Ex Parte Galante et alDownload PDFPatent Trial and Appeal BoardJul 17, 201712691887 (P.T.A.B. Jul. 17, 2017) Copy Citation 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. 12/691,887 01/22/2010 Francesco Galante 507116 1679 53609 7590 07/19/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER COMINGS, DANIEL C ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 07/19/2017 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCESCO GALANTE and RICHARD G. KOBOR Appeal 2015-003838 Application 12/691,887 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Bitzer Kuhlmaschinenbau GmbH. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated March 27, 2014 (“Final Act.”), as supplemented by the Advisory Action dated June 11, 2014. Appeal 2015-003838 Application 12/691,887 CLAIMED SUBJECT MATTER Claims 1 and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A compressor arrangement comprising: a plurality of refrigerant compressors connected in parallel circuit, each refrigerant compressor having a volume index and having a housing which houses each refrigerant compressor exclusively of the other ones of the plurality of refrigerant compressors, the plurality of refrigerant compressors including at least one first compressor and at least one second compressor each first compressor having a different volume index than each second compressor. REJECTIONS I. Claims 1-15, 17-21, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lifson (US 7,178,352 B2; issued Feb. 20, 2007) and Okamoto (US 2008/0163642 Al; published July 10, 2008). II. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lifson, Okamoto, and Duppert (US 2009/0185929 Al; published July 23, 2009). III. Claims 22-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lifson, Okamoto, and Hitosugi (US 5,170,636; issued Dec. 15, 1992). IV. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lifson, Okamoto, and Pierson (US 6,769,258 B2; issued Aug. 3, 2004). 2 Appeal 2015-003838 Application 12/691,887 ANALYSIS Rejection I Appellants argue the claims subject to this ground of rejection as a group. Appeal Br. 5-8. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). Claims 2-15, 17-21, 28, and 29 stand or fall with claim 1. Regarding independent claim 1, the Examiner finds, inter alia, that Lifson teaches a compressor arrangement comprising a plurality of refrigerant compressors, “including at least one first compressor (between rotors 26 and 27) and at least one second compressor (between rotors 27 and 28), each first compressor having a different volume index than each second compressor.” Final Act. 3 (citing Lifson 2:44-51). The Examiner determines that Lifson does not teach that “each of the compressors hav[e] a casing exclusively containing that compressor and none of the others of the plurality.” Id. at 4. The Examiner relies on Okamoto for teaching “a refrigeration system having a plurality of compressors (32 and 42) each of which is housed separately from the other within a respective expansion and compression machine (40 and 40, respectively).” Id. (citing Okamoto, Fig. 1). The Examiner reasons that it would have been obvious to modify the system of Lifson with the fully separated compressors of Okamoto in order to allow the selective use of one, the other or both compressors in order to more efficiently meet the cooling demand faced by the system without consuming excess energy to provide surplus cooling capacity. Id. First, Appellants argue that the Examiner’s proposed modification to separate Lifson’s enmeshed rotors, such that the compressors are housed 3 Appeal 2015-003838 Application 12/691,887 separately one from the other, would impermissibly (or fundamentally) change the principle of operation of Lifson. See Appeal Br. 5-7. In support, Appellants submit that Lifson “teaches a compressor 20 that utilizes multiple rotors 26, 27, 28 to define multiple compression paths within a single housing 22,” and further, that “such a configuration allows ‘one compressor and associated hardware to replace two’ . . . [and] ‘causes certain direct efficiencies and indirect efficiencies.’” Appeal Br. 6 (citing Lifson 4:6-22). Appellants also submit that “Okamoto describes these compressors as operating with a single compression path,” and “[a]s such, the system in Okamoto is in opposition to the Lifson design.” Id. In other words, the Examiner’s proposal to separate Lifson’s compressors (between rotors 26, 27, 28) into exclusive housings would cause Lifson’s compressor to no longer operate with multiple compression paths within a single housing, thereby, destroying the principle of operation of Lifson’s compressor arrangement. The Examiner responds that [Lifson’s] core concept... is the driving arrangement wherein a single shaft (connecting to the central rotor of the figures of Lifson) is used to supply power to two parallel, independent expansion paths. The number of housings these paths reside in is wholly incidental and not the “principle of operation” of Lifson .... One of ordinary skill in the art would have recognized the possibility of splitting the flow paths between multiple housings while maintaining the central premise of the system of Lifson {such as by allowing one rotor in each housing to be powered by a common shaft or synchronized by an automatic control system and thus made analogous to the central rotor of Lifson) and that such arrangements would not in any substantial way “change the principle of operation of Lifson” .... 4 Appeal 2015-003838 Application 12/691,887 Ans. 16 (emphasis added). The Examiner determines that “[i]n practice, in pursuing the advantage of versatility, providing a plurality of casings for the individual flow paths would provide an advantage by allowing for different configurations of the system in installation rather than removing the benefit,” as argued by Appellants. Id. at 17. Appellants reply that the Examiner’s characterization of the principle of operation of Lifson “ignores Lifson’s specific recognition that its system having effectively multiple compressors condensed into a single compressor housing functionally allows ‘one compressor and associated hardware to replace two.’” Reply Br. 6. Appellants also argue that “the Examiner’s position of ‘splitting the flow paths between multiple housings’ would render Lifson unsatisfactory for its intended purpose of allowing a single compressor to replace multiple compressors.” Id. (citing MPEP § 2143.01(V) (“[i]f [a] proposed modification would render the prior art [] unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification, [and thus such a modification is not obvious].” (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). Appellants further argue that there is no teaching or evidence cited for the additional componentry of [the Examiner’s proposed] exterior common shaft and its required associated linkages to connect it with each separate compressor. Further, there is no teaching or evidence cited for the additional componentry of this “automatic control system’ cited by the Examiner. In other words,. .. the Examiner has also erred in relying upon pure conjecture as to the other necessary components believed to be needed to support the conclusion of obviousness. Reply Br. 6. 5 Appeal 2015-003838 Application 12/691,887 The principle of operation of Lifson is to provide a compressor (i.e., a compressor with three rotors) with first and second compression paths having at least partial independence of their inlet or outlet ports to allow the paths to be at different pressures, wherein separate circuits in a refrigeration or air conditioning system may be associated each path. Lifson, Abstract. An advantage of Lifson’s compressor is to “allow one compressor and associated hardware to replace two,” resulting in “certain direct efficiencies and indirect efficiencies (e.g., associating a larger number of uses with a given basic compressor configuration).” Lifson 4:18-22. As set forth supra, the Examiner’s proposed modification is to modify Lifson to accommodate the first and second compression paths (between rotors 26, 27, 28) in separate housings (for example, in separate compressors 32, 42, as taught by Okamoto), rather than within the housing of a single compressor as disclosed by Lifson. See, e.g., Okamoto, Fig. 1; Lifson, Fig. 1. As set forth supra, the Examiner’s rationale for such modification is to make the system more versatile.3 We determine that Fifson’s disclosure of replacing two compressors with one compressor acknowledges that it was generally known to one skilled in the art to use two compressors within a refrigeration circuit. Indeed, Okamoto similarly discloses a compressor arrangement having two 3 We disagree with the Examiner that the principle of operation of Fifson is more narrowly a common drive (i.e., drive 26) for two, parallel, independent paths, although this is the preferred embodiment disclosed in Fifson. Moreover, in view of the Examiner’s identification of a common drive as Fifson’s principle of operation, the Examiner’s rationale, namely, to allow selective use of either one or both compressors, would appear to lack rationale underpinning. 6 Appeal 2015-003838 Application 12/691,887 refrigerant compressors connected in a parallel circuit, albeit within fluid machines also including expanders 31, 41. See Okamoto, Fig. 1. Moreover, Lifson discloses generally that “[a] compressor may be designed and sized for its intended use []e.g., to provide a given compression or volume index” (Lifson 1:53-55), and more specifically, that it is desirable to have different volume indices for flow paths within a compressor, and therefore, along circuit/flow paths, within the refrigeration circuit (see id. at Abstract, 2:42— 53, 4:6-8). Similarly, Okamoto discloses a plurality of separately housed fluid machines 30, 40 arranged in parallel within a refrigerant circuit, each including a compressor 32, 42, wherein fluid machines 30, 40 have different volume ratios. See Okamoto 29, 31, Fig. 1. Okamoto expressly discloses that “by controlling the volume of each of the compressors (32, 42), it becomes possible to expand the range of control of the overall compressor volume in the refrigeration apparatus (i.e., the capability range of the refrigeration apparatus).” Id. ^ 29. In view of these teachings of Lifson and Okamoto, we are not persuaded that the Examiner erred by determining that the subject matter of claim 1, as stated supra, would have been obvious to one skilled in the art at the time of Appellants’ invention. In other words, we agree with the Examiner that it would have been obvious to return to a compressor arrangement (in lieu of Lifson’s improvement), which has at least two, separate compressors, each with a volume index and housing, as acknowledged by Lifson, and also to design the compressors to each have a different volume index, in view of Lifson’s disclosure of the desirability of having two flow paths within a compressor with different volume indices, or 7 Appeal 2015-003838 Application 12/691,887 as also taught by Okamoto within the context of a fluid machine having a compressor and expander. Regarding Appellants’ argument that Lifson teaches away from the Examiner’s proposed modification because “Lifson specifically teaches that its system, with a single housing and multiple compression paths, provides direct and indirect efficiencies and allows one compressor to replace two,” or that one would be led in a path which is divergent from that taken by Appellants after reading Lifson and its teachings of a single housing with multiple compression paths, we disagree. Appeal Br. 7. Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 L.3d 1195, 1201 (Led. Cir. 2004). Appellants have not provided evidence that Lifson criticizes, discredits, or otherwise discourages the alternative solution of using two separate compressors (as compared to two separate fluid paths in separate housings), each having a different volume index, to provide certain efficiencies within the system, but rather, as discussed supra, Lifson suggests it, while offering an improvement (i.e., a single compressor that performs the same function). Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2-15, 17-21, 28, and 29 fall therewith. Rejections II IV Appellants chose not to present separate arguments for the patentability of dependent claims 16 and 22-27. Appeal Br. 8-9. Accordingly, for the reasons stated supra, we also sustain the Examiner’s rejection of claims 16 and 22-27. 8 Appeal 2015-003838 Application 12/691,887 DECISION The Examiner’s rejection of claims 1-29 is affirmed. 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). AFFFIRMED 9 Copy with citationCopy as parenthetical citation