Ex Parte Morie et al

Patent Trial and Appeal Board

Mar 30, 2018

13910203 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/910,203 06/05/2013
77464 7590 04/03/2018
IPUSA, P.L.L.C
1054 31ST STREET, N.W.
Suite 400
Washington, DC 20007
FIRST NAMED INVENTOR
Takaaki MORIE
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.
13SJ-012 8495
EXAMINER
KING, BRIAN M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
IPUSA@IPUSAPAT.COM
ips@itohpat.co.jp
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAAKI MORIE and MINGYAO XU
Appeal2017-006555
Application 13/910,203 1
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-5 under (pre-AIA) 35 U.S.C.
§ 103(a) as obvious in view of Asami et al. (US 5,590,533, issued Jan. 7,
1997) (hereinafter "Asami"). We have jurisdiction over the appeal under 3 5
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest is SUMITOMO
HEAVY INDUSTRIES, LTD." Appeal Br. 3.
Appeal2017-006555
Application 13/910,203
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A cryogenic refrigerator, comprising:
a cylinder;
a displacer accommodated in the cylinder so as to
reciprocate inside the cylinder with a gap formed between a
periphery of the displacer and an interior surface of the cylinder;
and
a depressed part formed on at least one of the periphery of
the displacer and the interior surface of the cylinder,
wherein a ratio of a volume of the depressed part to a
volume of the gap satisfies a condition of 16 :S V d/V g :S 54,
where V d is the volume of the depressed part and V g is the
volume of the gap, and
wherein V d is determined from V d = Sd x Ld, where Sd
is a cross-sectional area of the depressed part and Ld is a length
of the depressed part.
ANALYSIS
The Appellants argue that "Asami fails to teach or suggest the recited
'ratio' and, accordingly, the recited 'condition of 16 :S Vd/Vg :S 54."'
Appeal Br. 10. The Appellants allege that "it was unknown to a person
having ordinary skill in the art that the recited volume ratio V d/V g
contributes to the refrigeration performance of a cryogenic refrigerator." Id.
We determine that the Appellants' argument is persuasive because the
Examiner's rejection fails to adequately support a finding that Asami teaches
the claimed volume ratio V d/V g or a conclusion of obviousness by
articulating reasoning with some rational underpinning to cure the deficiency
of Asami's teaching.
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Appeal2017-006555
Application 13/910,203
The Examiner finds that Asami teaches a cylinder (second stage
cylinder) 12, a displacer (tubular member) 30, and a depressed part (spiral
gas passage) 38 formed on the periphery of displacer 30. Final Act. 2; see
Asami, col. 8, 11. 1-6, 16-21. The Examiner also finds that "a gap [is]
formed between a periphery of the displacer [30] and an interior surface of
the cylinder [12]." Final Act. 2; see Asami, col. 8, 11. 8-15.
Asami does not explicitly teach the volume of the depressed part "V d"
or the volume of the gap "V g." The Examiner suggests that Asami may
teach the claimed volume ratio V d/V g because Asami discloses many of the
variables required for the calculation of the volume ratio, e.g., the depth (0.3
to 1.5 mm), the pitch (1.5 to 12 mm), and the width (1 to 6 mm) of the spiral
gas passage (groove), and length of the cryogenic refrigerator is a common
variable between volume of the depressed part "Vd" and the gap "Vg." See
Final Act. 2-3; Ans. 5. The Examiner's suggestion is inadequately
supported at least because the Examiner fails to cogently explain how length
of the cryogenic refrigerator can be used to calculate the volume(s) of the
gap "V g" and ultimately, Asami' s actual volume ratio V d/V g or ranges of
ratios. As such, we determine that Asami fails to teach the claimed volume
ratio range of 16 :S Vd/Vg :S 54.
Additionally, the Examiner reasons that the claimed volume ratio
range of 16 :S V d/V g :S 54 would have been obvious to try as a finite number
of identified, predicable solutions for obtaining desired cooling performance.
See Final Act. 3; see also Ans. 5. However, the Examiner's reasoning lacks
rational underpinning and is not adequately supported. As the Appellants
correctly point out, "Asami does not discuss cooling performance in relation
to the volume ratio of the spiral groove and the alleged 'gap,"' i.e., "Vg," as
3
Appeal2017-006555
Application 13/910,203
claimed. Reply Br. 3; see Appeal Br. 9-10. As such, the Appellants
persuasively argue that "a person having ordinary skill in the art would not
have conceived the technical idea of determining the range of the volume
ratios to improve cooling performance based on the teachings of Asami."
Reply Br. 4; see also Appeal Br. 10.
Thus, we do not sustain the Examiner's rejection of claims 1-5 as
unpatentable over Asami.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-5.
REVERSED
4