Ex Parte Seibel et al

Patent Trial and Appeal Board

Mar 23, 2016

11998441 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111998,441 11129/2007
27572 7590 03/25/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Stephen M. Seibel
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.
0315-000617 6214
EXAMINER
STIMPERT, PHILIP EARL
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
troydocketing@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. SEIBEL, CHRISTOPHER STOVER,
and ROY J. DOEPKER
Appeal2014-000686
Application 11/998,441
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
JASON W. MELVIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4---6, 9-11, 14, 15, 26, 30-32 and 35-38. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
The claims are directed to a dual chamber discharge muffler. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Appeal2014-000686
Application 11/998,441
1. A compressor comprising:
a shell;
a compression mechanism disposed within said shell;
a muffler proximate said shell, said muffler including a
first chamber and a second chamber defined by a housing;
a spacer disposed through said housing, said spacer
receiving a fastener that fixes said muffler to said shell; and
a check valve assembly disposed between said first
chamber and said second chamber that enables fluid
communication between said first chamber and said second
chamber.
REJECTIONS
Claims 1, 4---6, 9-11, 14, 15, 26, 30-32, and 35-38 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Barito (US 6,264,443 Bl, iss.
July 24, 2001), Maeda (US 5,984,045, iss. Nov. 16, 1999), and Agnew (US
4,418,790, iss. Dec. 6, 1983), as extrinsically evidenced by Rieder (US
3,612,216, iss. Oct. 12, 1971). Final Act. 2.
Claims 1 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barito, Maeda, and Useugi (US 4,854,417, iss. Aug. 8,
1989). Final Act. 5.
OPINION
The Examiner's§ 103 rejections are predicated on the non-integral
incorporation of Maeda's muffler into Barito's compressor. Final Act. 2-3.
Barito employs an integral muffler 28 and the Examiner does not articulate
reasoning with rational underpinnings for making the proposed modification
non-integrally. There is no indication that, to obtain the benefits the
Examiner attributes to Maeda's muffler (Final Act. 2), Maeda must be
incorporated non-integrally as the Examiner assumes. The Examiner relies
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Appeal2014-000686
Application 11/998,441
on the teachings of Agnew or Uesugi to solve a problem, the absence of
muffler-compressor attachment, that is introduced only by the Examiner.
Final Act. 3, 6. The Examiner's proposed combination would involve
deconstructing Bari to' s compressor so that it may be redesigned and
reconstructed with a non-integral muffler using the elemental componentry
described in Maeda and either Agnew or Uesugi. Reply Br. 7-9. There is
little evidence, in the form of a passing mention in Reider (Final Act. 3,
citing Reider, col. 1, 11. 34--35), demonstrating anything relating Maeda's
muffler to compressors like that depicted in Barito, much less any facts or
reasoning of record demonstrating why it would have been obvious to attach
such mufflers non-integrally to the shell of a compressor like that of Barito.
The absence of evidence or reasoning of record concerning the issues
above is an indication that the Examiner improperly relied on hindsight to
reconstruct Appellants' claimed invention. Reply Br. 7-9. It is improper to
base a conclusion of obviousness upon facts gleaned only through hindsight.
To draw on hindsight knowledge of the patented invention, when the prior
art does not contain or suggest that knowledge, is to use the invention as a
template for its own reconstruction-an illogical and inappropriate process
by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81
F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock,
Inc., 721F.2d1540, 1553 (Fed. Cir. 1983)).
Accordingly, we agree with Appellants that, based on the evidence
before us, the Examiner has not demonstrated that the claimed subject matter
would have been obvious to one having ordinary skill in the art. "[T]he
precise language of 35 U.S.C. § 102 that '(a) person shall be entitled to a
patent unless,' concerning novelty and unobviousness, clearly places a
burden of proof on the Patent Office which requires it to produce the factual
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Appeal2014-000686
Application 11/998,441
basis for its rejection of an application under sections 102 and 103." In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967). A preponderance of the
evidence must show nonpatentability before the PTO may reject the claims
of a patent application. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985).
Although Appellants do not argue the Examiner's rejection based on
Barito, Maeda and Uesugi with specificity, 1 as required by 37 C.F.R.
§ 41.37(c)(iv), in the interest of fairness, as Appellants were not provided
with any opportunity to correct this oversight under 37 C.F.R. § 41.37(d),
and as the substantive issue leading to our reversal is essentially the same in
both rejections, we treat this omission by Appellants as an inadvertent
oversight and reverse both rejections before us.
DECISION
The Examiner's rejections are reversed.
REVERSED
1 Appellants indicate that they seek review of this rejection and the
Examiner has not indicated it was withdrawn. App. Br. 5; Ans. 8.
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