Ex Parte Lifson et al

Patent Trial and Appeal Board

Aug 14, 2017

12667280 (P.T.A.B. Aug. 14, 2017)

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.
12/667,280 12/30/2009 Alexander Lifson PA0004668US ;60246-626PUS 1 5833
26096 7590 08/16/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER LIFSON and MICHAEL F. TARAS
Appeal 2016-002326
Application 12/667,2801
Technology Center 3700
Before STEFAN STAICOVICI, KEN B. BARRETT, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alexander Lifson and Michael F. Taras (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—15.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, Carrier Corporation is the real party in interest.
Appeal Br. 1 (filed Apr. 14, 2015).
Appeal 2016-002326
Application 12/667,280
INVENTION
Appellants’ invention relates to “a refrigerant system having an
economizer cycle.” Spec. 1:5.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A refrigerant system comprising:
at least two compression chambers, said at least two
compression chambers for compressing a refrigerant, a
downstream heat rejection heat exchanger, a refrigerant line
passing from the heat rejection heat exchanger into an
economizer cycle, and a main refrigerant line passing from the
economizer cycle through a main expansion device and to a
heat accepting heat exchanger, a suction line downstream of
said heat accepting heat exchanger and extending to at least one
of the at least two compression chambers;
a return line being returned from the economizer cycle
and connected to a suction port for another of the at least two
compression chambers; and
a bypass line communicating the return line and the
suction line.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—6, 10—12, and 14 under
35 U.S.C. § 103(a) as being unpatentable over Appellants’
Admitted Prior Art (hereafter “AAPA”) (Appellants’ Spec. 3:9—
30) and Lifson (CA 2 252 137, issued Aug. 13, 2002).
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Application 12/667,280
II. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Lifson, and Olsen et al. (US
4,926,658, issued May 22, 1990, hereafter “Olsen”).
III. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Lifson, and Saito et al. (US
6,799,435 B2, issued Oct. 5, 2004, hereafter “Saito”).
IV. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Lifson, and Sjoholm et al. (US
5,410,889, issued May 2, 1995, hereafter “Sjoholm”).
V. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Lifson, and Clark Jr. (US
4,537,037, issued Aug. 27, 1985, hereafter “Clark”).
VI. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Lifson, and Manole (US
2005/0132729 Al, published June 23, 2005).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 2—6, 10-12, and 14 apart from claim 1. See Appeal Br. 2-4.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1
as the representative claim to decide the appeal of the rejection of these
claims, with claims 2—6, 10-12, and 14 standing or falling with claim 1.
The Examiner finds that AAPA discloses most of the limitations of
independent claim 1, but “fails to disclose the limitation of a bypass line
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Application 12/667,280
communicating the return line and the suction line.” Final Act. 3 (citing
Spec. 3:9—30, Fig. 1) (transmitted Dec. 26, 2014). Nonetheless, the
Examiner finds that Lifson discloses “the concept of a bypass line (50)
communicating the return line (18-1) and the suction line (24).” Id. (citing
Lifson, 2:21—25, Figure). The Examiner concludes that “it would have been
obvious to one having ordinary skill in the art at the time the invention was
made to modify the AAPA to include the use of a bypass line
communicating the return line and the suction line as taught by [Lifson], in
order to modulate the system capacity.” Id. (citing Lifson, 4:1—13.)
Appellants argue that because in Appellants’ Figure 1 “the entire
point is to maintain the refrigerant flows 32 and 38 separate, and to have
them delivered to distinct compression chambers,” “[njothing within this art
would teach one to connect lines 32 and 38 ... as doing so would be directly
contrary to the main ‘separating’ purpose of such a system.” Appeal Br. 3
(citing Spec. 2:4—11 (referring to EP 1 498 667 A2, published Jan. 19, 2005,
hereafter “Forbes”)) (emphasis added). Appellants further contend that
although Lifson discloses “a bypass connecting an economizer return line to
a suction line, both of those lines are heading to a common compression
chamber.” Id.
In response, the Examiner notes that Appellants’ position regarding
the purpose of having two separate lines in the claimed invention is not
persuasive because the Specification does not state the phrase “‘the entire
point,”’ but rather states “‘[a] purpose.’” Ans. 3 (transmitted Oct. 23, 2015).
The Examiner then takes the position:
[A]ll claimed elements were known in the art at the time of the
invention, it would have been obvious to one having ordinary
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Application 12/667,280
skill in the art to combine the teaching of the admitted prior art
(AAPA) with the teaching of the Canadian Patent to Lifson,
with no changes in their respective functions and the
combination that would yield the predictable results; wherein,
the bypass line allows for the refrigerant system to achieve a
wide variety of capacities.
Id. at 3.
In a first instance, we note that a purpose of the system shown in
AAPA’s Figure 1 is to “have [the] refrigerant in each of the compression
chambers [24, 26] be closer to homogeneous conditions than if the two
refrigerant flows were allowed to mix.” Spec. 3:26—30. Having lines 32, 38
separated merely provides the underlying structure that allows the system of
AAPA’s Figure 1 to function such that the refrigerant flowing through each
of the compression chambers 24, 26 is “closer to homogeneous conditions
than if the two refrigerant flows were allowed to mix.”
As such, we appreciate that providing Lifson’s bypass conduit 50 to
connect lines 32, 38 in Figure 1 of AAPA, would result in refrigerant flow in
chambers 24, 26 that is not as close to homogenous conditions as if the flows
were separated. However, the system of AAPA, as modified by Lifson, will
function nonetheless as a refrigerant system that has the added capability “to
modulate the system capacity.” See Final Act. 3. “The fact that the
motivating benefit comes at the expense of another benefit. . . should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000). The reason to modify the system of AAPA
with Lifson’s bypass conduit 50 may prompt a person of ordinary skill in the
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Application 12/667,280
art to do what the inventor has done, but for a different purpose or to solve a
different problem, namely, “to modulate the system capacity.” See Final
Act. 3.
Here, like the Examiner, we note that even when flow lines 32, 38 in
Figure 1 of AAPA are separated the refrigerant in each of the compression
chambers 24, 26 is not perfectly homogenous, but merely more homogenous
(“closer to homogenous conditions”) than if the flows were allowed to mix.
See Ans. 2. As such, although the refrigerant in each of compression
chambers 24, 26 of the AAPA system, as modified by Lifson, is not as
homogenous as if the refrigerant flows were separated, nonetheless, the
resulting system has the advantage that it would “achieve a wide variety of
capacities.” See Ans. 3. As the Examiner correctly reasons, “[w]hen the
bypass [50 in the system of AAPA, as modified by Lifson,] is fully open, the
vapor generated by the evaporator is reduce [d] to a fraction of its full load
amount; thus, effectively reducing drag on the system and compressor
vibration/or noise. A compressor with reduced vibration can operate at
variable speeds with high efficiency.” Ans. 3.
Appellants do not apprise us of error through evidence or technical
reasoning that providing the system of AAPA with Lifson’s bypass conduit
50 would result in a system that will not function as a refrigerant system.
Even if the refrigerant flowing through lines 32, 38 is mixed, Appellants do
not provide a persuasive technical argument or objective evidence that such
a shortcoming would have been sufficient to dissuade a person of ordinary
skill in the art from modifying the system of AAPA’s Figure 1 according to
Lifson in order to “achieve a wide variety of capacities”. Moreover, the
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Examiner is correct that maintaining separate refrigerant flow through lines
32, 38 can be achieved in the system of AAPA and Lifson “by simply
shutting/or closing the flow control device on the bypass line when
necessary.” Ans. 3^4.
Lastly, even though in Lifson the two flows are recombined within a
single compression chamber (see Reply Br. 1, filed Dec. 21, 2015), we note
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 L.2d 1091, 1097 (Led. Cir.
1986). Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 L.2d 413, 425 (CCPA 1981). In this case, the Examiner is providing
Lifson’s bypass line 50 to communicate between suction line 38 and return
line 32 of figure 1 of AAPA and is not employing Lifson’s combined flows.
See Pinal Act. 3.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over AAPA and Lifson.
Claims 2—6, 10—12, and 14 fall with claim 1.
Rejections II—VI
Appellants do not present other substantive arguments separate from
the arguments discussed supra in Rejection 1. See Appeal Br. 2-4.
Therefore, for the same reasons discussed above, we also sustain the
rejections under 35 U.S.C. § 103(a) of claim 7 as unpatentable over AAPA,
Lifson, and Olsen; claim 8 as unpatentable over AAPA, Lifson, and Saito;
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Application 12/667,280
claim 9 as unpatentable over AAPA, Lifson, and Sjoholm; claim 13 as
unpatentable over AAPA, Lifson, and Clark; and claim 15 as unpatentable
over AAPA, Lifson, and Manole.
SUMMARY
The Examiner’s decision to reject claims 1—15 under 35 U.S.C. § 103(a)
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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