Ex Parte Fujimoto et al

Patent Trial and Appeal Board

Feb 25, 2016

12166347 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/166,347 07/02/2008
21003 7590 02/29/2016
BAKER BOTTS L.L.P.
30 ROCKEFELLER PLAZA
44THFLOOR
NEW YORK, NY 10112-4498
FIRST NAMED INVENTOR
Hideki Fujimoto
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
072388.0740 3497
EXAMINER
KRAMER, DEVON C
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKI FUJIMOTO and HITOSHI NISHIMURA
Appeal2013-011013
Application 12/166,347
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hideki Fujimoto and Hitoshi Nishimura (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's Final decision rejecting claims 1-
15. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-011013
Application 12/166,347
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to an oil free screw compressor
capable of controlling the speed of a cooling fan. Spec. 2. Claim 1 is
representative of the claims on appeal and is reproduced below.
1. An oil free screw compressor comprising:
a compressor housing;
at least one compressor body having a pair of male and
female screw rotors which are rotatable in a noncontact and
nonlubricated manner provided in the compressor housing,
a gear casing provided in the compressor housing and
which defines in its lower part an oil sump and which
accommodates a first gear which is attached to one of the pair of
male and female screw rotors at one axial end thereof and a
second gear which is coupled with a drive shaft and meshed with
the first gear,
a first motor for providing power for driving the at least
one compressor body through the drive shaft, the second gear and
the first gear,
a compressed air discharge line provided in the
compressor housing for discharging compressed air from the at
least one compressor body,
a lubrication oil pipe line provided in the compressor
housing separately from the compressed air discharge line for
flowing lubrication oil from the oil sump to at least the first and
second gears,
an air cooling cooler for cooling lubrication oil for the
compressor flowing in the lubrication oil pipe line,
an air cooling cooler for cooling compressed air flowing
in the compressed air discharge line,
a cooling fan for feeding cooling air into the compressor
housing and the air cooling coolers,
a second motor for driving the cooling fan,
a first sensor for detecting a temperature of lubrication oil,
a second sensor for detecting a temperature of intake air,
a cooling fan controller including a storage portion storing
therein a set temperature of the lubrication oil and a set
temperature of the intake air, and a computing portion configured
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Appeal2013-011013
Application 12/166,347
to compute a control signal for controlling a power delivered to
the second motor for increasing the speed of the cooling fan if a
detected value of a temperature of the lubrication oil, delivered
from the first sensor, becomes higher than the set temperature of
the lubrication oil stored in the storage portion, and configured
to compute a control signal for controlling a power delivered to
the second motor for increasing the speed of the cooling fan if a
detected value of a temperature of the intake air, delivered from
the second sensor, becomes higher than the set temperature of
the intake air.
Claims App. 1-2.
REFERENCES RELIED ON BY THE EXAMINER
Martin us 5,362,207 Nov. 8, 1994
Douzono US 6,551,082 B2 Apr. 22, 2003
Takahashi US 6,679,689 B2 Jan.20,2004
Brocksopp US 6,695,047 B2 Feb.24,2004
Nakamura JP 2003-206864 July 25, 2003
THE REJECTIONS ON APPEAL
(I) Claims 1-3 and 7-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Douzono, Martin, and Nakamura.
(II) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Douzono, Martin, Nakamura, and Brocksopp.
(III) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Douzono, Martin, Nakamura, Brocksopp, and Takahashi.
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Appeal2013-011013
Application 12/166,347
ANALYSIS
Rejection(!)
The Examiner finds that Douzono discloses many of the features
recited in claim 1, but relies on Martin to teach the first and second sensors,
and further relies on Nakamura to teach a controller configured to control
the power delivered to a cooling fan in order to achieve a set temperature of
a fluid circuit. Final Act. 2---6; see also Ans. 5-9, and 19.
With respect to the functional language recited in claim 1 in relation
to the cooling fan controller, the Examiner finds that "Martin discloses a
controller ( 51) which is used for controlling the compressor and would
inherently be capable of being used to control the speed of the cooling fans
of Douzono" (Ans. 7), and "the controller of Martin would be capable of
being programmed and configured to control the speed of the cooling fans
and therefore to control the temperatures of the compressed air and
lubrication oil circuits of Douzono, to achieve a set temperature as taught by
Nakamura" (Ans. 18 (emphasis added)). In this regard, the Examiner states:
It is noted that the phrases "for detecting a temperature of
lubrication oil", "for detecting a temperature of intake air[,]"
"storing therein a set temperature of the intake air[,]" "configured
to compute a control signal for controlling a power delivered to
the second motor for increasing the speed of the cooling fan if a
detected value of a temperature of the lubrication oil, delivered
from the first sensor, becomes higher than the set temperature of
the lubrication oil stored in the storage portion, and for
computing a control signal for increasing the speed of the cooling
fan if a detected value of a temperature of the intake air, delivered
from the second sensor, becomes higher than the set temperature
of the intake air" are statements of intended use and/or function
and the structure of a device as taught by Douzono in view of
Martin, further in view of Nakamura is capable of performing the
same function as claimed.
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Appeal2013-011013
Application 12/166,347
Final Act. 6.
Appellants contend that the function recited in claim 1 in relation to
the controller "is not merely a statement of intended use and/or function but
defines the structure of the cooling fan controller." Br. 7. Addressing the
Examiner's statement as to the purported capability of the controller in
Martin, Appellants assert that "the 'capable of test requires the present
ability to perform the claimed function. With respect to a controller, the
'capable of test requires that the prior art structure be capable of performing
function without further programming." Br. 7 (citing Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011)). Appellants
argue that whether the controller(s) in Douzono, Martin, and Nakamura can
be further programmed to perform as required by claim 1 is irrelevant. Br.
8.
We do not agree with the Examiner's interpretation of claim 1
characterizing the functional language describing the controller as "intended
use." A controller, such as the one resulting from the Examiner's proposed
combination of Douzono, Martin, and Nakamura, that may be capable of
being modified to perform a particular function, is not the same as the
recited controller, which is capable of performing that function in its current
state. See Typhoon Touch Techs., Inc., 659 F.3d at 1380 (discussing High
Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551
(Fed. Cir. 1995)). When the functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in the prior art in order to meet
the claim limitation. Id. (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)).
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Appeal2013-011013
Application 12/166,347
Appellants' Figure 2 depicts cooling fan controller 31 including set
temperature storage portion 3 lA. Appellants' Specification describes
storage portion 31 A as storing a set point for the temperature of lubrication
oil and a set point for the temperature of the intake air. Spec. 11, 11. 7-25.
Appellants' Specification further describes computing portion 31 B
computing the control signals as recited in claim 1, without further
modification. Id. Accordingly, consistent with Appellants' Specification,
claim 1 requires the controller to perform the recited functions without
further programming.
The Examiner's failure to identify a controller structure in Douzono,
Martin, or Nakamura that is configured as required by claim 1, resulted from
the Examiner's determination that claim 1 is unpatentable over Douzono,
Martin, and Nakamura based on an erroneous claim interpretation (allowing
for the mere capability to be programmed). This erroneous claim
construction led to other errors as well. For example, the Examiner does not
address whether it would have been obvious to configure the prior art
controller to perform the specific functional language recited in claim 1
based on a correct claim construction. Accordingly, we do not sustain the
Examiner's rejection of claim 1 and claims 2, 3, and 7-15 depending
therefrom as unpatentable over Douzono, Martin, and Nakamura.
Rejections (II) and (III)
The Examiner does not rely on either of Brocksopp or Takahashi in
any way that would remedy the deficiencies in the rejection of claim 1 over
Douzono, Martin, and Nakamura. Accordingly, we do not sustain the
Examiner's decision to reject claims 4 and 5 as unpatentable over Douzono,
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Appeal2013-011013
Application 12/166,347
Martin, Nakamura, and Brocksopp, and to reject claim 6 as unpatentable
over Douzono, Martin, Nakamura, Brocksopp, and Takahashi.
DECISION
We reverse the Examiner's decision to reject claim 1-15.
REVERSED
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