Ex Parte Wortman et al

Patent Trial and Appeal Board

Sep 18, 2017

13397108 (P.T.A.B. Sep. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/397,108 02/15/2012 Joseph A. Wortman 008403.00041 7176
27305 7590 09/20/2017
HOWARD & HOWARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
IPDocket@HowardandHoward.com
dtrost @ HowardandHoward. com
tmorris @ Howardandhoward. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. WORTMAN and HOMAS MARTELLE
Appeal 2015-005389
Application 13/397,108
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph A. Wortman and Thomas Martelle (Appellants)1 appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—27, which
are all of the pending claims. An oral hearing was held on July 6, 2017.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Detroit Radiant
Products Company. Appeal Br. 3.
2 The record includes a transcript of the oral hearing (“Tr.”).
Appeal 2015-005389
Application 13/397,108
THE CLAIMED SUBJECT MATTER
Claims 1, 16, 19, and 27 are independent. Claim 1 is reproduced
below and is illustrative of the claimed subject matter on appeal.
I, A method of operating a radiant heating assembly, the
radiant heating assembly including a fuel valve, a blower, a
controller configured to control at least, one of the fuel valve and
the blower according to one of a plurality of algorithms
corresponding to one of a plurality of selectable modulation
modes, and an interface in communication with the controller,
the method comprising the steps of:
selecting one of the plurality of selectable modulation
modes from the interface; and
modulating at: least one of the fuel valve and the blower bv
the controller according to the one of the plurality of algorithms
corresponding to the one of the plurality of selectable modulation
modes selected from the interface.
The Examiner relied on the following evidence in rejecting the claims
THE REJECTIONS
I. Claims 1—9, 11—25, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wortman and Jaeschke. Final Act. 2—10.
II. Claims 10 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wortman, Jaeschke, and Stone. Id. at 10.
EVIDENCE
on appeal:
Wortman
Jaeschke
Stone
US 5,353,986 Oct. 11, 1994
US 2007/0003891 A1 Jan. 4, 2007
US 2007/0287111 A1 Dec. 13, 2007
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OPINION
Rejection I
Claims 1, 2, 4 6, 8, 9, 11—15, and 19—25
The Examiner finds that Wortman discloses, inter alia, a method of
operating a radiant heating assembly, the radiant heating assembly including
fuel valve 48, blower 40, a controller configured to control at least one of
fuel valve 48 and blower 40, and an interface in communication with the
controller (thermostat 132). Final Act. 2 (citing Wortman, 5:1—20, 33—53,
Figs. 3, 4, 6). The Examiner also finds that Wortman discloses, inter alia,
selecting one of a plurality of selectable modulation modes (low demand and
high demand) from the interface (thermostat) and modulating at least one of
fuel valve 48 and blower 40 by the controller according to one of the
plurality of selectable modulation modes (low demand or high demand). Id.
at 2—3 (citing Wortman 3:6—9, 5:36-47).
The Examiner acknowledges that Wortman’s “controller runs on
outdated non-programmed circuitry” or “non-programmed electrical
circuitry (e.g., via switches).” Ans. 11. The Examiner finds that Jaeschke
teaches “a furnace control system using a computer to control the system.”
Final Act. 3 (citing Jaeschke 128). The Examiner also finds that computers
run on algorithms {id.) and “[i]t is well[-]known that software consists of a
plurality of computer readable algorithms” (Ans. 11).
The Examiner concludes that:
[i]t would have been obvious to modify Wortman’s outdated
control circuitry to be a computer controlled circuit because of
the many advantages that come with the use of computer
controllers (e.g., simpler wiring and fewer circuit components).
After the modification, Wortman would disclose computer
algorithms [corresponding] to . . . [the] plurality of selectable
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Application 13/397,108
modulation modes [low demand or high demand] and to
modulate the fuel valve and blower corresponding to one of the
modes.
Ans. 11. In accordance with the modification, Wortman’s controller would
be configured to control at least one of the fuel valve and the blower
according to software used by a microprocessor controller, the software
made up of sets of instructions or computer readable algorithms
corresponding to low demand heating and high demand heating.
Appellants argue that “the algorithm corresponding to the selected
modulation mode” is not taught or suggested by the combination of
Wortman and Jaeschke. Appeal Br. 12. More particularly, Appellants argue
that “[i]f Wortman does not teach or suggest an algorithm, then Wortman
also does not teach or suggest the functions integrally tied to the claimed
algorithm.” Id. at 14. Appellants further argue that Jaeschke must,
therefore, be relied on to teach an algorithm corresponding to a selected
modulation mode and modulating according to that algorithm. Id. We are
not persuaded by these arguments in that once the system of Wortman
(having low demand heating with low fuel pressure and high demand
heating with high fuel pressure) is modified to be a computer controlled
circuit, then there would be sets of instructions or computer readable
algorithms that would correspond to both low demand heating (with low fuel
pressure) and high demand heating (with high fuel pressure).
Appellants argue that “modulating according to that algorithm” is not
taught or suggested by the combination of Wortman and Jaeschke. Appeal
Br. 12. More particularly, Appellants argue that “[t]he Examiner does not
reasonably explain how Jaeschke’s computer utilizes the alleged algorithm”
and “[t]he rejection provides no support whatsoever that Jaeschke’s
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purported algorithm has anything to do with controlling modulation.” Id. at
15. Again, we are not persuaded by this argument in that once the system of
Wortman (having low demand heating with low fuel pressure and high
demand heating with high fuel pressure) is modified to use a computer
controlled circuit, then fuel valve 48 including second stage solenoid 104
connected to regulator valve 106 for increasing and decreasing a manifold
pressure of the fuel (Wortman, 4:22—27) would be controlled according to
the set of instructions or computer readable algorithms that would
correspond to low demand heating with low fuel pressure and high demand
heating with high fuel pressure.
Appellants argue that the Examiner has not supported sufficiently that
Jaeschke teaches an algorithm. Appeal Br. 13. In particular, Appellants
argue that the Examiner has failed to provide facts and/or technical
reasoning to reasonably support that an algorithm is necessarily present in
Jaeschke’s system and recognized by persons of ordinary skill. Id. at 13—14.
The Examiner responds that Jaeschke explicitly discloses a control apparatus
having random access memory (RAM) which “includes, for example, a
processor such as a 72334 microprocessor from STMicroelectronics.” Ans.
12 (emphasis omitted) (quoting Jaeschke 128). The Examiner also responds
that Jaeschke explicitly discloses that “the following described methods
could be embodied in firmware, software, and/or hardware in the control
apparatus.” Id. (emphasis omitted) (quoting Jaeschke 144). The Examiner
finds that “[a] microprocessor is a computer processor that runs on
software,” that the referenced microprocessor runs on software, and that
RAM is used in computers to store temporary data. Id. Appellants do not
persuasively refute these findings. Accordingly, we are not persuaded that
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Application 13/397,108
the Examiner lacks sufficient evidence and technical reasoning to reasonably
demonstrate that Jaeschke’s computer based controller includes software
which is made up of sets of instructions or computer readable algorithms.
Appellants also argue that the Examiner provides an insufficient basis
in support of the conclusion of obviousness, listing several points. Appeal
Br. 15—17. As to Appellants’ first point that the Examiner is constructing his
argument based on hindsight reasoning in light of the Examiner’s reference
to the term “nowadays” {id. at 16), we are not persuaded of error. See Ans.
13 (Examiner clarifying use of “nowadays” as referring to modem times—
the mid-to-late 1990s—in which computers were widespread). As to
Appellants’ second point that the Examiner failed to consider the claim as a
whole by “impermissibly evaluating the claimed algorithm in isolation with
no regard to the recited functions” (Appeal Br. 16), we determine that the
Examiner properly considered the algorithm in connection with the rest of
the limitations of the claims. As to Appellants’ third point that “the rejection
provides no evidentiary support whatsoever that it is commonplace to have a
radiant heating assembly (as compared with a ‘control device’) having (1) an
algorithm corresponding to a selected modulation mode, and (2) modulating
according to that algorithm (as compared to mnning on algorithms)” {id.),
we are not persuaded of Examiner error in that the rejection is based on the
combination of Wortman and Jaeschke, which together teach a radiant
heating assembly in accordance with the claim.
Appellants further argue that “[ajdding Jaeschke’s alleged computer
to Wortman’s system would be redundant in view of Wortman’s existing
circuitry” and that “the rejection provides insufficient motivation to modify
Wortman in view of Jaeschke, as suggested.” Appeal Br. 16. We agree with
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Application 13/397,108
the Examiner that there would be no redundancy in the combination because
“[t]he rejection is based on replacing the outdated non-programmable
circuitry of Wortman with a computer controlled circuitry.” Ans. 13.
Appellants do not address the Examiner’s reasoning based on updating
outdated control circuity to take advantage of the many benefits that come
with the use of computer controllers—i.e., simpler wiring and fewer circuit
components (Ans. 11), and thus, Appellants’ arguments do not persuasively
explain why the Examiner’s articulated reasoning lacks rational
underpinnings.
Appellants also argue that “[integrating an alleged computer with
algorithms into Wortman’s system requires a complete overhaul of
Wortman’s design” and “[t]he Examiner does not explain how Jaeschke’s
alleged algorithms fit into Wortman’s system.” Appeal Br. 17. The
Examiner responds that “[i]t is well within the skill of a person having
ordinary skill to control Wortman’s heating system with a computerized
controller” and that “[i]t is ubiquitous in the computer era to replace non-
programmed electronic circuits with computer controlled circuits.” Ans. 13.
Appellants do not persuade us that integrating a computer into Wortman’s
system would have been uniquely challenging or beyond the skill in the art
at the time of Appellants’ invention. See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
416—19 (modification of prior art device to incorporate a known device held
to be obvious where no evidence was presented that the inclusion of such a
device “was uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art”); id. (holding that
it would have been obvious to update prior art “using modem electronic
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components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost”).
Appellants also argue that the prior art fails to teach “selectable
modulation modes.” Appeal Br. 17—18. More particularly, Appellants argue
that “Wortman’s low and high demand are not selectable modulation modes,
but rather temperature settings” {id. at 17) and that “selecting a modulation
mode is not equivalent to merely setting a temperature on a conventional
thermostat” {id. at 10). Appellants assert that “a user merely sets a low
demand temperature, e.g., 70 degrees, and a high demand temperature, e.g.,
60 degrees, on the thermostat,” but Wortman’s system does not trigger the
low demand or high demand operation until the measured temperature
reaches these set temperatures. Id. at 17—18. Appellants maintain that
“Wortman’s demand heating is always limited by the selected temperature[,]
[whereas] [t]he claimed modulation modes have no such limitation.” Reply
Br. 8. Appellants further maintain that “[a] conventional temperature setting
on a thermostat only allows the user to have control over the desired
temperature and does not provide selective control over how the fuel input
rates and/or the blower input rates should be managed.” Id. at 7.
In support of a narrow interpretation of “selectable modulation mode”
that would not encompass Wortman’s low demand and high demand
heating, Appellants point to the statement in the Specification that “[t]he
selectable modulation modes provide selective control over the fuel input
rates and/or the blower input rates.” Id. at 2 (quoting Spec. 148).
Appellants also point to Figure 3 as showing separate buttons for adjusting
“the conventional temperature setting of the thermostat” compared to a
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“selectable modulation mode.” Id. Appellants also assert that the
Specification describes that selection of a mode can interrupt typical
thermostat operation, which “distinguished] thermostat temperature and
selection of a mode.” Tr. 10:17—11:9 (citing Spec. 149).
With respect to the Specification’s description that the selectable
modulation modes provide selective control over the fuel input rates and/or
the blower input rates (Spec. 148), we determine that Wortman’s low
demand and high demand settings provide selective control over the fuel
input rate in that selecting low demand heating at a specified temperature
results in low fuel pressure (providing less fuel for burning) and selecting
high demand heating at a specified temperature results in high fuel pressure
(providing more fuel for burning). Wortman, 4:45—51, 5:49—52. As to
Appellants’ attempt to distinguish temperature settings from selectable
modulation modes based on Figure 3 and/or the description of operation of
radiant heating assembly set forth in paragraph 49 of Appellants’
Specification, we view such illustrations and description as exemplary only
and not limiting what can reasonably constitute a selectable modulation
mode. We decline to import example embodiments and implementations
from the Specification into the claims. To the extent Appellants are
asserting that in order to constitute a selectable modulation mode, the
modulation mode must execute immediately when selected and cannot be
delayed until meeting a particular temperature, we are not persuaded that the
Specification or the claim language so limits a selectable modulation mode.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 1 is unpatentable over Wortman
and Jaeschke, and we sustain the rejection of claim 1 under 35 U.S.C.
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§ 103(a) as unpatentable over Wortman and Jaeschke. We also sustain the
rejection of claims 2, 4—6, 8, 9, 11—15, and 19—25, for which Appellants rely
on the same arguments and reasoning we found unpersuasive in connection
with the rejection of independent claim 1. See Appeal Br. 22, 23—24.
Claims 3, 16—18, and 27
Dependent claim 3 requires a first selectable modulation mode that is
operable according to a first algorithm including a first set of blower input
rates and a second selectable modulation mode that is operable according to
a second algorithm including a second set of blower input rates. Appeal Br.
27 (Claims App.) (emphasis added). The Examiner acknowledges that
Wortman, as modified by Jaeschke in accordance with the Examiner’s
analysis for independent claim 1, fails to disclose that the identified
selectable modulation modes (low demand or high demand temperature
settings) are operable according to algorithms that include blower input
rates. Final Act. 3.
The Examiner finds that Jaeschke teaches that the “user selects a
thermostat setting which corresponds to a fixed gas rate.” Final Act. 3
(citing Jaeschke 13). The Examiner also finds that Jaeschke teaches that
“blower speed is varied for each selected gas flow rate.” Id. (citing
Jaeschke, Abstr.). The Examiner further finds that “a different second set of
blower input rates is required for a second fuel input rate in order to
maintain optimal air/gas ratios.” Id. (citing Jaeschke | 55). The Examiner
concludes that it would have been obvious to modify Wortman to include “a
user selected plurality of fuel gas rates . . . and their corresponding blower
rates for each modulation mode (high and low demands)” so that “a low
demand mode (lower fuel and blower rates) will have a first set of fuel input
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rates and blower input rates for each fuel input rate” and “[a] high demand
mode (higher fuel rate and blower rate) will have a different second set of
fuel input rates and blower input rates for each fuel input rate.” Id. at 4
(citing Jaeschke 13). The Examiner determines that the motivation to
modify Wortman with the teachings of Jaeschke “is to optimally control the
air/fuel ratio by adjusting for pressure losses and fluctuations in the system”
which “leads to optimal combustion and lower emissions.” Id.
Appellants argue that Wortman regulates fuel rates to sustain
predetermined pressures (and, thus, fuel rates are not selected), whereas
Jaeschke selects fuel rates (and then controls the blower based on the
pressure difference resulting from the selected fuel rate). Appeal Br. 19.
Appellants argue that the “two systems are incompatible” and that “[o]ne
skilled in the art would not, and could not, modify Wortman’s regulated fuel
rate system in view of Jaeschke’s selected fuel rate system.” Id. We are not
persuaded by Appellants’ argument in that we consider the Examiner to be
modifying Wortman merely to control the blower at the same time that a fuel
rate is being regulated to sustain a predetermined pressure. Accordingly, we
also are not persuaded that the Examiner’s proposed modification changes
the principle of operation of Wortman, as alleged by Appellants. Id.
Appellants also argue that “it is not enough that Jaeschke’s blower
speed is merely varied for each selected gas flow rate” and “[t]he Examiner
makes no connection between the variable blower speeds in Jaeschke to an
algorithm associated with a selectable modulation mode.” Appeal Br. 19.
We are not persuaded by these arguments in that once the system of
Wortman (having low demand heating with regulated fuel rates to sustain
predetermined pressures and high demand heating with regulated fuel rates
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to sustain predetermined pressures) is modified to use a computer controlled
circuit that also controls the blower at the same time fuel rates are regulated,
then there would be sets of instructions or computer readable algorithms that
would include a blower input rate corresponding to each regulated fuel rate
for low demand heating and a blower input rate corresponding to each
regulated fuel rate for high demand heating.
Appellants also argue that modified Wortman “still does not teach the
defined blower input rate sets, as claimed” and “[t]he claims specifically
require different sets of blower input rates for each algorithm.” Appeal Br.
20. The Examiner responds that “[t]he blower speed is varied for each gas
flow” such that “there is a range or set of blower speeds/rates for each gas
flow.” Ans. 15 (citing Jaeschke 17). Modified Wortman appears to
encompass more than one fuel rate at low fuel pressure and more than one
fuel rate at high fuel pressure (e.g., varying fuel rates in order to sustain the
predetermined pressure), such that there would be more than one fuel rate,
corresponding with more than one blower rate.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 3 is unpatentable over Wortman
and Jaeschke, and we sustain the rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Wortman and Jaeschke. We also sustain the
rejection of claims 16—18 and 27, for which Appellants rely on the same
arguments and reasoning we found unpersuasive in connection with the
rejection of independent claim 1 and dependent claim 3. See Appeal Br. 22—
23, 24—25.
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Claim 7
Dependent claim 7 requires a first selectable modulation mode that is
operable according to a first algorithm defining a first modulation range of
the blower and a second selectable modulation mode that is operable
according to a second algorithm defining a second modulation range of the
blower. Appeal Br. 28 (Claims App.). The Examiner relies on the analysis
provided in connection with dependent claim 3. Final Act. 5.
In addition to arguing the same arguments that we found unpersuasive
in connection with dependent claim 3 (Appeal Br. 20-21), Appellants also
argue that “modified Wortman still does not teach the defined modulation
ranges for the blower, as claimed,” and “[t]he claims specifically require
different modulation ranges for the blower for each algorithm.” Appeal Br.
22. We agree with the Examiner’s response that “[m]ore than one blower
rate creates a range of blower rates” and “[mjodified Wortman discloses a
range of blower inputs for each [of the] low demand and high demand fuel
rates.” Ans. 16.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 7 is unpatentable over Wortman
and Jaeschke, and we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Wortman and Jaeschke.
Rejection II
With respect to claims 10 and 26, Appellants rely on the same
arguments and reasoning we found unpersuasive in connection with the
rejection of independent claim 1. See Appeal Br. 22, 24. Accordingly, we
do not find that the Examiner erred in concluding that the subject matter of
claims 10 and 26 is unpatentable over Wortman, Jaeschke, and Stone, and
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we sustain the rejection of claims 10 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Wortman and Jaeschke.
DECISION
The Examiner’s decision to reject claims 1—9, 11—25, and 27 under 35
U.S.C. § 103(a) as unpatentable over Wortman and Jaeschke is affirmed.
The Examiner’s decision to reject claims 10 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Wortman, Jaeschke, and Stone is 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)(l)(iv).
AFFIRMED
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