Ex Parte Kuang et al

Patent Trial and Appeal Board

Jan 15, 2019

14358105 (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/358,105 05/14/2014 YuHuiKuang
87059 7590 01/17/2019
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
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.
P A-0020023-US 9344
EXAMINER
LING,FORK
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/17/2019 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUHUI KUANG, ROBERT HONG-LEUNG CHIANG,
MICHEL GRABON, and LIJIA JESSICA ZHAO
Appeal 2017-011777
Application 14/3 58,105
Technology Center 3700
Before NINA L. MEDLOCK, SCOTT C. MOORE, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief ("Br.,"
filed Apr. 3, 2017) and Specification ("Spec.," filed May 14, 2014), and to
the Examiner's Answer ("Ans.," mailed July 27, 2017) and Final Office
Action ("Final Act.," mailed Nov. 4, 2016).
2 According to the Appellants, the real party in interest is "CARRIER
CORPORATION." Br. 1.
Appeal 2017-011777
Application 14/358,105
STATEMENT OF THE CASE
The Appellants' invention "relates to the technical field of air
conditioner, and in particular to an air conditioner terminal device, an air
conditioning apparatus having the air conditioner terminal device and a data
center having the air conditioning apparatus." Spec. ,r 1.
Claim 1 (Br. 8 (Claims App.)) is the only independent claim on
appeal, is representative of the subject matter on appeal, and is reproduced
below:
1. An air conditioner terminal device comprising:
a heat exchanger,
a variable-speed fan,
an air passage communicating from an air suction port to
an air discharge port,
and a refrigerant flowing through the heat exchanger,
wherein the heat exchanger and the fan are installed in
the air passage,
the fan forces air within the air passage to flow towards
the air discharge port from the air suction port,
the refrigerant comes into heat contact with air within the
air passage via the heat exchanger,
the heat exchanger has an input joint and an output joint,
the refrigerant flows in via the input joint and flows out
from the output joint,
and the refrigerant inside the input joint is liquid-phase
fluid,
whereas the refrigerant inside the output joint is gas-
liquid two-phase fluid or gas-phase fluid.
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Appeal 2017-011777
Application 14/358,105
REJECTIONS
Claims 1-3, 5-7, 13, and 14 stand rejected underpre-AIA 35 U.S.C.
§ I02(b) as being anticipated by Tashiro (US 2010/0064714 Al, pub.
Mar. 18, 2010).
Claim 4 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Tashiro in view of Sato et al. (US 2008/0232064 Al, pub.
Sept. 25, 2008) ("Sato").
Claims 8-12 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Tashiro in view of Marsala (US 2005/0005623 Al,
pub. Jan. 13, 2005).
ANALYSIS
We agree with the Appellants' contention that the Examiner's
rejection under 35 U.S.C. § 102 of the independent claim is in error because
the Examiner has not adequately shown that Tashiro discloses the refrigerant
as recited in claim 1. See Appeal Br. 3-5.
The Examiner finds, in relevant part, that Tashiro discloses a
refrigerant of water or chlorofluorocarbon flowing through the heat
exchanger. See Ans. 2-3; Final Act. 2-3. The Examiner further finds that
"Tashiro is fully capable to have a refrigerant that changes the phase for
cooling." Final Act. 3. In particular, the Examiner "note[s] that the water as
a refrigerant used in Tashiro naturally evaporates under exposure of heat,
even if the temperature is below the boiling temperature of 100 degrees C."
Ans. 3. The Examiner also notes that "paragraphs 0064-0065 of Tashiro
does not exclusively disclose the phase of the fluid, therefore any phase of
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Appeal 2017-011777
Application 14/358,105
the fluid/coolant/refrigerant is capable to be flown through input 64, dry
coil 55 and return pipe 65." Id.
We do not agree with the Examiner's position that "the 'refrigerant'
as recited does not impose a structural limitation to the claimed the air
conditioner device, since the refrigerant is a matter of choice to be used in
the structure of the air conditioner device claimed." Ans. 2-3. Rather, we
construe the refrigerant to comprise a structural element of the device
claimed and the phrases "the refrigeration inside the input joint is a liquid
phase fluid" and "whereas the refrigerant inside the output joint is gas-liquid
two-phase fluid or gas-phase fluid," as recited in claim 1, to contain a
functional limitation that the apparatus must be capable of performing.
Tashiro discloses a data center including an air-conditioned room 13
and an air conditioner 51. Tashiro ,r 48. Air conditioner 51 comprises
fan 54, dry coil 55, and heat capture coil 57. See id. ,r,r 58, 62, Fig. 5.
Room 13 comprises, in relevant part, coolant supply pipe 64 and coolant
return pipe 65 connected to dry coil 55. Id. ,r 63. "The coolant is, e.g.,
water." Id.
As such, Tashiro discloses a refrigerant flowing through the heat
exchanger, the refrigerant being liquid-phase inside the input joint.
However, as the Examiner finds (see Ans. 3), Tashiro is silent as to the
phase of the refrigerant at the output from return pipe 65. Although we
appreciate that water "naturally evaporates under exposure of heat" (Ans. 3),
the Examiner does not adequately show how Tashiro discloses that its
coolant, which may be water or chlorofluorocarbon (id. (citing Tashiro ,r 8)),
is gas-liquid or gas at the output. In other words, it is not clear whether
Tashiro's coolant remains liquid at the output or is gas-liquid or gas.
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Appeal 2017-011777
Application 14/358,105
And, it is not apparent, and the Examiner has not made sufficient
evidentiary findings nor set forth adequate technical reasoning to explain,
how the apparatus of Tashiro would be capable, without modification, of
having the refrigerant at the output be gas-liquid or gas. Thus, the Examiner
has not established a reasonable basis that Tashiro is capable of performing
the claimed function of changing the phase of the refrigerant between the
input joint and output joint. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (holding that once the USPTO establishes a reasonable basis that
the prior art is capable of performing the claimed function, the burden shifts
to the applicant to show that the prior art structure is not capable of
performing the claimed function).
Accordingly, based on the record before us - because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims - we do not sustain the rejection of independent
claim 1, and dependent claims 2, 3, 5-7, 13, and 14, under 35 U.S.C.
§ 102(b) as anticipated by Tashiro.
We also do not sustain the rejections under 35 U.S.C. § 103(a) of
dependent claims 4 and 8-12, which rely on the same finding regarding
Tashiro. See Final Act. 5-6.
DECISION
The Examiner's rejection of claims 1-3, 5-7, 13, and 14 under
35 U.S.C. § 102(b) is REVERSED.
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Appeal 2017-011777
Application 14/358,105
The Examiner's rejections of claims 4 and 8-12 under 35 U.S.C.
§ 103 are REVERSED.
REVERSED
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