Ex Parte Lifson et al

Patent Trial and Appeal Board

Aug 21, 2018

13384811 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/384,811 04/20/2012 Alexander Lifson
87059 7590 08/23/2018
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
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.
53279US02 (U040019US2) 9073
EXAMINER
BRADFORD, JONATHAN
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER LIPSON and MICHAEL F. TARAS
Appeal2018-000819
Application 13/384,811
Technology Center 3700
Before, JAMES P. CALVE, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1, 2, 4--9, and 21-24. We have jurisdiction under
35 U.S.C. § 6(b).
WeAFFFIRM.
1 Appellants identify the real party in interest as CARRIER
CORPORATION. Br. 1.
2 Appeal is taken from the Final Office Action dated Feb. 2, 2017.
Appeal2018-000819
Application 13/384,811
STATEMENT OF THE CASE
The sole independent claim on appeal, claim 1, reproduced below, is
exemplary of the subject matter on appeal.
1. A reciprocating compressor, the compressor comprising:
a first cylinder and a second cylinder;
a first suction cutoff unloader value secured to the
compressor and capable of cycling open and closed to interrupt
flow of refrigerant to the first cylinder, wherein the cycling
provides continuously variable part-load system capacity;
a second suction cutoff unloader valve assembly secured
to the compressor and capable of cycling open and closed to
interrupt flow of refrigerant to the second cylinder, wherein the
cycling provides continuously variable part-load system
capacity; and
a controller configured to operate at least one of the first
suction cutoff unloader valve assembly or second suction cutoff
unloader valve assembly cycling open and closed;
the controller configured to operate the first suction cutoff
unloader valve assembly or second suction cutoff unloader valve
assembly in an alternating cycling mode which operates the first
suction cutoff unloader valve assembly cycling open and closed
while the second suction cutoff unloader valve assembly is not
operated cycling open and closed while the first suction cutoff
unloader valve assembly is not operated cycling open and closed.
THE REJECTIONS
I. Claims 1, 4, 6, 21, 22, and 24 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Sandkoetter (US 2006/0218959 Al; published
Oct. 5, 2006) and Kolmanovsky (US 2008/0308069 Al; published Dec. 18,
2008).
II. Claim 2 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Sandkoetter, Kolmanovsky, and Valentin (US 4,519,752;
issued May 28, 1985).
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III. Claims 5 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandkoetter, Kolmanovsky, Thompson (US
2008/0264498 Al; published Oct. 30, 2008), and Patterson (US 7,603,204
B2; issued Oct. 13, 2009).
IV. Claims 7 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Sandkoetter, Kolmanovsky, and Wagner (US 6,203,285
B 1; issued Mar. 20, 2001 ).
V. Claim 9 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Sandkoetter, Kolmanovsky, and Caillat (US 6,206,652
B 1; issued Mar. 27, 2001 ).
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
Sandkoetter teaches the claimed reciprocating compressor (i.e., refrigerant
compressor 12), except that "Sandkoetter does not explicitly teach
alternating which valves are operated by cycling on and off." Final Act.
2-3. The Examiner relies on Kolmanovsky for teaching "that it is well
known to alternate operation between two intake valves during consecutive
cycling to equalize valve wear." Id. at 3 (citing Kolmanovsky ,r 22). The
Examiner determines that one of ordinary skill in the art "would recognize
that alternating cycled component operation to equalize use is advantageous"
and finds Kolmanovksy's methods "useful to balance the usage and wear of
any multiple/redundant cycled component configuration, including the
suction unloader valves 70 of Sandkoetter, as it would extend the operating
life of the components." Id. The Examiner reasons that it would have been
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obvious "to modify the system of Sandkoetter to include an alternating
cycling mode ... as taught by Kolmanovsky because it would equalize the
wear on the unloader valves 70 and thus provide a more reliable compressor
operation." Id.
Appellants do not dispute the Examiner's findings with respect to
Sandkoetter and Kolmanovsky, as set forth supra. See Br. 3---6. Instead,
Appellants argue that Kolmanovsky is non-analogous art, and therefore,
improperly relied on by the Examiner. Id. at 4. In support, Appellants
submit that because "Kolmanovsky is directed to an internal combustion
engine," and "not a compressor for a refrigeration or air condition system,"
Kolmanovsky is not in the same field of endeavor as Appellants' claimed
invention. Id. Appellants further submit that Kolmanovsky is not
reasonably pertinent to a particular problem with which Appellants were
concerned because "[ t ]he problem faced by the inventors ... is how to
control compressor unload valves to control refrigeration system capacity"
and "Kolmanovsky is directed to controlling the transition between dual
intake and alternating single intake valve mode in an internal combustion
engine." Id.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). "Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). "A reference
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is reasonably pertinent ... if it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor's
attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). Whether a prior art reference is "analogous" is a question of
fact. Id. at 658.
We find that at least with respect to the second prong of the non-
analogous art test set forth supra, Kolmanovsky is analogous art properly
relied on by the Examiner. A particular problem addressed by Appellants'
claimed invention is the "great[] reduc[tion] [in] the service life of the
suction cutoff unloader valves." Spec. ,r 4; see also Ans. 2-3 (finding that
Appellants' claimed invention is a solution to the particular problem of
"extend[ing] the service life of the unloader valves" (citing Spec. ,r 27)). As
found by the Examiner, Kolmanovsky "teaches alternating valve cycling to
extend the service life of unloader valves." Ans. 3 ( citing Kolmanovsky
,r 22 ( disclosing that "the operating intake valve may be alternated in the
consecutive cycles to ... equalize valve wear")). Appellants' argument does
not apprise us of error in the Examiner's finding that Kolmanovsky is
reasonably pertinent to the problem of valve wear, and thus, logically would
have commended itself to an inventor's attention in considering Appellants'
particular problem, namely, how to extend the service life of suction cutoff
unloader valves.
Appellants also argue that "Sandkoetter teaches against the
modification proposed by the Examiner," because "Sandkoetter does not
disclose ... alternating the cycling cylinders on and off." Br. 5. In support,
Appellants submit that "Sandkoetter clearly teaches that all cylinders should
have the same switching interval." Id. ( citing Sandkoetter ,r,r 80, 81).
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Appellants conclude that "[t]o modify Sandkoetter with the alternating
cycling mode of Kolmanovsky is directly contrary to the teachings of
Sandkoetter." Id. at 6.
The Examiner responds that "[t]here is nothing in Sandkoetter to
suggest that the system must operate utilizing the same switching interval for
the cylinders" and, in fact, Sandkoetter discloses "that it is capable of
operating by switching a cylinder off while the other cylinder is cycled in the
manner claimed." Ans. 3 ( citing Sandkoetter ,r 16 ( disclosing that "it would
be conceivable in the lower part-load range ... to switch off some of the
cylinder units and operate only some of the cylinder units in the switching
intervals"); ,r 18 (disclosing that "it is conceivable also in the upper part-load
range to switch off some of the cylinder units and operate other cylinder
units in the switching intervals")).
A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not "criticize, discredit, or
otherwise discourage" investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, although Sandkoetter
discloses utilizing the same switching interval for the cylinders, Appellants
have not provided evidence that Sandkoetter criticizes, discredits, or
otherwise discourages modifying Sandkoetter's refrigerant compressor to
include an alternating cycling mode, as taught by Kolmanovsky, to equalize
the wear of Sandkoetter's unloader valves 70.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of claims 4, 6, 21, 22, and 24, which depend from independent
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claim 1, and therefore, for essentially the same reasons stated supra, we
sustain the Examiner's rejection of claims 4, 6, 21, 22, and 24. Br. 6.
Rejections 11-V
Appellants argue that the Examiner's reliance on Valentin, Thompson,
Patterson, Wagner, and/or Caillat fail to cure the deficiencies in the
Examiner's rejection of independent claim 1. Br. 6-7. Because we are not
persuaded by Appellants' arguments regarding deficiencies in the
Examiner's rejection of independent claim 1, we sustain the Examiner's
rejection of claims 2, 5, 7-9, and 23, for essentially the reasons set forth
supra.
DECISION
The Examiner's decision rejecting claims 1, 2, 4--9, and 21-24 is
AFFIRMED.
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)(l )(iv).
AFFIRMED
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