Ex Parte Hombucher

Patent Trial and Appeal Board

Nov 18, 2013

10545540 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEINZ-DIETER HOMBUCHER
____________

Appeal 2011-012462
Application 10/545,540
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012462
Application 10/545,540

2

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 27-32 and 35. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We reverse the decision of the Examiner.
CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to a method for
recovering energy from an air-conditioning and/or ventilation system.
Spec., para. [0001]. Claim 27, the sole independent claim, is representative
of the subject matter on appeal, and recites:
27. A method for recovering energy in an air-
conditioning or ventilation system, said air-conditioning or
ventilation system having a heat recovery system
connected to a supply air volume flow and a used air
volume flow for transferring heat between the supply air
volume flow and the used air volume flow and having a
heat pump allocated to the heat recovery system for
increasing energy transport between the supply air volume
flow and the used air volume flow and coupled by means
of heat exchangers to the supply air volume flow and/or to
the used air volume flow, the method comprising:
exchanging thermal energy in the used air volume
flow emerging from the heat recovery system by means of
a first heat exchanger coupled to the heat pump;
transferring the exchanged thermal energy by means
of the heat pump and a second heat exchanger coupled to
the heat pump to a single accumulator circuit linking the
second heat exchanger to the supply air volume, the single
accumulator circuit having an adjustable bypass valve for
controlling the amount of heat transferred from the second
heat exchanger, the single accumulator circuit being
coupled to the second heat exchanger for transferring
thermal energy and containing a first energy accumulator;
and
Appeal 2011-012462
Application 10/545,540

3

transferring the thermal energy transferred to the
single accumulator circuit by means of a third heat
exchanger to the supply air volume flow for cooling or
heating the supply air volume flow.
REFERENCES
The Examiner relied upon the following prior art references:

REJECTIONS
The following rejections are before us for review:
1. Claims 27-32 and 35 rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention
(Ans. 5);
2. Claims 27, 28, 30, 32 and 35 rejected under 35 U.S.C. § 103(a) as
being unpatentable based on EP 0676594 (“EP ’594) and Tryon (id. at 8);
3. Claim 29 rejected under 35 U.S.C. § 103(a) as being unpatentable
based on EP ’594, Tryon, and Kirschbaum (id. at 9);
4. Claim 30 rejected under 35 U.S.C. § 103(a) as being unpatentable
based on EP ’594, Tryon, and Urch (id.); and
5. Claim 31 rejected under 35 U.S.C. § 103(a) as being unpatentable
based on EP ’594, Tryon, and Harris (id. at 10).
Tryon US 2,917,287 Dec. 15, 1959
Kirschbaum US 4,012,920 Mar. 22, 1977
Harris US 5,651,258 Jul. 29, 1997
Urch US 6,434,963 B1 Aug. 20, 2002
Miserez EP 0676594 A3 May 15, 1996
Appeal 2011-012462
Application 10/545,540

4

ANALYSIS
Because there is a difference between the claims rejected and the
claims argued on appeal, first we clarify the rejections before us.
In the Final Rejection, mailed April 19, 2010, the Examiner
summarized the status of the pending claims and stated that claims 27-52
were pending in the application; claims 33, 34 and 36-52 were withdrawn
from consideration; and claims 27-32 and 35 were rejected. See Final Rej.,
p. 1, Office Action Summary.
Appellant filed on July 22, 2010 a reply to the Final Rejection. In this
reply, Appellant stated that claim 35 “has been removed” from the
application. See Reply to Office Action, July 22, 2010, p. 5.
In an Advisory Action mailed August 5, 2010, Appellant was advised
that the proposed amendments to the claims would not be entered. Thus,
claim 35 was not “removed” from the application.
On August 10, 2010, Appellant filed a Notice of Appeal, stating that
“Applicants [sic] hereby appeal to the Board of Patent Appeals and
Interferences from the decision of the Examiner mailed April 19, 2010,
rejecting the following claims: 27-32 and 35.” Notice of Appeal, Aug. 10,
2010, p. 1. Thus, Appellant recognized that claim 35 was still in the
application and was rejected.
In the Appeal Brief, Appellant states, however, that the status of
claims in the case is that “[c]laims 27-32 are pending in this application and
stand rejected. Claims 27-32 are herewith appealed. Claims 1-26 and 33-52
were cancelled.” App. Br. 2. Appellant neither listed claim 35 as being
appealed nor presented any argument for claim 35. Appellant stated, in
error, that claim 35 was cancelled. Appellant also stated, under the heading
Appeal 2011-012462
Application 10/545,540

5

“Grounds of Rejection to be reviewed on Appeal” that only claims 27-32
were rejected and are to be reviewed on appeal. Id. at 2-3.
In the Claims Appendix, Appellant includes claims 27-52 identifying
each claim as “Previously Presented.” The Claims Appendix should contain
only “a copy of the claims involved in the appeal.” 37 C.F.R. § 41.37(c)(v).
In arguing the rejection under Section 112, the Reply Brief refers to
“[c]laim 36.” Reply Br. 2. However, in the Final Rejection, the Examiner
stated that claim 36 was “withdrawn as to non-elected inventions.” Final
Rej., p. 3. The Appeal Brief acknowledges that claim 36 is “cancelled.”
App. Br. 2.
Based on the record in this case, claims 27-32 and 35 are before us for
review. Claim 35 is pending in the application and stands rejected under 35
U.S.C. §§ 112 and 103.
Appellant argues claims 27-32 as a group, presenting argument only
for claim 27. App. Br. 3-5. Dependent claims 28-32 and 35 are not argued
separately. Id. Accordingly, claims 28-32 and 35 stand or fall with claim
27. 37 C.F.R. § 41.37(c)(1)(vii)(2011). Only those arguments actually
made by Appellant have been considered. Arguments which Appellant
could have made but chose not to make in the Briefs have not been
considered and are deemed to be waived. Id.
The § 112 Rejection
The Examiner found the phrase “single accumulator circuit” to be
“ambiguous” and amenable to two or more different claim interpretations.
Ans. 6. To support this finding, the Examiner cited two different
interpretations of this phrase advocated by Appellant. Id. One interpretation
Appeal 2011-012462
Application 10/545,540

6

was that there was a single accumulator; the second interpretation was that
there was a single circuit. Id.
During proceedings to obtain a patent before the Patent and
Trademark Office:
if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant
to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential
opinion).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
The written description of the invention in the Specification does not
use the phrase “single accumulator circuit.” In the context of describing a
first embodiment of the invention, as shown in Figure 1, the written
description states that:
[t]he heat exchanger 1 is coupled in an accumulator circuit
9. The heat exchanger 4 coupled to the heat pump 3 is
also coupled in this accumulator circuit 9. Furthermore, in
the accumulator circuit 9 there is an energy accumulator
9.1. The accumulator circuit 9 and the energy accumulator
9.1 are filled with a circulating fluid, which stores heat and
which is circulated by a pump.
Spec., para. [0035].
Appeal 2011-012462
Application 10/545,540

7

Based on this description, there is a clear distinction between the
accumulator circuit 9 and the energy accumulator 9.1.
The written description also states that
the mixing valve 6 is arranged at a juncture of the accumulator
circuit 9, in which two branches A and B of the accumulator
circuit 9 are joined. One branch A of the juncture is connected
directly to the heat exchanger 1 as a return line. A second
branch B is connected to the supply line for the heat exchanger
1 coming from the energy accumulator 9.1.
Spec., para. [0039].
Here again, there is a distinction between the circuit 9 and the
accumulator 9.1.
Additionally, the written description states “the energy accumulator
9.1 can be directly or indirectly connected via the accumulator circuit 9 to
additional devices for supplying or discharging heat in order better to utilize
[sic] its energy capacity.” Spec., para. [0057]. Again, there is a distinction
between the circuit 9 and the accumulator 9.1.
A second embodiment of the invention is shown in Figure 2. In this
embodiment, another accumulator circuit 12 with an energy accumulator
12.1 is allocated to the heat pump 3. Spec., para. [0053].
The Examiner cites Appellant’s remarks in the amendment filed
December 23, 2009 as indicative of the ambiguity of the phrase “single
accumulator circuit.” Ans. 10. In these remarks, Appellant explained that:
[t]he single accumulator of claim 27 is actually recited as “a
single accumulator circuit linking the second heat exchanger to
the supply air volume” . . . . Thus, there is no recitation that the
entire device contains a single accumulator -- only that there is
a single accumulator between the second heat exchanger and
the [sic] to the supply air volume.
Reply to Office Action, filed Dec. 23, 2009, p. 7.
Appeal 2011-012462
Application 10/545,540

8

Appellant also stated in these remarks that in claim 27, “the context
expressly indicates that there is a single accumulator between the indicated
components, not that there is a single accumulator in the entire device.” Id.
(emphasis added).
The Examiner found these remarks inconsistent with Appellant’s
argument on appeal where the Examiner understood Appellant to argue that
“the word ‘single’ is associated with the word ‘circuit’ as opposed to the
word ‘accumulator.’” Ans. 10.
We do not find the language of claim 27 ambiguous or amenable to
two or more plausible claim constructions. Nor do we find Appellant’s
remarks inconsistent with claim 27. Claim 27 consistently refers to “a single
accumulator circuit,” and recites that this circuit “link[s] the second heat
exchanger to the supply air volume.” Claim 27 also recites that the single
accumulator circuit “contain[s] a first energy accumulator.” This is
consistent with the Specification which states that accumulator circuit 9
contains accumulator 9.1, and that circuit 9 links second heat exchanger 4,
which is coupled to heat pump 3, with supply air volume ZU. Spec., para.
[0035]. This also is consistent with the Specification which consistently
distinguishes between an accumulator circuit and an accumulator.
Accordingly, we do not sustain the rejection of claims 27-32 and 35
under Section 112, second paragraph.1

1 We note, as did the Examiner (see Ans. 7), that claims 28 and 29 recite a
“first accumulator circuit” for which there is no antecedent. Appellant
proposed to amend these claims to eliminate this issue in the Reply to Office
Action filed July 22, 2010. The proposed amendment was not entered by the
Examiner. See Advisory Action, mailed Aug. 5, 2010. The Examiner also
noted that the phrase “single accumulator circuit” “is not descriptive of
Appeal 2011-012462
Application 10/545,540

9

The § 103 Rejections
The Examiner relied on EP ’594 for reach rejection under Section
103. EP ’594 in the record of this case is a two page document. The first
page is a standard summary first page of a published European patent
application (Europäische Patentanmeldung), including bibliographic
information, an Abstract, and a single figure. The second page is a list of
references cited. Both pages are in German. There is no English translation
of the summary first page. There is no copy in the record of this case, in
English or German, of the entire published EP ’594 application.
Failure to provide a complete English-language translation of EP ’594
runs counter to the guidelines in the MPEP. See MPEP § 706.02 (II) (“If the
document is in a language other than English and the examiner seeks to rely
on that document, a translation must be obtained so that the record is clear
as to the precise facts the examiner is relying upon in support of the
rejection.” (emphasis added)) and MPEP § 1207.02 (“If a document being
relied upon by the examiner in support of a rejection is in a language other
than English, a translation must be obtained so that the record is clear as to
the precise facts the examiner is relying upon in support of the rejection.”
(emphasis added)).
In relevant part claim 27 requires a “single accumulator circuit,” as
discussed above in connection with the rejection under Section 112.
Appellant argues that EP ’594 shows a system:
with one tank 38 and two accumulator circuits; the first circuit
62A, 62B is connected to the heat pump 80 [sic] in connection

applicant’s own disclosure.” Ans. 7. No rejections were made based on
these observations made by the Examiner. Any continuing prosecution
should address these issues.
Appeal 2011-012462
Application 10/545,540

10

with a channel 52 of external air. The second circuit 64A, 64B
is connected to a heat exchanger 42 in the inlet 18 of air.
App. Br. 4.
In response to Appellant’s argument, the Examiner stated that there is
“no limitation in the claims that prohibits one from interpreting pipes 62A,
62B, 64A and 64B as a single circuit.” Ans. 14. The Examiner explained
that “[t]he fact that fluid from pipes 62A, 62B, 64A and 64B is mixed inside
of the tank 38 is not precluded by any claim limitation.” Id.
An Examiner’s factual finding regarding what a reference discloses
must be supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the
standard that must be met by the PTO in making rejections”); see also In re
Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In
rejecting an application, factual determinations by the PTO must be based on
a preponderance of the evidence, and legal conclusions must be correct.”)
(citation omitted).
Here, based only on the single figure shown on the summary page of
the published EP ’594 application, and without additional figures (if any are
available) or an English translation explaining the structure and function of
elements shown in the figure, we are unable to determine whether the
evidence supports the Examiner’s interpretation and analysis of EP ’594 or
whether the evidence supports Appellant’s interpretation and analysis of EP
’594. Both seem equally plausible based on a review of the only evidence in
the record before us. Thus, we conclude that the preponderance of the
evidence does not support the Examiner’s findings. Accordingly, we cannot
sustain the Examiner’s rejections under Section 103 relying upon EP ’594.
Appeal 2011-012462
Application 10/545,540

11

DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence:
1. we reverse the Examiner’s decision rejecting claims 27-32 and 35
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention; and
2. we reverse the Examiner’s decision rejecting claims 27-32 and 35
under 35 U.S.C. § 103.

REVERSED

mls