Ex Parte Hahn

Patent Trial and Appeal Board

May 20, 2016

13004911 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/004,911 01112/2011
26096 7590 05/24/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Gregory W. Hahn
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.
60298-639US1; ST 357 1475
EXAMINER
PLAKKOOTTAM, DOMINICK L
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY W. HAHN
Appeal2014-003331 1
Application 13/004,911 2
Technology Center 3700
Before HUBERT C. LORIN, BRUCE T. WIEDER, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 and 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Aug. 5, 2013), the Reply Brief ("Reply Br.," filed Jan. 7, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 7, 2013), the Final Office Action
("Final Act.," mailed Mar. 19, 2013), and the Specification ("Spec.," filed
Jan. 12, 2011).
2 According to the Appellant, the real party in interest is Danfoss Scroll
Technologies LLC. Appeal Br. 1.
Appeal2014-003331
Application 13/004,911
STATEMENT OF THE CASE
The Appellant's invention is directed to "the use of motor current in a
compressor to estimate a discharge pressure." Spec. ,-r 1.
Claim 1 is the only independent claim on appeal, is exemplary of the
subject matter on appeal, and is reproduced below:
1. A compressor comprising:
a controller provided with current information for a
current passing into a motor associated with said compressor,
said compressor including a compressor pump unit driven by
said motor, and a discharge line;
said controller being programmed to utilize said current
information to predict a discharge pressure at the discharge of the
compressor; and
said controller also taking in information from a location
remote from said compressor and utilizing said information to
calculate an alternative discharge pressure estimate, and said
alternative discharge pressure estimate being compared to said
discharge pressure estimate based upon current, and an
indication of a potential problem being made should said two
pressures differ by more than a predetermined amount.
Appeal Br. 5, Claims App.
REJECTIONS3
Claims 1 and 6 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 2.
3 The Examiner indicates the rejections are new grounds, but based on the
rejection of canceled claim 4, the limitations of which have been
incorporated into independent claim 1. Ans. 2. The Appellant has chosen to
maintain the appeal and has addressed the new grounds. See Reply Br. 2;
Appeal Br. 3; see also 37 C.F.R. § 41.39(b).
2
Appeal2014-003331
Application 13/004,911
Claims 1and6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saito (US 2009/0041598 Al, pub. Feb. 12, 2009),
Shibamoto (US 6,607,367 Bl, iss. Aug. 19, 2003), and Bloms (US
2005/0051119 Al, pub. Mar. 10, 2005). Ans. 3.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 4
ANALYSIS
35 u.s.c. § 112
The Examiner finds claim 1, and claim 6 based on its dependence
from claim 1, indefinite and failing to comply with the requirement of
35 U.S.C. § 112, second paragraph, of particularly pointing out and distinctly
claiming the subject matter, because it is "unclear what specific information
is used to calculate [the] alternative discharge pressure. Claim l makes no
reference to the exact information used to ascertain the alternative pressure
estimate." Ans. 2. Particularly, the Examiner finds that "it is unclear
whether the Appellant wishes to claim both direct and non-direct methods of
calculating an alternative discharge pressure [and] without a disclosure of
what specific information is used to calculate the discharge pressure, this
limitation is unclear and not merely broad." Id. at 7.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-003331
Application 13/004,911
The Appellant contends the rejection is in error because "[t]he claim
is merely broad and not indefinite even if it is 'unclear where exactly this
information is gathered from.'" Appeal Br. 2. The Appellant argues that
one of ordinary skill in the art, based on the Specification, "would know one
set of specific steps" and "would recognize that there are potentially other
methods ... which could provide the information." Id.
The Specification provides that "the controller is also estimating a
discharge pressure PDT, or one based upon the temperature information from
the condenser temperature sensor 26. These can be compared." Spec. ,-r 18.
We agree with the Appellant that the claim is broad (see Appeal
Br. 2), but "[b]readth is not indefiniteness." See In re Gardner, 427 F.2d
786, 788 (1970). One of ordinary skill in the art would be able to ascertain
the subject matter which the Appellant regards as the invention.
Therefore, we do not sustain the rejection of claims 1 and 6 under 3 5
U.S.C. § 112, second paragraph.
35 u.s.c. § 103
The Appellant argues claims 1 and 6 as a group. See Appeal Br. 2.
We select independent claim 1 as representative, and dependent claim 6
stands or falls with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2014).
We have reviewed the Appellant's contention that the Examiner has
erred in the rejection of claim 1, as well as the arguments presented in the
Appeal and Reply Briefs. See Appeal Br. 2-3, Reply Br. 2. We do not
agree with the contention and find the arguments unpersuasive.
For example, the Appellant's argument that Saito's "utilizing motor
torque in combination with a compressor suction pressure" does not disclose
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Appeal2014-003331
Application 13/004,911
"utilizing the current sent to a motor to predict a pressure, with the pressure
then being utilized by a controller to control a refrigerant system" (Appeal
Br. 2-3), is unpersuasive at least because it is not commensurate with the
scope of the claim. Claim 1 does not recite the controller utilizing the
pressure "to control a refrigeration system." Rather, claim 1 recites the
controller taking in information, utilizing the information to calculate an
alternative discharge pressure, comparing the alternative discharge pressure
to the discharge pressure estimate based on the current, and making an
indication of a potential problem. Claims App. The Appellant's argument is
also unpersuasive because it is an argument against the reference Saito
individually when the Examiner relies on the combination of Saito,
Shibamoto, and Bloms to disclose claim 1. The test for obviousness is not
what any one reference would have suggested, but rather what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). "[O]ne cannot
show non-obviousness by attacking references individually were, as here,
the rejections are based on combinations of the references." Id.
Regardless, the Appellant does not provide sufficient evidence or
technical reasoning to rebut the Examiner's finding that Saito discloses a
controller being provided with current information and being programmed to
utilize the current information to predict a discharge pressure. See Ans. 3--4.
The Appellant summarily concludes that Saito does not utilize the current
sent to the motor to predict a pressure (Appeal Br. 2), but has not identified
error in the Examiner's findings that Saito discloses a compressor
comprising a controller provided with phase current information and being
programmed to utilize the current information to predict a compressor
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Appeal2014-003331
Application 13/004,911
discharge pressure based on motor torque and estimated suction pressure.
See Ans. 3--4 (citing Saito i-f 9).
The Appellant's argument that Bl oms' s comparison of "an actual
sensed pressure to a predicted pressure" is not the same as "two distinct
predicted discharge pressures are compared" as required by claim 1 (Appeal
Br. 3) is not persuasive at least because it is not commensurate with the
scope of the claim. Claim 1 does not require that "one [] develop two non-
sensed ways of identifying a pressure that could then be compared" (See
Reply Br. 2), i.e., claim 1 does not recite that the predicted and calculated
discharge pressures must be "non-sensed." The Appellant's argument that
Bloms teaches a check in a sensed pressure and does not teach comparing
two signals to identify a failure in one of the signals (Reply Br. 2) is not
persuasive. Bloms discloses at paragraph 64:
controller 100 may monitor the pressure within cylinder 22 as a
function of the crankshaft 27 angle and/or piston 24 position[,]
may also determine an estimated cylinder pressure as a fi.1nction
of piston position for the current engine operating conditions,
[and] may compare the monitored cylinder pressure to the
predicted cylinder pressure at different piston positions. A
significant difference between the predicted cylinder pressure
and the monitored cylinder pressure many indicate that valve
actuator 70 is not functioning properly.
Thus, the Examiner's finding that Bl oms discloses "a controller that is
capable of comparing two different pressures to determine if there is a
problem in the system if the difference between the two pressures exceeds a
significant predetermined value" (Ans. 5) is reasonable and adequately
supported.
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Application 13/004,911
We further find unpersuasive the Appellant's arguments that Saito,
Shibamoto, and Bloms cannot be properly combined because there are no
clear reasons to do so. See Appeal Br. 3; see also Reply Br. 2. The
Examiner finds Saito discloses a compressor comprising a controller
provided with current information and being programmed to utilize the
current information or predict a discharge pressure. See Ans. 3--4. The
Examiner further finds Saito does not disclose the controller taking in
information from a remote location to predict an alternate discharge pressure
(see id. at 4), and relies on Shibamoto for disclosing a controller utilizing
data from sensors remotely located from the compressor to predict or
calculate a discharge pressure. Id. The Examiner reasons it would be
obvious to modify Saito' s controller to use data from remote sensors to
predict an alternate discharge pressure "in order to provide a failsafe backup
mechanism to detect discharge pressures in the event that Saito' s method of
predicting discharge pressures fails." Id. The Examiner also finds Saito
does not disclose comparing the two discharge pressure estimates to
determine if there is a potential problem (id. at 4--5), and, as discussed
above, relies on Bloms for disclosing this feature. See id. at 5. The
Examiner reasons it would be obvious to improve Saito' s controller "by
adding pressure comparison logic, similar to the logic taught by Bloms, in
order to compare the predicted discharge pressures (as predicted by Saito' s
method and Shibamoto' s method) to determine if there is an impending
problem in the compressor or refrigerant circuit." Ans. 5 (citing Bl oms
ii 64).
Thus, the Examiner has established a prima facie case of obviousness
as the Examiner has provided articulated reasoning with rational
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Appeal2014-003331
Application 13/004,911
underpinning to support a legal conclusion of obviousness. See KSR Int' I
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellant does not provide adequate evidence or technical
reasoning why the Examiner's stated reasons for combining are in error.
The Appellant argues that "there is absolutely no reason to modify Saito
with Shibamoto[], and further Bloms" because, as Saito calculates a
discharge pressure, "[ t ]here would be no reason to come up with an
alternative way to predict a pressure, and thus Shibamoto []would provide
no function or benefit into Saito." Appeal Br. 3. The Appellant further
argues that the Examiner's reliance on Bloms for comparing two discharge
pressures "shows the failure of the Shibamoto [] modification" because it is
not clear the benefit Shibamoto would add into Saito "if it requires an
additional check." Id. However, as noted above, the Examiner finds that the
benefit to combining Shibamoto' s alternate way to predict pressure would be
to "provide a failsafe backup" of detecting discharge pressures (Ans. 4), and
the benefit of Bloms's comparison of two pressure would be to "determine if
there is an impending problem in the compressor" (id. at 5). The
Appellant's arguments do not persuasively rebut or find error in the
Examiner's reasons for combining.
Thus, we sustain the Examiner's rejection of independent claim 1, and
also dependent claim 6, under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1 and 6 under 35 U.S.C. § 112,
second paragraph, is REVERSED
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Appeal2014-003331
Application 13/004,911
The Examiner's rejection of claims 1 and 6 under 35 U.S.C. § 103(a)
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)(l )(iv).
AFFIRMED
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