Ex Parte Teraki et alDownload PDFPatent Trials and Appeals BoardSep 17, 201812446548 - (D) (P.T.A.B. Sep. 17, 2018) Copy Citation 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. 2 Appeal2018-000051 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. 3 Appeal2018-000051 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 4 Appeal2018-000051 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 5 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. 6 Appeal2018-000051 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 7 Copy with citationCopy as parenthetical citation