Ex Parte Lifson

Board of Patent Appeals and Interferences

Jun 29, 2011

11544403 (B.P.A.I. Jun. 29, 2011)

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.
11/544,403 10/06/2006 Alexander Lifson 60,298-593; 1707 7967
26096 7590 06/29/2011
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TRIEU, THERESA
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
06/29/2011 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 ALEXANDER LIFSON
____________

Appeal 2009-012640
Application 11/544,403
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Alexander Lifson (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-11. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to a scroll compressor
having an Oldham coupling manufactured of titanium or titanium alloy.
Spec. 1, para. [0001]. Claim 1, reproduced below, is the sole independent
claim and is representative of the subject matter on appeal.
1. A scroll compressor comprising:
a first scroll member having a base and a generally spiral
wrap extending from its base;
a second scroll member having a base and a generally
spiral wrap extending from its base;
said second scroll member being used to orbit by a
rotating driveshaft; and
an Oldham coupling constraining said second scroll
member to orbital movement when driven by said rotating
driveshaft, said Oldham coupling being formed such that a
majority of its body is formed of a titanium material.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner’s rejection of claims 1, 2, 7, 8, 10, and 11 under
35 U.S.C. § 103(a) as being unpatentable over Abe (US 6,261,072 B1;
issued Jul. 17, 2001).
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2. The Examiner’s rejection of claims 3-6 under 35 U.S.C. § 103(a) as
being unpatentable over Abe and design choice.
3. The Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over Abe and Imamura (US 6,634,875 B2; issued
Oct. 21, 2003).
CONTENTIONS AND ISSUES
The Examiner found that Abe discloses the scroll compressor of
claim 1, except for the Oldham coupling being formed of a titanium
material. Ans. 4. The Examiner determined that it would have been obvious
to make Abe’s Oldham ring of titanium, a known material, “on the basis of
its suitability for the intended use as a matter of obvious design choice.”
Ans. 5 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)). The Examiner also
determined, as to claim 3, that it would have been obvious to utilize the
claimed titanium alloy material as a matter of obvious design choice.
Ans. 5.
Appellant argues claims 1, 2, 7, 8, 10, and 11 as a group for the first
ground of rejection, and argues claims 3-6 as a group for the second ground
of rejection. Supp. Br. 1-3. We select claims 1 and 3 as representative
claims. Claims 2, 7, 8, 10, and 11 stand or fall with claim 1, and claims 4-6
stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant
argues that because In re Leshin was decided before Graham v. John Deere,
383 U.S. 1 (1966), “[i]t has no place in a modern obviousness
determination.” Supp. Br. 2. Appellant further argues that “there is nothing
within Abe that would suggest replacing his proposed aluminum Oldham
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coupling with Titanium” and thus the Examiner’s rejection is based on
hindsight. Supp. Br. 2. As to claim 3, Appellant further argues that the law
does not support the position that any material selected for any component
would always have been a design choice. Supp. Br. 3. Appellant relies on
the same arguments made in support of patentability of claim 1 for the
patentability of claim 9. Supp. Br. 3.
The issues presented by this appeal are:
Would a person having ordinary skill in the art have found the
Oldham coupling called for in claim 1, having a majority of its body formed
of a titanium material, obvious at the time of Appellant’s invention in view
of Abe?
Would a person having ordinary skill in the art have found the
Oldham coupling called for in claim 3, having a majority of its body formed
of a titanium alloy, obvious at the time of Appellant’s invention in view of
Abe?
ANALYSIS
Abe discloses a scroll compressor having an Oldham’s ring for
suppressing the rotation of the orbiting scroll. Abe, col. 1, ll. 5-9. Abe
discloses that in conventional compressors a ferrous Oldham’s ring is often
used in order to improve the reliability in slidability between the Oldham’s
key 26a and the key grooves 21d, 23b. Abe, col. 2, ll. 26-29. Abe further
discloses that vibration is increased as the weight is increased (comparing a
conventional ferrous Oldham’s ring with a ring made of light metal such as
aluminum). Abe, col. 2, ll. 29-31.
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The object of Abe is to reduce the weight of the Oldham’s ring so as
to eliminate excessive vibration experienced with conventional ferrous rings,
while ensuring reliability in the slidability between the key groove and the
key. Abe, col. 2, ll. 36-41. Abe achieves this by providing the Oldham’s
key 1a with a wear resistant bush 2, such that the annular part 1b and a
projected part 1c of the Oldham’s ring 1 are formed of a light metal such as
aluminum alloy, and the bush 2 is locked between the projected part 1c and
the key groove and is made of a wear resistant material such as titanium.
Abe, col. 2, ll. 52-61, col. 4, ll. 9-15; figs. 1-3.
Abe and the claimed invention are both directed to solving the same
problem of reducing or eliminating excessive vibration in a scroll
compressor due to the weight of the Oldham’s ring. Abe recognizes that at
least the key portion of an Oldham’s ring has to be made of a wear resistant
material to suppress sliding wear of the key and that the Oldham’s ring has
to be made of relatively light weight material, as compared to a ferrous ring,
to eliminate excessive vibration.
Abe and the claimed invention both solve the problem in the same
manner by substituting a lighter weight material in place of iron used in a
conventional Oldham’s ring. The difference between the Oldham’s ring of
Abe and the claimed ring is that Abe’s ring is made of aluminum, while the
claimed ring is made of titanium. Appellant acknowledges that a recognized
problem in the art is that Oldham rings made of aluminum, such as Abe’s
ring, have a tendency to break. Spec. 1, para. [0003].
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A person having ordinary skill in the art familiar with the well-known
properties of titanium would know that titanium is a light weight material
that is lighter than iron. See Spec. 1, para. [0005] and Spec. 2, para. [0007].
A person having ordinary skill in the art familiar with the well-known
properties of titanium and aluminum would also know that titanium is
stronger than aluminum. See Spec. 2, para. [0007].
While Appellant’s Specification posits that “titanium or its alloys
have not been proposed for Oldham couplings for scroll compressors,” we
understand from Abe that Appellant was not the first to conceive of applying
titanium to an Oldham coupling. Abe discloses the use of a bush made from
wear resistant material, such as titanium, disposed on the key of the
Oldham’s ring that comes into sliding contact with the key grooves of the
orbiting scroll and the frame. As such, Abe teaches that titanium is
sufficiently wear resistant for such use.
While Abe does not explicitly teach using titanium in place of
aluminum for the Oldham’s ring (in which case Abe would anticipate the
claimed invention), neither does Abe discourage or discredit the use of
titanium for the Oldham’s ring. Rather, Abe is silent as to the use of other
materials that could be used in place of aluminum for the Oldham’s ring.
We find ample evidence in Abe of a known problem in the art of
scroll compressors, that problem being one of excessive vibration caused by
the weight of the Oldham’s ring. We also find that Abe recognizes another
design constraint as being wear resistance of the key of the Oldham’s ring to
suppress sliding wear. Abe describes one possible approach to solving the
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problem is to make the Oldham’s ring of lighter weight material and then
add a wear resistant bush to the key. As such, Abe represents advancement
in the art over a conventional ferrous Oldham’s ring by using a lighter
weight material for the ring. The general teaching provided by Abe is the
technique of using a lighter weight material as compared to iron for the ring.
The more specific teaching of Abe is to use aluminum alloy for the
Oldham’s ring with a titanium bush on the key for wear resistance.
Since a person having ordinary skill in the art would understand that
titanium is a material suitable for use on the key of an Oldham’s ring for
wear resistance, and since a person having ordinary skill in the art would
also understand that titanium is lighter than iron and is stronger than
aluminum, which has a tendency to break when used to make an Oldham’s
ring, such a person would have had a reasonable expectation of success in
using titanium for the Oldham’s ring because use of titanium for the
Oldham’s ring would eliminate excessive vibration, as compared to a
conventional ferrous Oldham’s ring, suppress sliding wear, and have less of
a tendency to break, as compared to an aluminum Oldham’s ring. As such,
we conclude that an Oldham coupling being formed such that a majority of
its body is formed of a titanium material would have been obvious to a
person having ordinary skill in the art at the time of Appellant’s invention as
a predictable variation on the aluminum Oldham’s ring disclosed in Abe, in
light of the more general teaching in Abe to use a lighter weight material as
compared to iron for the ring and in light of common knowledge as to the
properties of titanium.
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In other words, the prior art gave a person having ordinary skill in the
art a clear indication that the critical parameters were the weight of the
material used for the ring and the wear resistance properties of the material
used for the surface of the key. A person having ordinary skill in the art
would have a basic understanding of properties of materials and, in
particular the properties of titanium, as its use is suggested in Abe for the
bush. This common knowledge would have led one having ordinary skill in
the art to understand that titanium possesses the required weight and wear
resistance characteristics, and thus it would reasonably be expected to
eliminate excessive vibration and suppress sliding wear.
As such, we find that the claimed Oldham coupling formed such that a
majority of its body is formed of a titanium material is a matter of routine
skill in the choosing of a material based on its common properties and its
suitability for the intended use, and as such, the invention is “the product not
of innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). “Granting patent protection to
advances that would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining previously
known elements, deprive prior inventions of their value or utility.” Id. at
419. Accordingly, we agree with the Examiner that the scroll compressor of
claim 1 would have been obvious to a person having ordinary skill in the art
in view of the teachings of Abe.
Appellant argues that In re Leshin “has no place in a modern
obviousness determination” because it was decided before Graham v. John
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Deere. Supp. Br. 2. Decisions have been rendered after Graham in which
the court has affirmed a determination of obviousness based on design
choice. See, e.g., In re Kuhle, 526 F.2d 553 (CCPA 1975) (holding that the
“manner in which electrical contact is made for Smith’s battery would be an
obvious matter of design choice within the skill of the art” (citing Graham v.
John Deere Co., 383 U.S. 1 (1966) and In re Gazda, 219 F.2d 449 (1955))).
Further, the CCPA decided a case with facts similar to the present case, in
which the court found that selection of a suitable material would have been a
matter of obvious design choice. See In re Hopkins, 342 F.2d 1010 (CCPA
1965) (holding that when materials are all known and a person of ordinary
skill in the art would be aware of the stresses to which the various parts
would be subjected and capable of selecting materials to accommodate those
stresses, “the selection of suitable materials . . . is no more than a matter of
obvious design choice for such a person”).
Appellant’s argument boils down to the fact that Abe’s choice of
aluminum for the ring meant that Abe’s key could break and Appellant
discovered that titanium or titanium alloy would provide the desired strength
without added weight. Certainly, Appellant is not positing that he was the
first to discover that titanium is both light weight and of high strength.
Further, we do not understand Appellant to be arguing that he was the first to
recognize the problem of breakage in Oldham’s rings made from aluminum.
As such, since the problems with Oldham’s rings made from iron or
aluminum were known and the properties of titanium were also known, we
agree with the Examiner that Appellant’s selection of titanium to make the
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Oldham’s ring as a solution to the known problems in the art was a matter of
obvious design choice.
We further agree with the Examiner that the use of titanium alloy, as
called for in claim 3, would have been obvious. As noted by the Examiner,
nothing in the record establishes that a scroll compressor with an Oldham
coupling made from titanium alloy presents a novel or unexpected result and
thus selection of a known alloy based upon suitability for the intended use is
a design choice consideration within the skill of the art. Ans. 5.
CONCLUSIONS
A person having ordinary skill in the art would have found the
Oldham coupling called for in claim 1, having a majority of its body formed
of a titanium material, obvious at the time of Appellant’s invention in view
of Abe.
A person having ordinary skill in the art would have found the
Oldham coupling called for in claim 3, having a majority of its body formed
of a titanium alloy, obvious at the time of Appellant’s invention in view of
Abe.
DECISION
The decision of the Examiner to reject claims 1-11 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).
AFFIRMED
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