Ex Parte Sundheim et alDownload PDFPatent Trial and Appeal BoardMay 18, 201813240858 (P.T.A.B. May. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/240,858 09/22/2011 Gregory S. Sundheim 23381 7590 05/18/2018 Dorr, Carson & Birney, P.C. 5299 DTC Boulevard Suite 260 Greenwood Village, CO 80111 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. 2195/12(b) 3659 EXAMINER COMINGS, DANIEL C ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 05/18/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY S. SUNDHEIM and CHRISTIAN L. PENA Appeal2017-007457 1 Application 13/240,8582 Technology Center 3700 Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision references the Appeal Brief ("Br.," filed Oct. 13, 2016), the Examiner's Answer ("Ans.," mailed Feb. 2, 2017), and the Final Office Action ("Final Act.," mailed Nov. 30, 2015). 2 According to Appellants, the real party in interest is Gregory S. Sundheim. Appeal Br. 3. Appeal2017-007457 Application 13/240,858 BACKGROUND According to Appellants, "[the] invention relates to the field of portable, refrigerant recovery units." Spec. 1, 11. 3--4. CLAIMS Claims 1 and 15 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A portable, refrigerant recovery unit for transferring refrigerant from a refrigeration system to a storage tank, said recovery unit including: first and second piston heads (21,21 ') respectively rigidly attached to first and second piston rods (23 ,23 '), said piston rods extending along a common fixed axis (25) and being respectively rigidly attached to a yoke member (29) of a scotch yoke arrangement (31) to extend in opposite directions along said common fixed axis (25), said scotch yoke arrangement (31) translating rotational motion of a driving member into reciprocal movement of said yoke member (29) and rigidly attached piston rods (23 ,23 ') and piston heads (21,21 ') along said common fixed axis (25), each piston head being slidably and sealingly received in a cylinder (33,33') having a first side wall portion (35,35') and a first end wall (37,37'), said first end wall having an inlet (39,39') and outlet (41,41') therethrough with respective one- way valves (43,43' and 45,45') therein, each piston head having an outer surface (47,47') opposing said first end wall to define a first chamber (49,49') with said first end wall (37,37') and said first side wall portion (35,35') of said cylinder (33,33'), said recovery unit further including incoming lines (7, 7') in fluid communication with each other and each inlet of each first chamber upstream of the respective valve (43,43') in each inlet, said incoming lines additionally being in fluid communication with the refrigerant in said refrigeration system, each reciprocating piston rod (23 ,23 ') moving the respective piston head (21,21 ') along said common fixed axis 2 Appeal2017-007457 Application 13/240,858 (25) relative to each first end wall (37 ,37') between first and second positions to respectively expand the volume of the first chamber ( 49 ,49') to receive refrigerant from said refrigeration system into said first chamber and to contract the volume of the first chamber to drive said refrigerant out of said first chamber, each piston head being in the respective first and second positions when the other piston head is in the respective second and first positions wherein any opposing forces (F ,F') exerted by the refrigerant on the respective outer surfaces (47,47') of the piston heads (21,21 ') along the common fixed axis (25) counterbalance one another, each piston head (21,21 ') further having an underside (51,51') adjacent the piston rod (23,23') attached to the piston head (21,21 ') and extending about the piston rod and outwardly of the common fixed axis (25), said recovery unit further including second end walls (53,53') respectively opposing the undersides ( 51,51 ') of the respective piston heads (21,21 ') to define a respective second chamber (55,55') with the respective underside (51,51') and a respective second side wall portion (57,57') of the respective cylinder (33,33'), each piston rod (23,23') being respectively slidably and sealingly received in the respective second end wall (53,53'), said recovery unit further having a respective exhaust line ( 61,61 ') extending between the respective second chamber (55,55') and the respective incoming line (7,7'), each exhaust line ( 61, 61 ') having a one-way valve ( 63, 63 ') therein to restrict flow through the respective exhaust line ( 61,61 ') to one direction from the respective second chamber (55,55') to the respective incoming line (7, 7') to direct contents of the respective second chambers (55,55') to the respective incoming line (7,7') upstream of the respective inlet valve (43,43') to the respective first chamber (49,49') wherein each reciprocating piston rod (23 ,23 ') moves the respective piston head (21,21 ') along the common fixed axis (25) relative to the respective first end wall (37,37') of the respective cylinder (33,33') between said first and second positions to respectively contract and expand the volume of the respective second chamber (55,55'), said one-way valve (63,63') in said respective exhaust line 3 Appeal2017-007457 Application 13/240,858 (61,61 ') being (a) opened as the volume of the respective second chamber (55,55') contracts to positively drive the contents of the respective second chamber (55,55') out of the second chamber (55,55') and into the respective incoming line (7, 7') and (b) closed as the volume of the respective second chamber (55,55') expands. Br. 27-28. REJECTION The Examiner rejects claims 1-24 under 35 U.S.C. § I03(a) as unpatentable over Sundheim3 in view of Shao4 and Tasco. 5 DISCUSSION Claims 1-4 and 6-14 With respect to claim 1, the Examiner finds that Sundheim discloses a refrigerant recovery unit as claimed except that "Sundheim does not teach the piston chambers each including an exhaust line connected behind the pistons and provided with one-way outlet valve[s] for emptying the spaces on the backstroke of the piston by 'positively' driving the contents of the chamber out." Final Act. 3---6 (citing Sundheim, Fig. 4; ,r,r 24, 25, 30, 35). With respect to these elements, the Examiner relies on Shao and Tasco. Id. at 6-7. As discussed below, we are not persuaded of reversible error in the rejection of claim 1 by Appellants' arguments. Appellants first argue that "[i]f Shao's teaching were applied to [Appellants'] design as proposed by the Examiner, then there would among 3 Sundheim, US 2006/0127231 Al, pub. June 15, 2006. 4 Shao, US 5,076,769, issued Dec. 31, 1991. 5 Tasco Japan, Co., Ltd., Model TAI I OMX, Figure A, Mar. 1, 2011. 4 Appeal2017-007457 Application 13/240,858 other things be a one-way valved inlet added to each of [Appellants'] underside piston chambers 55, 55' in ... Figure 4." Br. 14. Appellants assert that the present invention does not include any one-way valved inlets and Appellants "do[] not want valved inlets [in the] refrigerant system or source 7,7' into [the] underside piston chambers 55, 55'." Id. at 14--15 (emphasis omitted). We are not persuaded by this argument at least because Appellants have not shown how the addition of any one-way valved inlets would be contrary to the claim language at issue here. Although the Specification may indicate that one-way valved inlets are unwanted, Appellants have not pointed to any language in the claim that excludes the addition of components such as one-way valved inlets. See Ans. 13-14. Next, Appellants argue that Shao teaches directing "the contents of his underside piston chamber through a one way valve 22b to his discharge line," which "is essentially the opposite of ... claim 1 which calls for the contents of [the] underside piston chambers (55,55') to be directed to the respective incoming refrigerant line 7, 7 upstream of the respective inlet valve 43,43' to the respective first chamber 49,49' .... " Br. 15. Because Shao teaches that the contents of the underside of the piston head are directed to the discharge line, Appellants assert that Shao teaches away from Appellants' design. Id. at 16. We agree with the Examiner that this argument against Shao individually is not persuasive. Rather, the Examiner notes that Shao "is relied upon only to teach the arrangement of valves at the back of the piston and the use of the piston's backstroke for driving fluid out from within the pump chamber." Ans. 15. And the Examiner separately relies upon Tasco as showing "a pump having an outlet line arranged on the backside of the piston heads thereof and communicating the back spaces of 5 Appeal2017-007457 Application 13/240,858 the pistons to the inlet line of the pump." Id. Thus, the Examiner relies on Tasco, and not Shao, with respect to the requirement that the piston is connected "upstream of the inlet of the front piston chamber so that refrigerant driven out flows to the incoming line." See Final Act. 7. Thus, Appellants' argument here fails to address specific combination relied upon by the Examiner. Further, to the extent Appellants argue that Shao teaches away from the claimed invention, we disagree. Appellants argue that the present Specification distinguishes Shao and that Shao discloses an alternative embodiment than the embodiment in Appellants' Specification. Br. 14--16. Appellants do not otherwise point to any evidence in the prior art showing why Shao may be said to teach away from the claimed device. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, ... would be led in a direction divergent from the path that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001 ). We note that a determination of whether a references teaches away is based on the reference itself, and Appellants do not adequately explain how any description of the embodiments in the present Specification is relevant to this analysis. Further, the mere presence of an alternative arrangement in the art is not sufficient to show that the art teaches away. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away ... if it merely expresses a general preference for an alternative invention[.]"). Because Appellants have not pointed to any evidence in the prior art that would have discouraged a person of ordinary skill in the art from pursuing the path taken by Appellants, we are not persuaded that Shao teaches away from the claimed device. 6 Appeal2017-007457 Application 13/240,858 Next, Appellants argue that Tasco's system includes drawbacks that are specifically addressed in Appellants' disclosure. Br. 16. More specifically, Appellants assert that claim 1 requires sealing the piston heads in a cylinder and that Tasco 's piston heads are "not so sealed" and Tasco 's piston rods and drive mechanism are designed to be exposed. Id. at 16-18. Appellants also assert that Tasco has no check valves and does not need them because the "piston undersides are not sealed to create second chambers." Id. at 18. Still further, Appellants assert that Tasco's system does not include an interior volume that is positively driven out by piston movement through check valves. Id. at 18-19. We are not persuaded by this argument for the reasons provided by the Examiner. See Ans. 16-17. Specifically, as noted by the Examiner, the rejection does not rely on Tasco as teaching sealed piston cylinders because the Examiner finds that "Sundheim teaches ... a pump having a pair of opposed piston heads each disposed in a counter balanced arrangement in mutually separate, sealed piston cylinders and each having check valves arranged to provide inlets and outlets to the piston cylinders." Id. at 17. The Examiner makes clear that Tasco "is relied upon ... only [ to show] the specific structure of the piston outlet connected to the pump's inlet line." Id. at 16-1 7. Thus, we agree with the Examiner that Appellants' argument here does not address the scope of the rejection before us, which does not rely on Tasco for the elements discussed by Appellants. Finally, Appellants assert, without further explanation, that "the Examiner as to claim 1 has merely pointed to individual structural features in various environments but there is no teaching, suggestion, motivation, or anything else other than [Appellants'] own disclosure to put them together in 7 Appeal2017-007457 Application 13/240,858 the manner of claim 1." Br. 21. We are not persuaded of reversible error by this argument. In the rejection, the Examiner set forth reasoning for making the proposed combination of Sundheim, Shao, and Tasco. See Final Act. 6- 7. Appellants do not address the Examiner's reasoning, and without further explanation, we are not persuaded that the Examiner's reasoning is inadequate or based solely on Appellants' disclosure. Based on the foregoing, we are not persuaded of reversible error with respect to the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. For the same reasons, we sustain the rejections of claims 2--4 and 6-14, for which Appellants do not present separate arguments. Claim 5 Claim 5 depends from claim 1 and further requires: wherein the common fixed axis (25) extends substantially horizontally and each respective exhaust line ( 61 ,61 ') has an inlet extending from the respective second chamber (55,55') downwardly along a substantially vertical axis substantially perpendicular to the horizontally extending common fixed axis 25 substantially at the lowest location of the respective second chamber (55,55') relative to the common fixed axis (25). Br. 29. With respect to the rejection of claim 5, Appellants argue that Sundheim discloses valved outlets extending horizontally and parallel to the fixed axis; Shao teaches outlet valves stacked vertically; and "[ t ]here is no teaching, suggestion, motivation, or anything else to lay [Shao] on its side" or with the valves 20b, 22b at their lowest positions." Br. 20. Appellants further assert that "[Shao] even appreciates the potential problem that may exist in dealing with undesirable elements in the fluids he is pumping ... let alone how to solve it." Id. 8 Appeal2017-007457 Application 13/240,858 As discussed below, we are not persuaded of reversible error in the rejection by these arguments. With respect to this claim, the Examiner finds that the combination as proposed with respect to claim 1 would have the claimed orientation of exhaust lines and inlet locations. In particular, the Examiner indicates that when the pistons of the art are positioned such that the axes of the pistons are aligned horizontally, Shao includes exhaust lines and inlets oriented as claimed. Final Act. 8. We agree. The axis along the piston in Shao runs perpendicular to the exhaust lines at the inlets to those lines, and if the piston is arranged so that the axis is horizontal, the outlet passages 21 b, 23b can be arranged at the lowest point of the chambers. See Shao, Fig. 1. Further, we agree with the Examiner that Appellants' argument seems to only consider the art individually and outside the context of the combination proposed by the Examiner. Without further explanation from Appellants, we are not persuaded that the Examiner erred in finding that one of ordinary skill in the art would have maintained the orientation of the outlets of Shao relative to the piston when combining Sundheim and Shao as proposed. As such, we agree with the Examiner that the combination teaches the orientation claimed. Accordingly, we are not persuaded of reversible error with respect to this rejection and we sustain it. Claims 15-2 4 With respect to claims 15-24, Appellants argue only that the rejection should be reversed for the same reasons discussed with respect to claims 1 and 5. Br. 23-24. Having found no reversible error with respect to claims 1 9 Appeal2017-007457 Application 13/240,858 and 5, we are also not persuaded of error with respect to claims 15-24. Accordingly, we sustain the rejection of claims 15-24. CONCLUSION We AFFIRM the rejections of claims 1-24. 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 10 Copy with citationCopy as parenthetical citation