Mitsubishi Electric Corporation

Patent Trials and Appeals BoardSep 30, 2021

2021001374 (P.T.A.B. Sep. 30, 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. 14/550,148 11/21/2014 Shinichi ITO 129UA_229 2911 23400 7590 09/30/2021 POSZ LAW GROUP, PLC 12040 SOUTH LAKES DRIVE SUITE 101 RESTON, VA 20191 EXAMINER SHAIKH, MERAJ A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/30/2021 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): dposz@poszlaw.com mailbox@poszlaw.com tvarndell@poszlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHINICHI ITO, SO NOMOTO, and DAISUKE SAKAI Appeal 2021-001374 Application 14/550,148 Technology Center 3700 Before BRETT C. MARTIN, CARL M. DeFRANCO, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mitsubishi Electric Corporation. Appeal Br. 5. Appeal 2021-001374 Application 14/550,148 2 CLAIMED SUBJECT MATTER The claims are directed “to a system and method for controlling the degree to which air is headed by an outdoor air conditioning unit.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of controlling an outdoor air conditioner formed outside of a structure, the method comprising: drawing outdoor air into the outdoor air conditioner; cooling the outdoor air to a dehumidification temperature to provide dehumidified air in the outdoor air conditioner; determining whether an air conditioning load exists in an air conditioning space inside the structure based on one of: an amount of sunlight incident on a structure containing the air conditioning space or an operating status of the indoor air conditioner; heating the dehumidified air in the outdoor air conditioner to generate supply air if it is determined that no air conditioning load exists in the air conditioning space; passing the dehumidified air at the dehumidification temperature as the supply air if it is determined that an air conditioning load exists in the air conditioning space; and providing the supply air from the outdoor air conditioner to the air conditioning space without passing through an indoor air conditioner. REFERENCES The prior art relied upon by the Examiner is: Appeal 2021-001374 Application 14/550,148 3 Name Reference Date Phannavong US 8,943,848 B2 Feb. 3, 2015 Lee US 2003/0102121 Al June 5, 2003 Sekhar US 2003/0146289 Al Aug. 7, 2003 Simon US 2006/0186214 Al Aug. 24, 2006 Miller US 2011/0046790 Al Feb. 24, 2011 Storm US 2012/0228393 Al Sept. 13, 2012 Meirav US 2013/0178987 Al July 11, 2013 Hunka US 2014/0188286 Al July 3, 2014 Bruck (“Bruck ‘741) US 2015/0051741 Al Feb. 19, 2015 Matsuoka (“Matsuoka ‘140”) US 2015/0210140 Al July 30, 2015 Bruck (“Bruck ‘210”) WO 2013/149210 Al Oct. 3, 2013 Matsuoka (“Matsuoka ‘953”) WO 2014/041953 Al Mar. 20, 2014 REJECTIONS Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over Sekhar, Lee, and Matsuoka ‘140. Final Act. 2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sekhar, Lee, Matsuoka ‘140, and Bruck ‘741. Final Act. 5. Claims 4, 6, and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, and Matsuoka ‘140. Final Act. 7. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, Matsuoka ‘140, and Storm. Final Act. 11. Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, Matsuoka ‘140, and Simon. Final Act. 12. Claims 7 and 9–11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, Matsuoka ‘140, and Bruck ‘741. Id. Appeal 2021-001374 Application 14/550,148 4 Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, Matsuoka ‘140, and Meirav. Final Act. 14. Claim 13 stands rejected under 35 U.S.C. § 103 as being unpatentable over Lee, Miller, Sekhar, Matsuoka ‘140, and Hunka. Final Act. 15. Claims 14–18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sekhar and Lee. Final Act. 16. Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sekhar, Lee, and Bruck ‘741. Final Act. 18. OPINION Lee and Sekhar All of the Examiner’s rejections rely in some form on a combination of Lee and Sekhar. Appellant asserts that the Examiner has misinterpreted both Lee and Sekhar and that the rejections must fall. We agree with Appellant and do not sustain any of the Examiner’s rejections. Beginning with Sekhar, the Examiner takes a strained interpretation of what the terms “indoor,” “outdoor,” and “structure” mean as disclosed in Appellant’s Specification. In responding to Appellant’s arguments to that effect, the Examiner takes issue with Appellant describing the disclosed system as being a split-system having indoor and outdoor components because such a split-system is never mentioned in the Specification. Ans. 6. Although the Examiner is correct, this does not entirely negate Appellant’s arguments as the Examiner seems to believe. Appellant’s use of the split- system analogy is not an attempt to insert new matter or to redefine the terms at issue, but simply to point out how one of ordinary skill in the art would understand the terms at issue. As Appellant explains, “one of ordinary skill in the art would understand that an air-conditioning system Appeal 2021-001374 Application 14/550,148 5 that included a separate indoor unit inside a building and an associated outdoor unit outside a building would be called a ‘split-system’ air conditioner.” Reply Br. 4. In other words, Appellant is simply providing a different name to the system otherwise already disclosed in the Specification. It is clear that the Examiner has entirely ignored the claimed aspects of indoor, outdoor, and structure. In finding various aspects of the claims in Sekhar, the Examiner points to various components of what is otherwise a single system. We agree with Appellant that the claims and the Specification make clear that the disclosed indoor and outdoor units are separate units with one being inside and one being outside of a structure. The Examiner completely ignores the physical location aspects and reduces them to mean only that the various units either handle indoor or outdoor air. The Examiner asserts that Sekhar’s elements 11, 14, 18, 56, 57, and 22 all comprise the outdoor unit, while fan 24 and duct 28 are part of the indoor unit. Final Act. 2–3. As is clear from Sekhar’s Figure 1, all of these elements are within a single system, and that single system is located within a structure. Fan 24 sits directly below fan 22 and is clearly part of the same system. It does not matter that the air within ducts 26 and 28 are separate indoor and outdoor ducts; what matters is that the claimed outdoor unit be physically located outside of a structure and the indoor unit be located inside the structure. In Sekhar, both units are located in the same structure. As Appellant explains, one of ordinary skill would understand Sekhar as teaching an integrated unit as opposed to the disclosed indoor/outdoor or split-system unit. The Examiner cannot simply pick and choose various Appeal 2021-001374 Application 14/550,148 6 features of Sekhar’s integrated unit and assert them as being either indoor or outdoor based on the air flow. The Examiner also attempts to assert that the term “structure” can be interpreted to be a single room inside of a building. Again, the Examiner relies on portions of the Specification that discuss air handling of indoor and outdoor air, but completely ignores other portions that make clear that the distinction between indoor and outdoor units is not simply the handling of indoor or outdoor air. Ans. 7 (citing Spec. ¶¶ 21, 59, 87). Paragraph 11 of the Specification, for example, states that “an outdoor air conditioner provided outside a structure, including an outdoor heat-exchanger, an outdoor heater, and an outdoor blower configured to draw outside air through the outdoor heat-exchanging coil.” Likewise, an indoor unit includes “an indoor heat-exchanger, and an indoor blower configured to draw indoor air through the indoor heat-exchanging coil to generate conditioned indoor air” and is also disclosed as being “provided inside the air conditioning space.” Id. It is clear from these passages that the disclosed system involves not only air handling, but also the physical locations of each of the units. As to the term “structure” itself, Appellant’s disclosure explains that air-conditioning spaces “can be individual rooms in a structure, groups of rooms in the structure, or any indoor space that needs to have its temperature controlled.” Spec. ¶ 45. Regardless of whether the claimed structure can be a single room or not, the outdoor unit must not simply be outside of a particular room, but outside the structure, i.e., outdoors, hence its name “outdoor” unit. Sekhar draws outside air through inlet 10, which is on the outside of wall 4, but all of Sekhar’s structure is located inside of wall 4. Appeal 2021-001374 Application 14/550,148 7 See, e.g., Sekhar Fig. 1. Accordingly, it is clear that the Examiner has erred in interpreting Sekhar as having both an indoor and an outdoor unit when it is actually simply an integrated unit fully located inside a structure. As to Lee, the Examiner relies on a drafting error in Lee where the drafter transposed indoor with outdoor. Appeal Br. 32. Appellant adequately explains how the entirety of Lee’s disclosure supports the heater being in the indoor unit rather than the outdoor unit. See Appeal Br. 32–36. As Appellant points out, paragraph 13 of Lee is the only instance of the heater being in the outdoor unit. A similar error was pointed out with the claims during prosecution and this error was changed, but the Specification error was apparently overlooked. Appeal Br. 32–33. As Appellant points out, making Lee consistent to teaching the heater in the indoor unit requires changing “outdoor” to “indoor” in paragraph 13, while making Lee actually support the Examiner’s interpretation via the error essentially requires entirely rewriting Lee. Appeal Br. 36. We are persuaded that Lee’s Specification includes the aforementioned error and the Examiner cannot rely on Lee as teaching a heater in the outdoor unit when, as correctly understood, Lee discloses a heater in the indoor unit. Accordingly, for at least the reasons above, we are persuaded of error in the Examiner’s rejections. None of the secondary references cures these errors and as such we do not sustain any of the Examiner’s rejections. CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-001374 Application 14/550,148 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Sekhar, Lee, Matsuoka ‘140 1 2, 3 103 Sekhar, Lee, Matsuoka ‘140, Bruck ‘741 2, 3 4, 6, 12 103 Lee, Miller, Sekhar, Matsuoka ‘140 4, 6, 12 21 103 Lee, Miller, Sekhar, Matsuoka ‘140, Storm 21 5 103 Lee, Miller, Sekhar, Matsuoka ‘140, Simon 5 7, 9–11 103 Lee, Miller, Sekhar, Matsuoka ‘140, Bruck ‘741 7, 9–11 8 103 Lee, Miller, Sekhar, Matsuoka ‘140, Meirav 8 13 103 Lee, Miller, Sekhar, Matsuoka ‘140, Hunka 13 14–18 103 Sekhar, Lee 14–18 19, 20 103 Sekhar, Lee, Bruck ‘741 19, 20 Overall Outcome 1–21 REVERSED