Randy Scott. Burnham et al.

Patent Trials and Appeals Board

Oct 2, 2019

14432407 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/432,407 03/30/2015 Randy Scott Burnham 20420.0028USWO 1071
136306 7590 10/02/2019
IR HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
TREMARCHE, CONNOR J.
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
ptomail@hsml.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDY SCOTT BURNHAM, DAVID JON RENKEN,
ERICHALBERT LUCHT, and CULLEN EVAN HALL
____________

Appeal 2018-0091781
Application 14/432,4072
Technology Center 3700
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 3–6, 9–14, 16–20, and 22–25, which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision references the corrected Appeal Brief (“Appeal Br.”), filed
Feb. 22, 2018, the Reply Brief (“Reply Br.”) filed Sept. 26, 2018, the
Examiner’s Answer (“Ans.”) mailed July 26, 2018, and the Final Office
Action (“Final Act.”), mailed Apr. 20, 2017.
2 Appellants identify “Thermo King Corporation” as the real party in
interest. Appeal Br. 2.
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BACKGROUND
Appellants’ disclosed embodiments “relate to a transport refrigeration
system (TRS). More specifically, the embodiments disclosed here relate to
methods and systems to detect operation conditions of a compressor of the
TRS so as to control operation of a generator set (genset) configured to
provide power to the compressor, based on the operation condition of the
compressor.” Spec. 1:7–11.
ILLUSTRATIVE CLAIM
10. A method to control an operation of a prime mover
of a transport refrigeration system comprising:
[(a)] monitoring an operation parameter of a generator
set, wherein the generator set is configured to supply power to a
compressor of a transport refrigeration system, and wherein the
generator set includes the prime mover coupled to a generator;
[(b)] determining an operation parameter pattern based
on the operation parameter over a period of time;
[(c)] detecting whether the operation parameter pattern
includes a periodic fluctuation of the operation parameter over
the period of time, wherein the periodic fluctuation of the
operation parameter is indicative of a periodical load/unload
duty cycle of the compressor;
[(d)] determining a first operation condition of the
compressor when the periodic fluctuation is not detected;
[(e)] determining a second operation condition of the
compressor when the periodic fluctuation is detected;
[(f)] operating the prime mover at a first operation
speed when determining the first operation condition of the
compressor; and
[(g)] operating the prime mover at the second operation
speed that is lower than the first operation speed when
determining the second operation condition of the compressor;
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[(h)] wherein the compressor is a scroll compressor and
detecting whether the operation parameter pattern includes the
periodic fluctuation includes determining whether the periodic
fluctuation has a frequency of the periodical load/unload duty
cycle of the scroll compressor.

Appeal Br., Claims App’x. 5 (added bracketed notations).
REJECTIONS
Claims 1, 3–6, 9, and 20 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Grey et al. (EP 1790921 A1, pub. May 30, 2007)
(“Grey”).
Claims 10–14, 16, 17, and 22–25 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Grey and Guo et al. (US 7,815,423 B2, iss.
Oct. 19, 2010) (“Guo”).
Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Grey, Guo, and Miyaji (US 7,606,639 B2, iss. Oct. 20, 2009).
Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Grey and Renken et al. (US 2008/0087029 A1, pub. Apr. 17, 2008)
(“Renken”).
DISCUSSION
In rejecting independent claim 10 as obvious over Grey and Guo, the
Examiner found that Grey discloses limitations (a), (b), (d), (e), (f), and (g)
as claimed except that:
Grey is silent with respect to explicitly detecting whether
the operation parameter pattern includes a periodic fluctuation of
the operation parameter over the period of time [(as recited in
limitation (c))], wherein the periodic fluctuation of the operation
parameter is indicative of a periodical load/unload cycle of the
compressor; detecting whether the operation parameter pattern
includes the periodic fluctuation includes determining whether
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the periodic fluctuation has a frequency of a periodical
load/unload duty cycle of the compressor [(as recited in
limitation (h))].

Final Act. 9 (“Grey is silent with respect to the compressor being a scroll
compressor.”). The Examiner determined:
However, it would have been obvious to one of ordinary
skill in the art at the time the claimed invention was made to
modify the controller of Grey to determine different operation
conditions over a period of time by detecting whether the
operation parameter pattern includes a periodic fluctuation since
Grey discloses two distinct and different operation modes used
over different periods of time. It should be noted that the
frequency of the periodical unload/load duty cycle of the
compressor would be similar to the periodic fluctuation of the
operation parameter pattern. Additionally, Grey discloses the
two different time periods which correspond to two different
operation conditions and two different operation speeds.
Specifically a low speed when the second operation is present
(¶ 64) when the compressor is unloaded. Therefore it would be
obvious to one of ordinary skill in the art at the time the claimed
invention to realize that the act of measuring the power
consumption over a period of time could easily be correlated to
detecting different operation conditions, thus this act would be
considered “obvious to try” as it would yield a predictable
solution with a reasonable expectation for success.

Id. at 9–10 (emphasis added). Further, to cure the deficiency in Grey as to
“the compressor being a scroll compressor,” the Examiner found “Guo
teaches a refrigeration system (Figures 6A and 6B) that discloses a scroll
compressor (scrolls 226 and 232).” Id. at 9. And, the Examiner concluded
that “[i]t would have been obvious to one of ordinary skill in the art at the
time the . . . invention was made to modify the compressor of Grey with the
scroll compressor of Guo to increase reliability of the system while allowing
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for a more continuous flow of gas throughout the scroll compressor during
activation.” Id.
As indicated in the rejection, the Examiner acknowledges that Grey
does not disclose limitation (c) and relies on an “obvious to try” rationale to
account for this missing limitation. In support of this rationale, the
Examiner relies on Figure 3 and paragraphs 62–65 of Grey, and asserts that
“it is clear that the operation parameter is the speed sensed by sensors 56 of
the prime mover 52.” Ans. 18.
“Figure 3 of Grey shows a graph of the electrical power consumed by
the refrigeration unit 10 over time.” Grey ¶ 62. Grey teaches that the state
of the compressor is determined by voltage sensor 69 monitoring the current
and voltage of the AC output or by monitoring measured values of the
current and voltage at the output of the energy storage device 65. Id. ¶¶ 57–
58. When the current or voltage of the AC output measured by the sensor 69
increases, the generator control unit 68 causes the engine to speed up to meet
the increased power demand; the generator control unit 68 causes the engine
to speed up when the current drawn from the energy storage device 68
increases. Id. ¶ 65. When the compressor 52 is switched off again, the
current at the AC output will fall and the generator control unit 68 will
reduce the speed of the engine. Id. ¶ 67.
Appellants argue that
Grey is silent and does not contemplate monitoring the
speed sensed by the speed sensor 56 and determining a speed
pattern based on the speed over a period of time. At most,
paragraph [0055] of Grey teaches that the speed sensor 56
produces an output which is indicative of the engine speed and
supplies the signal to the speed controller 58. The speed
controller 58 controls operation of the fuel injection system so as
to control the speed of the engine.
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Reply Br. 7. We are persuaded by Appellants’ argument.
The Examiner relies on Figure 3 of Grey as teaching that one can
monitor the speed from the speed sensor 56 to determine whether to change
the speed of the engine (Ans. 25–26), but, as Appellants point out,
“Fig[ure] 3 clearly shows a graph of electrical power consumed by the
refrigeration unit 10 over time and not the speed sensed by the speed sensor
56.” Reply Br. 7 (citing Grey ¶ 62). Grey provides no correlation between
the electrical power consumed by the refrigeration unit 10 and the speed
sensed by speed sensor 56. See Grey ¶ 55 (“The speed sensor 56 produces
an output which is indicative of the engine speed and supplies this signal to
speed controller 58.”). “Rather, Grey teaches that by monitoring the
electrical power consumed by the refrigeration unit 10, the generator control
unit 68 can change the speed of the engine. It would be inferred by those
skilled in the art that if the speed of the engine is changed based on a change
of state of the compressor (identified by the electrical power consumed by
the refrigeration unit 10), the speed sensed by the sensor 56 does not reflect
the state of the compressor or correlate to the electrical power consumed by
the refrigeration unit 10.” Id. at 7–8. See Grey ¶ 13 (“The control unit may
be, for example, arranged to increase the speed of the engine when the
compressor is switched on, and/or to decrease the speed of the engine when
the compressor is switched off.”). Thus, we are persuaded that the Examiner
has not adequately shown that “it would . . . be ‘obvious to try’ to obtain the
features of ‘determining whether the operation parameter pattern includes a
periodic fluctuation of the operation parameter over the period of time,
wherein the periodic fluctuation of the operation parameter is indicative of a
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periodical load/unload duty cycle of the compressor’ based on the teachings
of Grey.” Appeal Br. 13.
Regarding an “obvious to try” rationale to support a conclusion of
obviousness, the Supreme Court stated:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Then, Office personnel
must articulate the following:
(1) a finding that at the time of the invention, there had been a
recognized problem or need in the art, which may include a
design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified,
predictable potential solutions to the recognized need or
problem;
(3) a finding that one of ordinary skill in the art could have
pursued the known potential solutions with a reasonable
expectation of success; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case
under consideration, to explain a conclusion of obviousness.
MPEP § 2143(I)(E). “If any of these findings cannot be made, then this
rationale cannot be used to support a conclusion that the claim would have
been obvious to one of ordinary skill in the art.” Id.
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Here, the record does not support an obvious-to-try rationale. For
example, the Examiner does not find that at the time of the invention, there
had been a recognized problem or need in the art, does not discuss any
design need or market pressure to solve such a problem, and/or does not
explain why there are only a finite number of identified, predictable
solutions to solve such a problem. Thus, we determine that the Examiner’s
rationale is not adequately supported on the record before us.
Accordingly, we do not sustain the rejection of independent claim 10
as unpatentable over Grey and Guo. We also do not sustain the rejection of
independent claim 1 and 16, which are rejected based on the same flawed
rationale. See Final Act. 3–5, 7–9. Further, we do not sustain the rejection
of dependent claims 3–6, 9, 11–14, 17, 20, and 22–25 for the same reasons.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”). Because the Examiner does not rely on the additional cited
references (Miyaji and Renken) to rectify the above-noted deficiency, we
sustain the rejection of dependent claims 18 and 19 for the same reasons
discussed above as to claims 1 and 16.

CONCLUSION
We REVERSE the rejections of claims 1, 3–6, 9–14, 16–20, and 22–
25 under 35 U.S.C. §103(a).
REVERSED