Ex Parte Nagata et alDownload PDFPatent Trial and Appeal BoardJan 30, 201813824414 (P.T.A.B. Jan. 30, 2018) Copy Citation 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. 13/824,414 03/18/2013 Itaru Nagata 70404.1424/sa 4814 54072 7590 02/01/2018 SHARP KABUSHIKI KAISHA C/O KEATING & BENNETT, LLP 1800 Alexander Bell Drive SUITE 200 Reston, VA 20191 EXAMINER DUKE, EMMANUEL E ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): JKEATING@KBIPLAW.COM u spto @ kbiplaw. com epreston @ kbiplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ITARU NAGATA, KAZUHISA MISHIRO, and RYOTA ONISHI1 Appeal 2017-004222 Application 13/824,414 Technology Center 3700 Before KEN B. BARRETT, JAMES P. CALVE, and FREDERICK C. LANEY, Administrative Patent Judges. Opinion of the Board filed by Administrative Patent Judge CALVE. Opinion Dissenting filed by Administrative Patent Judge BARRETT. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 1—18. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Sharp Kabushiki Kaisha is identified as the real party in interest. Appeal Br. 2. Appeal 2017-004222 Application 13/824,414 CLAIMED SUBJECT MATTER Claims 1 and 7 are independent. Illustrative claim 1 is shown below. 1. An air conditioner comprising: a compressor that operates a refrigeration cycle; an outdoor heat exchanger that is disposed outdoors; an indoor heat exchanger that is disposed indoors; an outdoor fan that supplies outdoor air to the outdoor heat exchanger; and an indoor fan that supplies indoor air to the indoor heat exchanger, wherein the indoor fan and the outdoor fan are driven and a refrigerant is flowed by the compressor in a direction through the indoor heat exchanger and the outdoor heat exchanger so as to perform a warming operation; in a case where the outdoor heat exchanger has frost, the indoor fan and the outdoor fan are stopped, and the refrigerant is flowed in a direction opposite to the direction of the warming operation so as to perform a defrosting operation; in a case where a temperature of the outdoor heat exchanger rises higher than a first temperature during the defrosting operation, the warming operation is resumed; in a case where the temperature of the outdoor heat exchanger does not rise above the first temperature and an output temperature of the refrigerant output from the compressor declines below a second temperature during the defrosting operation, existence of defective defrosting is determined; in a case where the existence of the defective defrosting has been determined, the compressor and the outdoor fan are driven, the indoor fan is stopped and the refrigerant is flowed in the direction of the warming operation so as to perform a defrosting preparation operation, thereafter, the defrosting operation is resumed; and in the case where the temperature of the outdoor heat exchanger rises higher than the first temperature during the defrosting operation, the warming operation is resumed without performing the defrosting preparation operation. Appeal Br. 14 (Claims Appendix). 2 Appeal 2017-004222 Application 13/824,414 REJECTIONS Claims 1—14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nishihara (WO 2010/032430 Al, pub. Mar. 25, 2010), Yoshioka (US 2005/0257558 Al, pub. Nov. 24, 2005), and So (US 2004/ 0003604 Al, pub. Jan. 8, 2004). Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nishihara, Yoshioka, So, and Kitakakiuchi (JP 04- 013037, pub. Jan. 17, 1992). ANALYSIS Claims 1—14, 17, and 18 Rejected Over Nishihara, Yoshioka, and So The claimed air conditioner (claim 1) and method of controlling an air conditioner (claim 7) perform a warming operation. When the outdoor heat exchanger (coils) has frost, the direction of flow of refrigerant is reversed to a cooling operation. If the temperature of the outdoor heat exchanger does not rise sufficiently during defrosting and the temperature of refrigerant output from the compressor falls below a second temperature, the refrigerant is flowed in the direction of a warming operation but the indoor fan is stopped while the outdoor fan is driven. The Examiner finds that Nishihara determines a defective defrosting operation as recited above and performs a defrosting preparation operation by flowing refrigerant in the direction of the warming operation as claimed. Final Act. 7—4. In particular, the Examiner relies on step S5 of Nishihara’s defrosting operation to teach the claimed defective defrosting and warming operation. Id. at 4 (citing Nishihara 36, 37, 66, 74, and 75); Ans. 2—3 (“step S5 condition constitutes existence of defective defrosting”). 3 Appeal 2017-004222 Application 13/824,414 Nishihara teaches two defrosting operations. Step S4 blows ambient air on the outdoor heat exchanger with outdoor fan. Step S5 operates the compressor in a cooling circuit to defrost the outdoor heat exchanger. Claims 1 and 7 require the refrigerant to be flowed in the direction of a warming operation to perform a defective defrosting operation. Appeal Br. 14, 16. In contrast, Nishihara’s Step S5 flows refrigerant in the direction of a cooling circuit to defrost the outdoor heat exchanger. Nishihara H 36—37. In Step S5 of Nishihara’s defrosting operation, refrigerant flows in the direction of a cooling circuit, not in the direction of a warming operation, as claimed. A defrosting operation is performed “by switching of the four-way valve is conducted at step S5.” Nishihara 136. “[T]he ‘defrosting operation by switching of the four-way valve’ means a defrosting operation that is conducted by switching the four-way valve 2 from the heating circuit to the cooling circuit to cause the refrigerant to flow in an opposite direction in the refrigerating cycle.” Id. 137 (emphasis added); see also id. ff 66, 72—73. Nishihara also teaches that outdoor fan 8 and indoor fan 7 are stopped when four-way valve 2 is switched to the cooling circuit for defrosting in Step S5. Id. 173. In contrast to Nishihara’s defrosting operation, claims 1 and 7 require the outdoor fan to be driven during the defective defrosting operation/preparation. Appeal Br. 14, 16 (Claims Appendix); see Ans. 2—3. Nor does Nishihara’s alternative defrosting operation at step S4 teach the claimed defective defrosting/defrosting preparation operation as claimed. Nishihara teaches that if the outside atmospheric air temperature is > 1°C (i.e., above freezing), operation of compressor 1 is stopped and outdoor fan 8 blows atmospheric air on the outdoor heat exchanger to defrost the coils. Id. 1174—75; see also id. H 36-37, 42-A4. 49-50, Fig. 3. 4 Appeal 2017-004222 Application 13/824,414 Because Nishihara’s ambient air defrosting operation (step S4) stops the compressor, it does not teach the claimed defrosting operation, which operates the compressor and refrigerant flow in a cooling direction, or the claimed defective defrosting operation, which operates the compressor and refrigerant flow in a warming direction. Id. at || 36—37, 42-43, 53—55. The Examiner’s reliance on Yoshioka to teach “the compressor and the outdoor fan being driven during defrosting and the indoor fan not driven” (Final Act. 4) does not address these deficiencies in Nishihara.2 The defrost cycle of Yoshioka “is a reverse cycle system in which a refrigerant is circulated in the direction reverse to that of the heating cycle.” Yoshioka | 614. Thus, it is a conventional defrost cycle like Step S5 of Nishihara. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) holds that “[a]n invention need not operate differently than the prior art to be patentable, but need only be different.” In other words, an applicant is not required to define a claimed apparatus by its functionality or how it operates. However, it also is well-settled that “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” In reSchreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants have claimed “[a]n air conditioner” by its structure and how that structure functions when the outdoor heat exchanger has frost. The compressor flows refrigerant in different claimed directions, and the outdoor and indoor fans are selectively driven or stopped for different defrosting operations. 2 The Examiner’s reliance on So to teach resumption of a warming operation without performing the defective defrosting operation (Final Act. 4) does not address this issue either. See Appeal Br. 12. 5 Appeal 2017-004222 Application 13/824,414 Rather than merely reciting an intended use for the air conditioner, the claims recite functional language that describes the design and construction to be used for the claimed air conditioner whereby if the temperature of the outdoor heat exchanger does not rise sufficiently during defrosting and the temperature of refrigerant output from the compressor falls below a second temperature, the refrigerant is flowed in the direction of a warming operation but the indoor fan is stopped while the outdoor fan is driven. An air conditioner with this claimed configuration has not been persuasively shown to be obvious on this record. Thus, we do not sustain the rejection of claims 1—14, 17, and 18. Claims 15 and 16 Rejected Over Nishihara, Yoshioka, So, and Kitakakiuchi The Examiner’s reliance on Kitakakiuchi to teach features of claims 15 and 16 (see Final Act. 7), which depend respectively from claims 1 and 7, does not cure the deficiencies of Nishihara. See Appeal Br. 13 (arguing the patentability of dependent claims for the same reasons as claims 1 and 7). Thus, we do not sustain the rejection of claims 15 and 16. DECISION We reverse the rejection of claims 1—18. REVERSED 6 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ITARU NAGATA, KAZUHISA MISHIRO, and RYOTA ONISHI Appeal 2017-004222 Application 13/824,414 Technology Center 3700 Before KEN B. BARRETT, JAMES P. CALVE, and FREDERICK C. LANEY, Administrative Patent Judges. BARRETT, Administrative Patent Judge, dissenting. I respectfully dissent from my colleagues’ decision. The claims before us include apparatus claims directed to an air conditioner and method claims directed to a method for controlling an air conditioner. Neither the Examiner’s articulation of the rejection nor Appellant’s allegations of error in the Examiner’s rejection draw a substantive distinction between these two categories of claims. Appellant argues that the prior art of record fails to disclose the performance of certain actions. See, e.g., Appeal Br. 7. In other words, Appellant’s position is that the prior art does not teach or suggest the operation of the claimed invention. I fail to see how such arguments show error in the rejection of the apparatus claims. Appeal 2017-004222 Application 13/824,414 Apparatus claim 1 recites certain features that clearly are structural limitations including, for example, a compressor, heat exchangers, and fans. The Examiner found these limitations to be disclosed by Nishihara, Final Act. 3, and there does not appear to be any dispute as to these findings. Cf. Spec. 12 (describing the “conventional” air conditioner as having a compressor, outdoor and indoor heat exchangers, and outdoor and indoor fans). The apparatus claim also recites several conditional clauses in the general format of the phrase “in a case where” followed by a description of the performance of an operational step. Even assuming arguendo that those recitations are functional limitations (as opposed to, e.g., mere statements of intended use), I do not perceive that—and Appellant does not explain persuasively how—those recitations create any structural distinctions between the claimed air conditioner apparatus and that of the prior art. Appellant’s argument is, at most, that the claimed air conditioner is operated differently than the prior art air conditioner. However, “apparatus claims cover what a device is, not what a device does.'” Hewlett-Packard Co. v. Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Because Appellant has not identified error in the rejection of the apparatus claims and because Appellant does not argue separately the method claims, I would affirm the Examiner’s rejection. 2 Copy with citationCopy as parenthetical citation