Ex Parte Schneider et al

Patent Trial and Appeal Board

Jul 31, 2018

13261402 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,402 10/17/2012
1678 7590 07/31/2018
MARSHALL & MELHORN, LLC
FOUR SEA GA TE - EIGHTH FLOOR
TOLEDO, OH 43604
FIRST NAMED INVENTOR
Ralf Schneider
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.
1-22378 4987
EXAMINER
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
07/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF SCHNEIDER, MICHAEL SCHOLL,
STEFFEN WAGNER, and MICHAEL MAAGE
Appeal2017-010603
Application 13/261,402 1
Technology Center 3700
Before DANIELS. SONG, EDWARD A. BROWN, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ralph Schneider et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision rejecting claims 5-14. 2 Non-Final
Office Action (November 3, 2016) (hereinafter "Non-Final Act."). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Rittal GMbH & Co., KG is identified as the real party in interest. Appeal
Brief (hereinafter "Br.") at 2.
2 Claims 1--4 have been cancelled. Id. at 4.
Appeal2017-010603
Application 13/261,402
CLAIMED SUBJECT MATTER
Claims 5 and 14 are independent. Claim 5, reproduced below,
illustrates the claimed subject matter:
5. A method for regulating a cooling device fitted in or to a
switchgear cabinet with built-in components that comprise
device fans to support airflow within the switchgear cabinet, the
built in components produce dissipated heat and are mounted
within the interior of the switchgear cabinet, the cooling device
including an interior fan for generating an interior air flow
through an evaporator and providing cooling air to the interior
of the switchgear cabinet, comprising:
detecting the temperature of the air within the interior of
the switchgear cabinet; and
regulating the cooling device in response to the detected
temperature such that if the detected temperature of the
switchgear cabinet interior air exceeds an upper setpoint
temperature T 2, the interior fan of the cooling device is
switched on, and if the detected temperature falls below a lower
setpoint temperature T 1, coming from a higher temperature TH
above the upper setpoint temperature T 2, the interior fan of the
cooling device is switched off,
wherein, when the interior fan has been switched off
owing to the detected temperature falling below the lower
setpoint temperature T 1, coming from the higher temperature TH
above the upper setpoint temperature T 2, a timekeeping and an
intermittent time-controlled mode of operation is started and the
interior fan is switched on after a predetermined first time
duration following the start of the intermittent time-controlled
mode of operation, and remains on for a second predetermined
time duration following the end of the first time duration, and is
switched off again if the detected temperature is still below the
upper setpoint temperature at the end of the second time
duration,
wherein the intermittent time-controlled mode of
operation of the interior fan is cyclically repeated until the
upper setpoint temperature T 2 is exceeded, after which the
interior fan is operated in continuous operation, and that the
2
Appeal2017-010603
Application 13/261,402
timekeeping and the intermittent time-controlled mode is
started anew if the detected temperature falls below the lower
setpoint temperature T 1, and
wherein a compressor and an external fan of the cooling
device are changed from a switched-off state into a switched-on
state, if the higher temperature TH above the upper setpoint
temperature T 2 is reached.
Br. 26-27 (Claims App.).
REJECTIONS
Claim 14 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
Claims 5-14 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Ritter (DE 19921674 Al, published Nov. 18, 1999) (hereinafter "DE
'674") and Jaffer (US 2008/0245085 Al, published Oct. 9, 2008).
ANALYSIS
Enablement
The final "wherein" clause of claim 14 recites, "wherein airflow
within the switchgear cabinet is supported by the device fans independent of
the interior fan being switched on or off" Br. 31 (Claims App. (emphasis
added)). The Examiner determines that the original disclosure "says nothing
whatsoever about independent operation of the fan or its operating
relationship to any other fan," and therefore, claim 14 is not enabled by the
disclosure. Non-Final Act. 3.
According to 35 U.S.C. § 112, first paragraph, the specification must
describe "the manner and process of making and using [the claimed
invention], in such full, clear, concise, and exact terms as to enable any
3
Appeal2017-010603
Application 13/261,402
person skilled in the art to which it pertains ... to make and use the same."
To meet this requirement, the as-filed disclosure must be sufficiently
complete to enable a person of ordinary skill in the art at the time of the
invention to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). When
rejecting a claim for lack of enablement, the PTO has the initial burden to
provide "a reasonable explanation" of why it believes the specification is not
enabling. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993).
Regarding the Wands factors, the Examiner determines that the
disclosure provides detailed discussion of why one of ordinary skill would
not want to operate a fan within an enclosure continuously, and the only
guidance provided for how to operate such a fan is directed to the operation
of fan 23 ("the intermittent on/off operation"). Non-Final Act. 3. According
to the Examiner, given the breadth of the limitation and the lack of guidance
in the disclosure, "the only conclusion one of ordinary skill can draw from
the disclosure is that the fan 31 should be operated along with the fan 23, but
this is specifically denied by the claim language." Id. ( emphasis added).
Therefore, the Examiner submits, "the inventor is required to invent some
new fan operating method from whole cloth which does not operate
continually ( as this is against the entire motivation of the disclosure) but
which also does not operate according to the disclosed invention." Id.
Appellants' Specification describes:
Interior air circuit I through the first subspace of cooling
device 2 as shown in Figure 1 results from the operation of the
interior fan 23 whereas a different interior air circuit I' is
present within the switchgear cabinet [ 1] while interior fan 23 is
switched off where at best a small flow of switchgear cabinet
interior air through cooling device 2 occurs. Air flow within the
4
Appeal2017-010603
Application 13/261,402
switchgear interior may further be supported by device fans 31
of built-in components 3. In a non-operative condition of the
interior fan 23, an imprecise temperature measurement of the
air temperature present in the region of the built-in components
3 to be cooled may result owing to bad air mixing.
Spec. p. 4, 1. 28-p. 5, 1. 3 ( emphasis added), see also Fig. 1. Appellants
contend that device fans 31 "are kind of auxiliary fans," and this description
"notes that the operation of device fans 31 differs from that of interior fan
23." Br. 24. Appellants submit that this disclosure provides sufficient
operational guidance to allow one skilled in the art to make and use the
invention. Id.
With reference to Figure 1, the Examiner responds that the disclosure
explains there are two different air circuits within the switchgear cabinet;
namely, first air circuit, I, and second air circuit, I' (not labelled), but
presumed to be represented by white arrows. Ans. 3. The Examiner notes
that the Specification establishes that air flow circuit I results from operation
of interior fan 23 and air circuit I' is active when interior fan 23 is switched
off. Id. According to the Examiner, this disclosure indicates that device
fans 31, "the only candidate for causing the airflow circuit I'[,] are active
when the interior fans 23 are inactive, meaning that the device fans do not
operate 'independent[ly]' from the interior fan but operate at least
selectively based on the state of the interior fan." Id. The Examiner
concludes that the Specification teaches the opposite of the disputed
limitation. Id.
We note the rejection does not take the position that the Specification
lacks adequate written description support for the disputed limitation. As
noted by the Examiner, the Specification discloses that device fans 31 can be
operated when interior fan 23 is switched off to produce a different interior
5
Appeal2017-010603
Application 13/261,402
air circuit I' within the switchgear cabinet than interior air circuit I produced
by interior fan 23. We do not agree with the Examiner's determination that
this shows that "the fan 31 should be operated along with the fan 23, but this
is specifically denied by the claim language." Non-Final Act. 3 (emphasis
added). The description that "[ a ]ir flow within the switchgear interior may
further be supported by device fans 31 of built-in components 3" indicates
that operation of device fans 31 is not required. See Spec. 4, 11. 32-33
( emphasis added). We agree with Appellants that the disclosure shows "the
operation of device fans 31 differs from that of interior fan 23." Br. 24.
Further, Figure 1 appears to show the air circuit produced by operation of
device fans 31 ( as represented by "white" arrows) combining with air circuit
I produced by interior fan 23, which would occur when both device fans 31
and interior fan 23 are on. Operation of device fans 31 would further
support air flow within the switchgear cabinet interior both when interior fan
23 is on, and when interior fan 23 is off.
Accordingly, the Examiner has not provided a reasonable explanation
why undue experimentation would be required of one of ordinary skill in the
art to operate device fans 31 and interior fan 23 such that "airflow within the
switchgear cabinet is supported by the device fans independent of the
interior fan being switched on or off." Thus, we do not sustain the rejection
of claim 14 under 35 U.S.C. § 112, first paragraph.
Obviousness
Claims 5-13
Appellants argue claims 5-13 as a group. Br. 12. We select claim 5
as representative of the group. Claims 6-13 stand or fall with claim 5. See
37 C.F.R. § 4I.37(c)(l)(iv).
6
Appeal2017-010603
Application 13/261,402
As for claim 5, the Examiner finds that DE '674 discloses a
switchgear cabinet with built-in components that produce dissipated heat and
which are mounted within the interior of the switchgear cabinet; a cooling
device including an interior fan for generating an interior air flow through an
evaporator and providing cooling air to the interior of the switchgear
cabinet; and a compressor and an external fan, but finds DE '674 does not
teach "the specific method of operating the device or multiple 'device'
fans." Non-Final Act. 4--5. The Examiner finds that Jaffer teaches a method
for regulating a cooling device for removing heat from a sealed enclosure or
cabinet ( cooling apparatus 20) corresponding to the recited method steps.
Id. at 5---6 (citing Jaffer ,r,r 16, 18, and Figs. 2--4).
The Examiner concludes that it would have been obvious to utilize the
method of Jaffer to regulate the cooling device of DE '674 "to efficiently use
all of the cooling power in the coolant between compressor cycles, prevent
the formation of hot spots, and prevent the addition of extra heat into the
chamber by overuse of the interior fans," and that it would have been further
obvious to provide DE '674 "with as many fans as required to accomplish
these goals," as taught by Jaffer. Id. at 6 ( citing Jaffer ,r 17). In support, the
Examiner finds that Jaffer discloses a plurality of fans 64, "device fans" 67-
69, and "interior fan" 66. Id.
Appellants first contend that Jaffer discloses a commercial cooler for
foodstuffs and beverages, and one skilled in the art of switchgear cabinets
would not look to Jaffer for cooling a switchgear cabinet. Br. 13-14.
Appellants also contend that DE '674 and Jaffer are in completely different
fields. Id. at 14.
7
Appeal2017-010603
Application 13/261,402
The Examiner interprets these contentions as a non-analogous art
argument. Ans. 8. The test for determining whether a prior art reference is
analogous art is: "(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." Id. The Examiner points out that DE '674
teaches how to cool the interior of a sealed cabinet using a refrigeration loop
(compressor, condenser, evaporator, and evaporator fan), and Jaffer likewise
teaches how to cool the interior of a sealed cabinet using a refrigeration loop
having those same components, which reduces hot spots and stratification in
the sealed cabinet when the evaporator fan is not required to run. Ans. 8.
The Examiner maintains that, as both references discuss how to cool a sealed
cabinet by use of a refrigeration loop, they both "address similar problems
with similar means and are therefore analogous." Id.
We understand Appellants' contentions to pertain to the "field of
endeavor" prong of the non-analogous art test. Even assuming, however,
that DE '674 and Jaffer are in different fields from each other, the "field of
endeavor" prong asks whether the prior art is from the same field of
endeavor as the claimed subject matter. Furthermore, the Examiner's
position is based on the "problem" prong of the non-analogous art test.
8
Appeal2017-010603
Application 13/261,402
Appellants' contentions do not apprise us of any error in the Examiner's
position.
Regarding the proposed combination, Appellants acknowledge that
Jaffer teaches (a) turning the compressor "off' and (b) initiating the
intermittent mode when the temperature falls below the lower setpoint
temperature TL- Appeal Br. 17. Appellants appear to contend that the
claimed temperature TH corresponds to the higher setpoint temperature TH in
Jaffer, and the claimed upper setpoint temperature T 2 corresponds to the
lower setpoint temperature TL in Jaffer, but that Jaffer does not reach a
"lower setpoint temperature Ti'' below TL. Id. at 17-18. Consequently,
Appellants appear to contend, Jaffer's evaporator fan is not turned off, and
the intermittent mode of operation of the evaporator fan is not started, at a
temperature corresponding to the claimed "lower setpoint temperature T 1."
Id. at 17. According to Appellants, in a cooling apparatus as disclosed in
Jaffer, "the internal temperature would in no case fall below the lower set
point temperature T2 after the compressor has been turned off." Id. at 18.
With regard to claim 5, Appellants contend that Jaffer does not disclose the
following claimed features: (1) the interior fan of the cooling device is
switched off based upon the detected temperature falling below a lower
setpoint temperature T 1, coming from a higher temperature TH above the
upper setpoint temperature T 2, (2) the intermittent time-controlled mode of
operation is activated upon the temperature falling below the lower setpoint
temperature T 1, coming from the higher temperature TH above the upper
setpoint temperature T 2, and (3) operation of a compressor and an external
fan of the cooling device are changed from a switched-off state into a
switched-on state, if the higher temperature TH is reached. Id.
9
Appeal2017-010603
Application 13/261,402
Appellants' contentions are presented with reference to an Exhibit
including "a graphical comparison of the Rittal eco-mode according to the
present invention and the teaching according to the Jaffer publication." Br.
14--18. However, as noted by the Examiner, the graphical representation of
the "Rittal eco-mode" does not correspond to any drawing figure in
Appellants' application, and Appellants have not mapped the graphical
representation to the disclosure. Ans. 5. Nor do Appellants submit such
information as evidence with a corresponding declaration attesting to the
accuracy, and relevancy, of the information. Accordingly, the Exhibit is
essentially unsubstantiated attorney argument of little probative value. We
note that the graphical representation "according to the Jaffer publication" in
the Exhibit corresponds to graphs shown in Figure 4 of Jaffer.
Referring to Figure 3 of Jaffer, the Examiner explains that the
temperature TH described in Jaffer corresponds to the claimed upper setpoint
temperature T 2, the temperature TL described in J affer corresponds to the
claimed lower setpoint temperature T 1, and any temperature above TH in
J aff er corresponds to the claimed "a higher temperature TH above the upper
setpoint temperature T 2." Ans. 6. In support, the Examiner quotes the
following description in Jaffer:
However it may be, the control circuitry 70 (which may include
a digital processing apparatus) may be connected to cause
compressor 52 to come 'on' (i.e., to be in an operating
condition) when the datum temperature rises above an upper or
higher threshold temperature or upper set point temperature
TH, and to continue running until the datum temperature falls
below a lower threshold temperature or lower set point
temperature TL-
Id.; see Jaffer ,r 18 (emphasis added). The Examiner explains that, as shown
in Figure 3 of Jaffer, the point at which the upper set point temperature (i.e.,
10
Appeal2017-010603
Application 13/261,402
TH) has been exceeded (i.e., TH, as claimed) corresponds to both the
compressor switching on and the evaporator fan switching on, and the point
at which the temperature falls below the lower setpoint temperature TL
corresponds to both the compressor and the evaporator fan turning off. Id.
With regard to claim 5, the Examiner thus determines that Jaffer discloses
that when the detected temperature exceeds an upper setpoint temperature
(TH), the interior fan is switched on, and when the detected temperature falls
below a lower setpoint temperature (TL) coming from a higher temperature
above the upper setpoint temperature, the interior fan is switched off. Id. at
7 ( citing Jaffer ,r 18).
As shown in Figure 4 of Jaffer, the evaporator fan is turned off based
upon the detected temperature falling below the lower setpoint temperature
TL coming from a higher temperature above the upper setpoint temperature
TH· See Jaffer, Fig. 4. The intermittent mode is also activated in this same
manner. Id. Appellants' contention that Jaffer does not disclose that the
operation of a compressor and an external fan of the cooling device are
changed from a switched-off state into a switched-on state, if the higher
temperature TH above the upper setpoint temperature T 2 is reached, is also
unpersuasive. Figure 4 shows that the compressor is turned off when upper
setpoint temperature TH is exceeded. We note that claim 5 does not recite
changing the compressor to a "switched-off state."
For the foregoing reasons, we sustain the rejection of claim 5. Claims
6-13 fall with claim 5.
Claim 14
Appellants contend, inter alia, that neither DE '674 nor Jaffer
discloses the limitation, "wherein airflow within the switchgear cabinet is
11
Appeal2017-010603
Application 13/261,402
supported by the device fans independent of the interior fan being switched
on or off." Br. 21. We note that the Examiner does not make any finding
that DE '674 or Jaffer discloses this feature. See Non-Final Act. 9--10; Ans.
7. As the underlying factual basis for the rejection of claim 14 as set forth
by the Examiner is not supported by a preponderance of the evidence, the
Examiner has not established an adequate reason with rational underpinnings
to modify DE '674 in view of Jaffer to result in the method recited in claim
14. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
"[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand."). Therefore,
we do not sustain the rejection of claim 14 as unpatentable over DE '674 and
Jaffer.
DECISION
We reverse the rejection of claim 14 under 35 U.S.C. § 112, first
paragraph, enablement requirement.
We affirm the rejection of claims 5-13, and reverse the rejection of
claim 14, under 35 U.S.C. § 103(a) as unpatentable over DE '674 and Jaffer.
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-IN-PART
12