Ex Parte Sun

Board of Patent Appeals and Interferences

Jan 30, 2012

11833342 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/833,342 08/03/2007 Zili Sun 60,298-601US1; ST 338 7717
26096 7590 01/30/2012
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TRIEU, THERESA
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
01/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZILI SUN
____________

Appeal 2010-001099
Application 11/833,342
Technology Center 3700
____________

Before JENNIFER D. BAHR, KEN B. BARRETT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 3-6. Claim 2 has been cancelled. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-001099
Application 11/833,342

2
CLAIMED SUBJECT MATTER
Claims 1 and 4 are independent claims. Claim 1 is representative of
the subject matter on appeal. Claim 1 recites:
1. A scroll compressor comprising:
a first scroll member having a base and a
generally spiral wrap extending from the base, and
a second scroll member having a base and a
generally spiral wrap extending from the base, said
second scroll member being driven by a shaft to
orbit relative to said first scroll member;
said wraps of said first and/or second scroll
members having an outer greater height portion
and a more central lesser height portion; and
bypass ports for communicating
compression chambers defined between said wraps
of said first and second scroll members back to a
suction chamber of the compressor, such that a
lower capacity can be provided by said scroll
compressor, and valves controlling the opening
and closing of said bypass ports, said valves being
electric valves.

REJECTIONS
The following rejections are before us for review:
claims 3 and 4 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
claims 1 and 4 under 35 U.S.C. § 112, second paragraph, as
being indefinite; and
claims 1 and 3-6 under 35 U.S.C. § 103(a) as unpatentable over
Takeuchi (US 2005/0053507 A1, publ. Mar. 10, 2005) and Wallis (US
5,607,288, iss. Mar. 4, 1997).

Appeal 2010-001099
Application 11/833,342

3
OPINION
Rejection of claims 3 and 4 as failing to comply with the written description
requirement
The Examiner determines “said second scroll member being driven by
a shaft to orbit relative to said first scroll member”, as recited in claims 1
and 4, in combination with bypass ports “formed in said base of said second
scroll member”, as recited in claims 3 and 4, is not supported by the written
description. Ans. 3-4. Thus, according to the Examiner, claims 3 and 4 fail
to comply with the written description requirement of the first paragraph of
section 112. Id.
The Appellant acknowledges that claims 3 and 4 include “an
inadvertent typographical error that recited a feature with regard to the
'second' scroll member rather than the 'first.'” Reply Br. 1. In other words, it
appears claims 3 and 4 were meant to call for the bypass ports to be formed
in the base of the first scroll member. The Appellant contends that one of
ordinary skill in the art would understand what was meant by claims 3 and 4
after reading the specification; and as such, claims 3 and 4 meet the written
description requirement. See App. Br. 3, Reply Br. 1.
The Appellant’s contention is not persuasive because it is not directed
to possession of the claimed invention, i.e., claims 3 and 4 as presently
recited. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991) (The purpose of the “written description” requirement is to convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, the applicant was is possession of the claimed invention). Thus, the
rejection of claims 3 and 4 as failing to comply with the written description
requirement of section 112 is sustained.

Appeal 2010-001099
Application 11/833,342

4
Rejection of claims 1 and 4 as indefinite
The Examiner determines that the recitation of claims 1 and 4 “that a
lower capacity can be provided by said scroll compressor” (emphasis added)
is indefinite because it is unclear under what conditions a lower capacity is,
and is not, provided by the scroll compressor. Ans. 4, 6. The Appellant
correctly contends one of ordinary skill in the art having read the
specification would understand that the recitation of claims 1 and 4 implies
“a control for the compressor can achieve the differing capacities.” App. Br.
3. Claims 1 and 4 both recite “electric” or “solenoid” valves for controlling
the opening and closing of the bypass ports. One of ordinary skill in the art
reading the claim as a whole would understand that these valves permit
differing capacities to be achieved. That the claims do not further recite the
particular valve positioning or other parameters that give rise to “a lower
capacity” is merely a matter of breadth, not indefiniteness. Merely that a
claim is broad does not mean that it is indefinite. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA
1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Thus, the rejection
of claims 1 and 4 as being indefinite is not sustained.

Rejection of claims 1 and 3-6 as unpatentable over Takeuchi and Wallis
The Appellant argues claims 1 and 3-6 as a group. App. Br. 4, Reply
Br. 2. We select claim 1 as the representative claim, and claims 3-6 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that claim 1 reads on Takeuchi’s scroll
compressor save an electric valve, which is taught by Wallis. Ans. 4-5. The
Examiner concludes the substitution of Wallis’s electric valve for
Appeal 2010-001099
Application 11/833,342

5
Takeuchi’s valve would have been obvious to one having ordinary skill in
the art at the time of the invention since both Wallis’ and Takeuchi’s valves
control the flow of working fluid. See Ans. 5, 7-8.
The Appellant alleges it is often the case that valves in bypass ports,
such as Takeuchi’s two-height wrap scroll compressor, are often check
valves that are spring biased, which are used more for over-pressure relief.
App. Br. 4. The Appellant contends, if Takeuchi’s valve is utilized in this
manner “one would not wish to have an electrically controlled valve.” Id.
This allegation is merely an attorney argument based on an unsupported
condition, not evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (Attorney's arguments in a brief cannot take the place of evidence).
The Appellant also contends that there must be a justification for the
additional expense of modifying Takeuchi’s valve with Wallis’s electrically
controlled valve. Reply Br. 2. Moreover, the combined teachings of
Takeuchi and Wallis lack the required justification. Id. The standard for
obviousness is whether the Examiner has articulated a reason with rational
underpinning to support the proposed combination. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (cited with approval in KSR, Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 419 (2007)). Additionally, “when 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 Appellant’s
contention that Examiner’s modification of Takeuchi’s valve is expensive is
not persuasive because it does not explain why using an electric valve, as
taught by Wallis, as a substitute for Takeuchi’s valve would have been
Appeal 2010-001099
Application 11/833,342

6
beyond the level of ordinary skill in the art or might have been
unpredictable.
Lastly the Appellant contends that the applied prior art does not show
an electrically controlled valve in the claimed location. Reply Br. 2. The
only limitation directed to valves in claim 1 recites “valves controlling the
opening and closing of said bypass ports, said valves being electric valves.”
The Examiner finds Takeuchi’s valves open and close the opening of bypass
holes 46a and 46b as required. Ans. 5, Takeuchi, para. [0042]. The
Examiner also finds Wallis’s electric/solenoid valve 98 open bypass ports
138, 140, 142. Ans. 5; see also Wallis, col. 5, 46-59, col. 7, ll. 10-41. As
stated above, the Examiner articulates reasoning for substituting Wallis’
electric valve for Takeuchi’s valve. As such, the combination of Takeuchi
and Wallis proposed by the Examiner places the valves in a location to
control opening and closing of the bypass ports as claimed. Thus, this
contention is also not persuasive.
For the above reasons, the rejection of claims 1 and 3-6 as
unpatentable over Takeuchi and Wallis is sustained.

DECISION
We AFFIRM the rejections of claims 1 and 3-6.
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

Klh