Ex Parte Grammens et al

Patent Trial and Appeal Board

Sep 26, 2017

13295136 (P.T.A.B. Sep. 26, 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.
13/295,136 11/14/2011 Chris Grammens 6005.007US1 2651
86245 7590 09/28/2017
Schwegman Lundberg & Woessner/NORTEK
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
NGUYEN, BAO D
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
USPTO@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS GRAMMENS and NIKO RAES
Appeal 2016-007795
Application 13/295,1361
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3—5, 7, and 9—23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Reznor LLC. (Appeal
Br. 2.)
Appeal 2016-007795
Application 13/295,136
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “a premix air heater that
includes a downstream fan that pulls or draws air through a heat exchanger.”
(Spec. 110.)
Claims 1 and 10 are the independent claims on appeal. Claim 1 is
illustrative. It recites (emphasis added):
1. A gas-fired heater, comprising:
a gas supply line;
an air supply line;
a venturi positioned in the air supply line;
a valve coupled to the gas supply line;
a controller coupled to the valve, the controller configured
to control the valve to control a gas-air mixture, the controller
comprising a pressure regulator configured to:
measure a pressure drop in the air supply line across
the venturi; and
control the valve to release an amount of gas based
on the measured pressure drop;
a burner configured to receive the gas-air mixture and bum
the gas-air mixture;
a heat exchanger coupled to the burner, the heat exchanger
configured to perform a heat exchange process and output heated
air; and
a first fan located in a second area that is downstream of
the heat exchanger, the first fan being configured to draw flue
gases that result from burning the gas-air mixture through the
heat exchanger during operation of the burner and prevent the
flue gases from leaking from the heat exchanger into an interior
space of a building and provide negative pressure to draw the
gas-air mixture through the burner, the valve and the venturi.
REJECTIONS
Claims 1, 3—5, 7, and 9—23 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
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Appeal 2016-007795
Application 13/295,136
Claims 1, 3—5, 7, and 9—23 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement.
Claims 1, 5, 7, 9—11, 13—17, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kowald (US 2011/0174201 Al, pub.
July 21, 2011) and Zatti (WO 2009/133451 A2, pub. Nov. 5, 2009).
Claims 3, 4, 12, 20, 22, and 23 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kowald, Zatti, and Shellenberger (US 4,960,102,
pub. Oct. 2, 1990).
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kowald, Zatti, and Lengauer, Jr. (US 6,938,688 B2, pub.
Sept. 6, 2005).
ANALYSIS
The ft 112, first paragraph, written description rejection
Appellants argue independent claims 1 and 10 together along with
dependent claims 3—5, 7, 9, and 11—23. (See Appeal Br. 11—13.) We elect
claim 1 as representative. Claims 3—5, 7, and 9—23 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
With regard to the claim 1 limitation of “the first fan being configured
to . . . provide negative pressure to draw the gas-air mixture through [1] the
burner, [2] the valve and [3] the venturi,” the Examiner finds that this
“subject matter . . . was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that. . . the inventor(s),
at the time the application was filed, had possession of the claimed
invention.” (Final Action 8.) The Examiner finds that the Specification
discloses a fan that provides negative pressure to draw the gas-air mixture
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Application 13/295,136
“through the valve-venturi system, but NOT [individually] through the valve
120 and the venturi 132.” {Id., citing Spec. Fig. 1, || 14, 16.)
Appellants disagree and argue that literal support is not required, and
that “paragraphs [0010]—[0020], Figures 1 and 2, and the original recitation
of the ‘valve-venturi system’ in the originally filed claims of the application
can be used to describe and support the current claims.” (Appeal Br. 13.)
We are not persuaded of error.
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue.
Nonetheless, the disclosure must . . . convey with reasonable
clarity to those skilled in the art that . . . [the inventor] was in
possession of the invention. Put another way, one skilled in the
art, reading the original disclosure, must immediately discern the
limitation at issue in the claims.
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
(citations omitted, alterations in original).
As shown in Appellants’ Figure 1, gas flows through valve 120 and
air flows through venturi 132. “[A]fier gas flows through valve 120, gas
from gas intake supply 110 is mixed with air at area 136.” (Spec. 114,
emphasis added.) The gas-air mixture does not flow through valve 120 or
venturi 132. Appellants have not shown where the Specification discloses
that the first fan provides negative pressure to draw the gas-air mixture
through the valve. Nor have Appellants shown where the Specification
discloses that the first fan provides negative pressure to draw the gas-air
mixture through the venturi. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 1 for failing to comply with the written
description requirement.
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Appeal 2016-007795
Application 13/295,136
The § 112, first paragraph, enablement rejection
The Examiner determines that the same limitation of independent
claims 1 and 10 discussed above “was not described in the specification in
such a way as to enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention.” (Final
Action 8.) The Examiner finds that “it is impossible for the fan 160 being
configured to provide negative pressure to draw the gas-air mixture from the
area 136 flowing through the burner 140 and also draw the gas-air mixture
from the area 136 flowing in opposite directions through the venture
[sic] 132-132 and the valve 120.” (Id. at 9.)
Appellants argue that the Examiner did not apply the proper factors
and that if the proper factors are applied, the rejection should be reversed.
(See Appeal Br. 13—17, citing MPEP § 2164.01(a).) In particular,
Appellants argue that Appellants’ Figure 1 “illustrates an example of
Appellant’s [sic] claims which clearly shows the direction of gas and air
flow as being in the same direction.” (Id. at 15.)
Appellants are correct that in Figure 1, the gas, air, and gas-air
mixture generally flow in the same direction (left to right). But that is not
persuasive of error. As in the written description rejection discussed above,
the “gas-air mixture” is not the same as the separate gas and air flows. As
discussed above, the gas-air mixture is created at mixing area 136 “after gas
flows through valve 120.” (Spec. 114, emphasis added; see also id. Fig. 1.)
Indeed, valve 120 opens and closes to control the amount of gas that flows to
mixing area 136, to “ensure[] that the gas/air ratio provided to burner 140 is
provided at the desired level.” (Id. 112.) Appellants do not persuasively
argue, e.g., how the gas-air mixture created in mixing area 136 flows
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Application 13/295,136
through valve 120 that opens and closes to control the gas/air ratio of the
gas-air mixture.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 for failing to comply with the enablement requirement. Independent
claim 10 contains similar language and Appellants present similar
arguments. Therefore, for similar reasons, we are not persuaded that the
Examiner erred in rejecting independent claim 10 for failing to comply with
the enablement requirement or in rejecting dependent claims 3—5,1,9, and
11—23 for failing to comply with the enablement requirement.
The §103 rejections
Appellants argue that “Kowald in view of Zatti does not disclose or
suggest every claim limitation of the rejected claims including independent
claims 1 and 10.” (Appeal Br. 18.)
The Examiner does not disagree.
Appellant’s arguments are correct. Neither Kowald nor Zatti
discloses, teaches or suggests the inducer being used to draw a
gas-air mixture through items such as a valve or venturi upstream
of the burner since Appellant’s Specification, figures and
original claims only discloses the inducer being used to draw the
gas through valve, the air through the venturi, and the gas-air
mixture through the valve-venturi system upstream of the burner.
(Answer 16.) Nor does the Examiner find that the other cited art makes up
for this deficiency of Kowald and Zatti.
The Examiner’s above reasoning regarding the disclosure of the
Specification is relevant to the written description and enablement
rejections, but not the rejection for obviousness. Accordingly, we do not
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Application 13/295,136
sustain the rejection of independent claims 1 and 10, or the rejection of
dependent claims 3—5, 7, 9, and 11—23 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1, 3—5, 7, and 9—23 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement is affirmed.
The Examiner’s rejection of claims 1, 3—5, 7, and 9—23 under
35 U.S.C. § 112, first paragraph, for failing to comply with the enablement
requirement is affirmed.
The Examiner’s rejections of claims 1, 3—5, 7, and 9—23 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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