Ex Parte O'Brien et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09849705 (B.P.A.I. Jun. 30, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. O’BRIEN, GEORGE C. YANG
and MICHAEL COLLINS
__________
Appeal No. 2003-1723
Application 09/849,705
___________
ON BRIEF
___________
Before HAIRSTON, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, all of the claims pending in
this application. On page 2 of the answer, the examiner
indicates that claims 4 through 6 are now “objected to as being
dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of
Appeal No. 2003-1723
Application 09/849,705
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the base claim and any intervening claims.” Accordingly, the
appeal as to claims 4 through 6 is dismissed, and only the
examiner’s rejection of claims 1 through 3, 7 and 8 remains for
our consideration on appeal.
Appellants’ invention is directed to a system for monitoring
the operation of a heater (10) for heating oil used in
lubricating the moving parts of a compressor (14). As noted on
page 2 of the specification,
[T]he sensing is preferably accomplished by a transformer in
combination with an amplifier providing a feedback signal to
the programmed microprocessor. The transformer is installed
in the line which carries the electrical current flowing
through the resistance heater. The microprocessor checks
for the presence of an appropriate voltage level from the
amplifier. In the event that the voltage level is not above
a threshold level, the microprocessor sends an alarm signal
indicating that the crankcase heater is not operating
properly.
Independent claim 1 is representative of the subject matter
on appeal and a copy of that claim can be found in Appendix A of
appellants’ brief.
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Application 09/849,705
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The prior art references of record relied upon by the
examiner in rejecting the claims on appeal are:
Saunders et al. (Saunders) 4,307,775 Dec. 29, 1981
Schwecke 5,054,293 Oct. 8, 1991
Claims 1 through 3, 7 and 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schwecke in view of Saunders.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted § 103 rejection and the
conflicting viewpoints advanced by appellants and the examiner
regarding the rejection, we make reference to the final rejection
(Paper No. 6, mailed October 4, 2002) and the examiner's answer
(Paper No. 9, mailed March 24, 2003) for the reasoning in support
of the rejection, and to appellants’ brief (Paper No. 8, filed
February 11, 2003) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art references, and to the respective positions
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Application 09/849,705
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articulated by appellants and the examiner. As a consequence of
our review, we have made the determination that the above-noted
§ 103 rejection will not be sustained. Our reasons follow.
In the rejection of claims 1 through 3, 7 and 8 under
35 U.S.C. § 103(a) based on the combined teachings of Schwecke
and Saunders, the examiner urges (final rejection, page 2) that
Schwecke discloses the invention “substantially as claimed,”
noting only that Schwecke discloses a system for stopping the
compressor of a refrigeration system/heat pump when the oil
heater (36) of the compressor fails to operate. Although failing
to identify any specific differences between the system of
Schwecke and appellants’ claimed subject matter, the examiner
next points to Saunders and observes that this patent teaches use
of a transformer (14) in a heating element circuit in order to
monitor the failure of the heater to operate. Following such
observation, the examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of
appellants’ invention to have modified the system of Schwecke
“such that it included the use of a transformer in the oil heater
circuit in order to monitor the failure of the heater in view of
the teachings of Saunders” (final rejection, page 3). However,
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Application 09/849,705
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on page 3 of the answer, the examiner belatedly puts forth the
somewhat different view that Saunders is not applied in order to
provide an additional current sensor to the system of Schwecke,
but rather to replace the heater failure circuit taught in
Schwecke with a transformer current sensor arrangement like that
in Saunders.
Appellants argue, and we strongly agree, that the examiner’s
attempted combination of the disparate systems of Schwecke and
Saunders is merely an exercise in hindsight reconstruction of the
claimed invention based on appellants’ own teachings. In that
regard, we note, as our court of review indicated in In re
Fritch, 972 F.2D 1260, 1266, 23 USPQ2d 1780 (Fed. Cir. 1992),
that it is impermissible for the examiner to use the claimed
invention as an instruction manual or "template" in attempting to
piece together isolated disclosures and teachings of the prior
art so that the claimed invention is rendered obvious.
In the present case, while appellants and Schwecke are
attempting to solve the same general problem of protecting a
compressor operating in a refrigeration device/heat pump from
damage due to failure of the heater for maintaining lubricating
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Application 09/849,705
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oil contained in a crankcase of the compressor at a predetermined
temperature, they each solve that problem in an entirely
different way. Saunders, on the other hand, is concerned with the
larger problem of protecting a temperature conditioning system as
a whole and detecting and indicating the failure of one or more
of the main devices of the system (Figs. 1-3) and then locking
out operation of such one or more failed devices, as well as de-
energizing other devices which are dependent on the continued
operation of the failed one or more devices. Saunders makes no
mention of protecting a compressor operating in a refrigeration
device/heat pump from damage due to failure of a heater for
maintaining lubricating oil contained in a crankcase of the
compressor at a predetermined temperature and, in our view,
provides no teaching or suggestion of modifying such a
compressor/oil heater system.
In that regard, we additionally note that the mere fact that
the prior art could be modified in the manner urged by the
examiner would not have made such a modification obvious unless
the prior art suggested the desirability of the modification.
See, for example, In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). In this case, it is our opinion that the
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Application 09/849,705
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prior art does not contain such a suggestion and that the
examiner has impermissibly drawn from appellants’ own teaching
and fallen victim to what our reviewing Court has called “the
insidious effect of a hindsight syndrome wherein that which only
the inventor has taught is used against its teacher.” W.L. Gore
& Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983).
Since we have determined that the teachings and suggestions
found in Schwecke and Saunders would not have made the subject
matter as a whole of independent claim 1 on appeal obvious to one
of ordinary skill in the art at the time of appellants’
invention, we must refuse to sustain the examiner’s rejection of
that claim under 35 U.S.C. § 103(a). It follows that the
examiner’s rejection of dependent claims 2, 3, 7 and 8 under
35 U.S.C. § 103(a) on the basis of the combined teachings of
Schwecke and Saunders will likewise not be sustained.
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Accordingly, the decision of the examiner to reject claims 1
through 3, 7 and 8 of the present application under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2003-1723
Application 09/849,705
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William F. White
Carrier Corporation
P.O. Box 4800
Syracuse, NY 13221-4800