Ex Parte Bush

Patent Trial and Appeal Board

Mar 8, 2018

12854318 (P.T.A.B. Mar. 8, 2018)

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.
12/854,318 08/11/2010 Joseph P. Bush 129A-059T 7556
23400 7590 03/12/2018
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
EXAMINER
SHAIKH, MERAJ A
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @ poszlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH P. BUSH1
Appeal 2016-003490
Application 12/854,318
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-13 and 25-31, which constitute all the claims
pending in this application. Final Act. 1 (Office Action Summary). Claims
14-24 have been canceled. Br. 32 (Claims Appendix). Appellant’s counsel
provided oral argument on February 27, 2018. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the real party in interest is Mitsubishi Electric
Corporation. See Br. 1.
Appeal 2016-003490
Application 12/854,318
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to heat pumps and,
more particularly, to systems and methods that facilitate low ambient
temperature cooling in variable refrigerant flow heat pumps.” Spec. ^ 1.
Apparatus claim 1 is the sole independent claim, is illustrative of the claimed
subject matter, and is reproduced below:
1. An outdoor heat pump unit of a heat pump based air
conditioning and heating system comprising:
(i) an enclosure configured to enclose at least coil surfaces of the
heat pump, the enclosure including coil openings that expose the coil
surfaces to conditions outside the enclosure, the coil openings being
arranged in at least one of front, back and side panels of the enclosure,
(ii) a condenser fan mounted on the enclosure and in
communication with an interior of the enclosure, the condenser fan
configured to draw air in through the coil openings of the enclosure
and across a heat exchanger positioned within the interior of the
enclosure,
(iii) a discharge hood mounted on the top of the enclosure over the
condenser fan, the discharge hood including a discharge outlet,
(iv) a damper mounted within the outlet of the discharge hood and
configured to adjust the opening of the outlet as a function of outside
ambient air temperature, and
(v) a wind deflector mounted on the enclosure and configured to
prevent wind from entering an area of the coil surfaces within the
enclosure, the wind deflector including a face panel covering the coil
openings, first and second side panels extending from side edges
of the face panel to the enclosure, and top and bottom edges of the
face panel defining top and bottom ends of the wind deflector,
wherein
(vi) an airflow opening is configured to be formed between the
enclosure and the face panel of the wind deflector and the airflow
opening is located at least at one of a top and a bottom of the wind
deflector and no airflow opening is formed in the face panel and the
side panels of the wind deflector, the face panel and the side panels of
the wind deflector being closed to airflow therethrough, and
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Appeal 2016-003490
Application 12/854,318
(vii) the wind deflector includes a top plate being a flat plate and
extending upward at an angle from the top edge of the face panel
toward a midway point along top edges of the first and second side
panels.
REFERENCES
Ospelt US 4,149,590 Apr. 17, 1979
Jones US 4,589,475 May 20, 1986
Baer US 5,709,100 Jan. 20, 1998
Akhtar US 6,688,966 B2 Feb. 10, 2004
Bae US 2005/0076671 A1 Apr. 14, 2005
Morvillo US 2010/0304627 A1 Dec. 2, 2010
Kimura JP 2008-116145 A May 22, 2008
REJECTIONS ON APPEAL
Claims 1—4 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimura, Baer, Bae, and Ospelt.2
Claims 13 and 25-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimura, Baer, Ospelt, and Bae.
Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Kimura, Baer, Bae, Ospelt, and Akhtar.
Claims 8-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kimura, Baer, Bae, Ospelt, Akhtar, and Jones.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kimura, Baer, Bae, Ospelt, Akhtar, Jones, and Morvillo.
2 The Final Office Action only references Kimura, Baer, and Ospelt. Final
Act. 3. However, in both the Advisory Action dated February 4, 2015 and
the following Examiner’s Answer, the rejection of these claims relies on the
combination of Kimura, Baer, Bae, and Ospelt. For reasons explained
below, we review the Examiner’s reliance on the four cited references.
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Appeal 2016-003490
Application 12/854,318
ANALYSIS
The rejection of claims 1-4 and 31
as unpatentable over Kimura, Baer, Bae, and Ospelt
Regarding claims 1-4 and 31, Appellant notes that in the Final Office
Action, the Examiner relied only on the three references to Kimura, Baer,
and Ospelt. Br. 9; see also Final Act. 3. However, Appellant also notes that
in the subsequent Advisory Action dated February 4, 2015, the Examiner
relied on a fourth reference to Bae. Br. 8-9. Appellant “submits that it is
necessary for the Examiner to precisely set forth the rejections of the claims
on appeal in the Examiner's Answer.” Br. 9. This seems to have been
accomplished by the Examiner’s statement, “in the Advisory action dated
2/4/2015, the amended claims 1-4 and 31 are rejected over Kimura, Baer,
Bae and Ospelt.” Ans. 7; see also Ans. 12. Furthermore, 37 C.F.R.
§ 41.39(a)(1) states that the Examiner’s Answer incorporates the grounds of
rejection previously set forth, including those “as modified by any advisory
action.” It is not disputed that the Examiner’s additional reliance on Bae
was reported in the February 4, 2015 Advisory Action, and as such, we do
not ascribe this additional reliance by the Examiner on Bae to be in error.
Appellant argues claims 1—4 and 31 together (Br. 12-18) and also
presents arguments specific to claim 31 (Br. 18-21). We select claims 1 and
31 for review, with claims 2-4 standing or falling with claim 1. See 37
C.F.R. §41.37(c)(l)(iv).
Claim 1
The Examiner primarily relies on the teachings of Kimura for
disclosing the limitations of claim 1 and particularly for disclosing the
recited “wind deflector” having a “face panel.” Final Act. 4 (referencing
Kimura’s “windbreak plate 17” that includes a “front surface”). However,
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Appeal 2016-003490
Application 12/854,318
the Examiner acknowledges that Kimura does not teach a wind deflector
having side panels or a top plate, and relies on Baer for such teachings.3
Final Act. 5. Appellant contends, “[t]he Examiner has misinterpreted and
misconstrued the teachings of Baer” on this point.” Br. 13.
When addressing Baer, the Examiner identified “side panels of the
structure 50 containing panels 52, 54, Figure 1.” Final Act. 5; see also Ans.
7. Appellant contends that “panel 54 has no connection with the removable
box-like air intake structure 50 proposed by Baer.” Br. 13: see also id. at 17
(“inconsistent representations shown in the figures of Baer”). There does
seem to be some confusion on the Examiner’s part regarding the relationship
between item 50 and panel 54 shown in Figure 1 of Baer. Side panel 54 is
actually illustrated as being located on item 40 and/or 46, not 50, yet item 50
is also depicted as having a side panel (which is not numbered). See Baer
6:7-9; Figs. 1, 3-5. Despite this apparent discrepancy, Baer describes item
50 as being “box-like” (Baer 6:9) and Appellant also describes structure 50
as being “box-like.” Br. 13. As such, it is reasonable to ascribe a side panel
to this “box-like” structure.
Appellant continues under the assumption “that panel 52 of Baer
corresponds to one of the first and second side panels of the wind deflector
claimed on appeal.” Br. 13. Appellant thereafter argues “viewing Fig. 1 of
Baer, panel 54 could be considered a right side panel” but that “Appellant
can find no discussion or showing in Baer concerning a left side panel.” Br.
3 The Examiner states that Bae also “discloses side panels on both side[s] of
the wind deflector face panel” as well as “slanted top and bottom plates.”
Ans. 8, 10.
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Appeal 2016-003490
Application 12/854,318
13. Overlooking the discrepancy in panel number identification, even if we
agree with Appellant that Baer has “no discussion or showing” regarding a
left side panel, the above understanding of item 50 being “box-like”
provides sufficient support that Baer teaches oppositely spaced side panels.
This is also borne out from a view of Figures 1 and 3-5 of Baer. See also
Ans. 8 (Baer “implies that the other side of the structure contains
similar/same side panels”).
Turning now to the additional reference to Bae, the Examiner relied
on Bae for teaching a “top plate extending upward from the top edge of the
face panel toward a midway point along top edges (top flat plate extending
upward from the face panel toward a point midway along the top edges,
Figure 12).” Ans. 6; see also id. at 8-10. Appellant contends, “the
Examiner does not identify the top plate, the base plate, the top, etc. in
Figure 12 of Bae.” Br. 14. We note that Appellant is not arguing that one
skilled in the art is unable to identify the angled top plate (or other plates)
illustrated in Figure 12 of Bae, only that the Examiner does not identify such
plate. However, Appellant has no difficulty in making such an identification
themselves because Appellant replicates Figure 12 of Bae and annotates
same identifying “the ‘top plate’” as well as other surfaces therein. Br. 14-
15. Appellant’s annotation of Figure 12 of Bae is replicated below.
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Appeal 2016-003490
Application 12/854,318
Bae
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The above is Appellant’s annotation of Figure 12 of Bae
identifying a “top plate” therein.
In view of the above, we do not find it reversible error for the
Examiner to have not more explicitly identified the angled top plate.
As indicated above, the Examiner also states, the “Bae reference
discloses side panels” (Ans. 8) but Appellant contends, “[t]he interpretation
of Fig. 12 of Bae proffered by the Examiner in the Advisory Action has no
side panels.” Br. 15. A review of Figure 12 of Bae above does not support
Appellant’ assertion. Figure 12 shows a side view that clearly depicts a side
panel. Further, Appellant contends, “Fig. 12 of Bae cannot be interpreted as
showing that the alleged ‘top plate’ is extending upward at an angle.” Br. 15
(asserting that Figure 12 is a “perspective view”). Appellant references
Figures 1 and 51 of Bae as support (Br. 16), but these are not the figures
relied on by the Examiner (Ans. 6). Additionally, Figure 12 of Bae is a side
view (Bae ^ 29) and, as noted supra, a review of Figure 12 of Bae above
does not support Appellant’s assertion.
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Appeal 2016-003490
Application 12/854,318
Thereafter, Appellant again addresses Baer to the effect that “air
intake structure 50 proposed by Baer is not mounted on the enclosure and
arranged or configured to cover the coil openings and to prevent wind from
entering the coil face area, as required in the claims on appeal.” Br. 16; see
also id. at 18. However, the Examiner relied on the primary reference to
Kimura for such teachings, not Baer. Ans. 3. Hence, Appellant’s focus on
Baer is not persuasive of Examiner error.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1—4 as being obvious over Kimura,
Baer, Bae, and Ospelt.
Claim 31
In addition to the arguments already addressed, Appellant further
contends that the Examiner’s “reason for combining the teachings of Kimura
and Baer is a fiction created to support hindsight reasoning of obviousness.”
Br. 19; see also id. at 20. To be clear, the reason expressed by the Examiner
for the combination of Kimura and Baer is “in order to protect the exhaust
blower from debris and extreme weather conditions with a hood above the
blower and to also prevent debris from entering the enclosure through the
intake and also to prevent the birds from making nest[s] at the inlet or
exhaust of the enclosure.” Ans. 6; see also id. at 9. Both the wind deflector
17 of Kimura and the air intake 50 of Baer are exposed to the weather, and
the Examiner’s proffered reasons for modifying the wind deflector 17 of
Kimura to be a box-like air intake, as taught in Baer, are based on rational
underpinnings. Thus, Appellant’s argument is not persuasive that the
Examiner failed to articulate reasoning with rational underpinning in order
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Appeal 2016-003490
Application 12/854,318
to support the legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 31 as being obvious over Kimura,
Baer, Bae, and Ospelt.
The rejection of claims 13 and 25-30
as unpatentable over Kimura, Baer, Ospelt, and Bae
Appellant argues claims 13 and 25-30 together. Br. 21-25. We
select claim 13 for review with claims 25-30 standing or falling therewith.
Appellant contends, “[i]n the Final Office Action, the Examiner
acknowledges that Kimura does not teach claim limitations [pertaining to an
air curtain and a wind deflector as are recited] in claims 13 and 25-30 on
appeal.” Br. 22; see also id. at 23. However, Appellant is mistaken because
the Examiner expressly relies on the teachings of Kimura for disclosing both
“air curtains” and a “wind deflector.” Final Act. 10. Appellant further
repeats arguments already addressed which we do not replicate here. See Br.
22. One variation of a previously made argument is Appellant’s assertion,
“[t]he front panel 100 of Bae has no top and bottom slant surfaces that move
backward.” Br. 22. We find sufficient evidence in Figure 12 of Bae to
support the Examiner’s finding that the top and bottom plates slant as one
moves backward from the front panel. Ans. 9 (referencing Bae, the
Examiner notes “[t]he slant surfaces of the top and bottom plates.”).
Appellant further contends, “the Examiner makes the unsubstantiated
statement that these requirements [air curtains, etc.] of the invention claimed
on appeal would have been an ‘obvious matter of design choice’ to a person
of ordinary skill in the art.” Br. 23; see also id. at 24. It is not clear how the
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Appeal 2016-003490
Application 12/854,318
Examiner’s statements can be said to be “unsubstantiated” when the exact
structure recited is disclosed in the indicated reference(s). Appellant does
not explain how such disclosed structure fails to support the Examiner’s
findings of “design choice.” See Final Act. 12, 14, 16, 17; see also Ans. 10-
11.
Appellant also contends, “the undersigned can find no discussion in
either Kimura, Baer, or Bae concerning an ‘air curtain.’” Br. 25. However,
“anticipation is the epitome of obviousness” (Connell v. Sears, Roebuck, &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)), yet even anticipation “is not an
‘ipsissimis verbis’ test” (In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)).
In other words, even “[a]n anticipatory reference . . . need not duplicate
word for word what is in the claims” (Standard Havens Prods., Inc. v.
Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991)). In view of the
above, we see no reason why the lack of the use of “air curtain” in these
references is indicative of Examiner error.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 13 and 25-30.
The rejection of (a) claims 5-7 as unpatentable over Kimura, Baer, Bae,
Ospelt, and Akhtar; (b) claims 8-11 as unpatentable over Kimura, Baer,
Bae, Ospelt, Akhtar, and Jones; and, (c) claim 12 as unpatentable over
Kimura, Baer, Bae, Ospelt, Akhtar, Jones, and Morvillo
Appellant does not separately argue these rejections, but instead
contends that the additional art relied upon, (i.e., Akhtar, Jones, Morvillo) do
not cure the above asserted defects. Br. 26-27. Appellant’s contentions are
not persuasive. We sustain the Examiner’s rejections of claims 5-12.
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Appeal 2016-003490
Application 12/854,318
DECISION
The Examiner’s rejections of claims 1-13 and 25-31 are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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