Bruce A. Fraser et al.

Patent Trials and Appeals Board

Sep 20, 2019

13932540 - (D) (P.T.A.B. Sep. 20, 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.
13/932,540 07/01/2013 Bruce A. Fraser 509745 4794
53609 7590 09/20/2019
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
BRUNJES, CHRISTOPHER J
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRUCE A. FRASER, RONALD J. DUPPERT,
and WAYNE P. BEAGLE
____________________

Appeal 2018-006836
Application 13/932,540
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–14 and 17–37. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
BITZER Kuehlmaschinenbau GmbH. Appeal Br. 2.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A refrigeration system comprising:
two or more compressors configured to compress a flow
of refrigerant, the flow of refrigerant having oil entrained
therein;
a suction flow piping arrangement configured to supply a
flow of refrigerant and oil to the two or more compressors, the
suction flow piping arrangement comprising:
a suction header configured to carry the flow of
refrigerant and oil, wherein the suction header is disposed either
horizontally or at an angle between zero and five degrees from
horizontal;
a primary compressor supply conduit connected to, and
branching off from, the suction header, the primary compressor
supply conduit configured to supply refrigerant and oil to a first
compressor of the two or more compressors;
a secondary compressor supply conduit branching off
from the suction header, the secondary compressor supply
conduit configured to supply refrigerant to a second compressor
of the two or more compressors;
wherein the primary compressor supply conduit is
configured to supply more oil to the first compressor than the
secondary compressor supply conduit supplies to the second
compressor.

REJECTIONS
I. Claims 1, 11–13, 19, 20, 22–26, and 28–32 stand rejected under
35 U.S.C. § 103 as unpatentable over Tanaka2 (JP 2605498 B2,

2 An English language translation of Tanaka was made of record on
November 8, 2013, and citations to Tanaka refer to paragraph numbers from
the English translation.
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pub. Apr. 30, 1997) and De Bernardi (US 2005/0229627 A1,
pub. Oct. 20, 2005).
II. Claims 14 and 33 stand rejected under 35 U.S.C. § 103 as
unpatentable over Tanaka, De Bernardi, and Ueno (EP 1120611
A1, pub. Aug. 1, 2001).
III. Claims 1, 17, 18, and 27 stand rejected under 35 U.S.C. § 103
as unpatentable over De Bernardi and Hafkemeyer
(US 2011/0081254 A1, pub. Apr. 7, 2011).
IV. Claim 30 stands rejected under 35 U.S.C. § 103 as unpatentable
over De Bernardi.
V. Claims 2–7, 10, 34, and 35 stand rejected under 35 U.S.C.
§ 103 as unpatentable over De Bernardi and Ueno.
VI. Claims 8, 9, 21, 36, and 37 stand rejected under 35 U.S.C.
§ 103 as unpatentable over De Bernardi, Ueno, and Tanaka.3
VII. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as
unpatentable over De Bernardi and Tanaka.

DISCUSSION
Rejection I
Claims 1, 11–13, 19, 20, 22–26, 28, and 29
Independent claim 1 recites, in relevant part, “a primary compressor
supply conduit connected to, and branching off from, the suction header.”
Appeal Br. 33 (Claims App.). Appellant contests the Examiner’s finding

3 Although the Examiner omits claims 36 and 37 from the statement of the
rejection (see Non-Final Act. 29), the Examiner addresses these claims in the
detailed explanation of the rejection (see id. at 35).
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that Tanaka discloses this feature. See Appeal Br. 11–12; Reply Br. 9. We
agree with Appellant that a sustainable case of obviousness has not been
established with respect to claims 1, 11–13, 19, 20, 22–26, 28, and 29.
In rejecting claim 1, the Examiner finds that Tanaka discloses “a
primary compressor supply conduit (16) connected to, and branching off
from, the suction header.” Non-Final Act. 5 (boldface omitted) (citing an
annotated version of Tanaka’s Figure 1 on page 6 of the Non-Final Action).
The Examiner explains that, “[b]ased on the broadest reasonable
interpretation of the term ‘branching off’, . . . the primary inlet port as
identified by the examiner is branching off the suction header.” Id. The
Examiner also explains that “the McGraw-Hill Dictionary of Engineering
defines branch as ‘in a piping system, a pipe that originates in or discharges
into another pipe.’” Ans. 43. According to the Examiner, “any conduit that
extends from the suction header would read on the claim. In Tanaka, the
primary supply conduit extends axially in-line from the suction header, see
[Tanaka] Figure 1.” Id. at 44.
Appellant persuasively asserts that “[t]he annotated figure of Tanaka
relied upon by the Examiner does not show a pipe that originates in or
discharges into another pipe.” Appeal Br. 12 (emphasis omitted); see also
id. (asserting that the Examiner’s annotated figure “shows the same pipe as
the suction header and primary conduit”). Here, the Examiner relies on one
portion of intake pipe 16 as the suction header and another portion of intake
pipe 16 as the primary compressor supply conduit. See Non-Final Act. 5–6.
In other words, the identified suction header and primary compressor supply
conduit are portions of the same pipe (i.e., intake pipe 16), and, therefore,
the identified primary compressor supply conduit does not originate in
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another pipe, as set forth in the Examiner’s proffered definition (see Ans.
43). Thus, the Examiner has not established by a preponderance of the
evidence that Tanaka discloses “a primary compressor supply conduit
connected to, and branching off from, the suction header,” as recited in
claim 1, nor has the Examiner explained why one of ordinary skill in the art
might have been prompted to modify Tanaka to include such a feature.4
For the above reasons, we do not sustain the rejection of independent
claim 1, or its dependent claims 11–13, 19, 20, 22–26, 28, and 29, under
35 U.S.C. § 103 as unpatentable over Tanaka and De Bernardi.

Claims 30–32
Independent claim 30 is distinct from independent claim 1 in that
claim 30 does not require that the primary compressor supply conduit
branches off from the suction header. See Appeal Br. 38 (Claims App.).
Thus, Appellant’s persuasive argument for claim 1, discussed above, is
unpersuasive with respect to claim 30 because it is not commensurate with
the scope ofclaim 30. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(noting that it is well established that limitations not appearing in the claims
cannot be relied upon for patentability).
In rejecting claim 30, the Examiner finds that Tanaka discloses a

4 We note the Examiner’s finding that De Bernardi teaches branch tubes 9
and 10 branching off from a suction header. See Non-Final Act. 5 (citing De
Bernardi ¶ 43); Ans. 44 (citing De Bernardi, Figs. 1, 2, ¶ 41). However, the
rejection does not propose any modification of Tanaka with respect to the
primary compressor supply conduit branching off from the suction header.
Instead, the Examiner explains that, “for the modification of Tanaka in view
of De Bernardi, the only change is that the suction header segment is being
oriented horizontally.” Non-Final Act. 7 (emphasis added).
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method of distributing oil in a multiple-compressor system including, in
relevant part,
directing a flow of oil from the suction header to two or more
compressors, wherein a majority of the oil is directed to a lead
compressor (Figure 1; Due to the secondary compressor supply
conduit 26 branching off perpendicular to the suction header
and the primary compressor supply conduit 16 being the same
diameter as the suction header, [and] having the primary supply
conduit extending vertically downwards to act as a gravitational
drain, the suction header of Tanaka would direct a majority of
the oil to the lead compressor 1 . . . ).
Non-Final Act. 14–15 (boldface omitted). The Examiner finds that Tanaka
does not disclose, inter alia, “the suction header being disposed either
horizontally or at an angle between zero and five degrees from horizontal.”
Id. at 16. However, the Examiner finds that De Bernardi teaches, in relevant
part, a compressor assembly having “a suction header (8) disposed
horizontally (Figure 1) with a primary compressor supply conduit 10 and a
secondary compressor supply conduit 9.” Id. (boldface omitted). The
Examiner determines that it would have been obvious to modify Tanaka’s
vertical suction header so that it is oriented horizontally in order to
predictably result in a more compact unit requiring less vertical clearance
without modifying compressor operation, and because the modification is a
mere rearrangement of parts involving only routine skill. Id. at 17 (citing
MPEP § 2144.04(VI)(C)).
Appellant argues that the Examiner’s conclusion of obviousness is in
error because, “as explained in the accompanying Declaration, modifying
the system of Tanaka, in the manner proposed by the Examiner, using the
teachings of De Bernardi, which are directed to the horizontal suction
header, would change the principle of operation of the refrigeration system
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disclosed by Tanaka.” Appeal Br. 7; see also Declaration by Bruce A.
Fraser under 37 C.F.R. § 1.132, dated September 27, 2017 (hereinafter
“Fraser Declaration” or “Fraser Decl.”). In particular, Appellant asserts that
“modifying Tanaka, which relies on a pressure differential to function as
intended, by incorporating the suction header of De Bernardi[,] which is
configured to guarantee equal pressure levels between the compressors,
would change the principle of operation of [Tanaka].” Appeal Br. 7.
According to Appellant “[t]he Declarant has laid out a persuasive argument
explaining that the horizontal piping arrangement of De Bernardi is designed
to guarantee equal pressure levels between the compressors, while the
system of Tanaka operates on a forced pressure differential between
compressors.” Id. at 8; see also Fraser Decl. ¶¶ 6–9 (citing Tanaka ¶ 8;
De Bernardi ¶ 26).
Appellant’s argument is unpersuasive because it is not responsive to
the proposed modification set forth in the rejection. As discussed above, the
Examiner proposes orienting Tanaka’s suction header horizontally. Non-
Final Act. 17. The Examiner clarifies in the Answer that, “for the
modification of Tanaka in view of De Bernardi, the only change is that the
suction header segment is being oriented horizontally.” Ans. 40; see also
Non-Final Act. 7 (relying on the same proposed modification in the rejection
of claim 1). In other words, although Appellant is correct that De Bernardi’s
suction header piping arrangement equalizes pressure between compressors
(see De Bernardi ¶ 26), the Examiner’s rejection does not propose to
incorporate De Bernardi’s suction header into the system of Tanaka, but,
rather, simply to rotate the vertical suction header so that it is horizontal.
See Ans. 42 (annotated versions of Tanaka’s Figure 1, showing Tanaka
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before and after the modification). In this regard, Appellant’s argument and
the Fraser Declaration appear to improperly presume a bodily incorporation
of De Bernardi’s suction header element into the system of Tanaka. See
Appeal Br. 7; Fraser Decl. ¶ 9. “It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981) (stating, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference”).
Appellant argues that the Examiner’s proposed modification of
Tanaka “is not taught or suggested by De Bernardi. The Examiner has
proposed a modification to Tanaka not taught or suggested by any cited
reference.” Appeal Br. 9. This argument is unpersuasive because it appears
to insist on an explicit teaching, suggestion, or motivation in the cited art to
establish obviousness, but such a requirement has been foreclosed by the
Supreme Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
(2007) (stating that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness). The Court
noted that an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [an
examiner] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant
inquiry is whether the Examiner has set forth “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
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approval in KSR, 550 U.S. at 418. Here, as discussed above, the Examiner
articulates adequate reasoning based on rational underpinnings as to why it
would have been obvious to modify the suction header of Tanaka so that it is
oriented horizontally. See Non-Final Act. 17 (explaining that the proposed
modification is a mere rearrangement of parts and would predictably result
in a more compact unit). In this regard, Appellant does not persuasively
refute the Examiner’s articulated reasoning or explain why it would lack
rational underpinnings.
Appellant argues that De Bernardi does not teach that “a majority of
the oil is directed to a lead compressor,” as recited in claim 30. See Appeal
Br. 8; see also id. at 12 (asserting that “the piping arrangement of De
Bernardi fails to teach that the primary compressor supply conduit is
configured to supply more oil to the first compressor than the secondary
compressor supply conduit supplies to the second compressor”). This
argument against De Bernardi is unpersuasive because it attacks the
reference individually, rather than the rejection as articulated by the
Examiner, which is based on the combined teachings of Tanaka and De
Bernardi. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425). Here, the Examiner does not rely
on De Bernardi for teaching that a majority of oil is directed to the lead
compressor, but, rather, as discussed above, the Examiner relies on Tanaka
for teaching this feature. See Non-Final Act. 14–15. The Examiner also
explains that Tanaka’s
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supply conduits for the other compressors (26 & 36) are
extending into the suction header beyond the inner surface of
the suction header. This would only allow oil that was mixed
with the refrigerant in the suction header from flowing into the
other compressors and prevent any oil that had condensed on
the inner surface of the suction header from flowing into these
secondary supply conduits. All of the condensed oil would by-
pass these supply conduits and flow into the primary
compressor.
Id. at 15. In this regard, Appellant does not persuasively refute the
Examiner’s position.
Appellant argues that Tanaka’s vertical suction header relies on
gravity to feed more oil to the primary compressor, and rotating the suction
header to be horizontal would eliminate the effect of gravity on oil flow. See
Appeal Br. 8–9; Fraser Decl. ¶ 8. Appellant asserts that the Examiner
“failed to provide any evidence that the system of Tanaka would maintain
the forced pressure differential and provide more oil to the lead compressor
if the vertical suction header were rotated to horizontal in the manner
proposed.” Appeal Br. 9. This argument is unconvincing. The Examiner
explains that
[t]he feature of having the secondary supply conduits (26 or 36)
extend partially through the inner wall of the suction header
would still be maintained and the primary supply conduit would
still be extending vertically downward from the suction header.
Both features would still result in the bulk of the oil being
directed into the primary compressor for the reasons noted
above.
Ans. 40. In this regard, Appellant does not persuasively refute the
Examiner’s position.
Moreover, even if orienting Tanaka’s suction horizontally would
negatively impact the effect of gravity on oil flow (see Appeal Br. 9; Fraser
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Decl. ¶ 8), our reviewing court has recognized that a given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate any or all reasons to combine teachings. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if there are
tradeoffs involved regarding features, such things do not necessarily prevent
the proposed combination); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 30 would have
been obvious. Accordingly, we sustain the rejection of claim 30, and its
dependent claims 31 and 32, for which Appellant does not present separate
arguments (see Appeal Br. 6–13), under 35 U.S.C. § 103 as unpatentable
over Tanaka and De Bernardi.

Rejection II
Claim 14
The rejection of claim 14, which depends indirectly from independent
claim 1, relies on the same proposed combination of Tanaka and De
Bernardi that we find deficient for the reasons discussed above in connection
with Rejection I. See Non-Final Act. 18–19. The Examiner relies on Ueno
for teaching additional features, but does not articulate any findings or
reasoning that would remedy the aforementioned deficiency in the
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combination of Tanaka and De Bernardi. See id. Accordingly, for the same
reasons discussed above, we do not sustain the rejection of claim 14 under
35 U.S.C. § 103 as unpatentable over Tanaka, De Bernardi, and Ueno.
Claim 33
In rejecting claim 33, which depends from independent claim 30, the
Examiner finds Tanaka teaches an “extension segment protruding into the
suction header (Figure 2).” Non-Final Act. 19 (boldface omitted). The
Examiner finds that the combination of Tanaka and De Bernardi “fail[s] to
explicitly teach the extension segment protruding 25-75% of the inner
diameter of the suction header.” Id. However, the Examiner finds that Ueno
teaches “wherein the extension segment protrudes into the suction header a
distance equal to between 25% and 75% of an inner diameter of the suction
header (Figure 5).” Id. (boldface omitted). The Examiner explains that
[t]he courts have held that where the only difference between
the prior art and the claims was a recitation of relative
dimensions of the claimed device, and a device having the
claimed relative dimensions would not perform differently than
the prior art device, the claimed device was not patentably
distinct from the prior art device, see MPEP § 2144.04
Paragraph IV.A. In Tanaka, the purpose of the extension
segments is to direct the bulk of the oil to the primary
compressor (Paragraph 14). A similar purpose is disclosed for
the extension segments of Ueno (Paragraph 93). By having the
extension segment of Tanaka extending into the suction header
by a distance of 25-75% of the inner diameter of the suction
header, this would prevent any oil that has collected on the
inner peripheral wall from easily being sucked into the
secondary compressor supply conduit, allowing the bulk of the
oil to be drawn into the primary compressor.
Id. at 19–20. The Examiner determines that it would have been obvious to
use the techniques of Tanaka and De Bernardi in combination with those of
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Ueno to direct a bulk of the oil in the refrigerant to the primary compressor.
Id. at 20.
Appellant argues that the Examiner’s finding as to Ueno is in error
because Ueno’s extension segment intersects an end wall rather than an
annular wall, as required by claim 33. Appeal Br. 19 (citing Ueno, Fig. 5).
We are not persuaded by this argument. The Examiner clarifies in the
Answer that “the base reference Tanaka teaches having the secondary &
tertiary compressor supply conduits intersecting [and] extending past the
annular wall of the suction header (see Figure 2).” Ans. 50. In other words,
it is clear that the Examiner relies on Tanaka for teaching the extension
protruding through an annular wall of the suction header, and relies on Ueno
only as evidence regarding protrusion distance percentages relative to an
interior dimension of a pipe.
Appellant argues that “no objective reason to combine Ueno with
Tanaka and De Bernardi has been advanced” (Appeal Br. 17), and the
Examiner relied on impermissible hindsight reconstruction (id. at 18–19).
This line of argument is unconvincing because it does not specifically
address the Examiner’s reasoning articulated in the rejection. As discussed
above, the Examiner reasons that the only difference between the prior art
and claim 33 is the recitation of the relative dimensions of the extension
segment and the suction header into which the extension segment protrudes.
See Non-Final Act. 19; Ans. 50–51. We view the distance that the extension
segment protrudes from the annular wall of the suction header as a design
choice within the ordinary skill of the art in the absence of any evidence to
support the criticality of a distance of 25%–75% of the suction header
diameter. See Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984),
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cert. denied, 469 U.S. 830 (holding that, where the only difference between
the prior art and claims was recitation of relative dimensions of the claimed
device and a device having the claimed dimensions would not perform
differently than the prior art device, the claimed device was not patentably
distinct from prior art device); see also In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and “would be an obvious matter of design choice
within the skill of the art” (citations omitted)).
Moreover, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction
is proper.”). As such, we are unpersuaded by Appellant’s contention that the
Examiner relied on impermissible hindsight in reaching the determination of
obviousness of the claimed subject matter. See Appeal Br. 18–19.
For the above reasons, we sustain the rejection of claim 33 under
35 U.S.C. § 103 as unpatentable over Tanaka, De Bernardi, and Ueno.

Rejection III
Independent claim 1 recites, in relevant part, that “the primary
compressor supply conduit is configured to supply more oil to the first
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compressor than the secondary compressor supply conduit supplies to the
second compressor.” Id. at 33 (Claims App.). Appellant contests the
Examiner’s finding that De Bernardi discloses this feature. See Appeal Br.
20–21; Reply Br. 11–12. We agree with Appellant that a sustainable case of
obviousness has not been established with respect to claim 1.
In this rejection of claim 1, the Examiner finds that “the suction
header [and] supply conduits of De Bernardi can be various diameters
chosen to control the velocity [and] pressure levels of the fluid flow to the
compressors (Paragraph 26).” Non-Final Act. 21. The Examiner takes the
position that “it would have been well within the capabilities of a person
having ordinary skill in the art to configure the diameters of the suction
header, the primary compressor supply conduit, and the secondary
compressor supply conduit so that more oil is supplied to the first
compressor.” Id. According to the Examiner, “the primary compressor
supply conduit . . . provides a more direct flow path for the refrigerant [and]
oil by extending axially from the suction header, as opposed to the
secondary supply conduits which branch radially from the suction header.”
Id. at 21–22; see also Ans. 52 (explaining that “any oil that had collected on
the inner surface of the suction header would be pushed to the distal end of
the suction header”).
Appellant argues that the Examiner’s finding that De Bernardi
supplies more oil to the primary compressor is conclusory and lacks
evidentiary support. See Appeal Br. 21; Reply Br. 11. In particular,
Appellant asserts that, “[a]s explained in the accompanying Declaration,
De Bernardi is designed to maintain equal pressures and to supply equal
amounts of oil to all compressors.” Appeal Br. 21; see also Fraser Decl.
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¶ 11 (stating that, “[s]ince the piping arrangement of De Bernardi maintains
equal pressures between compressors, oil will tend to flow to all of the
compressors equally”).
De Bernardi discloses that “[t]he various diameters used are chosen to
maintain the minimum gas velocity and guarantee equal pressure levels
between the compressors.” De Bernardi ¶ 26 (boldface omitted). De
Bernardi also discloses that “the outside diameter of the branch tubes is
essentially equal to 1⅝ inches . . . , the outside diameter of the distribution
tube being essentially equal to 2⅝ inches . . . or essentially equal to 2⅛
inches.” Id. Given De Bernardi’s disclosure that the system maintains equal
pressure between compressors and the branch tubes have common
dimensions, a preponderance of the evidence does not support the
Examiner’s finding that more oil would flow through one branch tube to a
primary compressor than a branch tube to a secondary compressor. See
Non-Final Act. 21–22.
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis. In
making such a rejection, the Examiner has the initial duty 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.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
reconstruction, we fail to see a sufficient reasoned explanation based on
some rational underpinning as to why one of ordinary skill in the art would
have been led to modify De Bernardi as proposed by the Examiner, and a
reason for such modification is not otherwise evident from the record.
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For the above reasons, we do not sustain the rejection of claim 1, or its
dependent claims 17, 18, and 27, under 35 U.S.C. § 103 as unpatentable over
De Bernardi and Hafkemeyer.

Rejection IV
Independent claim 30 recites language substantially similar to the
language of claim 1 discussed above in connection with Rejection III. See
Appeal Br. 38 (Claims App.) (reciting that “a majority of the oil is directed
to a lead compressor”). In this regard, Rejection IV suffers from essentially
the same deficiency as Rejection III because it is premised on an
unsupported finding that De Bernardi discloses that a majority of oil is
directed to a lead compressor. See Non-Final Act. 23–24. For the same
reasons discussed above in connection with Rejection III, the Examiner has
not met the burden of establishing a proper case that claim 30 is
unpatentable based on De Bernardi. On this basis, we do not sustain the
rejection of claim 30 under 35 U.S.C. § 103 as unpatentable over De
Bernardi.

Rejections V–VII
These rejections of claims 2–10, 21, 23, 24, and 34–37, which depend
directly or indirectly from independent claim 1 or independent claim 30, are
deficient for the same reasons discussed above in connection with Rejections
III and IV. The Examiner relies on Ueno and Tanaka for teaching additional
features, but does not articulate any findings or reasoning that would cure
the aforementioned deficiencies in De Bernardi. See Non-Final Act. 25–36.
Accordingly, we do not sustain the rejections of claims 2–10, 21, 23, 24, and
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34–37 under 35 U.S.C. § 103 as unpatentable over De Bernardi and one or
more of Ueno and Tanaka.

DECISION
The Examiner’s decision rejecting claims 1, 11–13, 19, 20, 22–26,
and 28–32 under 35 U.S.C. § 103 as unpatentable over Tanaka and De
Bernardi is REVERSED as to claims 1, 11–13, 19, 20, 22–26, 28, and 29,
and AFFIRMED as to claims 30–32.
The Examiner’s decision rejecting claims 14 and 33 under 35 U.S.C.
§ 103 as unpatentable over Tanaka, De Bernardi, and Ueno is REVERSED
as to claim 14, and AFFIRMED as to claim 33.
The Examiner’s decision rejecting claims 1, 17, 18, and 27 under
35 U.S.C. § 103 as unpatentable over De Bernardi and Hafkemeyer is
REVERSED.
The Examiner’s decision rejecting claim 30 under 35 U.S.C. § 103 as
unpatentable over De Bernardi is REVERSED.
The Examiner’s decision rejecting claims 2–7, 10, 34, and 35 under
35 U.S.C. § 103 as unpatentable over De Bernardi and Ueno is REVERSED.
The Examiner’s decision rejecting claims 8, 9, 21, 36, and 37 under
35 U.S.C. § 103 as unpatentable over De Bernardi, Ueno, and Tanaka is
REVERSED.
The Examiner’s decision rejecting claims 23 and 24 under 35 U.S.C.
§ 103 as unpatentable over De Bernardi and Tanaka is REVERSED.
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).
Appeal 2018-006836
Application 13/932,540

19
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 11–13, 19, 20,
22–26, and 28–32
§ 103 Tanaka and
De Bernardi
30–32 1, 11–13, 19,
20, 22–26, 28,
and 29
14 and 33 § 103 Tanaka, De
Bernardi, and Ueno
33 14
1, 17, 18, and 27 § 103 De Bernardi
and Hafkemeyer
1, 17, 18, and
27
30 § 103 De Bernardi 30
2–7, 10, 34, and 35 § 103 De Bernardi
and Ueno
2–7, 10, 34,
and 35
8, 9, 21, 36, and 37 § 103 De Bernardi,
Ueno, and Tanaka
8, 9, 21, 36,
and 37
23 and 24 § 103 De Bernardi
and Tanaka
23 and 24
Overall Outcome 30–33 1–14, 17–29,
and 34–37

AFFIRMED-IN-PART