Ex Parte Monroe

Patent Trial and Appeal Board

May 9, 2017

12757944 (P.T.A.B. May. 9, 2017)

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.
12/757,944 04/09/2010 Ronald J. Monroe SR. 3851
70256 7590 05/09/2017
MICHAEL DREW
1814 SmokeRise Summit
Stone Mountain, GA 30087
EXAMINER
AVILES BOSQUES, ORLANDO E
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
05/09/2017 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
____________

Ex parte RONALD J. MONROE, SR.
____________

Appeal 2015-005969
Application 12/757,944
Technology Center 3700
____________

Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.

KNIGHT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ronald J. Monroe, Sr., Appellant, appeals under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting claims 1–12, 14–17, 19, and 20. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

Appeal 2015-005969
Application 12/757,944

2
Claims 1–5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snavely (US Patent No. 2,093,853, iss. Sept. 21, 1937,
hereinafter “Snavely”) and Bate (US Patent No. 222,122, iss. Dec. 2, 1879,
hereinafter “Bate”).
Claims 6–8, 10–12, 14, and 15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Snavely, Bate, and Andros (US Patent No.
2,129,255, iss. Sept. 6, 1938, hereinafter “Andros”).
Claims 9 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snavely, Bate, Andros, and Bratcher (US 2007/0000277
A1, pub. Jan. 4, 2007, hereinafter “Bratcher”).
Claims 17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Snavely, Bate, and Crete (US Patent No. 6,843,062 B2,
iss. Jan. 18, 2005, hereinafter “Crete”).

CLAIMED SUBJECT MATTER

The claims are directed to a portable air conditioner. Claim 1,
reproduced below, is reflective of the claimed subject matter:

1. A portable air conditioner comprising:
a substantially upright housing enclosing
a heat-transfer chamber,
a loading chamber;
a substantially horizontally-disposed removable tray
separating said heat-transfer chamber from said
loading chamber, having depending from a
perimeter thereof at least one substantially
vertically-oriented heat-transfer cell comprising an
elongated cell housing for retaining a phase-
Appeal 2015-005969
Application 12/757,944

3
changeable substance, said elongated cell housing
extending substantially within said heat-transfer
chamber having an upper open end accessible from
an upper region and terminating in a lower closed
end, and having at least one venting aperture that
places said heat-transfer chamber and said loading
chamber in air-flow communication with one
another wherein said heat-transfer chamber and
said loading chamber are separated from one
another except for said at least one venting
aperture;
at least one air-intake opening for receiving an air flow
into said heat-transfer chamber;
at least one air-outlet opening for venting air from said
heat-transfer chamber; and
an air-flow mechanism disposed proximate one of said
air-intake opening and said air-outflow opening for
urging air into said heat-transfer chamber into
contact with said at least one heat-transfer cell and
then through said at least one air-outlet opening
outwardly of said heat transfer chamber.

Br. 8–9 (Claims Appendix)

OPINION

The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
Appeal 2015-005969
Application 12/757,944

4
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR
decision).
Each of Appellant’s independent claims 1, 11, and 17 requires a
removable tray separating a heat-transfer chamber from a loading chamber,
the tray “having at least one venting aperture that places said heat-transfer
chamber and said loading chamber in air-flow communication with one
another.” Appeal Br. 8, 10, 12. The Examiner found that “Snavely fails to
explicitly teach the removable tray [(tray 33)] having at least one venting
aperture as claimed,” but that Bate teaches a partition including at least one
venting aperture. Final Act. 3, 7, 10. The Examiner pointed out that “Bate
further teaches that this arrangement allows for a smaller quantity of ice
required to sufficiently reduce the temperature to any given degree.” Id. at
3, 7; see id. at 10–11. The Examiner determined that it would have been
obvious to include at least one venting aperture in Snavely’s tray 33 that
places the heat transfer chamber (refrigerating chamber A) and the loading
chamber (chamber B) in air flow communication with one another “in order
to maximize cooling capacity for a given amount of heat exchange medium
such as ice in view of the teachings of Bate.” Id. at 3–4, 7–8, 11.
Appellant argues that Bate attributes the benefit of reduction in the
quantity of ice required to provide sufficient cooling (which was relied on by
the Examiner as a reason to provide an aperture) not to the aperture, but to
the removal of air from refrigerating chamber A by air-pump E. Br. 5
(citing Bate, p. 1, col. 2, ll. 24–35; p. 1, col. 2, l. 50–p. 2, l. 25). Appellant’s
Appeal 2015-005969
Application 12/757,944

5
characterization of Bate’s teachings is correct. In particular, Bate teaches
that “[i]nasmuch as the attenuated atmosphere within the chamber includes
only one-half (more or less) the actual quantity of air that the chamber would
contain of the ordinary unattenuated atmosphere, it follows that a
proportionately smaller quantity of ice is sufficient to reduce the temperature
to any given degree.” Bate, p. 2, col. 1, ll. 16–23..
In reviewing the combination of Snavely and Bate, it is not clear why
a person of ordinary skill in the art would modify Snavely to include an
aperture. Snavely states that the dry ice refrigerant is sealed and a radiator is
used to conduct the heat transfer. Snavely, p. 1, col. 1, l. 24–p. 1, col. 2,
l. 11. Snavely’s chamber A is insulated on the enclosing walls, top, and
bottom, respectively, and an aperture would run counter to the purpose of
Snavely’s insulated chamber. Id., p. 1, col. 1, ll. 24–55.
Furthermore, it is not clear how providing an aperture in Snavely’s
tray 33 could result in the quantity of air within Snavely’s loading chamber
and heat transfer chamber being reduced so that a lesser quantity of ice
would be required. Snavely’s heat transfer chamber is open to the
atmosphere so that the fan moves air through the ingress and egress
openings 35 and 36 provided in the walls of the receptacle through air
passage C. Id., p. 1, col. 2, ll. 17–20. Sealing of the passage C, or ingress
and egress openings, to allow for the quantity of air to be reduced by half so
that a lesser quantity of ice would be required would be counter to the
teachings of Snavely.
For the above reasons, the reason articulated by the Examiner for
combining Snavely and Bate is not supported by a rational underpinning as
required in KSR, supra. Moreover, the Examiner does not rely on Andros,
Appeal 2015-005969
Application 12/757,944

6
Bratcher, or Crete for any teaching that might make up for the deficiency in
the combination of Snavely and Bate. Accordingly, the rejections of
independent claims 1, 11, and 17, and their dependent claims 2–10, 12, 14–
16, 19, and 20 are not sustained.

DECISION
The Examiner’s decision to reject claims 1–12, 14–17, 19, and 20
under 35 U.S.C. § 103 is reversed.

REVERSED