Ex Parte Thompson

Patent Trial and Appeal Board

Jul 31, 2018

13114205 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/114,205 05/24/2011 Kevin D. Thompson
87059 7590 08/02/2018
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
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.
55843US02 (U300674US2) 1053
EXAMINER
FURDGE, LARRY L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN D. THOMPSON
Appeal2017-008060
Application 13/114,205
Technology Center 3700
Before: CHARLES N. GREENHUT, ARTHUR M. PESLAK, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 12 and 18-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, "[t]he real party in interest is Carrier Corporation,
the assignee of record." App. Br. 1.
Appeal2017-008060
Application 13/114,205
CLAIMED SUBJECT MATTER
The claims are directed to a control system for a modulating furnace.
Sole independent claim 12, reproduced below with emphasis and some
paragraphing added, is illustrative of the claimed subject matter:
12. A control system for a modulating furnace, the
modulating furnace including at least one burner, comprising:
a processor configured to execute at least one algorithm
capable of providing multiple heating modes for the modulating
furnace, the at least one algorithm including determining an
existence of a signal indicating a heating load request;
determining if a maximum input rate is required at start-
up;
if the maximum input rate is not required at start-up then
(i) running the at least one burner at an intermediate input
rate until a blower on-delay is completed;
(ii) running the at least one burner at a modulated input
rate not to exceed a predetermined time limit once the blower on-
delay is completed; and
(iii) if the predetermined time limit is exceeded and the
heating load request not satisfied, running the at least one burner
at a maximum input rate until the heating load request is
satisfied;
a gas valve electrically connected to the processor and
capable of modulating gas flow to the at least one burner based
on control signals received from the processor;
at least one variable-speed motor electrically connected to
the processor and capable of adjusting speed based on control
signals received from the processor; and
a thermostat electrically connected to the processor and
capable of providing the signal indicating a heating load request
to the processor.
2
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Application 13/114,205
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hugghins
Halsey
Nordberg
us 2005/0092317
us 2005/0150651
US 8,123,518 B2
REJECTION2
May 5, 2005
July 14, 2005
Feb.28,2012
Claims 12 and 18-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nordberg in view of Halsey and Hugghins.
OPINION
The Examiner bears the initial burden of factually supporting any
conclusion of obviousness, and the key to supporting any conclusion of
obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s)
why the claimed invention would have been obvious. The obviousness
analysis is more than simply showing that each limitation is found in the
prior art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398,418
(2007) ("a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art"). The Examiner must also show "whether there was
an apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)) (emphasis added).
In rejecting claim 12, the Examiner finds Nordberg discloses all of the
features of the claim except:
2 The Examiner withdrew the rejection under 35 U.S.C. § 112, second
paragraph. Ans. 2.
3
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Application 13/114,205
Nordberg does not explicitly teach a condition where if the
maximum input rate is not required at start-up then (i) running
the at least one burner at an intermediate input rate until a
blower on-delay is competed; (ii) running the at least one burner
at a modulated input rate not to exceed a predetermined time
limit once the blower on-delay is completed.
Final Act. 4. To cure the deficiencies of Nordberg, the Examiner relies on
Halsey and Hugghins. Final Act. 4--5. However, we find the Examiner's
rejection cannot be sustained for at least two reasons. First, we are not
persuaded that the proposed combination of Nordberg, Halsey, and
Hugghins would meet all of the limitations of claim 12. Second, even if the
proposed combination of Nordberg, Halsey, and Hugghins could be said to
disclose or teach all of the elements of claim 12, the Examiner has not
provided a clear articulation as to why it would have been obvious to one of
ordinary skill in the art to combine those elements in the manner claimed by
Appellant.
A. Limitations Not Disclosed Or Taught
"The broadest reasonable interpretation of a system claim having
structure that performs a function, which only needs to occur if a condition
precedent is met, still requires structure for performing the function should
the condition occur." Ex Parte Schulhauser (Appeal No. 2013-007847
(PTAB April 28, 2016) (precedential). This is because the structure for
performing the function is present in the system regardless of whether the
condition is met and the function is actually performed. Id. "Thus, in order
to show anticipation or obviousness [for] ... a claim reciting structure that
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Application 13/114,205
performs a function tied to a condition precedent, the Examiner must cite
prior art that discloses or renders obvious such structure." Id.
Claim 12 is directed to a system comprising a structure (i.e., a
processor) configured to perform a function (i.e., execute an algorithm
comprising inter alia the steps of: determining if a maximum input rate is
required at start-up; and, if such determination is in the negative3, then
performing a series ofup to three4 sub-steps). Therefore, satisfying claim 12
would require structure capable of performing the determining step and the
three sub-steps, all in the manner claimed. For the following reasons, we
find the Examiner's rejection cannot be sustained.
First, as to the step of determining if a maximum burner rate is
required at start-up, the Examiner cites step 52 in Nordberg. Final Act. 3.
However, Nordberg does not describe step 52 as being a determination, or as
relating to a maximum burner rate; rather, step 52 is described as operating a
burner at a first burner firing rate for a first period of time. Nordberg, col. 4,
11. 30-32. The Examiner finds step 52 meets the limitation in question
because it "contemplates a maximum input rate and determines that a
maximum input rate at start-up is not required." Ans. 3. The Examiner's
position appears to be that because Nordberg starts-up at something other
than a maximum rate, such a start-up is necessarily the result of a specific
step of determining if a maximum rate was required at start-up, where the
determination was negative. The mere fact that Nordberg discloses a start-
up where maximum is not required does not, in and of itself, establish that
3 We note that claim 12 contains no limitations directed to a situation in
which it is determined that a maximum input rate is required at start-up.
4 We note that step (iii) is only performed if the predetermined time limit of
step (ii) is exceeded and the heating load request is not satisfied.
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Appeal2017-008060
Application 13/114,205
such start-up was preceded by a distinct step of determining if maximum
input rate was required at start-up.
Further, as to steps (i) and (ii) of the algorithm, in relying on Halsey
and Hugghins, the Examiner does not account for the requirement that steps
(i) and (ii) occur "if the maximum input rate is not required at start-up."
Final Act. 4--5; Ans. 3. As to steps (i) and (ii), the Examiner does not make
clear ( or, at the very least, is inconsistent with respect to) which step or steps
are taught by Halsey and which are taught by Hugghins. In the Final Office
Action, the Examiner finds: "Halsey [teaches] running at least one burner at
an input rate until a blower on-delay is comp [l] eted" as required by step (i).
Final Act. 4 ( emphasis added). But, immediately thereafter, the Examiner
concludes step (ii), would have been obvious based on Halsey. See Final
Act. 4 ("It would have been obvious ... to provide in Nordberg, running the
at least one burner at a modulated input rate not to exceed a predetermined
time limit once the blower on-delay is completed, as taught by Halsey . ... ")
( emphasis added). The Examiner's position is not clarified in the Answer,
because the Examiner first indicates that Hugghins was cited for teaching
step (i) and Halsey was cited for teaching step (ii) 5, but then states that both
Halsey and Hugghins teach running a burner "until a blower on-delay is
completed[,]" which is a requirement only of step (i). Id.
Finally, as to step (iii) of the algorithm, the Examiner's finding that
Nordberg discloses this step (see Final Act. 4) is not supported by the
excerpt6 cited by the Examiner, because we find nothing therein that could
5 The Examiner states: "Hugghins teaches running a burner at an
intermediate input rate until a blower on-delay is completed and Halsey is
used to teach the next step . ... " Ans. 3 (emphasis added).
6 See Final Act. 4 (citing Nordberg, col. 4, 1. 28---col. 5, 1. 18; Fig. 2).
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Application 13/114,205
be said to teach running the burner "at a maximum input rate until the
heating load request is satisfied." Rather, the excerpt is limited to a
discussion of various methods by which the burner input rate could be
increased (e.g., step-wise, linear, piece-wise, etc.) without specifically
teaching, disclosing, or suggesting a maximum rate. Nordberg, col. 5, 11. 3-
7. Further as to step (iii), the Examiner cites step 52 in Nordberg as meeting
both the "determining if a maximum input rate is required at start-up" step,
as well as step (iii). Final Act. 3--4. However, it is unclear how step 52 of
Nordberg could meet both of these steps, insofar as the "determining if' step
necessarily occurs before step (i), and step (iii) necessarily occurs after both
steps (i) and (ii).
B. Rationale To Combine
Even assuming arguendo that Nordberg, Halsey, and Hugghins could
be said to collectively disclose or teach every element of claim 12, the
Examiner does not clearly articulate why it would have been obvious to one
of ordinary skill in the art to combine the elements of Nordberg, Halsey, and
Hugghins in the specific fashion recited in claim 12.
As to steps (i}-(iii) of the algorithm, the Examiner finds that Nordberg
only discloses step (iii). Final Act. 4. But modifying Nordberg so as to
meet claim 12 would require not just the mere addition of steps (i) and (ii) to
Nordberg, but would specifically require the addition of: step (i) occurring
before step (ii); step (ii) occurring before step (iii); and both steps (i) and (ii)
being conditional upon a determination that a maximum input rate is not
required at start-up. App. Br. 8. However, the Examiner does not provide a
clear articulation of how Halsey and Hugghins would be combined, either
with each other or with Nordberg, so as to arrive at this specific subject
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Application 13/114,205
matter of claim 12. Regardless of which reference, Halsey or Hugghins, the
Examiner intended to cite as teaching steps (i) and (ii), the Examiner does
not clearly articulate why Halsey and/or Hugghins would teach those steps
as specifically occurring one after the other, as per the claim. Moreover, the
Examiner does not clearly articulate why the steps taught by Halsey and
Hugghins would also necessarily occur before the step (iii) that the
Examiner identifies in Nordberg.
Because the Examiner's rejection fails to clearly address each and
every element of claim 12, and fails to clearly articulate why it would have
been obvious to one of ordinary skill in the art to combine the various
elements of Nordberg, Halsey, and Hugghins in the manner claimed by
Appellant, the rejection cannot be sustained.
DECISION
The Examiner's rejection of claims 12 and 18-24 is reversed.
REVERSED
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