DeMonte, Todd R. et al.

Patent Trials and Appeals Board

Oct 10, 2019

14276372 - (D) (P.T.A.B. Oct. 10, 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.
14/276,372 05/13/2014 Todd R. DeMonte 086090.0138 3964
5073 7590 10/10/2019
BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201-2980
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
ptomail1@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD R. DEMONTE, SEAN M. EBERT, and
MICHAEL J. STEFFES

Appeal 2019-002126
Application 14/276,372
Technology Center 3600
____________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. Appeal Br. 1, 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
“THERMA-STOR LLC.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to pest control and
more particularly to a hydronic heating system and method for killing bed
bugs in an affected area.” Spec. 1:10–11. Method claims 1 and 7 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A method for heating an affected area, comprising:
heating a water-glycol fluid mixture to a temperature
greater than 170 degrees Fahrenheit using a burner positioned
outside of an affected area;
receiving the heated water-glycol fluid mixture as a
single supply fluid stream inside the affected area;
splitting the single supply fluid stream into a plurality of
supply fluid streams inside the affected area, wherein the
plurality of supply fluid streams comprises:
a first stream that is dedicated to supply fluid to a
first heat exchanger unit; and
a second stream that is dedicated to supply fluid to
a second heat exchanger unit;
receiving the first supply fluid stream at the first heat
exchanger unit;
emitting heated air from the first heat exchanger unit by
transferring heat from the water-glycol fluid mixture to ambient
air within the affected area;
bypassing receiving the fluid at the first heat exchanger
unit when ambient air surrounding that heat exchanger unit is
greater than an upper limit;
circulating the heated air to inhibit stratification of the
heated air;
receiving the second supply fluid stream at the second
heat exchanger unit;
emitting heated air from the second heat exchanger unit
by transferring heat from the water-glycol fluid mixture to
ambient air within the affected area;
receiving the water-glycol fluid mixture as a plurality of
return fluid streams from the first and second heat exchanger
units; and
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merging the plurality of return fluid streams into a single
return fluid stream inside the affected area;
wherein a temperature difference between the fluid
received by a second heat exchanger unit and the ambient air
surrounding that heat exchanger unit results in that ambient air
being raised to a target temperature greater than 122 degrees
Fahrenheit.
EVIDENCE
Barnd US 3,515,345 June 2, 1970
Vitale US 4,126,268 Nov. 21, 1978
Ford US 6,270,721 B1 Aug. 7, 2001
Hedman US 2008/0014111 A1 Jan. 17, 2008
Dancey US 7,401,742 B2 July 22, 2008
REJECTIONS
Claims 1–5 and 7–14 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Barnd and Dancey.
Claims 1–5 and 7–15 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Hedman, Barnd, and Dancey.
In an alternate interpretation, claim 4 is rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Hedman, Barnd, Dancey, and Vitale.
Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Hedman, Barnd, Dancey, and Ford.
In an alternate interpretation, claim 13 is rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Hedman, Barnd, and Vitale.
Claims 16 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hedman, Barnd, and Ford.
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ANALYSIS
The rejection of claims 1–5 and 7–14
as unpatentable over Barnd and Dancey
Appellant argues claims 1–5 and 7–14 together. See Appeal Br. 16–
21. We select claim 1 for review, with the remaining claims (i.e., claims 2–5
and 7–14) standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites first and second streams “dedicated” to first and
second heat exchanger units. The Examiner relies on Barnd for such
teachings. See Non-Final Act. 3, 5. Appellant does not dispute the
Examiner’s reliance on Dancey for other limitations. See Appeal Br. 16–21.
To better appreciate the following analysis, we replicate Figure 1 of
Appellant’s Specification below:

“FIGURE 1 illustrates an example hydronic system for pest control,
according to certain embodiments of the present disclosure.” Spec. 4:5–6.
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This figure illustrates multiple heat exchangers (108) in multiple regions
(104), each heat exchanger having a supply (122) and return (150) line.
For comparison, we also replicate Figure 1 of Barnd below:

Figure 1 of Barnd “is a diagrammatic and schematic view of an
exemplary temperature-control arrangement.” Barnd 2:11–12. This Figure
illustrates multiple heat exchangers (5) in multiple zones (A–F), each heat
exchanger having an associated bypass valve (2, 4) in its supply line.
Barnd teaches, “[z]ones A and D comprise master control zones while
B, C, E and F comprise by-pass control zones.” Barnd 2:24–26. Barnd
further teaches that, although master/by-pass zones A–F “are illustrated, it is
to be understood that in practice either one such combination or three or
more may be utilized with a number of by-pass zones selected as required.”
Barnd 2:26–31 (emphasis added). See also Ans. 15.
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Based on such disclosures, the Examiner states, “Barnd teaches that
each of the exemplary affected areas A-F is depicted as a possible
combination of heating components. The affected areas can comprise [any]
combination of these components, chosen to fit the user’s desired
configuration.” Non-Final Act. 5 (referencing Barnd 2:20–38); see also
Ans. 15. Should Appellant disagree, the Examiner alternately contends, “it
would have been obvious . . . to group[] the components as desired in order
to fine-tune or customize operation of the system, since it has been held that
rearranging parts of an invention involves only routine skill in the art. In re
Japikse, 86 USPQ 70.” Non-Final Act. 5.
Appellant is silent as to the ability to rearrange or group as desired
and addresses, instead, Barnd’s ability to by-pass the heat exchangers. See
Appeal Br. 17, 18; Reply Br. 2–3. Appellant states that this by-pass feature
“requires that the fluid flows from one heat exchanger unit to the next heat
exchanger unit in a serial connection.” Appeal Br. 17; see also Reply Br. 2.
As a consequence, Appellant contends, “[t]he fluid flow between serially
connected heat exchanger units in Barnd teaches away from the ‘dedicated’
fluid streams recited in Claims 1 and 7 (and illustrated above in
[Appellant’s] Figure 1).” Appeal Br. 18; see also Reply Br. 3.
Appellant’s contentions are not persuasive. First, as indicated above,
Barnd differentiates between master zones (A, D) and by-pass zones (B, C,
E, F) and clearly acknowledges that different combinations of the two are
possible (“with a number of by-pass zones selected as required”). Appellant
does not address the situation where no by-pass zones are selected, in which
case only the heat exchangers in master zones A, D would be supplied via
their respective supply lines 12N and 12M. See also Ans. 15 (“the same
system architecture could be used with one heat exchanger on each line”).
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Second, Appellant’s contention that Barnd’s by-passing feature
“requires that the fluid flows from one heat exchanger unit to the next heat
exchanger unit in a serial connection” (Appeal Br. 17) is not persuasive.
This is because Appellant does not explain how a by-pass requires serial
flow rather than simply being an ability to isolate a particular heat exchanger
(such as for repair/replacement purposes). See Barnd 3:2–4 (“The outlet
side of 5B may include a check valve 3B to prevent heat exchange during
the by-pass mode.”); see also Ans. 16.
Third, Appellant’s contention that Barnd’s by-passing feature “teaches
away” from the claimed “dedicated” limitation is not persuasive. Appeal Br.
18. This is because, as our reviewing court has instructed us, “[t]he prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). To be clear, Appellant does
not indicate where Barnd criticizes, discredits, or otherwise discourages
supplying a heat exchanger with a line “dedicated” to that effect. We have
also been instructed that
a prior art reference may anticipate or render obvious an
apparatus claim—depending on the claim language—if the
reference discloses an apparatus that is reasonably capable of
operating so as to meet the claim limitations, even if it does not
meet the claim limitations in all modes of operation.
ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed Cir.
2018).
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Fourth, and specifically addressing the claim term “dedicated,” the
Examiner provides multiple dictionary definitions of this term.2 Ans. 15.
After assessing these definitions, the Examiner concludes “[a]ll this is to say
that even if a supply line services multiple heat exchangers [e.g., Barnd], it is
still assigned/allocated/designed/devoted to each heat exchanger.” Ans. 15.
On this point, Appellant selects a particular definition to employ in refuting
the Examiner’s findings (i.e., “exclusively allocated to”). See Appeal Br.
19; Reply Br. 3. However, guidance has been provided that “[a]bsent an
express definition in their specification, the fact that [Appellant] can point to
definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Here, the Examiner provided five exemplary dictionary definitions,
of which Appellant could rely on only one for any sensible rebuttal. Further,
in Barnd, there is only one supply and return line to/from each heat
exchanger. In summation, and lacking any express definition of “dedicated”
in Appellant’s Specification, Appellant is not persuasive that the Examiner’s
interpretation of “dedicated” is incorrect, inaccurate, or otherwise
inconsistent with Appellant’s Specification.
Additionally, Appellant’s arguments above are not persuasive of
Examiner error because there is no indication in claim 1 that the recited first
and second streams are to be “dedicated” (i.e., exclusively) to, respectively,
a single heat exchanger and no more. To be clear, the limitation in question
recites, “a [first/second] stream that is dedicated to supply fluid to a

2 We agree with the Examiner that “the word ‘dedicated’ never appears in
appellant's disclosure” (Ans. 15) and as such, there is no definition or usage
therein that Appellant can rely upon.
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[first/second] heat exchanger unit.” We do not read this limitation as
precluding any supply to additional heat exchangers; only that the first and
second streams supply fluid to, respectively, first and second heat
exchangers. This is because Appellant employs the transitional term
“comprising,” which is open-ended. See Georgia-Pacific Corp. v. U.S.
Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (Noting that Appellants’
preamble employs the transitional term “comprising” which is “inclusive or
open-ended and does not exclude additional, unrecited elements or method
steps”). Our reviewing court further instructs us that we cannot read
unclaimed features from Appellant’s Specification into the claims or limit
the claims to a particular embodiment if the claim language is broader. See
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); SuperGuide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For these
additional reasons, we are not persuaded the Examiner’s rejection is in error.
Appellant further alleges, “the proposed reliance on Barnd is also
improper because it changes the principle of operation of Barnd” thereby
rendering Barnd “unsatisfactory for its intended purpose.” Appeal Br. 19;
see also Reply Br. 5–6. This is because “the serial flow of fluid from one
heat exchanger unit to the next is a critical and fundamental objective of
Barnd.” Appeal Br. 20. However, this contention is not persuasive because
Barnd provides for the by-passing of heat exchangers in a flow stream. See
supra. Hence, the assertion that the flow of fluid to consecutive heat
exchangers is “a critical and fundamental objective of Barnd” (Appeal Br.
20) is not persuasive since heat exchangers may be by-passed in Barnd.
Furthermore, Barnd provides for the normal operation of those heat
exchangers that have not been by-passed, and hence, Appellant is not
persuasive that such by-passing “changes the principle of operation of
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Barnd,” or otherwise renders Barnd “unsatisfactory for its intended
purpose.” Appeal Br. 19; see also Ans. 17–19.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claims 1–5 and
7–14 as unpatentable over Barnd and Dancey.
The rejection of claims 1–5 and 7–15
as unpatentable over Hedman, Barnd, and Dancey
Appellant argues claims 1–5 and 7–15 together. See Appeal Br. 21–
24. We select claim 1 for review, with claims 2–5 and 7–15 standing or
falling with claim 1.
Here, the Examiner primarily relies on Hedman for many of the
teachings of claim 1, but relies on Barnd for disclosing the bypassing of first
and second streams (among other limitations). See Non-Final Act. 12–15;
Ans. 16. The Examiner’s reason for the combination is “in order to make
the system more efficient.” Non-Final Act. 15. Appellant contends, “this
efficiency rationale is undermined by the fact that the efficiencies sought by
Barnd in conjunction with the ‘bypassing’ feature would be lost in the
Hedman-Barnd combination.” Appeal Br. 21; see also Reply Br. 5, 6.
We disagree with Appellant’s assertion. Hedman clearly discloses the
placement of multiple heat exchangers on a conduit stream. See Hedman
¶ 84; see also Non-Final Act. 13. The Examiner acknowledges, however,
that “Hedman does not teach that the system bypasses” the heat exchangers,
and hence relies on Barnd for such teaching. Non-Final Act. 14. Appellant
is not persuasive that providing for the by-pass of heat exchangers (such as
when their heat exchange is not required) fails to “make the system more
efficient” as expressed by the Examiner. Non-Final Act. 15.
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Appellant further disputes the Examiner’s reliance on Hedman for the
“dedicated” limitation. Appeal Br. 21 (the Examiner “alleges that Hedman
teaches that ‘each exchanger comprises a ‘dedicated’ fluid stream’”). The
Examiner redundantly relies on both Hedman and Barnd for this “dedicated”
limitation and, as indicated above, provides a reason for their combination.
See Non-Final Act. 13–15. Thus, regardless of whether or not this limitation
is also taught in Hedman, Appellant does not explain how this limitation
fails to be disclosed in Barnd. See supra. Consequently, based on our
analysis above, we are not persuaded the Examiner erred on this point.
Appellant also repeats the assertion “that the ‘bypassing’ feature of
Barnd requires the fluid to flow from one heat exchanger unit to the next in a
serial connection.” Appeal Br. 22. Another repeated contention is the
Examiner’s interpretation of the claim term “dedicated.” See Appeal Br. 22.
Neither of these contentions are persuasive for the reasons previously stated.
Appellant further contends that in an earlier office action, the
Examiner relied on an “inherency” argument regarding certain teachings in
Hedman. See Appeal Br. 23. Now, however, the Examiner “removed the
word ‘inherent’ from its rejection.” Appeal Br. 23. Nevertheless, Appellant
still contends, “the current FOA is still relying on an ‘inherency’ argument
without explicitly using the word ‘inherent’ in the rejection so that it can
avoid the procedural burden of establishing ‘inherency.’” Appeal Br. 23.
This matter focuses on whether Hedman teaches the limitation of “splitting
the single supply fluid stream into a plurality of supply fluid streams.” See
Appeal Br. 23. Appellant contends that it is possible that “Hedman operates
not by receiving a ‘single supply fluid stream’ and then ‘splitting’ it at all,”
but instead via some other arrangement. Appeal Br. 24. Appellant states,
“Hedman is simply silent on this point.” Appeal Br. 24.
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We need not delve into this matter (despite what Paragraph 84 of
Hedman would convey to one skilled in the art) because, as above, the
Examiner redundantly relied on Barnd for such “splitting” and provided a
reason for their combination. See Non-Final Act. 14, 15. Appellant does not
argue that the recited “splitting” fails to be clearly illustrated in Figure 1 of
Barnd, and particularly the separation of main header 12 into “parallel
branch pipe systems 12M and 12N.” Barnd 2:42–43.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1–5 and 7–15 as unpatentable over
Hedman, Barnd, and Dancey.
The rejection of (a) claim 4 as unpatentable over Hedman, Barnd, Dancey,
and Vitale; (b) claim 6 as unpatentable over Hedman, Barnd, Dancey, and
Ford; (c) claim 13 as unpatentable over Hedman, Barnd, and Vitale; and,
(d) claims 16 and 17 as unpatentable over Hedman, Barnd, and Ford.
Appellant presents no argument contesting the Examiner’s rejection of
these claims in view of these references. See Appeal Br. generally.
Accordingly, we summarily sustain the Examiner’s rejection of these claims.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–5 and 7–14 35 U.S.C. § 103(a)
over Barnd and
Dancey
1–5 and 7–14
1–5 and 7–15 35 U.S.C. § 103(a)
over Hedman,
Barnd, and Dancey
1–5 and 7–15
4 35 U.S.C. § 103(a)
over Hedman,
4
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Claims
Rejected
Basis Affirmed Reversed
Barnd, Dancey, and
Vitale
6 35 U.S.C. § 103(a)
over Hedman,
Barnd, Dancey, and
Ford
6
13 35 U.S.C. § 103(a)
over Hedman,
Barnd, and Vitale
13
16 and 17 35 U.S.C. § 103(a)
over Hedman,
Barnd, and Ford
16 and 17
Overall Outcome 1–17
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED