Ex Parte 5335512 et al

Patent Trial and Appeal Board

Sep 24, 2012

90009867 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,867 02/17/2011 5335512 404.10344REO 4961
30734 7590 09/25/2012
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/25/2012 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 PATENT TRIAL AND APPEALS BOARD
____________________

Ex parte SPX CORPORATION
Patent Owner and Appellant
____________________

Appeal 2012-007870
Reexamination control 90/009,867
Patent 5,335,512
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, RAE LYNN P. GUEST,
Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
SPX Corporation (hereinafter “Appellant”), the real party in interest1 of
Patent 5,335,512 (hereinafter the ‘“512 patent”),2 appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner’s decision to reject claims 9-13 under 35

1 See Appellant’s Appeal Brief filed December 14, 2011 (hereinafter “App. Br.”)
at 3.

2 The ‘512 patent issued on August 9, 1994 to John P. Hancock et al.
Appeal 2012-007870
Reexamination Control No. 90/009,867
Patent 5,335,512

2
U.S.C. § 103(a) as unpatentable over Gramkow,3 alone or in combination with one
of A’Gramkow,4 Elliot,5 or Ewer,6 (Final Office Action, mailed June 16, 2011,
pages 2-7). Claims 1-8 and 14-16 of the ‘512 patent are not subject to this
reexamination. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral
hearing was held on August 15, 2012. A transcript of the oral hearing will be
made of record in due course.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Ronald J. Shore of the law firm Antonelli, Terry, Stout &
Kraus, LLP (Request for Ex Parte Reexamination, filed February 17, 2011
(hereinafter “Request”)).
The ‘512 patent relates to a device for recovering, processing and storing
refrigerant from a refrigeration system (‘512 patent, col. 1, ll. 9-14).

Claim 9, which is the sole independent claim on appeal and representative of
the subject matter on appeal, reads as follows:

3 US 5,094,087, issued March 10, 1992 to Asger Gramkow (hereinafter
“Gramkow”).

4 A’Gramkow A/S, “Instructions: Reclaim Station – Type RE 1215” (hereinafter
“A’Gramkow”).

5 US 4,902,226, issued February 20, 1990 to Raymond D. Elliott et al (hereinafter
“Elliott”).

6 US 5,199,271, issued April 6, 1993 to John W. Ewer (hereinafter “Ewer”).

Appeal 2012-007870
Reexamination Control No. 90/009,867
Patent 5,335,512

3
9. A single pass refrigerant recovery device for withdrawing
refrigerant from a refrigeration system to be serviced, processing the
refrigerant so withdrawn, and depositing the refrigerant so processed
into a storage means, the recovery device comprising
a compressor,
an oil separator disposed downstream from the compressor,
an oil return line means having a first end disposed downstream
from the oil separator means and a second end disposed upstream
from the compressor means,
a valve means for controlling the flow of material in the oil
return line means, and
means for controlling the opening and closing of the valve
means for permitting the controlled flow of materials in the oil return
line means between the oil separator means and the compressor means
during operation of the device to ensure an adequate replenishment of
a supply of oil in the compressor, and for biasing the valve in an open
position when the device is not operating to permit refrigerant to flow
therethrough to substantially balance the pressure upstream from the
compressor with the pressure downstream from the compressor.
(App. Br. 16, Claims Appendix.)
As an initial matter, Appellant has not presented separate arguments for any
particular rejected claim. Rather, Appellants’ arguments are principally directed to
independent claim 9. Any claim not separately argued will stand or fall with
independent claim 9. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal
Reexam
Patent 5

II. REJ
A. T
In
Examin
87-104
A
Request
valve lo
F
system
In
to the su
gas is p
compre
It
system
location
2012-0078
ination Co
,335,512
ECTIONS
HE REJEC
rejecting
er incorpo
(Ans. 8).
ccordingly
84), whic
cated in an
igure 3 of
(col. 3, ll.
describin
ction side
assed throu
ssor throug
is undispu
having an
upstream
70
ntrol No.
BASED
TIONS
the claims
rates by re
, the Exam
h is reprod
oil return
Gramkow
43-46).
g a simila
of compre
gh an oil
h a condu
ted that F
oil return l
from the c
90/009,86
ON GRAM
based on
ference th
iner relie
uced belo
line and a
depicts a
r embodim
ssor 8, at
separator
it 12” (col
igure 3 of
ine, includ
ompresso
7
4
KOW IN
Gramkow
e rejection
s on Figur
w (with ar
n oil sepa
schematic
ent, Gram
the discha
10, from w
. 3, ll. 58-6
Gramkow
ing a valv
r (see Ans
VIEW O
in view o
s stated in
e 3 of Gra
rowed lab
rator for c
diagram o
kow states
rge side of
hich regai
2).
illustrates
e, from an
. 5; Reque
F ELLIOT
f Elliott or
the Reque
mkow (An
els added t
onvenienc

f a refrige
that “gas
which the
ned oil is
a refriger
oil separa
st 84; App
T OR EW
Ewer, the
st on page
s. 7-8;
o identify
e and clari
rant recove
can be dra
compress
led back to
ant recove
tor to a
. Br. 7). T
ER

s
a
ty).
ry
wn
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ry
he
Appeal
Reexam
Patent 5

Examin
controll
84).

F
F
system
driven g
F
ll. 3-4 a
T
downstr
solenoid
Gramko
2012-0078
ination Co
,335,512
er further
ing (i.e. op
igure 6 of
igure 6 of
60 includin
as compre
igure 1 of
nd 9).
he Examin
eam oil se
valves (1
w (see Re
70
ntrol No.
finds that G
ening and
Elliott and
Elliott dep
g a refrig
ssor unit 6
Ewer depi
er finds th
parators (9
04/32), sim
quest 92 a
90/009,86
ramkow
closing) t
Figure 1
icts a sche
eration typ
2 (Elliott,
cts a diagr
at Elliott
2/14) and
ilar to the
nd 101).
7
5
teaches a c
he solenoi
of Ewer ar
matic sho
e, hermeti
col. 4, ll.
am of an a
and Ewer t
oil return
arrangem
ontrol uni
d valves (c
e reproduc
wing a coo
cally enclo
60-62 and
ir conditio
each comp
lines (106
ent illustr
t 54 (not s
ol. 4, ll. 3
ed below.
lant and a
sed electr
col. 8, ll. 2
ning syste
ressors (6
/28) comp
ated in Fig
hown) for
6-38; Requ

ir supply
ic motor
9-32).
m 10 (col
2/12) with
rising
ure 3 of

est

. 3,

Appeal 2012-007870
Reexamination Control No. 90/009,867
Patent 5,335,512

6
The Examiner finds that Elliott teaches that when the compressor and the
solenoid valve is turned off, “the solenoid valve is biased in an open position . . . to
permit pressure unloading, i.e. to permit the released oil and air to flow
therethrough to substantially balance the pressure upstream from the compressor
with the pressure downstream from the compressor” (Request 92-93). Indeed,
Elliott teaches that “[w]hen the solenoid valve is deenergized, it moves
automatically to the open position” such that “[o]il accumulated in the bottom of
coalescer 92 is moved through the tube 106 ahead of the pressurized air” which
“unloads the outlet valve on the compressor so that the motor when it starts will
not be overloaded in trying to start the compressor against a high outlet pressure”
(Elliott, col. 10, ll. 1-11).
The Examiner similarly finds that Ewer teaches that “when the device is not
operating the solenoid valve is biased in an open position . . . to inherently permit
refrigerant to flow therethrough to substantially balance the pressure upstream
from the compressor with the pressure downstream from the compressor” and that
the normally open solenoid valve ‘“permits a separator to compressor oil return
cycle at system shut down’ . . . and provides a safety advantage in case of
component failure or loss of electrical power” (Request 101-102). Indeed, Ewer
teaches that “[t]he use of a normally open solenoid valve insures that electrical
failure in the solenoid/timer portion of the system while the compressor is still
operating will allow a continual flow of lubricating oil back to the compressor,
thus providing a fail-safe backup to prevent inadequate lubrication of the
compressor” (Ewer, col. 3, l. 65 to col. 4, l. 2).
The Examiner concludes that it would have been obvious to control the
valve in the device of Figure 3 of Gramkow for oil return during operation of the
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Reexamination Control No. 90/009,867
Patent 5,335,512

7
device and to bias open the valve to balance the pressure across the compressor
when the device is not operating, as taught by Elliott and Ewer (Request 93 and
102). The reason to do so, according to the Examiner’s conclusion, is “in order to
lubricate the compressor and reduce start up load on the compressor” as taught by
Elliott (Request 93) and “to provide an oil return cycle at shut down, as a safety
advantage to ensure lubrication in case of component failure or loss of electrical
power, and to reduce load at start up of the compressor,” as taught by Ewer
(Request 102).
B. ISSUE ON APPEAL
The dispositive issue on appeal is: Does the evidence support the
Examiner’s conclusion that a refrigerant recovery system including a “means for
controlling the opening and closing of the valve” in an oil return line for
“controlled flow of materials in the oil return line . . . during operation of the
device” and “for biasing the valve in an open position when the device is not
operating,” as recited in claim 9, would been obvious to one of ordinary skill in the
art in view of Gramkow and Elliott or Ewer?
C. ANALYSIS
Appellant contends that one of ordinary skill the art would understand that
the valve in the oil return line of Gramkow could not be open when the device is
not operating because Gramkow provides no means by which to prevent oil from
flowing not only to the compressor but also back through acid filter 72 and into
receiver container 2 (App. Br. 7-8). According to Appellant, the oil back flow into
container 2 would be lost, and one of ordinary skill in the art would not operate the
system of Gramkow in a manner that would cause a loss of oil being fed back to
Appeal 2012-007870
Reexamination Control No. 90/009,867
Patent 5,335,512

8
the compressor (id.). The testimony provided by the Rice Declaration7 supports
the Appellant’s contention that oil backflow would lead to oil loss (see Rice Decl.
¶¶ 8 and 9).
Appellant argues that neither Elliott nor Ewer cure the deficiency of
Gramkow, as they have no check valve or other mechanism to address this problem
(App. Br. 12-13 and 14; Rice Decl. ¶ 12).
We note that the claims do not require a check valve or complete efficiency
in the return of oil to a compressor. The claims only recite a structure for a
refrigerant recovery system, which is taught by Figure 3 of Gramkow, and which is
capable of functioning according to the teachings of and for the benefits taught by
Elliott and Ewer. The Examiner has provided a sufficient rationale as to why the
skilled artisan would have operated the solenoid valve of Gramkow according the
teachings of Elliot and Ewer, namely to ensure lubrication and safely reduce load
at start up of the compressor. Accordingly, the Examiner has sufficiently
established a prima facie case of obviousness. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).
While Appellant presents evidence that a backflow of oil would lead to oil
loss, Appellant does not appear to allege, and Appellant’s evidence does not
suggest, that a biased open valve would render the device inoperable for its

7 The Declaration under 37 C.F.R. § 1.132 of Dr. James Rice, dated and entered
into the record on August 16, 2011 (hereinafter “Rice Declaration” or “Rice
Decl.”).

Appeal 2012-007870
Reexamination Control No. 90/009,867
Patent 5,335,512

9
intended purpose. To the contrary, Appellant indicates that, even with some oil
loss, oil would nonetheless reach the compressor in the manner taught by Elliott
and Ewer (App. Br. 8; Rice Decl. ¶ 9 (“oil would not only flow back to the
compressor . . . ”)). Likewise, Appellant does not appear to allege that a biased
open valve, as taught by Elliott and Ewer, would not allow refrigerant to flow
through the valve to substantially balance the pressure upstream and downstream
of the compressor, as functionally recited in claim 9. Thus, we are unpersuaded by
Appellant’s argument that the skilled artisan would not have arrived at the claimed
invention, even if the combined teachings of Gramkow and Elliott or Ewer would
result in an inferior product due to inefficient return of oil. ‘“[T]he question is
whether there is something in the prior art as a whole to suggest the desirability,
and thus the obviousness, of making the combination,’ not whether there is
something in the prior art as a whole to suggest that the combination is the most
desirable combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir.
2004) (quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)); see also
Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“Trade-
offs often concern what is feasible, not what is, on balance, desirable. Motivation
to combine requires the latter.”).
With respect to Elliott, Appellant further contends that because Elliott
teaches energizing and deenergizing the solenoid valve along with the compressor,
it fails to teach “opening and closing the valve means during operation” of the
device (App. Br. 14).
Claim 9 requires a “means for controlling the opening and closing of the
valve means for permitting the controlled flow of materials in the oil return line
means between the oil separator means and the compressor means during
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Reexamination Control No. 90/009,867
Patent 5,335,512

10
operation of the device to ensure an adequate replenishment of a supply of oil in
the compressor” (emphasis added). In this case, “operation of the device” refers to
the operation of the “single pass refrigerant recovery device,” which is the only
“device” referenced in the claim. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its
appearance in other places in the same claim or in other claims of the same
patent.”). Thus, the “device” in the claim is not the compressor, as suggested by
Appellant.
Elliott is directed to a compressor for providing a clean air supply system for
operating the various tools and accessories utilized by a dentist (Elliott, Abstract).
Elliott teaches that when the device (in Elliott, an air supply system) is operating,
the solenoid valve is controlled to open and close, and the compressor turns off and
on, depending upon the outlet air pressure sensed by the pressure regulator switch
(Elliott, col. 9, ll. 40-68). Thus, we agree with the Examiner that Elliott teaches the
periodic activation of the solenoid valve during operation of the device as recited
in claim 9.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.

III. CONCLUSION
On the record before us, we affirm the rejections on claims 9-13 under 35
U.S.C. § 103(a) as unpatentable over Gramkow in view of either Elliot or Ewer.
In affirming these rejections of all of the claims under reexamination, we
need not address the Examiner’s additional rejections based on A’Gramkow in
view of Gramkow or over Gramkow alone.
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Reexamination Control No. 90/009,867
Patent 5,335,512

11
IV. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

rvb

PATENT OWNER:

BAKER & HOSTELER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE., N.W.
WASHINGTON, DC 20036-5304

THIRD-PARTY REQUESTER:

ANTONELLI, TERRY, STOUT & KRAUS, LLP
1200 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873