DELTA ELECTRONICS, INC.

Patent Trials and Appeals Board

May 27, 2021

2021000002 (P.T.A.B. May. 27, 2021)

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.
15/797,367 10/30/2017 Yu-Hsiang HUANG 4459/1580PUS2 2081
60601 7590 05/27/2021
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
DURDEN, RICHARD KYLE
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YU-HSIANG HUANG and CHIH-HUA LIN
__________

Appeal 2021-000002
Application 15/797,367
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–17, and 19–22. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 DELTA
ELECTRONICS, INC. See Appeal Br. 2.
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STATEMENT OF THE CASE
The claims are directed to a ventilation system having a fan module
and a lamp module. Claim 1, reproduced below, is illustrative of the claimed
subject matter:2
1. A ventilation system comprising a ventilation fan with a
lamp and a ceiling having an installation opening, wherein the
ventilation fan with the lamp is adapted for installation in the
installation opening of the ceiling, the ventilation fan comprises:
a housing including a top plate, a side wall, and two
extension portions, wherein the top plate and the side wall are
connected with each other to form a first opening, the first
opening is aligned with the installation opening, the extension
portions are disposed on the side wall inside the housing, and a
slot is formed on each of the extension portions;
a fan module disposed in the housing; and
a lamp module disposed out of the installation opening,
wherein the lamp module and the housing are located at opposite
sides of the installation opening of the ceiling;
wherein the lamp module includes a light source, a base,
at least one optical component, an elastic element, and a lamp
cover, the optical component is disposed on the base, the lamp
cover is disposed at one side of the optical component away from
the base, the light output direction of the light source of the lamp
module is not equal to the light output direction of the lamp
module, and
wherein the elastic element has two hook structures, a V-
shaped structure and a ring structure, the hook structures are

2 We note that in Appellant’s Claims Appendix of the Appeal Brief, claims
20–22 recite “the ventilation system is configured such that.” Appeal Br. 18
(Claims App.). However, in the Amendment filed on Mar. 3, 2020, after the
Final Office Action, Applicant proposed adding this language to claims 20–
22 but the proposed amendments were not entered. See Advisory Action,
dated Apr. 16, 2020; see also Ans. 3–4. Thus, Appellant’s listing of claims
20–22 in its Claims Appendix as having the above-noted recitation is
improper.
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disposed at two ends of the V-shaped structure, the ring structure
is configured at a bottom of the V-shaped structure and between
the two hook structures, the ring structure is partially connected
to the base of the lamp module, and the lamp module is
connected to the housing by the hook structures of the elastic
element penetrating through the slots for preventing the lamp
module from falling down directly during disassembling.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mehta US 2008/0062643 A1 Mar. 13, 2008
Chezick US 2008/0064319 A1 Mar. 13, 2008
Zakula US 2012/0087128 A1 Apr. 12, 2012
Catalano US 2012/0113642 A1 May 10, 2012
Yang US 2013/0315731 A1 Nov. 28, 2013

REJECTIONS
Claims 20–22 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
Claims 1–5, 7–11, 13–17, and 19–22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Zakula, Yang, and (Catalano alone or
Catalano and Mehta). Final Act. 3.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Zakula, Yang, (Catalano alone or Catalano and Mehta), and Chezick. Final
Act. 31.

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OPINION
Indefiniteness
The Examiner determines that claims 20–22 are indefinite because the
claims are directed to an apparatus but “contain a method-step-type
limitation.” Final Act. 2.
Appellant states that claims 20–22 were amended “in the Amendment
filed on March 23, 2020, to address the specific informalities identified by
the Examiner.” Appeal Br. 8. However, this Amendment was filed after the
Final Office Action and the Examiner denied its entry. See footnote 1 supra;
see also Ans. 3–4 (explaining why the Examiner denied entry of the
Amendment).
Appellant indicates, “Appellant[] respectfully request[s] the Examiner
to enter the claim amendments on appeal.” Id. To the extent Appellant is
contending that it is improper for the Examiner to deny entry of the
Amendment, such contention is unavailing because the Examiner’s refusal
to enter an amendment after the Final Office Action is a matter outside the
scope of our review. See In re Berger, 279 F. 3d 975, 984–85 (Fed. Cir.
2002); see also In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that
the refusal of an examiner to enter an amendment of claims is reviewable by
petition under 37 C.F.R. § 1.181, and not by appeal to the Board).
As this rejection is not substantively contested, we summarily affirm
the rejection. See In re Berger (Affirming the Board’s affirmance of an
uncontested rejection, holding that the appellant had waived the right to
contest the rejection by not presenting arguments on appeal to the Board);
see also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“the
applicant can waive appeal of a ground of rejection”).
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Obviousness over Zakula, Yang, and (Catalano alone or Catalano and
Mehta)
Claim 1 is representative of claims 1–5, 7–11, 13–17, and 19–22
pursuant to 37 C.F.R. § 41.37(c)(1)(iv)(2019). See Appeal Br. 8–13.
Independent claim 1 recites, among other limitations,
feature (A):3 “[an] elastic element [having] two hook structures, a V-
shaped structure and a ring structure, the hook structures are disposed at two
ends of the V-shaped structure, the ring structure is configured at a bottom
of the V-shaped structure and between the two hook structures, [and] the
ring structure is partially connected to the base of the lamp module,” and
feature (B): “[a] lamp module [that] is connected to [a] housing by the
hook structures of the elastic element penetrating through [] slots for
preventing the lamp module from falling down directly during
disassembling.” Appeal Br. 15 (Claims App.). Independent claims 13 and 19
recite similar limitations. Id. at 16–18.
Appellant contends that Zakula “does not teach or suggest feature
(A)” because Zakula “does not have any written description regarding
element A,”4 “Figure 7 of Zakula does not clearly illustrate that the
annotated element [(A) by the Examiner,] is a grille spring,” and “it seems

3 Appellant identifies the subject matter indicated as feature (A) and feature
(B). Appeal Br. 4. For convenience, we shall also refer to the subject matter
as feature (A) and feature (B).
4 We note that Appellant contends “[i]n the Final Office Action, the
Examiner analogizes element A in Figure 7 . . .,” but the Examiner did not
use the term “element A” in the Final Office Action. See Final Act., passim.
We thus understand Appellant’s use of the term “element A” as referring to
feature (A) which includes the elastic element, as reiterated above.
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that the annotated element [(A)] is [more] like a wire.” Appeal Br. 9. The
Examiner responds that “it is not necessary that the written specification of
Zakula explicitly explain[s] that the element is a grille spring in order to
teach the element depicted, especially because it would have been
reasonably understood to be a grille spring by a person having ordinary skill
in the art.” Ans. 5 (citing MPEP § 2125(I) and In re Aslanian, 590 F.2d 911
(CCPA 1979) for the proposition that “[w]hen the reference is a utility
patent, it does not matter that the feature shown is unintended or unexplained
in the specification. The drawings must be evaluated for what they
reasonably disclose and suggest to one of ordinary skill in the art.”). Further,
citing other references (other than Yang, discussed below), which are not
applied in this rejection, the Examiner asserts that “the use of elastic
elements/grille springs to connect a grille to a lamp/ventilation fan housing
is well-known in the art.” Id.
In regard to this contention, Appellant has the better position. First,
even if the Examiner is correct in finding that “the use of elastic
elements/grille springs to connect a grille to a lamp/ventilation fan housing
is well-known in the art,” that does not necessarily mean that Zakula
discloses feature (A) in its Figure 7. Further, though the Examiner points out
that Zakula discloses a grille spring in the written description (Final Act. 6
(citing Zakula ¶ 29)), the Examiner has not shown that it is known in the art
that––or Zakula defines that––a grille spring has feature (A) (i.e., having two
hook structures, a V-shaped structure and a ring structure, the hook
structures are disposed at two ends of the V-shaped structure, and the ring
structure is configured at a bottom of the V-shaped structure and between
the two hook structures).
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We agree with the Examiner that it is not necessary for the written
description of Zakula to explicitly disclose feature (A) if it is clearly shown
in the figures. “[T]hings patent drawings show clearly are [not] to be
disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis in
original). However, as alluded to by the Examiner, the question here is
whether it would have been reasonably understood by a person having
ordinary skill in the art that Zakula’s Figure 7 shows features (A). We agree
with Appellant that Figure 7 of Zakula does not clearly show feature A, i.e.,
it is unclear that an ordinary artisan would find that Figure 7 shows feature
(A). In Zakula’s Figure 7, the item to the right of reference number 40 is not
depicted in detail such that it does not clearly show feature (A) (an elastic
element having two hook structures, a V-shaped structure and a ring
structure, the hook structures are disposed at two ends of the V-shaped
structure, and the ring structure is configured at a bottom of the V-shaped
structure and between the two hook structures) and it seems to us that
Appellant is correct in characterizing the item to the left of reference number
44 as a wire rather than feature (A).
Consequently, we agree with Appellant that Zakula does not disclose
feature (A). Because feature (B) requires feature (A), we further agree with
Appellant that “Zakula does not teach or suggest features (A) and (B).”
Appeal Br. 10.5 We note, however, that the Examiner, as discussed below,
also relies on Yang and Catalano for suggesting feature (A) and feature (B).

5 We note that the Examiner appears to concede that Zakula does not
disclose feature (B) in stating that “as Zakula does not explicitly disclose
that the elastic elements are used to connect the lamp module to the housing
by penetrating through the slot, to promote compact prosecution, an
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Appellant contends that “Yang fails to teach or suggest features (A)
and (B)” and that Yang’s “biasing member 36 is not utilized for preventing
the lamp module from falling down directly during disassembling.” Appeal
Br. 11. Appellant further contends that “Catalano does not teach or suggest
features (A) and (B)” and that “the mounting mechanism 240 of Catalano,
however, does not penetrate through a slot for preventing the lamp module
from falling down directly during disassembling.” Id. at 12.
These contentions are unpersuasive in that they do not address the
Examiner’s rejection. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. [The reference] must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). The
Examiner finds that
Catalano teaches (fig. 2) a lamp module (including at least 220)
disposed in a ceiling having an installation opening, the lamp
module further including at least one elastic element (240),
wherein the lamp module is connected to a housing (130) by the
at least one elastic element (see para. 28, lines 15–19: “. . . the
lighting module 220 is preferable positioned within the RCD
fixture via a mounting mechanism 240, which may include or
consist essentially of, e.g. one or more springs or spring clips . . .
(i.e. an elastic element)”.
Final Act. 8 (emphases added). The Examiner annotates Yang’s Figures 1
and 2 and finds that Yang discloses extension portions in which slots are

alternative teaching in view of Catalano and Yang is provided below.” Final
Act. 6.
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“formed on each of the extension portions.” Id. at 9, 11. The Examiner
further finds that Yang discloses
a component (35) of the ventilation/fan system mounted via
elastic elements (36) to the housing by the at least one elastic
element penetrating through the slot (see figs. 2 & 3), wherein
the elastic elements have two hook structures (see figs. 1 & 3,
hooks at distal ends of the V-shape), a V-shaped structure (as
shown) and a ring structure (clearly seen in fig. 3).
Id. at 9. The Examiner points out that Yang discloses “[w]hen the flange 35
is released from the ceiling opening 3, the biasing members 36 prevent the
flange from falling down.” Id. (quoting Yang ¶ 46; emphasis added). Thus,
the Examiner does not rely on Yang or Catalano individually for the
contested claim subject matters, i.e., the Examiner does not find each of
Yang and Catalano discloses both feature (A) and feature (B). Rather, the
Examiner relies on Yang for disclosing feature (A) and both Yang and
Catalano for disclosing feature (B). Although Yang does not disclose using
an elastic element to hold up an entire light module, Catalano clearly
discloses such. Catalano Fig. 2; see also Ans. 6–7 (responding that
Appellant is attacking the references individually, citing In re Keller, 642
F.2d 413 (CCPA 1981)).
Lastly, Appellant contends that “one of ordinary skill in the art would
not have modified Zakula to include feature (B).” Appeal Br. 13. Appellant
argues,
[a]ccording to the summary and paragraphs [0003]–[0004] and
[0074] of Zakula, the plate (54) is purposely coupled to the grille
(32) but the plate (54) is not connected to the main housing (12).
The object of Zakula is to mount the plate (54) onto the grille
(32) first, so it would not have been obvious to modify the plate
(54) and the main housing (12) of Zakula to have “the lamp
module is connected to the housing by the hook structures of the
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elastic element penetrating through the slots for preventing the
lamp module from falling down directly during disassembling.”
Appeal Br. 13.
These contentions are also unpersuasive. First, it is unclear why
Appellant believes that Zakula requires mounting its plate 54 onto grille 32
first, as that is not evident from Zakula’s paragraphs 3, 4, and 74. Zakula’s
paragraphs 3 and 4 appear to generally disclose “a plate can be coupled to
the grille” and a “grille can be coupled to the main housing.” Zakula ¶¶ 3–4.
Zakula’s paragraph 74 appears to disclose that plate 54 is coupled to grille
32 via flanges 50, support slots 52, and mounting notches 64, as depicted in
Figures 2 and 3. Id. at ¶ 74; see also id., Figs. 2–3. Further, the Examiner
points out the following: (1) Zakula’s lamp module includes plate 54, which
is connected to grille 32 and thus plate 54 is indirectly connected to housing
12 via grille 32 (Ans. 7); (2) “Zakula does not appear to explicitly teach
away from connecting the lamp module to the housing” (id.); (3) Zakula’s
paragraph 74 describes the embodiment of Figure 2, whereas the Examiner
relies on the embodiments of Zakula’s Figures 9–15 (id. at 7–8); and (4)
even when considering the embodiment of Figure 2, Zakula discloses that
“the plate 54 can be coupled to the grille 32 in other manners” and “the plate
54 can comprise other configurations” (id. at 8 (quoting Zakula ¶¶ 75–76)).
We also note that: (1) it does not appear that Zakula requires its plate 54 and
grille 32 be disassembled from housing 12 in any particular manner, i.e., that
plate 54 and grille 32 be disassembled separately from housing 12; and (2)
Appellant’s lens 133 is not directly connected to housing 11 in a similar
manner as Zakula’s plate 54 not being directly connected to housing 12. See
Spec., Figs. 1A–1C; Zakula Fig. 9.
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Moreover, to the extent Appellant is arguing that further modifications
to the combined teachings of Zakula, Yang, and Catalano are necessary to
arrive at the claimed invention, 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 would have been
obvious to those of ordinary skill in the art in view of the combined
teachings of the references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981); see also Ans. 8. In sum, Appellant does not argue any specific feature
of the elastic element (feature (A)) of claim 1 that is missing from the
combination of cited references and Appellant does not provide technical
details in its argument as to why the combination of cited art falls short in
regard to feature (B), i.e., why “one of ordinary skill in the art would not
have modified Zakula to include feature (B),” as argued. As such,
Appellant’s contentions do not apprise us of Examiner error.
For these reasons, we sustain the rejection of claims 1–5, 7–11, 13–
17, and 19–22 being obvious over Zakula, Yang, and (Catalano alone or
Catalano and Mehta).

Obviousness over Zakula, Yang, (Catalano alone or Catalano and Mehta),
and Chezick
Appellant’s contentions rest on the same arguments discussed above
for claim 1. See Appeal Br. 14 (arguing “[c]laim 12 is allowable at least
based on analogous reasons to those set forth above with respect to claims
1–5, 7–11, 13–17 and 19–22”). As we find no deficiencies in the Examiner’s
rejection of claim 1 as being obvious over Zakula, Yang, and (Catalano
alone or Catalano and Mehta) for the reasons discussed above, we likewise
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sustain the Examiner’s rejection of claim 126 over Zakula, Yang, (Catalano
alone or Catalano and Mehta), and Chezick.
CONCLUSION
The Examiner’s rejections of claims 1–5, 7–17, and 19–22 are
affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20–22 112(b) Indefiniteness 20–22
1–5, 7–11,
13–17,
19–22
103 Zakula, Yang,
(Catalano alone or
Catalano and Mehta)
1–5, 7–11,
13–17,
19–22

12 103 Zakula, Yang,
(Catalano alone or
Catalano and Mehta),
Chezick
12
Overall
Outcome
1–5, 7–17,
19–22

6 Appellant also contends “[f]urthermore, dependent claim 12 sets forth
additional limitations not found in the prior art,” without further elaboration.
Appeal Br. 14. Appellant effectively reiterates language of dependent claim
12 without making any substantive arguments and thus, does not inform us
of Examiner error. See 37 C.F.R. § 41.37(c)(1)(iv) (statements that merely
point out what a claim recites are not considered to present an argument for
separate patentability of the claim); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (Rule 41.37 requires more than recitation of the claim
elements and a naked assertion that the elements are not found in the prior
art).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED