Ex Parte Schade et al

Patent Trial and Appeal Board

Nov 20, 2013

11794011 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALEXANDER SCHADE and JAN-GRIGOR SCHUBERT
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Appeal 2012-000081
Application 11/794,011
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Alexander Schade and Jan-Grigor Schubert (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C.
§ 102(e) claims 13, 14, 16-19, 21, 22, and 24 as anticipated by Inagaki (US
2005/0244290 A1, published Nov. 3, 2005) and under 35 U.S.C. § 103(a)
claims 20 and 23 as unpatentable over Inagaki and claim 15 as unpatentable
over Inagaki and Donahoe (EP 1 045 145 A1, published Oct. 18, 2000).
Claims 1-12 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “a drive unit for driving an oscillating
piston” in a linear compressor for compressing refrigerant in a refrigerating
device. Spec. 1, ll. 3-5 and fig. 1.
Claim 13 is illustrative of the claimed invention and reads as follows:
13. A drive unit for a linear compressor comprising a frame
and an oscillating body mounted in the frame by means of at
least one diaphragm spring and moving back and forth, the
diaphragm spring having a plurality of limbs which engage the
frame with a first end and engage the oscillating body with a
second end, wherein each limb is assigned a readjusting spring
which counteracts a deformation of the limb.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The anticipation rejection based upon Inagaki
Appellants have not presented arguments for the patentability of
claims 14, 16-19, 21, 22, and 24 apart from claim 13. App. Br. 5-7.
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Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select
claim 13 as the representative claim to decide the appeal of the rejection of
these claims, with claims 14, 16-19, 21, 22, and 24 standing or falling with
claim 1.
Appellants argue that because coil springs 130A and 130B of Inagaki
are pre-compressed, “Inagaki et al. teaches an entirely different structural
arrangement than claimed in independent claim 13.” App. Br. 6; see also
Reply Br. 2-3. Pointing to paragraphs [0015], [0016], and [0116]
Appellants argue that each of coil springs 130A and 130B of Inagaki does
not constitute a readjusting spring, as called for by independent claim 13.
Reply Br. 3-4.
At the outset, we are not persuaded by Appellants’ arguments because
merely listing the structural elements of Inagaki’s drive unit ignores and fails
to point out error on the part of the Examiner when the Examiner has
specified portions of Inagaki that describe the structural features of claim 13.
We further agree with the Examiner that, “applicant is arguing limitations
which are not in the claims, i.e. the state of the readjusting spring.” Ans. 9.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Independent
claim 13 merely requires that “each limb is assigned a readjusting spring
which counteracts a deformation of the limb.” App. Br., Clms. App’x. As
the Examiner correctly found, in Inagaki, the eight arms of
diaphragm/flexure springs 128A, 128B are assigned adjustment springs 130,
130B, respectively, and if diaphragm/flexure springs 128A, 128B are
displaced from their centered position, springs 130, 130B “counteract the
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deformation by pushing against them.” Ans. 10 (citing to Figure 17 of
Inagaki). As such, the operation of Appellants’ readjusting spring is the
same as that of either of coil springs 130A, 130B of Inagaki. Appellants
have not come forth with any persuasive evidence or technical reasoning to
show otherwise.
Appellants further argue that because the Examiner stated that the
“two disclosed structures in the Inagaki et al. reference are different, even
very different,” the teachings of Inagaki “cannot anticipate the present
claims.” App. Br. 6-7. We do not agree with Appellants’ interpretation of
the Examiner’s statement. The Examiner specifically stated that, “while the
two disclosed structures in the Inagaki et al. reference and the Applicant’s
application may be different, even very different, the claims are very broad.
Final rejection, mailed January 12, 2011, at 5 (emphasis added). In other
words, the Examiner stated that although the structure of Inagaki may be
different from that of claim 13, nonetheless, because claim 13 is written so
broadly, Inagaki discloses all the limitation of claim 13. We thus agree with
the Examiner that the disputed statement “was not intended as an official
statement by the Examiner that the rejections made by the Examiner were
incorrect, as asserted by the Applicant.” Ans. 11.
In conclusion, for the foregoing reasons, Appellants have failed to
establish error in the Examiner’s finding of anticipation of claim 13 by
Inagaki. We therefore sustain the rejection of independent claim 13, and
claims 14, 16-19, 21, 22, and 24 standing with claim 13, under 35 U.S.C.
§ 102(e) as anticipated by Inagaki.

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The obviousness rejection based upon Inagaki and Donahoe
Appellants argue that the Examiner’s proposed combination of the
teachings of Inagaki and Donahoe is based on impermissible hindsight
because “the ‘limbs’ of Inagaki et al. are not assigned structurally as claimed
by the alleged coil springs 130A, 130B of Inagaki et al.” App. Br. 7.
However, the Examiner has provided an adequate reasoning with rational
underpinings (“substitute the Donahoe et al diaphragm spring for the
diaphragm spring of Inagaki et al”). See Ans. 7; In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)). “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 416.
The Examiner found that the diaphragm spring of Donahoe would
have been a suitable substitute for the diaphragm spring of Inagaki. Given
the similarity between the linear compressor devices of Donahoe and
Inagaki, the Examiner has a sound basis for finding that the diaphragm
spring of Donahoe would have been a suitable substitute for the diaphragm
spring of Inagaki. See also Ans. 11-12. Appellants provide no persuasive
reason why a person of ordinary skill in the art could not have implemented
such a substitution. Neither do Appellants provide any persuasive reason
why the results of the substitution would have been unpredictable. Thus, the
Examiner is correct in concluding that such a substitution would have been
obvious. Moreover, for the reasons set forth supra, Appellants have not
come forth with any persuasive evidence or technical reasoning to show that
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the operation of Appellants’ readjusting spring is not the same as that of coil
spring 130A or 130B of Inagaki. See also Ans. 12.
In conclusion, for the foregoing reasons, we likewise sustain the
rejection of claim 15 as unpatentable over the combined teachings of Inagaki
and Donahoe.

The obviousness rejection based upon Inagaki
Claim 20
Claim 20 adds the limitation that “the stiffness of the diaphragm
spring is lower in the direction of deformation than that of the readjusting
spring.” App. Br., Clms. App’x. The Examiner found that it would have
been a mere matter of optimizing the spring stiffness of spring 130A or
130B of Inagaki “since it is the supporting spring of the oscillating
member.” Ans. 8.
Appellants rely on the same arguments expressed supra to argue that,
“the rejection is made using improper hindsight in view of the teachings of
the present specification.” App. Br. 8-9. Therefore, for the same reasons as
indicated above, we are not persuaded by Appellants’ arguments.
Furthermore, we agree with the Examiner that because Inagaki specifically
discloses that diaphragm springs 128A, 128B have low rigidity in the axial
direction, Inagaki discloses that, “diaphragm springs have a low stiffness in
the direction of deformation.” Ans. 13-14; see also Inagaki, para. [0095].
We thus agree that the Examiner is on solid ground to find that the stiffness
of springs 130A, 130B would be higher than the stiffness of
diaphragm/flexure springs 128A, 128B. Ans. 14. Appellants have not come
forth with any persuasive evidence or technical reasoning to show otherwise.
See In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990).
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As such, we sustain the rejection of claim 20 as unpatentable over
Inagaki.
Claim 23
Claim 23 adds the limitation that “the mass of the oscillating body is
greater than the mass of all the springs.” App. Br., Clms. App’x. The
Examiner found that the Figures of Inagaki show “that the mass of the
oscillating body is much greater than the mass of the springs.” Ans. 7.
According to the Examiner, the relative size of the oscillating body is larger
than the size of the springs. Ans. 13. Moreover, the Examiner finds that
“the shaft and moving core of Inagaki (i.e., oscillating body) are made from
ferrous and iron materials which are heavy.” Id. (citing to Inagaki, paras.
[0048] and [0054])1.
Appellants argue that because Inagaki’s drawings are not drawn to
scale and Inagaki fails to disclose specific dimensions, the Examiner erred in
finding that Inagaki teaches that the “mass of the oscillating body is greater
than the mass of the springs.” App. Br. 8.
We are not persuaded by Appellants’ arguments because while patent
drawings not designated as being drawn to scale cannot be relied upon to
define precise proportions of elements if the specification is completely
silent on the issue, Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
F.3d 951, 956 (Fed. Cir. 2000), that does not mean, “that things patent
drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). A drawing teaches all that it reasonably discloses and
suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911, 914 (CCPA 1979).

1 Inagaki also discloses the use of spring steel or stainless for making
planar springs 42A, 42B. Inagaki, para. [0050].
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Here, the claim limitation at issue is directed to the mass of the
oscillating body being greater than the mass of the springs. Simple
observation of the drawings in Inagaki, would reveal to a person of ordinary
skill in the art that the size of oscillating body 126A, 126B, 121 (see Ans. 5
and Inagaki, figs. 16 and 17) is greater than the size of diaphragm/flexure
springs 128A, 128B and springs 130A, 130B. Thus, in view of Inagaki’s
disclosure of the materials used for making the oscillating body, the claimed
relationship between the masses is reasonably disclosed through observation.
Accordingly, we also sustain the rejection of claim 23 as unpatentable over
Inagaki.

SUMMARY
The Examiner’s decision to reject claims 13-24 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)(1)(iv).

AFFIRMED

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