Ex Parte Kanayama et al

Patent Trial and Appeal Board

Nov 13, 2018

14346704 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/346,704 03/21/2014
22919 7590 11/15/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Takehiro Kanayama
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DK-US145059 8106
EXAMINER
HANSEN, KENNETH J
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEHIRO KANA Y AMA, NAOTO TOMIOKA,
and YUUICHIROUWATANABE
Appeal2018-001237 1
Application 14/346,7042
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed May
16, 2017) and Reply Brief ("Reply Br.," filed November 16, 2017), and the
Examiner's Answer ("Ans.," mailed September 20, 2017), and Final Office
Action ("Final Act.," mailed November 17, 2016).
2 Appellants identify Daikin Industries, Ltd. as the real party in interest.
App. Br. 4.
Appeal2018-001237
Application 14/346, 704
CLAIMED INVENTION
Appellants' claimed "invention relates to a compressor to be used in,
for example, air conditioners, refrigerators[,] and the like." (Spec. ,r 1 ).
Claims 1 and 7 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter:
1. A compressor comprising:
a closed container;
a compression element disposed in the closed container;
and
a motor disposed in the closed container, the motor being
configured and arranged to drive the compression element via a
shaft,
the compression element including
a first bearing configured and arranged to support a
first shaft portion of the shaft,
a second bearing configured and arranged to
support a second shaft portion of the shaft, and
at least one cylinder disposed between the first
bearing and second bearing, the at least one cylinder
having at least one cylinder chamber
the first bearing being disposed closer to the motor
than the second bearing,
the first bearing having a first annular groove
opened to the at least one cylinder chamber and a first
annular shaped elastic portion positioned radially inside of
the first annular groove provided in a first opposing
surface thereof that is opposed to the at least one cylinder,
the second bearing having a disc-shaped end plate
portion, a boss portion provided in a center of the end plate
portion, and a second annular groove opened to the at least
one cylinder chamber and a second annular shaped elastic
portion positioned radially inside of the second annular
groove provided in a second opposing surface thereof that
is opposed to the at least one cylinder, with a depth of the
second annular groove being smaller than a thickness of
the disc-shaped [ end] plate portion,
2
Appeal2018-001237
Application 14/346, 704
a diameter of the second shaft portion being smaller
than a diameter of the first shaft portion, and
a rigidity of the second elastic portion being smaller
than a rigidity of the first elastic portion.
REJECTION
Claims 1-16 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Miura et al. (US 2011/0067434 Al, pub. Mar. 24, 2011) (hereinafter
"Miura").
ANALYSIS
Independent Claim 1 and Dependent Claims 2-6, 8-12, 15, and 16
In rejecting independent claim 1 under§ I03(a), the Examiner cites
Miura as disclosing a compressor comprising a "first bearing having a first
annular groove" and a "second bearing having a disc-shaped end plate
portion ... and a second annular groove" (Final Act. 3--4 ( citing Miura
Fig. 2)). In particular, the Examiner equates Miura's main bearing 21 to the
claimed "first bearing" and Miura's sub-bearing 22 to the claimed "second
bearing" (id. at 3).
The Examiner acknowledges that Miura does not disclose, in its
Figure 2 embodiment, that "the depth of the second annular groove [in the
second bearing, i.e., sub-bearing 22, is] smaller than a thickness of the disc-
shaped [ end] portion," as called for in claim 1 (id. at 5). However, the
Examiner notes that, in the Figure 3 embodiment, Miura shows an annular
groove Ka, provided in a bearing end-plate portion 2Ia of bearing 21 (i.e.,
the claimed "first bearing") having a groove depth smaller than the thickness
of the plate portion (id.) ( citing Miura ,r,r 92 and 101 ). And the Examiner
proposes to modify Miura such that groove Kd in sub-bearing 22 (i.e., the
3
Appeal2018-001237
Application 14/346, 704
claimed "second bearing"), as shown in Figure 3, has a smaller groove depth
than the thickness of flange 22a of sub-bearing 22.
According to the Examiner, Miura "establishes that groove depth is a
result effective variable that affects hydrodynamic oil film thickness and the
rigidity of the shaft bearing system" (id.) (citing Miura ,r,r 64 and 65). The
Examiner, thus, concludes that it would have been obvious to a person of
ordinary skill in the art at the time of Appellants' invention "to form the
second annular groove smaller than a thickness of the disc-shaped portion
since it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering optimum or workable ranges involves
only routine skill in the art" (id. at 6) (citing In re Aller, 220 F.2d 454, 456
(CCPA 1955)).
Appellants argue, and we agree, that the rejection cannot be sustained
at least because the Examiner has not established that a person of ordinary
skill in the art would have had an apparent reason to modify Miura, as the
Examiner proposes (App. Br. 11; see also Reply Br. 3--4). Responding to
Appellants' argument, the Examiner asserts in the Answer that "varying
groove depth and location with respect to the bearing elements is known to
be result effective to optimize the strength and rigidity of the bearing
contacting surface while also affecting oil film thickness of this
hydrodynamic bearing system" (Ans. 14) (citing Miura Figs. 6 and 7).
However, Figures 6 and 7 of Miura do not disclose optimizing groove depth
relative to flange thickness. Figure 6 is a characteristic diagram that depicts
oil film thickness and contact force as a function of "Groove depth ( shaft
diameter ratio)," and Figure 7 is a characteristic diagram that depicts contact
force as a function of "Groove minimum wall thickness ( shaft diameter
4
Appeal2018-001237
Application 14/346, 704
ratio)." Miura also consistently teaches that the depth L of groove K is set
as a percentage of the shaft diameter D (see, e.g., Miura ,r 68 ("The depth L
of the circular groove K is formed equal to or more than 40% of the
diameter D of the bearing hole N."); ,r,r 70, 72, 73). In other words, Miura
discloses that groove depth as a percentage of the shaft diameter D is a
result-effective variable. However, we find no disclosure or suggestion in
Miura that the relationship between groove depth L and wall thickness H is
recognized as a result-effective variable. Cf In re Antonie, 559 F .2d 618,
620 (CCPA 1977) (One exception to "the rule that the discovery of an
optimum value of a variable in a known process is normally obvious"
applies where "the parameter optimized was not recognized to be a result-
effective variable.").
The Examiner further asserts in the Answer "that the recited
configuration is essentially analogous to flipping the Miura FIG. 3 first
bearing arrangement upside down" and that "[t]his would change the elastic
properties of the bearing shaft system but not in a manner that provides a
new or unexpected result that weighs in favor of patentability" (Ans. 14).
According to the Examiner, "the skilled artisan would be able to recognize
this arrangement is opposite to that being claimed" and "it would not take a
leap of imagination to contemplate doing so when faced with the problems
of tuning shaft bearing system performance for example" (id. at 15).
The Examiner concludes, "[t]herefore, flipping the Miura FIG. 3
arrangement upside down would have been obvious to teach the
arrangement being recited in the instant claims" (id.). But, as Appellants
observe, the Examiner provides "no reason for flipping the main bearing
structure 21 of [Miura] to be that of the sub bearing 22" (Reply Br. 4).
5
Appeal2018-001237
Application 14/346, 704
Instead, the Examiner offers a conclusory assertion that a person of ordinary
skill would have made the proposed modification "when faced with the
problems of tuning shaft bearing system performance" ( Ans. 15). We find
nothing in the cited portions of Miura, including Figure 3, on which the
Examiner relies, that discloses or suggests flipping the arrangement shown
in Figure 3 of Miura upside down. Cf In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (Although a prior art device could have been turned upside
down, that did not make the modification obvious unless the prior art fairly
suggested the desirability of turning the device upside down.).
As a further basis for the proposed modification, the Examiner takes
the position that "forming the groove depth shallower on the bottom side
may also be considered to be an obvious matter of engineering design choice
and routine experimentation since groove depth would also be known to
affect the strength of the bearing disc portion for example" and "maintaining
the strength of the bearing disc would be an important design consideration
in any bearing system subject to dynamic load forces" (Ans. 15-16).
However, contrary to the Examiner's position, Miura suggests that making
the groove K deeper improves the strength of the main bearing. See Miura
,r 65 ("[T]he depth of the groove Kand the wall thickness between the
groove Kand the bearing hole N are increase[d] to enhance the strength.").
The Examiner has not established, on this record, that a person of
ordinary skill in the art would have had an apparent reason to modify Miura,
as the Examiner suggests, to arrive at the claimed invention, as recited in
claim 1. As such, the Examiner has failed to establish a prima facie case of
obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that a prima facie case of obviousness requires showing that one of
6
Appeal2018-001237
Application 14/346, 704
ordinary skill in the art would have had both an apparent reason to modify
the prior art and predictability or a reasonable expectation of success in
doing so).
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the
rejection of dependent claims 2---6, 8-12, 15, and 16. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
Independent Claim 7 and Dependent Claims 13 and 14
Independent claim 7 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale applied
with respect to claim 1 (Final Act. 7). Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 7 and
claims 13 and 14, which depend therefrom, for the same reasons set forth
above with respect to claim 1.
DECISION
The Examiner's rejection of claims 1-16 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
7