Ex Parte Hiner et al

Patent Trial and Appeal Board

Feb 19, 2019

13662910 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/662,910 10/29/2012 Nicolas A. Hiner
30236 7590 02/21/2019
Houtteman Law LLC
PO Box 370
Merrifield, VA 22116-0370
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
271.024 SH 8512
EXAMINER
WHITE, ALEXANDER A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
wangxuzhuo@yahoo.com
ibgamboa@houtteman.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS A. HINER and RICHARD W. HALSALL 1
Appeal2018-005249
Application 13/662,910
Technology Center 3700
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 4--8, and 11-16, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
1 Appellants are the real parties in interest. App. Br. 2.
Appeal2018-005249
Application 13/662,910
THE INVENTION
The Appellants' claimed invention is directed to a ceiling fan (Spec.
para. 2). Claim 8, reproduced below, is representative of the subject matter
on appeal.
8. An apparatus comprising:
a plurality of discs oriented parallel, spaced apart and
sharing a common central axis, including a bottom most disc,
each disc having an outer circumference and an inner
circumference, said inner circumference defining a centrally
located aperture;
a post located at a central axis of said apparatus and
having an outer surface, said post having an outer surface
having a conical shape such that it acts as an air guide that
directs the incoming air without turbulence,
said plurality of discs mounted about said post so as to
form an air return space between the surface of the post and the
inner circumference of said bottom most disc, and
said discs mounted such that they freely rotate around
their central axis,
wherein the size of said air return space, the outer surface
shape of said post, the distance space of said plurality of discs,
the number of discs and the speed of rotation are all configured
to produce a generally laminar flow air circulation in a space
surrounding the apparatus.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 4--8, and 11-14 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Hiner (US 2010/0111720 Al, pub. May 6, 2010) and
Possell (US 5,192,182, iss. Mar. 9, 1993).
2. Claims 1, 4--6, 8, and 11-13 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Possell (as evidenced by Hiner).
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Appeal2018-005249
Application 13/662,910
3. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hiner, Possell, and Gent (US 2,321,907 iss. June 15,
1943).
4. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Possell (as evidenced by Hiner) and Gent.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
With regards to the rejections of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Possell and Hiner, the Appellants argue that the claim
limitation which requires:
wherein the size of said air return space, the outer surface shape of
said post, the distance space of said plurality of discs, the number of
discs and the speed of rotation are all configured to produce a
generally laminar flow air circulation in a space surrounding the
apparatus
is not shown because the cited combination fails to disclose "laminar flow
air circulation" (App. Br. 9, 10).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 4, 5).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2018-005249
Application 13/662,910
We agree with the Examiner. Here, the claim only requires the recited
fan structure produce "generally laminar flow air circulation in a space
surrounding the apparatus." Possell at column 3, lines 8-12, in the cited
combination, discloses having a "primarily laminar flow mode" thus
meeting the argued claim limitation. Regardless, one of ordinary skill in the
art would recognize the advantage of a "laminar flow" mode to keep the fan
more stable in the cited combination. The Appellants have provided the
Halsall Declaration3 and Romanin Doctorial Dissertation4 but not cited them
in regards to the rejection of claim 8. Regardless, a review of these
documents is not persuasive to reverse the rejections of record for claim 8
and the rejections are sustained. The Appellants have provided similar
arguments for the remaining rejections of claims 1, 4---6, 11-13, 15, and 16
and the rejections of these claims are sustained as well.
With regards to claim 7, the Appellants argue the claim requires: "'5
to 8 discs"' which are "'about 0.7 to 0.8 inches apart"' and a "post" with an
"outer surface having a conical shape such that it acts as an air guide that
directs the incoming air without turbulence" and that the cited prior art fails
to suggest this combination. App. Br. 4.
In contrast, the Examiner has determined that Possell discloses: a post
in the shape of an inverted cone with concave sides (Fig. 1, col. 2:5-9);
using 8 discs at Fig. 1; and that the claimed distance of "O. 7 to O. 8 inches" is
an optimum or working range involving only routine skill in the art (Final
Act. 7, 9).
3 Declaration of Richard Halsall, dated June 27, 2017.
4 Vincent D. Romanin, Theory and Peiformance of Tesla Turbines,
(Doctorial Dissertation UC Berkeley 2012).
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Appeal2018-005249
Application 13/662,910
We agree with the Appellants. Here claim 7 requires the specific
argued elements including "5 to 8 discs" which are "about 0.7 to 0.8 inches
apart" and with a "post" with an "outer surface having a conical shape such
that it acts as an air guide that directs the incoming air without turbulence."
Even taking the cited prior art to disclose the claimed number of discs and
distances, here, the rejection simply lacks articulated reasoning with rational
underpinnings without impermissible hindsight to meet the specific argued
claim limitations. The rejection requires not only combining the Hiner and
Possell references but also selecting the specific number of discs and
distances claimed and the combination would not have been obvious without
impermissible hindsight. For this reason, the rejection of claim 7 is not
sustained. Claim 14 is drawn to similar subject matter and the rejection of
this claim is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 4--6, 8, and 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Hiner and Possell.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 4--6, 8, and 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Possell (as evidenced by Hiner).
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Hiner, Possell, and Gent.
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Appeal2018-005249
Application 13/662,910
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Possell (as evidenced by Hiner) and Gent.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Hiner and Possell.
DECISION
The Examiner's rejection of claims 7 and 14 is reversed. The
Examiner's rejections of claims 1, 4---6, 8, 11-13, 15, and 16 are sustained.
AFFIRMED-IN-PART
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