Ex Parte Kawabata et al

Patent Trial and Appeal Board

Mar 17, 2016

10586173 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/586,173 07/17/2006 Hirotaka Kawabata
52473 7590 03/21/2016
RATNERPRESTIA
P.O. BOX980
VALLEY FORGE, PA 19482-0980
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.
MAT-8856US 2828
EXAMINER
BOBISH, CHRISTOPHER S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
03/21/2016 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):
ptocorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROTAKA KAWABATA, HIRONARI AKASHI,
and KAZUHIRO YOKOTA
Appeal2014-001220
Application 10/586, 173 1
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL W. KIM, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3-9. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants submit the real party in interest is Panasonic Corporation.
Appeal Br. 2.
Appeal2014-001220
Application 10/586, 173
THE CLAIMED SUBJECT MATTER
Claim 1, the only independent claim, is representative of the claimed
subject matter.
1. A refrigerant compressor, comprising:
a hermetic container which internally stores a blended oil formed
of a plurality of component oils and also accommodates a
compression mechanism for compressing refrigerant gas,
wherein the blended oil ranges from a viscosity grade not lower
than ISO VG3 to a viscosity grade not higher than ISO VG8, and
a first component oil includes a first characteristic having a
boiling point at 3 50°C or over which is not less than 10% and not
higher than 30% in volume ratio, and a second component oil
includes a characteristic having a boiling point at 300°C or less
which is not less than 50% and not higher than 70% in volume ratio.
REJECTIONS
1) Claims 1, 3 and 5 are rejected under 3 5 U.S. C. § 103 (a) as being
unpatentable over Kwon (US 7,404,701 B2, iss. July 29, 2008) in
view of Ponsford (US 5,799,626, iss. Sept. 1, 1998) and Kim (US
4,101,414, iss. July 18, 1978). 5/2/2013 Non-Final Act. 3.
2) Claim 4 is rejected under 35 U.S.C §103(a) as unpatentable over
Kwon in view of Ponsford, Kim, and Seiki (US 5,108,634, iss.
Apr. 28, 1992). Id. 5.
3) Claim 6 is rejected under 35 U.S.C § 103(a) over Kwon in view of
Ponsford, Kim, and Nagai (US 6,054,224, iss. Apr. 25, 2000).
Id. 5.
4) Claim 7 is rejected under 35 U.S.C §103(a) as being unpatentable
over Kwon in view of Ponsford, Kim, Nagai, and Egawa (US
2006/0166844 Al, pub. July 27, 2006). Id. 6.
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Appeal2014-001220
Application 10/586, 173
5) Claim 8 is rejected under 35 U.S.C §103(a) as being unpatentable
over Kwon in view of Ponsford, Kim, Nagai, and Hannibal (US
4,252,506, iss. Feb. 24, 1981 ). Id. 8.
6) Claim 9 is rejected under 35 U.S.C § 103(a) as being unpatentable
over Kwon in view of Ponsford, Kim, Nagai, and Yamazaki (US
6,940,204 B2, iss. Sept. 6, 2005). Id. 9.
DISCUSSION
Unpatentability of Claims 1, 3 and 5 over Kwon in view of
Ponsford and Kim
The present dispute is centered on the recited component oils
constituting the blended oil of the claimed refrigerant compressor. The
Examiner found that although "Kwon does not teach that the oil is a blended
oil," nonetheless, Ponsford discloses:
a blended oil consisting of multiple components; a first component oil
having a boiling point at 350 degrees Celsius or more (portion 5-from
Table 1 ), and a second component having a boiling point of 300
degrees Celsius or less (portion 4 from Table 1 ); the specific ratios of
the component oils are not explicitly taught, however Ponsford does
teach that any ratio can be chosen to constitute a blended oil (C. 6 Lines
50-65); the viscosity of the oil is not specifically disclosed, rather it is
compared to existing light oils, i.e. diesel (C. 5 Lines 24-30); existing
diesels are known to be within a viscosity range of VG3 -VG8 (Kim is
cited as a teaching reference, C. 4 Lines 16-19 disclose a viscosity of
50-56 SSU at 100 degrees Fahrenheit which converts to below VG8)
Non-Final Act. 3--4 (emphasis added).
Appellants direct us to the Examiner's statement that Ponsford does
not teach specific ratios and then argue that the Examiner did not provide
"reasoning with a rational underpinning ... as to why a person of ordinary
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Application 10/586, 173
skill in the art ... would have modified the blend of oils in Ponsford" to
include a first and second component with the boiling points and volume
ratios recited in claim 1. Id. at 6. We agree.
The Examiner has not referred us to a disclosure in Ponsford, or any
other prior art reference, of specific volume ratios and boiling points of the
components of any blended oil that are recited in independent claim 1.
Ponsford discloses the creation of "styrene oil" from the "decomposition of
polystyrene that depolymerizes substantially all of the polystyrene to
liquids." Ponsford, col. 4, 11. 24--28. Ponsford further discloses the physical
and chemical characteristics of the fractions of "styrene oil" resulting from
the depolymerization process. Id. at col. 5, 1. 23 et seq. Ponsford then sets
forth a generic definition of styrene oil as including "any mixture ratios." Id.
at col. 6, 1. 65. The Examiner relies on this generic definition of "styrene
oil" for disclosure of the specific ratios of the blended oil in claim 1. Non-
Final Act. 3--4.
Appellants assert that the specific volume ratios and boiling points in
claim 1 are effective in preventing the deposit of PET on working surfaces
of the compressor during operation. Spec. 5:21---6:4. Normally, discovery of
the "optimum value of a result effective variable in a known process is
ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276
(CCP A 1980) (citation omitted). The holding in Boesch, however, arose
when the claimed range and a disclosed prior art range for the variable
overlapped and the change in the variable was suggested in the prior art. Id;
In re Peterson, 315 F.3d 1325, 1329-1330 (Fed. Cir. 2003) ("Selecting a
narrow range within a somewhat broader range disclosed in a prior art
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Application 10/586, 173
reference is no less obvious than identifying a range that simply overlaps a
disclosed range.").
In this case, the Examiner did not identify any specific prior art range
for the components of the blended oil. Nor did the Examiner cite to a
reference suggesting that the claimed range of volume ratios and boiling
points would be effective in reducing PET deposits during operation of the
refrigerant compressor. Moreover, although we appreciate the Examiner's
position that Ponsford's blended oil has a similar viscosity and portions with
similar boiling points as the claimed blended oil, nonetheless, this does not
necessarily mean that it would also have the claimed volume ratios. The fact
that a certain result or characteristic may occur or be present in the prior art
is not sufficient to establish the inherency of that result or characteristic. See
In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversed rejection
because inherency was based on what would result due to optimization of
conditions, not what was necessarily present in the prior art). "The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (emphasis added). Thus, the Examiner failed to establish a prima
facie case of obviousness as to independent claim 1. See In re Boesch 617
F.2d at 276. Consequently, we do not sustain the rejection of claims 1, 3 and
5 under 35 U.S.C. § 103(a).
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Unpatentability of Dependent Claims 4 and 6 -9
With respect to the rejections of claims 4 and 6-9, the Examiner's use
of the disclosures of Seiki, Nagai, Egawa, Hannibal, and Yamazaki, in
various combinations, fails to remedy the deficiencies of Kwon, Ponsford,
and Kim, as described supra. See 5/2/1013 Non-Final Act. 5-9. We
therefore also do not sustain rejections (2}-(6).
DECISION
The Examiner's decision rejecting claims 1 and 3-9 is REVERSED.
REVERSED
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