To Combine or not to Combine
| April 16, 2018
Ex parte Tesseir et al.
October 2, 2014
Before PTAB APJ Panel: Kerins, Staicovici & Woods.
Summary: The Board affirmed many of the rejections in this appeal of a Final Rejection. But the Board found that there was no motivation to support the obviousness rejection of claim 13 and therefore reversed the rejection of that claim.
要旨:
米国特許庁審判部は、最後の拒絶に対する本件アピール(拒絶査定不服審判に相当)に関し、審査官の拒絶理由の大部分を認めた。その一方、クレーム13に関する自明性の拒絶については、拒絶理由をサポートするだけの十分なモチベーション(動機付け又は理由付け)が存在しないと判断し、クレーム13に関する拒絶を覆した。具体的には、いわゆる後知恵を利用しなければ、審査官が主張するような引例の組み合わせを行なうだけの合理的な理由が存在しないと判断された。より具体的には、主引例は、既にリモート制御という構成要件を利用しており、特段の理由もなく、第2引例のリモート制御技術を組合わせるのは不合理であると判断された。
Details:
The claim recited a zoned HVAC system having two or more zones of a building. The components included “a local gateway,” “a first wireless transceiver for wirelessly communicating with the local gateway of the building or other structure,” and “a second wireless transceiver for wirelessly communicating with the local gateway of the building or other structure.” Controllers were coupled to the transceivers so that a user could adjust parameters in multiple zones of a building.
The Examiner had combined a primary reference with a secondary reference to meet the claimed invention.
It would have been obvious … to modify the apparatus of [the primary reference] with a wireless gateway communication, remote environmental or safety monitor and remote temperature control in view of the [secondary reference] so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside the utility.
(Emphasis added). The Applicant challenged the rejection for failing to show an objective reason for modifying the primary reference in the manner proposed by the Examiner and for relying instead upon Applicant’s specification.
The Board agreed that there was inadequate motivation, but applied slightly different reasoning. It began by observing that the system of the primary reference included, already, a remote control.
the Examiner’s rejection [is] insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include … [the] remote system [of the secondary reference in] the temperature remote regulating system of [the primary reference]. The Examiner has not provided any findings that either [the primary or the secondary references] recognized a problem with the remote technique used in the [primary reference]. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of [the secondary reference] to modify the temperature remote system of [the primary reference] in the manner claimed.
Comments:
Where a primary reference does not disclose an element in the claim, but does disclose a component that performs the same function as that claimed element, it is not enough for the Examiner to cite a secondary reference that discloses the claimed element and presume that the references are combinable to meet the claimed invention. The Examiner must also show that the references identify some problem or shortcoming with the element in the primary reference.
