Ex Parte 7,945,146 et al

Patent Trial and Appeal Board

Dec 17, 2015

95001823 (P.T.A.B. Dec. 17, 2015)

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.
95/001,823 11/17/2011 7,945,146 1323.5010 5095
32867 7590 12/18/2015
WILLIAM D. HARE
McNeely, Hare & War, LLP
12 Roszel Road
Suite C104
PRINCETON, NJ 08540-6234
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/18/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

AMERICAN HEAT MANUFACTURER, LLC
Requester, Cross-Appellant, Respondent

v.

ECOSMART US LLC
Patent Owner, Appellant
____________________

Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B21
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued May 17, 2011 to Cabrera (hereinafter "the ’146 patent").
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

2
STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002)
from a Final Rejection of claims 19–22, 25–29 and 32–34 (Appeal Brief
(hereinafter "App. Br.") 2). Remaining claims are either not subject to
reexamination, or have been canceled (App. Br. 1). In addition to the
Appeal Brief, the Patent Owner also relies on three declarations of inventor
Mr. Cabrera in support of patentability. The Requester relies on its
Respondent Brief (hereinafter "Resp. Br.") in support of the Examiner's
rejection. The Requester cross-appeals under 35 U.S.C. §§ 134 and 315
from the Examiner's withdrawal of additional grounds of rejections of the
same claims (Cross-Appeal Brief of Requester (hereinafter "CABR") 1).
We are informed that the ’146 patent was involved in infringement
actions that have been settled and dismissed (App. Br. 2). We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
The ’146 patent is directed to a tankless hot water heater (Title).
Representative independent claim 19 reads as follows (App. Br., Claims
App., underlining removed, italics added):
19. (new) A tankless hot water heater comprising:
a pipe having an inlet and an outlet;
at least one heating element configured to heat water
flowing through the pipe;
at least one sensor configured to measure a temperature
of water flowing through the pipe prior to heating by the at least
one heating element;
at least one sensor configured to measure a flow rate of
water flowing through the pipe;
at least one input means configured for entering a set
point for a temperature of water heated by the at least one
heating element; and
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

3
a microprocessor,
wherein the microprocessor is configured to receive input
parameters for controlling the output temperature of the water
during operation, the input parameters consisting of the
temperature of water flowing through the pipe prior to heating,
the flow rate of water flowing through the pipe, and the set
point for a temperature of heated water, and the microprocessor
is configured to provide as output a power setting to the one or
more heating elements, wherein the microprocessor provides as
the output a power setting to the one or more heating elements
with the power setting remaining constant while the input
parameters remain constant.

The Examiner rejects claims 19–22, 25–29 and 32–34 under 35
U.S.C. § 102(b) as anticipated by U.S. Patent No. 4,638,147 to Dytch et al.
(Right of Appeal Notice2 3).
We AFFIRM the Examiner's rejection as to the Patent Owner's appeal,
and find it unnecessary to reach the Requester's cross-appeal.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Dytch discloses a microprocessor controlled through-flow
electric water heater (Title). Figure 1 of Dytch showing a preferred
embodiment of the invention is reproduced below.

2 Hereinafter "RAN." The Examiner's Answer incorporates by reference the
RAN, and thus, we cite to the RAN herein.
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

4

Figure 1 of Dytch reproduced above is a diagrammatic illustration of a
preferred embodiment of water heater 10 including water inlet 12, water
outlet 13, heating elements 17–21, microprocessor 30, flowrate sensor 31,
inlet temperature sensor 36 and outlet temperature sensor 40 (col. 5, ll. 11–
12, 17–18; col. 5, l. 20–col. 6, l. 22; Fig. 1).
2. Dytch discloses that, as to the preferred embodiment illustrated
in Figure 1:
[m]ounted adjacent the outlet 13, is a further thermistor
40 which provides a further input to a terminal 41 of the control
means during start-up of the heater depending on the
temperature of the outflowing water. . . .
The sensor 40 senses the temperature of the outflowing
water initially so that the heater can be calibrated. The sensor
detects the temperature of the water, and thus the control means
can compensate, for example one or more of the elements 17 to
21 becoming "furred up" and thus its heating efficiency altered,
or the flow rate of the water through the canister changing
during the life of the heater, again due to "furring up" of the
flow path.
(Col. 6, ll. 8–22).
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

5
3. Dytch discloses that "furring up" means to "become encrusted
with calcium salts and other deposits," which can change the amount of heat
dissipated by the heating elements or change the flow rate through the heater
(col. 2, l. 66–col. 3, l. 7). Previous water heaters were unable to cope with
the effects of "furring up" (col. 3, ll. 8–14).
4. Dytch also teaches that, with respect to the preferred
embodiment of Figure 1:
[w]hen thermistor 40 senses that the temperature of the
outflowing water has reached [the initial] temperature [of
around 105º F], the heat dissipated by the elements 17 to 21
will be reduced . . . so that a steady state is reached. The sensor
40 then plays no further part in the control of the heating
means.
When a steady state has been reached, and the water is
issuing from the outlet 13 at 105º F., (40.55º C.) any change in
flow rate of the inflowing water, for example due to
fluctuations in the pressure of the water supply, or change in
temperature of the inflowing water, will be detected by the
sensors 31 and 36. The microprocessor 30 will respond to these
sensed changes, and further increase or reduce the heat
dissipated to the water as required, by switching on or off
further elements 18 to 21 and/or increasing or decreasing the
number of "on" cycles per second of the burst fired element 17,
to maintain the temperature of the outflowing water constant
. . . .
(Col. 9, ll. 5–24, emphasis added; see also col. 8, ll. 62–68).
5. Dytch further discloses that "[i]n a water heater according to the
first aspect of the invention, thermistor 40 need not be provided . . . ." (Col.
10, ll. 27–28).
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

6
6. Dytch further discloses that:
[t]he temperature of the inflowing water may be sensed
by a thermistor or other heat sensitive electronic device, and
similarly, the temperature sensor on the outlet, where provided,
to sense the temperature of the outflowing water may similarly
comprise a thermistor.
(Col. 4, ll. 29–33, emphasis added).

PRINCIPLES OF LAW
It is well settled that prior art under 35 USC § 102(b) must
sufficiently describe the claimed invention to have placed the
public in possession of it. . . . Such possession is effected if one
of ordinary skill in the art could have combined the
publication’s description of the invention with his own
knowledge to make the claimed invention.
In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
A prior art reference is enabling for a claimed invention if the reference
enables a person of ordinary skill in the art to make the invention without
undue experimentation. Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d
1312, 1314 (Fed. Cir. 2008) (citations omitted); see also In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988) (setting forth various factors to consider in
the undue experimentation analysis). There is a presumption that "both the
claimed and unclaimed disclosures in a prior art patent are enabled."
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003). The burden of rebutting the presumption of enablement of the cited
prior art by a preponderance of the evidence falls on the applicant. In re
Sasse, 629 F.2d 675, 681 (CCPA 1980).

Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

7
ANALYSIS OF PATENT OWNER'S APPEAL
Preliminarily, we note that only those arguments made in the briefs of
record in this appeal have been considered. Other arguments not made, or
could have been made, have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.67(c)(1)(vii).
The Patent Owner argues that the Examiner erred in rejecting the
claims as anticipated by Dytch, stating that "a difference between the
invention claimed in the ’146 Patent and the disclosure of Dytch [] is the
need to measure the outlet temperature to control the power setting applied
to the water when the water flow rate, inlet water temperature and desired
water outlet temperature remains constant." (App. Br. 8). According to the
Patent Owner, Dytch "requires the outlet water temperature to be measured
to control the power setting for heating the water." (Id.).
The Patent Owner argues that the water heater of Dytch:
operate[s] by initially measuring the inlet water temperature
(sensor 36), water flow rate (sensor 31) and heated water
temperature (sensor 40) and applying power to the heating
elements 17–21 with the heated water temperature being
measured by sensor 40. Dytch et al. [sic], col. 8, line 60
through col. 9, line 10. Once the desired water temperature is
reached, Dytch et al. explains that the sensor 40 "then plays no
further part in the control of the heating means." Dytch et al.,
col. 9, lines 11–12. At col. 10, lines 27–28, Dytch et al. states
that the thermistor 40 need not be provided in one aspect of the
invention. However, Dytch et al. does not explain how the
microprocessor 30 can control the amount of power applied to
the heating elements to achieve a steady state temperature
without measuring the heated water temperature.
(App. Br. 8–9, emphasis added).
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

8
The Examiner disagrees, first finding that Dytch anticipates the claims
because it "clearly states that the outlet temperature is optional. Therefore,
Dytch does disclose that it was known to use the microprocessor without the
outlet temperature as an input." (RAN 6). As another basis for the
anticipation rejection, the Examiner alternatively finds that even the
embodiment of Dytch that utilizes an outlet temperature sensor anticipates
the claims (RAN 7). Specifically, the Examiner also finds that:
[because] the claims do not require that the outlet temperature
sensor is not used during the entire operation of the tankless
water heater, Dytch meets the claim limitations after start up.
Therefore, even in this embodiment with the outlet temperature
sensor being used at startup, Dytch meets the requirements of
35 USC 102(b).
(Id., emphasis added).
While we only need to agree with the Examiner as to one of the above
noted bases to affirm the anticipation rejection, we agree with both bases.
Dytch describes a working example of a tankless water heater that includes a
thermistor 40 for sensing the outflowing water temperature (FF 1, 2). This
example includes a microprocessor that receives the outflowing water
temperature as an input parameter for calibrating the water heater at start-up
to correcting for the effects of "furring." (FF 2). However, Dytch also
discloses that thermistor 40 (i.e., output temperature sensor) "need not be
provided." (FF 5; see also FF 6). In such an implementation, Dytch's
microprocessor is configured to receive only the temperature of water
flowing through the pipe prior to heating, the flow rate of water flowing
through the pipe, and the set point for a temperature of heated water as
"input parameters for controlling the output temperature of the water during
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

9
operation." This implementation, like other preceding, operative water
heaters noted in Dytch, does not appear to correct for the effects of "furring."
(See FF 3).
The Patent Owner's assertion that the water heater of Dytch "requires
the outlet water temperature to be measured" in order to operate (App. Br.
8), is in direct contradiction to the explicit disclosure of Dytch that
thermistor 40 (i.e., output temperature sensor) "need not be provided." (FF 5;
see also FF 6). The Patent Owner's further argument that Dytch without the
outlet temperature sensor is not enabled is unpersuasive not only for the
reasons discussed infra, but is also misdirected in view of the language of
the claim, which reads on the embodiment without an output temperature
sensor, as well as the preferred embodiment that includes an output
temperature sensor.
Specifically, turning to the claim language first, the Patent Owner's
argument that the water heater of Dytch cannot control the "power applied to
the heating elements to achieve a steady state temperature without
measuring the heated water temperature" (App. Br. 9) is misdirected and
unpersuasive because the arguments are based on limitations that do not
appear in the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(features not appearing in the claims cannot be relied upon for patentability).
Rather, the claim language states:
wherein the microprocessor is configured to receive input
parameters for controlling the output temperature of the water
during operation . . . wherein the microprocessor provides as
the output a power setting to the one or more heating elements
with the power setting remaining constant while the input
parameters remain constant.
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

10
(App. Br., Claims App.).
Correspondingly, the claim language at issue is directed to the
operation when "the input parameters remain constant," that is, when there is
no variation in any of the input parameters. This claim language broadly but
reasonably speaking, encompasses operation of the water heater after start-
up is finished. (RAN 7; see also FF 4, quoting col. 9, ll. 11–12). After the
system of Dytch attains the desired temperature, and is in steady state
operation with the input parameters (such as inlet temperature, water flow
rate and the set point) remaining constant, the microprocessor of Dytch
provides an output power setting that remains constant as required by claim
19 (FF 2–4).
The fact that, in the preferred embodiment of Dytch, an outlet
temperature sensor3 is provided for the initial "calibration" during start-up
(FF 2, 3) does not diminish the fact that Dytch also discloses that the output
temperature sensor does not play any further part after steady state is
attained (FF 4). Nothing in claim 19 requires the entire operation of the
water heater, which may include different transitions or changes in input, to
be attained without an output temperature sensor.
Consistent therewith, we also agree with the Requester that "[i]f the
value of the input parameters stay the same the power setting output will be
the same" (Resp. Br. 6), and that:

3 While we do not rely on the following in our decision, we observe that
mere provision of the output temperature sensor does not detract from the
disclosed device of Dytch from anticipating claim 19. In this regard, as
noted by the Requester, even the system taught by the reexamined ’146
patent includes an output temperature sensor 135 (Resp. Br. 7 citing ’146
patent, col. 4, ll. 52–54; col. 5, ll. 28–31, 45–48).
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

11
the [P]atent [O]wner's claims are not limited to any specific
point in time. However, as admitted by the patent owner, the
water outlet sensor 40 is used at start-up (See Col. 6, ll. 8–15.)
in the preferred embodiment of Dytch. Thus, for most of the
operation of the preferred embodiment of Dytch, the water
outlet sensor 40 is not needed or referred to.
(Id. at 10).
Indeed, declarant and inventor, Mr. Cabrera, also appears to
acknowledge that, in steady state, "the power setting remain[s] constant
while the input parameters remain constant" as required by claim 19 in his
statement:
Steady Stage
Column 9, Lines 11-12: "The sensor 40 then plays no
further part in the control of the heating means." This statement
is only true in the sense that the heating means do not need to
be controlled because a steady state has been achieved.
(2nd Decl. Cabrera, pg. 4).
Thus, in view of the above, the Patent Owner's assertion that the water
heater of Dytch "requires the outlet water temperature to be measured"
(App. Br. 8) is unpersuasive because Dytch explicitly discloses that
"thermistor 40 need not be provided" (FF 5; see also FF 6). In such an
embodiment in which no thermistor 40 is provided, Dytch anticipates the
invention of claim 19. Moreover, even in the preferred embodiment wherein
such outlet water temperature sensor is provided, Dytch teaches that outlet
water temperature sensor is used in the context of start-up and calibration,
but in steady state, the sensor "plays no further part in the control of the
heating means." (FF 2–4). Because claim 19 is directed to the operation
when "the input parameters remain constant," which encompasses steady
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

12
state operation, the preferred embodiment of Dytch also anticipates the claim
as well, as found by the Examiner (RAN 7).
As noted supra, the Patent Owner also argues that "the rejection of the
claims over Dytch et al. is based on a disclosure that is so sufficiently
riddled with ambiguities and inconsistencies as to be nonenabling for a
tankless hot water heater operated according to the rejected claims." (App.
Br. 8; see also id. at 10). In this regard, the Patent Owner argues that Dytch
is "ambiguous and inconsistent as to whether the outlet water temperature is
measured to control the power applied to the heater . . . ." (Id. at 10).
However, for the reasons generally discussed above, we do not find the
Dytch disclosure to be ambiguous or non-enabled as to the operation recited
in claim 19 wherein "the power setting remain[s] constant while the input
parameters remain constant." The Patent Owner's arguments based on the
lack of detail in Dytch (App. Br. 13–16) are not persuasive, and we discern
no need for Dytch to disclose additional details of the programming in order
to enable an anticipatory embodiment as to the subject matter claimed
"wherein the microprocessor provides as the output a power setting to the
one or more heating elements with the power setting remaining constant
while the input parameters remain constant." As discussed supra, as long as
the input parameters remain constant, the power setting in the water heater
of Dytch would remain constant.
The Patent Owner further argues that Dytch also discloses that the
inlet temperature and flow sensors are also optional, and if these sensors are
optional, "then Dytch et al. must rely on measuring the outlet water
temperature to determine how much power to apply to the heating elements
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

13
to control the outlet water temperature." (App. Br. 11–12, citing Dytch, col.
2, ll. 39–42). Accordingly, the Patent Owner argues that there is no enabling
disclosure in Dytch of a hot water heater system that operates with the outlet
water temperature sensor as well as the water flow rate and inlet water
temperature sensors "all being absent, which can exist according to a fair
reading Dytch et al., and which must exist in Dytch et al. to support an
anticipation rejection." (Id.).
However, we do not agree that the Patent Owner's characterization of
Dytch is a "fair reading" thereof. In our view, a person of ordinary skill in
the art would understand Dytch as disclosing a preferred embodiment of a
water heater that includes inlet water temperature sensor 36, water flow rate
sensor 31, and outlet water temperature sensor 40 (col. 5, l. 48–col. 6, l. 22;
Fig. 1). A person of ordinary skill in the art also would understand Dytch as
disclosing, albeit as non-preferred alternative embodiments, wherein: (A)
outlet water temperature sensor is optional (FF 4–6); and (B) inlet water
temperature and/or water flow rate sensors are optional (col. 2, ll. 39–42).
As to the last embodiment, we discern no technical reason why the inlet
water temperature and/or water flow rate sensors cannot be optional in view
of the presence of an outlet water temperature sensor. The Patent Owner's
argument that Dytch must be enabled with respect to an embodiment of a
water heater wherein all of these sensors are omitted (App. Br. 12) is based
on an unreasonable and forced reading of Dytch.
As noted, there is a presumption that "both the claimed and unclaimed
disclosures in a prior art patent are enabled" and the Patent Owner has the
burden of rebutting this presumption of enablement. Amgen, 314 F.3d at
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

14
1355; Sasse, 629 F.2d at 681. Under the facts before us, the Patent Owner
has not satisfied its burden of establishing that Dytch did not enable a person
of ordinary skill in the art to make the claimed tankless water heater claimed
for the reasons discussed above; or that undue experimentation would have
been required. Impax, 545 F.3d at 1314; Wands, 858 F.2d at 737.
As also noted, the Patent Owner submitted several declarations of
inventor Mr. Cabrera, but these declarations do not persuasively address the
issues discussed supra. While we have reviewed and considered the entirety
of these declarations as they may pertain to the rejection on appeal, the
contents thereof do not change the analysis set forth supra.
In conclusion, in view of the above, we are not persuaded that the
Examiner erred in rejecting claim 19 as anticipated by Dytch. The Patent
Owner also does not separately argue any of the other claims on appeal. In
particular, as to independent claims 25 and 32, the Patent Owner merely
relies on the same arguments discussed above relative to the limitation "the
power setting remaining constant while the input parameters remain
constant" and enablement in support of their patentability (App. Br. 16).
The Patent Owner's arguments are not persuasive for the reasons discussed
supra. The Patent Owner also merely relies on the dependencies for
patentability of claims 21, 22, 26, 28, 29, 33 and 34 that ultimately depend
from one of the independent claims 19, 25 or 32 (id.), and thus, these claims
fall with their corresponding claims from which they depend.4 As noted,
any arguments that could have been made as to the various claims but not

4 We note that Patent Owner omits dependent claim 20 from the listing
(App. Br. 16). Thus, the rejection of dependent claim is summarily
affirmed.
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

15
made are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
Accordingly, we affirm the Examiner's rejection of claims 19–22, 25–29 and
32–34.

CROSS-APPEAL OF REQUESTER
The Requester cross-appeals the Examiner's withdrawal of six
additional grounds of rejection of the reexamined claims (CABR 1, 4).
However, for the reasons discussed supra, we affirm the Examiner's
rejection of all claims that are subject of the cross-appeal. Correspondingly,
because the withdrawn rejections that are subject of the cross-appeal are
superfluous, we find it unnecessary to reach the cross-appeal.

CONCLUSION
We affirm the Examiner's rejection of claims 19–22, 25–29 and 32–
34, and decline to reach the Requester's cross-appeal.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED
Appeal 2015-002241
Reexamination Control 95/001,823
Patent US 7,945,146 B2

16
llw

Patent Owner, Appellant

William D. Hare
MCNEELY, HARE & WAR, LLP
12 Roszel Road
Suite C104
Princeton, NJ 08540-6234

Requester, Cross-Appellant, Respondent
Daniel S. Polley, P.A.
7251 West Pallmetto Park Road
Suite 202
Boca Raton, FL 33433