Jaan Selg et al.

Patent Trials and Appeals Board

Jan 13, 2020

14888203 - (D) (P.T.A.B. Jan. 13, 2020)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/888,203 10/30/2015 Jaan SELG ABE-55210 9564
116 7590 01/13/2020
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
TRPISOVSKY, JOSEPH F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/13/2020 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAAN SELG and JESSICA DAHLKVIST
Appeal 2019-002621
Application 14/888,203
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Electrolux
Appliances Aktiebolag. App. Br. 2.
Appeal 2019-002621
Application 14/888,203
2
CLAIMED SUBJECT MATTER
The claims are directed to an air-conditioner. Claim 1, reproduced
below, is the sole independent claim:
1 A portable air-conditioner (400), the air-conditioner
comprising a compressor (401), a condenser (405), and an
evaporator (403) located inside a housing, the air conditioner
further comprising a cool air inlet and outlet and a warm air inlet
and outlet, the air-conditioner comprising an evaporator fan
(411) and a condenser fan (409) characterized in that the housing
of the air-conditioner has an elongated shape with end sections
forming a top section and a bottom section, respectively, and
wherein the evaporator fan is an axial fan and wherein the
condenser fan is a radial fan.
App. Br. 18 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Frazer US 2,234,753 Mar. 11, 1941
Liu US 2002/0157415 A1 Oct. 31, 2002
Wu US 2006/0054712 A1 Mar. 16, 2006

REJECTIONS
Claims 11–16 are rejected under 35 U.S.C. 112(a), as failing to
comply with the written description requirement. Final Act. 2.
Claims 11–16 rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 3.
Claims 1, 2 and 4–16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Liu in view of Frazer. Final Act. 4.
Appeal 2019-002621
Application 14/888,203
3
Claims 3 and 17 are rejected under 35 U.S.C. 103 as being
unpatentable over Liu, Frazer, and Wu. Final Act. 6.
OPINION
Indefiniteness and Written Description
Although the standards differ for determining indefiniteness and
compliance with the written description requirement (MPEP § 2174) the
issues in both cases stem from the same limitation in claim 11, and can be
discussed together. Final Act. 2–3. Claim 11, in relevant part, recites “a base
of the compressor . . . occupies an entire base of the housing.”
The Examiner correctly determined that the meaning of this phrase is
unclear because, although the phrase is repeated in the Specification (pp. 3,
22), it does not appear to be consistent with the rest of the disclosure,
particularly the figures. Final Act. 2. Such inconsistency, in effect, makes it
impossible to interpret a claim, as we must, in light of the disclosure. MPEP
§ 2173.03 provides:
The specification should ideally serve as a glossary to the claim
terms so that the examiner and the public can clearly ascertain
the meaning of the claim terms. Correspondence between the
specification and claims is required by 37 CFR 1.75(d)(1), which
provides that claim terms must find clear support or antecedent
basis in the specification so that the meaning of the terms may be
ascertainable by reference to the specification.
. . .
A claim [] may also be indefinite when a conflict or
inconsistency between the claimed subject matter and the
specification disclosure renders the scope of the claim uncertain
as inconsistency with the specification disclosure or prior art
teachings may make an otherwise definite claim take on an
unreasonable degree of uncertainty.
Appeal 2019-002621
Application 14/888,203
4
The only portion of the disclosure Appellant points to for support
under either 35 U.S.C. §§ 112(a) or (b) is page 3, lines 9–12 of the
Specification. App. Br. 7–8. This portion of the Specification merely repeats
the claim language in question. Mere ipsis verbis repetition, without more,
provides neither clarity under § 112(b) nor description under § 112(a). The
Specification does not identify with reasonable clarity precisely what
structure constitutes the “base” and what structure constitutes the “housing.”
The Examiner attempts to ascertain this information by pointing to the
embodiment depicted in Figures 5 and 9. Ans. 7–8. We agree with the
Examiner that these illustrations and their respective descriptions represent
the best subject matter to consider in ascertaining the meaning of the claim
11 limitation in question and existence of descriptive support therefor.
However, Appellant disputes that this is the correct embodiment to consider
in making these determinations. Reply. Br. 2, 3. Appellant apprises us as to
what aspects of the disclosure not to consider but does not inform us as to
what aspects should be considered other than the ipsis verbis repetition
mentioned above. 37 C.F.R. § 1.83(a) requires the drawings to show every
feature of the invention specified in the claims. MPEP § 608.02(d). We
recognize that noncompliance with this regulation, as Appellant appears to
be acknowledging, does not, without more, necessarily demonstrate
noncompliance with 35 U.S.C. §§ 112(a) or (b). However, compliance with
37 C.F.R. § 1.83(a) would, in this instance, certainly help demonstrate
compliance with 35 U.S.C. §§ 112(a) or (b).
There are at least three possible structures that are illustrated that
might represent the “base of the housing.” The first is some lower portion of
the unlabeled outermost cylindrical structure illustrated in white in Figure
13. The second is the unlabeled lowermost cylindrical element illustrated in
Appeal 2019-002621
Application 14/888,203
5
black in Figure 9 that appears to be a base of the housing frame (See Fig.
16). The third is the “compressor base 500” with four stands illustrated in
black in both Figures 5 and 9. The problem with every one of these
possibilities is, as the Examiner correctly explained (Final Act. 2, 3), they
each leave room to accommodate the condenser. This makes it unclear how
the compressor can occupy any of these structures in their entirety. Thus, it
is also unclear how to properly interpret the metes and bounds of “occupies
an entire base of the housing” in light of the Specification under § 112(b).
As Appellant can point to neither illustration nor adequate discussion of a
compressor that “occupies an entire base of the housing” by, for example,
pointing to an embodiment including a base different from those illustrated
and discussed above, or an embodiment lacking a condenser, Appellant has
also failed to demonstrate possession of a portable air condition including a
compressor that “occupies an entire base of the housing” according to claim
11.
For the foregoing reasons we sustain the Examiner’s rejections under
35 U.S.C. §§ 112(a) and (b).

Obviousness
Claims 1–9, 11, and 13–17
Claims 1–9, 11, and 13–17 are argued as a group (App. Br. 8) for
which the sole independent claim, claim 1, is representative. The Examiner
relied on Liu for the basic structure of claim 1, and Frazer for illustrating
that it would have been obvious to substitute an axial fan for the radial
evaporator fan of Liu. Final Act. 4.
Appellant’s position is that one skilled in the art would not have
selectively replaced only one of Liu’s radial fans with an axial fan. App. Br.
Appeal 2019-002621
Application 14/888,203
6
8–13. Appellant’s argument fails to presume skill is an attribute of the
hypothetical person described in 35 U.S.C. § 103. In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985). As the Examiner correctly reasoned, the proposed
modification would allow spreading of air from the top and make Liu’s
device more suitable for other locations in need of cooling (Final Act. 4), for
example, locations not adjacent a wall as in Liu. See, e.g., Liu Fig. 3. One
skilled in the art would understand that the direction of a cooled air stream
may be modified independently, for example by evaporator fan
modification, without the need to also modify components of the exhaust air
stream. Both Frazer and Liu direct the exhaust air laterally from the device.
Liu Fig. 2; Frazer Figs. 1, 2. As illustrated, this can be achieved using either
a radial fan or axial fan. See id. As the exhaust portions exhibit similar
functionality regardless of the type of fan employed it would seem that, if
anything, there is less reason to modify both fans as Appellant suggests. In
any case demonstrating that it would have been obvious to replace both fans
does not apprise us as to why it would not have been obvious to replace only
the fan directing the conditioned air intended for the room.

Claim 10
In order to meet the “shield” language of claim 7 the Examiner relies
on Frazer’s conical or pyramidical element 18 in conjunction with venturi
tubes 14 and 15. Final Act. 5. According to claim 9, which depends from
claim 7, the “shield is generally cone shaped.” This may be true of Frazer’s
conical or pyramidical element 18. However, it does not appear to be true of
the venturi tubes 14 and 15 because they appear to undulate. It also does not
appear to be true of the combination of the conical or pyramidical element
18 with the venturi tubes 14 and 15. Thus for purposes of claim 9, it would
Appeal 2019-002621
Application 14/888,203
7
appear the only reasonable structure in Frazer for the Examiner to rely on as
the recited “shield” is conical or pyramidical element 18. Appeal Br. 14–15.
Claim 10, which depends from claim 9, adds the limitation that “the shield
has an opening in the middle for letting air pass in an upwards direction.”
The Examiner does not appear to contend this is true of conical or
pyramidical element 18. Rather, the Examiner cites the opening in venturi
tube 15. Ans. 11. It is not reasonable to rely on one element in the prior art
to satisfy the recited requirements associated with an element of a parent
claim, and then rely on a different and discrete element in the prior art to
satisfy the recited requirements associated with that same claim element in a
claim depending from that parent claim. “A claim in dependent form shall be
construed to incorporate by reference all the limitations of the claim to
which it refers.” 35 U.S.C. § 112(d).
Accordingly, we do not sustain the Examiner’s rejection of claim 10.

Claim 12
With regard to claim 12’s requirement “wherein [sic the/said]
compressor is surrounded by the condenser only at a top section of the
compressor,” Appellant initially reproduces Appellant’s Figure 19a, without
discussion. App. Br. 16. Appellant points to Figure 1(i) of Liu and asserts
there is no space illustrated between the bottom of Liu’s condenser and that
of Liu’s compressor. App. Br. 16. The Examiner agrees that Appellant’s
figure 19a is illustrative of what is meant by “[the] compressor is surrounded
by the condenser only at a top section of the compressor.” Ans. 11. The
Examiner points out that, though not expressly discussed by Liu, such an
arrangement appears plainly visible in Figure 2 of Liu—the figure cited in
the appealed Office action. Appellant does not controvert the Examiner’s
Appeal 2019-002621
Application 14/888,203
8
interpretation of Figure 2 of Liu. Appellant instead replies with the
argument:
a person of ordinary skill in the art would understand that a “top
section” of an element refers to a section above its vertical mid-
plane. . . . Moreover, although FIG. 19a of the present disclosure
illustrates an embodiment wherein a condenser extends below a
vertical midpoint of a compressor, the present disclosure in no
way states or suggests that the embodiment illustrated in FIG.
19a reads upon a “compressor [that] is surrounded by the
condenser only at a top section of the compressor.”
Reply. Br. 7 (emphasis omitted).
It is unclear why Appellant reproduced figure 19a in the arguments
for claim 12 only to later assert claim 12 should not be interpreted to cover
the embodiment depicted in Figure 19a. Again Appellant is supposedly
apprising us of embodiments not covered by the claim as opposed to those
that are covered by the claim. If there is an alternate arrangement disclosed
regarding the positional relationship between the condenser and compressor
it is not apparent and we have not been apprised of it. Appellant is again
reminded that 37 C.F.R. § 1.83(a) requires the drawings to show every
feature of the invention specified in the claims. MPEP § 608.02(d). Were we
to adopt Appellant’s proposed construction that, in this case, “a ‘top section’
of an element refers to a section above its vertical mid-plane” we would be
excluding Appellant’s primary, if not Appellant’s only disclosed
embodiment. Claim interpretations excluding the preferred embodiment are
rarely, if ever, correct and would require highly persuasive evidentiary
support. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1997).
It is undisputed that Liu satisfies the claim language when “top
section” can be interpreted to mean the amount of compressor surrounded by
Appeal 2019-002621
Application 14/888,203
9
the condenser illustrated in Appellant’s Figure 19a, which is well more than
the top half. Accordingly, we sustain the Examiner’s rejection of claim 12.

CONCLUSION
The Examiner’s rejection of claim 10 is reversed.
The Examiner’s other rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–16 112(a) Written
Description
11–16
11–16 112(b) Indefiniteness 11–16
1, 2, 4–16 103 Liu, Frazer 1, 2, 4–9,
11–16
10
3, 17 103 Liu, Frazer, Wu 3, 17
Overall
Outcome
1–9, 11–17 10

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART