Ex Parte Bush

Board of Patent Appeals and Interferences

Aug 29, 2012

12756406 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES WILLIAM BUSH
____________

Appeal 2012-011426
Application 12/756,406
Patent US 7,476,092 B1
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James William Bush (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting reissue claims 4-6 and 8-10. This

1 Appellant identifies the real party in interest as Danfoss Scroll
Technologies, which is “part of Danfoss Corporation.” App. Br. 1.
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Application 12/756,406

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reissue application seeks to reissue U.S. Patent 7,476,092 B1, issued January
13, 2009, based on Application 11/850,047, filed September 5, 2007.
Reissue claims 1-3 and 7 have been allowed. Final Office Action, dated
October 21, 2011. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to a scroll compressor. ‘092
patent, col. 1, l. 6. Claim 4, reproduced below, is representative of the
subject matter on appeal.
4. A scroll compressor comprising:
a first scroll member having a base and a generally spiral
wrap extending from the base;
a second scroll member having a base and generally
spiral wrap extending from its base, said spiral wraps of said
first and second scroll members interfitting to define
compression chambers;
said second scroll member having a boss extending from
the base in an opposed direction relative to the generally spiral
wrap, a driveshaft being driven to rotate by a motor about an
axis, and said driveshaft having an eccentric pin extending
upwardly into said boss, and a slider block positioned between
said eccentric pin and said boss; and
said eccentric pin and said slider block each having a
generally flat surface in contact with each other to cause
rotational movement of said rotating shaft to be transmitted to
said second scroll member through said slider block, and said
flat surface on one of said slider block and eccentric pin being
formed to extend at an angle that is non-parallel to said axis,
said generally flat surfaces on said eccentric pin and said slider
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block having a resultant force on said slider block urging said
slider block away from said second scroll member due to said
flat surface on said one of slider block and said eccentric pin.
Independent claim 8 is also directed to a scroll compressor and recites,
in pertinent part:
said eccentric pin and said slider block each having a
generally flat surface in contact with each other to cause
rotational movement of said rotating shaft to be transmitted to
said second scroll member through said slider block, and at
least one of the flat surfaces being angled such that any force
between the two will urge the slider block away from the
orbiting scroll member.
THE REJECTIONS
Appellant seeks review of the following rejections2:
1. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 251 as being
improperly broadened in a reissue application made and sworn to by
the assignee and not the patentee.
2. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 251 as being an
improper recapture of broadened claimed subject matter surrendered
in the application for the patent upon which the present reissue is
based.
3. Claims 4 and 8 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.

2 The Examiner withdrew a rejection of claims 4-6 and 8-10 under 35 U.S.C.
§ 112, second paragraph. Ans. 8.
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4. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Elson (US 4,836,758; iss. Jun. 6, 1989).
ISSUES
The issues presented by this appeal are:
Did the Examiner provide an adequate analysis in support of the
rejection based on impermissible recapture?
Is the subject matter of independent claims 4 and 8 that calls for the
flat surface on the eccentric pin to extend at an angle adequately supported
by the original disclosure?
Is it inherent in the slider block and eccentric pin disclosed in Elson
that the force created by their contact surfaces forces the slider block away
from the second scroll?
ANALYSIS
Rejection (1)
The Final Office Action dated October 21, 2011, from which this
appeal is taken, included both an objection to a Reissue Application
Declaration by the Inventor3 and a rejection of reissue claims 4-6 and 8-10
(“the broadened claims”) under 35 U.S.C. § 251 because the original
Reissue Declaration was made by the Assignee instead of the Inventor.
Final Office Action at 2-3. Appellant seeks review of the Examiner’s
objection to the Reissue Application Declaration by the Inventor. App. Br. 4

3 Appellant filed a Reissue Application Declaration by the Assignee with the
reissue application on April 8, 2010, and filed a subsequent Reissue
Application Declaration by the Inventor on October 17, 2011.
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(arguing that the reissue application declaration filed by the inventor is
proper). The Examiner’s objection to the Reissue Application Declaration
by the Inventor is reviewable by petition under 37 C.F.R. § 1.181 and is thus
not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984
(Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-1404 (CCPA
1971)) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also MPEP
§ 1002.02(c), 8th ed., rev. July 2008, Petitions and Requests Decided by the
Technology Center Directors.
Appellant presents no arguments in the Appeal Brief contesting the
Examiner’s rejection (1) of claims 4-6 and 8-10 under 35 U.S.C. § 251. As
such, we summarily sustain rejection (1) of claims 4-6 and 8-10.
Rejection (2)
Appellant argues that the rejection of claims 4-6 and 8-10 under
35 U.S.C. § 251 based on impermissible recapture should not be sustained
because “the Examiner’s Answer . . . appears to take the position that once
an amendment has been added to the claim, an applicant is not entitled to
broaden back at all” in contradiction to In re Youman, 679 F.3d 1335 (Fed.
Cir. 2012).4 Reply Br. 3. We agree.

4 We consider this argument raised for the first time in the Reply Brief
because the Federal Circuit decided In re Youman after the filing of
Appellant’s Appeal Brief. This fact satisfies the requirement for a showing
of good cause as to why the argument was not raised in the Appeal Brief.
Reply Br. 2. See Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals, 76 Fed. Reg. 72,270, 72,298 (Nov. 22,
2011) (to be codified at 37 C.F.R. § 41.41(b)(2) (“Any argument raised in
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The court in Youman stated that when a limitation added during
prosecution of the original patent to overcome prior art has been broadened,
but not eliminated, during reissue “[s]uch modification does not instantly
implicate the recapture rule bar . . . ; rather, such a broadening modification
must be evaluated to determine if it materially narrows relative to the
original claim such that surrendered subject matter is not entirely or
substantially recaptured.” Youman, 679 F.3d at 1345 (citation omitted). The
Examiner’s rejection appears to take the position that the language of reissue
claims 4 and 8 broadens, but does not eliminate entirely, the limitation added
to overcome the prior art during prosecution of the ‘092 patent. Final Office
Action at 3-5. The Examiner’s rejection fails, however, to determine if the
language of reissue claims 4 and 8 materially narrows the claims relative to
the original claims such that surrendered subject matter is not entirely or
substantially recaptured. Id. As such, we cannot sustain the Examiner’s
rejection (2) of claims 4-6 and 8-10 under 35 U.S.C. § 251.
Rejection (3)
The Examiner determined that the subject matter in claims 4 and 8
that calls for the flat surface on the eccentric pin to extend at an angle is not
supported by the original disclosure. Final Off. Act. 6. Upon review of the
original disclosure and consideration of the knowledge of one of ordinary

the reply brief which was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner’s answer, including any designated
new ground of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”)
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skill in the art and the predictability of the art, we find that the original
disclosure reasonably conveys to one skilled in the art that Appellant had
possession of the subject matter of claims 4 and 8 at the time of filing.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification to satisfy the written description requirement. Id. at 1352.
[A] sufficient description of a genus . . . requires the disclosure
of either a representative number of species falling within the
scope of the genus or structural features common to the
members of the genus so that one of skill in the art can
“visualize or recognize” the members of the genus.
Id. at 1350 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1568-69 (Fed. Cir. 1997)).
If the difference between members of the group is such that the
person skilled in the art would not readily discern that other
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members of the genus would perform similarly to the disclosed
members, i.e., if the art is unpredictable, then disclosure of
more species is necessary to adequately show possession of the
entire genus.
Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004). The
mechanical world, however, is “a fairly predictable field.” Id. at 1126.
The original disclosure describes that in conventional scroll
compressors, “with manufacturing tolerances, there are times when a barrel
shape on the pin can interfit with an unintended angled surface on the slider
block such that a total force from the interaction of the pin and the slider
block includes a vertical or axial component directed toward the scroll pump
set.” Original Spec. in Appl. 11/850,047, as filed on Sep. 5, 2007, at para .
[0003]. See also Original Spec. at para. [0014] (describing, with reference
to Fig. 3, that manufacturing tolerances could include the flat surface in the
slider block being angled so that the contact force would cause the slider
block to move upwardly toward the base of the orbiting scroll). The original
disclosure describes an embodiment of a scroll compressor designed to solve
this problem by angling a contact surface in the slider block “such that any
force created between the eccentric pin and the slider block would include
an axial component away from the pump set.” Original Spec. at para.
[0004]. See also Original Spec. at para. [0015] (describing, with reference
to Fig. 4, the flat surface of a slider block angled so that contact between the
slider block and eccentric pin creates a vertical force that forces the slider
block away from the orbiting scroll member).
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One skilled in the art would understand from the original disclosure
that Appellant had possession of an invention in which an angled surface is
used to ensure that the contact between the eccentric pin and the slider block
forces the slider block away from the orbiting scroll member. The
mechanical field at issue in this appeal is a sufficiently predictable art that
the disclosure of a species, i.e., placing the angled surface on the slider
block, is sufficient disclosure of the genus, i.e., placing the angled surface on
one or more of the flat surfaces of contact to achieve the desired resultant
force. Further, as evidenced by Elson, the knowledge of one skilled in the
art was such a skilled artisan would recognize that an angled surface can be
formed on either of the slider block and the eccentric pin. App. Br. 9 (citing
Elson, col. 2, l. 67 – col. 3, l. 1 (teaching that an inclined flat surface
provided on the flat portion of a slider block could alternatively be provided
on the flat portion of an eccentric pin to achieve the same result)).
As such, we find that the disclosure in the original Specification of an
angled flat surface on a slider block to achieve the desired resultant force
from contact between the slider block and the eccentric pin is an adequate
disclosure of a representative member of the genus so that one of skill in the
art can recognize another member of the genus, i.e., the angled flat surface
being on the eccentric pin. Therefore, the original disclosure is sufficient to
convey to one skilled in the art that Appellant had possession of the subject
matter of claims 4 and 8 at the time of filing. Accordingly, we cannot
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sustain the rejection of claims 4 and 8 under 35 U.S.C. § 112, first
paragraph.
Rejection (4)
The Examiner based the anticipation rejection of claims 4-6 and 8-10
on a finding that the force created by the contact surfaces between Elson’s
slider block 42 and eccentric pin 24 inherently forces the slider block away
from the second scroll 22. Ans. 10. We disagree with this finding.
As noted by Appellant, the angles disclosed for Elson’s slider block
42 (Figure 5) and Elson’s eccentric pin 24 (Figure 8) would not result in a
force that urges the slider block away from the second scroll 22. Reply Br.
3-4. Rather, the angles shown by Elson would result in a force that urges the
slider block toward, rather than away from, the second scroll 22. As such,
we cannot sustain the rejection of claims 4-6 and 8-10 under 35 U.S.C.
§ 102(b) as anticipated by Elson.
CONCLUSIONS
The Examiner did not provide an adequate analysis in support of the
rejection based on impermissible recapture.
The subject matter of independent claims 4 and 8 that calls for the flat
surface on the eccentric pin to extend at an angle is adequately supported by
the original disclosure.
It is not inherent in the slider block and eccentric pin disclosed in
Elson that the force created by their contact surfaces forces the slider block
away from the second scroll.
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Application 12/756,406

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DECISION
We summarily AFFIRM rejection (1).
We REVERSE rejections (2) through (4).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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