General Electric Company

Patent Trials and Appeals Board

Apr 19, 2021

2020004462 (P.T.A.B. Apr. 19, 2021)

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.
14/508,247 10/07/2014 Craig lung-Pei Tsai 275005-1/GECA-634 8269
141821 7590 04/19/2021
Dority & Manning, P.A. and Haier US Appliance
Solutions, Inc.
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
BARGERO, JOHN E
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
04/19/2021 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG IUNG-PEI TSAI
____________

Appeal 2020-004462
Application 14/508,247
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7, 9, 10, and 12–21.2 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Haier US Appliance Solutions, Inc., as the real
party in interest. Appeal Br. 1.
2 Claims 8 and 11 are cancelled. Appeal Br. 16 (Claims App.).
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Application 14/508,247

2
THE CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A water heater appliance comprising:
a tank defining an interior volume; and
a sealed system for heating water within the interior
volume of the tank, the sealed system comprising
a compressor operable to compress a refrigerant;
a first condenser positioned downstream of and in
fluid communication with the compressor;
a second condenser positioned downstream of and
in fluid communication with the compressor, the first and
second condensers each operable to heat water within
the interior volume of the tank using energy from the
refrigerant; and
a valve in fluid communication with the first
condenser and the second condenser, the sealed system
defining a ratio of refrigerant flow between the first
condenser and the second condenser, the valve configured
to vary the ratio of refrigerant flow between the first
condenser and the second condenser from a value of 100:0
to a value of 0:100 and at least one value therebetween;
and
an expansion device, wherein the valve is a variable
flow splitting valve, and wherein the variable flow
splitting valve is the only variable flow splitting
valve positioned downstream of the first condenser and
second condenser and upstream of the expansion device.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
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Application 14/508,247

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Name Reference Date
Silva US 2,716,866 Sept. 6, 1955
Harmon US 2005/0109490 A1 May 26, 2005
Yokoyama US 2007/0271942 A1 Nov. 29, 2007
Nelson US 8,422,870 B2 Apr. 16, 2013

THE REJECTIONS
I. Claims 1–7, 9, 10, and 13–21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Silva, Yokoyama, and Harmon. Final Act. 3–9.
II. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable over
Silva, Yokoyama, Harmon, and Nelson. Id. at 9.

OPINION
Rejection I – Obviousness based on Silva, Yokoyama, and Harmon
In contesting this rejection, Appellant presents arguments for
independent claim 1 (Appeal Br. 4–13), relies on the same arguments for
independent claim 13 (id. at 13), and does not separately argue dependent
claims 2–7, 9, 10, and 14–21. We select claim 1 as representative, and
claims 2–7, 9, 10, and 13–21 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Silva discloses a water heater including a
tank (10, 12) and a sealed system comprising a refrigerant compressor (19,
20), a first condenser (24), a second condenser (25), and an expansion device
(23). Final Act. 3 (citing Silva, Fig. 1). The Examiner finds that Silva
discloses
two separate valves (36, 37) that act as at least a three-way valve,
allowing for a flow path of refrigerant (35) to flow in one of at
least three paths, through 36 alone, or through 37 alone, or
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Application 14/508,247

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through both 36 and 37[], but does not disclose the particular
singular valve.
Id. However, the Examiner finds that Yokoyama teaches “a variable flow
splitting valve ([0073], 18), and wherein the variable flow splitting valve is
the only variable flow splitting valve positioned downstream of the first
condenser and second condenser and upstream of the expansion device.” Id.
at 4. The Examiner determines that it would have been obvious
to include a three-way variable flow valve, as taught by
Yokoyama, with the water heater of Silva for the purpose of
simplifying the control system and wiring and to provide better
thermal control over the condensing element which would
prevent stratification and ensure that the tank is heating evenly
without over shooting or under shooting the desired
temperatures.
Id.
The Examiner also finds that the combination of Silva and Yokohama
“does not disclose the location of the valve being downstream of the first
condenser and second condenser and upstream of the expansion device.”
Final Act. 4. However, the Examiner finds that Harmon teaches “a heat
pump water heater (Abstract) wherein the shut off valves (13, Figure 1) [are]
downstream of a condenser (3) and upstream of the expansion device (7,
[0038]).” Id. The Examiner determines that it would have been obvious “to
locate the valves either upstream or downstream of the expansion valve as a
rearrangement of parts, as taught by Harmon, to control flow to and from the
condenser.” Id.; see also id. at 2 (the Examiner concluding that it would
have been obvious “to locate the valve either upstream or downstream of the
condensers”).
Appellant argues that Harmon fails to disclose a variable flow
splitting valve. Appeal Br. 9. According to Appellant, none of the cited
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references teaches the claimed valve configuration with “the variable flow
splitting valve . . . positioned downstream of both the first and second
condensers 124, 126 and upstream of the expansion device 128.” Id. at 10.
This argument is unpersuasive because it attacks the references individually,
rather than as combined by the Examiner in the rejection. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by
attacking references individually when the rejection is based on a
combination of the references). As discussed above, the Examiner relies on
Yokoyama for teaching a variable flow splitting valve. Final Act. 4. The
Examiner relies on Harmon only for teaching the positioning of valves
downstream of a condenser and upstream of an expansion device. Id. In
other words, the Examiner does not find that a singular reference discloses
the claimed valve configuration, but, rather, the Examiner determines that
such a configuration would have been obvious in view of the combined
teachings of Silva, Yokoyama, and Harmon.
Appellant argues that it would not be obvious to modify Silva to
achieve the claimed valve configuration, as proposed by the Examiner.
Appeal Br. 10. Appellant asserts that Harmon “does not provide any
teaching for moving the valves 36, 37 of Silva downstream of the respective
condensers 24, 25.” Id. at 11 (underlining omitted). Appellant asserts that
Harmon “fails to provide any reasoning for moving the valves 36, 37 of
Silva, as the valves of Harmon . . . are addressing different issues that would
most likely not be present in the system of Silva.” Id. (underlining omitted);
see also id. (asserting that Harmon teaches “closing off a component in a
very different system using two separate two way valve[s], i.e., valve 12 and
13, each at an upstream location when in use to address an efficiency issue
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unique to that system”). According to Appellant, Harmon “would encourage
a person of ordinary skill in the art to keep the valve positioning in [Silva] to
ensure the system of Silva is not susceptible to the same inefficiencies
combatted by the inclusion of valve 13 in Harmon . . . (albeit to a lesser
degree).” Id. at 12 (underlining omitted). We are not persuaded by this line
of argument.
Appellant appears to insist on an explicit teaching, suggestion, or
motivation in Harmon for the Examiner’s proposed modification of Silva,
whereas such an argument has been foreclosed by the Supreme Court. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid
insistence on teaching, suggestion, or motivation is incompatible with its
precedent concerning obviousness). Rather, the Court requires that we look
to whether the Examiner has provided “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR,
550 U.S. at 418). Here, the Examiner articulates adequate reasoning based
on rational underpinnings as to why it would have been obvious to modify
Silva’s water heater to have a singular three-way variable valve downstream
of the condensers. See Final Act. 4 (explaining that replacing Silva’s valves
with a single three-way variable flow valve would simplify the control
system and provide better thermal control of the condensers, and that
moving the valve upstream of Silva’s condensers would be a mere
rearrangement of parts for controlling flow to and from the condensers).
The Examiner also reasons that “[h]eat pump systems commonly have
control valves located either upstream or downstream of the condensers and
so this would have been an obvious modification.” Ans. 10; see also id. at
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11 (explaining that “locating valves upstream or downstream of condensers
is a common practice [in] the field of heat pump circuits and has no
criticality in the Applicant’s invention”). The Examiner’s proposed
modification to place a valve downstream of the first and second condenser
and upstream of the expansion device does not appear to be beyond the level
of ordinary skill in the art, nor yield more than a predictable result in
controlling flow to and from the condensers. See KSR, 550 U.S. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Appellant’s argument does not explain adequately why the Examiner’s
reasoning is deficient. Moreover, Appellant does not proffer any evidence
or technical reasoning to support the position that modifying Silva’s valve
location as proposed by the Examiner would make Silva susceptible to
inefficiencies. See Appeal Br. 12. Appellant’s unsupported assertion is
mere attorney argument, which cannot take the place of evidence in the
record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellant argues that Silva teaches away from “moving the valves 36,
37 to a location downstream of the first and second condensers 24, 25,
respectively, and upstream of the expansion device 23.” Appeal Br. 12.
Referring to column 1, lines 53–63 of Silva, Appellant asserts that
it is the intention of Silva to ensure complete delivery of the
compressed refrigerant gasses to the desired condenser to
provide for a more efficient heater appliance. If the valves 36,
37 were moved to a downstream location, during operation, the
compressed refrigerant gasses would be able to flow at least
partially into the non-utilized condenser, reducing an efficiency
of the system. Therefore, moving the valves 36, 37 in the manner
suggested by the Examiner would frustrate the purpose of Silva.
Id. at 13 (underlining omitted). This argument is not persuasive.
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Silva discloses that an object of the invention is to provide an
improved thermal control system that delivers all of the compressed gaseous
refrigerant to the first condenser until obtaining a complete temperature
recovery of the water in the upper tank portion, and, then, delivers all of the
compressed gaseous refrigerant to the second condenser until obtaining a
complete temperature recovery of the water in the lower tank portion. Silva,
1:53–63. It is not clear how this disclosure would lead one of ordinary skill
in the art away from the Examiner’s proposal to modify Silva to replace
valves 36, 37, which are located upstream of the condensers, with a single
variable flow splitting valve located downstream of the condensers.
Appellant does not point to, nor do we find, any disclosure in Silva
criticizing, discrediting, or otherwise discouraging the modification
proposed by the Examiner in the rejection. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (explaining that prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed). The fact that Silva’s valves 36, 37 are
positioned upstream of the condensers does not constitute a teaching away
from the Examiner’s proposal to replace these valves with a three-way
variable flow splitting valve located downstream of the condensers.
Moreover, the Examiner takes the position that, “there will be residual
refrigerant in the condenser coils and other piping of the system” and “[t]he
backpressure of the condenser coil that was just switch[ed] off would
prevent addition[al] refrigerant to flow into it.” Ans. 11–12. In addition,
according to the Examiner, “even if a de[ ]minimis amount of refrigerant
were allowed to enter the non[-]active condenser coil, the resultant thermal
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Application 14/508,247

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efficiency loss would be negligible.” Id. 12. In this regard, Appellant does
not contest the Examiner’s position.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we sustain the rejection of claim 1, and claims 2–7, 9, 10, and 13–21 falling
therewith, under 35 U.S.C. § 103 as unpatentable over Silva, Yokoyama, and
Harmon.

Rejection II – Obviousness based on Silva, Yokoyama, Harmon, and Nelson
With respect to Rejection II, Appellant does not set forth any
additional substantive arguments separate from the arguments discussed
above with respect to Rejection I. See generally Appeal Br. Thus, for the
same reasons that Appellant’s arguments do not apprise us of error in
Rejection I, Appellant also does not apprise us of error in Rejection II.
Accordingly, we sustain the rejection of claim 12 under 35 U.S.C.
§ 103 as unpatentable over Silva, Yokoyama, Harmon, Nelson.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9, 10,
13–21
103 Silva, Yokoyama,
Harmon
1–7, 9, 10,
13–21

12 103 Silva, Yokoyama,
Harmon, Nelson
12
Overall
Outcome
1–7, 9, 10,
12–21

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Application 14/508,247

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED