Ex Parte Ali

Patent Trial and Appeal Board

Jul 14, 2017

12290434 (P.T.A.B. Jul. 14, 2017)

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.
12/290,434 10/30/2008 Masood M. Ali 018635.0302 5376
134318 7590 07/18/2017
Raker Rntts; T.T.P/I ennoY
EXAMINER
2001 Ross Avenue AVILES BOSQUES, ORLANDO E
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3744
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
PTOmaill @bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASOOD M. ALI
Appeal 2016-0047711
Application 12/290,4342
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Masood M. Ali (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 10 and 19—26. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 We refer to the Final Office Action (mailed May 20, 2015) as “Final Act.,”
the Appeal Brief (filed October 1, 2015) as “Appeal Br.,” the Examiner’s
Answer (mailed February 12, 2016) as “Ans.,” and the Reply Brief (filed
April 7, 2016) as “Reply Br.”
2 According to the Appellant, “[t]he real party in interest is Heatcraft
Refrigeration Products LLC.” Appeal Br. 1.
Appeal 2016-004771
Application 12/290,434
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 25, is representative of the subject matter on appeal and is
reproduced below.
25. A refrigeration system, comprising:
a heat exchanger;
a receiver spaced apart from and connected to the heat
exchanger by a fluid line, the receiver in fluid communication
with a low temperature evaporator via a first refrigeration line
and in fluid communication with a first medium-temperature
evaporator via a second refrigeration line, the second
refrigeration line connected to the receiver in parallel with the
first refrigeration line, such that refrigerant from the receiver is
directed towards the low temperature evaporator via the first
refrigeration line and to the first medium-temperature evaporator
via the second refrigeration line;
an expansion device positioned about the first refrigeration
line in between the low temperature evaporator and the receiver;
a compressor fluidically coupled to the low temperature
evaporator;
a pump positioned about the second refrigeration line in
between the first medium temperature evaporator and the
receiver, such that the expansion device positioned about the first
refrigeration line receives refrigerant from the receiver without
passing through the pump; and
a flow regulating valve positioned about the second
refrigeration line in between the pump and the first medium-
temperature evaporator, wherein the flow regulating valve is
configured to receive refrigerant from the receiver and direct the
refrigerant to the first medium temperature evaporator, and to the
heat exchanger, without passing through the compressor before
reaching the heat exchanger.
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Application 12/290,434
Rejections
The following Examiner’s rejections are before us for review:
I. Claims 10 and 19—24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 10 and 19—24 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
III. Claims 25 and 26 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by H. Renz, Semi-Hermetic Reciprocating and Screw
Compressors for Carbon Dioxide Cascade Systems, 20th International
Congress of Refrigeration, IIR/IIF, Sydney (1999) (hereinafter “Renz”).
IV. Claims 10, 20, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Renz and Pachai et al. (US 2008/0223074 Al,
published Sept. 18, 2008; hereinafter “Pachai”).
V. Claim 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Renz, Pachai, and Arshansky et al. (US 2004/0148956,
published Aug. 5, 2004; hereinafter “Arshansky”).
VI. Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Renz, Pachai, and Apparao et al. (US 2004/0129015 Al,
published July 8, 2004; hereinafter “Apparao”).
ANALYSIS
Rejections I, II, and IV—VI
The Appellant filed a Notice of Appeal appealing from “the last
decision of the examiner.” Notice of Appeal, filed July 20, 2015. Also,
“[a]n appeal, when taken, is presumed to be taken from the rejection of all
claims under rejection unless cancelled by an amendment filed by the
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Application 12/290,434
applicant and entered by the Office.” 37 C.F.R. § 41.31(c). Despite seeking
an appeal from the final rejection of all the pending claims, the Appellant
does not present any arguments in either the Appeal Brief or the Reply Brief
directed to the patentability of independent claim 10 and dependent claims
19—24. Indeed, the Appellant states, “the rejections of claims 10 and 19-24
are not appealed herein.” Appeal Br. 2.
Filing a Board appeal does not, unto itself, entitle an appellant to
de novo review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue - or, more broadly, on
a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.
Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (precedential) (holding
that the Board reviews a rejection for error “based upon the issues identified
by appellant, and in light of the arguments and evidence produced thereon”).
We acknowledge that the Appellant “does not admit to the propriety
of the rejections of claims 10 and 19-24 and reserves the right to pursue the
claimed subject matter of claims 10 and 19-24 in the present application or
in any continuing application.” Appeal Br. 2.
Nonetheless, having no arguments of error presented by the Appellant
in this appeal as to the rejections of claims 10 and 19—24, we summarily
sustain the rejections of these claims (i.e., Rejections I, II, and IV—VI).
Rejection III
We have considered the Appellant’s arguments in the Appeal Brief
and the Reply Brief concerning the rejection of claims 25 and 26 under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Renz. The Appellant’s arguments
raise issues concerning the Examiner’s construction of claim 25. See Appeal
Br. 4—7. More specifically, the Appellant asserts that the Examiner
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Application 12/290,434
misconstrues the limitations directed to the “receiver” and “pump.” See id.
at 5—6; Reply Br. 2—3. The Appellant also argues that based on the alleged
misconstruction the Examiner erred in applying Renz’s disclosure to claim
25. See Appeal Br. 4—7. We determine that the Appellant’s arguments are
not persuasive.
Initially, we note that it is the Appellant’s burden to precisely define
the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997). The Appellant always has the opportunity to amend the claims
during prosecution; a broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. See In re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969).
The Appellant asserts that claim 25 “recites a single receiver in fluid
communication with both a low temperature evaporator via a first
refrigeration line and a medium-temperature evaporator via a second
refrigeration line.” Appeal Br. 5. However, as pointed out by the Examiner,
claim 25 does not recite the term “single” before the term “receiver.”
Ans. 2. The pertinent part of claim 25 recites:
A refrigeration system, comprising . . .
a receiver spaced apart from and connected to [a] heat
exchanger by a fluid line, the receiver in fluid communication
with a low temperature evaporator via a first refrigeration line
and in fluid communication with a first medium-temperature
evaporator via a second refrigeration line, the second
refrigeration line connected to the receiver in parallel with the
first refrigeration line, such that refrigerant from the receiver is
directed towards the low temperature evaporator via the first
refrigeration line and to the first medium-temperature evaporator
via the second refrigeration line.
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Application 12/290,434
Appeal Br., Claims App. (emphases added). In the above recitation of claim
25, there are four instances of the term “receiver,” none of which is preceded
by the term “single.” In fact, the term “single” is not present in claim 25.
Additionally, the Appellant appears to assert that despite the term
“single” not explicitly being recited in claim 25, the claim nonetheless
requires a “single” receiver. See Appeal Br. 5; Reply Br. 2—3. We disagree.
The broadest reasonable interpretation of claim 25 consistent with the
underlying Specification does not require a single receiver. See also In re
Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). First,
the claim recites the phrase “a receiver.” The indefinite article “a” prior to
the term “receiver” does not restrict the quantity of receivers to a single (i.e.,
only one) receiver.3 Moreover, as the Examiner points out, claim 25 uses
“the transitional phrase ‘comprising’, which is presumptively open-ended.”
Ans. 2 (citing MPEP § 2111.03 (9th Ed. Rev. 7, Nov. 2015)). Accordingly,
claim 25 does not forego the possibility of additional structures, including
another receiver, as part of the claimed invention.4 The Appellant’s
assertion that the restrictive term “single” is implicitly a qualifier for the
term “receiver” in claim 25 — without being explicitly written in the claim —
— is in conflict with use of the indefinite article “a,” which precedes the term
receiver, and open-ended transitional phrase “comprising.”
3 The term “single” refers to “only one in number; one only; unique; sole.”
Single Definition 1, DICTIONARY.COM UNABRIDGED, http://www.
dictionary.com/browse/single (last visited July 11, 2017). Hence, if the
phrase “a single receiver” were used in claim 25, the claim would restrict the
number of receivers to be one only.
4 By way of Example, Figure 5 of the Specification depicts an embodiment
of the Appellant’s invention (i.e., a refrigeration system) that includes two
receivers (i.e., receivers 113 and 123).
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Second, the Appellant has not identified any passage of the
Specification disclaiming an interpretation of the claim limitation directed to
the “receiver” that precludes more than one receiver. See also SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.
Cir. 2001) (“Where the specification makes clear that the invention does not
include a particular feature, that feature is deemed to be outside the reach of
the claims of the patent, even though the language of the claims, read
without reference to the specification, might be considered broad enough to
encompass the feature in question.”).
Third, although the Appellant’s Specification includes embodiments
(e.g., Figures 5 and 6) that use one receiver (i.e., receiver 123) “in fluid
communication with a low temperature evaporator via a first refrigeration
line and in fluid communication with a first medium-temperature evaporator
via a second refrigeration line,” claim 25 does not need be limited to features
of a particular embodiment. See Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., 381 F.3d 1111, 1121—22 (Fed. Cir. 2004) (citation omitted);
In re Am. Acad, of Science Tech Ctr., 367 F.3d 1369 (“We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even if it is the only embodiment described,
absent clear disclaimer in the specification.”).
Turning to the Examiner’s application of Renz’s disclosure to claim
25, the Appellant contends that the “receiver” of claim 25 cannot read on
Renz’s refrigeration system as depicted in Figure 1 because it uses two
separate receivers, i.e., “LT” and “MT” rather than a single receiver. See
Appeal Br. 5; Reply Br. 2—3. The Appellant’s argument is not persuasive.
As discussed above, the broadest reasonable interpretation of claim 25
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Application 12/290,434
consistent with the underlying Specification does not preclude a refrigeration
system having two receivers. And, the Examiner relies only on one of the
receivers (i.e., “MT”) to correspond to the “receiver” of claim 25. Ans. 2—3.
We agree with the Examiner’s explanation that Renz’s refrigerator system,
despite having two receivers, corresponds to the claimed “receiver” and
adopt this explanation as our own. See id. at 2-4.
In the Reply Brief, the Appellant contends that Renz does not teach
the system of claim 25 because, as the Examiner’s annotations of Renz’s
Figure 1 (at page 4 of the Answer) show, “the alleged ‘first refrigeration
line’ is connected to a different receiver (LT) than that identified as the
claimed ‘receiver’ (MT) by the Examiner.” Reply Br. 3. The Appellant’s
contention is not persuasive. Claim 25 does not require the first refrigeration
line to connect directly to receiver MT. See, e.g., Innova/Pure Water, Inc. at
381 F.3d 1121—22. We agree with the Examiner’s explanation that Renz’s
receiver MT connects indirectly to the first refrigeration line and adopt this
explanation as our own. See Ans. 3^4.
The Appellant contends that Renz “does not teach or suggest a first
refrigeration line that allows the expansion device to receive refrigerant from
the receiver without passing through a pump.” Appeal Br. 6. The
Appellant’s contention is not persuasive. The pertinent part of claim 25
recites:
a pump positioned about the second refrigeration line in between
the first medium temperature evaporator and the receiver, such
that the expansion device positioned about the first refrigeration
line receives refrigerant from the receiver without passing
through the pump.
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Application 12/290,434
Appeal Br., Claims App. (emphases added). Here, the definite article “the”
in “the pump” has antecedent basis to the indefinite article “a” in “a pump.”
Accordingly, claim 25 does not require a first refrigeration line that allows
the expansion device to receive refrigerant from the receiver without passing
through a pump, i.e., any pump, as the Appellant contends. Rather, claim 25
requires a first refrigeration line that allows the expansion device to receive
refrigerant from the receiver without passing through the pump positioned
about the second refrigeration line in between the first medium temperature
evaporator and the receiver. See Ans. 4—6. We agree with the Examiner’s
explanation that the pump located in the identified second refrigeration line
of Renz corresponds with the claimed “pump” and adopt this explanation as
our own. See id.
Thus, we sustain the Examiner’s rejection of independent claim 25 as
anticipated by Renz. For the same reasons, we also sustain the Examiner’s
rejection of dependent claim 26, which is not argued separately.
DECISION
We summarily AFFIRM the Examiner’s decision rejecting claims 10
and 19-24.
We AFFIRM the Examiner’s decision rejecting claims 25 and 26.
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)(l)(iv).
AFFIRMED
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