Regal Beloit America, Inc.

Patent Trials and Appeals Board

Sep 23, 2020

2020000402 (P.T.A.B. Sep. 23, 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.
15/183,040 06/15/2016 Steven W. Post 48593-155918 4098
103907 7590 09/23/2020
Thompson Coburn LLP
One US Bank Plaza
St.Louis, MO 63101
EXAMINER
JOHNSON, BENJAMIN W
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
ipdocket@thompsoncoburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. POST, JEFFREY JAY LONG, and
WILLIAM S. GATLEY
Appeal 2020-000402
Application 15/183,040
Technology Center 3700
Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–9. We have jurisdiction under
35 U.S.C. § 6(b). A telephonic oral hearing was conducted with the
Appellant’s representative on September 15, 2020, a transcript of which will
be entered into the record in due course.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Regal
Beloit America, Inc. Appeal Br. 2.
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Application 15/183,040

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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a water heater blower assembly having a
low exhaust port. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A draft inducer blower assembly for use with a gas-fueled
water heater, the blower assembly comprising
a housing,
a motor, and
a fan,
the housing having an exhaust volute surrounding the fan
and a base configured and adapted to be mounted atop the water
heater, the base having an inlet port adapted and configured to
receive exhaust gas from the water heater when the base is
mounted atop the water heater,
the fan being connected to the motor for rotation about a
rotation axis,
the exhaust volute and the base being non-adjustably fixed
relative to each other, the exhaust volute having a cut-off at a cut-
off angle relative to the rotation axis, the cutoff angle extending
at an angle that is no more than twenty degrees positive from
horizontal, the exhaust volute having an exhaust outlet
passageway that extends to an exhaust port, the exhaust outlet
passageway extending beneath the cut-off before reaching the
exhaust port.
Appeal Br. 16, Claims App. (paragraphing added).
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Application 15/183,040

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REJECTIONS2
1. Claims 1–3 and 6–8 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Gatley, JR. (US 2004/0258546 A1, published Dec. 23, 2004
(“Gatley”)). Final Act. 2.
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Gatley in view of Hasbargen et al. (US 7,354,244 B2, issued Apr. 8, 2008
(“Hasbargen”)). Final Act. 6.
3. Claims 5 and 9 are rejected under 35 U.S.C. § 103 as
unpatentable over Gatley. Final Act. 8.
OPINION
Rejection 1: Claims 1–3 and 6–8
The Examiner rejects claims 1–3 and 6–8 as anticipated by Gatley.
Final Act. 2. The Examiner finds that Gatley discloses the invention of
claim 1, including:
the exhaust volute having a cut-off (A) (see Examiner Annotated
Fig below and note that a “cut-off” of the exhaust volute is being
interpreted as a cut-off point at which the volute shape of the
exhaust volute ends (i.e. a point at which it stops rotating along
the volute shape) - as can be observed in the Figs. 5, 6 and the
examiner annotated Fig, the exhaust volute stops rotating along
the volute shape at point (A)) at a cut-off angle relative to the
rotation axis . . . the cut-off angle extending at an angle that is no
more than twenty degrees positive from horizontal (as can be

2 The Appellant also submits arguments requesting the Board to overrule the
Examiner’s objections to dependent claims 2–5 and 7–9. Appeal Br. 14–15.
However, because such claim objections relate to petitionable matters and
not to appealable matters, we decline to reach them. In re Berger, 279 F.3d
975, 984 (Fed. Cir. 2002) (stating that there are many kinds of decisions
made by examiners that are not appealable to the Board when they are not
directly connected with the merits of issues involving rejections of claims).
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observed in the examiner annotated Fig, the cut-off angle of cut-
off (A) relative to the rotation axis extends at an angle from
horizontal that is approximately 0º which is less than twenty
degrees positive as claimed).
Final Act. 3 (emphasis added).
The Appellant argues that the rejection is improper because “[t]he
Examiner arbitrarily defines the term ‘cut-off’ in a manner inconsistent with
the patent specification to arrive at the anticipation rejection.” Appeal Br. 4.
According to the Appellant, “[a]s the term is used in the specification, the
‘cut-off’ is the end of the exhaust volute adjacent the outlet opening 36,” and
in particular, “the end of the exhaust volute closest to the fan center of
rotation.” Appeal Br. 5, citing Spec. ¶ 18, Fig. 3; Reply Br. 2. In support
thereof, the Applicant submits US 8,591,183 and US 6,767,184 in which
“the cut-off is identified as the end of the exhaust volute closest to the fan
center of rotation, and not the end of the exhaust volute farthest from the fan
center of rotation.” Appeal Br. 5; Reply Br. 2. We agree with the
Appellant’s construction.
The Examiner responds that “the term ‘cut-off’ is not defined in the
specification,” and “was given the following broadest reasonable
interpretation” in the rejection. Ans. 11. In that regard, the Examiner asserts
that “[i]n the instant case, the Examiner has read the claims in light of the
specification as opposed to reading limitations of the specification into the
claims,” and that “[t]he point at which the volute shape of the volute ends …
is a ‘cut-off’ of the volute.” Ans. 12–13; see also Ans. 15.
However, it is not apparent why a person of ordinary skill in the art
would have understood the term “cut-off” as encompassing the annotated
point “A” of Gatley when the Specification illustrates the cut-off as being
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the end of the exhaust volute closest to the fan center of rotation, such end
being also present in Gatley. Compare Spec. Fig. 3, cut-off 40 with Gatley
Fig. 6 and Appeal Br. 8 (annotated Gatley Fig. 6). We further find the
evidence proffered by the Appellant probative in showing that the term “cut-
off” is used, and thus, would have been understood, by those in the art, to
refer to the end of the exhaust volute closest to the fan center of rotation as
argued by the Appellant. See also Reply Br. 3 (“These [other] references do
not indicate that an exhaust volute has more than one cut-off and do not
support the Examiner’s unduly broad definition.”). As the Appellant notes,
the Examiner has not provided any evidence in support of the broader
definition. Reply Br. 2. Accordingly, we agree with the Appellant that
“[t]here is no basis for the meaning ascribed to ‘cut-off’ by the Examiner,
and the Examiner’s definition is inconsistent with the specification and
otherwise unreasonable.” Appeal Br. 7.
Thus, we further agree with the Appellant that under the proper
construction of “cut-off,” “Gatley does not disclose an exhaust volute with a
cut-off angle of no more than twenty degrees,” and instead, discloses a cut-
off angle of approximately 60 degrees positive from horizontal. Appeal Br.
7–8 (annotated Figure 6 of Gatley); see also Reply Br. 4. “Anticipation
requires the presence in a single prior art reference disclosure of each and
every element of the claimed invention, arranged as in the claim.”
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984). The recited cut-off angle is not
present in Gatley.
Therefore, we reverse the anticipation rejection of independent claim
1, as well as of independent claim 6, which includes substantively the same
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limitations as claim 1. We also reverse the anticipation rejection of claims 2,
3, 7, and 8 that ultimately depend from claim 1 or 6. The Appellant’s
remaining arguments directed to the interpretation of “exhaust port” (Appeal
Br. 8–10), and dependent claims 2, 3, 7, and 8 (Appeal Br. 11–12) are moot.

Rejection 2: Claim 4
The Examiner’s application of Harsbargen does not correct the
erroneous claim interpretation discussed above relative to independent claim
1 from which claim 4 depends. Final Act. 6. Accordingly, we reverse this
rejection as well.

Rejection 3: Claims 5 and 9
The Examiner rejects claims 5 and 9 as unpatentable over Gatley.
Final Act. 8. These claims recite that “the cut-off angle is negative from
horizontal.” Appeal Br. 17, Claims App. In rejecting these claims, the
Examiner finds and concludes:
[Gatley] teaches that the cut-off angle of cut-off (A) relative to
the rotation axis extends at an angle from horizontal at
approximately 0°. Thus, Gately [sic, Gatley] fails to explicitly
teach that this angle is negative from horizontal. However, this
limitation is deemed by examiner to be a simple matter of design
choice.
Final Act. 8; see also Ans. 19 (“such modification would have been
considered a mere design consideration which fails to patentably distinguish
over the prior art.”).
Accordingly, this rejection is also premised on the same erroneous
construction of the claim term “cut-off” as discussed above. See also
Appeal Br. 12 (“The Examiner has carried over the incorrect definition in
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rejecting claims 5 and 9 as being obvious in view of Gatley”). In addition,
as the Appellant points out, the Examiner does not articulate a reason to
modify Gatley to have a negative cut-off angle, whereas “an advantage of
facilitating a transition to low-clearance horizontal flue piping is expressly
disclosed and illustrated for a blower assembly configuration with a negative
cut-off angle.” Reply Br. 7–8 (citing Spec. ¶ 19). Indeed, we find the
Examiner’s assertion of design choice to be conclusory and insufficient to
support the conclusion of obviousness. See In re Chu, 66 F.3d 292, 298–99
(Fed. Cir. 1995).
Therefore, for the above reasons, this obviousness rejection of claims
5 and 9 is also reversed.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–8 102(a)(1) Gatley 1–3, 6–8
4 103 Gatley, Hasbargen 4
5, 9 103 Gatley 5, 9
Overall
Outcome
1–9
REVERSED