Ex Parte Nguyen

Board of Patent Appeals and Interferences

Sep 9, 2012

11888489 (B.P.A.I. Sep. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LONG N. NGUYEN
____________________

Appeal 2010-008990
Application 11/888,489
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claims are directed to gas fireplaces. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A gas fireplace comprising:
a first housing having a first upper wall;
a second housing within the first housing having a second
upper wall spaced apart from the first upper wall and defining a
space between the first and second upper walls, wherein a
combustion chamber is defined within said second housing; and
a first elbow flue for the exhaust of gases generated in the
fireplace coupled to the second upper wall and extending within
the space, wherein the elbow flue comprises a first section and a
second section, wherein the first section comprises a first
longitudinal axis, wherein the second section comprises a
second longitudinal axis extending at a first angle relative to the
first longitudinal axis, wherein at least a portion of each section
is within the space, and wherein said elbow flue is rotatable
about said first longitudinal axis for orienting the second
section at different positions.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Langman
Garrett
Jones
Kelly
US 5,647,341
US 5,941,231
US 6,435,181 B1
US 6,910,478 B2
Jul. 15, 1997
Aug. 24, 1999
Aug. 20, 2002
Jun. 28, 2005
Bibaud US 2007/0221195 A1 Sep. 27, 2007
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and
Appellant’s Admitted Prior Art, Specification paragraphs [0001] and
[0003] (hereinafter AAPA).

REJECTIONS
The Examiner made the following rejections:
Claims 1-5, 9, 11-13, 17, 19-25 under 35 U.S.C. § 103(a) as
encompassing subject matter unpatentable over AAPA in view of Bibaud
and further in view of Jones.1
Claims 6-8 and 14-16 under 35 U.S.C. § 103(a) as encompassing
subject matter unpatentable over AAPA in view of Bibaud, further in view
of Jones, and further in view of Kelly.
Claims 10 and 18 under 35 U.S.C. § 103(a) as encompassing subject
matter unpatentable over AAPA in view of Bibaud, further in view of Jones,
and further in view of Langman.

ANALYSIS
We confine our review to the issues specifically raised by Appellant;
we treat all other issues as waived. See Ex Parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (citing Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) for the proposition that the Board may treat
arguments appellant failed to make as waived).
1. Claims 1-5, 9, 11-13, 17, and 19-25

1 Though claims 22 and 23 are omitted from the heading of the rejection in
the Examiner’s Answer, these claims are addressed in the body of the
rejection, and Appellant acknowledged these claims are subject to this
ground of rejection. See Ans. 3, 11; Br. 3.
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Appellant argues these claims as a group. Br. 4-8. We therefore
select claim 1 as representative and decide the appeal with respect to all
claims in this group on the basis of claim 1 alone; see 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Appellant does not challenge any of the Examiner’s findings
concerning the disclosures of AAPA and Bibaud. We therefore accept as
fact the Examiner’s findings concerning these references. Appellant argues
solely that (a) Jones is nonanalogous art; and (b) Jones does not disclose
certain features the Examiner ascribes to it. Br. 5-8. We consider these
arguments in turn.
(a) Whether Jones is nonanalogous art
Appellant argues that Jones is not pertinent to the problem with which
the invention as claimed is concerned: providing a compact fireplace insert.
Br. 5-6. Appellant argues that Jones is instead concerned with adjustability.
Br. 6.
The Examiner responds that because Jones discloses “a rotatable
fitting that offsets airflow… [Jones] is pertinent to the problem that the
Appellant claims to solve: to provide a compact, adjustable fitting for
venting air.” Ans. 12-13. Appellant provided no further argument in
response.
We find Appellant’s argument unconvincing. Appellants have argued
merely that Jones fails to teach or suggest compactness; this argument does
not convincingly address the Examiner’s finding that as an adjustable fitting,
Jones is pertinent to the problem Appellant faced at the time of invention.
Appellant’s Specification states that vertical and horizontal venting
fireplaces required different preformed fireplaces, creating a need for a
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fireplace that is connectable to either a vertical or horizontal exhaust vent
flue in the receiving opening having a limited space. Spec. paras. [0005],
[0007]. Therefore the problem facing Appellant at the time of invention was
not just one of compactness, but rather how to accommodate the connection
of variously-oriented conduits in a limited space. The Examiner found, and
we agree, that a reference disclosing adjustable fittings is pertinent to such a
problem and would have commended itself to one having ordinary skill.
(b) Whether Jones discloses features the Examiner ascribes to it
Appellant argues that “Jones does not teach or suggest an elbow
shaped air passage as the Examiner asserts.” Br. 6-8 (quoted material at 8).
Appellant argues that the Examiner mischaracterizes Jones in stating that
Jones “teaches an elbow shaped air passage substantially similar to
[Appellant’s] first elbow flue wherein a first section and a second section
analogous to [Appellant’s] first and second sections....” Br. 6 (quoting from
Final Rej. 5) (Appellant’s emphases omitted).2 Appellant explains that each
of Jones’s vent ports 22 extends straight through exhaust port member 11
without bending, as shown in Figure 4, and that the “two sections” of vent
port 22 as proposed by the Examiner lack longitudinal axes angular to one
another. Br. 7-8. Appellant argues further that the Examiner’s finding that
axis of rotation 20 meets one of the claimed longitudinal axes is improper
because element 20 is an axis of rotation for exhaust member 11, not vent
port 22. Br. 8.
We find these arguments unconvincing. First, Appellant’s arguments
are not directed to the rejection. The Examiner explains how Jones meets
the claimed relationship of the first section and the second section at the

2 The Examiner repeats this statement at Ans. 4.
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beginning of paragraph 17 on page 5 of the Final Rejection (reproduced at
the beginning of the third full paragraph on page 4 of the Answer).
Appellant does not attack this explanation; rather, Appellant attacks the
Examiner’s mention of an “an elbow shaped air passage.” The Examiner’s
discussion of “an elbow shaped air passage” was, however, directed merely
toward showing that Jones’s disclosure is analogous to Appellant’s claimed
structure. Appellant’s argument is therefore non-responsive to the rejection.
Second, the Examiner further explained Jones’s relevance to claim 1
at page 13 of the Answer. The Examiner precisely identified the portions of
Jones’s structure corresponding to the first and second sections of the
claimed first elbow flue, as well as to the first and second longitudinal axes,
and how those structures meet the claim limitations. Appellant’s argument
does not cogently identify an error in that finding.
We therefore find that Appellant has not shown that the Examiner
erred in rejecting claim 1.
2. Claims 6-8 and 14-16
Appellant makes no argument for these claims beyond their
dependence from claim 1. Br. 9. We therefore find that Appellant has not
shown that the Examiner erred in rejecting these claims, for the reasons
given above regarding claim 1.
3. Claims 10 and 18
Appellant makes no argument for these claims beyond their
dependence from claim 1. Br. 9. We therefore find that Appellant has not
shown that the Examiner erred in rejecting these claims, for the reasons
given above regarding claim 1.
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DECISION
For the above reasons, the Examiner’s rejections of claims 1-25 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)(1)(iv).

AFFIRMED

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