Wang, Jinliang et al.

Patent Trials and Appeals Board

Dec 31, 2020

2017008481 (P.T.A.B. Dec. 31, 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.
13/703,023 12/09/2012 Jinliang Wang 54143US02 (10-106-2) 5164
50791 7590 12/31/2020
BACHMAN & LAPOINTE, P.C. (UTC)
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510-2802
EXAMINER
OSWALD, KIRSTIN U
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/31/2020 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 JINLIANG WANG and PARMESH VERMA
____________________

Appeal 2017-008481
Application 13/703,023
Technology Center 3700
____________________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON REHEARING

STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52, Appellant1 filed a Request for
Rehearing on September 10, 2019 (“Req. Reh’g”) seeking reconsideration of
our Decision on Appeal mailed July 10, 2019 (“Dec.”). We have
jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b). Except
for any portion specifically withdrawn on rehearing, this Decision on
Rehearing incorporates the Decision on Appeal, including any abbreviations

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. In a
Supplemental Appeal Brief filed April 8, 2020 (“Supp. Appeal Br.”)
Appellant notifies that Carrier Corporation ceased to be a wholly owned
subsidiary of United Technologies Corporation, and identifies the real party
in interest as Carrier Corporation. Supp. Appeal Br. 1–2.
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defined therein for citations to the record, in accordance with 37 C.F.R.
§ 41.52(a)(1).

ANALYSIS
As set forth in 37 C.F.R. § 41.52(a)(1), a request for rehearing “must
state with particularity the points believed to have been misapprehended or
overlooked by the Board.” A request for rehearing is not an opportunity to
rehash arguments raised in the briefs on appeal, nor is it an opportunity to
merely express disagreement with a decision. Furthermore, arguments not
raised and evidence not previously relied upon in the briefs on appeal are not
permitted, except in the limited circumstances set forth in
§§ 41.52(a)(2)–(4).
Appellant maintains the Examiner and the Board erred in failing to
clearly articulate and explain the nature of the modification of Tsuneyoshi.
Req. Reh’g 3–6. Appellant contends, by admitting that a markup included
with the Declaration of one of the inventors, Parmesh Verma, could look
like the modification to Tsuneyoshi, and then pulling back this admission
without providing any clarity as to why, the Examiner has not explained the
proposed modification to Tsuneyoshi and instead harbors a “Secret
Examiner Modification.” Id. at 3–4. Appellant similarly contends, by
averring during the oral argument that the markup is “not exactly” the
modification to Tsuneyoshi, the Board has failed to explain the modification
and harbors a “Secret Hearing Modification.” Id. at 4; Tr. 13:13–16.
Appellant further contends the Board’s determination that “the Examiner’s
rejection notifies Appellant[] of the proposed modification to Tsuneyoshi”
represents a “Secret Decision Modification” and is clear error. Req.
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Reh’g 4–5; Dec. 6. Per Appellant, “[i]f the rejection at all ‘notifies . . . the
proposed modification’, then it would have been easy for the Board to itself
provide a mark-up of Tsuneyoshi.” Id. (quoting Dec. 6).
Appellant’s allegations of failure by the Examiner and the Board to
explain the modification to Tsuneyoshi and the alleged secret modifications
are based on how the Examiner and the Board treated Mr. Verma’s
markup—the Examiner’s original admission that the markup could look like
the modification to Tsuneyoshi and then the subsequent refusal of the
Examiner and the Board to confirm whether or not the markup depicts the
modification. A markup, however, is not required to explain a modification
to the prior art. Such a requirement would eviscerate the long-standing
principle that bodily incorporation is not the standard for obviousness. See
e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). Appellant focuses on Mr.
Verma’s markup and ignores the Examiner’s and the Board’s explanation of
the modification to Tsuneyoshi. As set forth in the Final Office Action, the
Examiner finds Tsuneyoshi discloses all of the limitations of independent
claim 1, including a heat rejection heat exchanger, a first ejector, a first
separator, a second ejector, a second separator, and a second heat absorption
heat exchanger coupled to the second separator and second ejector, but does
not disclose a first heat absorption heat exchanger coupled to the first
separator and the first ejector. Final Act. 5–6. The Examiner further finds
Ohta teaches a first heat absorption heat exchanger coupled to a first
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separator and a first ejector, and proposes to modify Tsuneyoshi to include a
first heat absorption heat exchanger coupled to the first separator and the
first ejector, as Ohta teaches. Id. at 6. In the Decision on Appeal, the Board
reiterates the Examiner’s findings and explanation of the modification, and
the Board includes marked versions of Tsuneyoshi’s Figure 1 and Ohta’s
Figure 3 to illustrate the Examiner’s findings. Dec. 4–6. The Board also
addresses Appellant’s argument that the Examiner has not identified a
specific modification to Tsuneyoshi and explains how the rejection notifies
Appellant of the modification. Dec. 6–7. In particular, the Board explains
“as set forth in the rejection, the Examiner proposes to modify Tsuneyoshi’s
teachings to include a first heat exchanger coupled to the first separator and
first ejector, as taught by Ohta, to provide zoned cooling.” Id. at 6. For these
reasons, Appellant has not persuaded us that the Examiner and the Board
have failed to explain the modification or misapprehended or overlooked
any matter.
Appellant also argues that the Board’s characterization of the
Examiner’s treatment of Mr. Verma’s markup as a “refusal to acknowledge
the schematic” is clear error because the Examiner admitted the markup
could look like the modification to Tsuneyoshi and then pulled back this
admission without clarification. Req. Reh’g 5–6; Dec. 6. Nonetheless,
Appellant’s argument is unavailing because a markup is not required to
show obviousness. The Examiner’s original finding that Mr. Verma’s
markup could look like the modification to Tsuneyoshi and the subsequent
withdrawal thereof without clarification does not abrogate the explanation of
the modification in the Final Office Action and the reiteration thereof in the
Decision on Appeal. Final Act. 5–6; Dec. 4–7.
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Appellant alleges that KSR2 is not relevant to the present case because
the proposed combination in KSR is a drop-in substitution or bodily
incorporation. Req. Reh’g 6–7. Appellant further alleges, in view of the
Examiner’s statement that obviousness is not limited to similar baselines and
similar modifications and the Board’s statement that the standard for
obviousness is not bodily incorporation, the Examiner and the Board
indicate that KSR is not applicable to this case. Id. at 7–8. We disagree with
these allegations because KSR does not limit obviousness to drop-in
substitutions. For example, as set forth in the Decision on Appeal, per KSR,
“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Dec. 9 (citing KSR, 550 U.S. at 417).
Appellant also argues there has been no factfinding or explanation to
support a KSR-based rejection. Req. Reh’g 8–10. According to Appellant,
obviousness based on the use of a known technique to improve a similar
device under KSR requires that the same modification to a baseline taught in
the secondary reference be applied to the primary reference having a
comparable baseline. Id. at 9. With this characterization, Appellant alleges
“the [E]xaminer (and Board) has not even attempted to assert that, let alone
explain how, the presently claimed subject matter represents the same
improvement over Tsuneyoshi[] that Ohta represents over its own base
reference.” Id.
Appellant’s argument is not convincing, as we lay out such facts and
explanation on pages 8–10 of the Decision on Appeal. Both Tsuneyoshi and

2 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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Ohta disclose refrigeration cycles, i.e., similar baselines, with Tsuneyoshi
having one heat absorption heat exchanger and Ohta having two heat
absorption heat exchangers that provide zoned cooling, i.e., modification to
Ohta’s baseline. Dec. 8. The “Examiner proposes to modify Tsuneyoshi’s
refrigeration cycle from utilizing only a single heat absorption heat exchanger
to using two heat absorption heat exchangers to provide zoned cooling,” i.e.,
applying modification to Tsuneyoshi’s baseline. Id. at 9.
Appellant contends “[t]here has been no factfinding/explanation to
support a Fulton-based rejection.” Req. Reh’g 10 (emphasis omitted).
According to Appellant, Fulton3 regards the obviousness of substituting a
feature that is described as preferred for another. Id. With this
understanding of Fulton, Appellant maintains “the specific teaching of the
secondary reference is what the Board ignores as merely preferred.” Id.
Appellant’s argument is not persuasive of error because the rejection
is not based on Fulton. Neither the Examiner nor the Board relies on the
teaching of Ohta, i.e., the secondary reference, as being preferred. Rather,
the Board cites to Fulton in its analysis of Appellant’s argument that a
person of ordinary skill in the art would have made a different combination
than that of the Examiner. Dec. 10. As we explain in the Decision on
Appeal, given the holding in Fulton that obviousness does not require a
particular combination to be the preferred or most desirable, Appellant’s
argument that a person of ordinary skill in the art would have combined the
teachings of Tsuneyoshi and Ohta differently than the Examiner proposes to
do is not persuasive of error in the Examiner’s combination. Id.

3 In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004).
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In regard to the rejection of claim 9 based on Tsuneyoshi, Ohta, and
Ogata, Appellant argues that the Board’s reliance on Fulton is misdirected
because “[i]t is not as if Tsuneyoshi et al. expressly taught CO2 in the staged
configuration that Tsuneyoshi illustrates but indicated ethane was preferred.”
Req. Reh’g 11. Appellant’s argument is not persuasive of error because, in
the Decision on Appeal, we rely on Fulton to address Appellant’s assertion
that Tsuneyoshi’s disclosure of ethane as the refrigerant teaches away from
the claimed invention, which requires the refrigerant to include carbon
dioxide. Dec. 13. Indeed, in Fulton, the court expressly held “[t]he prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d at 1201.
Appellant further contends the Examiner and the Board have not
addressed numerous points. Req. Reh’g 11–12. We disagree that the Board
has not addressed the points identified by Appellant. Appellant argues: “The
[E]xaminer and Board did not address that the asserted zoned cooling
motivation does not apply to a room air conditioner of Tsuneyoshi. Reply
Br. pp. 11-12. At p. 9 of the [D]ecision, the Board merely made the
deficient KSR citation noted above.” Req. Reh’g 11. As Appellant
acknowledges, we address this argument in the Decision on Appeal. See
Dec. 7–9 (addressing the zoned cooling rationale). Appellant also argues the
Examiner and the Board ignore the arguments in Mr. Verma’s Declaration
that a person of ordinary skill in the art would not have combined the
teachings of Tsuneyoshi and Ohta as the Examiner proposes. Req.
Reh’g 11–12. We address this argument on pages 9–10 in the Decision on
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Appeal. Appellant further argues the Examiner and the Board fail to address
the discussion in section 11.a of Mr. Verma’s Declaration regarding the
Examiner’s modification to Tsuneyoshi, as depicted in Mr. Verma’s markup,
being inoperable and nonsensical. Req. Reh’g 12. Appellant, however, does
not argue that the Examiner’s modification to Tsuneyoshi would be
inoperable and nonsensical in its briefs on appeal. Rather, in the briefs on
appeal, Appellant argues the Examiner refused Appellant’s request for
clarification as to whether the markup and corresponding discussion in
section 11.a of Mr. Verma’s Declaration represent the Examiner’s
modification to Tsuneyoshi (Appeal Br. 23; Reply Br. 24–25, 36, 38), and
we address the Examiner’s treatment of Mr. Verma’s markup in this
Decision on Rehearing, as well as on page 6 of the Decision on Appeal.
Appellant argues the Board does not address the arguments for the
dependent claims subject to the ground of rejection based on Tsuneyoshi and
Ohta, i.e., dependent claims 2, 4–8, and 10–15. Req. Reh’g 12 (citing
Appeal Br. 20, 29; Reply Br. 29–30). Contrary to Appellant’s argument, we
address the arguments for these dependent claims on page 11 of the Decision
on Appeal.
Lastly, Appellant argues the Board’s reliance on KSR in the Decision
on Appeal represents a new ground of rejection that the Board has failed to
so designate. Req. Reh’g 12. We disagree. In the Decision on Appeal, we
do not introduce a new ground rejection based on KSR, but instead explain
that KSR supports the Examiner’s reason for combining the teachings of
Tsuneyoshi and Ohta. Dec. 9.

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CONCLUSION
Appellant has not persuaded us that we misapprehended or
overlooked a particular point in the Decision on Appeal. We, therefore,
deny Appellant’s request to modify the outcome of the Decision on Appeal.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C. § References/Basis Denied Granted
1, 2, 4–8,
10–15 103(a) Tsuneyoshi, Ohta
1, 2, 4–8,
10–15
3 103(a) Tsuneyoshi, Ohta, Dubitzky 3
9 103(a) Tsuneyoshi, Ohta, Ogata 9
Overall
Outcome 1–15

Final Outcome of Appeal after Rehearing:
Claim(s) 35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–8,
10–15 103(a) Tsuneyoshi, Ohta
1, 2, 4–8,
10–15
3 103(a) Tsuneyoshi, Ohta, Dubitzky 3
9 103(a) Tsuneyoshi, Ohta, Ogata 9
Overall
Outcome 1–15

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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).

DENIED