CLARK EQUIPMENT COMPANY

Patent Trials and Appeals Board

Oct 2, 2020

2019004549 (P.T.A.B. Oct. 2, 2020)

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.
14/860,037 09/21/2015 John Thomas Gunn 024442-9209-US00 9793
23409 7590 10/02/2020
MICHAEL BEST & FRIEDRICH LLP (Mke)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
HANSEN, KENNETH J
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN THOMAS GUNN and RICHARD LOUIS KOUZEL
Appeal 2019-004549
Application 14/860,037
Technology Center 3700
Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
PAUL J. KORNICZKY, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge KORNICZKY.

Opinion Dissenting filed by Administrative Patent Judge FITZPATRICK.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2019-004549
Application 14/860,037

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5, 14, 15, and 19–29. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a condensate vaporization system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An air compressor system comprising:
a compressor having an intake end and a discharge end,
the compressor operable to draw in atmospheric air at the intake
end and to discharge a flow of compressed air from the discharge
end, the flow of compressed air including an effluent defined by
at least entrained water in a liquid state;
a temperature sensor configured to detect a temperature of
the compressed air discharged by the compressor;
a separator operable to remove effluent from the flow of
compressed air to form a dry compressed air, the separator
discharging a flow of dry compressed air and a flow of effluent;
and
an electric heater configured to receive the flow of effluent
from the separator and vaporize the effluent, wherein in response
to at least a detected change in the temperature of the compressed
air by the temperature sensor, operation of the electric heater is
adjusted to vaporize the effluent.

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
May 16, 2018 (“Final Act.”) and Answer dated March 22, 2019 (“Ans.”),
and (2) Appellant’s Appeal Brief dated December 13, 2018 (“Appeal Br.”)
and Reply dated May 22, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Clark Equipment
Company. Appeal Br. 2.
Appeal 2019-004549
Application 14/860,037

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REJECTION
Claims 1–5, 14, 15, and 19–29 stand rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre–AIA), first paragraph, as failing to comply
with the written description requirement. Final Act. 3.
Appellant seeks our review of this rejection.
OPINION
Claims 1–5, 14, 15, and 19–29 as Lacking Written Description
Appellant argues claims 1–5, 23, and 25 as a group. Appeal Br. 12.
We select independent claim 1 as the representative claim, and claims 2–5,
23, and 25 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that claims 1–5, 14, 15, and 19–29 fail to
comply with the written description requirement, and contain subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor or a joint inventor,
or for pre-AIA the inventor(s), at the time the application was filed, had
possession of the claimed invention. Final Act. 3–8; Ans. 3–11.

Claim 1
Claim 1 recites, in part, “wherein in response to at least a detected
change in the temperature of the compressed air by the temperature sensor,
operation of the electric heater is adjusted to vaporize the effluent.” The
Examiner finds that this limitation is not supported by the originally filed
disclosure in a manner that would reasonably convey that the inventor had
possession of the instant invention. Final Act. 3–4. According to the
Examiner, “the disclosure does not adequately set forth sufficient structure,
material, algorithm(s), formulas or mathematical relationships for
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performing the recited adjustment operations.” Id. The Examiner explains
that there “is functional discussion of using the controller for controlling
electricity to the electric heater,” but “there is no corresponding description
of how the functions are derived or determined to make such an adjustment.”
Id. (emphasis omitted). Similarly, the Examiner explains that paragraph 18
of the Specification, discloses “a ‘predictive algorithm’ to ‘ready’ (e.g.,
preheat or otherwise adjust the temperature and/or energy flow in
anticipation of a change in conditions) the electric heater 38 and prepare the
electric heater 38 to vaporize effluent,” but “there are no details for the
algorithm or how it uses temperature data to adjust the electric heater.” Id.
(emphasis omitted).
Appellant argues that the Examiner’s rejection is erroneous because
paragraphs 18, 24, and 25 of the Specification demonstrate possession by
describing the claim terms “wherein in response to at least a detected change
in the temperature of the compressed air by the temperature sensor,
operation of the electric heater is adjusted to vaporize the effluent” recited in
claim 1. Appeal Br. 10. According to Appellant, the Specification describes
(1) “a compressor temperature sensor 58 that detects the temperature
of the compressed air exiting the compressor 14” (Spec. ¶ 18),
(2) the “detected temperature of the compressed air is sent to the
controller 50, and in response the controller 50 determines and controls the
amount of electricity that is provided to the electric heater 38 to ensure that
the condensed effluent within the electric heater 38 is fully vaporized” (id.
¶ 25), and
(3) “based on the detected temperature by the compressor temperature
sensor 58, the controller 50 can preheat or otherwise adjust the temperature
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and/or energy flow to the electric heater 38 in anticipation of a change in
conditions, preparing the electric heater 38 to fully vaporize the condensed
effluent for a given demand” (id. ¶ 25). Appeal Br. 10.
Paragraph 25 of the Specification states, in part,
based on the signals from the sensors 58, 62, 66, 68, the
controller 50 may utilize a predictive algorithm to “ready” (e.g.,
preheat or otherwise adjust the temperature and/or energy flow
in anticipation of a change in conditions) the electric heater 38
and prepare the electric heater 38 to fully vaporize the condensed
effluent for a given demand (i.e., kilowatt input or heat load).
Appellant argues that paragraph 24 discloses that “the controller 50 controls
the amount of electricity provided to the electric heater 38 by the power
source,” and the “compressor temperature sensor 58 detects the temperature
. . . and sends . . . temperature measurements to the controller 50.” Appeal
Br. 8. Referring to paragraph 25, Appellant argues that “[e]xamples of
‘ready’ the electric heater 38, . . . include preheating the electric heater 38,
adjusting the temperature of the electric heater 38 in anticipation of a change
in conditions, and/or adjusting the energy flow to the electric heater 38 in
anticipation of a change in conditions.” Id. at 9–10. Appellant states that
the “change in conditions are based on the signal from the compressor
temperature sensor 58,” and these “steps are taken to prepare the electric
heater 38 to fully vaporize the condensed effluent for a given demand” and
“operation of the electric heater 38 is adjusted to vaporize the effluent in
response to at least a detected change in the temperature of the compressed
air by the temperature sensor.” Id. at 10.
Appellant also argues that “rather than reviewing the claims and the
entire specification to understand how Appellant provides support for the
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various features of the claimed invention as required by the M.P.E.P., the
[Examiner] is improperly fixating on four words of the specification” ––
“utilize a predictive algorithm” recited in paragraphs 18 and 25 of the
Specification. Appeal Br. 10 (citing MPEP § 2163(II)(A)(2)). According to
Appellant, the Examiner “bases the written description rejection on these
four words in the specification to assert that ‘there are no details for the
algorithm or how it uses temperature data to adjust the electric heater,’” that
“there is no description how any data from such functions are stored or
transformed into values used to perform the control of the amount of
electricity to the electric heater,” and that “there is no corresponding
description of how the functions are derived or determined to make such an
adjustment.” Id. (citing Final Act. 3–4).
In response to the Examiner’s findings, Appellant argues that
the written description discloses a compressor temperature
sensor 58 that directly measures the temperature of the
compressed air exiting the compressor 14. See Paragraphs
[0018], [0024]; FIG. 1. The compressor temperature sensor 58
generates a temperature signal indicative of the measured
temperature of the compressed air and transmits the temperature
signal to the controller 50. See id. In anticipation of a change in
conditions as detected by at least the compressor temperature
sensor 58, the controller 50 can adjust the temperature of the
electric heater 38 to vaporize effluent and/or adjust the energy
flow of the electric heater 38 to vaporize effluent. See Paragraphs
[0018], [0025]; FIGS. 1–2.
Appeal Br. 11.
Appellant’s arguments are not persuasive. A specification must
“contain a written description of the invention.” 35 U.S.C. § 112 ¶ 1 (2006).
The test for the sufficiency of the written description “is whether the
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disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015). “The written description requirement is not met if
the specification merely describes a ‘desired result.’” Id. Thus, claims may
lack written description when the claims define the invention in functional
language specifying a desired result but the specification does not
sufficiently describe how the function is performed or the result is achieved.
Here, claim 1 recites “wherein in response to at least a detected
change in the temperature of the compressed air by the temperature sensor,
operation of the electric heater is adjusted to vaporize the effluent.” We
understand that this limitation is primarily directed to a control for operation
and adjustment of an electric heater for vaporizing condensed effluent from
compressed air discharged by a compressor. According to the Specification,
the various operational parameters of electric heater 38 are controlled by
controller 50, which is preferably a microprocessor-based controller, which
electrically couples to electric heater 38. Spec. ¶ 17. We understand that
controller 50 generate outputs, i.e., temperature, pressure, ambient air
humidity, as data inputs to provide electricity to the heater. Appellant,
however, does not identify where Specification disclose the hardware
circuits, programmed logic, or algorithm steps necessary to transform the
inputs into the controlled outputs for the electric heater, let alone providing
controlled operation and adjustment of the heater to vaporize effluent as
recited in claim 1. Similarly, Appellant does not identify where the
Specification discloses a description of any material structure, examples,
formulas or mathematical relationships for performing the claimed function,
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i.e., operation and adjustment of the electric heater to vaporize effluent
based upon temperature data or any other input parameters. Furthermore,
Appellant does not identify where the Specification identifies a description
of how any data from such functions are stored or transformed into output
values used to control any amount of electricity to the electric heater.
Contrary to Appellant’s reference to paragraphs 18, 24, and 25 of the
Specification, the Specification does not explain how Appellant intends to
achieve the claimed function to satisfy the written description requirement.
Vasudevan, 782 F.3d at 683 (“The more telling question is whether the
specification shows possession by the inventor of how [the claimed
function] is achieved.”). Although the control that operates on input
parameter data (temperature, pressure, ambient air humidity, and the like) to
generate controlled outputs (electricity) to the heater, Appellant does not
identify where the Specification discloses algorithmic steps which set forth
how these input parameters are transformed into the controlled outputs, or a
description of how the functions are derived or determined in order to
operate and adjust the electric heater. Despite Appellant’s reference to
paragraphs 18 and 24 of the Specification, the Specification does not
disclose any logic details, algorithm steps, thresholds, standards,
mathematical relationships or any other guidance that would convey to one
of ordinary skill in the art how the inventor solved the problem of adjusting
the heater to vaporize effluent based upon temperature, or any other input
parameter. The Specification does not explain how the temperature levels of
the compressed air discharge correlate with or determine an amount of heat
energy required to vaporize condensed liquid in the effluent downstream of
the separation tank. Appellant does not provide evidence that controlled
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adjustment of the heater to vaporize effluent is well known to those skilled
in the art or that one of ordinary skill would reasonably know how the
inventor solved the problem of how to provide controlled adjustment of the
heater to vaporize condensed effluent. It is simply unclear how the disputed
function recited in claim 1 is performed because the disclosure lacks
adequate written description support.
For the reasons above, the rejection of claim 1 is sustained. Claims 2–
5 and 23, and 25 fall with claim 1.

Claims 14, 19, 20, 22, 24, 26–29
Appellant’s arguments regarding the rejection of claims 14, 19, 20,
22, 24, and 26–29 are the same as those discussed above in connection with
claim 1. Appeal Br. 12–23. For the reasons above, Appellant’s arguments
are not persuasive, and the rejection of claims 14, 19, 20, 22, 24, and 26–29
are sustained.
CONCLUSION
The Examiner’s decision to reject claims 1–5, 14, 15, and 19–29 is
AFFIRMED.
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Application 14/860,037

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 14, 15,
19–29
112 ¶ 1 Written
Description
1–5, 14, 15,
19–29

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).
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN THOMAS GUNN and RICHARD LOUIS KOUZEL
Appeal 2019-004549
Application 14/860,037
Technology Center 3700
Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
PAUL J. KORNICZKY, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge, dissenting.
I dissent from the majority’s decision to affirm the Examiner’s written
description rejection.
The Examiner found, with respect to claim 1, that “the limitation
‘wherein in response to at least a detected change in the temperature of the
compressed air by the temperature sensor, operation of the electric heater is
adjusted to vaporize the effluent’ is not supported by the originally filed
disclosure in a manner that would reasonably convey that the inventor had
possession of the instant invention.” Final Act. 3. More specifically, the
Examiner found as follows:
The disclosure does not adequately set forth sufficient
structure, material, algorithm(s), formulas or mathematical
relationships for performing the recited adjustment operations.
Appeal 2019-004549
Application 14/860,037

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There is functional discussion of using the controller for
controlling electricity to the electric heater. However, there is
no corresponding description of how the functions are derived
or determined to make such an adjustment. In Applicant’s
specification para. 0018, “a ‘predictive algorithm’ to ‘ready’
(e.g., preheat or otherwise adjust the temperature and/or energy
flow in anticipation of a change in conditions) the electric
heater 38 and prepare the electric heater 38 to vaporize
effluent” is discussed but there are no details for the algorithm
or how it uses temperature data to adjust the electric heater.
Furthermore, as far as can be determined, there is no description
of how any data from such functions are stored or transformed
into values used to perform the control of the amount of
electricity to the electric heater.
Id. at 3–4; see also Ans. 4 (explaining that, even though this is a written
description rejection, as opposed to an enablement rejection, Appellant’s
“claims define the invention in functional language specifying a desired
result but the specification does not sufficiently describe how the function is
performed or the result is achieved”) (citing MPEP § 2161.01(I)).
In claim 1, the desired result/function performed is that “operation of
the electric heater is adjusted to vaporize the effluent.” Appeal Br. 25
(claim 1). This desired result/function must occur, per claim 1, “in response
to at least a detected change in the temperature of the compressed air by the
temperature sensor.” Id. This strikes me as a straightforward cause and
effect relationship, the implementation of which would be well within the
level of skill of a person of ordinary skill in the art. Thus, I find adequate
written description support in, for example, the following disclosure:
The controller 50 receives the compressor temperature
measurements, the compressor pressure measurements, the
ambient air temperature measurements, the ambient air relative
humidity measurements, and the heater temperature
measurements. Based on one or more of these measurements,
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the controller 50 determines and controls the amount of
electricity that is provided to the electric heater 38 to ensure
that the condensed effluent within the electric heater 38 is fully
vaporized.
Spec. ¶25.
In the next sentence, the Specification does refer to a “predictive
algorithm,” but I understand such algorithm to be for a different function,
namely, to “preheat or otherwise adjust the temperature and/or energy flow
in anticipation of a change in conditions.” Spec. ¶25 (emphasis added). As
Appellant points out, claim 1 “does not recite any ‘predictive algorithm.’”
Appeal Br. 11. Nor does claim 1 recite the function that the Specification
ties to the “predictive algorithm.” Accordingly, in my view, a description of
the “predictive algorithm” is not necessary to support claim 1.
I would reverse the Examiner’s written description rejection.