Ex Parte Herbert et al

Board of Patent Appeals and Interferences

Mar 25, 2010

10827466 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAY ANDREW HERBERT, JANET BRADY and
JOHN LLOYD JOEHNK
____________

Appeal 2009-003772
Application 10/827,466
Technology Center 3700
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Decided: March 25, 2010
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Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jay Andrew Herbert et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-19, 21, and 22. Appellants
canceled claim 20. We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claimed invention is to remotely storing and retrieving data from
a compressor. Spec. 1, para. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A sealed compressor assembly
comprising:
a compressor comprising a compressor
pump unit and a motor for driving said compressor
pump unit;
a housing enclosing said compressor pump
unit;
a receiver for receiving a first wireless
signal; and
a memory unit in communication with said
receiver, said memory unit for storing information
relating to said compressor, said receiver and said
memory unit mounted to said compressor.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Blotenberg US 6,269,299 B1 Jul. 31, 2001
Hahn US 2002/0127120 A1 Sep. 12, 2002

The Rejection
The following Examiner’s rejection is before us for review:
Claims 1-19, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hahn in view of Blotenberg.

Appeal 2009-003772
Application 10/827,466

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Contentions
Appellants do not contest the Examiner’s finding that Hahn discloses
a sealed compressor assembly having a compressor, including a compressor
pump and driving motor, and a housing enclosing the pump unit, as set forth
in claim 1. Additionally, Appellants do not contest the Examiner’s finding
that Hahn discloses a memory unit as required by claim 1.
Appellants contend that Blotenberg fails to teach mounting a receiver
to the compressor. According to Appellants, Blotenberg teaches a wireless
receiver that is located away from the compressor, and that the wireless
communication does not occur between a remote device and the compressor,
but between two programming devices. As such, according to Appellants,
Blotenberg fails to teach a wireless receiver mounted to a compressor as set
forth in claim 1. Appellants contend that the Examiner erred in finding
Hahn’s microprocessor is analogous to a receiver because Hahn’s
microprocessor receives signals from the sensors. Appellants contend the
Examiner erred in analogizing Hahn’s microprocessor with the wireless
receiver of Blotenberg. Appellants contend that any substitution of Hahn’s
microprocessor with Blotenberg’s wireless device would destroy Hahn,
change the principle operation of Hahn and Blotenberg, and prevent Hahn’s
microprocessor from following its intended purpose. App. Br. 4-5 and
Reply Br. 1-2.
Appellants do not separately argue claims 1-19, 21, and 22. As such,
claim 1 is representative. Claims 2-19, 21, and 22 will stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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SUMMARY OF DECISION
We AFFIRM.
OPINION
Issue
The issue before us is as follows:
Did the Examiner err in concluding that the claimed invention within
claim 1 is rendered obvious by the combined teachings of Hahn and
Blotenberg?
Pertinent Facts
1. Appellants’ Specification fails to provide a lexicographic definition of
the claim term “receiver.” Spec., passim.
2. Hahn discloses a control 26 that receives a number of signals on the
operation of the compressor via a number of sensors. Page 1, para.
[0016].
3. Hahn discloses that control 26 contains a microprocessor so that if one
of the monitored functions approaches a limit based on the signals
received from the sensors, then the control 26 will diagnose a fault
and actuate an appropriate action. In addition, control 26 can perform
a variety of analyses based on the signals received from the sensors.
Page 2, paras. [0018] – [0019].
4. Hahn discloses that control 26 can be embodied as control 64 that is
mounted to the compressor. Hahn discloses the control 64 features an
input jack 74 to permit access to the stored operational features that
were received from the signals sent by the sensors. Page 2, para.
[0025] and figure 2.
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5. Blotenberg discloses a control and regulating system 4 that can
control a compressor. The system 4 is connected to machinery 1 via
feedback lines 2 and control line 3. The feedback lines 2 transmit
measured values from the piece of machinery 1 to the control and
regulating system 4. The control line 3 transmits adjustment
commands from the control and regulating system 4 to the piece of
machinery 1, such as for driving a compressor 1.2. Col. 5, ll. 18-30.
6. Blotenberg discloses a programming line 6 that connects the control
and regulating system 4 to a first programming device 5. Col. 5, ll.
32-33.
7. Blotenberg discloses if the programming within the control and
regulating system 4 needs to be changed, the program is first changed
in programming device 5 and then transmitted into the memory 7 of
the control and regulating system 4 via programming line 6. Col. 5, ll.
35-40.
8. Blotenberg discloses that programming line 6 transmits the current
operating data of the piece of machinery 1 to the first programming
device 5. Col. 5, ll. 41-43.
9. Blotenberg discloses that a long-distance data line 13 connects the
first programming device 5 to a second programming device 10
located at a central location 14. Col. 5, ll. 47-50.
10. Blotenberg discloses that this long-distance data line 13 may be in
the form of a wireless connection. Col. 5, ll. 50-53.
11. Blotenberg discloses that the long-distance data line 13 coordinates
all control commands and displays between the two programming
units 5 and 10. Col. 5, ll. 54-56.
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12. Blotenberg discloses that the long-distance data line 13 permits
programming commands initiated at the second programming device
10 to be transmitted and received by the first programming device 5.
Col. 5, ll. 56-60.
13. Blotenberg discloses that first programming device 5 will process
those transmitted commands as if those commands had been entered
directly into first programming device 5. Col. 5, ll. 60-62.
14. Blotenberg discloses that if no programmer is at the vicinity of first
programming device 5, then first programming device 5 is reduced to
only being able to receive control commands from the second
programming device 10 and to implement such commands. Col. 6, ll.
6-16.
Analysis
Hahn’s control 26 receives signals. Fact 2. A person having ordinary
skill in the art would understand that a receiver is a device that receives
signals. As such, a person having ordinary skill in the art would consider
Hahn’s control 26 a receiver in the broadest reasonable sense. Appellants do
not provide a lexicographic definition of a receiver to counter this
presumption. Fact 1. While, Hahn mentions that control 26 also has
microprocessor functionality, this does not disparage the fact that Hahn’s
control 26 receives signals. Fact 3. Moreover, Appellants’ Specification
does not limit the receiver 18 as not having processing functionality, nor
does claim 1. Any receiver has to have some processing functionality
because the receiver needs to process the signals that are received into a
form that is understood by the other components that will receive the output
from the receiver and process the output accordingly. Moreover, Hahn’s
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control 26, when embodied as control 64, is mounted to the compressor and
has an input jack 74 to permit access to the stored information. Fact 4.
Accordingly, Appellants’ arguments that Hahn does not disclose a receiver
mounted to a compressor are unconvincing.
The difference between Hahn’s control 26 and the claimed receiver,
set forth in claim 1, is that Hahn’s control 26 does not receive signals
wirelessly. Blotenberg teaches controlling a piece of machinery such as a
compressor. Fact 5. Blotenberg teaches communication lines transmit
commands and operation status between the machinery 1, the control and
regulating system 4, and the programming devices 5 and 10, and permit
coordination of all control commands between these devices. Facts 6-9 and
11. Blotenberg explicitly teaches that one communication line can be
wireless. Fact 10. Blotenberg teaches that commands entered at
programming device 10 will be treated by the control and regulating system
4, as if entered at the programming device 5. Fact 13. Moreover,
Blotenberg teaches that all entry of commands could be performed at
programming device 10. Fact 14. Since Blotenberg explicitly teaches that
the communication line 13 connects programming device 10 to the location
where the machinery 1 is located, then Blotenberg teaches wirelessly
sending commands from a central site 14 to a remote site. As such,
Blotenberg teaches receiving wireless signals at the location of the
machinery. In order receive such signals, a receiver capable of receiving
such signals would have to be located in the same vicinity as the machinery
1. Therefore, Blotenberg teaches a receiver for receiving wireless signals as
set forth in claim 1.
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Application 10/827,466

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In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent might be determined to be obvious. One of
these circumstances is when a claim is directed to a structure already known
in the prior art that has been altered by the mere substitution of one element
for another element known in the field, and where the combination claim
does no more than yield a predictable result. Id. at 416.
Substituting the wireless capability based on the teachings of
Blotenberg for the input jack 74 could have been reasonably predicted to
yield the result of permitting Hahn’s control 64 to receive a wireless signal
to initiate the retrieval of the stored information in control 64 instead of
requiring access to the input jack 74. Likewise, such a substitution would
permit Hahn’s control 64 to receive commands wirelessly as taught by
Blotenberg.

CONCLUSION
In view of the foregoing reasons, Appellants’ contentions are
unconvincing to demonstrate that the Examiner erred in concluding that the
combined teachings of Hahn and Blotenberg render obvious the claimed
subject matter set forth in claim 1. Claims 2-19, 21, and 22 fall with claim
1.
DECISION
The Examiner’s decision to reject claims 1-19, 21, and 22 as obvious
over Hahn and Blotenberg is affirmed.
Appeal 2009-003772
Application 10/827,466

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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) (2007).
AFFIRMED

Klh

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