Ex Parte Dawson et alDownload PDFPatent Trial and Appeal BoardSep 3, 201412135239 (P.T.A.B. Sep. 3, 2014) Copy Citation 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. Appeal 2012-001702 Application 12/135,239 2 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, Appeal 2012-001702 Application 12/135,239 3 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). Appeal 2012-001702 Application 12/135,239 4 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). Appeal 2012-001702 Application 12/135,239 5 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 tkl Copy with citationCopy as parenthetical citation