Ex Parte Kamimura et al

Board of Patent Appeals and Interferences

Oct 12, 2010

10734948 (B.P.A.I. Oct. 12, 2010)

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.
10/734,948 12/11/2003 Ichiro Kamimura JCLA12519 1438
7590 10/12/2010
J.C. Patents
Suite 250
4 Venture
Irvine, CA 92618
EXAMINER
JULES, FRANTZ F
ART UNIT PAPER NUMBER
3784
MAIL DATE DELIVERY MODE
10/12/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ICHIRO KAMIMURA, NORIYUKI TSUDA, KENZO
MATSUMOTO, TORU KAWABATA, MASATO WATANABE,
TAKASHI YOSHIZAWA, HIROSHI MUKAIYAMA, and RYOKO KUBO
____________________

Appeal 2009-007132
Application 10/734,948
Technology Center 3700
____________________

Before JENNIFER D. BAHR, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007132
Application 10/734,948

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STATEMENT OF THE CASE
Ichiro Kamimura et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-8. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A non-azeotropic refrigerant mixture, comprising carbon
dioxide and at least one kind of combustible refrigerant, and
having a temperature glide, wherein the temperature glide
produces a first temperature range between a beginning
temperature and an intermediate temperature in an evaporation
process for use as a refrigeration area, and a second temperature
range from the intermediate temperature to an ending
temperature of the evaporation process for use as a cold storage
area.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Radermacher US 5,092,138 Mar. 3, 1992
Richard US 5,736,063 Apr. 7, 1998
Karl US 6,178,761 B1 Jan. 30, 2001
VanderWoude US 6,631,621 B2 Oct. 14, 2003

The following Examiner’s rejections are before us for review:
1. Claims 1-3 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Richard;
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Application 10/734,948

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2. Claims 4, 7/4, and 8/7/4 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Radermacher and Richard;
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karl and Richard;
4. Claims 7/5 and 8/7/5 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Karl, Richard, and Radermacher;
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karl, Richard, and VanderWoude; and
6. Claims 7/6 and 8/7/6 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Karl, Richard, VanderWoude, and Radermacher.

OPINION
The rejection of claims 1-3 as anticipated by Richard
Appellants argue claims 1-3 as a group. App. Br. 5-6; see also id. at 4
(Appellants stating that all of the claims on appeal stand or fall together as
one group). We select claim 1 as the representative claim, and claims 2 and
3 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
The Examiner found that Richard discloses the refrigerant
composition recited in Appellants’ claim 1, and that the composition
inherently has a temperature glide2 that can produce first and second
temperature ranges as called for in claim 1. Ans. 3. Appellants do not
dispute that Richard discloses the composition, but argue that “Richard does
not disclose how to make use of the temperature glide to produce the

2 “Temperature glide” refers to the temperature variation across refrigeration
equipment, such as a condenser or evaporator, for non-azeotropic mixtures,
as opposed to the single condensation or evaporation temperature of a single
component fluid. Richard, col. 1, l. 61 – col. 2, l. 9.
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Application 10/734,948

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‘storage [sic, refrigeration] area’ and the ‘cold storage area.’” App. Br. 5.
Appellants appear to contend that Richard’s disclosure of the composition
does not equate to a teaching of “a structural design” of a refrigerator based
on the temperature glide. Id. at 6. In particular, Appellants seem to argue
that a reference must disclose a specific arrangement of the refrigeration and
cold storage areas based on the temperature glide in order to anticipate. See
Reply Br. 2.
Appellants’ arguments are not commensurate with the scope of
claim 1. The Examiner is correct in interpreting claim 1 as calling for a
refrigerant composition having a temperature glide, not the use of that
refrigerant. See Ans. 8, 9. The claim does not require a refrigerator that
uses the refrigerant.
To the extent that Appellants argue that the “wherein” clause is a
functional limitation that distinguishes the claimed invention (see Reply Br.
2), we do not find this argument persuasive. The Examiner found that
Richard’s mixture is identical to Appellants’ composition and inherently
possesses the recited temperature glide characteristic. See Ans. 3, 10.
Where the Examiner has reason to believe that a functional limitation is an
inherent characteristic of the prior art, Appellants have the burden to show
that the prior art does not possess that characteristic. See In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210,
213 (CCPA 1971); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”). Appellants have not offered any persuasive
argument or evidence to show that Richard’s refrigerant mixture would not
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Application 10/734,948

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inherently possess a temperature glide that produces two temperature ranges
for use in a refrigeration area and a cold storage area, respectively.
We are not persuaded that the Examiner erred in finding that Richard
discloses the refrigerant mixture of Appellants’ claim 1. Accordingly, we
affirm the rejection of claim 1 and claims 2 and 3, which fall therewith, as
anticipated by Richard.

The obviousness rejections of claims 4-8
The Examiner rejected claims 4, 7/4, and 8/7/4 as being unpatentable
over Radermacher and Richard. Appellants argue these rejected claims as a
group. App. Br. 6-8. We select claim 4 as the representative claim, and
claims 7/4 and 8/7/4 stand or fall with claim 4.
Claim 4 recites a refrigerating cycle in which specific components are
connected by a refrigeration path through which the refrigerant mixture of
claim 1 is circulated. The Examiner found that Radermacher teaches the
recited refrigeration cycle and the use of a refrigeration mixture, but does not
disclosure the carbon dioxide refrigerant mixture of claim 1. Ans. 3-4. The
Examiner again relies on Richard for the disclosure of the claimed
refrigerant mixture. Id. at 4. Appellants argue that “Richard does not
disclose the temperature glide to produce ‘the refrigeration area’ and ‘the
cold storage area,’” and argue that Radermacher does not supply this
missing feature. App. Br. 7. Similar to the argument presented for the
above-discussed anticipation rejection, Appellants appear to argue that the
references do not teach or suggest that the refrigeration cycle is designed
based on the use of the temperature glide in the refrigeration area and the
cold storage area. See App. Br. 7; Reply Br. 3.
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While claim 4 does recite certain refrigeration components, including
“an evaporator” (which is the component that absorbs heat thereby cooling
the interior space, see Spec. 11:22-24), claim 4 does not require structures in
the form of a refrigeration area and a cold storage area. Those two areas are
mentioned in composition claim 1, but, as discussed above, Appellants have
not persuaded us that the refrigerant mixture of claim 1 is compositionally
different than that disclosed by Richard. Similarly, Appellants do not
explain what claimed feature structurally distinguishes Appellants’ claimed
cycle from the proposed combination of Radermacher’s refrigeration cycle
and Richard’s refrigerant. As such, we are not persuaded that the Examiner
erred in concluding that the subject matter of claim 4 would have been
obvious over Radermacher and Richard, and thus sustain the rejection of
claim 4 and of claims 7/4, and 8/7/4, which fall therewith.
The remaining rejections rest on the primary combination of Karl’s
refrigerating system and Richard’s refrigerant mixture. Ans. 4-7.
Appellants reiterate the argument regarding the purported shortcoming of
Richard’s composition disclosure and assert that Karl and the other cited
references do not supply the missing feature. App. Br. 8, 9, 11. Appellants
do not appear to contend that any structure recited in claims 5-8
distinguishes the claimed refrigerating cycles or devices over the Examiner’s
proposed combinations of references, or allege error in the Examiner’s
findings in this regard or rationale for combining the references’ teachings.
While we acknowledge that claim 7 requires two evaporators that can be
operated at different temperatures and thus could conceivably implicate
Appellants’ refrigeration area/cold storage area argument, we note that the
Examiner made the undisputed finding that Radermacher teaches two
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Application 10/734,948

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evaporators in series as recited in claim 7. See Ans. 5-6, 7; see also
Radermacher, col. 2, ll. 26-29 (two evaporators to maintain two separate
compartments at different temperatures). For the reasons discussed above,
Appellants’ arguments do not persuade us of error in the rejections of claims
5-8. Therefore, we sustain the rejection of: claim 5 as being unpatentable
over Karl and Richard; claims 7/5 and 8/7/5 as being unpatentable over Karl,
Richard, and Radermacher; claim 6 as being unpatentable over Karl,
Richard, and VanderWoude; and claims 7/6 and 8/7/6 as being unpatentable
over Karl, Richard, VanderWoude, and Radermacher.

DECISION
The decision of the Examiner to reject claims 1-8 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)(1)(iv) (2007).

AFFIRMED

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