Ex Parte Teraki et al

Patent Trial and Appeal Board

Sep 17, 2018

12446548 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/446,548 04/21/2009
127226 7590 09/19/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Junichi Teraki
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.
2257-0322PUS 1 6914
EXAMINER
A VILES BOSQUES, ORLANDO E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI TERAKI and
TAKAYUKI SETOGUCHI
Appeal2018-000051
Application 12/446,548 1
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1 and 5-23 2. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Under the Appeal Brief heading Real Party in Interest, Appellants identify
"DAIKIN INDUSTRIES, LTD." Appeal Br. 1.
2 The Examiner objects to claims 2--4, because although they depend from
rejected claims, the claims recite allowable subject matter. Final Action 13.
Appeal2018-000051
Application 12/446,548
According to Appellants, the "invention relates to heat exchange
systems such as air conditioning systems." Spec. ,r 1. Below, we reproduce
independent claim 1 as illustrative of the appealed claims.
1. A heat exchange system comprising:
a first heat exchanger;
a second heat exchanger;
a compressor provided on a first path that is one of two
paths connecting said first heat exchanger and said second heat
exchanger, said compressor compressing a refrigerant;
a variable throttle provided on a second path of the two
paths connecting said first heat exchanger and said second heat
exchanger, said second path being a path opposite to the path on
which said compressor is provided;
a permanently fixed throttle provided on said second path;
and
a cooling element that is provided on said second path and
that cools an object to be cooled;
said cooling element being located between said variable
throttle and said permanently fixed throttle, wherein
said variable throttle and said permanently fixed throttle
are located in series on said second path, and
refrigerant that flows through one of the permanently fixed
throttle and the variable throttle flows into to [sic] the cooling
element, and then flows to the other one of the permanently fixed
throttle or the variable throttle, in this order.
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Application 12/446,548
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 5-19, 22, and 23 under 35 U.S.C. § I02(b) as
anticipated by Hirakanu et al. (US 2003/0074914 Al, pub.
Apr. 24, 2003) ("Hirakanu"); and
II. Claims 20 and 21 under 35 U.S.C. § I03(a) as unpatentable
over Hirakanu, Phillips (US 4,193,268, iss. Mar. 18, 1980), and
Brendel (US 4,240,263, iss. Dec. 23, 1980).
ANALYSIS
Reiection I
Independent claim 1 and its dependent claims 5-13 and 22
As set forth above, independent claim 1 recites a specific
arrangement, in which "a permanently fixed throttle [is] connected in series
with a variable throttle on a path [that connects] a first heat exchanger and a
second heat exchanger and [in which] a cooling element [is] located between
said variable throttle and said permanently fixed throttle." Appeal Br. 3--4
( emphasis omitted). In claim 1 's rejection, the Examiner finds that Hirakanu
discloses, with reference to Figures 1 and 2, throttle device 11 of flow
controller 6 (i.e., the claimed "permanently fixed throttle") connected in
series with flow controller 4 (i.e., the claimed "variable throttle") on a path
that also connects heat exchanger 3 (i.e., the claimed "first heat exchanger")
and heat exchanger 7 (i.e., the claimed "second heat exchanger"), where heat
exchanger 5 (i.e., the claimed "cooling element") is located on the path
between flow controller 4 and throttle device 11. Answer 2-3; Hirakanu
Figs. 1, 2.
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Application 12/446,548
Nonetheless, Appellants argue that the rejection is in error because, as
shown in Hirakanu's Figure 2, flow controller 6 includes two parallel
paths----one through throttle device 11, and another through two-way
valve 12. Appeal Br. 4--5, Hirakanu Fig. 2. Thus, according to Appellants,
because two-way valve 12 may be opened so that no refrigerant flows
though throttle device 11 (i.e., because refrigerant may flow down the path
without being acted upon by throttle device 11 ), "the throttle 11 of Hirakanu
cannot reasonably be found to be equivalent to a 'permanently fixed throttle
provided on said second path' as recited in claim 1." Appeal Br. 4--5.
We disagree with Appellants' argument that the Examiner errs,
however. As discussed above with respect to Hirakanu's Figures 1 and 2,
the Examiner supports adequately that Hirakanu discloses the specific
arrangement of components argued by Appellants. Further, claim 1 does not
preclude the existence of an alternate path for refrigerant flow. It is
sufficient that Hirakanu discloses throttle device 11 of flow controller 6 (i.e.,
the claimed "permanently fixed throttle") connected in series with flow
controller 4 (i.e., the claimed "variable throttle") on a path that also connects
heat exchanger 3 (i.e., the claimed "first heat exchanger") and heat
exchanger 7 (i.e., the claimed "second heat exchanger"), where heat
exchanger 5 (i.e., the claimed "cooling element") is located on the path
between flow controller 4 and throttle device 11. It is inconsequential that
Hirakanu discloses an alternate path that connects heat exchangers 3, 5,
and 7, and flow controller 4, which does not connect to throttle device 11.
Thus, based on the foregoing, we sustain claim 1 's rejection. Further,
inasmuch as Appellants do not argue separately against the obviousness
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Application 12/446,548
rejection of claims 5-13 and 22 that depend from claim 1, we also sustain
the dependent claims' rejection.
Independent claim 14 and its dependent claims 15-19 and 23
Independent claim 14 recites, in relevant part, "said cooling element
having a permanently fixed throttle as at least part of piping inserted through
said cooling element." Appeal Br., Claims App. The Examiner finds that
Hirakanu teaches the recitation because flow controller 4 is connected to
piping that runs through heat exchanger 5. Final Action 11. Appellants
argue that the rejection is in error for the following reasons:
[T]he Examiner is interpreting the language "having a
permanently fixed throttle as at least part of piping inserted
through the cooling element" to encompass having a throttle
connected to the piping inserted through the cooling element.
Although it is well established that during examination claims
are to be given their broadest reasonable interpretation, the
Examiner's interpretation of claim 14 is unreasonable. Not only
does the Examiner's interpretation ignore the actual claim
language, i.e., "as at least part of piping inserted through the
cooling element," it is inconsistent with the intrinsic evidence.
The [S]pecification clearly discloses embodiments where the
fixed throttle is "connected to" the piping inserted through the
cooling element as shown in Fig[ures] 1-5 and embodiments
where the fixed throttle is "part of' the piping inserted through
the cooling element as shown in Fig[ ures] 6 and 7. In addition,
the Examiner's interpretation of claim 14 renders scope of the
claims 1 and 14 identical[,] which is unreasonable in view of the
doctrine of claim differentiation. Accordingly, the Examiner
erred in interpreting the "having a permanently fixed throttle as
at least part of piping inserted through the cooling element"
language of claim 14 as encompassing a fixed throttle connected
to the piping inserted through the cooling element.
Appeal Br. 5---6. Based on our review of the record, we are persuaded by
Appellants that the Examiner's interpretation is inconsistent with the
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Appeal2018-000051
Application 12/446,548
broadest, reasonable interpretation of claim 14. Thus, we do not sustain
claim 14' s rejection.
The Examiner is correct that the express language of claim 14 "does
not require the permanently fixed throttle to be 'within' the 'cooling
element."' Answer 6. Thus, disregarding what is disclosed by Appellants'
Specification, we would agree that "as long as [ a prior art reference
discloses] piping that is inserted into the cooling element [and which] has
the fixed throttle connected to [the piping], [such] prior art [would]
anticipate" the claim recitation under discussion. Answer 6.
In this case, however, Appellants' Specification consistently describes
the embodiment as shown in their Figures 6 and 7, in which fixed throttle ( or
capillary tube) 18 is disposed entirely within cooling element (or jacket) 20,
as part of piping that is "inserted through" cooling element (or jacket) 20.
See, e.g., Specification ,r,r 98, 101, 103. In contrast, Appellants'
Specification never describes the embodiment as shown in their Figures 1-5,
in which fixed throttle 16 is disposed entirely outside cooling element ( or
jacket) 20 but connected to piping that is itself disposed within cooling
element (or jacket) 20 as "inserted through" cooling element (or jacket) 20.
See id., generally. Thus, consistent with Appellants' Specification, the claim
recitation "said cooling element having a permanently fixed throttle as at
least part of piping inserted through said cooling element" only may be
interpreted as requiring the permanently fixed throttle to be disposed within
the cooling element. Inasmuch as Hirakanu does not disclose such an
arrangement, we do not sustain the rejection of claim 14, or its dependent
claims 15-19 and 23.
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Application 12/446,548
Rei ection II
We sustain the rejection of claim 20, which depends from claim 1, for
the same reasons we sustain claim 1 's rejection.
We do not sustain the rejection of claim 21, which depends from
claim 14, for the same reasons we do not sustain claim I4's rejection.
DECISION
We REVERSE the Examiner's rejections of claims 14--19, 21, and 23.
We AFFIRM the Examiner's rejections of claims 1, 5-13, 20, and 22.
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-IN-PART
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