11353557 (P.T.A.B. Feb. 11, 2014)

Ex Parte Bash et al

Patent Trial and Appeal BoardFeb 11, 2014

11353557 (P.T.A.B. Feb. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CULLEN E. BASH and DAVID ALLEN MOORE ____________ Appeal 2012-001836 Application 11/353,557 Technology Center 3700 ____________ Before: JOHN C. KERINS, WILLIAM A. CAPP and JILL D. HILL, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-13 and 15-19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-001836 Application 11/353,557 - 2 - THE INVENTION Appellants’ invention relates to ventilation systems. Spec. 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A ventilation system comprising: a ventilation tile having, a frame sized for placement as a modular floor tile on a raised floor of a data center, a substantially circular opening in the frame to allow air to flow through the ventilation tile; a collapsible damper formed of a sheet of material having fold lines operable to collapse and expand into various folded positions to alter the size of the substantially circular opening in the ventilation tile and thereby variably restrict air flow through the substantially circular opening; a guide track supporting an outer edge of the collapsible damper; a cover positioned on the frame to protect the collapsible damper from physical damage; a sensor; an actuator for manipulating the collapsible damper; and a controller configured to receive a condition detected by the sensor and to manipulate the actuator based upon the received condition detected by the sensor. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Daw Dozier Mounir Kline Day US 5,180,331 US 5,673,851 DE 19927265 A1 US 2001/0042792 A1 US 7,534,167 B2 Jan. 19, 1993 Oct. 7, 1997 Dec. 30, 1999 Nov. 22, 2001 May 19, 2009 Appeal 2012-001836 Application 11/353,557 - 3 - The following rejections are before us for review: 1. Claims 1-12 and 17-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mounir, Daw and Kline. 2. Claims 13, 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Day, Daw, Mounir and Kline.1 OPINION Unpatentability of Claim 1 The Examiner finds that Mounir discloses all of the limitations of claim 1, except for a cover, sensor and controller. Ans. 5-8. In particular, the Examiner finds that the inner wall of element 10 of Mounir constitutes a guide track that supports an outer edge of the collapsible damper. Ans. 6. The Examiner relies on Daw as disclosing a cover. Ans. 7. The Examiner relies on Kline as disclosing a sensor and controller. Ans. 8. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine Mounir and Daw to provide a collapsible damper protected by a cover. Ans. 7-8. According to the Examiner, a person of ordinary skill in the art would do this to protect the damper from damage due to foot traffic. Ans. 8. The Examiner also concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Mounir and Daw with Klein’s sensor and controller. Id. According to the Examiner, a person of ordinary skill in the art would do this to control the temperature in the room. 1 In the Answer, the Examiner withdrew the rejection of claims 15 and 16. Ans. 15. Consequently, we will treat issues regarding claims 15 and 16 as moot and will not discuss them further in this opinion. Appeal 2012-001836 Application 11/353,557 - 4 - Appellants traverse the Examiner’s rejection by arguing that Mounir lacks a guide track as claimed. App. Br. 10. Appellants argue that a person of ordinary skill in the art would not consider the interior wall of a conduit to be a guide track. Id. The Examiner responds that Appellants did not claim any particular structure for a guide track and, therefore, as broadly claimed, even the inner wall of a conduit might be read as a guide track. Ans. 12-14. The Examiner notes that Figures 9-13 of Mounir depict the inner wall of conduit 10 as in contact with the blades of the damper. Id. The instant dispute requires us to construe the phrase “guide track supporting an outer edge of the collapsible damper.” Clms. App’x., claim 1. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appellants graphically depict a guide track as element 114 in the drawings. See Fig. 1B. The guide track is depicted as an annular groove or boss on the inside wall of the circular opening 106. In the Specification, the guide track is described as optional, however, when present, it is disposed near the periphery of the opening. Spec. 6-7. It is described as optional because, if the collapsible damper 102 is sufficiently rigid, it may be cantilevered off of spindle 108. Id. Otherwise, the guide track is designed to support the outer edge of the collapsible damper. Id. From the context, we believe a person of ordinary skill in the art would understand that the Appeal 2012-001836 Application 11/353,557 - 5 - guide track is designed and intended to inhibit flexion of the outer end of the damper in the axial direction. The proper definition of a claim term is generally the one that someone of ordinary skill in the art would ascertain from the intrinsic evidence in the record. Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). Even under the broadest reasonable construction, we think a person of ordinary skill in the art would understand the claimed guide track to be a structure comprised of an annular groove, boss, or some other form of track operatively configured to inhibit axial flexion of the outer edge of the damper. Thus, we do not agree that the Examiner’s broad construction is reasonable in light of the specification. Applying our construction to Mounir’s structure, we agree with Appellants that Mounir lacks a guide track as claimed. Furthermore, we also agree that the applied art of record fails to cure this deficiency in Mounir. Moreover, the Examiner has otherwise failed to supply articulated reasoning supported by a rational underpinning that it would have been obvious for a person of ordinary skill in the art to modify the applied art with a guide track as claimed and construed. In light of the foregoing discussion, we do not sustain the Examiner’s unpatentability rejection of claim 1. Unpatentability of Claims 13 and 17 Claims 13 and 17 are independent claims. Clms. App’x. Each claim has a limitation directed to a guide track supporting an outer edge of the collapsible damper. Id. For each claim, Appellants traverse the rejection on the grounds, among other things, that the applied art lacks a guide track as claimed. App. Br. 10-11, 16-18. We agree with Appellants that the applied Appeal 2012-001836 Application 11/353,557 - 6 - art fails to disclose a guide track for essentially the same reasons discussed above with respect to claim 1. Moreover, the Examiner has otherwise failed to supply articulated reasoning supported by a rational underpinning that it would have been obvious for a person of ordinary skill in the art to modify the applied art with a guide track as claimed and construed. Thus, for essentially the same reasons discussed above with respect to claim 1, we do not sustain the rejection of claims 13 and 17. Unpatentability of Claims 2-12, 18 and 19 Claims 2-12, 18 and 19 depend from either claim 1 or claim 17. Clms. App’x. As such, the rejection of each claim suffers from the same infirmity that we have identified with respect to claims 1 and 17. That infirmity is not cured by any of the secondary references cited in rejections of the dependent claims. Thus, for essentially the same reasons discussed above with respect to claims 1 and 17, we do not sustain the rejections of claims 2-12, 18 and 19. DECISION The decision of the Examiner to reject claims 1-13 and 17-19 is REVERSED.2 REVERSED Klh 2 The Examiner’s rejection of claims 15 and 16 having previously been withdrawn. Ans. 15.