Brian T. Branecky

Patent Trials and Appeals Board

Oct 21, 2019

13680907 - (D) (P.T.A.B. Oct. 21, 2019)

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.
13/680,907 11/19/2012 Brian T. Branecky 010121-8527-US00 2301
23409 7590 10/21/2019
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
SUITE 3300
MILWAUKEE, WI 53202
EXAMINER
LIN, KO-WEI
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN T. BRANECKY
____________________

Appeal 2018–006375
Application 13/680,907
Technology Center 3700
____________________

Before: BRETT C. MARTIN, JEREMY M. PLENZLER, and ARTHUR M.
PESLAK, Administrative Patent Judges.

PESLAK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1–12, 17, and 18.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as A.O. Smith
Corporation. Appeal Br. 2.

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THE CLAIMED SUBJECT MATTER
Appellant’s invention “relates to a vent system for multiple water
heaters.” Spec. ¶ 1. Claims 1 and 7 are independent. Claim 1, reproduced
below with italics added, is illustrative of the claimed subject matter.
1. A water heater venting system, the water heater venting
system
comprising:
a main exhaust vent;
a first water heater including
a first inlet,
a first blower assembly including a first motor,
a first exhaust vent coupled to the main exhaust
vent,
a first fluid flow path created by fluid
communication among the first inlet, the first
blower assembly, and the first exhaust vent,
a first sensor positioned along the first fluid flow
path, and
a first controller electrically coupled to the first
sensor and the first motor of the first blower assembly,
the first controller controlling the speed of the first motor
based on an electronic input from the first sensor and an
electronic signal from a second water heater; and
the second water heater including
a second inlet,
a second blower assembly including a second motor,
a second exhaust vent coupled to the main exhaust vent,
a second fluid flow path created by fluid communication
among the second inlet, the second blower assembly, and the
second exhaust vent,
a second sensor positioned along the second fluid flow
path, and
a second controller electrically coupled to the second
sensor and the second motor of the second blower assembly, the
second controller outputting the electronic signal to the first
controller.
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REJECTIONS
1) The Examiner rejected claim 18 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
2) The Examiner rejected claim 18 under 35 U.S.C. § 112, second
paragraph as being indefinite.
3) The Examiner rejected claims 1, 6, and 17 under 35 U.S.C.
§ 102(b) as anticipated by Kim (US 2010/0330512 A1, published
Dec. 30, 2010).
4) The Examiner rejected claims 1, 6, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Kim and Bujak (US 5,863,246,
issued Jan. 26, 1999).
5) The Examiner rejected claims 2–5 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Brower (US 5,365,795, issued Nov. 22,
1994) or alternatively over Kim, Bujak, and Brower.
6) The Examiner rejected claims 7 and 12 under 35 U.S.C. § 103(a)
as unpatentable over Kim and Hatada (US 2012/0138149 A1,
published June 7, 2012) or alternatively over Kim, Bujak, and
Hatada.
7) The Examiner rejected claims 8–11 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Hatada, and Brower or alternatively over
Kim, Bujak, Hatada, and Brower.
8) The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Kim and Choi (US 2009/0269713) or
alternatively over Kim, Bujak, and Choi.

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DISCUSSION
Rejection 1: Claim 18 — Written Description
The Examiner finds that the phrase in claim 18, “the controller
determines whether the electronic input from the first sensor is below a
predetermined threshold” lacks written description support in the
Specification. Non-Final Act. 2. Appellant does not address this rejection in
the Appeal Brief. See Appeal Br. 7–26. Therefore, we summarily sustain
the rejection of claim 18 under 35 U.S.C. § 112, first paragraph.

Rejection 2: Claim 18 — Indefiniteness
The Examiner determines that claim 18 is indefinite for two reasons.
Non-Final Act. 3. First, the Examiner asserts that claim 18 and claim 1
together “do not provide specific instruction as to what to do if the signal is
below or above or the same as the predetermined threshold.” Id. Second,
the Examiner asserts that claim 18 is unclear because the Specification “does
not provide any information for how to determine or what determines the
predetermined threshold.” 2 Id.
Appellant, concedes that “the term ‘predetermined threshold’ does not
match any terms used in the specification” but, contends that
“‘predetermined threshold’ refers to the upper limit of the non-negative
range” described in paragraph 34 of the Specification. Appeal Br. 7.
For the following reasons, we do not sustain the rejection of claim 18 as
indefinite.

2 We assume that “the controller” recited in claim 18 refers to the “first
controller” recited in claim 1.
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“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, No.
2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The
breadth of a claim, however, is not to be equated with indefiniteness. See
e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Appellant provides an example from paragraph 34 of the Specification
of how one of ordinary skill in the art would reasonably understand a
“predetermined threshold” as recited in claim 18, i.e., the upper limit of the
non-negative range. The Examiner correctly notes that neither claim 18 nor
claim 1 recites instructions as to what to do if the signal “is below or above
or the same as the predetermined threshold.” However, claim 18 recites a
functional limitation of the “controller” and the Examiner fails to adequately
explain why such a functional limitation renders claim 18 indefinite.
We, thus, do not sustain the rejection of claim 18 under 35 U.S.C.
§ 112, second paragraph because while the claim may be broad, it would not
be unclear to one of ordinary skill in the art after reviewing the
Specification.

Rejection 3: Claims 1, 6, and 17 — Anticipation by Kim
Appellant contends that Kim does not anticipate these claims because
it does not disclose the recited first controller “controlling the speed of the
first motor based on an electronic input from the first sensor and an
electronic signal from a second water heater.” Appeal Br. 10. According to
Appellant, “Kim discloses controlling a fan of one boiler (e.g. a boiler not in
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operation) using only readings from a sensor of another boiler (e.g. a boiler
in operation.” Id. (citing Kim, ¶¶ 32, 39, and 40). Appellant also contends
that “the teachings of Kim are directed towards a method of controlling the
fan revolution of non-operating water heaters based on measured sensor
signals from the water heaters in operation” but does not disclose that “the
master controller (or any controller) further receives information from the
sensors of boilers that are not in operation to control the fan revolution of the
boilers that are not in operation.” Id. at 11.
The Examiner responds that each of Kim’s controllers receives “a
pressure reading from a pressure sensor in the same boiler and use the
pressure reading to control its own blower.” Ans. 19. In connection with
the disclosure in paragraphs 38–40 of Kim, the Examiner explains that “Kim
teaches an example under which only boiler 101 and 102 are in operation.
Master controller 145 in non-operating boiler 105 receives information about
the wind speeds of boiler 101 and 102. Therefore, it is inherent that the
controller is always on even if a boiler is not operating.” Id. In support of
this argument, the Examiner further explains that
for controller 145 to be able to receive pressure reading from its
sensor 125 in order to know that blower 115 is not in operating, sensor
125 inherently has to be on in order to detect fan speed of the blower
115 to be zero, so that controller 145 knows its own blower is not
operating.
Id.
In the Reply Brief, Appellant argues against the Examiner’s inherency
finding with attorney argument reiterating what Kim does not explicitly
disclose. Reply Br. 5–7. For the following reasons, we sustain this
rejection.
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Kim discloses “a plurality of boilers arranged in a line, each of which
includes a sensor measuring the RPM of fans and a controller controlling
[the] RPM of fans on the basis of the RPM measured by sensors.” Kim ¶ 16.
Kim further discloses that “any one of the controllers is set as a master
controller and the other controllers are set as slave controllers and the master
controller and the slave controllers are connected by a communication line to
communicate with each other.” Id. We acknowledge, as noted by
Appellant, that, in the exemplary embodiment relied on by the Examiner
described in paragraphs 39 and 40 of Kim, controller 145 calculates “the
control amount of wind of the fans . . . of the boilers . . . that are not in
operation” based on the wind pressure of the boilers that are in operation.
Id. ¶ 40. While Kim does not explicitly state in this description of the
exemplary embodiment that the controllers in the non-operating boilers
provide a signal to the master controller 145, the disclosure in paragraph 16
of Kim explicitly states that each of the plurality of boilers includes a sensor
measuring the RPM of fans and a controller controlling RPM of fans on the
basis of the RPM measured by sensors.
Appellant does not address the disclosure in Kim’s paragraph 16 in
the Reply Brief or explain why this disclosure does not apply to the
exemplary embodiment of paragraphs 39 and 40. In particular, when
considering the disclosure of Kim’s paragraphs 16, 39, and 40 as a whole,
master controller 145 would determine that its fan 115 is not operating by
means of a signal from sensor 125 in order to perform the proper
calculations based on the operating boilers only. Consequently, Appellant
does not apprise us of error in the Examiner’s finding that Kim discloses the
recited first controller “controlling the speed of the first motor based on an
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electronic input from the first sensor and an electronic signal from a second
water heater.” Therefore, we sustain the rejection of claim 1. Appellant
does not argue separately for the patentability of claims 6 and 17 apart from
claim 1 and, we, thus sustain the rejection of claims 6 and 17 for the same
reasons.

Rejection 4: Claims 1, 6, and 17 — Obviousness over Kim and Bujak
The Examiner alternatively rejected claims 1, 6, and 17 by relying on
Bujak for disclosure of “a controller controlling the speed of a blower motor
based on an electronic input from a sensor in the flow path in which the
blower motor is located.” Non-Final Act. 8–9 (citing Bujak, 6:40–42, 6:65–
68, 7:1–6). In particular, the Examiner finds that Bujak’s “controller gets a
sensor reading from sensor 18 and compare[s] the sensor reading with the
controlling static pressure setpoint.” Id. at 9. The Examiner determines that
it would have been obvious “to modify Kim by adding Bujak’s control
mechanism for controlling the first blower in order to prevent backflow of
the exhaust gas efficiently” and “[b]y adding feedback from the pressure
sensor, the controller can ensure that the desired static pressure is being
achieved and therefore no backflow occurs.” Id.
Appellant first contends that Bujak does not disclose the recited first
controller because it “teaches adjusting the speed of a fan motor of a main
duct based on duct position information of branch ducts downstream from
the main duct until the sensed pressure in the main duct equals a controlling
setpoint.” Appeal Br. 15 (citing Bujak, 2:46–3:20). However, this
contention does not address the Examiner’s finding that Bujak utilizes
sensor 18 to sense static pressure in duct 16 and then adjust fan speed
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accordingly. Bujak, 6:64–7:6, Fig. 1. This contention is, thus, not
persuasive because it is not responsive to the rejection.
Appellant next contends that “that there is no motivation to combine
the controller of Bujak with the boiler system of Kim” because Kim’s “fans
are configured to push air out” and “Bujak teaches the opposite.” Appeal
Br. 15. Appellant, however, does not address the Examiner’s reasons for
combining Kim with Bujak’s teaching of a fan controller sensing pressure
that is “always on” which when combined with Kim prevents flue gas
backflow into a non-operating boiler. See Ans. 21; Non-Final Act. 9. This
contention is not persuasive because it is not responsive to the rejection.
Appellant next contends that the combination of Kim and Bujak would
“frustrate the principle of operation of Bujak.” Appeal Br. 16–17. This
contention is not persuasive because the Examiner proposes modifying Kim
not Bujak and therefore the contention is not responsive to the rejection.
We have considered all of Appellant’s contentions and determine that
Appellant does not apprise us of Examiner error. Therefore, we sustain the
rejection of claim 1, 6, and 17.

Rejection 5: Claims 2–5 — Obviousness over Kim and Brower or
alternatively over Kim, Bujak, and Brower
Claim 2, which depends from claim 1, recites “wherein the first sensor
includes a pitot tube.” Appeal Br. 28 (Claims App.). Appellant does not
address the rejection of claim 2. See id. at 18–20. Therefore, we summarily
sustain the rejection of claim 2.
Claim 3 which depends from claim 2 recites that “the first sensor is
positioned in an elbow of the first exhaust vent.” Id. at 28. In the rejection
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of claim 3, the Examiner determines that it would have been obvious and
“requires only routine skill in the art to place the sensor in the elbow in order
to obtain pressure reading at a desired location of the flow path.” Non-Final
Act. 10. Appellant contends that none of the cited references disclose or
provide motivation to position a sensor in an elbow of the first exhaust vent
and argues that “mere rearrangement of parts is not sufficient to support a
finding of obviousness.” Appeal Br. 18 (citing MPEP § 2144.04 (VI C)).
This contention is not persuasive because it is not responsive to the rejection.
The Examiner does not rely on a rearrangement of parts rationale in the
rejection but finds that it would only require routine skill in the art to place
the sensor in the elbow to obtain a pressure reading at a desired location.
Appellant does not provide evidence or persuasive technical reasoning why
it would require more than routine skill in the art to locate the pressure
sensor in the elbow or that there is criticality in locating the pressure sensor
in the elbow. For these reasons, we sustain the rejection of claim 3.
Claim 4, which depends from claim 1, recites that “the first sensor
senses a pressure difference.” Appeal Br. 29 (Claims App.). The Examiner
finds that Kim as modified by including Brower’s pitot tube 28 as the first
sensor “senses a pressure difference.” Non-Final Act. 10. Appellant argues
that the Examiner failed “to specifically identify which features of Kim,
Bujak, and Brower are believed to disclose each element of the claims.”
Appeal Br. 19. The Examiner specifically identified Brower’s pitot tube 28
as corresponding to the first sensor and asserts that Brower discloses this
sensor is used to measure a static pressure drop. Non-Final Act. 10; see also
Ans. 23. In the Summary of the Claimed Subject matter for claim 4,
Appellant submits that the two pitot tubes 135 in Appellant’s Figure 5
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correspond to the first sensor. Appeal Br. 5. Appellant does not apprise us
of Examiner error because Appellant does not address why Brower’s
disclosure of a pitot tube and using the pitot tube in the process of measuring
a pressure drop does not correspond to the limitation recited in claim 4.
Rather, Appellant contends that the Examiner’s reference in the Answer to
Brower’s measurement of static pressure drop improperly incorporated a
new ground of rejection. See Reply Br. 15–16. However, Appellant waived
any argument that the Answer contained a new ground of rejection by failing
to file a Petition to the Director. 37 C.F.R. § 41.40(a) (2017). Therefore, we
sustain the rejection of claim 4.
Claim 5, which depends from claim 4, recites the “first controller
calculates a fluid flow velocity based on the sensed pressure difference.”
Appeal Br. 29 (Claims App.). Appellant argues that the Examiner failed “to
specifically identify which features of Kim, Bujak, and Brower are believed
to disclose each element of the claims.” Appeal Br. 20. The Examiner
responds that Brower discloses that flow rate can be calculated based on the
measurement of static pressure drop. Ans. 23. Appellant does not apprise
us of Examiner error because Appellant does not address why Brower’s
disclosure of calculating flow rate does not correspond to the limitation
recited in claim 5. Rather, Appellant contends that the Examiner’s Answer
improperly incorporated a new ground of rejection. See Reply Br. 16–17.
However, Appellant waived any argument that the Answer contained a new
ground of rejection by failing to file a Petition to the Director. See 37 C.F.R.
§ 41.40(a) (2017). Therefore, we sustain the rejection of claim 5.

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Rejection 6: Claims 7 and 12 — Obviousness over Kim and Hatada or
alternatively over Kim, Bujak, and Hatada
Claim 7 recites “a second controller . . . controlling the second motor
based on a second electronic input from the second sensor and first
electronic signal from the first water heater.” Appeal Br. 2 (Claims App.)
(emphasis added). In the rejection based on Kim and Hatada, the Examiner
finds that Hatada discloses a “second water heater get[s] signal of operation
control and/or stop control from first water heater 42.” Non-Final Act. 12
(citing Hatada, ¶ 146, Fig. 13).
Appellant contends that Hatada discloses a priority water heater that
“controls a hot water supply operation of the other water heaters based on
water flow and temperature information received from sensors of other
water heaters” but “makes no mention whatsoever of controlling the speed
of the fan motors of the other water heaters” as recited in claim 7. Appeal
Br. 21. The Examiner responds that “Hatada teaches controllers (81, 82, 83,
etc.) of boilers communicate with another via a communication link” and
“the secondary boiler 102 receives operation instructions from the first
boiler 100 (which is a priority boiler in the system).” Ans. 24 (citing
Hatada, ¶ 42, Figs. 1, 13). For the following reasons, we do not sustain this
rejection.
We agree with the Examiner that Hatada discloses that the operation
of one hot water heater may be controlled by a second hot water heater.
Hatada ¶ 146, Fig. 13. However, the Examiner has not directed us to any
disclosure in Hatada where the controller of one hot water heater directly
controls the blower motor of a second hot water heater. Consequently, the
Examiner has not established by a preponderance of the evidence that
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Hatada discloses the second controller recited in claim 7. As the rejection is
based on an erroneous factual finding, the conclusion of obviousness cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (Holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand.”). Therefore,
we do not sustain the rejection of claim 7 and claim 12 which depends from
claim 7 as unpatentable over Kim and Hatada.
The Examiner makes the same findings based on Hatada in
connection with the alternative rejection based on Kim, Bujak, and Hatada.
Non-Final Act. 15. The Examiner does not rely on Bujak to cure the
deficiencies in the rejection based on Kim and Hatada discussed above. See
id. at 14–15. Therefore, we do not sustain this rejection of claims 7 and 12
as unpatentable over Kim, Bujak, and Hatada for the same reasons discussed
above.

Rejection 7: Claims 8–11: Obviousness over Kim, Hatada, and Brower or
alternatively over Kim, Bujak, Hatada, and Brower
Claims 8–11 depend directly or indirectly from claim 7. Appeal Br.
30 (Claims App.). The Examiner does not rely on Brower to cure the
deficiencies in the combinations of Kim and Hatada or Kim, Bujak, and
Hatada discussed above. Non-Final Act. 15–16. Therefore, we do not
sustain the rejection of claims 8–11 as unpatentable over Kim, Hatada, and
Brower or Kim, Bujak, Hatada, and Brower.

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Rejection 8: Claim 18: Obviousness over Kim and Choi or alternatively
Kim, Bujak, and Choi
Appellant does not address the rejection of claim 18 as unpatentable
over Kim and Choi or alternatively over Kim, Bujak, and Choi. See Appeal
Br. 7–26. Therefore, we summarily sustain the rejection of claim 18.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
18 112, first Written
Description
18
18 112,
second
Definiteness 18
1, 6, 17 102(b) Kim 1, 6, 17
1, 6, 17 103(a) Kim, Bujak 1, 6, 17
2–5 103(a) Kim, Brower 2–5
2–5 103(a) Kim, Bujak,
Brower
2–5
7, 12 103(a) Kim, Hatada 7, 12
7, 12 103(a) Kim, Bujak,
Hatada
7, 12
8–11 103(a) Kim, Hatada,
Brower
8–11
8–11 103(a) Kim, Bujak,
Hatada, Brower
8–11
18 103(a) Kim, Choi 18
18 103(a) Kim, Bujak, Choi 18
Overall
Outcome
1–6, 17, 18 7–12

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