Duppert, Ronald J.

Patent Trials and Appeals Board

Jun 1, 2020

2019005296 (P.T.A.B. Jun. 1, 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.
14/755,257 06/30/2015 Ronald J. Duppert 510329 7511
53609 7590 06/01/2020
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
WAN, DEMING
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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 RONALD J. DUPPERT
____________

Appeal 2019-0052961
Application 14/755,2572
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–9 and 11–18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 Our Decision references Appellant’s Specification (“Spec.,” filed June 30,
2015), Appeal Brief (“Appeal Br.,” filed Jan. 31, 2019), and Reply Brief
(“Reply Br.,” filed July 2, 2019), and the Examiner’s Answer (“Ans.,”
mailed May 3, 2019) and Final Office Action (“Final Act.,” mailed Aug. 27,
2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BITZER Kuehlmaschinenbau GmbH
as the real party in interest. Appeal Br. 2.
Appeal 2019-005296
Application 14/755,257

2
CLAIMED INVENTION
Appellant’s claimed invention “relates to fittings for scroll
compressors for compressing refrigerant and more particularly relates to
suction fitting members at the inlet of such scroll compressors.” Spec. ¶ 1.
Claim 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A suction fitting coupled to a scroll compressor, the
scroll compressor including an outer housing having an inside
diameter and a suction port defined in a wall of the outer
housing, and a suction duct disposed inside the outer housing a
spaced distance from the wall of the outer housing, the suction
fitting comprising:
a first member being generally cylindrical, the first
member being installed in the suction port; and
a second member being generally cylindrical, with the
second member disposed inside the first member with a portion
of the second member extending into the outer housing through
the suction port and spanning the spaced distance to the suction
duct and coupling with the entrance port of the suction duct;
wherein the suction duct defines an entrance port aligned
with the suction port, the suction duct having openings at
bottom end thereof to guide refrigerant from the inlet port into
the housing and beneath a motor housing of the scroll
compressor, and to guide oil to an oil sump of the scroll
compressor;
wherein neither the first member nor the second member
includes a suction screen for filtering out solid contaminants in
a flow of refrigerant.

Appeal 2019-005296
Application 14/755,257

3
REJECTIONS
Claims 1, 5, and 12 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Ginies (US 2009/0041602 A1, pub. Feb. 12, 2009).3
Claims 6, 7, 17, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Ginies and Reinhart (US 2003/0072662 A1, pub. Apr. 17,
2003).
Claims 8, 9, 11, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Ginies.
Claims 2–4 and 13–15 are rejected under 35 U.S.C. § 103 as
unpatentable over Ginies and Sugiyama (US 5,547,344, iss. Aug. 20, 1996).

ANALYSIS
Anticipation
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 102(a)(1) as
anticipated by Ginies because Ginies does not disclose a suction fitting with
a section duct “having openings at [a] bottom end thereof to guide
refrigerant . . . beneath a motor housing of the scroll compressor,” as recited
in claim 1, and similarly recited in claim 12. Appeal Br. 6–8; Reply Br. 6–7.
Ginies describes a cooling spiral compressor. Ginies ¶ 46. The
compressor has shell 2, body 5, and tube 6. Id. ¶ 47, Fig. 1. An electric
motor comprising stator 7 and rotor 8 is mounted in tube 6. Id. Tube 6 is
“swaged onto the stator [7] so as to support the motor.” Id. A bottom end of
tube 6 is attached indirectly to shell 2 via part 9. Id.

3 Although the Examiner did not include claim 5 in the heading of the
rejection it is addressed in the body. Final Act. 2, 6–7.
Appeal 2019-005296
Application 14/755,257

4
In operation, gas arrives into shell 2 via coupling 12. Id. ¶ 59, Figs. 1,
2. A portion of the gas enters tube 6 at a point above the motor and is mixed
with oil. Id. The mixture of gas and oil travels through the motor through
space 42, which is located between rotor 8 and stator 7, and through space
43, which is located between stator 7 and tube 6. Id. At the bottom portion
of the motor, oil is added, and passes through radial orifices 40 through
diffusers 41. Id.
The Examiner relies upon an annotated version of Ginies’s Figure 2 in
the rejection of independent claims 1 and 12. See Final Act. 3–6; see also
Ans. 5. We reproduce the Examiner’s annotated version of Ginies’s Figure
2 below.

Appeal 2019-005296
Application 14/755,257

5
Ginies’s Figure 2 is a longitudinal section of a scroll compressor.
Ginies ¶ 40. The annotated version of Ginies’s Figure 2 relies on shell 2 as
the housing, tube 6 (not labeled) as the suction duct, and on a box, drawn by
the Examiner to enclose stator 7 and rotor 8, as the motor housing. See also
Ans. 4 (“[T]he Office considered the tube 6 as the suction duct.”). The
annotated box representing the motor housing is depicted by the Examiner as
a structure distinct from tube 6.
The difficulty with the Examiner’s analysis, however, is that Ginies
does not describe a corresponding structure to the annotated box. Instead,
Ginies describes tube 6 as enclosing and supporting the motor. See Ginies
¶ 47, Figs. 1, 2. Put simply, tube 6 functions as a motor housing. See Reply
Br. 7 (arguing that tube 6 is the motor housing). Because Ginies does not
describe tube 6 as something other than a motor housing, the Examiner
improperly relies on tube 6 for two structures: the motor housing and the
suction duct. See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(holding that when a claim requires separate elements, the prior art must
disclose each of the separate elements).
Therefore, we do not sustain the rejection of independent claims 1 and
12 under 35 U.S.C. § 102(a)(1) as anticipated by Ginies. We also do not
sustain the rejection of claim 5, which depends from claim 1.
Obviousness
Each of the Examiner’s rejections of the dependent claims under 35
U.S.C. § 103 fails to remedy the deficiencies set forth above with respect to
independent claims 1 and 12. Therefore, we do not sustain the rejections of
dependent claims 2–4, 6–9, 11, and 13–18 under 35. U.S.C. § 103 for the
same reasons set forth above with respect to the independent claims.
Appeal 2019-005296
Application 14/755,257

6
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5, 12 102(a)(1) Ginies 1, 5, 12
6, 7, 17,
18
103 Ginies, Reinhart 6, 7, 17,
18
8, 9, 11,
16
103 Ginies 8, 9, 11,
16
2–4, 13–
15
103 Ginies, Sugiyama 2–4, 13–
15
Overall
Outcome
1–9, 11–
18

REVERSED