DAIKIN INDUSTRIES, LTD. et al.Download PDFPatent Trials and Appeals BoardDec 3, 20202020003407 (P.T.A.B. Dec. 3, 2020) 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. 14/434,688 04/09/2015 Masahiro Honda DK-US120934ZH 1918 22919 7590 12/03/2020 GLOBAL IP COUNSELORS, LLP DAVID TARNOFF 1233 20TH STREET, NW SUITE 600 WASHINGTON, DC 20036-2680 EXAMINER COX, ALEXIS K ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 12/03/2020 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): mailpto@giplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIRO HONDA and SHINYA MATSUOKA Appeal 2020-003407 Application 14/434,688 Technology Center 3700 Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, 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 and 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 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 Daikin Industries, Ltd. and Daikin Europe N.V. Appeal Br. 3. Appeal 2020-003407 Application 14/434,688 2 CLAIMED SUBJECT MATTER The claims are directed to an air conditioning apparatus. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An air conditioning apparatus equipped with a refrigerant circuit configured as a result of plural indoor units being connected to an outdoor unit, the air conditioning apparatus comprising: a capacity controlling part configured to control an air conditioning capacity of the outdoor unit such that an evaporation temperature of refrigerant in the refrigerant circuit becomes a single target evaporation temperature or a condensation temperature of refrigerant in the refrigerant circuit becomes a single target condensation temperature; and a target refrigerant temperature changing part configured to perform first changing control that changes the target evaporation temperature to a first target evaporation temperature or the target condensation temperature to a first target condensation temperature in accordance with temperature differences between room temperatures of air conditioned spaces targeted by the indoor units and set temperatures that are target values of the room temperatures and in response to a condition that the temperature differences have exceeded a threshold temperature difference and the number of the indoor units in operation has increased being met, perform second changing control that forcibly changes the target evaporation temperature to a second target evaporation temperature or the target condensation temperature to a second target condensation temperature, Appeal 2020-003407 Application 14/434,688 3 the second target evaporation temperature and the second target condensation temperature being determined such that the room temperatures reach the set temperatures in a shorter amount of time compared to the first target evaporation temperature and the first target condensation temperature, with the second target evaporation temperature being set lower than the first target evaporation temperature and the second target condensation temperature being set higher than the first target condensation temperature. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Narikiyo US 5,004,149 Apr. 2, 1991 Alles US 2005/0194455 A1 Sept. 8, 2005 Fujiyoshi US 2007/0180851 A1 Aug. 9, 2007 REJECTIONS Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujiyoshi and Alles. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujiyoshi, Alles, and Narikiyo. OPINION New Ground of Rejection Claim 1 is the sole independent claim involved in this appeal. Claim 1 recites an “air conditioning apparatus” that includes “a capacity controlling part” and “a target refrigerant temperature changing part.” The claim does not recite any particular structure included in either of those “part[s].” Rather, these are generic components that carry out a set of Appeal 2020-003407 Application 14/434,688 4 functions. This is consistent with the Specification, which describes each “part” as being included in control unit 8. See, e.g., Spec. 9:24–30 (describing “capacity controlling part 81” and “target refrigerant changing part 84,” as well as “indoor controlling part 82” and “target refrigerant mode setting part 83” as forming control unit 8).2 According to the claim, the “capacity controlling part [is] configured to control an air conditioning capacity of the outdoor unit” in some unspecified manner such that a “temperature of refrigerant in the refrigerant circuit becomes a single target . . . temperature.”3 Based on the language recited in the claim, it is unclear what is meant by “a single target . . . temperature” as it relates to the refrigerant. Further, there is no indication as to what is required for the temperature of refrigerant to become a “target . . . temperature.” The claim further requires that the “target refrigerant temperature changing part [is] configured to perform first changing control” and “perform second changing control,” but does not specify anything that is controlled or adjusted in the air conditioning apparatus to trigger the desired change. The “first changing control” simply “changes the [single] target . . . temperature to a first target . . . temperature” in some unspecified manner, which the claim states is “in accordance with temperature differences between room temperatures of air conditioned spaces targeted by 2 Neither Appellant nor the Examiner asserts that the “capacity controlling part” or the “target refrigerant temperature changing part” invokes 35 U.S.C. § 112, paragraph 6. 3 The claims recite that the temperature can be an evaporation temperature or a condensation temperature “of refrigerant.” Appeal 2020-003407 Application 14/434,688 5 the indoor units and set temperatures that are target values of the room temperatures.” The claim does not specify anything in particular regarding these “temperature differences” or “target values,” other than that they are used in some unspecified manner. The “second changing control” is similarly vague, simply reciting that it “forcibly changes the target . . . temperature to a second target . . . temperature” in some unspecified manner when “the temperature differences have exceeded a threshold temperature difference and the number of the indoor units in operation has increased.” The claim then recites that “the second target . . . temperature” is “determined such that the room temperatures reach the set temperatures in a shorter amount of time compared to the first target . . . temperature.” The claim provides no detail as to how that determination is made. The only detail the claim provides about “the first target . . . temperature” and “the second target . . . temperature” is that one is greater than the other.4 The claim essentially recites a function with no identifiable structure providing that function (i.e., adjust “the target evaporation temperature” or “the target condensation temperature” to “reach the set temperatures [for the rooms] in a shorter amount of time”). Based on the record before us, we determine that the issues noted above create an unacceptable level of ambiguity in the claims because we are unable to determine what structure is required by the claims other than a generic computer module that achieves a target temperature in some 4 “[T]he second target evaporation temperature [is] set lower than the first target evaporation temperature and the second target condensation temperature [is] set higher than the first target condensation temperature.” Appeal 2020-003407 Application 14/434,688 6 unspecified manner. Rather than speculate, or read numerous limitations into the claim from the Specification, we determine that the most appropriate course of action is to enter a new ground of rejection under 35 U.S.C. § 112, second paragraph. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam) (A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear.); see also Ex parte McAward, Appeal No. 2015- 006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Appellant has the opportunity to resolve ambiguities during prosecution. See, e.g., McAward, at *6–7; see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (explaining that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed). Accordingly, we reject claims 1 and 2 under 35 U.S.C. § 112, second paragraph, as being indefinite. Examiner’s Rejections Because we determine the claims to be indefinite, and addressing the rejection would require speculation on our part as to what is actually required by the claim, we do not reach the merits of the obviousness rejections related to claims 1 and 2 based on different combinations of cited art. Instead, we reverse those rejections. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be Appeal 2020-003407 Application 14/434,688 7 understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION The Examiner’s rejections are reversed. We enter a new ground of rejection based on indefiniteness. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1 103(a) Fujiyoshi, Alles 1 2 103(a) Fujiyoshi, Alles, Narikiyo 2 1, 2 112 ¶2 1, 2 Overall Outcome 1, 2 1, 2 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating Appeal 2020-003407 Application 14/434,688 8 to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation