Ex Parte RE37636 et al

Board of Patent Appeals and Interferences

Jan 22, 2009

90006773 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte DETROIT RADIANT PRODUCTS CO.1 8
____________________ 9
10
Appeal 2008-6291 11
Reexamination Control 90/006,773 12
Patent RE 37,636 E2 13
Technology Center 3900 14
____________________ 15
16
Decided: January 22, 2009 17
____________________ 18
19
Before ROMULO H. DELMENDO, LINDA E. HORNER and DANIEL S. 20
SONG, Administrative Patent Judges. 21
22
SONG, Administrative Patent Judge. 23
24
DECISION ON APPEAL 25
26

1 Detroit Radiant Products Company is the real party in interest (App. Br. 1).

2 Reissued April 9, 2002 based on Patent No. 5,353,986 issued Oct. 11, 1994
to Wortman et al. Payment for the maintenance fee due at 11.5 years was
received by the USPTO on October 10, 2006.
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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 (2002) 2
from a Final Rejection of claims 16-19 and 21-23. Claims 1-15 and 20 have 3
been allowed/confirmed (Ans. 2). We have jurisdiction under 35 U.S.C. 4
§§ 134(b) and 306 (2002). 5
A third party has requested reexamination of the Reissued ‘636 patent 6
(Request for Ex Parte Reexamination filed September 10, 2003). The 7
Reissue ‘636 patent and the surrendered ‘986 patent are/were involved in the 8
following infringement actions at the U.S. District Court-Eastern District of 9
Michigan: 10
1. Detroit Radiant Prod. v. Superior Rad. Prod., et al., 2:98cv74920 11
2. Detroit Radiant Prod. v. Roberts Gordon Co., et al., 2:02cv71598 12
3. Detroit Radiant Prod. v. L.B. White Co., Inc., et al., 2:08cv10254 13
(App. Br. 2; Ans. 2). 14
According to the Appellant, the infringement action 2:98cv74920 15
resulted in a license while the infringement action 2:02cv71598 was settled 16
(App. Br. 2). The infringement action 2:08cv10254 is on-going and has not 17
been resolved (Litigation Notice, Nov. 7, 2008). 18
The appealed claims relate to a radiant heating system with a 19
thermostat or a temperature means that allows the radiant heating system to 20
provide differing levels of heat output. To this end, the claimed radiant 21
heating system includes a fuel regulator that regulates the pressure of the 22
fuel provided to the burner of the heating system, and a thermostat which 23
operates to trigger the desired predetermined pressures. 24
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Claims 16-19 are independent claims. Representative independent 1
claim 17 reads as follows: 2
3
17. A demand radiant heating system comprising: 4
an elongated radiant heating tube having an inlet end and 5
an exhaust end; 6
a burner operatively connected to said inlet end of said 7
radiant heating tube; 8
a single fuel regulator operatively connected to said 9
burner for providing regulation of fuel to said burner at a 10
plurality of predetermined pressures for demand heating; and 11
a thermostat operatively connected to said single fuel 12
regulator for triggering said predetermined pressures at a 13
plurality of temperature settings. 14
15
Independent claim 19 is directed to a similar demand radiant heating 16
system. Independent claims 16 and 18 are also directed to a demand radiant 17
heating system and recite a “temperature means” that is operatively 18
connected to the single fuel regulator for triggering the predetermined 19
pressures at a plurality of temperature settings. 20
The prior art relied upon by the Examiner in rejecting the claims is: 21
Haskins 3,685,732 Aug. 22, 1972 22
Johnson 4,869,229 Sep. 26, 1989 23
24
The Examiner rejected claims 16-19 and 21-23 under 35 U.S.C. 25
§ 103(a) as unpatentable over Haskins and Johnson. 26
The Appellant relies on the following declarations as evidence in 27
support of patentability: 28
1. Declaration of Michael F. Herzog, November 15, 2005 29
2. Declaration of Joseph A. Wortman, November 17, 2005 30
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3. Declaration of Ronald MacDonald, June 14, 2006 1
4. Declaration of Terrance C. Slaby, June 26, 2006 2
5. Declaration of Joseph A. Wortman, June 30, 2006 3
6. Declaration of Joseph A. Wortman, February 28, 2007 4
5
The Appellant also relies on evidence of secondary considerations as 6
set forth in the declarations, including evidence of industry acclaim and 7
commercial success, to argue non-obviousness of the claimed invention. 8
9
We AFFIRM the Examiner’s rejection. 10
11
ISSUES 12
The following issues have been raised in the present appeal. 13
1. Whether the Appellant has shown that the Examiner erred in 14
concluding that it would have been obvious to one of ordinary skill in the art 15
to incorporate a thermostatic control device used in a furnace type heater as 16
described in Haskins into a radiant heating system as described in Johnson to 17
result in a demand radiant heating system as here claimed. 18
2. Whether the Appellant has shown that the Examiner erred in 19
finding that Haskins is an analogous prior art reference which can be 20
combined with Johnson. 21
3. Whether the declarations and evidence of secondary 22
considerations in the record establishes non-obviousness of the claimed 23
invention. 24
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FINDINGS OF FACT 1
The record supports the following findings of fact (FF) by a 2
preponderance of the evidence. 3
1. Johnson describes a burner unit 10 (i.e., a radiant heating 4
system) including an elongated radiant heating tube 76 having an inlet end 5
76a and an exhaust end 76b, a burner subassembly 11 with a burner nozzle 6
18 operatively connected to the inlet end of the radiant heating tube, a 7
control assembly 20 with a regulator valve 26 (i.e., a single fuel regulator) 8
operatively connected to the burner for providing regulation of fuel to the 9
burner (col. 3, ll. 61-66; col. 4, ll. 3-18; col. 6, l. 63-col. 7, l. 3; figs. 1, 2, and 10
6). 11
2. Johnson does not describe that the control assembly 20 provides 12
regulation of fuel to the burner at a plurality of predetermined pressures for 13
demand heating, or a thermostat operatively connected to the control 14
assembly for triggering the predetermined pressures at a plurality of 15
temperature settings. 16
3. Johnson states that “[c]ontrol assembly 20 is of known form 17
and may, for example, include a low fire valve, a high fire valve, a gas 18
pressure regulator, and a shut-off regulator mechanism.” (Col. 4, ll. 18-21). 19
Thus, Johnson teaches that control assemblies for controlling the heating 20
system at two different levels operating modes (low fire and high fire) is 21
known in the art, and suggests the use of such control assemblies in the 22
described radiant heating system. 23
4. Haskins describes a thermostatic control device for a heating 24
apparatus including a casing 20 with a fuel regulator including a diaphragm 25
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valve 28 to regulate fuel provided to the heating apparatus at predetermined 1
pressures (col. 2, l. 62-col. 3, l. 13; col. 5, ll. 37-47; col. 7, ll. 1-21; fig. 4). 2
Haskins also describes a thermostat assembly 14, which may be a two-stage 3
thermostat, for operating the thermostatic control device (col. 2, ll. 50-62; 4
col. 4, ll. 55-58; col. 6, ll. 35-38; fig. 1). Haskins states that the thermostat 5
assembly 14 may be “a modulating thermostat circuit of any suitable design” 6
for modulating the energization of heating coil 88 and modulating “fuel flow 7
to the burner 10” (col. 7, ll. 36-42). 8
5. Haskins teaches that two-stage thermostats that provide either 9
of two outputs, one corresponding to low heat demand and another 10
corresponding to high heat demand, are well known in the art (col. 8, ll. 3-11
13). In particular, Haskins states: 12
The thermostatic heat motor operated control device of 13
the present invention may be additionally utilized in 14
conjunction with an electro-mechanical two-stage 15
thermostat. Such thermostats are well known in the art 16
and typically provide either of two electrical operating 17
potential outputs, the first being a low potential in 18
response to actuation of the first stage of the thermostat, 19
and the second being a relatively high potential 20
indicating that the second stage of the thermostat has 21
been energized and a greater heat input is desired. 22
(Col. 8, ll. 3-13). 23
24
6. Haskins further states that “the present invention has increased 25
versatility and can be utilized in conjunction with a number of various 26
thermostat assemblies so as to provide stepped operation as well as flow 27
modulation and staged flow control.” (Col. 8, ll. 50-55; emphasis added). 28
Thus, Haskins teaches utilizing the described thermostatic control device for 29
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the stepped operation as detailed in the specification thereof, as well as for 1
flow modulation and staged flow control. 2
7. The Appellant concedes that Haskins “disclose[s] use of a two-3
stage thermostat to operate the control device between low flow and high 4
flow for different heat demands, similar to the present invention” (Reply Br. 5
3). 6
8. Mr. Joseph A. Wortman (Vice-President and Chief Operating 7
Office of Detroit Radiant Products (not a named inventor)) declares that the 8
Appellant’s radiant heating systems in accordance with the claimed 9
invention have been recognized in industry as follows: 10
A. “1994 Product of the Year Award - Heating & 11
Heat Exchange” awarded by Plant Engineering 12
Magazine for the Appellant’s HL Series products; 13
B. “1996 Agricultural Engineering Top-50 14
Outstanding Innovations in Product or System 15
Technology (AE50)” awarded by the American 16
Society of Agricultural and Biological Engineers 17
for the Appellant’s RVA Series products; and 18
C. “2003 Honorable Mention Award for Innovation” 19
awarded by the American Society of Heating, 20
Refrigerating & Air Conditioning Engineers 21
(ASHRAE) at the 2003 International Air 22
Conditioning Heating Refrigeration Exposition 23
(the AHR Expo) for the Appellant’s HLV Series 24
products. 25
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(Declarations of Joseph A. Wortman, November 17, 2005, ¶¶ 1, 6; June 30, 1
2006, ¶¶ 1, 7). 2
9. Mr. Wortman states that Detroit Radiant Products Company’s 3
sales “dramatically increased as a result of the introduction of two-stage, 4
infra-red tube demand radiant heating systems. (Declarations of Joseph A. 5
Wortman, November 17, 2005, ¶ 7; June 30, 2006, ¶ 9). 6
10. Mr. Wortman proffers sales information stating: 7
A. Total sales of Two-Stage Infra-Red Tube Heaters 8
in 1993-94 = 397 units; and 9
B. Total sales of Two-Stage Infra-Red Tube Heaters 10
in 2004-05 = 4,460 units. 11
(Declarations of Joseph A. Wortman, November 17, 2005, ¶ 7; June 30, 12
2006, ¶ 9). 13
11. The 1994 Product of the Year Award states: 14
HL Series gas-fired infrared tube heater uses the benefits 15
of two-stage heating to achieve fuel savings beyond those 16
attained by single-stage units. Heater typically operates 17
in a low-fire mode 93% of the time, and offers zoning 18
capabilities, condensation control, and enhanced radiant 19
output. 20
21
(Plant Engineering Magazine, Mid-November 1994, pg. 46). 22
12. Mr. Wortman’s declaration attests to the fact that while both 23
radiant heaters and two-stage thermostats were known, the claimed 24
invention which incorporates such a thermostat into a radiant heater did not 25
exist (Declaration of Joseph A. Wortman, February 28, 2007, ¶¶ 6-8, 11). 26
13. The declarations of Mr. Wortman state that at the time of 27
invention, the claimed radiant heating system was “innovative, new, and an 28
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unobvious combination of features” (Declarations of Joseph A. Wortman, 1
February 28, 2007, ¶ 9; June 30, 2006, ¶ 13; November 17, 2005, ¶ 9). 2
14. Mr. Wortman declares: 3
Even with the understandings and knowledge outlined 4
immediately above in Paragraphs 6-8, the claims of the 5
'636 patent, in the 1992-93 time frame, were innovative, 6
new, and an unobvious combination of features. 7
(Declaration of Joseph A. Wortman, February 28, 2007, ¶ 9). 8
15. Mr. Wortman refers to column 4, lines 13-21 of Johnson (that 9
teaches “[c]ontrol assembly 20 is of known form and may, for example, 10
include a low fire valve, a high fire valve, a gas pressure regulator, and a 11
shut-off regulator mechanism”; FF 3) and declares that because of lack of 12
detail regarding what type of fire valves and what they actually control, he 13
cannot conclude that they are pressure valves or that it would be appropriate 14
to combine the two-stage thermostat of a conventional heating system with a 15
two stage, pressure controlled, radiant heating system (Declaration of Joseph 16
A. Wortman, February 28, 2007, ¶ 12). 17
18
PRINCIPLES OF LAW 19
“Section 103 forbids issuance of a patent when ‘the differences 20
between the subject matter sought to be patented and the prior art are such 21
that the subject matter as a whole would have been obvious at the time the 22
invention was made to a person having ordinary skill in the art to which said 23
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 24
127 S.Ct. 1727, 1734 (2007). The question of obviousness is resolved on 25
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the basis of underlying factual determinations including (1) the scope and 1
content of the prior art, (2) any differences between the claimed subject 2
matter and the prior art, (3) the level of skill in the art, and (4) where in 3
evidence, so-called secondary considerations. Graham v. John Deere Co., 4
383 U.S. 1, 17-18 (1966). In KSR, the Supreme Court emphasized “the 5
need for caution in granting a patent based on the combination of elements 6
found in the prior art,” and reaffirmed principles based on its precedent that 7
“[t]he combination of familiar elements according to known methods is 8
likely to be obvious when it does no more than yield predictable results.” 9
KSR, 127 S.Ct. at 1739. 10
The Court explained: 11
When a work is available in one field of endeavor, 12
design incentives and other market forces can 13
prompt variations of it, either in the same field or a 14
different one. If a person of ordinary skill can 15
implement a predictable variation, §103 likely bars 16
its patentability. For the same reason, if a 17
technique has been used to improve one device, 18
and a person of ordinary skill in the art would 19
recognize that it would improve similar devices in 20
the same way, using the technique is obvious 21
unless its actual application is beyond his or her 22
skill. 23
Id. at 1740. The operative question in this “functional approach” is 24
“whether the improvement is more than the predictable use of prior art 25
elements according to their established functions.” Id. 26
The Court further explained, “[o]ften, it will be necessary for a court 27
to look to interrelated teachings of multiple patents; the effects of demands 28
known to the design community or present in the marketplace; and the 29
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background knowledge possessed by a person having ordinary skill in the 1
art, all in order to determine whether there was an apparent reason to 2
combine the known elements in the fashion claimed by the patent at issue.” 3
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis 4
should be made explicit,” but “the analysis need not seek out precise 5
teachings directed to the specific subject matter of the challenged claim” Id. 6
at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). 7
“A reference may be said to teach away when a person of ordinary 8
skill, upon reading the reference, would be discouraged from following the 9
path set out in the reference, or would be led in a direction from the path that 10
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 11
1994). Our reviewing court, however, cautioned applying this test in the 12
abstract and approved the use, as evidence of obviousness, of a reference 13
that described a certain embodiment as inferior but still usable. Id. The 14
court expounded upon this further as follows: “[C]ase law does not require 15
that a particular combination must be the preferred, or the most desirable, 16
combination described in the prior art in order to provide the motivation for 17
the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). 18
The two separate tests for determining whether a prior art reference is 19
analogous is as follows: (1) whether the art is from the same field of 20
endeavor, regardless of the problem addressed; and (2) if the reference is not 21
within the inventor’s endeavor, whether the reference is reasonably pertinent 22
to the particular problem with which the inventor is involved. In re Bigio, 23
381 F.3d 1320, 1325 (Fed. Cir. 2004). One way to demonstrate that a 24
reference is analogous through the same field of endeavor prong is by 25
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showing that the reference describes something that is structurally similar to 1
that claimed. Id. at 1325-26. Another way to demonstrate that a reference is 2
analogous is through the second prong – i.e., by showing that the reference 3
is reasonably pertinent to the same or similar problem. See In re ICON 4
Health and Fitness, Inc., 496 F.3d 1375, 1379-81 (Fed. Cir. 2007). 5
“When the PTO shows prima facie obviousness, the burden then shifts 6
to the applicant[s] to rebut.” In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir. 7
1997). 8
In Graham, the Supreme Court stated that “secondary considerations 9
as commercial success, long felt but unsolved needs, failure of others, etc., 10
might be utilized to give light to the circumstances surrounding the origin of 11
the subject matter sought to be patented. As indicia of obviousness or 12
nonobviousness, these inquiries may have relevancy.” Graham, 383 U.S. at 13
17-18. Objective evidence of secondary considerations must be considered 14
in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 15
713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness 16
determination is reconsidered anew in view of the proffered evidence of 17
nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In 18
re Eli Lilly & Co., 90 F.2d 943, 945, (Fed. Cir. 1990). 19
The scope of the “objective evidence of non-obviousness must be 20
commensurate in scope with the claims which the evidence is offered to 21
support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971); see also Asyst 22
Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). A 23
“nexus” must be established between the merits of the claimed invention and 24
the evidence of secondary considerations in order for the evidence to be 25
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given substantial weight. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. 1
Cir. 1995). The objective evidence is not commensurate in scope 2
(coextensive) with the claimed subject matter if the claims are broader in 3
scope than the scope of the objective evidence, e.g., if the product included 4
elements or features not recited in the claims which may be responsible for 5
the commercial success or praise. See Joy Technologies Inc. v. Manbeck, 6
751 F. Supp. 225, 229-30 (D.D.C. 1990) (and cases cited therein), aff'd, 7
459 F.2d 226 (Fed. Cir. 1992). 8
If evidence of commercial success is relied upon, the Appellant must 9
offer proof “that the sales were a direct result of the unique characteristics of 10
the claimed invention-as opposed to other economic and commercial factors 11
unrelated to the quality of the patented subject matter.” In re Huang, 100 12
F.3d 135, 140 (Fed. Cir. 1996). “[I]nformation solely on numbers of units 13
sold is insufficient to establish commercial success.” In re Baxter Travenol 14
Labs., 952 F.2d 388, 392 (Fed.Cir.1991). The evidence must also 15
demonstrate commercial success in the relevant market. See In re Huang, 16
100 F.3d at 140 (a very weak showing of commercial success, if any, is 17
shown where there is no indication of whether the number of units sold 18
represents a substantial quantity in the relevant market); see also Kansas 19
Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51 (Fed. Cir. 1983) (“There was no 20
evidence of market share, of growth in market share, of replacing earlier 21
units sold by others or of dollar amounts, and no evidence of a nexus 22
between sales and the merits of the invention. Under such circumstances, 23
consideration of the totality of the evidence, including that relating to 24
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commercial success, does not require a holding that the invention would 1
have been nonobvious at the time it was made to one skilled in the art.”). 2
3
4
ANALYSIS 5
The Examiner rejected claims 16-19 and 21-23 under 35 U.S.C. 6
§ 103(a) as unpatentable over Haskins and Johnson. Before addressing the 7
prior art rejection, we initially note that any disagreement between the 8
Appellant and the Examiner with respect to proper interpretation of 9
“temperature means” as recited in independent claims 16 and 18 under 35 10
U.S.C. §112, 6th paragraph (Ans. 3-5) is moot in view of the Appellant’s 11
concession that the Examiner’s interpretation (that the “temperature means” 12
refers to the thermostat 132 and equivalents thereof) is correct and the 13
Appellant’s explicit withdrawal and rescission of any previous arguments to 14
the contrary (Reply Br. 10). 15
Turning to the prior art rejection, the Appellant presents various 16
different arguments in support of patentability within the Appeal Brief, but 17
argue all of the rejected claims together. Thus, we select representative 18
claim 17 to decide the appeal and address each of the Appellants arguments 19
presented infra, claims 16, 18, 19 and 21-23 standing or falling with claim 20
17. See 37 C.F.R. § 41.37(c)(1)(vii). 21
The Examiner rejects all of the pending claims finding that Johnson 22
discloses the limitations of the claims (FF 1) except for the fuel regulator 23
that regulates fuel provided to the burner at a plurality of predetermined 24
pressures, and a thermostat operatively connected to the control assembly for 25
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triggering the predetermined pressures at a plurality of temperature settings 1
(FF 2) (Ans. 10). The Examiner relies on Haskins to remedy these 2
deficiencies stating that Haskins describes a fuel regulator which provides 3
fuel at predetermined pressures (FF 4), and the use of a two-stage thermostat 4
to control the regulator to trigger predetermined pressures at different 5
temperature settings in order to provide high heat or low heat according to 6
demand (FF 4; Ans. 10 and 11). 7
8
Combination of Johnson and Haskins 9
It is undisputed that Haskins teaches a two-stage thermostat to operate 10
a control device between low flow and high flow for different heat demands, 11
in a manner similar to the invention recited in the appealed claims (FF 7). 12
Rather, the Appellant argues that the Examiner’s combination of Johnson 13
and Haskins is improper stating that Johnson teaches away from being 14
modified by Haskins (App. Br. 8 to 12). However, we agree with the 15
Examiner that the Appellant’s assertion of “teaching away” is unpersuasive 16
because mere description of an implementation in the prior art that differs 17
from the Appellant’s claimed invention, without more (such as criticism or 18
discrediting of the solution claimed), does not show that the prior art is 19
“teaching away” from the invention claimed. Fulton, 391 F.3d at 1201. The 20
Appellant also asserts that such a modification of Johnson is redundant, 21
renders the system of Johnson unsatisfactory for its intended purpose and 22
changes the principle of operation (App. Br. 10). However, the Appeal Brief 23
does not present persuasive evidence or reasoning in support of these 24
assertions. Notably absent is any meaningful discussion on why Haskins’s 25
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two-stage thermostat for controlling low flow and high flow for different 1
heat demands, when combined with Johnson, would result in something that 2
is unusable. Such a showing is required to demonstrate that a reference 3
teaches away from the claimed invention. Gurley, 27 F.3d at 553; Fulton, 4
391 F.3d at 1200. 5
The Appellant’s substantive argument presented in depth within the 6
Appeal Brief and the Reply Brief is that one of ordinary skill in the art 7
would not combine Johnson with Haskins as suggested by the Examiner. In 8
this regard, the Appellant alleges that the Examiner fails to consider the 9
references as a whole and has not established why or how a person of 10
ordinary skill in the art would modify the radiant heating system of Johnson 11
having a flame rod and electric ignition (which operates by spark ignition 12
and detects presence of a flame) with an outdated control device of Haskins 13
which includes a pilot and utilizes a bimetal 86 to create a delay in switching 14
from a low flow rate to a high flow rate to prevent flame roll-out (App. Br. 15
10 and 11; Reply Br. 3 and 4). 16
Based on our review, we concur with the Examiner that the Appellant 17
is ignoring the teachings of the references as a whole (Ans. 15). The radiant 18
heating system of Johnson includes a control assembly 20 with a regulator 19
valve 26, and further states that “[c]ontrol assembly 20 is of known form and 20
may, for example, include a low fire valve, a high fire valve, a gas pressure 21
regulator, and a shut-off regulator mechanism” (FF 1 and 3). While details 22
of the regulator valve 26 and its operation are not explicitly described, 23
Johnson teaches that control assemblies for controlling the heating system at 24
two different levels operating modes (low fire and high fire) is known in the 25
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art, and suggests the use of such control assemblies in conjunction with the 1
radiant heating system (FF 3). 2
As acknowledged by the Appellant, Haskins teaches that the described 3
thermostatic control device for regulating fuel pressure may be utilized with 4
a two-stage thermostat known in the art which provide two outputs, one at 5
low heat demand and another at high heat demand (FF 5 and 7). 6
Furthermore, Haskins also teaches the desirability of utilizing the described 7
thermostatic control device for the stepped operation as detailed in the 8
specification thereof, as well as for flow modulation and staged flow control 9
(FF 6). 10
While the specification of Haskins does focus on the use of the 11
described thermostatic control device to create a delay in switching from a 12
low flow rate to a high flow rate in order to prevent flame roll-out as argued 13
by the Appellant (App. Br. 10 and 11; Reply Br. 3 and 4), this does not 14
nullify the other teachings therein that two-stage thermostats are well known 15
in the art and are useful for providing staged outputs (flow control) with low 16
and high potential outputs (FF 5-7). Hence, we concur with the Examiner 17
that the Appellant has not considered Haskins for all that it teaches, and that 18
“one of ordinary skill in the art considering Haskins as a whole would come 19
away with several teachings including the teaching of the two-stage 20
thermostat embodiment, which embodiment relates to demand heating[,] and 21
therefore[,] has applications beyond burners with pilots” (Ans. 15 and 16). 22
The Appellant’s argument that there is no teaching as to how the 23
devices of Johnson may be combined with Haskins (App. Br. 10; Reply Br. 24
3) is not persuasive because “it is not necessary that the inventions of the 25
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references be physically combinable to render obvious the invention under 1
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re 2
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not 3
whether the features of a secondary reference may be bodily incorporated 4
into the structure of the primary reference; nor is it that the claimed 5
invention must be expressly suggested in any one or all of the references. 6
Rather, the test is what the combined teachings of the references would have 7
suggested to those of ordinary skill in the art”). In this regard, “if a 8
technique has been used to improve one device, and a person of ordinary 9
skill in the art would recognize that it would improve similar devices in the 10
same way, using the technique is obvious unless its actual application is 11
beyond his or her skill.” KSR, 127 S.Ct. at 1740. In the present appeal, 12
utilization of a thermostat is a known technique for controlling the output of 13
a furnace heater, and one of ordinary skill in the art would recognize that it 14
would improve other heating systems in the same way, for instance, in 15
radiant heating systems. The Appellant did not provide any persuasive 16
evidence or reasoning to demonstrate the contrary, nor did the Appellant 17
present any persuasive evidence or reasoning to demonstrate that such an 18
improvement would be beyond the skill of a person having ordinary skill in 19
the art. 20
The Appellant further contends that the Examiner fails to articulate 21
any rational reason for combining the references as required, that “the mere 22
fact that Haskins teaches the use of a two-stage thermostat is insufficient to 23
support the Examiner’s rejection of obviousness,” and that the Examiner is 24
engaging in impermissible hindsight (App. Br. 12; Reply Br. 1, 4 and 5). 25
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However, the Examiner’s articulated reason for combining the 1
references to result in the claimed invention, that is, “for the purpose of 2
providing high heat and low heat on demand” (Ans. 13), is not based on 3
hindsight, but rather, is based on the teachings of the prior art references 4
relied upon. In particular, as discussed supra, the prior art references teach 5
using a controller to provide a plurality of outputs, both in the context of a 6
radiant heating system (FF 3), as well as in thermostatic control of heating 7
systems (FF 5). Moreover, the prior art establishes the desirability of using 8
such thermostatic control, that is, for flow modulation and staged flow 9
control (FF6). Thus, in view of the above, we conclude that the Appellant’s 10
claimed invention would have been obvious to one of ordinary skill in the art 11
in view of the prior art because it is merely an unpatentable combination of 12
familiar elements which does no more than yield predictable results, and that 13
the Examiner’s articulated reason is rational. See KSR, 127 S.Ct. at 1739, 14
1741. 15
16
Haskins is analogous art 17
The Appellant further argues that Haskins is non-analogous art 18
because it is directed to a thermostatic control device for a furnace which 19
does not include a radiant heater (App. Br. 14; Reply Br. 8) and is directed 20
to addressing the problem of flame roll-out by providing a delay between 21
low fuel flow and high fuel flow, flame roll-out not being a problem in the 22
radiant heating system of Johnson (App. Br. 15; Reply Br. 9). Thus, the 23
Appellant argues that “while Haskins et al. does relate generally to 24
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controlling fuel flow, it is for providing a solution to a very different 1
problem than that confronted by the inventors” (App. Br. 15; Reply Br. 9). 2
The Examiner disagrees and contends that the Appellant’s invention 3
and the device of Haskins are within the same field of endeavor3, that is, 4

3 The Examiner’s Answer states:
The examiner acknowledges that Haskins relates to general
heating apparatuses (col. 2, l. 45), e.g., furnaces (col. 2, l. 51),
and not specifically to radiant heating apparatuses. While the
device of Haskins does not fall within the field of endeavor of
the patent under reexamination (i.e., radiant heaters), it is
nevertheless analogous prior art because it is reasonably
pertinent to the particular problems with which the inventor was
concerned. (Ans. 13).

The Examiner’s detailed remarks make clear that the Examiner considers
Haskins to be within the same field of endeavor as the Appellant’s claimed
invention, as well as being reasonably pertinent to the problem addressed by
the Appellant. In this regard, the Examiner states:

Firstly, since both invention and the device of Haskins
fall within the field of gas-fired space heating, Haskins falls
with the field of endeavor of the patent under reexamination. As
defined in the “Field of the Invention” of the patent under
reexamination, the invention relates to a demand type radiant
heating system. Surely to one of ordinary skill in the art, other
types of demand type heating systems, such as Haskins, fall
squarely within this description of the field in which appellants
endeavored.
Even if Haskins is not considered to fall within the field
of endeavor, Haskins is analogous prior art because it was
reasonably pertinent to the particular problem with which the
inventor was concerned. (Ans. 19).
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gas-fired heating systems (Ans. 19). The Examiner further contends that 1
even if Haskins is not considered to fall within the field of endeavor, 2
Haskins is analogous prior art because it was reasonably pertinent to the 3
particular problem with which the inventor was concerned (i.e., providing 4
demand heating to buildings) so that Haskins would have commended itself 5
to the inventor’s attention in considering his problems (Ans. 19). 6
We agree with the Examiner. While the Appellant is correct that 7
Haskins focuses on providing a delay between low fuel flow and high fuel 8
flow in order to prevent flame roll-out as argued (App. Br. 15), Haskins is 9
principally directed to the field of gas-fired heating systems, and devices for 10
controlling such heating systems, which is also the field to which the 11
Appellant’s invention is directed. Bigio, 381 F.3d at 1325-26. As to the 12
specific problem addressed by Haskins, we note that “[o]ne of ordinary skill 13
in the art need not see the identical problem addressed in a prior art 14
reference to be motivated to apply its teachings.” Cross Medical Products, 15
Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 16
2005). 17
The primary legal principle applicable in the present appeal is that 18
“[w]hen a work is available in one field of endeavor, design incentives and 19
other market forces can prompt variations of it,” and “if a technique has 20
been used to improve one device, and a person of ordinary skill in the art 21
would recognize that it would improve similar devices in the same way, 22
using the technique is obvious unless its actual application is beyond his or 23
her skill.” See KSR, 127 S.Ct. at 1740. As discussed supra, both Johnson 24
and Haskins teaches that control of heating systems at two different output 25
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levels (low fire/demand and high fire/demand), as well as the use of a two-1
stage thermostat to provide the different outputs are known in the art (FF 3 2
and 5). Thus, the Appellant’s claimed invention is merely an unpatentable 3
variation of the heater unit of Johnson which combines familiar elements 4
which does no more than yield predictable results, and one of ordinary skill 5
in the art would recognize that the use of a known two-stage thermostat 6
which allows two different output levels would improve other heaters, such 7
as radiant heaters, in the same way. 8
In view of the above, the Appellant has not shown that the Examiner 9
erred in relying on Haskins as an analogous prior art reference in finding the 10
Appellant’s claimed invention unpatentable. 11
12
Evidence of Secondary Considerations and Declarations 13
As evidence of secondary considerations of nonobviousness, the 14
Appellant contends that radiant heating systems in accordance with the 15
claimed invention have been recognized in the industry and have enjoyed 16
commercial success (App. Br. 12 to 14; Reply Br. 6 to 8). In particular, Mr. 17
Joseph A. Wortman (Vice-President and Chief Operating Office of Detroit 18
Radiant Products (not a named inventor)) declares that the Appellant’s 19
radiant heating systems in accordance with the claimed invention have been 20
recognized in industry as follows: 21
1. “1994 Product of the Year Award - Heating & Heat 22
Exchange” awarded by Plant Engineering Magazine for 23
the Appellant’s HL Series products; 24
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2. “1996 Agricultural Engineering Top-50 Outstanding 1
Innovations in Product or System Technology (AE50)” 2
awarded by the American Society of Agricultural and 3
Biological Engineers for the Appellant’s RVA Series 4
products; and 5
3. “2003 Honorable Mention Award for Innovation” 6
awarded by the American Society of Heating, 7
Refrigerating & Air Conditioning Engineers (ASHRAE) 8
at the 2003 Intemational Air Conditioning Heating 9
Refrigeration Exposition (the AHR Expo) for the 10
Appellant’s HLV Series products. 11
(FF 8; App. Br. 13; Reply Br. 6). 12
With respect to commercial success, Mr. Wortman states that Detroit 13
Radiant Products Company’s sales “dramatically increased as a result of the 14
introduction of two-stage, infra-red tube demand radiant heating systems. 15
(FF 9). In support, Mr. Wortman proffers sales information stating: 16
1. Total sales of Two-Stage Infra-Red Tube Heaters in 17
1993-94 = 397 units; and 18
2. Total sales of Two-Stage Infra-Red Tube Heaters in 19
2004-05 = 4,460 units. 20
(FF 10). 21
The Appellant further specifically relies on declarations of Mr. 22
MacDonald and Mr. Wortman contending that these declarations also 23
establish objective evidence of non-obviousness of the claimed invention 24
(App. Br. 14). Having reviewed the record and weighing the evidence 25
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presented, we are not persuaded that the secondary and the declarative 1
evidence establish non-obviousness of the claimed invention for the reasons 2
discussed infra. 3
Firstly, with respect to industry acclaim, we note that the submitted 4
evidence regarding 1994 Product of the Year Award by Plant Engineering 5
Magazine is not commensurate in scope with the claims and fails to establish 6
the required “nexus” between the merits of the claimed invention and the 7
award. See In re Tiffin, 448 F.2d at 792; In re GPAC, Inc., 57 F.3d at 1580. 8
In particular, the submitted evidence regarding the 1994 Product of the Year 9
Award states: 10
HL Series gas-fired infrared tube heater uses the benefits 11
of two-stage heating to achieve fuel savings beyond those 12
attained by single-stage units. Heater typically operates 13
in a low-fire mode 93% of the time, and offers zoning 14
capabilities, condensation control, and enhanced radiant 15
output. 16
17
(FF 11). 18
Hence, while one of the claimed features (i.e., two-stage operation) is 19
recognized by the 1994 Product of the Year Award as an important feature 20
common to the commercial product, other important features are also 21
identified as the basis for the award (i.e., “zoning capabilities, condensation 22
control, and enhanced radiant output”). Because the Declaration does not 23
otherwise explain the specific nature of the commercial product, it is 24
insufficient to establish the requisite nexus with the claimed invention, let 25
alone establish that the evidence is commensurate in scope with the claims. 26
Asyst, 544 F.3d at 1316 (reaffirming the rule that evidence of secondary 27
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considerations, in particular, commercial success must be commensurate in 1
scope with the claims). 2
With respect to the “1996 Agricultural Engineering Top-50 3
Outstanding Innovations in Product or System Technology (AE50)” award 4
by the American Society of Agricultural and Biological Engineers, we agree 5
with Mr. Wortman that the award supports the contention of industry 6
acclaim. In addition, while we do not find actual evidence in the record for 7
the “2003 Honorable Mention Award for Innovation” by the American 8
Society of Heating, Refrigerating & Air Conditioning Engineers 9
(ASHRAE), we accept Mr. Wortman’s declaration as being accurate and 10
that the Honorable Mention Award was received by the Appellant as 11
declared. Thus, in our view, the Appellant’s contention of industry acclaim 12
is only supported by the “1996 Agricultural Engineering Top-50 13
Outstanding Innovations in Product or System Technology (AE50)” and 14
“2003 Honorable Mention Award for Innovation.” Nevertheless, the 15
Declaration does not include sufficient evidence to establish a nexus with the 16
claimed invention, much less a showing that the relied upon evidence is 17
commensurate in scope with the broad degree of patent protection desired. 18
The Appellant contends that these awards are objective evidence of 19
not only the long-felt need of the claimed invention, but also evidences the 20
failures of others in providing a solution in response to this need (App. Br. 21
13; Reply Br. 6 and 7). However, establishing long-felt need requires 22
objective evidence showing existence of a persistent problem recognized by 23
those of ordinary skill in the art for which a solution was not known. In re 24
Gershon, 372 F.2d 535, 539 (CCPA 1967). In the present appeal, we do not 25
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find persuasive evidence that supports finding of long-felt need or failures of 1
others. 2
Regarding commercial success, the proffered evidence is deficient and 3
not persuasive. While Mr. Wortman declares that the “commercial success 4
is directly derived from the particular claim limitations claimed in the 5
independent claims of the ‘636 patent[,]” and not based on any other factors 6
such as promotion or advertising (Declaration of Joseph A. Wortman, June 7
30, 2006, ¶¶ 9, 12), we note that mere total sales data is insufficient in 8
establishing commercial success. See In re Baxter Travenol Labs., 952 F.2d 9
at 392. In this regard, the total sales data submitted is only for the years 10
spanning 1993-94 and 2004-05, and is silent as to the sales data for years 11
spanning 1995-2003 which would be necessary to show trends or growth in 12
sales. See Kansas Jack, Inc. v. Kuhn, 719 F.2d at 1150-51. In addition, 13
while a “dramatically increased” sales is alleged, there is no baseline sales 14
information which would be required to show increase in such sales. All 15
that is proffered is the total sales data for the years noted. Moreover, the 16
proffered evidence does not demonstrate commercial success in the relevant 17
market. See In re Huang, 100 F.3d at 140. Such information would be 18
required to give weight to the assertions of commercial success. Also, as 19
stated above, we are not told as to the specific identity of the sold products 20
to assess whether the claims are indeed commensurate in scope with the 21
proffered showing. 22
The declarations of Mr. Wortman and Mr. MacDonald are also 23
specifically referenced by the Appellant as establishing objective evidence 24
of non-obviousness of the claimed invention (App. Br. 14). However, we 25
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find the declarative evidence deficient and merely conclusory. In particular, 1
Mr. Wortman’s declaration attests to the fact that while both radiant heaters 2
and two-stage thermostats were known, the claimed invention which 3
incorporates such a thermostat into a radiant heater did not exist (FF 12). As 4
to non-obviousness, the declarations of Mr. Wortman do state that at the 5
time of invention, the claimed radiant heating system was “innovative, new, 6
and an unobvious combination of features” (FF 13). 7
For example Mr. Wortman declares: 8
Even with the understandings and knowledge outlined 9
immediately above in Paragraphs 6-8, the claims of the 10
'636 patent, in the 1992-93 time frame, were innovative, 11
new, and an unobvious combination of features. 12
(FF 14). 13
Similar conclusory statements are made by Mr. Wortman in the 14
declarations of November 17, 2005 (¶ 9) and June 30, 2006 (¶¶ 12 and 13). 15
However, such statements are merely conclusory, and do not address the 16
pertinent question of why it would not have been obvious to combine the 17
known elements to result in the claimed invention. The question presented in 18
the present appeal is that of obviousness, not of novelty. 19
Moreover, while we credit Mr. Wortman as an expert and skilled in 20
the relevant field of radiant heating systems, the focus of declarative 21
evidence should include knowledge and skill of one of ordinary skill in the 22
art at the time of patent filing to be given substantial weight, instead of being 23
solely directed to personal knowledge or opinion of Mr. Wortman. 24
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Mr. Wortman does refer to column 4, lines 13-21 of Johnson (that 1
teaches “[c]ontrol assembly 20 is of known form and may, for example, 2
include a low fire valve, a high fire valve, a gas pressure regulator, and a 3
shut-off regulator mechanism”; FF 3) and declares that because of lack of 4
detail regarding what type of fire valves and what they actually control, he 5
cannot conclude that they are pressure valves or that it would be appropriate 6
to combine the two-stage thermostat of a conventional heating system with a 7
two stage, pressure controlled, radiant heating system (FF 15). 8
However, no evidence is proffered to establish that there are multiple 9
types of fire valves, that such valves control other parameters besides 10
pressure in context of the heater art, or that different types of valves would 11
be even relevant to one of ordinary skill in the heater art so that he/she 12
would not understand the device being suggested by Johnson and would be 13
unable to conclude the propriety of the suggested combination. 14
The Declaration of Ronald MacDonald, June 14, 2006, is deficient for 15
similar reasons discussed supra with respect to the declarations of Mr. 16
Wortman, and because it does not address Johnson or whether it would have 17
been obvious to one of ordinary skill in the art to combine Johnson and 18
Haskins. The Declaration of Michael F. Herzog, November 15, 2005 and 19
the Declaration of Terrance C. Slaby, June 26, 2006 were not considered 20
because the Appellant did not present arguments in the briefs directed to 21
these declarations. 22
In view of the above, we find that while there is some evidence of 23
industry acclaim as discussed supra which supports the Appellant’s 24
contention of non-obviousness, the evidence of commercial success and the 25
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declarative evidence in the record are deficient and unpersuasive to support 1
the broad scope of the appealed claims. Accordingly, in weighing anew all 2
evidence of obviousness against all evidence of non-obviousness, we 3
conclude that the Appellant has failed to show non-obviousness of the 4
claimed invention. We note that in giving more weight to the teaching and 5
suggestion presented in Johnson and Haskins tending to show obviousness 6
of the claimed invention as compared to the subsequent conclusory 7
statements by the declarants as to non-obviousness, we are acting well 8
within our discretion as triers of fact. See Velander v. Garner, 348 F.3d 9
1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to 10
give each item of evidence such weight as it feels appropriate . . . In giving 11
more weight to prior publications than to subsequent conclusory statements 12
by experts, the Board acted well within that discretion”); see also Pfizer, Inc. 13
v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007). 14
Thus, in view of the above, the Appellant has not shown that the 15
Examiner erred in rejecting claim 17 as unpatentable over Johnson and 16
Haskins. We likewise find that Appellant has failed to show that the 17
Examiner erred in rejecting claims 16, 18, 19 and 21-23 as well, these claims 18
falling with claim 17. See 37 C.F.R. § 41.37(c)(1)(vii). 19
20
CONCLUSIONS 21
1. The Appellant has not shown that the Examiner erred in finding 22
it would have been obvious to one of ordinary skill in the art to incorporate a 23
thermostatic control device into a radiant heating system to result in a 24
demand radiant heating system as claimed. 25
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2. The Appellant has not shown that the Examiner erred in finding 1
that Haskins is an analogous prior art reference. 2
3. The declarations and evidence of secondary considerations in 3
the record fails to establish non-obviousness of the claimed invention. 4
5
ORDER 6
The Examiner’s rejection of claims 16-19 and 21-23 is AFFIRMED. 7
No time period for taking any subsequent action in connection with 8
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2008). 10
11
AFFIRMED 12
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