Ex Parte Wintemute et al

Patent Trial and Appeal Board

Dec 12, 2017

13426793 (P.T.A.B. Dec. 12, 2017)

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.
13/426,793 03/22/2012 DAVID MARTIN WINTEMUTE 5991.052US1 1036
86245 7590 12/14/2017
Schwegman Lundberg & Woessner/NORTEK
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
USPTO@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MARTIN WINTEMUTE and
REMI FORTIN
Appeal 2016-000328
Application 13/426,793
Technology Center 3700
Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Martin Wintemute and Remi Fortin (Appellants)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1-6 and 8-13 as unpatentable over Ringquist (US
2,522,484, issued Sept. 12, 1950) and Yabu (US 7,318,320 B2, issued Jan.
15, 2008); and (2) claim 7 as unpatentable over Ringquist, Yabu, and
Belding (US 5,826,434, issued Oct. 27, 1998). Claims 14-26 have been
1 We are informed that the real party in interest is Nortek Air Solutions
Canada, Inc. Appeal Br. 4 (filed May 27, 2015).
Appeal 2016-000328
Application 13/426,793
withdrawn from consideration.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a system “for independently
controlling temperature and humidity within the enclosed structure.” Spec.
11 1, Fig. 1.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. An energy exchange system configured to provide supply
air to an enclosed structure, the system comprising:
a supply flow path including a central sub-path connected
to a bypass sub-path that is connected to a delivery sub-path that
connects to the enclosed structure;
a sensible heat exchanger configured to condition the
supply air disposed within the central sub-path, wherein the
bypass sub-path connects to the central sub-path upstream from
the sensible heat exchanger within the central sub-path;
a first coil configured to further condition the supply air
disposed within the central sub-path downstream from the
sensible heat exchanger; and
a bypass damper disposed within the bypass sub-path,
wherein the bypass damper is configured to be selectively
opened and closed, wherein the bypass damper allows at least a
portion of the supply air to pass through the bypass sub-path into
the delivery sub-path and bypass the sensible heat exchanger and
the first coil when the bypass damper is open.
2 See Final Act. 2 (dated Feb. 24, 2015).
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Appeal 2016-000328
Application 13/426,793
ANALYSIS
Obviousness over Ringquist and Yabu
Claims 16 and 8—13
The Examiner finds that Ringquist discloses the system of claim 1
substantially as claimed except “Ringquist does not teach a bypass sub-path
which by-passes the sensible heat exchanger and first coil to directly connect
from the central sub-path to the delivery subpath.” Final Act. 3. The
Examiner relies on Yabu for this limitation. Id. In particular, the Examiner
finds that:
Yabu teaches that it is old and well-known in an air-
conditioning system to route air to be treated (OA) either to a
pathway with a cooling coil (Fig. 8A; 103) to the enclosed
structure when cooling is desired or, alternatively, to route the air
to be treated (OA) through a heating coil (Fig. 8B; 102)
bypassing the cooling coil pathway when heating is desired.
Id.
The Examiner concludes that it would have been obvious:
to provide the device of Ringquist with a sub-path bypassing the
sub-paths with the cooling coil (i.e. from 14 to 49) and directly
connecting the supply flow path (10) to the delivery sub-path
(portion containing 50) in order to allow the device to supply hot
air as well as cooled air when desired, as taught by Yabu.
Id. at 3—4.
Appellants contend that the Examiner “has failed to cite anything
from either Ringquist or Yabu that expressly or necessarily describes,
teaches, or suggests a bypass sub-path that connects to a central sub-path
upstream from a sensible heat exchanger.” Reply Br. 2; see also Appeal Br.
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Appeal 2016-000328
Application 13/426,793
8-11.3 In particular, Appellants contend that the Examiner “summarily
concludes [in the Answer] (without pointing to anything in either Ringquist
or Yabu) that ‘the combination of Ringquist in view of Yabu’” discloses a
bypass upstream of heat exchanger 14 of Ringquist. See Reply Br. 2 (citing
Ans. 44).
As an initial matter, we note the Examiner acknowledges that (1)
Yabu is merely relied upon to show that “in an air conditioning system,
components which are unnecessary for a particular mode of operation (such
as 103 in Figures 8A and 8B) can be bypassed” (see Ans. 3) and (2)
Ringquist fails to disclose “a bypass upstream of [heat exchanger] 14” (id. at
4; see also Reply Br. 2-3). We further note that the Examiner does not
direct us to any discussion in Yabu regarding placement of a bypass sub­
path upstream from a heat exchanger. See Final Act. 3—4; see also Ans. 3—4;
Reply Br. 2-3; Appeal Br. 8-11. Mere disclosure in Yabu that “components
which are unnecessary for a particular mode of operation . . . can be
bypassed,” as relied upon by the Examiner, does not “expressly or
necessarily describe^, teach[], or suggest[] [placement of] a bypass sub-path
. . . upstream from a . . . heat exchanger.” See Final Act. 3-4; see also Ans.
3—4; Reply Br. 2-3; Appeal Br. 8-11.
The Examiner fails to provide sufficient evidence or technical
reasoning to establish that the combined teachings of Ringquist and Yabu
disclose a bypass sub-path upstream from a heat exchanger. Stated
differently, the Examiner fails to provide sufficient evidence or technical
reasoning to establish that “[t]he combined teachings of Ringquist in view of
3 Filed Oct. 1, 2015 and May 27, 2015, respectively.
4 Dated Sept. 10,2015.
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Appeal 2016-000328
Application 13/426,793
Yabu teach that one of ordinary skill would [envision] placing] a bypass
connecting paths 10 to 49 [upstream of heat exchanger 14] in Ringquist.”
See Ans. 3—4; see also Final Act. 3; Reply Br. 3 n.l (“[T]o reject the claims,
the Examiner’s Answer relies on speculative ‘envisioning’ of structural
positioning and orientations not found in either Ringquist or Yabu.” (citing
Ans. 3)); Appeal Br. 8-11.
Additionally, we note Ringquist discloses that “[t]he air passing from
duct 16 through heat exchanger 14 to duct 49 is raised in temperature and
the air flowing in duct 10 through heat exchanger 14 to duct 18 is lowered in
temperature.” Ringquist, 2:35-39 (emphasis added), Fig. 1. As such,
Ringquist already appears to disclose a “device to supply hot air as well as
cooled air.” See Final Act. 3—4. Given that Ringquist discloses such a
device, the Examiner fails to provide an articulated reason supported by
rational underpinning as to why a skilled artisan would have been prompted
to combine Ringquist and Yabu to arrive at the claimed subject matter.
Without persuasive articulated reasoning that is supported by rational
underpinning for modifying the reference as proposed, the Examiner’s
rejection appears to be the result of an impermissible hindsight analysis. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted))
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
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Appeal 2016-000328
Application 13/426,793
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claim 1 and its dependent claims 2-6
and 8-13 as unpatentable over Ringquist and Yabu.
Obviousness over Ringquist, Yabu, and Belding
Claim 7
The Examiner’s rejection of claim 7 as unpatentable over Ringquist,
Yabu, and Belding is based on the same unsupported findings and
conclusions discussed above with respect to independent claim 1. See Final
Act. 5. The Examiner does not rely on Belding to remedy the deficiencies of
Ringquist and Yabu. Accordingly, for reasons similar to those discussed
above for claim 1, we do not sustain the Examiner’s rejection of claim 7 as
unpatentable over Ringquist, Yabu, and Belding.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-6 and
8-13 as unpatentable over Ringquist and Yabu.
We REVERSE the decision of the Examiner to reject claim 7 as
unpatentable over Ringquist, Yabu, and Belding.
REVERSED
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