Ex Parte Mizutani et al

Patent Trial and Appeal Board

May 14, 2014

10521020 (P.T.A.B. May. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KAZUHIDE MIZUTANI,
HIROMUNE MATSUOKA, ATSUSHI YOSHIMI, and
MANABU YOSHIMI
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Appeal 2012-004791
Application 10/521,020
Technology Center 3700
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Kazuhide Mizutani et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 5-7, 11, and 12. Appellants’
representative presented oral argument on May 8, 2014. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claims 7 and 11 are independent. Claim 7, reproduced below,
illustrated the claimed subject matter, with the key disputed limitations
emphasized.
7. A refurbished air conditioner comprising:
existing refrigerant piping that was used with an existing
air conditioner being composed of an old heat source unit and
an old user unit and contains residue of an existing mineral-oil-
based refrigerant oil, the existing refrigerant piping being
connected the old heat source unit and the old user unit, the
existing refrigerant piping being reused as is when updating the
air conditioner is complete;
a new heat source unit and a new user unit that are
connected together by the existing refrigerant piping with a
replaced working refrigerant disposed therein, the new heat
source unit and the new user unit replacing the old heat source
unit and the old user unit when updating the air conditioner is
complete; and
an oil collecting device that is configured such that after
the existing refrigerant oil has been changed and before the
refurbished air conditioner is run in a normal operating mode,
the oil collecting device can draw in the replaced working
refrigerant that is being circulated through the air conditioner
and separate the existing refrigerant oil that is carried with the
replaced working refrigerant, the oil collecting device being
disposed in the new heat source unit, the oil collecting device
includes an oil collecting container, an inlet pipe, an inlet valve,
and an outlet pipe therein,
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the replaced working refrigerant being an HFC
refrigerant containing at least 40 wt% of R32 that serves as a
cleaning agent but contains no R134a refrigerant.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Taira US 7,003,980 B2 Feb. 28, 2006
Unezaki JP 2002-357377 A Dec.13, 2002
Rejection
Claims 5-7, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Unezaki and Taira. Ans. 5.

OPINION
Independent claim 7 recites, among other things, a refurbished air
conditioner comprising a new heat source unit replacing an old heat source
unit, and an oil collecting device disposed in the new heat source unit. The
Examiner finds that Unezaki teaches updating an air conditioning system
comprising a heat source unit 11, 28 and an oil collecting device 9. Ans. 5.
Appellants argue that the Examiner errs in finding that Unezaki’s
washing station 11 and heat source 28 together read on the claimed “new
heat source.” App. Br. 12. According to Appellants, Unezaki’s pipe
washing station 11 (and its oil collecting device 9) is removed after the
washing operation so that it cannot form part of a new heat source of a
refurbished air conditioner. Id. (citing Unezaki, para. [0045], Figs. 19 and
22).
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The Examiner responds that “the interpretation of piping washing
station (11) and the heat source (28) of Unezaki as a new heat source unit of
a ‘refurbished air conditioner’ as claimed is reasonably proper and not
erroneous.” Ans. 10. According to the Examiner, during recovery and
washing, Unezaki’s heat source 11 works as a new heat source because it is
newly installed to carry out recovery and washing. Id. The Examiner states
that claim 7 is open ended because it does not “prevent removal of heat
source after the recovery and washing operation.” Id.
We do not agree with the Examiner’s finding that Unezaki’s washing
station 11 is a new heat source unit as recited in claim 7. The Examiner fails
to proffer a reasonable interpretation of the term “heat source unit”1 and
explain how Unezaki’s washing station 11 reads on that interpretation.
Further, Unezaki’s washing station 11 does not replace an old heat source
unit when updating of the (refurbished) air conditioner is complete; rather,
Unezaki’s washing station 11 is connected to the air conditioner piping
during refurbishing and must be removed for the refurbishing to be
complete. We therefore do not sustain the rejection of claim 7 under 35
U.S.C. § 103(a).
Independent claim 11 recites “replacing selected old equipment . . .
including an old heat source unit,” “the existing refrigerant piping being
connected to a new heat source unit,” and “the oil collecting device being
disposed in the new heat source unit when updating the air conditioner is
complete.” Claim 11 thus recites that a new heat source unit including an oil
collecting device replaces an old heat source unit. The Examiner sets forth

1 Appellants set forth various components of a “heat source unit” on page 9
of the Specification.
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the same findings and conclusions for independent claims 7 and 11. For the
reasons set forth above with respect to claim 7, we disagree with the
Examiner that Unezaki’s washing station 11 is a new heat source unit as
claimed. We therefore do not sustain the rejection of claim 11 under 35
U.S.C. § 103(a). Dependent claims 5, 6, and 12 depend directly or indirectly
from claim 11. For the reasons set forth with respect to independent claim
11, we do not sustain the rejection of claims 5, 6, and 12 under 35 U.S.C.
§ 103(a).

DECISION
We reverse the rejection of claims 5-7, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Unezaki and Taira.

REVERSED.

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