Ex Parte Lanz et al

Patent Trial and Appeal Board

Feb 12, 2016

12430487 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/430,487 0412712009
116 7590 02/17/2016
PEARNE & GORDON LLP
1801EAST9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
FIRST NAMED INVENTOR
Titus Lanz
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.
RMRI-44941 3220
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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):
patdocket@peame.com
jcholley@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TITUS LANZ and MICHAEL SAUER
Appeal2013-009277
Application 12/430,487 1
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and KENNETH G.
SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
26-33 and 36-42. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
BACKGROUND
According to Appellants, "this application relates to an apparatus and
method of heating an animal holding device for keeping the animal
1 According to Appellants, the real party in interest is Rapid Biomedical
GmbH. App. Br. 3.
Appeal2013-009277
Application 12/430,487
immobile at a desired temperature during a scanning operation for imaging
the animal in real-time in a nondestructive manner." Spec. ,-r 2.
CLAIMS
Claims 26-33 and 36-42 are on appeal. Claim 26 is illustrative of the
appealed claims and recites:
26. An animal holding device for holding a small rodent in a
condition for imaging the rodent, said device comprising:
an elongated housing having a width and a length that is
much more than said width, wherein said length is much larger
than the length of said rodent;
a removable and severable animal bed adapted to fit in a
first portion of said housing, said animal bed comprising a first
channel and a second channel embedded in said animal bed;
a removable and severable holding unit for holding the
head of the rodent in a relatively fixed position, said holding unit
being adapted to fit into a second portion of said housing next to
said first portion;
a heater for providing heated air to said animal bed and
adapted to fit into a third portion of said housing; and
at least one sensor for obtaining temperature data about a
temperature of said heated air, wherein said temperature is
maintained by a controller utilizing said temperature data from
said sensor for controlling said heater, wherein
said heater is adapted to heat unheated air received from
an air pump via an air conduit, and further wherein
said first channel of said animal bed is adapted for
receiving said heated air from said heater via a first conduit
connected to said heater and said first channel, and still further
wherein
said second channel is adapted to return at least a portion
of said heated air to said heater via a second conduit for
dissipation into an ambient surrounding of said animal holding
device.
2
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Application 12/430,487
App. Br. 50---51.
REJECTIONS
1. The Examiner rejects claims 26, 27, 31-33, 36, and 42 under
35 U.S.C. § 103(a) as unpatentable over Sannie.2
2. The Examiner rejects claims 37--41under35 U.S.C. § 103(a) as
unpatentable over Sannie in view of Lin. 3
3. The Examiner rejects claims 28-30 under 35 U.S.C. § 103(a) as
unpatentable over Sannie in view of Park. 4
DISCUSSION
1. Obviousness: Sannie
Claims 26, 33, 36
With respect to independent claims 26 and 33, the Examiner
acknowledges that Sannie does not disclose the heating system including
heater and first and second channels as claimed. Final Action 5. However,
the Examiner concludes that the claimed heating systems would be an
obvious modification to Sannie in order to either "improve the efficiency of
the heating system" or "to prevent the heater from overheating." Final
Action 5; Ans. 3.
We agree with Appellants that the Examiner has failed to explain how
the proposed motivation for making the modifications to Sannie' s heating
system are supported by the record before us. We see no indication in
Sannie or the other art of record, as relied upon by the Examiner, that
2 Sannie et al., WO 2007/135248 Al, pub. Nov. 29, 2007.
3 Lin, US 2004/0187216 Al, pub. Sept. 30, 2004.
4 Park, US 6,006,524, iss. Dec. 28, 1999.
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Appeal2013-009277
Application 12/430,487
modifying Sannie as proposed would correct any deficiencies of Sannie' s
system related to the heating system's efficiency or overheating, and the
Examiner has not provided an explanation as to how the modification would
do so. Thus, on the record before us, we conclude that the Examiner failed
to set forth an adequate reason with some rational underpinning to support
the modification proposed and the legal conclusion of obviousness. See KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, we do not
sustain the rejection of independent claims 26 and 33 or claims 27-32,
which depend from claim 26.
Claim 36
With respect to independent claim 36, the Examiner finds that Sannie
discloses a housing, animal bed, a holding unit, and heater as claimed except
that Sannie does not expressly disclose the particular arrangement of
elements within the housing or that the elements are removable. See Final
Action 3--4. 5 The Examiner concludes that arranging Sannie's bed, holding
unit, and heater as claimed would have been an obvious design choice
involving only routine skill in the art. Id. at 4--5. The Examiner also
concludes that making Sannie' s bed, holding unit, and heater removable
would have been an obvious modification "in order to facilitate disassembly
and storage of the device parts." Id. at 5.
We agree with and adopt the Examiner's findings and conclusions
regarding claim 36. We have considered Appellants' arguments and find
them unpersuasive, as discussed below.
5 We note that the Examiner's findings regarding Sannie's sensor and
dissipation of air to the ambient environment are not applicable to claim 36.
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Application 12/430,487
With respect to the rearrangement of parts contemplated by the
Examiner's rejection, Appellants argue that "structural changes would need
to be made to the Sannie components to adapt the Sannie bed to function as
specified." App. Br. 22; see also id. at 28. However, Appellants fail to
explain how the location of the bed, holding unit, and heater within a
housing are related to the functioning of the device or why it would take
more than routine skill to rearrange Sannie' s bed, holding unit, and heater
within Sannie' s frame or outer container. Appellants also assert "that these
features of the instant application are not the same components of Sannie
merely re-arranged in order. Instead, the claimed components are clearly
different than Sannie." Id. at 21-22. Appellants fail to persuasively explain
how Sannie's components cannot be described as a bed, holding unit, and
heater as claimed apart from the differences acknowledged by the Examiner,
i.e. their arrangement and removability.
Appellants also argue that the Examiner failed to specifically address
the limitations of claim 36. Id. at 28. However, we find that the Examiner's
findings regarding claims 26, 33, and 36 together sufficiently address the
specific limitations of claim 3 6. Appellants' specific arguments regarding
claim 36 relate only to the arrangement and removability of Sannie's
components, which we find unpersuasive for the reasons discussed above.
Based on the foregoing, we determine that the Examiner established a
prima facie showing of obviousness with respect to claim 36, which
Appellants fail to rebut. Accordingly, we sustain the rejection of claim 36.
Claim 42
With respect to independent claim 42, the Examiner finds that Sannie
discloses a device as claimed except that Sannie does not expressly disclose
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Appeal2013-009277
Application 12/430,487
that the heater is placed in a third position of the interior portion of the
housing. Final Action 6-7. The Examiner finds that Sannie appears to
show, but does not expressly disclose, the heater within the interior portion
of Sannie' s frame and concludes that it would have been obvious to include
the heater in the interior portion of the housing as claimed "in order to
improve the compactness and transportability of the animal holding device."
Id. at 7.
With respect to this claim, Appellants first argue that the Examiner
admits that Sannie' s heater is not in the interior portion of the housing
because the Examiner states that placing the temperature sensor in the
housing would be an obvious modification of Sannie. App. Br. 30 (citing
Final Action 8). However, we find this argument irrelevant to the rejection
of claim 42 because it relates to the Examiner's findings and conclusions
with respect to claims 38, 39, 41. See Final Action 8.
Appellants also assert that the claim requires that the heater receives
air from a pump that is external to the housing and that it is not clear
whether Sannie's pump is within outer container 16. App. Br. 30-31.
Appellants argue that the Examiner cannot rely on poor draftsmanship or
ambiguity in the prior to support the rejection. Id. at 31. We are not
persuaded by this argument because the Examiner finds that Sannie' s frame
16 defines the claimed interior portion and Sannie' s pump clearly is depicted
outside the frame in Sannie. See Sannie Fig. 5. We determine that
Appellants' arguments do not address the Examiner's specific findings with
respect to claim 42, and thus, do not apprise us of any error in the rejection.
Accordingly, we sustain the rejection of claim 42.
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Application 12/430,487
2. Obviousness: Sannie in view of Lin
With respect to claims 37--41, the Examiner finds that Lin discloses a
heater adapted to heat a bed using air in an open loop manner for cooling the
heater and concludes:
[i]t would have been obvious to a person having ordinary skill in
the art at the time of Applicants' invention to modify the heater
of Sannie to be adapted to heat said bed using air in an open loop
manner, i.e. fluid is air taken from an ambient surrounding and
returned for dissipation into an ambient surrounding of the
animal holding device (see Sannie at figures 5 and 7) as taught
by Lin, in order to prevent the heater from overheating. See Lin
at paragraph [0034].
Final Action 8-9.
Lin discloses an air mattress 80 with attached heat exchanger 30
having a housing 10. Lin Fig. 1. Lin discloses that the housing includes two
chambers: a lower chamber 15 including a casing 20 in which heat
exchanging members are placed and an upper chamber 17 including a heat
dissipating device. Id. at i-fi-133, 35, Fig. 3. Lin discloses that the heat
exchanger may be coupled to an air reservoir or fan device for supply air to
heat exchanging members and subsequently to the mattress. Id. at i137. Lin
further discloses a fan 50 "attached to the upper portion of the housing 10, to
generate air and to circulate are through the fins 41 of the heat dissipating
device 40, and to force or blow the air out through the orifices 19 of the
housing 10." Id. at i139.
In light of these disclosures, we agree with Appellants that it is not
clear whether Lin discloses an open or closed loop heating system. App. Br.
33. More importantly, we agree that Lin does not disclose returning air from
the mattress to the heater in order to prevent the heater from overheating.
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Appeal2013-009277
Application 12/430,487
See App. Br. 35. Rather, Lin uses ambient air through fan 50 to cool the
heater, and that air appears to be isolated from the air being used to fill the
mattress. Id. Based on these inaccuracies in the Examiner's characterization
of Lin, we are constrained to determine on the record before us that the
Examiner has not set forth adequate support to show a prima facie case of
obviousness. Accordingly, we do not sustain the rejection of claims 37--41.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims
26-33 and 37--41 and we affirm the rejection of claims 36 and 42.
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-IN-PART
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