DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosures of the prior-filed applications, 14/616,126 & 15/797,367, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, the applications filed prior to the most recent preceding application (16/773,030) fail to provide adequate support for at least the limitations of independent claim 1 wherein three accommodation spaces are formed between the housing and the fan module at different corners of the housing, wherein the ventilation system comprises a power box comprising a first circuit board, a junction box electrically connected to the first circuit board and the lamp module, the power box and the junction box being located in different accommodation spaces. Claims 2-7 & 10-13 also appear to include limitations first supported by 16/773,030. Accordingly, the claims pending in this application are not entitled to the benefit of the earlier applications.
Examiner’s Comment on Priority
The instant application is a continuation of 16/773,030, which is a continuation-in-part of 15/797,367; which is a continuation-in-part of 14/616,126. As set forth in MPEP § 2152.01, if an application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. Different claims in the same application may be entitled to different effective filing dates. As set forth above, the claims currently pending in this application contain subject matter introduced in 16/773,030, and therefore not fully supported by the specification and claims of the earlier applications (14/616,126 & 15/797,367). As a result, the claims in this application may be seen to have an effective filing date equal to the actual filing date of 16/773,030 (i.e. 1/27/2020).
The disclosure of prior-filed application 14/616,126 was published as US 2016/0108925 on 21 April 2016; and the disclosure of prior-filed application 15/797,367 was published as US 2018/0066838 on 08 March 2018. Since these publication dates are more than one year before the effective filing date of the invention(s) currently claimed, the published documents are available as prior art under at least the provisions of 35 U.S.C. 102(a)(1), and are not subject to the exceptions under 35 U.S.C.102(b)(1).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations wherein “the second circuit board is a circular board and comprising a water-proof structure” (claim 5) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are further objected to because of the following issues:
Fig. 1H – the leader line from 1211 appears to be pointing to the hub 1221. As the specification appears to contain a similar error, it is unclear if the reference 1211 in fig. 1H was actually intended to identify hub 1221 or inlet opening 1211.
Figs. 1D & 2C –the leader line from 133 (lamp cover) appears to be indicating the optical component (132) instead.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
1214 is referred to throughout as “a pillow” (e.g. para. 48, line 9); however, this appears to be a mistranslation or is otherwise an unusual usage of the term which is not clearly re-defined.
Para. 50, line 2: “located at one of the accommodation space P1” appears it should read either “located at the accommodation space P1” or “located at one of the accommodation spaces P” or equivalent.
Para. 52, line 3: “the electrically connection” appears it should read “the electrical connection” or equivalent.
Para. 52, line 7: “output” appears it should read “outputs” or equivalent.
Para. 58: “hub 1211” (several instances in para. 58) should read “hub 1221” (see fig. 1I; para. 58, line 1); 1211 is already used for “inlet opening 1211”.
Appropriate correction is required.
Claim Objections
Claims 1, 2 & 8-11 are objected to because of the following informalities:
Claim 1, lines 2-3: “the ventilation fan with the lamp are adapted” should read “the ventilation fan with the lamp is adapted” or equivalent.
Claim 1, lines 18-19 & lines 21-22: “one of the accommodation space” should read “one of the accommodation spaces”.
Claim 1, line 34: “a height of the housing” should read “the height of the housing” since this height is already established in lines 32-33.
Claim 2, line 3: “a frame comprises a pillow…” should read “a frame comprising a pillow…” or equivalent.
Claims 8 & 9, lines 4-6: “the lamp module comprises at least one elastic element, and the at least one elastic element penetrating through the slot…” appears it should read either “the lamp module comprises at least one elastic element, the at least one elastic element penetrating through the slot…” (i.e., delete “and”), or “the lamp module comprises at least one elastic element, and the at least one elastic element penetrates through the slot…” (i.e., replace “penetrating” with “penetrates”), or equivalent.
Claim 10, line 2: “less than 4 inch” should read “less than 4 inches”.
Claim 12, line 2: “a value of 1/4 of perimeter of the first opening” appears it should read “a value of 1/4 of a perimeter of the first opening” or equivalent.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-18 are directed to “A ventilation system comprising a ventilation fan with a lamp for installing to a ceiling having an installation opening”; however, the claims also recite:
Claim 1: “the first opening is aligned with the installation opening” (lines 6-7);
Claim 1: “a lamp module disposed out of the installation opening and covering the installation opening, wherein the lamp module and the housing are located at opposite sides of the installation opening of the ceiling, a gap is formed between the lamp module and the ceiling…a support disposed between the ceiling and the lamp module” (lines 24-29);
Claim 14: “wherein the support contacts the ceiling”.
These limitations render the respective claims indefinite as they appear to be claiming elements of the ceiling, which is not part of the “ventilation system” per se. In other words, it is unclear if the ceiling and installation opening are a required part of the claimed system or are merely recited to illustrate the intended use of the ventilation system.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Regarding claims 1 & 4, the term “pillow” appears to be used by these claims to mean a “support element” or a “mounting element” (or equivalent) while the accepted meaning is i.e., “a cushion”. The term is indefinite because the specification does not clearly redefine the term. As mentioned above with respect to the disclosure, this appears to be the result of a mistranslation. While a potentially appropriate alternative definition exists (e.g. “pillow” being defined as “a piece of wood or metal used as a support; a block or bearing”; as in a “pillow block bearing”) this usage is uncommon, especially in the particular field with which the current invention is concerned, such that the term would not necessarily be associated with this alternative definition without a clear redefinition.
Claim 1 recites the limitation "the bottom of the frame" in line 11. There is insufficient antecedent basis for this limitation in the claim. Additionally, it is not clear how “bottom” is being defined. Based on the applicant’s figures, it appears that the “pillow” would be disposed at the upper side of the frame when installed in the ceiling (e.g. see figs. 1D vs 1I).
Claim 1 further recites “the frame comprises a pillow” in line 11 but then recites “the frame and the pillow are connected with each other” in line 12, raising doubt as to whether the pillow is actually part of the frame or a distinct component.
Claim 5 recites “…wherein the second circuit board is a circular board and comprising a water-proof structure”. This renders the claim indefinite as it is unclear if “comprising a water-proof structure” means that the ventilation system further comprises a water-proof structure (i.e. to enclose the second circuit board), or if the second circuit board itself comprises a water-proof structure.
Claim 7 recites “…the power box is connected to the mounting portion and then disposed in the housing with the fan module”. It is unclear if this is a method limitation defining the required method of assembly or a product-by-process limitation which is intended to only to define the product. As set forth in MPEP § 2173.05(p), while a product-by-process limitation that defines the claimed product in terms of the process by which it is made is proper, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
Claims recited in the section heading above but not specifically discussed are rejected due to dependency upon at least one rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-4, 6 & 8-18 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Penlesky et al. (US 2013/0130612; hereafter Penlesky) in view of Huang et al. (US 2018/0066838; hereafter Huang) and Lin et al. (US 2010/0068987; hereafter Lin).
Regarding claim 1, Penlesky discloses (figs. 1-27; especially figs. 1, 5, 6 & 8-26) a ventilation system (10) comprising a ventilation fan with a lamp (see fig. 1) for installing to a ceiling (para. 57; para. 104, lines 11-15) having an installation opening (see below), wherein the ventilation fan with the lamp is adapted for installing to the installation opening of the ceiling, the ventilation fan comprises:
a housing (12) comprising a top plate (i.e. closed end of housing opposite first opening 158) and a side wall (i.e. lateral walls of the housing; see figs. 1, 6, 8-10, 15-18 & 22), wherein the top plate and the side wall are connected with each other to form a first opening (158; see figs. 1 & 9), and an air outlet (22) is formed at the side wall (e.g., figs. 1, 6, 16);
a fan module (14; figs. 20 & 21) disposed in the housing, the fan module comprises a frame (incl. at least 138), an impeller (134) disposed in the frame and a motor (28) connected to and driving the impeller to rotate, the frame comprises a pillow (136; i.e. a support plate, as understood) disposed at the bottom of the frame (see fig. 21), the frame and the pillow are connected with each other to form an inlet opening (i.e. vertical / circular inlet at center of fan 134; see fig. 20; para. 90, lines 11-13) and an outlet opening (also labeled at 22; see fig. 20 & 22; para. 90, lines 11-14), the inlet opening is aligned with the first opening (see figs. 6 & 22), the outlet opening communicates with the air outlet of the housing (see figs. 1, 6, 19, 22), three accommodation spaces are formed between the housing (12) and the fan module (14) at different corners of the housing and disposed away from the air outlet of the housing, respectively (see figs. 6, 13, 14, 22, & 23; e.g. two of the three accommodation spaces comprising junction box 90 and power box 96, respectively; and the third accommodation space being open and located diagonally opposite to the air outlet);
a power box (96) disposed in the housing and located at one of the accommodation spaces (as shown; see para. 75, 76 & 97; para. 97, lines 6-9: “all power flowing to the motor 28 can locally originate from the motor control compartment 96”),
a junction box (90) disposed in the housing and located at one of the accommodation spaces (as shown; see para. 74), wherein the power box and the junction box are located at different accommodation spaces (as shown); and
a lamp module (including at least 16, 26, 148; see figs. 1, 25 & 26);
wherein the junction box (90) is electrically connected to the power box (i.e. to power the fan) and the lamp module (via receptacles 92; see para. 74, lines 22-25; para. 76, lines 17-20; para. 110, lines 5-8);
wherein the impeller comprises a hub (see below),
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Penlesky further discloses that the lamp module grille 148 can take any shape (para. 101), can include louvres 156, the location of which can be selected “based on aesthetics, functionality and other considerations” (para. 104), and the illumination device 18 can include LEDs (para. 110); or the system may comprise other illumination configurations (para. 111).
Regarding the limitations wherein the ventilation fan with the lamp is for installing to a ceiling having an installation opening, and wherein the ventilation fan with the lamp is adapted for installing to the installation opening of the ceiling: as set forth above, Penlesky discloses that the ventilation system may be installed in a structure, which may include a ceiling. A person of ordinary skill in the art would have understood that the ventilation system of Penlesky is capable of (and intended for) installation in a ceiling having an installation opening, as this is the conventional / well-known intended use of this type of ventilation fan (e.g., installation in an opening in a ceiling for a bathroom, etc.). Furthermore, said person of ordinary skill in the art would have recognized that, when conventionally installed in an installation opening, the first opening of the housing would be aligned with the installation opening in the ceiling (i.e. to permit air from the room to be exhausted via the fan), and the lamp module would be disposed out of the installation opening and covering the installation opening, with the lamp module and the housing located at opposite sides of the installation opening of the ceiling. However, to promote compact prosecution, it is noted that each of these features is also taught by Huang, below.
Penlesky does not explicitly disclose the additional limitations wherein the power box comprises a first circuit board, the first circuit board is disposed in the power box; wherein the junction box is electrically connected to the first circuit board of the power box; wherein a gap is formed between the lamp module and the ceiling, and the gap serves as an air inlet of the ventilation fan; wherein a support is disposed between the ceiling and the lamp module; wherein a ratio of a height of the hub to a height of the housing is less than 0.5; and wherein a ratio of a height of the impeller to a height of the housing is greater than 0.65.
Huang teaches (figs. 5A-5D; additional embodiments in figs. 1A-4 & 6A-8) a ventilation system comprising a ventilation fan (2) with a lamp for installing to a ceiling (C) having an installation opening (C2), wherein the ventilation fan with the lamp are adapted for installing to the installation opening of the ceiling (as shown), the ventilation fan comprising:
a housing (21) comprising a top plate (218) and a side wall (217), wherein the top plate and the side wall are connected with each other to form a first opening (219), the first opening is aligned with the installation opening (as shown), and an air outlet (212) is formed at the side wall;
a fan module (22) disposed in the housing, the fan module has an inlet opening (2211) and an outlet opening (2212), the inlet opening is aligned with the first opening (as shown), the outlet opening communicates with the air outlet of the housing (as shown);
a lamp module (23) is disposed out of the installation opening and covering the installation opening, wherein the lamp module and the housing are located at 22opposite sides of the installation opening of the ceiling (as shown), a gap (I) is formed between the lamp module and the ceiling (e.g., fig. 5D), and the gap serves as an air inlet of the ventilation fan (para. 92); and a support (25) is disposed between the ceiling (C) and the lamp module (23).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to adapt the ventilation system of Penlesky for installing to an installation opening of a ceiling, such that the first opening of the housing is aligned with the installation opening in the ceiling, and the lamp module is disposed out of the installation opening and covering the installation opening, with the lamp module and the housing located at opposite sides of the installation opening of the ceiling, in view of the teachings of Huang, as the use of a known technique (i.e. installing a ventilation fan with a lamp in a ceiling installation opening with the lamp module extending into the room / covering the ceiling opening, while the housing of the ventilation fan is above the ceiling, opposite to the lamp module; as in Huang) to improve a similar device (i.e. the ventilation fan / lamp of Penlesky) in the same way (e.g., enabling the device to provide light and ventilation for the desired room, while concealing the less visually-appealing ceiling opening and ventilation fan housing structure from view, as is otherwise well-known in the art).
It would have been further obvious to a person having ordinary skill in the art to modify the ventilation system of Penlesky such that a gap is formed between the lamp module and the ceiling, the gap serving as an air inlet of the ventilation fan, and a support is disposed between the ceiling and the lamp module, in view of the teachings of Huang, as the simple substitution of one known element (the conventional lamp module of Penlesky) for another (the flat plate / inlet gap-type lamp module of Huang, having such a support arrangement) to obtain predictable results (e.g., providing the ventilation fan of Penlesky with a lamp module which can help to reduce noise and hide the internal structure of the ventilation fan to present a more elegant appearance; as suggested by Huang [para 43 & 110]).
Lin teaches (e.g. figs. 3 & 6C) a ventilation fan system comprising a power box (i.e. space 270, within cover 27; see fig. 6C) having a first circuit board (25; i.e., a circuit board comprising at least an AC/DC converter 250; see para. 56) which provides power to a second circuit board (30) provided on the fan motor (22; e.g., a DC motor). Lin suggests (para. 48) that, “compared with the AC fan, the DC fan has the advantage of lower power consumption”.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the ventilation system of Penlesky by providing a first circuit board (i.e., an AC/DC converter board) disposed in the power box (i.e., to provide power to the fan motor), wherein the junction box is electrically connected to the first circuit board of the power box (i.e. to provide AC power to the first circuit board, for conversion to DC power), in view of the teachings of Lin, to enable the ventilation system to utilize a DC fan motor, permitting reduced power consumption as compared to an AC fan motor, as further suggested by Lin.
With respect to the limitation wherein a ratio of a height of the hub to a height of the housing is less than 0.5, Lin further teaches (fig. 6C) an impeller (23) comprising a hub (23a) having a height (h), the impeller having a height (H), wherein a ratio of the height of the hub to the height of the impeller is between 0.3 and 0.55 (see para. 25; para. 52, lines 10-12; published claim 17). As the height of the housing (24) is necessarily greater than the height of the impeller (i.e. in order to accommodate the impeller therein), Lin therefore implicitly teaches that a ratio of the height of the hub to the height of the housing would be in a range from less than 0.3 to less than 0.55.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the ventilation system of Penlesky such that the a ratio of a height of the hub to a height of the impeller is between 0.3 - 0.55 (i.e. so that the height of the hub to a height of the housing is less than 0.3 - 0.55), in view of the teachings of Lin, as the use of a known technique (i.e. providing an impeller having such a hub/impeller height ratio, as in Lin) to improve a similar device (the ventilation system of Penlesky) in the same way (e.g., enabling a compact arrangement via a low-profile hub, etc.).
As set forth in MPEP § 2144.05(I), where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. The above modification to have a ratio of a height of the hub to a height of the impeller of between 0.3 – 0.55 would result the system of Penlesky having a ratio of the height of the hub to the height of the housing in the range of less than 0.3 to less than 0.55, which overlaps the claimed range of “less than 0.5”.
While Penlesky does not explicitly disclose the remaining limitation wherein a ratio of a height of the impeller to a height of the housing is greater than 0.65, and to promote compact prosecution with respect to the previous limitation wherein a ratio of a height of the hub to a height of the housing is less than 0.5, as set forth in MPEP § 2144.05(II)(A), where the only difference between the prior art and the claims is a change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, the claimed invention is unpatentable over the prior art, even though the changes of the kind may produce better results (citing Smith v. Nichols and In re Williams).
In the instant case, it appears that the only difference between the system of Penlesky (as previously modified) and that of claim 1 amounts to a change in form or proportion (i.e. the relative proportions of the hub and housing; the relative proportions of the impeller and the housing).
See also MPEP § 2144.04(IV)(A), which states that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (citing Gardner v. TEC Syst., Inc.).
Finally, it is noted that the applicant’s specification does not appear to set forth any evidence of criticality or unexpected results arising from the claimed proportions. While the specification states “according to the detailed design of the size of the housing 11 and the fan module 12 described above, the performance of the ventilation fan 1 can be improved” (para. 62), as set forth in MPEP § 716.02, “any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected.”
As a result, all of the limitations of claim 1 are met, or are otherwise rendered obvious.
Regarding claim 2, as discussed with respect to claim 1 above, Lin teaches (e.g. figs. 3 & 6C) a ventilation fan system comprising a power box (i.e. space 270, within cover 27; see fig. 6C) having a first circuit board (25; i.e., a circuit board comprising at least an AC/DC converter 250; see para. 56) which provides power to a second circuit board (30) provided on the fan motor (22; DC motor).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the ventilation system of Penlesky by providing the fan module with a second circuit board (i.e. a DC motor driving circuit) disposed in the frame (e.g., around a shaft of the motor; the motor being disposed within the frame) and electrically connected to the motor and the first circuit board of the power box (as would be the case with a DC motor drive circuit), in view of the teachings of Lin, as the simple substitution of one known element (the fan motor originally disclosed by Penlesky) for another (the DC fan motor of Lin, having a DC drive circuit board located around a shaft of the motor) to obtain predictable results (i.e., lower power consumption, as discussed previously); or otherwise as the use of a known technique (e.g., providing a DC fan motor having a DC drive circuit board located on a shaft thereof, as in Lin) to improve a similar device (the ventilation fan system of Penlesky) in the same way.
Regarding claim 3, the DC motor 22 taught by Lin (fig. 6C) is, as best understood, an external-rotor DC motor (see annotated partial fig. 6C, below), such that when the ventilation system of Penlesky is modified to include the DC motor of Lin (as described with respect to claim 2 above), the resulting system would read on the additional limitation wherein the motor is an external-rotor DC motor.
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See also US 6,830,440 to Riddoch which shows (e.g. fig. 2) an external rotor DC motor having an analogous structure to that shown by Lin.
Regarding claim 4, Lin further teaches (figs. 6A-6C) a frame (24) comprising a pillow (21; i.e. a support plate, as understood) disposed at the bottom of the frame; an impeller (23) disposed in the frame; wherein the frame further comprises a shaft tube (32) disposed at the pillow, and the second circuit board (30) is disposed around the outer periphery of the shaft tube (see fig. 6C & para. 55, lines 1-13).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the ventilation system of Penlesky by providing a shaft tube disposed at the pillow, wherein the second circuit board is disposed around the outer periphery of the shaft tube, in view of the teachings of Lin, as the use of a known technique (e.g., forming a fan motor shaft tube connected to or otherwise integrally formed with a pillow / support plate, around which the DC drive circuit board is disposed; as in Lin) to improve a similar device (i.e., the ventilation fan system of Penlesky, previously modified above to have a DC motor and DC drive circuit board) in the same way (e.g., simplified assembly; more compact arrangement, etc.).
Regarding claim 6, the ventilation system of Penlesky, as modified above, reads on the additional limitations wherein the housing (12) further 23comprises at least one installation hole (see below), the junction box (90) is disposed in the housing by installing to the at least one installation hole.
In particular, Penlesky discloses (e.g., fig. 6, 13, 22 & 23) that the junction box (90) is disposed in the housing by installing via a screw (indicated by the arrow in fig. 6 below). As would be understood, the housing comprises a corresponding installation hole (indicated by the arrow in fig. 9 below) for receiving the screw. As such, the housing comprises at least one installation hole, the junction box disposed in the housing via installation to the at least one installation hole, as claimed.
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Regarding claim 8, the ventilation system of Penlesky, as modified above, reads on the additional limitations wherein the housing (12) further comprises at least one extension portion (annotated below; fig. 12A showing interior), the at least one extension portion is disposed on the side wall inside the housing, a slot is formed on the at least one extension portion (see fig. 12A), the lamp module comprises at least one elastic element (150; see fig. 5), the at least one elastic element for preventing the lamp module from falling down directly during disassembling (para. 103).
While Penlesky shows (fig. 5 & 24) that the at least one elastic element may pass through a slot in an extension portion (152) of the frame, rather than the housing, Penlesky further suggests “the grille 148 can be coupled to the housing 12 and/or the ventilating assembly 14” (para. 103, lines 1-3).
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Penlesky does not explicitly disclose that the at least one elastic element penetrates through the slot of the extension portion of the housing (i.e. rather than a slot of the frame).
Huang teaches (e.g. fig. 5D) that the housing (21) may comprise at least one extension portion (214), the at least one extension portion disposed on the side wall inside the housing, a slot is formed on the at least one extension portion, the lamp module (23) comprises at least one elastic element (E), and the at least one elastic element penetrating through the slot for preventing the lamp module from falling down directly during disassembling (see para. 72).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the ventilation system of Penlesky such that the at least one elastic element penetrates through the slot of the extension portion of the housing for preventing the lamp module from falling down directly during disassembling, in view of the teachings of Huang, as the simple substitution of one known arrangement (i.e. the arrangement of Penlesky, wherein the elastic element passes through extension portion slots of a fan frame) for another (the arrangement of Huang, wherein the elastic element passes through extension portion slots of the system housing) to obtain predictable results (e.g. enabling the lamp module to be installed directly to the housing so it can be assembled even when the fan module is removed; for example, to enable the lamp function to be used while the fan module is being replaced / repaired, etc.).
Regarding claim 9, the ventilation system of Penlesky, as modified above, reads on the additional limitations wherein the frame (136/138) further comprises at least one extension portion (152; see figs. 5 & 24), the at least one extension portion is disposed on the frame, a slot is formed on the at least one extension portion, the lamp module comprises at least one elastic element (150), and the at least one elastic element penetrating through the slot for preventing the lamp module from falling down directly during disassembling (as shown in fig. 5; para. 103).
Regarding claim 10, while Penlesky does not explicitly disclose the additional limitation wherein a height of the housing is equal to or less than 4 inches, as set forth in MPEP § 2144.04(IV)(A), it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (citing Gardner v. TEC Syst., Inc.).
Additionally, as set forth in MPEP § 2144.05(II)(A), where the only difference between the prior art and the claims is a change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, the claimed invention is unpatentable over the prior art, even though the changes of the kind may produce better results (citing Smith v. Nichols and In re Williams).
The examiner notes that the applicant’s specification does not appear to set forth any evidence of criticality or unexpected results arising from the claimed dimensions. While the specification discloses that “the design of the height H1 of the housing can reduce the required installation space of the ventilation fan 1 in the ceiling…” (para. 57), this appears to be readily expected / predictable benefit of such a change in sizing.
It is further noted that ventilation systems having housing heights less than 4 inches are known in the art: see “Comments on Relevant Prior Art” section below, regarding the Panasonic FV-0510VS1, which has a disclosed housing height of 3-3/8 inches.
Regarding claims 11 & 12, while Penlesky does not explicitly disclose the additional limitations wherein a ratio of a diameter of the impeller to a value of 1/4 of perimeter of the first opening is greater than 0.7 (claim 11), or wherein a ratio of an area of the inlet opening to an area of the first opening is greater than 0.25 (claim 12), as set forth in MPEP § 2144.05(II)(A), where the only difference between the prior art and the claims is a change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, the claimed invention is unpatentable over the prior art, even though the changes of the kind may produce better results (citing Smith v. Nichols and In re Williams).
In the instant case, it appears that the only differences between the system of Penlesky (as previously modified) and those of claims 11 & 12, respectively, amount to changes in form or proportion. In claim 11, the difference appears to be merely a change in the relative proportions of the impeller and first opening. In claim 12, the difference appears to be merely a change in the relative proportions of the inlet opening of the fan module and the first opening of the housing.
See also MPEP § 2144.04(IV)(A), which states that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (citing Gardner v. TEC Syst., Inc.).
Finally, it is noted that the applicant’s specification does not appear to set forth any evidence of criticality or unexpected results arising from the claimed proportions. While the specification states “according to the detailed design of the size of the housing 11 and the fan module 12 described above, the performance of the ventilation fan 1 can be improved” (para. 62), as set forth in MPEP § 716.02, “any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected.”
Regarding claim 13, the ventilation system of Penlesky, as modified above, reads on the additional limitation wherein the first circuit board (i.e., circuit board 25 as taught by Lin) of the power box outputs DC power to the fan module.
As discussed above, the circuit board 25 as taught by Lin comprises an AC/DC converter board to convert AC power from the building / junction box to DC power for the DC drive board / DC fan motor.
Regarding claim 14, the ventilation system of Penlesky, as modified above to include the lamp module arrangement of Huang, reads on the additional limitation wherein the support (i.e., support 25 of Huang) contacts the ceiling (see Huang, fig. 5D).
Regarding claim 15, the ventilation system of Penlesky, as modified above to include the lamp module arrangement of Huang, reads on the additional limitation wherein the lamp module (23 of Huang) and the support (25 of Huang) are connected by a contact portion (2312 of Huang), and the gap (I of Huang) is configured between the lamp module and the support (see Huang, fig. 5D).
Regarding claim 16, the ventilation system of Penlesky, as modified above to include the lamp module arrangement of Huang, reads on the additional limitations wherein the lamp module (i.e., 23 of Huang; see fig. 5D) comprises a light source (“B”), a base (231), at least one optical component (232), and a lamp cover (233), the optical component is disposed on the base (see para. 86), the lamp cover is disposed at one side of the optical component away from the base (as shown; para. 86), and the light output direction of the light source of the lamp module is not equal to the light output direction of the lamp module (para. 87).
Regarding claim 17, the ventilation system of Penlesky, as modified above to include the lamp module arrangement of Huang, reads on the additional limitations wherein the optical component is a light diffuser, and the light diffuser receives the light emitted from the light source of the lamp module (Huang, para. 87).
Regarding claim 18, the ventilation system of Penlesky, as modified above to include the lamp module arrangement of Huang, reads on the additional limitation wherein the light source (“B” of Huang) is disposed at the side of the light diffuser (as shown in fig. 5D of Huang).
Claims 3 & 5 (as understood) are rejected (or alternatively rejected) under 35 U.S.C. 103 as being unpatentable over Penlesky in view of Huang and Lin as applied to claims 2 & 4 above, and further in view of Riddoch (US 6,830,440).
Regarding claim 3, as previously set forth above, the DC motor 22 taught by Lin (fig. 6C) is understood to be an external-rotor DC motor such that, when the ventilation system of Penlesky is modified to include the DC motor of Lin, the resulting system would read on the additional limitation wherein the motor is an external-rotor DC motor. However, to promote compact prosecution, an additional teaching in view of Riddoch is provided below.
Riddoch teaches (e.g. figs. 2 & 3) an external-rotor DC motor (1) for use as a fan motor (see abstract; fig. 6).
If not already seen as such, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the system of Penlesky, as otherwise modified above, by utilizing an external-rotor DC motor, in view of the teachings of Riddoch (or otherwise in view of Lin and Riddoch) as the simple substitution of one known element (i.e. the original fan motor of Penlesky) for another (i.e. the external-rotor DC motor as taught by Riddoch) to obtain predictable results (e.g. lower power usage vs an AC motor, as suggested by Lin), especially considering that Riddoch suggests that the external-rotor DC motor is applicable for use in fans and ventilation equipment (e.g. col. 4, lines 61-63).
Regarding claim 5, Riddoch further teaches that the external-rotor DC motor comprises a circuit board (5) disposed around a shaft (4) of the fan motor, wherein the circuit board is circular (i.e. “annular”; col. 3, lines 3-4), and comprises a water-proof structure (24; col. 4, lines 30-33; “hermetically sealable…to protect the circuitry and components… from the ingress of dust or moisture.).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Penlesky (as otherwise modified above) such that the second circuit board is a circular board, in view of the teachings of Riddoch, as the use of a known technique (i.e. forming a DC fan motor circuit board in an annular / circular configuration, as in Riddoch) to improve a similar device (i.e. the system of Penlesky as modified above, to include the DC drive circuit board of Lin) in the same way (e.g. maximizing board surface area while fitting between the cylindrical shaft and the circular rotor, i.e. as compared to a square board in the same location).
Additionally (or alternatively), as set forth in MPEP § 2144.04(IV)(B), mere changes in shape have been held to be a matter of choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that a particular configuration is significant. See also MPEP § 2144.04(I).
It would have been further obvious to a person having ordinary skill in the art to modify the system of Penlesky (as otherwise modified above) by providing a water-proof structure (e.g. a hermetically-sealable structure) for the second circuit board, in view of the teachings of Riddoch, to protect the circuitry and components of the second circuit board from the ingress of dust or moisture, as further suggested by Riddoch.
Claim 7 (as understood) is rejected under 35 U.S.C. 103 as being unpatentable over Penlesky in view of Huang and Lin as applied to claim 2 above, and further in view of He et al. (US 2015/0003980; hereafter He).
Regarding claim 7, Penlesky does not disclose the additional limitations wherein the frame further comprises a mounting portion, the power box is connected to the mounting portion and then disposed in the housing with the fan module.
He discloses (figs. 2A & 2B) a ventilation fan (see fig. 2A) comprising a housing (11), a fan module including a frame (16), an accommodation space (164) formed between the frame and the housing, a power box (19) comprising a circuit board (para. 28, lines 12-14: “A main circuit board…is provided within the circuit board box 19 and is for driving the motor 14”) disposed in the housing at the accommodation space, wherein the frame comprises a mounting portion (annotated in fig. 2B, below), the power box is connected to the mounting portion (as shown in fig. 2B) and then disposed in the housing with the fan module (as shown in fig. 2A).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the system of Penlesky (as otherwise modified above) by providing the frame with a mounting portion, enabling the power box to be connected to the mounting portion and then disposed in the housing with the fan module, in view of the teachings of He, to enable easier replacement of the power box when the fan module is replaced (e.g. to enable a modular design, wherein the power box may be matched to the fan module); or otherwise obvious as the use of a known technique (i.e. mounting a power box to a fan module via a mounting portion, for installation in a housing with the fan module, as in He) to improve a similar device (the system of Penlesky, having a ventilation fan with a power box) in the same way (i.e. as discussed above; allowing modularity / simplified replacement, etc.).
Comments on Relevant Prior Art
Applicant’s IDS received 12 November 2024 includes a citation for an NPL reference entitled “Model No. FV-0510VS1 Ventilating Fan. Installation and Operating Instructions”, originally cited in a PTO-892 for 16/773,030 (with accompanying copy of the reference) on 28 September 2022. To promote compact prosecution, attention is again drawn to this reference, which remains relevant to the disclosure in this application. The reference is an installation and operating instructions publication for ventilating fan model FV-0510VS1, produced by Panasonic Corporation. The publication includes an issue date of 11/2016, which is more than one year before the effective filing date of the instant claimed invention(s).
The publication discloses that the fan has a housing height of 3-3/8 inches (see “dimensions” on page 4, annotated below).
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Of further note, this fan includes a junction box (at “4” in the dimensions drawing) connected to a 120V AC power supply, which provides AC power to a “PCB box” (at “1” below) which transforms the AC power into DC power (see wiring diagram on pg. 5). As would be understood by a person having ordinary skill in the art, “PCB” stands for “printed circuit board”. See also “Description” section on page 4: “this product uses a sirocco fan driven by a DC motor powered by an integral transformer”) .
Conclusion
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/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
