Ex Parte MacDonald

Patent Trial and Appeal Board

Mar 25, 2013

11537905 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VIRGINIA N. MACDONALD
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Appeal 2010-012343
Application 11/537,905
Technology Center 3700
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Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN, and NEIL. A.
SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/537,905

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a decision of the
Examiner rejecting claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Appellant’s claimed invention “provides a method for enhancing
dehumidification of a conditioned space, while optimizing the effectiveness
of Indoor Air Quality (IAQ) devices that are present in the HVAC system,”
(Abstr.), and more particularly relates to an apparatus and a method “for
regulating humidity in an enclosed space using an air processing system that
includes a thermostat, a compressor and a blower for providing processed air
to the enclosed space.” App. Br. 4-5. Claims 1 and 4 are the independent
claims on appeal.1 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An apparatus for regulating humidity in an enclosed
space using an air processing system that includes a thermostat,
a compressor and a blower for providing processed air to said
enclosed space, the apparatus comprising:
(a) a sensor for sensing actual humidity within the
enclosed space and providing a humidity signal;
(b) a selector means for selecting a desired humidity level
within said enclosed space and providing a set point signal; and
(c) a blower control coupled to said sensor and selector
means, wherein if the compressor is off, the blower control
compares the actual humidity to the desired humidity, wherein:

1 Claims 1 and 4 are similar, claim 1 being directed to an apparatus for
regulating humidity according to the invention, and claim 4 being directed to
a similar method for doing so.

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(i) if the actual humidity is below the desired
humidity, the blower control allows the blower to
remain running; and
(ii) if the actual humidity exceeds the
desired humidity by less than a specified amount,
the blower control allows the blower to remain
running; and
(iii) if the actual humidity exceeds the
desired humidity by said specified amount, the
blower control deactivates the blower for a period
of time proportional to the difference between the
actual and desired humidity.

Evidence Relied Upon
Maeda US 2004/0118133 A1 Jun. 24, 2004
Crawford US 2007/0261422 A1 Nov. 15, 2007

The Rejections
The following rejections are before us on appeal:
1. Claims 1-6 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Crawford.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Crawford as applied to claim 1 and further in view of Maeda.2

2 The Examiner’s Answer, while maintaining the rejection of claim 7 solely
under § 103(a), apparently after further review of Crawford, comments that
“[a]lthough claim 7 should have been rejected under 35 USC 102 as being
anticipated by Crawford, the prior art cited by the Examiner in the final
rejection teaches the limitations of claim 7 and the status of claim 7 will
remain rejected.” Ans. 10.

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OPINION
Claims 1-6, as anticipated by Crawford
Appellant contends that the limitation of apparatus claim 1, that “if the
actual humidity exceeds the desired humidity by said specified amount, the
blower control deactivates the blower for a period of time” is not taught by
and does not necessarily flow from the asserted teachings of Crawford.
App. Br. 7-9, Rep. Br. 2-3. Appellant further argues that Crawford fails to
disclose the limitation that the period of time is “proportional to the
difference between the actual and desired humidity.” App. Br. 9-11, Rep.
Br. 2-3. Appellant makes the same arguments for independent claim 4.3
The Examiner found that Crawford’s disclosure in paragraph 21 of the
process for controlling humidity by operation or cessation of operation of the
fan depending on the selected value of humidity set for the system implies
that the system of Crawford controls the fan as called for in claims 1 and 4.
Ans. 7-9.
Appellant disagrees with the Examiner's conclusion that the
statements in Crawford imply that humidity control is controlled
independently of cooling control, arguing that
just because A (a cooling call) does not depend on B (humidity
control) but does depend on C (cooling mode or cooling
control), does not imply that B (humidity control) is
independent of C (cooling control) as asserted by the Examiner.
B does not have to be independent of C. On the contrary, the

3 Similar limitations are in the method claim 4: “(iii) if the actual humidity
exceeds the desired humidity by said specified amount, deactivating the
blower for a period of time proportional to the difference between the actual
and desired humidity.”

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statement relied on by the Examiner does not even establish a
relationship between humidity control and cooling control.
Rep. Br. 2. Additionally, Appellant further argues that Crawford fails to
teach that humidity control is controlled independently of cooling control.
Appellant says that, as pointed out by the Examiner (Ans. 7), “[i]f the
humidity sensed by sensor 26 in space 22 is greater than 1 % above the
setpoint value, the fan 32 is run according to the cooling call requirements
and if this cooling call requirement has been satisfied fan operation is
terminated.” (See para. 21, ll. 18-22). Appellant argues that in Crawford,
even “as applied by the Examiner, humidity control is not controlled
independently of cooling control. Instead, the fan 32, which is used to
control humidity, is operated differently depending on if cooling call
requirements have been terminated or not terminated. (See paragraph 21 of
Crawford and Figure 4.)” Rep. Br. 2. Appellant further notes that the
Abstract of Crawford also discloses that humidity control is operated with an
understanding of cooling control. Rep. Br. 2; see also Crawford, Abstr.
Accordingly, Appellant disagrees with the Examiner's finding that the
system of Crawford is clearly capable of controlling the fan to be terminated
if the humidity exceeds desired humidity, and the application of such a
finding to show anticipation from the implications drawn by the Examiner.
For the reasons argued by Appellant and reproduced supra, we agree
with Appellant that Crawford does not provide a sound basis in fact or
technical reasoning to reasonably support the determination that what are
characterized by the Examiner as inherent characteristics necessarily flow
from the teachings of Crawford, and adopt the reasons argued by Appellant.

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“Anticipation under 35 U.S.C. § 102[] requires that ‘each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.’” In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (quoting Verdegaal Bros., Inc. v. Union Oil Co., 814
F.2d 628, 631 (Fed. Cir. 1987)).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may
anticipate if that element is “inherent” in its disclosure. To
establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
… reference, and that it would [have been] so recognized by
persons of ordinary skill.”
Robertson, 169 F.3d at 745 (quoting Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” Id. at
745 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Claim 7, as obvious in view of Crawford and Maeda
Claim 7 depends from claim 1, and was rejected as obvious under 35
U.S.C. § 103(a) as being unpatentable over the combination of Crawford and
Maeda. Claim 7 adds “wherein said air processing system includes a heat
pump.” The Examiner stated that Crawford discloses all the limitations as
described above, but fails to disclose that the air processing system includes
a heat pump. Ans. 6. The Examiner found that Maeda teaches a
dehumidifying air conditioning apparatus that includes a heat pump system.
Id. (citing Maeda, para. 29, ll. 11-16). However, as noted above with respect

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to claim 1, Crawford does not disclose all the limitations, other than a heat
pump, and thus the rejection of claim 7 is likewise reversed.
Summary
Accordingly, we reverse the decision of the Examiner to reject
independent claims 1 and 4, which contain these elements discussed above,
and further reverse the rejection of claims 2, 3, and 5-7, which depend
thereon.

DECISION
We reverse the Examiner’s decision to reject claims 1-6 under 35
U.S.C. § 102(e) as anticipated by Crawford, and reverse the Examiner’s
decision to reject claim 7 under 35 U.S.C. § 103(a) as unpatentable in view
of Crawford and Maeda.

REVERSED

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