Ex Parte Swofford

Patent Trial and Appeal BoardAug 11, 2014

12040154 (P.T.A.B. Aug. 11, 2014)

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. 12/040,154 02/29/2008 Timothy Dean Swofford 060507-1146 8860 26371 7590 08/11/2014 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER COMINGS, DANIEL C ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 08/11/2014 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 TIMOTHY DEAN SWOFFORD ____________________ Appeal 2012-006627 Application 12/040,154 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3–15, and 17–21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims under appeal are directed to a control module for a temperature controlled case. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-006627 Application 12/040,154 2 1. A temperature controlled case, comprising: an enclosure defining an airspace for receiving products therein; a refrigeration system configured to circulate a refrigerant through an expansion device and at least one cooling element to cool the airspace in one of a low temperature cooling mode and a medium temperature cooling mode; and a control module configured to determine whether the case is intended to operate as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode of the refrigeration system, the control module having a first predetermined setpoint corresponding to the low temperature cooling mode and a second predetermined setpoint corresponding to the medium temperature cooling mode; wherein when the control module receives a signal representative of the refrigeration system operating in the low temperature cooling mode, the control module applies the corresponding predetermined first setpoint to modulate a position of the expansion valve to continuously operate the case as the low temperature case, and wherein when the control module receives a signal representative of the refrigeration system operating in the medium temperature cooling mode, the control module applies the corresponding predetermined second setpoint to modulate a position of the expansion valve to continuously operate the case as the medium temperature case. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kountz Chiang US 4,112,703 US 6,955,061 B2 Sept. 12, 1978 Oct. 18, 2005 Appeal 2012-006627 Application 12/040,154 3 REJECTION Claims 1, 3–15, and 17–21 stand rejected under 35 U.S.C. § 103(a)1 as being unpatentable over Chiang in view of Kountz. Ans. 4.2 ANALYSIS Obviousness Rejection over Chiang in view of Kountz Claims 1 and 3–13 Independent claim 1 requires: a control module configured to determine whether the case is intended to operate as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode of the refrigeration system, the control module having a first predetermined setpoint corresponding to the low temperature cooling mode and a second predetermined setpoint corresponding to the medium temperature cooling mode. Appeal Br. 21, Claims App. (emphasis added). The Examiner contends that this claim element is disclosed in Chiang. Ans. 5–6. Specifically, the Examiner contends that Chiang discloses that the “controller 90 selects one of a medium or low temperature at which to operate the system.” Id. at 6. 1 At one point, the Examiner’s Answer indicates that claims 1, 3–15, and 17–21 are rejected under 35 U.S.C. 102(b) as being anticipated by Chiang in view of Kountz. See Ans. 4. It is clear from the Examiner’s Answer as a whole, however, that the rejection is under 35 U.S.C. § 103(a). See Ans. 4– 7. 2 The Examiner further includes as a ground of rejection an objection that the title of the invention is not descriptive. Such a “rejection” is beyond the scope of our authority and we do not address it here. See In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971) (“[T]he kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims.”). Appeal 2012-006627 Application 12/040,154 4 Appellant counters that “Chiang simply discloses a medium temperature case, operating as a medium temperature case, with a controller that can change the refrigerant temperature in the coil of the evaporator between two ranges, while still operating as a medium temperature case, for the purpose of defrosting the evaporator within the case.” Reply Br. 3. That is, Appellant argues that Chiang fails to teach or suggest a “control module configured to determine whether the case is intended to operate as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode.” We agree. Chiang discloses a controller for a temperature-controlled case that operates in a medium temperature cooling mode. See, e.g., Chiang, col. 5, l. 39–col. 7, l. 51. (disclosing a controller 90 and a medium temperature merchandiser 100). The controller 90 regulates the evaporator pressure regulator valve 60 to cycle the temperature-controlled case’s temperature between a normal operating temperature range and a higher, defrost temperature range, which periodically defrosts the evaporator coil of the refrigerant system. See id. at col. 7, l. 57–col. 8, l. 14: [T]he controller 90 functions to selectively regulate the set point pressure of the EPRV 60 at a first set point pressure for a first time period and at a second set point pressure for a second time period and to continuously cycle the EPRV 60 between the two set point pressure. . . . In this cyclic mode of operation, the evaporator 40 operates continuously in a refrigeration mode, while any undesirable localized frost formation that might occur during the first period of operation cycle at the cooler refrigerant boiling temperatures is periodically eliminated during second period of the operating cycle . . . . Appeal 2012-006627 Application 12/040,154 5 Throughout this cycling of the refrigerant temperature, the refrigerant system maintains the temperature-controlled case in a medium temperature cooling mode. See id. at col. 8, ll. 2–8: [T]he refrigerant boiling temperature within the evaporator 40 of the medium temperature display case 100 is always maintained at a refrigerating level, cycling between a first temperature within the range of 24 degrees F. to 32 degrees F. for a first time period and a second slightly higher temperature within the range of 31 degrees F. to 38 degrees F. for a second period. “[C]laims under examination before the [U.S. Patent and Trademark Office] are given their broadest reasonable interpretation consistent with the specification.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012). The Examiner’s rejection of claim 1 implicitly construes the term “medium temperature [cooling] mode” to encompass the defrost mode disclosed in Chiang and the term “medium temperature case” to encompass the medium temperature display case 100 of Chiang when operating in defrost mode. Further, the Examiner’s rejection implicitly construes the term “low temperature cooling mode” to encompass the normal operating mode of the medium temperature display case 100 disclosed in Chiang and the term “low temperature case” to encompass the medium temperature display case 100 in normal operating mode. We find these constructions, in light of Appellant’s Specification, to be unreasonably broad. As Appellant makes clear in its Specification, “[r]efrigeration devices are often distinguished by those skilled in the art of commercial refrigeration as being either a ‘low temperature’ refrigeration device or a ‘medium temperature’ refrigeration device.” Spec. para. 3. The Specification further provides that “[l]ow temperature refrigeration devices are generally used to display . . . Appeal 2012-006627 Application 12/040,154 6 frozen food products or partially frozen food products” and that “[m]edium temperature refrigeration devices are generally used to display . . . fresh food products.” Id. That is, the terms “low temperature” and “medium temperature” are terms of art that define specific operating conditions of a temperature-controlled case. Chiang’s use of the term “medium temperature” is consistent with Appellant’s Specification. See, e.g., Chiang, col. 8, ll. 3–4 (referring to a “medium temperature display case 100” that “is always maintained at a refrigerating level”). “Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach.” In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999). “Prior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’ Accordingly, the PTO's interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.” Id. (Citations omitted). Accordingly, we find that one of ordinary skill in the art would not understand the term “medium temperature [cooling] mode” to encompass a defrost cycle of a medium temperature display case and the term “low temperature cooling mode” to encompass the normal operating mode of that case. Similarly, we find that one of ordinary skill in the art would not understand a “medium temperature case” to encompass a medium temperature display case operating in a defrost mode and a “low temperature case” to be that same medium temperature case during normal operation. Appeal 2012-006627 Application 12/040,154 7 When the terms “low temperature cooling mode” and “medium temperature [cooling] mode” and “low temperature case” and “medium temperature case” are properly construed, we find that Chiang fails to teach or suggest “a control module configured to determine whether the case is intended to operate as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode” as required in independent claim 1. As the Appellant argues, Chiang discloses a “single mode controller that simply cycles the temperature within the case between two setpoints while operating continuously in a medium temperature mode to defrost the evaporator” rather than a control module that is configured to determine whether the case is to operate as a low temperature case or medium temperature case as required by claim 1. Appeal Br. 8. Accordingly, the Examiner’s rejection of independent claim 1 and its dependent claims 3–13 under 35 U.S.C. § 103(a) as being unpatentable over Chiang in view of Kountz is reversed. Obviousness Rejection over Chiang in view of Kountz Claims 14 and 15 Independent claim 14 recites similar subject matter to independent claim 1. For example, claim 14 recites “a control module configured to determine whether the unit is intended to operate as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode of the refrigeration system.” Appeal Br. 24, Claims App. Appeal 2012-006627 Application 12/040,154 8 As discussed above in connection with the reversal of the Examiner’s rejection of independent claim 1 as obvious over Chiang in view of Kountz, the Examiner’s rejection implicitly construes the terms “low temperature cooling mode” (and “low temperature case”) and “medium temperature [cooling] mode” (and “medium temperature case”) unreasonably broad. When properly construed, we find that Chiang fails to teach or suggest a control module that can determine whether a temperature-controlled storage unit is to operate “as a low temperature case associated with the low temperature cooling mode of the refrigeration system or a medium temperature case associated with the medium temperature mode” as required by claim 14. Accordingly, for the reasons detailed above in connection with the rejection of independent claim 1, the Examiner’s rejection of independent claim 14 and its dependent claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Chiang in view of Kountz is reversed. Obviousness Rejection over Chiang in view of Kountz Claims 17 and 18–21 Independent claim 17 is a method claim that recites subject matter similar to independent claims 1 and 14, including: when the control module determines that the case is to operate as a low temperature case associated with the first temperature cooling mode, the control module continuously operates the case as the low temperature case, and when the control module determines that the case is to operate as a medium temperature case associated with the medium temperature cooling mode,3 3 The term “medium temperature cooling mode” lacks antecedent basis in claim 17. It is apparent to the Board that this term should be “the second Appeal 2012-006627 Application 12/040,154 9 the control module continuously operates the case as the medium temperature case. Appeal Br. 25, Claims App. (emphasis added). As discussed above in connection with the reversal of the Examiner’s rejection of independent claim 1 as obvious over Chiang in view of Kountz, the Examiner’s rejection implicitly construes the terms “low temperature case” and “medium temperature case” unreasonably broad. When properly construed, we find that Chiang fails to teach or suggest a control module that continually operates a temperature-controlled case as a “low temperature case” or a “medium temperature case” based on a determination by the control module. Accordingly, for the reasons detailed above in connection with the rejection of independent claim 1, the Examiner’s rejection of independent claim 17 and its dependent claims 18–21 under 35 U.S.C. § 103(a) as being unpatentable over Chiang in view of Kountz is reversed. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3–15, and 17–21 is REVERSED. REVERSED hh cooling mode.” This error should be corrected in any further prosecution before the Examiner.