Regal Beloit America, Inc.

Patent Trials and Appeals Board

May 17, 2021

2021000308 (P.T.A.B. May. 17, 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.
15/349,674 11/11/2016 Steven W. Post 48593-160317 7104
103907 7590 05/17/2021
Thompson Coburn LLP
One US Bank Plaza
St. Louis, MO 63101
EXAMINER
JOHNSON, BENJAMIN W
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
ipdocket@thompsoncoburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. POST, JEFFREY JAY LONG, and
WILLIAM S. GATLEY
Appeal 2021-000308
Application 15/349,674
Technology Center 3700
Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, and 12–14. Claims 3, 11,
and 15 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Regal
Beloit America, Inc. Appeal Br. 2.
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Application 15/349,674

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CLAIMED SUBJECT MATTER
The claims are directed to a water heater blower assembly having a
low exhaust port. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A draft inducer blower assembly for use with a gas-fueled
water heater, the blower assembly comprising
a housing,
a motor, and
a fan,
the housing having an exhaust volute surrounding the fan
and a base configured and adapted to be mounted atop the water
heater, the base having an inlet port adapted and configured to
receive exhaust gas from the water heater when the base is
mounted atop the water heater,
the fan being connected to the motor for rotation about a
rotation axis,
the exhaust volute and the base being non-adjustably fixed
relative to each other, the exhaust volute having a cut-off at a cut-
off angle relative to the rotation axis, the exhaust volute having
an exhaust outlet passageway that extends to an exhaust port,
the housing being configured and adapted such that, when
the base is mounted atop the water heater, the exhaust port is
lower than a top of the exhaust volute and the exhaust port faces
vertically upward.
Appeal Br. 18 (Claims App., paragraphing added).
Independent claim 6 substantively differs from claim 1 in that claim 6
does not recite that the exhaust port is lower than a top of the exhaust volute,
but instead, recites that “the cut-off angle extends at an angle that is not
more than thirty degrees positive from horizontal.” Appeal Br. 18–19
(Claims App.). Independent claim 9 is substantively similar to claim 1.
Appeal Br. 19 (Claims App.).
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REJECTIONS2
1. Claims 9, 10, and 12–14 are rejected under 35 U.S.C. § 112(b)
as being indefinite. Final Act. 3.
2. Claims 1, 2, 4, 6–10, 12, and 13 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Gatley, JR. (US 2004/0258546 A1,
published Dec. 23, 2004 (“Gatley”)). Final Act. 4.
3. Claims 5 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gatley. Final Act. 12.
OPINION
Rejection 1: Indefiniteness
Claims 9, 10, and 12–14 are rejected under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 3. The Examiner points out that the limitation
“the top of the exhaust volute” in claim 9, from which claims 10 and 12–14
depend, lacks proper antecedent basis. Final Act. 3. The Appellant
disagrees and argues that the rejection should be reversed because “[t]he top
of the exhaust volute is the highest point of the exhaust volute.” Appeal Br.
15. We generally agree with the Appellant that the lack of antecedent basis
does not render these claims indefinite.

2 The Appellant also submits arguments requesting the Board to overrule the
Examiner’s objections to dependent claims 2, 4, 5, 7, 8, 10, and 12–14.
Appeal Br. 15–17. However, because such claim objections relate to
petitionable matters and not to appealable matters, we decline to reach them.
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many
kinds of decisions made by examiners that are not appealable to the Board
when they are not directly connected with the merits of issues involving
rejections of claims).
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Although the Examiner is correct that there is no antecedent basis for
“the top of the exhaust volute,” a lack of antecedent basis is not per se a
reason for finding a claim indefinite. “In Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1359 (Fed. Cir. 2001) the court held that despite the absence of
explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.’”
Energizer Holdings Inc. v. United States ITC, 435 F.3d 1366, 1370–71 (Fed.
Cir. 2006). Given the structural nature of the recited “housing having an
exhaust volute,” we generally agree with the Appellant that “a person having
ordinary skill in the art would understand that the top of the exhaust volute is
the highest point of the exhaust volute.” Reply Br. 12.
The Examiner responds that “[t]he location of a ‘top’ of an exhaust
volute will be different depending on the orientation that the volute is placed
in (e.g. a volute placed in horizontal orientation will have a different top than
a volute placed in a vertical orientation),” and that a specific definition of
“top of the exhaust volute” is neither recited in the claim, nor defined in the
Specification. Ans. 21. We do not disagree with the Examiner. However,
in our view, these concerns raised by the Examiner pertain to claim breadth,
not definiteness due to lack of antecedent basis.
Therefore, we reverse the Examiner’s indefiniteness rejection of
claims 9, 10, and 12–14.

Rejection 2: Anticipation
The Examiner rejects claims 1, 2, 4, 6–10, 12, and 13 as being
anticipated by Gatley. Final Act. 4. For the sake of clarity, we address
independent claim 6 first, before addressing independent claim 1.
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Claims 6–8
As noted above, independent claim 6 recites that “the cut-off angle
extends at an angle that is not more than thirty degrees positive from
horizontal.” Appeal Br. 18–19 (Claims App.). The Examiner finds that
Gatley discloses an exhaust volute having a cut-off at a cut-off angle “that is
not more than thirty degrees positive from horizontal” as recited because
Gatley discloses an exhaust volute cut-off at point “A” as shown in the
Examiner’s annotated Figure 6 of Gatley reproduced below. Final Act. 7;
see also Final Act. 6.

The above figure is Figure 6 of Gatley having Examiner’s annotations
“A” and “B”, pointing to portions of Gatley that the Examiner considers as
corresponding to the cut-off and the exhaust port, respectively. Final Act. 6.
The Examiner explains that “‘cut-off’ of the exhaust volute is being
interpreted as a cut-off point at which the volute shape of the exhaust volute
ends,” which is identified as point “A” in Gatley. Final Act. 7. Because
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point “A” is along the horizontal, i.e., zero angle relative to the rotation axis,
the Examiner finds that Gatley discloses a cut-off angle “that is not more
than thirty degrees positive from horizontal” as recited by claim 6. Final
Act. 6.
The Appellant argues that the Examiner’s finding is in error because,
in view of the Specification, “‘cut-off’ is the end of the exhaust volute
adjacent the outlet opening 36 (i.e., the end that is closest to the fan center of
rotation).” Appeal Br. 6–7 (citing Spec. ¶ 3; Figs. 3, 8). The Appellant also
relies on other patent documents as using the term “cut-off” to refer to the
end of the volute closest to the fan center of rotation. Appeal Br. 7 (citing
U.S. Patent 8,591,183 and U.S. Patent 6,767,184).
As the Appellant also points out (Reply Br. 2), the same issues of
claim interpretation and application of Gatley were presented and decided by
the Board in Appeal 2020-000402 of Application 15/183,040, of which the
present application is a continuation-in-part. Appeal Br. 2; see also Reply
Br. 2. In its Decision of that appeal, the Board agreed with the Appellant’s
claim construction, and reversed the Examiner’s finding that Gatley
discloses a cut-off angle that is no more than twenty degrees positive from
horizontal. ’402 Decision 4–5. Although the angle recited in present claim
6 differs slightly from the claims at issue in the ’402 appeal, when the
correct claim interpretation is applied, it is clear that Gatley does not
disclose a cut-off angle that is “not more than thirty degrees positive from
horizontal” as required by claim 6.
In the present appeal, the Examiner also relies on US Patent 3,989,054
to Mercer as evidence that the term “cut-off” is used more broadly in that
Mercer identifies elements 98 and 100 as “cut-off.” Ans. 15 (citing Mercer,
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col. 3, ll. 54–60; Figs. 5, 6). However, we agree with the Appellant that
Mercer is not helpful to the Examiner’s construction (Reply Br. 4–5).
As clearly shown in Figure 6 of Mercer, the line segment 98 identified as
“cut-off” clearly extends to the end of the exhaust volute closest to the fan’s
center of rotation. Mercer Fig. 6. In contrast, the Examiner’s construction
and selected point “A” does not encompass the end of the exhaust volute
closest to the fan center of rotation at all. Cut-off 100 also appears to be at
the base of the outlet 82 such that the cut-off extends to the end of the
exhaust volute closest to the fan’s center of rotation. Accordingly, we are
not persuaded by the Examiner’s reliance on Mercer as to the applied claim
interpretation.
Therefore, we reverse the rejection of independent claim 6, and
dependent claims 7 and 8.
Claims 1, 2, 4, 9, 10, 12, and 133
Independent claims 1 and 9 require the exhaust port to be “lower than
a top of the exhaust volute.” Appeal Br. 18, 19 (Claims App.). In arguing
patentability of independent claims 1 and 9 together, the Appellant relies on
its arguments submitted relative to claim 8, which depends from claim 6,
and recites the same limitation regarding the exhaust port being lower than a
top of the exhaust volute. Appeal Br. 12. In addition, except for claims 4,
12, and 13, the Appellant does not submit specific arguments directed to the

3 Although claims 1 and 9 also recite “the exhaust volute having a cut-off at
a cut-off angle relative to the rotation axis,” unlike independent claim 6, they
do not specifically limit the cut-off angle. As such, the issue raised with
respect to claim 6 is not raised with respect to claims 1 and 9, since it cannot
be reasonably disputed that the device of Gatley includes a “cut-off” that is
at some unspecified “cut-off” angle relative to the rotation axis.
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rejected dependent claims. Accordingly, we select independent claim 1 as
representative of claims 1, 2, 9, and 10, and address the arguments of the
Appellant as set forth relative to dependent claim 8.
In rejecting independent claim 1, the Examiner finds that portion of
Gatley annotated as “B” in the annotated Figure 6 of Gatley is an exhaust
port that satisfies the limitation at issue since the exhaust port “B” is “lower
than a top of the exhaust volute” as recited. Final Act. 5–6. The Examiner
explains that:
[A]n “exhaust port” is being interpreted as an element that feeds
an exhaust conduit - as can be observed in the annotated Fig,
element (B) serves as the connection point between . . . the
exhaust volute and exhaust conduit (36), feeds exhaust conduit
(36), and can therefore be considered an “exhaust port.”
Final Act. 5.
The Appellant argues that the Examiner’s interpretation of the recited
“exhaust port” is improper and argues that “[t]he ordinary meaning of ‘port’
is an opening for ingress or egress,” and “[i]n the context of the present
application, an ‘exhaust port’ is an opening through which exhaust gases
leave the blower assembly.” Appeal Br. 10 (citing Spec. ¶ 19); see also
Reply Br. 8–9. The Appellant also argues that “[t]he Examiner’s assertion
that location (B) of Gatley . . . is somehow an exhaust port is arbitrary,
divorced from any ordinary meaning of exhaust port, and inconsistent with
the usage in Applicant’s specification,” and that “[n]othing is exhausted
from the Gatley blower housing at location (B).” Appeal Br. 10; see also
Reply Br. 9. In that regard, the Appellant argues that “[l]ocation (B) is a
location inside Gatley’s two-piece fan compartment where a first portion
(26a) and a second portion (26b) connect . . . [and] is not an opening through
which exhaust gases leave Gatley’s blower.” Appeal Br. 11. Thus, the
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Appellant argues that Gatley fails to anticipate claims 1 and 9 because
“exhaust outlet opening (38) at the highest part of a blower housing 12 . . . is
higher than the top of a ‘volute shaped side wall 34.’” Appeal Br. 11 (citing
Gatley ¶ 44; Figs. 1, 6).
The Examiner has the better position. As the Examiner correctly
points out, “no special definition of ‘exhaust port’ is provided in the
specification.” Ans. 18. In addition, as the Examiner also correctly notes,
claim 1 does not require the exhaust port to be the exhaust of the entire
blower assembly as the Appellant argues. Ans. 18. In that regard, claim 1
actually recites that it is the exhaust volute that has an exhaust outlet
passageway that extends to an exhaust port. The Appellant appears to
improperly import into claim 1, limitations based on a specific embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (“it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”).
As the Appellant notes, Gatley discloses a “two-piece fan
compartment where a first portion (26a) and a second portion (26b) connect”
to each other. Appeal Br. 11. Thus, we note that the second portion 26b
allows for egress of exhaust gas from the exhaust volute at location “B,” for
entry into the first portion 26a. Final Act. 6; Gatley Fig. 6. Hence, we agree
with the Examiner that the Appellant is overly narrowly interpreting claim 1,
and that “[t]here is no reason that element (B) in the Gatley reference cannot
be considered ‘an exhaust port’” considering that the exhaust gas is
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conveyed from the second portion 26b to the first portion 26a through “B” of
the second portion 26b. Ans. 17–18.
The Appellant also asserts that “the location of (B) relative to the top
exhaust volute bears no relation to where a connection to flue piping can be
made.” Appeal Br. 11. Specifically, the Appellant argues that its exhaust
port is “the end of the exhaust outlet passageway before transition[ing] to an
exhaust flue pipe.” Reply Br. 9 (citing Spec. ¶¶ 21–23; Figs. 3, 8); Appeal
Br. 11. However, we observe that claim 1 does not recite a flue, much less
the specific connection argued, so as to further define “exhaust port.”
Again, it is not proper to import claim limitations from particular
embodiments of the Specification. See Superguide, 358 F.3d at 875.
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of claim 1, and claims 2, 9, and 10 fall therewith.

Claims 4, 12, and 13
The Appellant relies on dependency from independent claims 1 or 9
for patentability of these claims. Appeal Br. 12. However, because claims 1
and 9 are found to be anticipated by the Gatley, the Appellant’s reliance on
dependency is unpersuasive. The Appellant also relies on its arguments
submitted relative to independent claim 6 discussed above regarding the cut-
off angle for patentability of claims 4, 12, and 13. Appeal Br. 13. Indeed,
these dependent claims specifically recite that “the cut-off angle extends at
an angle that is not more than thirty degrees positive from horizontal.”
Appeal Br. 18–19 (Claims App.). Accordingly, we reverse this rejection as
to claims 4, 12, and 13.

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Rejection 3: Claims 5 and 14
Dependent claims 5 and 14 specifically recite that “the cut-off angle is
negative from horizontal when the base is mounted atop the water heater.”
Appeal Br. 18, 19–20 (Claims App.). The Examiner rejects these claims as
unpatentable over Gatley, finding that it discloses that the cut-off angle of
cut-off “A” of “approximately 0°,” but fails to disclose a negative angle.
Final Act. 12. The Examiner concludes that a negative angle would have
been “a simple matter of design choice” (Final Act. 12), and that “[s]imply
moving the cut-off of the prior art apparatus such that it is slightly below the
rotation axis (as opposed to substantially in line with it) to create a negative
cut-off angle would have only involved routine skill in the art.” (Ans. 21).
The Appellant argues that Gatley’s cut-off is about “sixty degrees”
and not approximately 0° as the Examiner asserts. Appeal Br. 13–14. In
particular, the Appellant argues that “[a]s the point (A) designated by the
Examiner in his own annotations of Gatley Fig. 6 is not the cut-off of
Gatley’s blower housing, ‘simply moving’ this point would not affect the
location of the cut-off.” Appeal Br. 13. Thus, the Appellant argues that “the
Examiner’s proposed modification . . . has nothing to do with the location of
the cut-off.” Appeal Br. 14.
We agree with the Appellant. Fundamentally, the Examiner’s
rejection is premised on the erroneous interpretation of “cut-off” discussed
above, and the erroneous finding that point “A” of Gatley is the cut-off
point. Moving this point “A” of Gatley as suggested by the Examiner in the
present rejection does not impact the location of the actual cut-off, which is
the end of the volute closest to the fan center of rotation. Therefore, because
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the rejection is based on an erroneous claim interpretation, we reverse this
rejection of claims 5 and 14.
CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. The rejection of claims 9, 10, and 12–14 under 35 U.S.C.
§ 112(b) as being indefinite is reversed.
2. The rejection of claims 1, 2, 4, 6–10, 12, and 13 under 35
U.S.C. § 102(a)(1) as being anticipated by Gatley is affirmed as to claims 1,
2, 9, and 10, but is reversed as to claims 4, 6–8, 12, and 13.
3. The rejection of claims 5 and 14 under 35 U.S.C. § 103 as
unpatentable over Gatley is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9, 10, 12–
14
112(b) Indefiniteness 9, 10, 12–
14
1, 2, 4, 6–
10, 12, 13
102(a)(1) Gatley 1, 2, 9, 10 4, 6–8, 12,
13
5, 14 103 Gatley 5, 14
Overall
Outcome
1, 2, 9, 10 4–8, 12–14

TIME PERIOD FOR RESPONSE
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) (2019).
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AFFIRMED IN PART