Ex Parte Anderson et al

Patent Trial and Appeal Board

Dec 28, 2017

13794946 (P.T.A.B. Dec. 28, 2017)

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.
13/794,946 03/12/2013 Timothy D. Anderson 047177-9536-US00 1382
23409 7590 01/02/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
VAZQUEZ, ANA M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY D. ANDERSON, KEN NGUYEN, and
PAUL R. LAURENTIUS1
Appeal 2016-007908
Application 13/794,946
Technology Center 3700
Before MICHELLE R. OSINSKI, FRANCES L. IPPOLITO, and
BRENT M. DOUGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Hussmann Corporation (“Appellant”) is the applicant as provided in 37
C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal 2016-007908
Application 13/794,946
THE CLAIMED SUBJECT MATTER
Claims 1, 9, and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1, A merchandiser comprising:
a case defining a product display area and including a
canopy having a first air outlet in fluid communication with a.
primary air passageway within the case to direct a primary air
curtain into the product display area, the canopy further having a
second air outlet in fluid communication with a secondary/ air
passageway within the case to direct: a secondary/ air curtain into
the product display area;
a divider coupled to the canopy between the primary air
passageway and the secondary/ air passageway/, the divider
providing airflow communication between the primary/ air
passageway and the secondary air passageway upstream of the
first and second air outlets, the airflow/ communication provided
through the divider; and
a wall extending through the canopy to the divider to
rn.ain.tain air separation between the primary air passageway/ and
the secondary air passageway upstream from the di vider.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Gerweck US 3,369,375
Bush US 3,935,803
Subera US 4,283,922
Rosanio US 4,938,034
THE REJECTIONS
I. Claims 1—5, 7—11, 13—15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Subera and Gerweck. Final Act. 2—16.
II. Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Subera, Gerweck, and Rosanio. Id. at 16—19.
Feb. 20, 1968
Feb. 3, 1976
Aug. 18, 1981
July 3, 1990
2
Appeal 2016-007908
Application 13/794,946
III. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Subera, Gerweck, and Bush. Id. at 19—21.
IV. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Subera, Gerweck, Bush, and Rosanio. Id. at 21—24.
OPINION
Rejection I
The Examiner finds that Subera teaches most of the limitations of
independent claim 1, including, inter alia, (i) a divider coupled to a canopy
between a primary air passageway (air flow conduit 56) and a secondary air
passageway (secondary air band conduit 66); and (ii) a wall extending
through the canopy to the divider to maintain air separation between the
primary air passageway and the secondary air passageway upstream from
the divider. Final Act. 3 (citing Subera Fig. 7); see also id. at 4 (including
Examiner-annotated reproduction of Figure 7 of Subera). The Examiner
acknowledges that Subera fails to disclose that the divider provides airflow
communication between the primary air passageway and the secondary air
passageway upstream of a first air outlet (in fluid communication with the
primary air passageway) and a second air outlet (in fluid communication
with the secondary air passageway). Id. at 5.
The Examiner finds that Gerweck teaches a “divider (61, Fig. 5)
providing airflow communication (through perforated plate 61, Fig. 5)
between the primary air passageway (42, Fig. 5) and the secondary air
passageway (60, Fig. 5) upstream of [] first (44a, Fig. 5) and second (62,
Fig. 5) air outlets.” Id. at 5—6. The Examiner finds that Gerweck provides
airflow communication “in order to separate a cold refrigerated air being
emitted from an upper supply chamber (17, Fig. 5) from a room ambient
3
Appeal 2016-007908
Application 13/794,946
air.” Id. at 6 (citing Gerweck, 5:2—6). The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art
to provide a perforated divider as taught by Gerweck, providing
airflow communication between the primary air passageway and
the secondary air passageway upstream of the first and second
air outlets of Subera, in order to create a more effective thermal
barrier, by separating the refrigerated cold airflow from the
ambient air.
Id. (citing Gerweck, 5:2—8).
Gerweck teaches that “[cjurtain air within a front portion 63 of the
duct 42 is divided with a portion of the divided air flowing downwardly and
being discharged through a curtain air outlet 44a and another portion
discharged downwardly through the discharge opening 62 of the duct 60.”
Gerweck, 4:72—5:2. Gerweck further teaches that “dividing of the curtain air
creates a more effective thermal barrier,” with “the[] two portions of air,
which are discharged through the opening 62 and outlet 44a respectively,
form[ing] two laminar air curtains which separate the cold refrigerated air
being emitted . . . from the upper supply chamber 17 from the room ambient
air.” Id. at 5:2—8.
Appellant argues that “there is no objective reason . . . why one of
ordinary skill in the art would modify Subera as alleged by the Examiner.”
Appeal Br. 7. More particularly, Appellant argues that “Subera’s two
separate airflows already provide the thermal barrier referred to in
Gerweck.” Id. We agree that the Examiner’s articulated reasoning lacks a
rational underpinning. Gerweck provides airflow communication between
two passageways for the specific purpose of creating a divided airflow from
a single stream of air, with Gerweck finding the divided airflow provides a
more effective thermal barrier. Because Subera already provides a divided
4
Appeal 2016-007908
Application 13/794,946
airflow (i.e., two portions of air discharged from two openings), one of
ordinary skill in the art would not be led to provide airflow communication
between the already divided airflow “in order to create a more effective
thermal barrier” (Final Act. 6), as alleged by the Examiner.
The Examiner takes the position that one having ordinary skill in the
art
would recognize that by providing the divider having
perforations as taught by Gerweck between the primary air
passageway and the secondary air passageway of Subera, it will
create a third air curtain formed by the combination of the cold
air flowing through the first air passageway, and warm air
flowing through the second air passageway
and that this “third air curtain [would] provide [] a more effective thermal
barrier.” Ans. 6—7. We find this reasoning to be based on impermissible
hindsight, as it appears to be only with the benefit of Appellant’s
Specification that one of ordinary skill would understand the benefit of
allowing airflow communication between two separate passageways
upstream of the respective air outlets of the two separate passageways so as
to form a third merged air curtain with a different airflow profile. See Reply
Br. 5 (“[NJothing apart from [Appellant’s] specification teaches or suggests
that mixing the air would result in a more efficient thermal barrier,” and
“[accordingly, the modification suggested by the Examiner is impermissible
hindsight.”)
Although we appreciate that “the rationale to modify or combine the
prior art does not have to be expressly stated in the prior art. . . [and] may be
reasoned from knowledge generally available to one of ordinary skill in the
art [or] established scientific principles” (Ans. 6 (emphasis omitted)), the
Examiner has not provided sufficient evidentiary support in the record to
5
Appeal 2016-007908
Application 13/794,946
support the Examiner’s stated conclusion that one of ordinary skill in the art
would recognize the benefits of the creation of an air curtain formed by the
combination of air from two separate passageways and, thus, would be led to
provide a divider having perforations between the two passageways of
Subera. See Ans. 6—7.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of independent claim 1, and claims 2—5, 7, and 8 which depend therefrom,
under 35 U.S.C. § 103(a) as unpatentable over Subera and Gerweck.
Because the Examiner relies on the same deficient reasoning in connection
with independent claims 9 (Final Act. 12) and 13 (id. at 15), we also do not
sustain the Examiner’s rejection of claims 9 and 13, and claims 10, 11, 14,
15, 19, and 20 which depend therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Subera and Gerweck.
Rejections II—IV
The rejections of claims 6, 12, and 16—18 rely on the same deficient
reasoning. Final Act. 16, 19, 22. Thus, we do not sustain the rejections,
under 35 U.S.C. § 103(a), of: claims 6 and 12 as unpatentable over Subera,
Gerweck, and Rosanio; claims 16 and 17 as unpatentable over Subera,
Gerweck, and Bush; and claim 18 as unpatentable over Subera, Gerweck,
Bush, and Rosanio.
DECISION
The Examiner’s decision to reject claims 1—20 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
6