapes for spline-shaped
walls that meet the functionally-defined limitation, but rather has shown
possession of one particular process. Other processes to determine shapes
for spline-shaped walls that meet the functionally-defined product limitation
are entirely possible without using any part of the process set forth in
Appellant’s Specification.
Appellant additionally argues that the Examiner is taking the position
that “any claim language that could be characterized as functional somehow
renders the claim unpatentable for lack of written description requirement.”
Appeal Br. 4–5. In our view, the Examiner’s issue is not with functional
claiming in general, but that Appellant has not provided sufficient disclosure
to support a claim directed to every single shape of a spline-shaped wall that
would meet the functionally-defined limitation for a centrifugal blower
merely by describing a process for making such a product.
Moreover, the Specification describes that when considering a
particular fan being driven by a motor at a particular speed, a particular
radial velocity distribution and average tangential velocity will be used in
the “novel iterative process” described in the Specification. Spec. ¶ 23. The
Specification then acknowledges that in such a process, various numbers of
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nodal points can be used in an iterative mass conservation approach to
define an initial multinodal spline curve. Id. These various initial
multinodal spline curves will affect later calculations. Consequently, even
for a blower having a particular fan being driven by a motor at a particular
speed and designed so as to achieve a particular difference in deviation angle
and average tangential velocity that each fall within the claimed ranges, the
number of and variability in the shapes for a spline-shaped wall that will
meet the claim language is unclear because they depend on the number of
different nodal points used to define the initial multinodal spline curve.
For the foregoing reasons, the Specification does not demonstrate
sufficiently that Appellant possessed the claimed subject matter. We, thus,
sustain the Examiner’s rejection of claims 1–4 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.

Rejection II
The Examiner rejects claims 1–4 under 35 U.S.C. § 112(b) as
indefinite. Final Act. 10–11. Under a first basis for the indefiniteness
rejection, the Examiner points out that claims 1 and 4 describe the deviation
angles and average tangential velocities as having values “which do[] not
differ from one another” by more than certain specified percentages. Id. at
10. The Examiner states that “[i]t is unclear to what the percentages refer,
which makes the scope of the claim[s] unclear and renders [the claims]
indefinite.” Id. More specifically, the Examiner appears to take issue with
“how to interpret the claim when comparing values other than the minimum
possible value.” Id. at 3. The Examiner further states that “[m]ultiple
comparisons are being made between multiple points, and according to
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[Appellant], the percentages are supposed to always refer to the minimum
value—even if the minimum value is not one of the points being compared,”
and “[t]he claim does not refer to the percentage as being based on the
minimum value in any of the limitations.” Id. The Examiner reiterates this
first basis for the indefiniteness rejection in the Answer:
The [E]xaminer understands and agrees that if the maximum and
minimum deviation angles did not differ by more than 15% of
the minimum deviation angle, then the other deviation angles
would also satisfy the limitation, however, the claim limitation
does not refer to the maximum and minimum deviation angles.
The [S]pecification also does not refer to the maximum and
minimum values. Appellant is arguing a limitation not present
in the claims. . . . The claim language refers to finding the
difference between any two values, but does not refer to
comparing the difference to a percentage of the absolute
minimum of all possible values.
Ans. 8–9.
Appellant argues that claim 1 is clear that “one deviation angle does
not differ from any other deviation angle by more than fifteen percent” and
“[t]he same applies for the limitation directed to tangential velocity.” Reply
Br. 6. Appellant continues that “the [E]xaminer has not explained why the
maximum and minimum angles would need to be recited in the claim or how
doing so would change the claim.” Id. at 7.
We agree with Appellant that the claim language is clear that a
comparison is being made between the deviation angles at various points
along the blower fan circumference, and similarly, a comparison is being
made between average tangential velocities at various scroll angles. We also
agree with Appellant that the Examiner has not explained adequately why
any reference to maximum or minimum angles would need to be recited in
the claim in order to render the claim language definite. The difference
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between any two values must be within the claimed percentage. Even “if the
maximum and minimum deviation angles did not differ by more than 15% of
the minimum deviation angle, then the other deviation angles would also
satisfy the limitation” (Ans. 8), the Examiner does not adequately explain
why this means that the maximum and minimum deviation angles must be
recited in the claims for the identified claim language to be definite. For the
foregoing reasons, we do not sustain the Examiner’s rejection of claims 1–4
under 35 U.S.C. § 112(b) as indefinite based on the first basis identified by
the Examiner.
Under a second basis for the indefiniteness rejection, the Examiner
states that:
claims 1 and 4 refer to limitations regarding the spline-shaped
wall being adapted and configured to achieve specific results, but
the claims do not define the structure capable of achieving such
results. Claims which recite a description of a problem to be
solved or a function or result achieved by the invention may have
unclear boundaries on the scope of the claim (see MPEP
§2173.05(g), third paragraph for further clarification). In this
case, the claim language fails to set forth the structure required
to achieve said results.
Final Act. 10 (emphasis omitted). The Examiner takes the position that
claim 1 refers to a result to be obtained and “claim 1 does not refer to any
specific structure for the spline-shaped wall, but rather claims every spline-
shaped wall capable of producing the claimed result.” Ans. 10 (emphasis
omitted). Thus, the Examiner takes the position that there are “unclear
boundaries on the scope of the claim.” Id. (quoting MPEP § 2173.05(g)).
Appellant argues that “[w]hether a claim is indefinite under 35 U.S.C.
§ 112(b) requires a determination of whether those skilled in the art would
understand what is claimed when the claim is read in light of the
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specification.” Reply Br. 8 (citing, among other things, Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 805 F.2d 1565 (Fed. Cir. 1986)). Appellant
asserts that “[i]n the present application, one skilled in the art understands
the claim language and understands the specification, and nothing more is
required under the provisions of 35 U.S.C. § 112(b).” Id. Appellant
continues that “[c]laim 1 is sufficiently definite because one skilled in the art
would indeed be able to understand what is claimed (e.g., the spline-shaped
wall) when read in light of the specification.” Id. Appellant adds that “the
structure of the spline-shaped wall and blades, are defined in terms of the
interrelationship of the components and the attributes they must possess in
the completed assembly.” Id. at 9.
For similar reasons to those described in connection with Rejection I,
Appellant does not explain adequately how one of ordinary skill in the art
would know from the claim what structure is encompassed by the claim.
Consequently, the scope of the subject matter intended to be covered by the
claim’s functional language is ambiguous.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–4 under 35 U.S.C. § 112(b) as indefinite based on the second basis
identified by the Examiner.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4 112(a) Written Description 1–4
1–4 112(b) Indefiniteness 1–4
Overall
Outcome
1–4

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TIME PERIOD FOR RESPONSE
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