Ex Parte Dawson et al

Patent Trial and Appeal Board

Sep 3, 2014

12135239 (P.T.A.B. Sep. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHER J. DAWSON, VINCENZO V. DILUOFFO,
RICK A. HAMILTON II, and MICHAEL D. KENDZIERSKI
____________________

Appeal 2012-0017021
Application 12/135,239
Technology Center 2100
____________________

Before JEAN R. HOMERE, ELENI MANTIS MERCADER., and
JEFFREY S. SMITH, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
App. Br. 2.
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Application 12/135,239

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2010) from the
Examiner’s Final Rejection of claims 1, 2, 5-11, 14-21, and 23-28. Claims
3, 4, 12, 13, and 22 have been canceled. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b) (2010).
We reverse.
Appellants’ Invention
Appellants invented a method for dynamically reconfiguring an air
duct system to route airflow therein in response to an input signal. Spec.
[0008]. In particular, a controller (1105) sends a flow path actuation signal
(1140) to actuators within the duct causing moving parts therein to move
into positions, to either modify the shape of the existing duct or to create a
new path within the duct system. Id. at [0060]. Alternatively, the controller
can generate a vent actuation signal (1145) to open, close, or adjust a vent in
the duct system to achieve a desired temperature in a room. Id. at [0061].

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method, comprising:

receiving or obtaining input data;

generating at least one actuation signal to change a flow
configuration of a reconfigurable duct system based upon
the input data; and

transmitting the at least one actuation signal,

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Application 12/135,239

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wherein the at least one actuation signal comprises: a flow path actuation
signal that causes movement of at least one flow diverting part within the
duct system to modify an existing duct or create a new duct in the duct
system; and a vent actuation signal to open, close, or adjust a vent.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Carey US 2006/0186213 A1 Aug. 24, 2006

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, 7, 8, 10, 11, 14, 16, 17, 19-21, 23, and 25-28 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Carey.
Claims 5, 9, 15, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carey.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Carey and Appellants’ Admitted Prior
Art (AAPA).

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Application 12/135,239

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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5-28, and the Reply Brief, pages 2-15.2
Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding Carey describes an actuation signal comprising a flow path
actuation signal and a vent actuation signal, as recited in claim 1?
Appellants argue that Carey does not describe the disputed limitations
emphasized above. App. Br. 6-9, Reply Br. 2-4. According to Appellants,
Carey discloses at best a vent actuation signal that controls zone dampers in
a static duct. App. Br. 6-7, Reply Br. 3-4. However, Appellants argue there
is no disclosure in Carey of sending a flow path signal to modify a part of a
duct system or to create a new duct. Id.
In response, the Examiner concludes because the claim does not
require that the actuation signal include two separate signals, Appellants’
arguments are not commensurate with the scope of the claim, and these
arguments are therefore not persuasive. Ans. 12-13.
On the record before us, we find error in the Examiner’s anticipation
rejection of claim 1. In particular, we do not agree with the Examiner’s
claim construction that the actuation signal comprising a flow path actuation
signal AND a vent actuation signal does not require the actuation signal to
include two separate signals. Because the Examiner has not made a prima

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 21, 2011), the Reply Brief (filed
September 15, 2011) and the Answer (mailed July 15, 2011) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 12/135,239

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facie case that Carey describes an actuation signal comprising a flow path
signal and a vent signal, Appellants have shown at least one reversible error
in the Examiner’s rejection. Consequently, we need not reach the merits of
Appellants’ remaining arguments.
Regarding the rejection of independent claim 10, we agree with
Appellants that Carey describes a vent actuation signal, which can only open
or close vents in a static duct system, as opposed to reconfiguring the duct
system by modifying the shape of the duct or creating a new duct.
Accordingly, Carey does not anticipate claim 10.
Because claims 2, 5-9, 11, 14-21, and 23-28 recite commensurate
limitations to those of claims 1 and 10 discussed above, we find Appellants
have similarly shown error in the Examiner’s rejections of those claims.

DECISION
We reverse the Examiner’s rejections of claims 1, 2, 5-11, 14-21, and 23-28
as set forth above.

REVERSED

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