Ex Parte Kühl et al

Patent Trial and Appeal Board

May 25, 2016

12918082 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/918,082 11/03/2010
46726 7590 05/27/2016
BSH Home Appliances Corporation
100 Bosch Boulevard
NEW BERN, NC 28562
FIRST NAMED INVENTOR
Hans-Detlev Klhl
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.
2008P00018WOUS 6035
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-DETLEV KUHL and
ANDREAS STOLZE
Appeal2014-004356
Application 12/918,082
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 24-52. Final Act. 1 (Office Action Summary). Claims
1-23 have been canceled. Br. 14 (Claims Appendix). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a domestic appliance for
drying a damp product by means of a process air stream that can be
Appeal2014-004356
Application 12/918,082
conducted in a process air channel." Spec. if 1. Claims 24 and 49 are
independent. Claim 24, reproduced below, is illustrative of the claims on
appeal:
24. A domestic appliance for drying a damp product by
means of a process air stream conducted in a process air
channel, the domestic appliance comprising:
a treatment chamber that includes the damp product,
wherein the process air stream flows through the treatment
chamber;
a cooling assembly to cool and condense the process air
stream after the process air stream flows through the treatment
chamber, the cooling assembly having a first heat exchanger to
supply heat from the process air stream to a working fluid, and
wherein the process air stream flows through the cooling
assembly;
a heating assembly downstream of the cooling assembly
to heat the process air stream before the process air stream
flows through the treatment chamber, the heating assembly
having a second heat exchanger to supply heat from the
working fluid to the process air stream, and wherein the process
air stream flo\'l/S through the heating assembly; and
a heat pump in which the working fluid is conducted, the
heat pump having at least two displacement pistons that are
mechanically coupled, and the heat pump to operate according
to a regenerative gas cycle process that includes a Vuilleumier
gas cycle process.
REFERENCES RELIED ON BY THE EXAMINER
Doi
Seki ya
Honda
Tadano
US 4,683,723 Aug. 4, 1987
US 5,400,599 Mar. 28, 1995
US 5,615,556 Apr. 1, 1997
US 2006/0053651 Al Mar. 16, 2006
THE REJECTIONS ON APPEAL
Claims 24--32, 46, 47, 49, and 50 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Honda and Tadano.
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Application 12/918,082
Claims 33-38, 43--45, 48, 51, and 52 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Honda, Tadano, and Sekiya.
Claims 39--42 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Honda, Tadano, and Doi.
ANALYSIS
The rejection of claims 24-32, 46, 47, 49, and 50
as unpatentable over Honda and Tadano
Appellants argue claims 24--32, 46, 47, 49, and 50 together. Br. 8-11.
We select independent claim 24 for review with claims 25-32, 46, 47, 49,
and 50 standing or falling with claim 24. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on Honda for disclosing a heat pump having two
mechanically coupled displacement pistons and with the heat pump
operating according to a regenerative gas circulation process that includes a
Vuilleumier gas cycle process. Final Act. 2 (referencing Honda Title,
Abstract, Fig. 14, and 13:7-16). The Examiner relies on Tadano for
disclosing the remaining limitations of claim 24 while noting that Tadano
also discloses the use of a heat pump. Final Act. 3 (referencing Tadano
Abstract and i-fi-130, 35, 37, 54, 57, 91, and 92). The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time of the invention to substitute Honda's heat pump for Tadano's heat
pump to achieve the claimed invention. 1 Final Act. 4. According to the
Examiner, "[t]he modification merely involves combining prior art elements
according to known methods to yield predictable results." Final Act. 4; see
also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The Court
1 "Tadano teaches a heat pump which could be easily replaced with the
embodiment of Honda to treat the damp clothing articles." Final Act. 4.
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Application 12/918,082
recognized that when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result."
Appellants traverse the Examiner's rejection by arguing that the
Examiner failed to provide an adequate rationale for combining the applied
art, i.e., the Examiner failed to specify "some stated advantage" for the
combination. Br. 9; see also Br. 11. However, the Supreme Court has
provided guidance that, where "the claimed subject matter may involve more
than the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement," it becomes necessary "to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue" and also that "this analysis should be made explicit."
KSR, 550 U.S. at 417--418. In view of such language, in matters of simple
substitution (as here), a prima facie case can rest on a showing that the
proposed combination would yield a predictable result. Id. On the record
here, Appellants have not shown error in the Examiner's position that the
proposed combination would yield a predictable result.
Here, the Examiner nevertheless also provided an explicit reason for
combining Honda and Tadano. Ans. 11. The Examiner found that "Honda
discloses a stable operating heat pump with a high coefficient of
performance (see abstract)" and concluded that it would have been obvious
"to substitute the heat pump of Tadano with the stable and more energy
efficient heat pump of Honda." Ans. 11. In other words, the Examiner
addresses Tadano's use of a "conventional heat pump" and that the only
difference between Tadano and the claimed invention is the particular type
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Application 12/918,082
of heat pump used. Ans. 11. Hence, the Examiner concluded that a person
of ordinary skill in the art would have found it obvious to replace Tadano's
heat pump with Honda's Vuilleumier heat pump because it would have
merely involved substituting one known element for another to achieve
predictable (i.e., more efficient) results. Final Act. 4; Ans. 11. Appellants
do not dispute that the result would be predictable, but instead that the
Examiner provided no "stated advantage" for making the combination. Br.
9. Accordingly, and based on the above, Appellants' contentions regarding
a lack of "some stated advantage" being expressed by the Examiner as the
motivation for combining Honda and Tadano is not persuasive of Examiner
error.
Appellants further contend that both Honda and Tadano involve
complicated designs for their respective heat pumps and "[a]s a result, a
simple replacement of the heat pump of Tadano with a regenerative heat
pump is not possible." Br. 9; see also Br. 10. Consequently, "[b ]ecause the
circuitry of both are different, it is not just a matter of modifying the
complex circuitry of the Tadano heat pump to become the complex circuitry
of a regenerative heat pump." Br. 9. In other words, "[t]he circuitry
necessary for one type of heat pump cannot be used to make a heat pump of
the other type," and as such, making these changes "would not have been an
obvious thing to do." Br. 9.
In addressing this contention, the Examiner states, "[ t ]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference," but instead,
"the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." Ans. 11-12 (referencing In
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re Keller, 642 F.2d 413 (CCPA 1981)). The Examiner notes, "[t]he
Vuilleumier heat pump is an old and well-known heat pump" (indicating that
it was first patented in 1918) and that it has been used "for refrigerators, air
conditioners, and building heating and cooling systems (see col. 1, lines 5-9
in Honda)."2 Ans. 12. As such, the Examiner reasons that "it is within the
capabilities of a person having ordinary skill in the art to use a Vuilleumier
heat pump with a drying machine" "because of the stated advantages that a
Vuilleumier heat pump provides and a person having ordinary skill in the art
would not have been deterred from making the modification for the reasons
stated." Ans. 12.
Appellants offer neither evidence nor technical reasoning to show that
adapting the known Vuilleumier heat pump process from a building HV AC
product application to a household appliance product application involved
more than mere ordinary skill. KSR, 550 U.S. at 421 ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton."). In other
words, Appellants do not explain how placement of Vuilleumier heat
exchangers on a household appliance would pose a challenge for a person of
ordinary skill in the art. Accordingly, we are not persuaded by Appellants'
contention that the Examiner's stated substitution "would not have been an
obvious thing to do." Br. 9.
Next, Appellants argue that the Examiner is guilty of engaging in an
improper hindsight analysis. Br. 10. Appellants do not support this
2 Appellants' Specification also acknowledges that a Vuilleumier
regenerative gas cycle process is known in the art and that this process "is
suitable for use in a heat pump or a cooling device," "for example in the
heating of buildings." Spec. i-f 7.
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conclusory argument with any teaching in the Specification that is not
already found in the applied art. 3 See In re McLaughlin, 443 F.2d 1392,
13 9 5 ( CCP A 1971). The Examiner reiterates that the invention requires
nothing more than substituting one known heat pump for another (in this
case, the use of a "Vuilleumier heat pump design") and that the "motivation
to combine was not gleaned from [Appellants'] disclosure." Ans. 12; see
also Ans. 11 (discussing the Examiner's reason to combine based on
Honda's greater efficiency). We are not persuaded the Examiner engaged in
improper hindsight analysis.
Appellants further address the Examiner's stated reliance on Tadano's
advantages (Br. 10 referencing Final Act. 12), but the Examiner
acknowledges that the "Examiner intended to say that Honda disclosed these
advantages," not Tadano (Ans. 13). Appellants' reliance on the Examiner's
now corrected mis-statement is not persuasive of Examiner error.
In view of the foregoing discussion, we believe the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion ofunpatentability is well founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claims
24-32, 46, 47, 49, and 50 over Honda and Tadano.
The rejection of (a) claims 33-38, 43--45, 48, 51, and 52 as unpatentable
over Honda, Tadano, and Sekiya; and (b) claims 39-42 as unpatentable
over Honda, Tadano, and Doi
3 Appellants address their "inventive design of providing at least two
displacement pistons that are mechanically coupled" and how that "allows a
fixed phase relationship to be achieved between the pistons at low
construction cost." Br. 10. However, Appellants do not address Honda's
disclosure of mechanically coupled pistons 3 and 5 as relied on by the
Examiner. See Final Act. 2; Honda Fig. 14.
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The Examiner relies on the additional references to Sekiya and Doi
for their teachings with respect to the additional limitations recited in these
dependent claims. Final Act. 7-11. Appellants do not address these
additional teachings but contend that the additional references to Sekiya and
Doi "do[] not remedy the deficiencies of Honda and Tadano." Br. 11-12. In
other words, Appellants contend that neither Sekiya nor Doi teaches or
suggests that for which the Examiner relies on Honda and Tadano. Br. 12-
13. Appellants' contentions are not persuasive of Examiner error. We
sustain the Examiner's rejection of claims 33--45, 48, 51, and 52.
DECISION
The Examiner's rejections of claims 24--52 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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