Ex Parte Hirsch et al

Patent Trial and Appeal Board

Feb 28, 2018

14211179 (P.T.A.B. Feb. 28, 2018)

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.
14/211,179 03/14/2014 Joachim Hirsch 142654.0107US 9268
(JOCI:0422-
75576 7590
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
RUBY, TRAVIS C
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
02/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM HIRSCH, MEGHNA PARIKH, and
BRIAN J. GRAHAM
Appeal 2016-000329
Application 14/211,179
Technology Center 3700
Before BRETT C. MARTIN, GEORGE R. HOSKINS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000329
Application 14/211,179
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—3, 5, and 21—36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
THE INVENTION
Appellants’ claims are directed generally “to an induction
displacement unit, and more particularly, to an induction displacement unit
comprising an induction plenum communicating with a first discharge
plenum and a second discharge plenum, the first discharge plenum in
communication with a heating coil and the second discharge plenum in
communication with a cooling coil.” Spec. 1,11. 6—12. Claim 1, the sole
independent claim, is illustrative of the claimed subject matter and is
reproduced below:
1. An induction displacement unit comprising;
an induction plenum comprising a plurality of first nozzles
in communication with a first discharge plenum and a plurality
of second nozzles in communication with a second discharge
plenum;
a return air plenum disposed between the first discharge
plenum and the second discharge plenum;
a heating coil disposed between the return air plenum and
the first discharge plenum;
a cooling coil disposed between the return air plenum and
the second discharge plenum;
the induction plenum vertically disposed between the
heating coil and the cooling coil, the heating coil disposed in an
upper portion of the unit;
the first discharge plenum disposed to induce a
substantially vertical discharge; and
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Application 14/211,179
the second discharge plenum disposed to induce a
substantially horizontal discharge.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Haessig US 5,005,636 Apr. 9, 1991
Miller US 2009/0264062 A1 Oct. 22, 2009
McCarty US 2012/0270494 A1 Oct. 25,2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—3, 5, 21, 22, 24—29, 31—33, 35, and 36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McCarty and Haessig. Ans.
4.
Claims 23, 30, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McCarty, Haessig, and Miller. Ans. 7.
ANALYSIS
Appellants first argue that McCarty is deficient as applied by the
Examiner because “what the Office has labeled ‘an induction plenum’ is
described in McCarty as ‘supply airflow path 110,’ and not an induction
plenum,” and further that this supply airflow path “would actually be a
discharge plenum.” App. Br. 9. The Examiner generally responds that a
plenum is a plenum and whether it is an induction or discharge plenum is
merely an intended use. Ans. 10. The Examiner goes on to state that such
an “intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art.” Id.
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Appeal 2016-000329
Application 14/211,179
While we generally agree with the Examiner’s statements regarding
intended use, we do not agree that they apply in this instance. The Examiner
appears to be making the argument that any plenum both receives and
discharges airflow and so any plenum may be considered to be either an
induction or discharge plenum. We do not agree that this is a correct
analysis. According to the Examiner’s interpretation, the terms “induction”
and “discharge” are essentially read out of the claims. The Examiner states
that there must be some structural difference, but does not explain how an
induction and a discharge plenum would be structurally the same so as to
render the distinction between induction and discharge as essentially having
no patentable weight.
As Appellants argue, “[t]he disclosed induction plenum has a
pressurized air source and nozzles, whereas the induction plenum invented
by the Office receives air from nozzles.” App. Br. 9. In other words,
Appellants have indicated a structural difference between McCarty’s airflow
path 110 and the induction plenum of the invention. Simply stating that both
an induction plenum and a discharge plenum receive and discharge air in a
flow path and thus each can be labeled as induction or discharge is
insufficient in this art, as those of skill in the art would have understood that
induction and discharge plena have both structural and functional
differences.
Applied in another context, according to the Examiner’s reasoning, in
an automobile there would be no difference between an intake manifold and
an exhaust manifold. In a sense, an intake manifold discharges air into the
engine and an exhaust manifold receives air from the engine and so the
labeling could simply be reversed. One of ordinary skill in the art, as with
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Application 14/211,179
the air flow paths disclosed in the present invention, would clearly
understand the difference between an intake and an exhaust manifold.
Furthermore, as Appellants point out, “[cjlaim 1 further includes a
heating coil disposed between the return air plenum and the first discharge
plenum.” App. Br. 10. We agree with Appellants that “heating elements
136 of McCarty are not disposed between return airflow path 120 and
heating airflow path 130” as would be required by the claims. Id. The
Examiner responds by stating that “a return air plenum is claimed, not a
single return air plenum” and also that because “the return air plenum is
interpreted to be plenums 120 and 130, the heating coil is construed to be
disposed between the return air plenum and the first discharge plenum.”
Ans. 12. Contrary to the Examiner’s response, Appellants do not argue that
there is only a single return air plenum, they merely argue that various claim
limitations relate to “the” return air plenum recited in the claims. While
there may be other plena in the system, the claim limitations relate to “the”
specifically recited plenum and so any positional relationships laid out in the
claims must be met by the same return air plenum identified in the first
instance. We also note that, on its face, the Examiner’s interpretation of
multiple plena as being “the return air plenum” cannot be correct.
Accordingly, for at least the above-stated reasons we do not sustain
the Examiner’s rejection of claim 1 over McCarty and Haessig. Because
claim 1 is the sole independent claim, we likewise do not sustain the
Examiner’s rejection of the dependent claims over McCarty and Haessig.
Also, Miller does not cure the deficiencies noted above, so we likewise do
not sustain the Examiner’s rejection of claims 20, 30, and 34 over McCarty,
Haessig, and Miller.
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Application 14/211,179
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—3, 5, and 21—36.
REVERSED
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