Ex Parte BushDownload PDFBoard of Patent Appeals and InterferencesAug 29, 201212756406 (B.P.A.I. Aug. 29, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES WILLIAM BUSH ____________ Appeal 2012-011426 Application 12/756,406 Patent US 7,476,092 B1 Technology Center 3700 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James William Bush (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting reissue claims 4-6 and 8-10. This 1 Appellant identifies the real party in interest as Danfoss Scroll Technologies, which is “part of Danfoss Corporation.” App. Br. 1. Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 2 reissue application seeks to reissue U.S. Patent 7,476,092 B1, issued January 13, 2009, based on Application 11/850,047, filed September 5, 2007. Reissue claims 1-3 and 7 have been allowed. Final Office Action, dated October 21, 2011. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention relates to a scroll compressor. ‘092 patent, col. 1, l. 6. Claim 4, reproduced below, is representative of the subject matter on appeal. 4. A scroll compressor comprising: a first scroll member having a base and a generally spiral wrap extending from the base; a second scroll member having a base and generally spiral wrap extending from its base, said spiral wraps of said first and second scroll members interfitting to define compression chambers; said second scroll member having a boss extending from the base in an opposed direction relative to the generally spiral wrap, a driveshaft being driven to rotate by a motor about an axis, and said driveshaft having an eccentric pin extending upwardly into said boss, and a slider block positioned between said eccentric pin and said boss; and said eccentric pin and said slider block each having a generally flat surface in contact with each other to cause rotational movement of said rotating shaft to be transmitted to said second scroll member through said slider block, and said flat surface on one of said slider block and eccentric pin being formed to extend at an angle that is non-parallel to said axis, said generally flat surfaces on said eccentric pin and said slider Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 3 block having a resultant force on said slider block urging said slider block away from said second scroll member due to said flat surface on said one of slider block and said eccentric pin. Independent claim 8 is also directed to a scroll compressor and recites, in pertinent part: said eccentric pin and said slider block each having a generally flat surface in contact with each other to cause rotational movement of said rotating shaft to be transmitted to said second scroll member through said slider block, and at least one of the flat surfaces being angled such that any force between the two will urge the slider block away from the orbiting scroll member. THE REJECTIONS Appellant seeks review of the following rejections2: 1. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 251 as being improperly broadened in a reissue application made and sworn to by the assignee and not the patentee. 2. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. 3. Claims 4 and 8 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 The Examiner withdrew a rejection of claims 4-6 and 8-10 under 35 U.S.C. § 112, second paragraph. Ans. 8. Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 4 4. Claims 4-6 and 8-10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Elson (US 4,836,758; iss. Jun. 6, 1989). ISSUES The issues presented by this appeal are: Did the Examiner provide an adequate analysis in support of the rejection based on impermissible recapture? Is the subject matter of independent claims 4 and 8 that calls for the flat surface on the eccentric pin to extend at an angle adequately supported by the original disclosure? Is it inherent in the slider block and eccentric pin disclosed in Elson that the force created by their contact surfaces forces the slider block away from the second scroll? ANALYSIS Rejection (1) The Final Office Action dated October 21, 2011, from which this appeal is taken, included both an objection to a Reissue Application Declaration by the Inventor3 and a rejection of reissue claims 4-6 and 8-10 (“the broadened claims”) under 35 U.S.C. § 251 because the original Reissue Declaration was made by the Assignee instead of the Inventor. Final Office Action at 2-3. Appellant seeks review of the Examiner’s objection to the Reissue Application Declaration by the Inventor. App. Br. 4 3 Appellant filed a Reissue Application Declaration by the Assignee with the reissue application on April 8, 2010, and filed a subsequent Reissue Application Declaration by the Inventor on October 17, 2011. Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 5 (arguing that the reissue application declaration filed by the inventor is proper). The Examiner’s objection to the Reissue Application Declaration by the Inventor is reviewable by petition under 37 C.F.R. § 1.181 and is thus not within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971)) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also MPEP § 1002.02(c), 8th ed., rev. July 2008, Petitions and Requests Decided by the Technology Center Directors. Appellant presents no arguments in the Appeal Brief contesting the Examiner’s rejection (1) of claims 4-6 and 8-10 under 35 U.S.C. § 251. As such, we summarily sustain rejection (1) of claims 4-6 and 8-10. Rejection (2) Appellant argues that the rejection of claims 4-6 and 8-10 under 35 U.S.C. § 251 based on impermissible recapture should not be sustained because “the Examiner’s Answer . . . appears to take the position that once an amendment has been added to the claim, an applicant is not entitled to broaden back at all” in contradiction to In re Youman, 679 F.3d 1335 (Fed. Cir. 2012).4 Reply Br. 3. We agree. 4 We consider this argument raised for the first time in the Reply Brief because the Federal Circuit decided In re Youman after the filing of Appellant’s Appeal Brief. This fact satisfies the requirement for a showing of good cause as to why the argument was not raised in the Appeal Brief. Reply Br. 2. See Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed. Reg. 72,270, 72,298 (Nov. 22, 2011) (to be codified at 37 C.F.R. § 41.41(b)(2) (“Any argument raised in Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 6 The court in Youman stated that when a limitation added during prosecution of the original patent to overcome prior art has been broadened, but not eliminated, during reissue “[s]uch modification does not instantly implicate the recapture rule bar . . . ; rather, such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.” Youman, 679 F.3d at 1345 (citation omitted). The Examiner’s rejection appears to take the position that the language of reissue claims 4 and 8 broadens, but does not eliminate entirely, the limitation added to overcome the prior art during prosecution of the ‘092 patent. Final Office Action at 3-5. The Examiner’s rejection fails, however, to determine if the language of reissue claims 4 and 8 materially narrows the claims relative to the original claims such that surrendered subject matter is not entirely or substantially recaptured. Id. As such, we cannot sustain the Examiner’s rejection (2) of claims 4-6 and 8-10 under 35 U.S.C. § 251. Rejection (3) The Examiner determined that the subject matter in claims 4 and 8 that calls for the flat surface on the eccentric pin to extend at an angle is not supported by the original disclosure. Final Off. Act. 6. Upon review of the original disclosure and consideration of the knowledge of one of ordinary the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”) Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 7 skill in the art and the predictability of the art, we find that the original disclosure reasonably conveys to one skilled in the art that Appellant had possession of the subject matter of claims 4 and 8 at the time of filing. To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The claimed invention need not be recited in haec verba in the original specification to satisfy the written description requirement. Id. at 1352. [A] sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568-69 (Fed. Cir. 1997)). If the difference between members of the group is such that the person skilled in the art would not readily discern that other Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 8 members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus. Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004). The mechanical world, however, is “a fairly predictable field.” Id. at 1126. The original disclosure describes that in conventional scroll compressors, “with manufacturing tolerances, there are times when a barrel shape on the pin can interfit with an unintended angled surface on the slider block such that a total force from the interaction of the pin and the slider block includes a vertical or axial component directed toward the scroll pump set.” Original Spec. in Appl. 11/850,047, as filed on Sep. 5, 2007, at para . [0003]. See also Original Spec. at para. [0014] (describing, with reference to Fig. 3, that manufacturing tolerances could include the flat surface in the slider block being angled so that the contact force would cause the slider block to move upwardly toward the base of the orbiting scroll). The original disclosure describes an embodiment of a scroll compressor designed to solve this problem by angling a contact surface in the slider block “such that any force created between the eccentric pin and the slider block would include an axial component away from the pump set.” Original Spec. at para. [0004]. See also Original Spec. at para. [0015] (describing, with reference to Fig. 4, the flat surface of a slider block angled so that contact between the slider block and eccentric pin creates a vertical force that forces the slider block away from the orbiting scroll member). Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 9 One skilled in the art would understand from the original disclosure that Appellant had possession of an invention in which an angled surface is used to ensure that the contact between the eccentric pin and the slider block forces the slider block away from the orbiting scroll member. The mechanical field at issue in this appeal is a sufficiently predictable art that the disclosure of a species, i.e., placing the angled surface on the slider block, is sufficient disclosure of the genus, i.e., placing the angled surface on one or more of the flat surfaces of contact to achieve the desired resultant force. Further, as evidenced by Elson, the knowledge of one skilled in the art was such a skilled artisan would recognize that an angled surface can be formed on either of the slider block and the eccentric pin. App. Br. 9 (citing Elson, col. 2, l. 67 – col. 3, l. 1 (teaching that an inclined flat surface provided on the flat portion of a slider block could alternatively be provided on the flat portion of an eccentric pin to achieve the same result)). As such, we find that the disclosure in the original Specification of an angled flat surface on a slider block to achieve the desired resultant force from contact between the slider block and the eccentric pin is an adequate disclosure of a representative member of the genus so that one of skill in the art can recognize another member of the genus, i.e., the angled flat surface being on the eccentric pin. Therefore, the original disclosure is sufficient to convey to one skilled in the art that Appellant had possession of the subject matter of claims 4 and 8 at the time of filing. Accordingly, we cannot Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 10 sustain the rejection of claims 4 and 8 under 35 U.S.C. § 112, first paragraph. Rejection (4) The Examiner based the anticipation rejection of claims 4-6 and 8-10 on a finding that the force created by the contact surfaces between Elson’s slider block 42 and eccentric pin 24 inherently forces the slider block away from the second scroll 22. Ans. 10. We disagree with this finding. As noted by Appellant, the angles disclosed for Elson’s slider block 42 (Figure 5) and Elson’s eccentric pin 24 (Figure 8) would not result in a force that urges the slider block away from the second scroll 22. Reply Br. 3-4. Rather, the angles shown by Elson would result in a force that urges the slider block toward, rather than away from, the second scroll 22. As such, we cannot sustain the rejection of claims 4-6 and 8-10 under 35 U.S.C. § 102(b) as anticipated by Elson. CONCLUSIONS The Examiner did not provide an adequate analysis in support of the rejection based on impermissible recapture. The subject matter of independent claims 4 and 8 that calls for the flat surface on the eccentric pin to extend at an angle is adequately supported by the original disclosure. It is not inherent in the slider block and eccentric pin disclosed in Elson that the force created by their contact surfaces forces the slider block away from the second scroll. Appeal 2012-011426 Patent 7,476,092 B1 Application 12/756,406 11 DECISION We summarily AFFIRM rejection (1). We REVERSE rejections (2) through (4). 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). AFFIRMED msc Copy with citationCopy as parenthetical citation