Ex Parte 7,945,146 et alDownload PDFPatent Trial and Appeal BoardDec 17, 201595001823 (P.T.A.B. Dec. 17, 2015) Copy Citation 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. 95/001,823 11/17/2011 7,945,146 1323.5010 5095 32867 7590 12/18/2015 WILLIAM D. HARE McNeely, Hare & War, LLP 12 Roszel Road Suite C104 PRINCETON, NJ 08540-6234 EXAMINER ENGLE, PATRICIA LYNN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/18/2015 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 ____________________ AMERICAN HEAT MANUFACTURER, LLC Requester, Cross-Appellant, Respondent v. ECOSMART US LLC Patent Owner, Appellant ____________________ Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B21 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Issued May 17, 2011 to Cabrera (hereinafter "the ’146 patent"). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 2 STATEMENT OF THE CASE The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002) from a Final Rejection of claims 19–22, 25–29 and 32–34 (Appeal Brief (hereinafter "App. Br.") 2). Remaining claims are either not subject to reexamination, or have been canceled (App. Br. 1). In addition to the Appeal Brief, the Patent Owner also relies on three declarations of inventor Mr. Cabrera in support of patentability. The Requester relies on its Respondent Brief (hereinafter "Resp. Br.") in support of the Examiner's rejection. The Requester cross-appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's withdrawal of additional grounds of rejections of the same claims (Cross-Appeal Brief of Requester (hereinafter "CABR") 1). We are informed that the ’146 patent was involved in infringement actions that have been settled and dismissed (App. Br. 2). We have jurisdiction under 35 U.S.C. §§ 134 and 315. The ’146 patent is directed to a tankless hot water heater (Title). Representative independent claim 19 reads as follows (App. Br., Claims App., underlining removed, italics added): 19. (new) A tankless hot water heater comprising: a pipe having an inlet and an outlet; at least one heating element configured to heat water flowing through the pipe; at least one sensor configured to measure a temperature of water flowing through the pipe prior to heating by the at least one heating element; at least one sensor configured to measure a flow rate of water flowing through the pipe; at least one input means configured for entering a set point for a temperature of water heated by the at least one heating element; and Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 3 a microprocessor, wherein the microprocessor is configured to receive input parameters for controlling the output temperature of the water during operation, the input parameters consisting of the temperature of water flowing through the pipe prior to heating, the flow rate of water flowing through the pipe, and the set point for a temperature of heated water, and the microprocessor is configured to provide as output a power setting to the one or more heating elements, wherein the microprocessor provides as the output a power setting to the one or more heating elements with the power setting remaining constant while the input parameters remain constant. The Examiner rejects claims 19–22, 25–29 and 32–34 under 35 U.S.C. § 102(b) as anticipated by U.S. Patent No. 4,638,147 to Dytch et al. (Right of Appeal Notice2 3). We AFFIRM the Examiner's rejection as to the Patent Owner's appeal, and find it unnecessary to reach the Requester's cross-appeal. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Dytch discloses a microprocessor controlled through-flow electric water heater (Title). Figure 1 of Dytch showing a preferred embodiment of the invention is reproduced below. 2 Hereinafter "RAN." The Examiner's Answer incorporates by reference the RAN, and thus, we cite to the RAN herein. Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 4 Figure 1 of Dytch reproduced above is a diagrammatic illustration of a preferred embodiment of water heater 10 including water inlet 12, water outlet 13, heating elements 17–21, microprocessor 30, flowrate sensor 31, inlet temperature sensor 36 and outlet temperature sensor 40 (col. 5, ll. 11– 12, 17–18; col. 5, l. 20–col. 6, l. 22; Fig. 1). 2. Dytch discloses that, as to the preferred embodiment illustrated in Figure 1: [m]ounted adjacent the outlet 13, is a further thermistor 40 which provides a further input to a terminal 41 of the control means during start-up of the heater depending on the temperature of the outflowing water. . . . The sensor 40 senses the temperature of the outflowing water initially so that the heater can be calibrated. The sensor detects the temperature of the water, and thus the control means can compensate, for example one or more of the elements 17 to 21 becoming "furred up" and thus its heating efficiency altered, or the flow rate of the water through the canister changing during the life of the heater, again due to "furring up" of the flow path. (Col. 6, ll. 8–22). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 5 3. Dytch discloses that "furring up" means to "become encrusted with calcium salts and other deposits," which can change the amount of heat dissipated by the heating elements or change the flow rate through the heater (col. 2, l. 66–col. 3, l. 7). Previous water heaters were unable to cope with the effects of "furring up" (col. 3, ll. 8–14). 4. Dytch also teaches that, with respect to the preferred embodiment of Figure 1: [w]hen thermistor 40 senses that the temperature of the outflowing water has reached [the initial] temperature [of around 105º F], the heat dissipated by the elements 17 to 21 will be reduced . . . so that a steady state is reached. The sensor 40 then plays no further part in the control of the heating means. When a steady state has been reached, and the water is issuing from the outlet 13 at 105º F., (40.55º C.) any change in flow rate of the inflowing water, for example due to fluctuations in the pressure of the water supply, or change in temperature of the inflowing water, will be detected by the sensors 31 and 36. The microprocessor 30 will respond to these sensed changes, and further increase or reduce the heat dissipated to the water as required, by switching on or off further elements 18 to 21 and/or increasing or decreasing the number of "on" cycles per second of the burst fired element 17, to maintain the temperature of the outflowing water constant . . . . (Col. 9, ll. 5–24, emphasis added; see also col. 8, ll. 62–68). 5. Dytch further discloses that "[i]n a water heater according to the first aspect of the invention, thermistor 40 need not be provided . . . ." (Col. 10, ll. 27–28). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 6 6. Dytch further discloses that: [t]he temperature of the inflowing water may be sensed by a thermistor or other heat sensitive electronic device, and similarly, the temperature sensor on the outlet, where provided, to sense the temperature of the outflowing water may similarly comprise a thermistor. (Col. 4, ll. 29–33, emphasis added). PRINCIPLES OF LAW It is well settled that prior art under 35 USC § 102(b) must sufficiently describe the claimed invention to have placed the public in possession of it. . . . Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his own knowledge to make the claimed invention. In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). A prior art reference is enabling for a claimed invention if the reference enables a person of ordinary skill in the art to make the invention without undue experimentation. Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008) (citations omitted); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth various factors to consider in the undue experimentation analysis). There is a presumption that "both the claimed and unclaimed disclosures in a prior art patent are enabled." Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). The burden of rebutting the presumption of enablement of the cited prior art by a preponderance of the evidence falls on the applicant. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 7 ANALYSIS OF PATENT OWNER'S APPEAL Preliminarily, we note that only those arguments made in the briefs of record in this appeal have been considered. Other arguments not made, or could have been made, have not been considered and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). The Patent Owner argues that the Examiner erred in rejecting the claims as anticipated by Dytch, stating that "a difference between the invention claimed in the ’146 Patent and the disclosure of Dytch [] is the need to measure the outlet temperature to control the power setting applied to the water when the water flow rate, inlet water temperature and desired water outlet temperature remains constant." (App. Br. 8). According to the Patent Owner, Dytch "requires the outlet water temperature to be measured to control the power setting for heating the water." (Id.). The Patent Owner argues that the water heater of Dytch: operate[s] by initially measuring the inlet water temperature (sensor 36), water flow rate (sensor 31) and heated water temperature (sensor 40) and applying power to the heating elements 17–21 with the heated water temperature being measured by sensor 40. Dytch et al. [sic], col. 8, line 60 through col. 9, line 10. Once the desired water temperature is reached, Dytch et al. explains that the sensor 40 "then plays no further part in the control of the heating means." Dytch et al., col. 9, lines 11–12. At col. 10, lines 27–28, Dytch et al. states that the thermistor 40 need not be provided in one aspect of the invention. However, Dytch et al. does not explain how the microprocessor 30 can control the amount of power applied to the heating elements to achieve a steady state temperature without measuring the heated water temperature. (App. Br. 8–9, emphasis added). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 8 The Examiner disagrees, first finding that Dytch anticipates the claims because it "clearly states that the outlet temperature is optional. Therefore, Dytch does disclose that it was known to use the microprocessor without the outlet temperature as an input." (RAN 6). As another basis for the anticipation rejection, the Examiner alternatively finds that even the embodiment of Dytch that utilizes an outlet temperature sensor anticipates the claims (RAN 7). Specifically, the Examiner also finds that: [because] the claims do not require that the outlet temperature sensor is not used during the entire operation of the tankless water heater, Dytch meets the claim limitations after start up. Therefore, even in this embodiment with the outlet temperature sensor being used at startup, Dytch meets the requirements of 35 USC 102(b). (Id., emphasis added). While we only need to agree with the Examiner as to one of the above noted bases to affirm the anticipation rejection, we agree with both bases. Dytch describes a working example of a tankless water heater that includes a thermistor 40 for sensing the outflowing water temperature (FF 1, 2). This example includes a microprocessor that receives the outflowing water temperature as an input parameter for calibrating the water heater at start-up to correcting for the effects of "furring." (FF 2). However, Dytch also discloses that thermistor 40 (i.e., output temperature sensor) "need not be provided." (FF 5; see also FF 6). In such an implementation, Dytch's microprocessor is configured to receive only the temperature of water flowing through the pipe prior to heating, the flow rate of water flowing through the pipe, and the set point for a temperature of heated water as "input parameters for controlling the output temperature of the water during Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 9 operation." This implementation, like other preceding, operative water heaters noted in Dytch, does not appear to correct for the effects of "furring." (See FF 3). The Patent Owner's assertion that the water heater of Dytch "requires the outlet water temperature to be measured" in order to operate (App. Br. 8), is in direct contradiction to the explicit disclosure of Dytch that thermistor 40 (i.e., output temperature sensor) "need not be provided." (FF 5; see also FF 6). The Patent Owner's further argument that Dytch without the outlet temperature sensor is not enabled is unpersuasive not only for the reasons discussed infra, but is also misdirected in view of the language of the claim, which reads on the embodiment without an output temperature sensor, as well as the preferred embodiment that includes an output temperature sensor. Specifically, turning to the claim language first, the Patent Owner's argument that the water heater of Dytch cannot control the "power applied to the heating elements to achieve a steady state temperature without measuring the heated water temperature" (App. Br. 9) is misdirected and unpersuasive because the arguments are based on limitations that do not appear in the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (features not appearing in the claims cannot be relied upon for patentability). Rather, the claim language states: wherein the microprocessor is configured to receive input parameters for controlling the output temperature of the water during operation . . . wherein the microprocessor provides as the output a power setting to the one or more heating elements with the power setting remaining constant while the input parameters remain constant. Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 10 (App. Br., Claims App.). Correspondingly, the claim language at issue is directed to the operation when "the input parameters remain constant," that is, when there is no variation in any of the input parameters. This claim language broadly but reasonably speaking, encompasses operation of the water heater after start- up is finished. (RAN 7; see also FF 4, quoting col. 9, ll. 11–12). After the system of Dytch attains the desired temperature, and is in steady state operation with the input parameters (such as inlet temperature, water flow rate and the set point) remaining constant, the microprocessor of Dytch provides an output power setting that remains constant as required by claim 19 (FF 2–4). The fact that, in the preferred embodiment of Dytch, an outlet temperature sensor3 is provided for the initial "calibration" during start-up (FF 2, 3) does not diminish the fact that Dytch also discloses that the output temperature sensor does not play any further part after steady state is attained (FF 4). Nothing in claim 19 requires the entire operation of the water heater, which may include different transitions or changes in input, to be attained without an output temperature sensor. Consistent therewith, we also agree with the Requester that "[i]f the value of the input parameters stay the same the power setting output will be the same" (Resp. Br. 6), and that: 3 While we do not rely on the following in our decision, we observe that mere provision of the output temperature sensor does not detract from the disclosed device of Dytch from anticipating claim 19. In this regard, as noted by the Requester, even the system taught by the reexamined ’146 patent includes an output temperature sensor 135 (Resp. Br. 7 citing ’146 patent, col. 4, ll. 52–54; col. 5, ll. 28–31, 45–48). Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 11 the [P]atent [O]wner's claims are not limited to any specific point in time. However, as admitted by the patent owner, the water outlet sensor 40 is used at start-up (See Col. 6, ll. 8–15.) in the preferred embodiment of Dytch. Thus, for most of the operation of the preferred embodiment of Dytch, the water outlet sensor 40 is not needed or referred to. (Id. at 10). Indeed, declarant and inventor, Mr. Cabrera, also appears to acknowledge that, in steady state, "the power setting remain[s] constant while the input parameters remain constant" as required by claim 19 in his statement: Steady Stage Column 9, Lines 11-12: "The sensor 40 then plays no further part in the control of the heating means." This statement is only true in the sense that the heating means do not need to be controlled because a steady state has been achieved. (2nd Decl. Cabrera, pg. 4). Thus, in view of the above, the Patent Owner's assertion that the water heater of Dytch "requires the outlet water temperature to be measured" (App. Br. 8) is unpersuasive because Dytch explicitly discloses that "thermistor 40 need not be provided" (FF 5; see also FF 6). In such an embodiment in which no thermistor 40 is provided, Dytch anticipates the invention of claim 19. Moreover, even in the preferred embodiment wherein such outlet water temperature sensor is provided, Dytch teaches that outlet water temperature sensor is used in the context of start-up and calibration, but in steady state, the sensor "plays no further part in the control of the heating means." (FF 2–4). Because claim 19 is directed to the operation when "the input parameters remain constant," which encompasses steady Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 12 state operation, the preferred embodiment of Dytch also anticipates the claim as well, as found by the Examiner (RAN 7). As noted supra, the Patent Owner also argues that "the rejection of the claims over Dytch et al. is based on a disclosure that is so sufficiently riddled with ambiguities and inconsistencies as to be nonenabling for a tankless hot water heater operated according to the rejected claims." (App. Br. 8; see also id. at 10). In this regard, the Patent Owner argues that Dytch is "ambiguous and inconsistent as to whether the outlet water temperature is measured to control the power applied to the heater . . . ." (Id. at 10). However, for the reasons generally discussed above, we do not find the Dytch disclosure to be ambiguous or non-enabled as to the operation recited in claim 19 wherein "the power setting remain[s] constant while the input parameters remain constant." The Patent Owner's arguments based on the lack of detail in Dytch (App. Br. 13–16) are not persuasive, and we discern no need for Dytch to disclose additional details of the programming in order to enable an anticipatory embodiment as to the subject matter claimed "wherein the microprocessor provides as the output a power setting to the one or more heating elements with the power setting remaining constant while the input parameters remain constant." As discussed supra, as long as the input parameters remain constant, the power setting in the water heater of Dytch would remain constant. The Patent Owner further argues that Dytch also discloses that the inlet temperature and flow sensors are also optional, and if these sensors are optional, "then Dytch et al. must rely on measuring the outlet water temperature to determine how much power to apply to the heating elements Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 13 to control the outlet water temperature." (App. Br. 11–12, citing Dytch, col. 2, ll. 39–42). Accordingly, the Patent Owner argues that there is no enabling disclosure in Dytch of a hot water heater system that operates with the outlet water temperature sensor as well as the water flow rate and inlet water temperature sensors "all being absent, which can exist according to a fair reading Dytch et al., and which must exist in Dytch et al. to support an anticipation rejection." (Id.). However, we do not agree that the Patent Owner's characterization of Dytch is a "fair reading" thereof. In our view, a person of ordinary skill in the art would understand Dytch as disclosing a preferred embodiment of a water heater that includes inlet water temperature sensor 36, water flow rate sensor 31, and outlet water temperature sensor 40 (col. 5, l. 48–col. 6, l. 22; Fig. 1). A person of ordinary skill in the art also would understand Dytch as disclosing, albeit as non-preferred alternative embodiments, wherein: (A) outlet water temperature sensor is optional (FF 4–6); and (B) inlet water temperature and/or water flow rate sensors are optional (col. 2, ll. 39–42). As to the last embodiment, we discern no technical reason why the inlet water temperature and/or water flow rate sensors cannot be optional in view of the presence of an outlet water temperature sensor. The Patent Owner's argument that Dytch must be enabled with respect to an embodiment of a water heater wherein all of these sensors are omitted (App. Br. 12) is based on an unreasonable and forced reading of Dytch. As noted, there is a presumption that "both the claimed and unclaimed disclosures in a prior art patent are enabled" and the Patent Owner has the burden of rebutting this presumption of enablement. Amgen, 314 F.3d at Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 14 1355; Sasse, 629 F.2d at 681. Under the facts before us, the Patent Owner has not satisfied its burden of establishing that Dytch did not enable a person of ordinary skill in the art to make the claimed tankless water heater claimed for the reasons discussed above; or that undue experimentation would have been required. Impax, 545 F.3d at 1314; Wands, 858 F.2d at 737. As also noted, the Patent Owner submitted several declarations of inventor Mr. Cabrera, but these declarations do not persuasively address the issues discussed supra. While we have reviewed and considered the entirety of these declarations as they may pertain to the rejection on appeal, the contents thereof do not change the analysis set forth supra. In conclusion, in view of the above, we are not persuaded that the Examiner erred in rejecting claim 19 as anticipated by Dytch. The Patent Owner also does not separately argue any of the other claims on appeal. In particular, as to independent claims 25 and 32, the Patent Owner merely relies on the same arguments discussed above relative to the limitation "the power setting remaining constant while the input parameters remain constant" and enablement in support of their patentability (App. Br. 16). The Patent Owner's arguments are not persuasive for the reasons discussed supra. The Patent Owner also merely relies on the dependencies for patentability of claims 21, 22, 26, 28, 29, 33 and 34 that ultimately depend from one of the independent claims 19, 25 or 32 (id.), and thus, these claims fall with their corresponding claims from which they depend.4 As noted, any arguments that could have been made as to the various claims but not 4 We note that Patent Owner omits dependent claim 20 from the listing (App. Br. 16). Thus, the rejection of dependent claim is summarily affirmed. Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 15 made are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). Accordingly, we affirm the Examiner's rejection of claims 19–22, 25–29 and 32–34. CROSS-APPEAL OF REQUESTER The Requester cross-appeals the Examiner's withdrawal of six additional grounds of rejection of the reexamined claims (CABR 1, 4). However, for the reasons discussed supra, we affirm the Examiner's rejection of all claims that are subject of the cross-appeal. Correspondingly, because the withdrawn rejections that are subject of the cross-appeal are superfluous, we find it unnecessary to reach the cross-appeal. CONCLUSION We affirm the Examiner's rejection of claims 19–22, 25–29 and 32– 34, and decline to reach the Requester's cross-appeal. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2015-002241 Reexamination Control 95/001,823 Patent US 7,945,146 B2 16 llw Patent Owner, Appellant William D. Hare MCNEELY, HARE & WAR, LLP 12 Roszel Road Suite C104 Princeton, NJ 08540-6234 Requester, Cross-Appellant, Respondent Daniel S. Polley, P.A. 7251 West Pallmetto Park Road Suite 202 Boca Raton, FL 33433 Copy with citationCopy as parenthetical citation