Ex Parte Kasai et alDownload PDFPatent Trial and Appeal BoardSep 29, 201712439593 (P.T.A.B. Sep. 29, 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. 12/439,593 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 2 Appeal 2016-005363 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 4 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. 5 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. 6 Appeal 2016-005363 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. 7 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 8 Copy with citationCopy as parenthetical citation