Ex Parte Hua

Patent Trial and Appeal Board

Nov 29, 2017

13460073 (P.T.A.B. Nov. 29, 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.
13/460,073 04/30/2012 YiHua 022229-2277-00 1090
23409 7590 12/01/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
TADESSE, MARTHA
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI HUA
Appeal 2017-002387
Application 13/460,073
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yi Hua (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1—25, which are all the pending claims.
See Appeal Br. 6—12. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Modine Manufacturing
Company. Appeal Br. 2.
Appeal 2017-002387
Application 13/460,073
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to space conditioning systems.
See Spec. 11. Claims 1, 9, and 14 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A refrigerant system comprising:
a compressor;
one or more modulating valves operatively coupled to an
output of the compressor to receive compressed vapor
refrigerant therefrom;
a condenser having an inlet operatively coupled to a first
outlet of the one or more modulating valves;
a hot gas reheat section comprising a first plurality of
refrigerant circuits and a second plurality of refrigerant circuits
fluidly in parallel to the first plurality of refrigerant circuits;
a first refrigerant flow path extending between and
operatively coupling a second outlet of the one or more
modulating valves and an inlet of the first plurality of
refrigerant circuits;
a second refrigerant flow path extending between and
operatively coupling the second outlet of the one or more
modulating valves and an inlet of the second plurality of
refrigerant circuits; and
a control valve arranged along the second refrigerant
flow path, wherein the control valve is not along the first
refrigerant flow path.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
appeal:
Harper US 5,752,389 May 19, 1998
Paul US 2005/0230080 A1 Oct. 20, 2005
Taras US 7,228,708 B2 June 12, 2007
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Application 13/460,073
REJECTIONS
The following rejections are before us for review:
I. Claims 1—15, 17—23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harper and Taras. Final
Act. 2-16.
II. Claims 16 and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harper, Taras, and Paul. Id. at 16.
ANALYSIS
The Examiner’s rejection of independent claims 1, 9, and 14 is based
on a conclusion that, given the teachings of the prior art, it would have been
obvious “to substitute the tee po[r]tion, 27, of Harper with the shut off
valve 42 of Taras such that the valve was provided, in order to
advantageously shut[] the line 32 to the condenser . . . off during cooling or
heating operation.” Final Act. 3, 6—7, 9. According to the Examiner, such a
modification would “allow[] the transfer of cooling potential between cycles
and allowing the rate of the transfer by changing the operation of those
refrigeration cycle devices thus allowing more control over the refrigeration
operation and increasing its flexibility.” Id. at 3—4, 7, 9-10.
Appellant argues that “it would not have been obvious to replace the
tee 27 of Harper with the valve 42 of Taras,” and that “[i]t is only through
impermissible hindsight that such a modification to Harper is proposed.”
Appeal Br. 7. We agree that a sustainable case of obviousness has not been
established.
Here, the Examiner erred by not articulating sufficient reasoning,
supported by rational underpinnings, why a person having ordinary skill in
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Application 13/460,073
the art would have been prompted to modify the teachings of Harper and
Taras as proposed. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (stating that “[Rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” (quoting In re Kahn,44\ F.3d 977, 988 (Fed. Cir. 2006))). The
reasoning provided in the rejection makes only a conclusory proposal to
“substitute” valve 42 of Taras for hot gas tee 27 in the refrigeration system
of Harper without adequately explaining how or why one of ordinary skill in
the art would have been led to make such a substitution. In particular, the
Examiner does not set forth any evidence or reasoning to explain why one of
ordinary skill in the art would consider shutting off the flow of refrigerant
through Harper’s line 32 to condenser 34 “advantageous” or desirable, as
stated in the rejection. See Final Act. 3, 6—7, 9.
Harper discloses that compressor 22 outputs hot gas refrigerant that
travels to the inlet of hot gas tee 27, which has two outlets providing hot
refrigerant to hot gas line 32 (i.e., to condenser 34) and reheat line 50 (i.e., to
reheat coil 54). See Harper, col. 7,11. 54—59, 62—63; col. 8,11. 30-31.
Reheat gas line 50 connects to small stop valves 52, which are arranged in
parallel to control flow of hot refrigerant flow to individual circuits of reheat
coil 54. See id., col. 8,11. 31—35. In cooling operation mode, stop valves 52
are closed, such that hot refrigerant flows to condenser 34, but no refrigerant
flows to reheat coil 54. See id., col. 7,11. 57—65. In dehumidification
operation mode, one or more of stop valves 52 is open to allow a portion of
hot refrigerant from compressor 22 to be diverted, via tee 27, to flow
through respective circuits of reheat coil 54. See id., col. 8,11. 24—26. In this
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Application 13/460,073
regard, Appellant persuasively asserts that “Harper clearly discloses that
refrigerant flows through the condenser 34 during both cooling and
dehumidification,” and there is “no teaching or suggestion to operate Harper
in the manner proposed by the Examiner (i.e., operate the system while
blocking refrigerant flow along line 32).” Appeal Br. 7. As such, the
Examiner’s reasoning that it would be advantageous or desirable to shut off
the flow of refrigerant in line 32 to condenser 34 lacks evidentiary support.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). In this case, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation, based on a
rational underpinning, as to why one of ordinary skill in the art would have
been led to modify the refrigerant system of Harper to replace tee 27 with a
valve, and an adequate reason for such modification is not otherwise evident
from the record.
Although we appreciate that the findings relied upon from Harper and
Taras appear to be supported by a preponderance of the evidence, we note
that a claim “composed of several [features] is not proved obvious merely by
demonstrating that each [feature] was, independently, known in the prior
art.” KSR Int’l Co., 550 U.S. at 418. Rather, a sustainable obviousness
rejection further needs to explain the reasoning by which those findings
support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc.
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Application 13/460,073
v. InfoUSA, Inc., 587 F.3d 1324, 1328—30 (Fed. Cir. 2009). In the present
case, Rejection I fails to meet this required standard.2
We note that the Examiner relied on Paul for teaching additional
features of dependent claims 16 and 24 in Rejection II, but did not articulate
any findings or reasoning that would cure the aforementioned deficiency
with respect to the proposed combination of Harper and Taras as applied in
Rejection I. See Final Act. 16.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case of obviousness for the claimed
subject matter. On this basis, we do not sustain the rejections of
claims 1—25 under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s rejections of claims 1—25.
REVERSED
2 We note Appellant’s argument that “it would not have been obvious
to utilize the three-way valve 42 of Taras in addition to the valves 52 of
Harper.” Reply Br. 3; see id. at 4 (asserting that, “if the valve 42 of Taras
were utilized in place of the tee 27 of Harper, the valves 52 of Harper would
be duplicative”); see also Appeal Br. 7 (asserting that “one skilled in the art
would not have inserted an additional valve between the condenser and the
reheat section of Harper based on the disclosure of Taras”). To the extent
that Appellant suggest that there is no logical reason to add an additional
valve upstream of Harper’s valves 52, we do not agree with this line of
argument, and our reversal of the Examiner’s rejection should not be taken
as a validation of such an argument. Rather, the basis for our decision to
reverse the Examiner’s rejection is that the reason for the proposed
modification articulated on the record is insufficient to sustain it.
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