Ryan Hardesty et al.

Patent Trials and Appeals Board

Jun 23, 2020

14163793 - (D) (P.T.A.B. Jun. 23, 2020)

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.
14/163,793 01/24/2014 Ryan Hardesty 87359.21503 9516
30734 7590 06/23/2020
BakerHostetler
Washington Square, Suite 1100
1050 Connecticut Ave. N.W.
Washington, DC 20036-5304
EXAMINER
BARGERO, JOHN E
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/23/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edervis@bakerlaw.com
eofficemonitor@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RYAN HARDESTY, DAN KARCH, DAVID KING,
and AARON SMITH
____________

Appeal 2018-005424
Application 14/163,793
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention relates to hot water heaters. Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Weil-McLain as the applicant and The
Marley-Wylain Company as the real party in interest. Appeal Br. 4.
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1. A hot water heater appliance, comprising:
a boiler;
a companion water heater having a hot water storage tank;
and
a controller configured to control the water heater appliance
in response to a sensed temperature at an upper portion of the
hot water storage tank and a sensed temperature at a lower
portion of the hot water storage tank, wherein the controller is
configured to control the boiler to provide a boiler water to the
hot water storage tank at a temperature above a predetermined
temperature in response to both of the sensed temperature at an
upper portion of the hot water storage tank and the sensed
temperature at a lower portion of the hot water storage tank
being below the predetermined temperature and the controller is
configured to control the boiler to provide the boiler water to
the hot water storage tank at a temperature at the predetermined
temperature in response to the sensed temperature at an upper
portion of the hot water storage tank being above the
predetermined temperature and the sensed temperature at the
lower portion of the hot water storage tank being below the
predetermined temperature.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Toni US 3,461,854 Aug 19, 1969
Olney US 3530,837 Sept. 29, 1970
Nusbaumer US 4,768,678 Sept. 6, 1988
Jackson US 5,442,157 Aug. 15, 1995
Patterson US 2004/0069768 A1 Apr. 15, 2004
Bradenbaugh US 7,346,274 B2 Mar. 18, 2008
Leeland US 2010/0116224 A1 May 13, 2010
Roetker US 2011/0123179 A1 May 26, 2011
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The following rejections are before us for review:
1. Claims 1 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni and Leeland.
2. Claims 2, 3, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni, Leeland, and Patterson.
3. Claims 4–6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni, Leeland, Patterson, and Olney.
4. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over Toni, Leeland, Patterson, and Nusbaumer.
5. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Toni, Leeland, and Bradenbaugh.
6. Claims 9 and 15–17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni, Olney, and Leeland.
7. Claims 10 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni, Olney, and Bradenbaugh.
8. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Toni, Olney, and Patterson.
9. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable
over Toni, Olney, Leeland, and Roetker.
10. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable
over Toni, Olney, Leeland, and Jackson.

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OPINION
Unpatentability of Claims 1 and 19
over Toni and Leeland
Claim 1
The Examiner finds that Toni discloses the invention substantially as
claimed except for configuring the controller to provide boiler water to the
hot water storage tank at a temperature above a predetermined temperature
in response to the sensed temperature at both upper and lower portions of the
hot water storage tank, for which the Examiner relies on Leeland. Final
Act. 3–4. 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 modify Toni
with the teachings of Leeland to achieve the claimed invention. Id. at 4.
According to the Examiner, a person of ordinary skill in the art would have
done this to rapidly increase the heat of the stored water. Id.
Appellant argues that the Examiner’s proposed combination
improperly changes the principle of operation of the Toni reference. Appeal
Br. 13–14. Appellant argues that Toni is directed to increasing the volume
of supplied hot water in response to an increased demand from a thermostat.
Id. According to Appellant, such entails a different “principle of operation”
than demanding and supplying hot water at a higher temperature in response
to an increased demand from a thermostat. Id. (“There is no teaching or
suggestion in Toni that super-hot water is wanted or desired”).
In response, the Examiner explains that Toni and Leeland teach two
alternative, but well known, techniques for responding to a demand for hot
water. Ans. 14. According to the Examiner, Toni responds to the increased
demand by supplying a higher volume of water at a targeted temperature,
whereas Leeland supplies an overall lower volume of water, but at a higher
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temperature. Id. To illustrate the point, the Examiner describes a common,
everyday example familiar to even lay persons, namely, different ways to
mix hot and cold water to fill a bathtub with water. Id.
Toni is directed to a water heating system. Toni, col. 1, ll. 11–12.
Toni discloses a series of water heaters that are connected to a water storage
tank. Id. col. 1, ll. 32–35. Toni’s system contains two closed flow systems,
each of which is capable of supplying hot water to the storage tank by means
of heaters and pumps. Id. col. 1, ll. 53–63. Toni’s system features two
thermostats within the storage tank; each thermostat at a different vertical
level and each thermostat connected to the heater and pump of one of the
closed flow systems. Id. col. 1, ll. 58–62.
When the temperature indicated by a thermostat falls below a set-
point, one or more heaters supply heated water to the tank via the pumps.
Id. col. 1, l. 48 – col. 2, l. 26. Toni is responsive to differing demands for
hot water. Id. When small volumes of heated water are drawn from the
storage tank, such heated water is replaced with cold water that is supplied
to the bottom of the tank. Id. When the resulting influx of cold water causes
the water temperature to fall below the lower thermostat set-point, a single
heater and pump is activated to raise the temperature in the tank to the set-
point. In contrast, when large volumes of water are drawn from the storage
tank, both the upper and lower thermostats cause Toni’s system to activate
multiple heaters and pumps to supply a larger volume of heated water to the
storage tank. Id.
Leeland is directed to a water heater that features a temporary increase
in hot water capacity by heating water to a higher “boost” temperature or, in
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other words, by temporarily increasing the water temperature in the tank.
Leeland, Abstract; ¶ 6.
The principle of operation of Toni is to supply heated water to a
storage tank in response to thermostatic control. The Examiner uses Leeland
to adjust the temperature of the heated water that is supplied to the tank.
Toni’s principle of operation of supplying heated water to a tank in response
to thermostatic control is maintained by the Examiner’s proposed
combination. Thus, we find Appellant’s principle of operation argument
unpersuasive.
Appellant argues that Toni teaches away from the proposed
combination and that the Examiner is guilty of impermissible hindsight in
modifying Toni by the teachings of Leeland. Appeal Br. 14. Neither
argument is persuasive. A reference does not teach away if it merely
expresses a general preference for an alternative invention but does not
“criticize, discredit, or otherwise discourage” investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant
does not direct us to any language in Toni that criticizes, discredits, or
otherwise discourages investigation into adjusting the temperature of water
supplied to a water heater tank. Moreover, Appellant’s hindsight argument
is unpersuasive because the Examiner provides a sufficient, non-hindsight
reason to combine the prior art references. In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016). Here, the Examiner’s stated reason, namely, to
rapidly increase the water temperature in the tank, is sufficient to support the
rejection. Final Act. 4.
Next, Appellant argues that Leeland is “incompatible’ with the
invention of claim 1. Appeal Br. 15. Appellant argues that Leeland is
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directed to a gas fired water heater that supplies heat that is “much hotter”
than the set point of the water heater. Id. Appellant argues that Leeland
cannot supply heat to the water at the bottom of the tank without raising the
temperature at the top of the tank above the set point. Id.
In response, the Examiner notes that there is a lack of evidence to
support Appellant’s argument and, in any event, the argument is irrelevant
given the context of the claim language. Ans. 14.
Having reviewed and considered the Toni and Leeland references and
the Examiner’s proposed modification of Toni by the teachings of Leeland,
we do not agree with Appellant’s position that Leeland is “incompatible”
with Toni. We agree with the Examiner that Appellant’s argument that
heating the bottom of the tank will raise the water temperature at the top of
the tank above the set point lacks evidentiary support and thus constitutes
unsubstantiated attorney argument. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (explaining that attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value).
Furthermore, Appellant’s argument is seen as an argument for the
bodily incorporation of Leeland’s gas fired heater into Toni’s system.
However, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc). “It is well-established that a
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determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012). In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012). Leeland is relied on as teaching the principle that water
heater temperature can be temporarily increased by employing a “boost”
feature. We agree with the Examiner that such teaching could have been
successfully applied to Toni and that the improved rate of temperature
increase noted by the Examiner provides an adequate motivation to do so.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded. We
sustain the Examiner’s unpatentability rejection of claim 1.
Claim 19
Claim 19 is an independent claim that, apart from being a method
claim, is substantially similar in scope to claim 1. Claims App.
Appellant’s traverse of the rejection is similar to the arguments raised
with respect to claim 1. Appeal Br. 20–23. This time, however, Appellant
accuses the Examiner of “dismantling” Toni’s feature of using multiple
heaters and pumps to supply differing volumes of water at a constant
temperature in favor of supply a constant rate of water inflow, but at
differing temperatures. Id. at 21.
In response, the Examiner considers Appellant’s arguments to be
essentially a recapitulation of the same arguments that were advanced
against the rejection of claim 1, a point with which we are inclined to agree.
Rudimentary principles of physics related to thermodynamics and heat
convection inform the skilled practitioner that the temperature of a body of
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water (such as in a storage tank) can be raised by adding a relatively larger
volume of heated water at a relatively lower temperature or by adding a
relatively lower volume of heated water at a relatively higher temperature.
Toni and Leeland provide all of the teaching that a person of ordinary skill
in the art would need to implement these principles in a practical application.
We sustain the Examiner's unpatentability rejection of claim 19.
Unpatentability of Claims 9 and 15–17
over Toni, Olney, and Leeland.
Claim 9
Claim 9 is an independent claim. Claims App. Claim 9 differs from
claims 1 and 19 in that it is directed to a “companion” water heater that
features a heat exchange coil disposed in the hot water storage tank. Id. The
Examiner relies on Olney as teaching such a heat exchange coil. Final
Act. 9–10. 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 achieve the
claimed invention by modifying Toni and Leeland with the teachings of
Olney. Id. at 10. According to the Examiner, a person of ordinary skill in
the art would have done this to heat fluid for a hydronic heating system. Id.
In traversing the rejection, Appellants relies on arguments that we
previously considered and found unpersuasive with respect to claims 1
and 19 and find equally unpersuasive here. Appeal Br. 16–20. Appellant
further argues that Olney fails to cure the deficiencies of Toni and Leeland.
Id. at 19–20.
Olney discloses a water heating system. Olney, col. 2, ll. 15–25.
Olney’s system features heat exchange coil 12 through which heated fluid is
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circulated by via conduits 14, 15, and pump 17. Id. The Examiner’s
findings of fact with regard to Olney are supported by the record before us.
Having previously determined that the combination of Toni and
Leeland is not deficient with respect to Appellant’s arguments advanced
against claims 1 and 19, we are not persuaded of Examiner error and,
therefore, sustain the rejection of claim 9.
Claims 15–17
These claims depend, directly or indirectly, from claim 9 and are not
separately argued. We sustain the Examiner’s rejection of claims 15–17.
See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims
constitutes a waiver of arguments for separate patentability).
Unpatentability of Claims 2–8, 10–14, 18, and 20
over Combinations Based on Toni
These claims depend, directly or indirectly, from one of independent
claims 1, 9, or 19. Claims App. They are rejected over Toni in combination
with various other references and not separately argued apart from
arguments that we have previously considered and found unpersuasive in
connection with the rejections of claims 1, 9, or 19. Final Act. 5–14.
We sustain the Examiner’s rejection of claims 2–8, 10–14, 18, and 20.
See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2018-005424
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CONCLUSION
In summary:
Claims
Rejected
§ References Aff’d Rev’d
1, 19 103 Toni, Leeland 1, 19
2, 3, 20 103 Toni, Leeland, Patterson 2, 3, 20
4-6 103 Toni, Leeland, Patterson, Olney 4-6
7 103 Toni, Leeland, Patterson, Nusbaumer 7
8 103 Toni, Leeland, Patterson, Bradenbaugh 8
9, 15-17 103 Toni, Olney, Leeland 9, 15-17
10, 14 103 Toni, Olney, Bradenbaugh 10, 14
11, 12 103 Toni, Olney, Patterson 11, 12
13 103 Toni, Olney, Leeland, Roetker 13
18 103 Toni, Olney, Leeland, Jackson 18
Overall
Outcome
1-20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED