HOERBIGER KOMPRESSORTECHNIK HOLDING GMBH

Patent Trials and Appeals Board

Oct 5, 2020

2018005296 (P.T.A.B. Oct. 5, 2020)

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.
14/508,652 10/07/2014 Bernhard Spiegl 06959-P0003A 5766
131672 7590 10/05/2020
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
KASTURE, DNYANESH G
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
10/05/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNHARD SPIEGL, MATTHIAS KORNFELD, and
ANDREAS SCHLOFFER
____________

Appeal 2018-005296
Application 14/508,652
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–17, which are all the pending claims.
Appeal Br. 1, 2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b). An oral hearing was held on January 16, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hoerbiger
Kompressortechnik Holding GmbH. Appeal Br. 2.
Appeal 2018-005296
Application 14/508,652

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to an adjusting device for an
adjusting piston of a variable clearance space of a reciprocating compressor
with a threaded spindle.” See, e.g., Spec., p. 1, ll. 3–4. Claim 11,
reproduced below, is representative of the subject matter on appeal.
11. An adjusting device for moving an adjusting piston
located in a variable clearance space of a piston compressor so
as to regulate the capacity of the compressor, the adjusting
device comprising:
a threaded spindle having external threads which have a
thread height x and which are separated by a pitch z1,
a threaded spindle nut which includes an outer nut carrier
having internal threads with a thread height y, and an inner
plastic nut having external threads engaged with the internal
threads of the nut carrier and internal threads engaged with the
external threads of the threaded spindle, the internal threads of
the plastic nut being separated by the pitch z1, the plastic nut
having a radial thickness d and wherein plastic material
between outer and inner thread recesses therein has a
thickness p, and
wherein the thread height x and the thread height y are
each 50 to 80% of the radial thickness d, and the plastic
thickness p is at least 15% of the thread pitch z1.

EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Kling US 5,996,545 Dec. 7, 1999
Lautzenhiser US 2009/0267040 A1 Oct. 29, 2009
McClendon US 2011/0020144 A1 Jan. 27, 2011
Bidare US 2012/0017756 A1 Jan. 26, 2012
Appeal 2018-005296
Application 14/508,652

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Hartmann2 DE 872 701 Feb. 26, 1953
Neff3 DE 198 31 940 A1 Jan. 20, 2000
Oberg, Erik, et al., Machinery’s Handbook, A Reference Book for the
Mechanical Engineer, Designer, Manufacturing Engineer, Draftsman,
Toolmaker, and Machinist, 29th Edition, Industrial Press, New York,
2012, pp. 1902–09 (“Machinery’s Handbook”)

REJECTIONS
The following rejections are before us for review:
I. Claims 6, 11–15, and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over McClendon, Neff, and Machinery’s
Handbook. Final Act. 3–7.
II. Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over McClendon, Neff, Machinery’s Handbook,
and Kling. Id. at 7–8.
III. Claims 7, 9, and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over McClendon, Neff, Machinery’s
Handbook, and Lautzenhiser. Id. at 8–10.
IV. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over McClendon, Neff, Machinery’s Handbook,
and Bidare. Id. at 10.
V. Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over McClendon and Hartmann. Id. at 11–13.

2 We note that citations herein to Hartmann refer to the English
language translation of this reference provided in the record.
3 We note that citations herein to Neff refer to the English language
translation of this reference provided in the record.
Appeal 2018-005296
Application 14/508,652

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ANALYSIS
Independent claim 11 recites, in relevant part, an adjusting device for
moving an adjusting piston of a piston compressor, where the device
includes “a threaded spindle having external threads which have a thread
height x and which are separated by a pitch z1,” and “a threaded spindle nut”
that includes both “an outer nut carrier having internal threads with a thread
height y,” and “an inner plastic nut having external threads engaged with the
internal threads of the nut carrier and internal threads engaged with the
external threads of the threaded spindle,” where “the internal threads of the
plastic nut [are] separated by the pitch z1, the plastic nut [has] a radial
thickness d and wherein plastic material between outer and inner thread
recesses therein has a thickness p,” where “the thread height x and the thread
height y are each 50 to 80% of the radial thickness d, and the plastic
thickness p is at least 15% of the thread pitch z1.” Appeal Br. 18, Claims
App. (emphasis added). All the claims include these structural limitations
regarding the construction details of the inner plastic nut. According to
Appellant, these details of the inner plastic nut make the recited spindle nut
suitable for withstanding the high frequency pulsing loads seen in a
reciprocating piston compressor, and provide the adjusting device with the
ability to continuously adjust the clearance of the compressor. See Appeal
Br. 5, 11–12; see, e.g., Spec., p. 2, l. 30 – p. 3, l. 13, p. 5, l. 23 – p. 6, l. 27.
In rejecting the claims, the Examiner relies on McClendon for
disclosing the general conditions of a linear screw drive, but acknowledges
that McClendon does not include an inner plastic nut as recited. Final
Act. 4, 11. For Rejection I, the Examiner turns to Neff and Machinery’s
Handbook for teaching a plastic coating on the nut and the specific relative
Appeal 2018-005296
Application 14/508,652

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dimensions recited, characterizing selection of these construction details as
“performing routine design practice in determining the Pitch using the
Preferred Basic sizes chart on [p]age 1909 of [Machinery’s] Handbook.
Final Act. 5; see id. at 4–6. Similarly, for Rejection V, the Examiner relies
on Hartmann for teaching a plastic nut in a linear screw drive and appears to
dismiss any criticality of the specific relative dimensions recited as either
being sufficiently close to those of Hartmann (and asserting that there would
be no change in function), or being optimizable result-effective variables
(and stating without evidence that “ratios involving these variables” would
likewise be result-effective and optimizable). Id. at 12–13. For all the
rejections, the only basis given to modify the screw drive of McClendon
with an inner plastic nut as recited is simply “for the purpose of smoother
operation” of the screw drive. Id. at 4–5 (citing Neff, p. 2), 12.
Appellant persuasively argues, however, that the rejections do not
provide an adequately supported reason why a person of ordinary skill in the
art would have modified McClendon’s screw drive to include an inner
plastic nut having the construction details recited, suggesting instead that
such a modification is the result of improper hindsight reconstruction. See
Appeal Br. 12–14, 15; Reply Br. 2–5. For example, Appellant explains that
the stated basis of “smoother operation” is misplaced because this benefit
(pulled from Neff) is disclosed in the context of a lifting device, where its
power screw drive would be subject to different types of forces than the
adjusting device for a reciprocating piston compressor as claimed (or the
device of McClendon). See Appeal Br. 13; but see Ans. 7 (essentially
disregarding the differences in the forces seen by the distinct devices). In
other words, we agree with Appellant that the Examiner’s stated basis for the
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Application 14/508,652

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combinations of teachings used in the rejections appears to have been
gleaned from Appellant’s own disclosure, rather than originating from any
facts provided or suggested by the prior art, and thus is the result of
improper hindsight reconstruction.4
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper
hindsight reconstruction, we do not see a sufficiently articulated explanation,
based on an objective rational underpinning, as to why one of ordinary skill
in the art would have been led to modify the screw drive of McClendon with
an inner plastic nut having the structural details recited. No adequate reason
for such modification is otherwise evident from the record.
The Examiner’s reliance on the remaining cited references is for
teaching other claimed features, but not in any way that would cure the
fundamental deficiency in the base combinations with regard to modifying
the screw drive of McClendon with an inner plastic nut including the
construction details recited. See Final Act. 7–10.

4 Further, we agree with Appellant that a report submitted in the record
(providing evidence of unexpected results by using an inner plastic nut with
the specific dimensions recited compared with other alternatives) has not
been adequately addressed substantively by the Examiner. See Appeal
Br. 11–12; Reply Br. 3–4; see also Ans. 6 (noting that the report has been
“considered,” but not addressing the “surprising” strength and durability
benefits demonstrated by using a thinner plastic nut compared to using a
thicker plastic nut).
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Application 14/508,652

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Accordingly, based on the record before us, the Examiner’s
conclusion of obviousness stated in the rejections is premised on an
insufficient reason to combine the teachings relied upon. Thus, we do not
sustain the rejections of claims 6–17 under 35 U.S.C. § 103.

DECISION
We REVERSE the Examiner’s rejections of claims 6–17.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
6, 11–15,
17 103
McClendon, Neff,
Machinery’s
Handbook
6, 11–15, 17
7, 8 103
McClendon, Neff,
Machinery’s
Handbook, Kling
7, 8
7, 9, 10 103
McClendon, Neff,
Machinery’s
Handbook,
Lautzenhiser
7, 9, 10
16 103
McClendon, Neff,
Machinery’s
Handbook, Bidare
16
11 103 McClendon, Hartmann 11
Overall
Outcome
  6–17

REVERSED