Ex parte Mehta et al.

Board of Patent Appeals and Interferences

Mar 17, 1998

08171149 (B.P.A.I. Mar. 17, 1998)

Application for patent filed December 21, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PRAVINCHANDRA C. MEHTA
and
WILLIAM A. SMILEY III
_____________
Appeal No. 96-2457
Application 08/171,1491
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-2457
Application 08/171,149
Claim 15 was amended subsequent to the final rejection in2
a paper filed March 13, 1995 (Paper No. 6).
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9 and 11 through 16, which are all
of the claims remaining in this application. Claim 10 has been
canceled.2
Appellants' invention relates to a centrifugal fan
having a slidably adjustable cutoff faring (32) located at, and
selectively positionable within, the exit port of the fan housing
for varying the area of the exit port such that the efficiency of
the centrifugal fan can be varied to match the output efficiency
of the fan to the desired air mass flow through an associated air
delivery system. The invention also addresses a method of opti-
mizing the performance characteristics of a specific centrifugal
fan for various air mass flow rates. Claims 1, 8 and 14 are
representative of the subject matter on appeal and a copy of
these claims may be found in the Appendix to appellants' brief.
Appeal No. 96-2457
Application 08/171,149
3
The prior art references of record relied upon by the
examiner in rejections of the appealed claims are:
Murphy 2,951,630 Sept. 6, 1960
Wood 3,191,851 June 29, 1965
Kang 5,092,136 Mar. 3, 1992
Claims 1, 2, 8, 9, 11, 12, 14 and 16 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Murphy in view
of Kang.
Claims 3 through 7, 13 and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over Murphy in view of Kang
as applied above, and further in view of Wood.
Rather than reiterate the examiner's full explanation
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper No.
11, mailed August 29, 1995) for the examiner's reasoning in
support of the rejections, and to appellants' brief (Paper No.
Appeal No. 96-2457
Application 08/171,149
4
10, filed July 10, 1995) and reply brief (Paper No. 12, filed
October 16, 1995) for appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
this review, we have made the determination that the examiner's
rejections under 35 U.S.C. § 103 will not be sustained. Our
reasons follow.
Turning first to the examiner's rejection of appealed
claims 1, 2, 8, 9, 11, 12, 14 and 16 based on Murphy in view of
Kang, we must agree with appellants that there is no teaching,
suggestion or incentive in the applied references to justify the
examiner's selective reconstruction of the centrifugal fan of
Murphy by replacing the pivoted cutoff sheet (26) therein with a
cutoff member that is slidable along the interior surface of the
scroll housing of the fan and operable to vary the area of the
Appeal No. 96-2457
Application 08/171,149
5
exit port or outlet (15). This is particularly so given the
interconnection at (28) between the pivoted cutoff sheet (26) and
the moveable inlet conduit (22) of Murphy which is intended to
ensure desired coordinated movement of these two components in
that fan system. The shutter (15) of Kang which is used to close
the passage (7) therein when the refrigerating compartment to
which it is attached is not in use, and to thereby eliminate the
negative effects of induced vortex flow on the fan (5) of the
system, has little or nothing to do with the centrifugal fan of
Murphy. In our opinion, the present combination is based
entirely on impermissible hindsight derived from appellants' own
teachings and not from the prior art references themselves as the
teachings thereof would have been fairly understood by one of
ordinary skill in the art at the time of appellants' invention.
Regarding the examiner's logic in support of the
rejections on pages 3 and 4 of the answer, we observe that a
combination of elements is not obvious merely because each of the
elements is individually known in a related field of art and may
Appeal No. 96-2457
Application 08/171,149
6
be found in an analogous (i.e., fan) device. Lacking any
reasonable teachings in the prior art itself which would appear
to have fairly suggested the claimed subject matter as a whole to
a person of ordinary skill in the art, or any viable line of
reasoning as to why such artisan would have otherwise found the
claimed subject matter to have been obvious in light of the
teachings of the applied references, we must refuse to sustain
the examiner's rejection of claims 1, 2, 8, 9, 11, 12, 14 and 16
under 35 U.S.C. § 103 based on Murphy and Kang.
The examiner's addition of the reference to Wood in the
rejection of claims 3 through 7, 13 and 15 under 35 U.S.C. § 103
only compounds the problem by further relying on impermissible
hindsight to make such combination, and does nothing to supply
that which is lacking in the teachings and/or suggestions of the
basic combination of references as noted above. More
specifically, we note that the rolled-over portion of the cutoff
sheet (20) about the rod (23) in Wood, which the examiner
considers to be a "lip," is used to secure that end of the cutoff
sheet in position between the fan housing walls (11, 12). Given
Appeal No. 96-2457
Application 08/171,149
7
the movable nature of the pivoted cutoff sheet (26) in Murphy
and/or the shutter (15) of Kang, there would appear to be no
reason why one of ordinary skill in the art would even consider
fixing the inner end of the cutoff sheet in Murphy or shutter of
Kang in the manner suggested in Wood. Accordingly, the rejection
of claims 3 through 7, 13 and 15 under 35 U.S.C. § 103 will
likewise not be sustained.
In light of the foregoing, the decision of the examiner
is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-2457
Application 08/171,149
8
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