Ex Parte Lifson et al

Patent Trial and Appeal Board

Feb 11, 2016

12279075 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/279,075 08/12/2008
26096 7590 02/16/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Alexander Lifson
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.
PA0002040USAA;60246-530PU 7861
EXAMINER
GONZALEZ, PAOLO
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER LIPSON and JASON D. SCARCELLA
Appeal2013-009616
Application 12/279,075
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alexander Lifson and Jason D. Scarcella (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1, 4-12,
22, and 25-29, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2013-009616
Application 12/279,075
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter "relates to a system control
technique for eliminating or limiting the amount of liquid refrigerant passing
through the compressor." Spec. 1, para. 2. Of those claims before us on
appeal, claims 1 and 22 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A refrigerant system comprising:
a compressor, a condenser downstream of said
compressor, an expansion device downstream of said
condenser, and an evaporator downstream of said expansion
device, and a refrigerant circulating from said compressor to
said condenser, through said expansion device and said
evaporator and then returning to said compressor;
a control controlling a system component to reduce the
amount of liquid refrigerant to pass through the compressor;
said system component is a suction modulation valve;
and
said control throttles said suction modulation valve
toward a closed position to reduce mass flow when conditions
indicate there might be an undesirable amount of liquid
refrigerant to pass through the compressor.
EVIDENCE
The Examiner relied upon the following evidence:
Biagini
Brendel
Lifson (hereinafter
"Lifson '604")
Lifson (hereinafter
"Lifson '057'')
us 4,785,639
US 6,318,100 Bl
US 6,648,604 Bl
US 2008/0223057 Al
2
Nov. 22, 1988
Nov. 20, 2001
Nov. 18, 2003
Sept. 18, 2008
Appeal2013-009616
Application 12/279,075
REJECTIONS 1
Appellants appeal from the Final Action, dated December 15, 2011,
which includes the following rejections:
1. Claims 1, 11, and 22 under 35 U.S.C. § 102(b) as anticipated by
Brendel.
2. Claims 1and22 under 35 U.S.C. § 102(e) as anticipated by
Lifson '057.
3. Claims 1, 7, 22, and 28 under 35 U.S.C. § 103(a) as unpatentable
over Brendel.
4. Claims 4-6, 8, 12, 25-27, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Brendel and Lifson '604.
5. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Brendel and Biagini.
ANALYSIS
First ground of rejection: Anticipation by Brendel
Claims 1 and 22
Independent claim 1, directed to a refrigerant system, recites "said
control throttles said suction modulation valve toward a closed position to
reduce mass flow when conditions indicate there might be an undesirable
amount of liquid refrigerant to pass through the compressor." Appeal Br. 9
(Claims App.). Independent claim 22, directed to a method of operating a
1 The Examiner withdre\v a rejection of claims 22 and 25---29 under
35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2.
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Application 12/279,075
refrigerant system, recites a similar limitation. Id. at 10 (Claims App.). The
Examiner found that Brendel discloses:
[A] control (150, 154) [that] throttles [a] suction modulation
valve toward a closed position (see Col. 2, lines 36-38, lines
43--46, and lines 56-61; Col. 3, lines 6-10; Col. 3, lines 15-20
and lines 36-50; Col. 6, lines 38--42; Col. 7, lines 21-29, where
it is recited that the controller (150) partially actuates the
suction modulation valve (EMV 130) and if certain condition is
not meet [sic], the suction modulation valve (EMV 13 0) can be
further actuated; thus, it is implicitly understood that by
'actuating' the suction modulation valve (EMV 130), the
controller throttles [the] suction modulation valve (EMV 130)
toward a closed position).
Final Act. 4. The Examiner interpreted the claim recitation of "to reduce
mass flow when conditions indicate there might be an undesirable amount of
liquid refrigerant to pass through the compressor" as a statement of intended
use and found that Brendel's device is capable of performing the function or
use. Id. at 4-5 (citing Brendel, col. 7, 11. 21-29); Ans. 4.
Appellants argue, and we agree, that the recitation in claims 1 and 22
is not simply one of intended use but rather an explicit function required to
be perfonned through throttling of the suction modulation valve, as set forth
in the claims. Appeal Br. 4. The Examiner, however, made additional
findings based on Brendel that specifically address the limitation and where
it is explicitly disclosed in the prior art. In particular, the Examiner found
that "Brendel further discloses where the control (150, 154) monitors and
calculates the superheat so as to minimize the level of superheating (which
is an indication of short of flood back of liquid refrigerant into the
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compressor) (see Col. 2, lines 49-53; Col. 6, lines 52-56)." Ans. 3. The
Examiner also found that Brendel's control throttles exchange valve 144
"when the current value of superheat exceeds [a] preselected limit value
(i.e., when condition[s] indicate there might be an undesirable amount of
liquid refrigerant to pass through the compressor) in order to achieve the
desired superheat level (see Col. 7, lines 4-20)." Id. According to the
Examiner:
Brendel further discloses that when a maximum allowable
evaporator superheat is . . . reached within the system, the
control (150, 154) controls the suction modulation valve (EMV
130) to modulate the refrigerant flow rate instead of the
electronic exchange valve (EXV 144) and thus provide
effective control (see Col. 3, lines 15-20 and lines 36-50;
Col. 7, lines 23-29).
Id. at 4.
Appellants assert that Brendel controls superheat and does not throttle
a suction modulation valve when conditions indicate there might be an
undesirable amount of liquid refrigerant. Reply Br. 2. We disagree because
Brendel expressly teaches that "the controller monitors and calculates the
superheat so as to minimize the level of super heating (short of flood back of
liquid refrigerant into the compressor)." Brendel, col. 2, 11. 49-52. Brendel
also teaches that the controller "maintain[ s] the lowest setting of superheat
which will maintain control and still not cause flood back (i.e., escape of
liquid refrigerant into the compressor)." Brendel, col. 6, 11. 52-56. Thus,
Brendel establishes that excess superheat conditions indicate that there might
be an undesirable amount of liquid refrigerant flooding back into the
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Application 12/279,075
compressor. Brendel further teaches that when superheat exceeds a
maximum allowable level (indicating that there might be an undesirable
amount of liquid refrigerant passing to the compressor), controller 150
partially actuates (i.e., throttles) suction modulation valve 130. Brendel,
col. 7, 11. 23-26. Accordingly, we are not persuaded by Appellants'
argument that Brendel does not disclose throttling a suction modulation
valve when conditions indicate there might be an undesirable amount of
liquid refrigerant passing to the compressor. For these reasons,
we affirm the rejection of claims 1 and 22 under 3 5 U.S. C. § 102(b) as
anticipated by Brendel.
Claim 11
The Examiner found that Brendel discloses "a discharge valve (120)
being positioned intermediate (structurally) between said condenser (114)
and said compressor (116)." Final Act. 5 (citing Brendel, Figs. 2, 4); see
also Ans. 5-6 (interpreting "intermediate" as "being or occurring at the
middle place, stage, or degree or between extremes").
Although we agree with the Examiner "that element 120 is a
discharge valve since it is fluidly connected with the discharge line of the
compressor," we agree with Appellants that the Examiner's interpretation of
the valve being positioned structurally intermediate the condenser and the
compressor is unreasonably broad. Appeal Br. 5 (arguing that Brendel does
not show the valve "intermediate" the compressor and condenser "as the
term would be interpreted by a worker in this art"). In the context of a
refrigerant system for directing refrigerant flow from one component to
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Application 12/279,075
another through the system, a person having ordinary skill in the art would
understand a valve positioned "intermediate" a compressor and a condenser
to call for a valve located in the discharge line such that the refrigerant flows
from the compressor to the valve and then on to the condenser. Figure 2 of
Brendel depicts valve 120 positioned on the discharge line and schematically
between compressor 116 and condenser 114; however, valve 120 is not
positioned intermediate the condenser and compressor because refrigerant
does not pass through the valve on its way from the compressor to the
condenser. This same finding holds true for the schematic depicted in
Figure 4 of Brendel. For these reasons, we reverse the rejection of claim 11
as anticipated by Brendel.
Third ground of rejection: Unpatentable over Brendel
The Examiner alternatively rejected claims 1 and 22 as unpatentable
over Brendel. Final Act. 7-8. For the reasons set forth supra in our analysis
of the anticipation rejection of claims 1 and 22, we likewise affirm the
alternative rejection of claims 1 and 22 as unpatentable over Brendel. A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA
1974) (citation omitted).
With respect to dependent claims 7 and 28, which are also subject to
the third ground of rejection, Appellants do not present separate patentability
arguments for these claims apart from independent claims 1 and 22. As
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such, we also affirm the rejection of claims 7 and 28 as unpatentable over
Brendel.
Fourth ground of rejection: Unpatentable over Brendel and Lifton '604
Claims 4 and 25
Claim 4 recites "wherein said control throttles said suction modulation
valve at start-up." Appeal Br. 9 (Claims App.). Claim 25 recites a similar
limitation. Id. at 10 (Claims App.). The Examiner found that "Lifson ['604]
teaches a method of minimizing the detrimental effect of scroll compressor
flooded starts (see Col. 1, lines 6-7)" by running the compressor in reverse
to prevent liquid refrigerant from migrating to the compressor and causing
damage. Final Act. 9 (citing Lifson '604, col. 1, 11. 6-7, 36--46, col. 2, 1. 63
to col. 3, 1. 36 and 11. 8-36). The Examiner determined:
Since both Brendel and Lifson ['604] are trying to
prevent liquid refrigerant from entering the compressor[,] it
would have been obvious to one of ordinary skill in the art at
the time of the invention ... to modify Brendel's control (150,
154) to initiate the throttling of said suction modulation valve at
start-up . . . so as to improve the system's reliability by
preventing major damage[] to the compressor, thus, so as to
reduce the maintenance cost of the refrigeration system.
Id. at 9-10.
Appellants argue that "Lifson ['604] is a method of reducing a
problem that occurs in scroll compressors at startup" including "a specific
control feature that involves reversing the rotation to move fluid away from
certain locations such that an undesirable noise does not occur at startup."
Appeal Br. 6. Appellants assert that Lifson '604 "would teach nothing into
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Application 12/279,075
the compressor of Brendel ... and would surely not teach one to restrict a
suction modulation valve at startup." Id. According to Appellants, the
Examiner's rejection is based on impermissible hindsight. Id.
Appellants' arguments are unpersuasive because they do not address
the Examiner's aiiiculated reasoning for the proposed combination of
teachings from Brendel and Lifson '604. Here, the Examiner articulated
adequate reasoning based on rational underpinnings to modify Brendel's
refrigeration control to initiate throttling of the suction modulation valve at
start-up in view of the teachings of Lifson '604 ("to improve the system's
reliability by preventing major damage[] to the compressor"). Final Act. 10.
tv1oreover, Appellants do not identify any know-ledge relied upon by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinmy skill at the time of the
invention. See In re Ji;fcLaughlin, 443 F.2d 1392 (CCPA 1971). As such,
we disagree with Appellants' assertion that the Exarniner relied on
impennissible hindsight in reaching the determination of obviousness of the
subject matter of claims 4 and 25. For the above reasons, we affirm the
rejection of claims 4 and 25 as unpatentable over Brendel and Lifson '604.
Claims 5 and 26
Claims 5 and 26 depend from claims 1 and 22, respectively. Appeal
Br. 9, 11 (Claims App.). Appellants do not set forth any additional
substantive arguments separate from the arguments discussed supra; instead
asserting only that Lifson '604 fails to cure the alleged deficiencies of
Brendel. See Appeal Br. 6. Accordingly, as we do not find any deficiencies
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Application 12/279,075
of Brendel, Appellants do not apprise us of error in the Examiner's rejection
of these claims, and we likewise affirm the rejection of claims 5 and 26 as
unpatentable over Brendel and Lifson '604.
Claims 6 and 2 7
Claim 6 recites "wherein said control throttles said suction modulation
valve between 0.1 seconds and 1 second after the start up." Appeal Br. 9
(Claims App.). Claim 27 recites a similar limitation. Id. at 11 (Claims
App.). The Examiner determined that it would have been obvious to a
person having ordinary skill in the art at the time of invention to modify the
controller of Brendel to initiate suction modulation valve throttling "between
0.1 seconds and 1 second after ... start up ... in view of the teaching of
Lifson ['604] so as to improve the system's reliability by preventing major
damages to the compressor, thus, so as to reduce the maintenance cost of the
refrigeration system." Final Act. 9-10.
Appellants argue that "nothing within Lifson ['604] would teach one
to modify Brendel ... and nothing within either reference meets this
particular range of times for throttling the suction modulation valve."
Appeal Br. 7. Appellants repeat the arguments that Lifson '604 does not
cure the deficiencies of Brendel and that the Examiner's proposed
combination is based on impermissible hindsight. Id.; see id. at 6. These
arguments do not apprise us of error in the rejection of claims 6 and 27 for
the same reasons discussed supra in the analysis of the rejection of claims 4
and 25. Namely, we do not find any deficiency in the disclosure of Brendel,
and Appellants fail to specifically address the Examiner's articulated
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reasoning in support of the conclusion of obviousness. Thus, we affirm the
rejection of claims 6 and 27 as unpatentable over Brendel and Lifson '604.
Claims 8 and 29
Claim 8 recites "wherein said control controlling said suction
modulation valve in combination with actuation of a compressor crankcase
heater of said compressor." Appeal Br. 9 (Claims App.). Claim 29 recites a
similar limitation. Id. at 11 (Claims App.). Appellants argue that "nothing
within Lifson ['604] would teach actuating the heater in combination with
the control of the suction modulation valve." Appeal Br. 7. Appellants also
repeat the argument that the Examiner's proposed combination is based on
impermissible hindsight. Id.
Appellants' arguments do not address the Examiner's rejection. The
Examiner relied on Brendel for teaching a control controlling a suction
modulation valve in combination with another system element and relied on
Lifson '604 for teaching the use of a crankcase heater system element to
prevent liquid from entering a compressor. Final Act. 10. The Examiner
determined that it would have been obvious to a person having ordinary skill
in the art at the time of invention to modify the system of Brendel to include
a compressor crankcase heater as taught by Lifson '604 because both
references aim to prevent liquid refrigerant from entering a compressor and
causing damage. Id. at 10-11. Appellants' arguments are not persuasive of
error because they fail to address the Examiner's articulated reasoning for
the proposed combination. For the above reasons, we affirm the rejection of
claims 8 and 29 as unpatentable over Brendel and Lifson '604.
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Claim 12
Claim 12 depends from claim 1 and recites "wherein said compressor
is run in reverse at start-up in combination with said control controlling said
suction modulation valve." Appeal Br. 10 (Claims App.). Appellants argue
that "Lifson ['604] is attempting to cure a problem that may or may not be
made worse, and where the cure may even be ruined by controlling the
suction modulation valve to close." Appeal Br. 7-8. These speculative
assertions are unsupported by objective evidence and are insufficient to
persuade us of error in the Examiner's rejection. See Jn re Pearson, 494
F.2d 1399, 1404 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence") (citation omitted} Appellants also repeat the
argument that the Examiner's proposed combination is based upon
impermissible hindsight. Appeal Br. 8; see id. at 6. For the same reasons
discussed supra in the analysis of the rejection of claims 4 and 25, this
argument does not apprise us of error in the rejection of claim 12.
Accordingly, we affirm the rejection of claim 12 as unpatentable over
Brendel and Lifson '604.
Fifth ground of rejection: Unpatentable over Brendel and Biagini
Claim 9 recites "said control controlling said suction modulation
valve in combination with actuation of a heater on said evaporator." Appeal
Br. 10 (Claims App.). Claim 10 recites "said control controlling said suction
modulation valve in combination with reducing the speed of a fan associated
with said condenser." Id. Appellants argue that although "Biagini does
disclose a heater on an evaporator, it does not disclose the combination of
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control [and] ... [ n ]othing within Biagini or Brendel ... would teach one to
utilize both in combination." Id. at 8. Appellants similarly argue that
"Biagini does disclose controlling the condenser fan, however, this is not the
same as controlling a condenser fan speed in combination with control of the
suction modulation valve ... [and] there is nothing that would teach one to
utilize the two control features at the same time." Id.
Appellants' arguments amount to assertions that the references do not
suggest controlling a suction modulation valve in combination with
actuating an evaporator heater or in combination with reducing the speed of
a condenser fan. Appellants' arguments are unpersuasive for two reasons.
First, the arguments urge us to apply a strict teaching, suggestion, or
motivation (TSl\1) test for obviousness. Rigid application of the TSIV1 test
was explicitly disavowed by the Supreme Court in KSR Int'! Co. v. Telejlex
Inc., 550 U.S. 398, 415, 419 (2007). Second, Appellants' argurnents do not
address the Examiner's articulated reasoning for the conclusion of
obviousness. Here, the Examiner determined that:
Since Brendel teaches a controller (150, 154) having a
control technique of controlling said suction module valve (130)
in combination with another system's element so as to prevent
liquid refrigerant from entering into the compressor and since
Biagini teaches that is old and well known for a refrigeration
system to comprise a[ n] evaporator heater and for a controller
to control the heater and condenser fan[,] it would have been
obvious to one of ordinary skill in the art at the time of the
invention . . . to modify Brendel' s system to have a[ n]
evaporator heater and to have the controller controlling said
suction modulation valve in combination with said heater or the
condenser fan (i.e., reducing the speed of the fan) ... in view of
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the teachings of Brendel and Biagini so as to improve the
system's efficiency by facilitat[ing] start-up of the system and
so as to improve the system's reliability by preventing major
damage[] to the compressor, thus, reducing the maintenance
cost of the refrigeration system.
Final Act 12-13; see Brendel, col. 3, 11. 46-50, col. 4, 11. 40--43, col. 6,
11. 38-56; see Biagini, col. 2, 11. 9-12, col. 3, 11. 5-8 and 34-55. We find that
the Examiner's reasoning is based on rational underpinnings, and
Appellants' arguments do not specifically address the Examiner's articulated
reasoning for the proposed combination of Brendel and Biagini or explain
why the reasoning is in error. Accordingly, we affirm the rejection of claims
9 and 10 as unpatentable over Brendel and Biagini.
Second ground of rejection: Anticipation by Lifson '057
Because our affirmance of the first and third grounds of rejection is
dispositive as to each of the claims subject to the second ground of rejection,
we do not reach the Examiner's cumulative rejection of claims 1 and 22
under 35 U.S.C. § 102(e) as anticipated by Lifson '057. See 37 C.F.R. §
41.50(a)(l) (2015) ('"The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specificaIIy reversed.").
DECISION
We AFFIRM the decision of the Examiner to reject:
• claims 1and22 under 35 U.S.C. § 102(b) as anticipated by
Brendel,
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• claims 1, 7, 22, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Brendel,
• claims 4-6, 8, 12, 25-27, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Brendel and Lifson '604, and
• claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Brendel and Biagini.
We REVERSE the decision of the Examiner to reject claim 11 under
35 U.S.C. § 102(b) as anticipated by Brendel.
We do not reach the additional issues raised by Appellants regarding
the cumulative rejection of claims 1and22 under 35 U.S.C. § 102(e) as
anticipated by Lifson '057.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
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