Richard Fennelly

Patent Trials and Appeals Board

Sep 3, 2020

2020002284 (P.T.A.B. Sep. 3, 2020)

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.
15/731,262 05/12/2017 Richard P. Fennelly 5347
7590 09/03/2020
Richard P. Fennelly
2320 Depeyster Dr.
Cortlandt Manor, NY 10567
EXAMINER
HINCAPIE SERNA, GUSTAVO A
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
09/03/2020 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 RICHARD P. FENNELLY

Appeal 2020-002284
Application 15/731,262
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies CoilPod LLC as assignee and sole real party in interest.
Appeal Br. 1.
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Application 15/731,262

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STATEMENT OF THE CASE
The Specification
The Specification discloses a “METHOD OF RETROFITTING
REFRIGERATION UNITS FOR MORE EFFICIENT OPERATION.”
Spec., Title.
The Claims
Claims 1–8 are rejected. Final Act. 1. No other claims are pending.
Id. Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below.
1. A method of retrofitting a refrigeration unit, which
contains dirty condenser coils, for more efficient operation
which comprises:
(a) cleaning the dirty condenser coils which are contained
in an enclosure, having an opening that had been covered with a
cover containing vents that allowed the entry of dust and other
debris thereto, within such refrigeration unit; and
(b) covering the opening to the enclosure after those coils
have been cleaned with a cover that comprises an air-cleaning
blower mounted on the outer surface of the cover over an
orifice communicating with the enclosure to supply cleaned air
to the enclosure containing the condenser coils, said retrofitted
cover otherwise being non-vented.
Appeal 9 (paragraphing adding).
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Application 15/731,262

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The Examiner’s Rejections
There are two rejections before us, both of which are pursuant to
35 U.S.C. § 103:
1. claims 1–4 as unpatentable over Yoo,2 Roston,3
Aeroconditioner,4 and Hellwig5 (Final Act. 2); and
2. claims 5–8 as unpatentable over Yoo, Roston, Aeroconditioner,
Hellwig, and Lamstaes6 (id. at 4).
DISCUSSION
Rejection 1
Appellant argues against the rejection of all claims together. Appeal
Br. 2–7. We choose claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Yoo “discloses a method of retrofitting a
refrigeration unit” and all of the subject matter of claim 1, save step (b).
Final Act. 1 (citing Yoo, Abstract and Fig. 7). The Examiner found that
Roston teaches “air-cleaning blowers are widely used in customized designs
that include the use of air-cleaning blowers attached into another machine or
ductwork . . . for the purpose of more effectively supplying clean air while
doing so more reliably, economically, and effectively for [sic, prolonged]
periods.” Id. at 2–3 (citing Roston 4:36–43). The Examiner found that
Aeroconditioner teaches air-cleaning blowers (1) come with integral covers

2 US 8,182,611 B2, issued May 22, 2012 (“Yoo”).
3 US 9,259,675 B2, issued Feb. 16, 2016 (“Roston”).
4 “How Aero Conditioner’s Air-Cleaning BlowersTM Differ from Filters and
Canisters” and “Air Cleaners Used for Feed Air” (both downloaded/printed
Aug. 12, 2015, from www.aeroconditioner.com (collectively,
“Aeroconditioner”). See Nov. 20, 2017, List of References Cited.
5 US 4,942,805, issued July 24, 1990 (“Hellwig”).
6 US 6,976,368 B1, issued Dec. 20, 2005 (“Lamstaes”).
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Application 15/731,262

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to facilitate mounting and (2) are commonly used to help keep dust off coils
and other equipment, thereby reducing costs of operation. Id. at 3 (citing
Aeroconditioner). The Examiner found that Hellwig teaches “air circulation
fans (14) can be provided in removable panel cover portions (10, 12) for the
purpose of improving circulation of air or removing/dissipating heat as an
arrangement provided as a retrofit in the field.” Id. at 3 (citing Hellwig,
Abstract, 1:30–34). Based on these findings, the Examiner concluded that it
would have been obvious “to incorporate in Yoo the teachings of Roston,
Aeroconditioner and Hellwig to cover the opening to the enclosure of Yoo,
after those coils have been cleaned, with” a cover having the structure
recited in step (b) “in order to keep dust off the condenser coil, optimizing
reliability and reducing costs of operation of the refrigeration unit.” Id.; see
also id. at 5:
The combination of Roston and Aeroconditioner provides the
motivation of more effectively supplying clean air into another
machine or even a ductwork by doing so more reliably,
economically, and effectively for prolonged periods (Roston)
and to different environments such evaporative coolers,
furnaces, and air compressors, etc. to help keep dust off coils
and other equipment, reducing costs of operation
(Aeroconditioner), while the teachings of Hellwig are pertinent
to air circulation fans provided in removable panel cover
portions as a retrofit in the field (see Hellwing [sic, Hellwig]
abstract). A person of skill in the art will find those combined
teachings desirable and pertinent to modify the cleaning method
of Yoo in order to more effectively supplying clean air while
doing so more reliably, economically, and effectively for
prolongued [sic, prolonged] periods while reducing costs of
operation.
Appellant does not dispute any of the Examiner’s underlying findings
regarding what the cited prior art references teach, but for the Examiner’s
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finding that both Yoo and Hellwig teach the concept of “retrofitting.”
Appeal Br. 3–4. With respect to Yoo, Appellant argues that “it is incorrect
for the Examiner to preliminarily state that it ‘discloses a method of
retrofitting a refrigeration unit’, with his citation of Fig. 7 therein.” Id. at 3
(quoting Final Act. 2)). With respect to Hellwig, Appellant argues it “too is
absent of any teaching, suggestion or motivation of any type of retrofit
operation, let alone the one particularly recited in Claim 1.” Id. at 4.
These arguments do not apprise us of error in the Examiner’s
rejection. First, Hellwig explicitly teaches retrofitting. Hellwig, Abstract
(“Thus, the air circulation arrangement may be provided as an original
specification or added as a retrofit in the field.”), 3:4–9 (“This arrangement
also allows the retrofit of panels in accordance with the changing
requirements of the user and in accordance with the changing characteristics
of the environment.”). Second, Yoo implicitly teaches the concept of
retrofitting by disclosing providing a vacuum cleaning apparatus (66) to a
refrigerator apparatus (60) as a long-term solution to the problem of dirty
evaporator coils. Yoo 1:52–55, Fig. 7.
Appellant also argues that its own Specification discloses prior art
solutions that teach away from the claimed invention. Appeal Br. 5 (citing
Spec. 2:4–10). According to Appellant’s Specification, those prior art
solutions are “[c]ondensing units [that] have been modified to include
automated brushing means (see U.S. Patent Publication No. 2007/0062211)
or [in which] the direction of rotation of the fan has been designed to reverse
periodically (see U.S. Patent Nos. 6,792,769 and 7,024,878).” Spec. 2:5–8.
This argument is not persuasive for multiple reasons.
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First, an alternative solution to a problem does not constitute teaching
away from a claimed solution to the problem. This is true even if the
alternative would be preferred. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (“The prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from . . . alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005) (“[A] reference will teach away when it suggests that the
developments flowing from its disclosures are unlikely to produce the
objective of the applicant’s invention. A statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.” (citations omitted)).
Second, in the very next sentence of the Specification, Appellant
concedes that it was also known in the prior art to provide the panel/grille
with clean air by “placing filter media over the panel or grille containing the
vents to trap dust and other debris before it enters the enclosure holding the
coils.” Spec. 2:8–10. Thus, even if the other solutions properly could be
characterized as teachings away (here, they are not), they would not dictate a
reversal of the Examiner’s rejection. See Medichem S.A. v. Rolabo S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior art contains ‘apparently
conflicting’ teachings (i.e., where some references teach the combination
and others teach away from it) each reference must be considered ‘for its
power to suggest solutions to an artisan of ordinary skill. . . . consider[ing]
the degree to which one reference might accurately discredit another.’”)
(quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)).
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Appellant also argues that the “Aeroconditioner Pictame document,”
which admittedly “is dated after the filing date of the instant application, . . .
clearly demolishes any argument that the applicant’s instant invention
would have been obvious to the person of ordinary skill in the art.” Appeal
Br. 6. Appellant explains that this document proves that “the problem of
coil fouling is to be solved according to this document by redesign of the
spacing of the coils, not by any type of retrofit to the cover, as claimed
herein, where an air-cleaning blower is employed to pre-scrub the dirty air
before it contacts the coils.” Id. at 7. This argument is also unpersuasive of
error in the Examiner’s rejection. The “Aeroconditioner Pictame document”
might be evidence that a person of ordinary skill in the art sought to solve
the problem of dirty coils through a different approach than Appellant. That
document, however, proves nothing vis-à-vis the Examiner’s rationale for
modifying the asserted prior art teachings from Yoo, Roston,
Aeorconditioner, and Hellwig. Two solutions can be obvious at the same
time. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from . . . alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.”).
None of Appellant’s arguments apprise us of error in the Examiner’s
rejection of claim 1. Accordingly, we affirm the rejection of claim 1, as well
as that of claims 2–4, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 2
Each of claims 5–8 ultimately depends from claim 1 and additionally
recites “placing in the refrigeration unit a thermal sensor.” Appeal Br. 9.
Appellant’s sole argument, unique to Rejection 2, is that “[t]he additional
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citation of Lamstaes, which only discloses a thermal sensor, fails to cure the
lack of suggestion of the applicant’s invention” in Rejection 1. Id. at 7.
Thus, for essentially the same reasons as discussed above, we likewise
affirm the rejection of claims 5–8.

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 103 Yoo, Roston,
Aeroconditioner,
Hellwig
1–4
5–8 103 Yoo, Roston,
Aeroconditioner,
Hellwig,
Lamstaes
5–8
Overall
Outcome
1–8

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