Regal Beloit America, Inc.Download PDFPatent Trials and Appeals BoardMay 17, 20212021000308 (P.T.A.B. May. 17, 2021) Copy Citation 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. Appeal 2021-000308 Application 15/349,674 2 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.). Appeal 2021-000308 Application 15/349,674 3 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). Appeal 2021-000308 Application 15/349,674 4 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. Appeal 2021-000308 Application 15/349,674 5 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 Appeal 2021-000308 Application 15/349,674 6 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, Appeal 2021-000308 Application 15/349,674 7 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. Appeal 2021-000308 Application 15/349,674 8 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 Appeal 2021-000308 Application 15/349,674 9 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 Appeal 2021-000308 Application 15/349,674 10 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. Appeal 2021-000308 Application 15/349,674 11 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 Appeal 2021-000308 Application 15/349,674 12 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). Appeal 2021-000308 Application 15/349,674 13 AFFIRMED IN PART Copy with citationCopy as parenthetical citation