Ex Parte James et al

Patent Trial and Appeal Board

Jul 13, 2017

13567310 (P.T.A.B. Jul. 13, 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.
13/567,310 08/06/2012 Alexander Daniel James 257852/GECA-250 6798
7590
Dority & Manning, P.A. and Haier US Appliance
Solutions, Inc.
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
PELHAM, JOSEPH MOORE
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/13/2017 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 ALEXANDER DANIEL JAMES, STEPHEN BERNARD
FROELICHER, RICHARD DUSTIN HENDERSON, and
IONELIA SILVIA PRAJESCU
Appeal 2016-003839
Application 13/567,310
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
NATHAN A. ENGELS, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alexander Daniel James et al (Appellants)1 seek our review under 35
U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C. § 112, first
1 According to Appellants, the real party in interest is General Electric
Company. Br. 1.
2 Appeal is taken from the adverse decision of the Examiner, initially set
forth in the Final Office Action, dated February 20, 2015 (“Final Act.”), as
modified in the Answer dated November 02, 2015 (“Ans.), where the
Examiner withdrew rejections under 35 U.S.C. § 112, second paragraph, of
claims 10-17 as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention; and under 35 U.S.C. § 102(b) of claim 18 as anticipated by
Menassa (US 6,169,850 Bl, iss. Jan. 2, 2001). Ans. 4—5.
Appeal 2016-003839
Application 13/567,310
paragraph, of claims 1—18 as failing to comply with the enablement
requirement.3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1, 10, and 18 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter.
1. A heater assembly for an appliance, the heater assembly
comprising:
a housing that defines a chamber, said housing also
defining an inlet and an outlet, the chamber of said housing
extending from the inlet of said housing to the outlet of said
housing, said housing also having an outer surface and an
embossment with a distal portion, the embossment of said
housing extending away from the outer surface of said housing
such that the distal portion of the embossment is positioned away
from the outer surface of said housing, the embossment of said
housing having a sidewall that extends between and connects the
outer surface of said housing and the distal portion of the
embossment, the sidewall of the embossment defining an
aperture;
a heating element disposed within the chamber of said
housing, said heating element configured for heating air that
enters the chamber of said housing at the inlet of said housing in
order to generate a flow of heated air that exits the chamber of
said housing at the outlet of said housing; and
a thermostat mounted to said housing and having a probe,
the probe of said thermostat positioned within the chamber of
said housing, the probe of said thermostat also positioned
proximate the aperture of the embossment.
ANALYSIS
3At page 2, the Final Office Action recites an objection to the drawings,
which the Director found to be appealable. See Decision on Petition filed
May 22, 2015.
2
Appeal 2016-003839
Application 13/567,310
Failing to comply with the enablement requirement
The Examiner finds “while being enabling for a thermostat mounted
on the ‘embossment,’ [the specification] does not reasonably provide
enablement for an embodiment comprising a thermostat proximate but
beside the embossment, as allowed by claim 1, an embodiments(sic) lacking
the embossment, as allowed by claim 10, and lacking both the embossment
and aperture, as allowed by claim 18,” and concludes that “[t]he
specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make the invention
commensurate in scope with these claims.” Final Act. 3.
The standard for determining whether the Specification meets the
enablement requirement is whether the experimentation needed to practice
the invention is undue or unreasonable. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). In this case, the Examiner errs by not applying the proper
test for enablement. Specifically, the Examiner fails to discuss any of the
Wands factors or any other factors pertaining to the experimentation that
would be needed to practice the invention. See generally Final Act. and
Ans. As Appellants point out, “[t]he Examiner has not identified how one of
ordinary skill in the art would have to resort to undue experimentation to
provide a thermostat proximate but beside an embossment” (claim 1);
“. . . to provide a heater assembly lacking an embossment” (claim 10):
or “. . . to provide a heater assembly a heater assembly lacking an
embossment and an aperture.” See Br. 4—8.
3
Appeal 2016-003839
Application 13/567,310
For this reason, we do not sustain the Examiner’s decision rejecting
claims 1—18 as failing to comply with the enablement requirement.4
DECISION
We REVERSE the Examiner’s rejection.
REVERSED
4 In that the Examiner’s objection to the drawings was dependent upon the
claims failing to comply with the enablement requirement, we do not sustain
the drawing objection.
4