Ex Parte Horng et al

Patent Trials and Appeals BoardApr 28, 2016

12604445 - (D) (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/604,445 10/23/2009 69638 7590 04/28/2016 KAMRATH IP Lawfirm, PA 4825 Olson Memorial Highway, Suite 150 Golden Valley, MN 55422 FIRST NAMED INVENTOR Alex Horng 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PK11267 8535 EXAMINER KRAMER, DEVON C ART UNIT PAPER NUMBER 3746 MAILDATE DELIVERY MODE 04/28/2016 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 ALEX HORNG, CHAO-HSUN LEE, and CHI-MIN WANG Appeal2014-000599 Application 12/604,445 Technology Center 3700 Before: LINDA E. HORNER, CHARLES N. GREENHUT, and JILL D. HILL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's Final rejection of claims 1-3, 5-7, and 11-14. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 We reverse. 1 The Examiner includes claim 4 as a rejected claim in the status of claims. Ans. 3. We note that claim 4 has previously been indicated as being allowable if rewritten independent form and is not included in the rejection of claims. Ans. 10. We understand the indication of claim 4 as rejected to be a typographical error. Appeal2014-000599 Application 12/604,445 The claims are directed to a heat dissipating fan. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heat dissipating fan comprising: a housing including a base and a sidewall coupled to the base, with the sidewall defining a compartment of a generally cylindrical shape having an axis, with the housing further including an air inlet formed by open ends of the compartment, an air outlet extending in a radial direction from the compartment through the sidewall, and a dust channel extending in a radial direction from the compartment through the sidewall, with the air inlet, the air outlet, and the dust channel being in communication with the compartment; a stator coupled to the base of the housing; an impeller rotatably coupled to the stator about the axis and located within the compartment; and a control element including a driving circuit electrically connected to the stator and a rotating direction control circuit electrically connected to the driving circuit. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ho mg Saito Okutsu us 6,131,170 JP 2008-140943A US 2008/0253083 Al REJECTIONS Oct. 17, 2000 June 19, 2008 Oct. 16, 2008 Claims 1-3, 5, 6, and 11-14 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Homg and Saito. Final Act. 2.2 2 The Examiner entered an After Final claim amendment filed on December 11, 2012. Adv. Act. 1. Though not expressly stated by the Examiner, this claim amendment appears to have resulted in the Examiner withdrawing a 2 Appeal2014-000599 Application 12/604,445 Claim 7 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hom, Saito, and Okutsu. Final Act. 8. OPINION Regarding claim 1, the Examiner found, inter alia, that channel 106 of Homg equated to the "dust channel" of claim 1. Final Act. 3. The Examiner found that Homg, when modified by Saito, would remove dust through "the available gap or space in the channel" around the electrical cables. Final Act. 4. The Examiner's findings concerning channel 106 of Homg are not supported by a preponderance of the evidence. As Appellants correctly point out, Homg teaches channel 106 for insertion of power lines. Br. 2, citing Homg col. 3, 11. 20-22. Homg provides no suggestion that air flows through or that dust is removed from channel 106. If anything, Homg suggests just the opposite. See Homg, col. 9, 11. 57-62. The Examiner must provide sufficient evidence or scientific reasoning to establish that there is a sound basis for the Examiner's belief that this functional limitation is an inherent characteristic of the prior art. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner has not provided such evidence. Instead, the Examiner suggests that it is not conclusive that there is no gap for air flow and that the number of wires and dimension of the channel could allow for a gap for air passage. Ans. 12. The Examiner's comment is self-defeating because if it is not conclusive; clearly there is not sufficient evidence to indicate that there necessarily is flow in the channel which would remove dust. rejection of claims 11-13 under 35 U.S.C. Â§ 112, second paragraph. Final Act. 2. 3 Appeal2014-000599 Application 12/604,445 The Examiner also found that "even if one microscopic dust [particle] is able to deposit on any given channel of the fan housing during the rotation of the fan, then the claim limitation is met." Ans. 12. This reading is overly broad. It is unreasonable that a person of ordinary skill in the art at the time of the invention would have interpreted a "dust channel" to be any component in the fan in which some miniscule amount of dust, by happenstance, has accumulated. Furthermore, "[inherency requires] more than the presence of an unrecognized de minim is quantity of claimed substance in the prior art." Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1383 (Fed. Cir. 2011) (citing In re Seaborg, 328 F.2d 996 (CCPA 1964)). The Examiner has not provided sufficient evidence or reasoning to establish that channel 106 inherently collects or removes dust or, for any other reason, would reasonably be considered a dust channel. This deficiency undermines both rejections. DECISION The Examiner's rejections of claims 1-3, 5-7, and 11-14 are reversed. REVERSED 4