Ex Parte Kasai et al

Patent Trial and Appeal Board

Sep 29, 2017

12439593 (P.T.A.B. Sep. 29, 2017)

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.
12/439,593 07/02/2009 Shigeo Kasai P21184US00 5359
38834 7590 10/03/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
FREAY, CHARLES GRANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEO KASAI, KOJINAKANO, KOJI TOYAMA,
MAKOTO HATTORI, and KAZUKINIWA
Appeal 2016-005363
Application 12/439,593
Technology Center 3700
Before ANNETTE R. REIMERS, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shigeo Kasai et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 112, first paragraph,
claims 1 and 3—5 for lack of written description1 and to reject under 35
U.S.C. § 103(a): (1) claim 1 as unpatentable over Baker (US 4,575,668, iss.
Mar. 11, 1986) and Beifus (US 4,358,730, iss. Nov. 9, 1982); and (2) claims
3—5 as unpatentable over Baker, Beifus, and Takemoto (US 2004/0197213
Al, pub. Oct. 7, 2004) as evidenced by Gritter (US 4,371,824, iss. Feb. 1,
1 This ground of rejection was presented as a New Ground of Rejection in the
Final Office Action. See Final Act. 2—3 (dated May 15, 2015).
Appeal 2016-005363
Application 12/439,593
1983). Claim 2 has been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an integrated electric
compressor constituting an on-vehicle air conditioner.” Spec. 1, Figs. 2, 3.2
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. An integrated electric compressor comprising:
a compressor constituting an air conditioner;
a motor driving the compressor;
a control board controlling the operation of the
motor; and
a housing accommodating the compressor, the
motor, and the control board, wherein the control board
comprises:
a switching element controlling the
application of a voltage to the motor from a power
source to rotationally drive the motor;
a control circuit controlling the operation of
the switching element; and
a snubber circuit which is provided between
the power source and the switching element to
reduce radio noise and consists of a resistor and a
capacitor, wherein the resistor and the capacitor
constituting the snubber circuit are surface
mounted on a first board, and
the snubber circuit is connected to
input/output terminals of the power source.3
2 Appellants’ Specification does not provide line or paragraph numbering,
and, accordingly, reference will only be made to the page number.
3 Appellants contend that the snubber circuit “is directly connected to
input/output terminals of the power source.” See Appeal Br. 6—7. Here, the
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Application 12/439,593
ANALYSIS
Written Description
Claims 1 and 3—5
The Examiner determines that the Specification as originally filed
“states that ‘a snubber circuit 21 comprising a resistor R and a capacitor C’
[and] claim 1 as originally filed on March 2, 2009 described the snubber
circuit as ‘comprises a resistor and capacitor.’” Ans. 5 (citing Original
Specification 7, filed Mar. 2, 2009);* * * 4 see also Final Act. 3.
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification, but the disclosure as
originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564, (Fed. Cir.
1991) (“[DJrawings alone may be sufficient to provide the ‘written
Examiner correctly points out that “the features upon which applicant relies
(i.e., the snubber circuit being directly connected to the input/output
terminals) are not recited in the rejected claim(s).” Ans. 4; see In re Self, 671
F.2d 1344,1348 (CCPA 1982) (Fimitations not appearing in the claims cannot
be relied upon for patentability); see also e.g., Ullstrand v. Coons, 147 F.2d
698, 700 (CCPA 1945) (The accepted definition of the term “connected” is
restricted to neither a direct nor an indirect connection, and it is therefore
applicable to an indirect connection.)
4 Appellants amended the Specification to disclose “a snubber circuit 21
consists of a resistor R and a capacitor C.” See Amendments to the
Specification filed Nov. 27, 2012. Appellants further amended claim 1 to
recite a snubber circuit which “consists of a resistor and a capacitor.” See
Amendments to the Claims filed May 7, 2012.
3
Appeal 2016-005363
Application 12/439,593
description of the invention’ required by § 112, first paragraph.”).
Appellants’ Specification discloses that, “[a]s shown in Figure 3, the
snubber circuit 21 is configured by surface mounting resistive elements 21r
constituting the resistor R and a capacitor element 21c constituting the
capacitor C on the power board 16.” Original Spec. 8 (emphasis added),
Fig. 3. We agree with Appellants that “[Figure] 2 of the present application
as originally filed clearly shows a snubber circuit 21 which consists of the
resistor R and the capacitor C.” Appeal Br. 9, Fig. 2; see In re Mraz, 455
F.2d 1069, 1072 (CCPA 1972) (“[TJhings patent drawings show clearly are
[not] to be disregarded.'’'’) (emphasis in original). Consequently, based on
Appellants’ original disclosure and figures, we agree that Appellants “had
possession of the claimed feature of a snubber circuit which . . . consists of a
resistor and a capacitor.” Appeal Br. 9 (emphasis omitted).
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 3—5 for lack of written description.
Obviousness over Baker and Beifus
Claim 1
Independent claim 1 is directed to an integrated electric compressor
including a snubber circuit “provided between the power source and the
switching element to reduce radio noise and consists of a resistor and a
capacitor” and “connected to input/output terminals of the power source.”
See Appeal Br. 10, Claims App. The Examiner finds that Baker discloses
the compressor substantially as claimed including, inter alia,
a snubber circuit (fig. 9:516) to reduce radio noise and
comprising of a resistor and a capacitor . . . wherein the resistor
and the capacitor constituting the snubber circuit are surface
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Appeal 2016-005363
Application 12/439,593
mounted on a first board..., and the snubber circuit is connected
to input/output (fig. 9: 54, 56) terminals of the power source.
Final Act. 4 (citing Baker 4:46—53, 65—68, 5:1—3, 19:25—68, 16:1—7, 20:1—
10).5 The Examiner finds that Baker fails to disclose “the configuration
wherein the snubber circuit is provided between the power source and the
switching element [and] the snubber circuit being connected to input/output
terminals of the power source.” Final Act. 5. The Examiner further finds
that:
Beifiis teaches a snubber circuit. . . consisting of only a resistor
(69) and a capacitor (71) wherein the snubber circuit is provided
between the power source (12) and switching element (triac 66)
[and] the snubber circuit is connected to both input and output
terminals of the power source.
Id. The Examiner concludes that it would have been obvious “to have
provided the snubber circuit of Beifus between the motor and the power
supply as taught by Petruska since the power supply line is the area where
greater noise is expected and by providing such configuration the noise is
further minimized.” Id.
As an initial matter, it is not clear for what the Examiner is relying on
Petruska.6 The rejection of claim 1 as set forth by the Examiner in the Final
Rejection cites only to Baker and Beifus. See Final Act. 3—5. In Warner, the
Court points out:
[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall
5 For examination purposes, the Examiner indicates that “[c]laim 1 will be
understood as a snubber circuit comprising a resistor and a capacitor as
originally claimed.” Final Act. 3.
6 We note that the Examiner cited the Patruska reference (US 2002/0118496
Al, iss. Aug. 29, 2002) on a Notice of References Cited (PTO-892) dated Oct.
9, 2013.
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Appeal 2016-005363
Application 12/439,593
be entitled to a patent unless,’ concerning novelty and
unobviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its
rejection of an application under sections 102 and 103.
In re Warner, 379 F.2d 1011,1016 (CCPA 1967). The Patent Trial and
Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94
USPQ2d 1072, 1075—77 (BPAI 2010) (precedential). For that review to be
meaningful it must be based on some concrete evidence in the record to
support the Examiner’s factual findings and legal conclusions. In re Zurko,
258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132, such as by identifying where or how each limitation of
the rejected claims is met by the prior art references. In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). It is neither our place, nor Appellants’ burden,
to speculate as to the basis for rejecting claims. In re Stepan Co., 660 F.3d
1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation to provide timely
notice to the applicant of all matters of fact and law asserted.). Here, we
limit our review to Baker and Beifiis, as set forth by the Examiner in the
rejection of claim 1. See Final Act. 3—5.
In the Answer, the Examiner clarifies that
[t]he rejection does not set forth that the snubber circuits of Baker
are to be replaced or modified. Rather, the rejection merely sets
forth that a snubber circuit such as Beifus’s snubber circuit could
be placed between the power source and the switch. The snubber
circuits which are part of the switch assembly in Baker would not
have to be replaced, moved or modified.
Ans. 3. Based on our understanding, the Examiner is proposing to maintain
the snubber circuit of Baker and to modify Baker by placing the snubber
circuit of Beifiis between the power source and the switch of Baker.
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Application 12/439,593
Appellants point out that the Examiner has identified “neither the
power source nor the switch of Baker” nor has the Examiner “provide[d] any
detail as to exactly where or how a snubber circuit such as Beifiis’s snubber
circuit could be placed between the power source and the switch of Baker.”
Reply Br. 2; see also Final Act. 3—5; Ans. 3—5. Appellants further point out
that “Baker already addresses the filtering issue at the power line 22 which
negates the Examiner’s rationale] of adding a snubber circuit [as taught by
Beifiis] to minimize noise at the power supply.” Reply Br. 2; see also id. at
3; Appeal Br. 5—6; Baker 7:50-64.
In this case, the Examiner fails to provide sufficient evidence or
technical reasoning to establish that “the power supply line is the area where
greater noise is expected” or to explain how adding the snubber circuit of
Beifiis to Baker’s compressor, which already has a snubber circuit and a
filtering scheme to address noise issues, results in “noise [being] further
minimized.” See Final Act. 5.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 1 as unpatentable over Baker and Beifiis.
Obviousness over Baker, Beifus, and Takemoto as evidenced by Gritter
Claims 3—5
The Examiner’s rejection of claims 3—5 is based on the same
unsupported findings in Baker and Beifiis. See Final Act. 6—8. Accordingly,
for reasons similar to those discussed above for claim 1, we do not sustain
the Examiner’s rejection of claims 3—5 as unpatentable over Baker, Beifiis,
and Takemoto, as evidenced by Gritter.
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Appeal 2016-005363
Application 12/439,593
DECISION
We REVERSE the decision of the Examiner to reject claims 1 and 3—
5 for lack of written description.
We REVERSE the decision of the Examiner to reject claim 1 as
unpatentable over Baker and Beifus.
We REVERSE the decision of the Examiner to reject claims 3—5 as
unpatentable over Baker, Beifus, and Takemoto, as evidenced by Gritter.
REVERSED
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