Ex Parte Lifson et al

Patent Trial and Appeal Board

Jun 17, 2014

12088873 (P.T.A.B. Jun. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALEXANDER LIFSON and MICHAEL F. TARAS
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Appeal 2012-004111
Application 12/088,873
Technology Center 3700
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Before: EDWARD A. BROWN, LYNNE H. BROWNE, and
JILL D. HILL, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a refrigerant system. Claims 1, 11 and 21
are independent. Claim 1 is reproduced below:
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1. A refrigerant system comprising:
a compressor, said compressor confined within a housing
shell;
a condenser downstream of said compressor, an
expansion device downstream of said condenser, and an
evaporator downstream of said expansion device;
a pulse width modulation control for opening and closing
a suction valve on a suction line leading from said evaporator
into said housing shell; and
a flow structure to allow limited flow of a refrigerant into
said housing shell when said suction valve is closed, and a
pressure regulating valve controlling said limited flow.

PRIOR ART
Barbier
Lindstrom
Farley
US 3,365,905
US 5,236,311
US 6,357,242 B1
Jan. 30, 1968
Aug. 17, 1993
Mar. 19, 2002

GROUNDS OF REJECTION
Claims 1–7, 10–17 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barbier and Farley.
Claims 8, 9, 18, 19, 21 and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Barbier, Farley and Lindstrom.
Claims 1–20 stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–7 and 9–15 of copending Application No. 12/516,222 and claims 1,
2, 4, 5, 7, 9, 11 and 14 of copending Application No. 12/447,728.
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OPINION
Obviousness-Type Double Patenting Rejections
Appellants state that “[t]o the extent there are allowed claims which
would require a terminal disclaimer, Appellant will promptly file one at the
point of that determination.” Reply Br. 1. Thus, we do not reach the merits
of the Examiner’s provisional double patenting rejections because it would
be premature to do so at this time, consistent with the holding of Ex Parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).
Rejections Based on Barbier and Farley
Claims 1–3, 6, 7, 11–13, 16 and 17
Appellants argue claims 1–3, 6, 7, 11–13, 16 and 17 together. See
App. Br. 4–5. We select independent claim 1 as the illustrative claim and
claims 2, 3, 6, 7, 11–13, 16 and 17 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Barbier discloses all of the limitations of
independent claim 1 except for “a pulse width modulation control for
opening and closing a suction valve.” See Ans. 8. The Examiner finds that
it is known “to control the amount of refrigerant into the suction port of a
compressor by use of pulse width modulation to variably restrict the
refrigerant flow to prevent evaporator icing.” Ans. 9. The Examiner
determines that:
the pulse width modulated valve of Farley [could have been
substituted] for the throttling valve (32) of Barbier [] by known
methods with no change in their respective functions, and the
substitution would have yielded the predictable result of
throttling the valve (32) by pulse width modulation to increase
or decrease the amount of refrigeration and prevent evaporator
icing, and one skilled in the art would have a reasonable
expectation that the substitution would be successful.
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Id. In view of the findings and the determination based thereon, the
Examiner concludes that it would have been obvious to “substitute
[Barbier’s] control [] valve (32) to be pulse width modulation in order to
provide the predictable result of throttling the valve by pulse width
modulation to increase or decrease the amount of refrigeration and prevent
evaporator icing.” Id.
Appellants argue that Barbier’s pressure relief valve is not a pressure
regulating valve as required by independent claim 1. See App. Br. 5. In
support of this argument, Appellants note that “a pressure regulating valve
maintains a set pressure within a downstream location. The Barbier pressure
relief valve 38 would open only when a very large pressure drop exists
across the valve. It maintains no particular pressure.” Id.
In response to this argument, the Examiner notes that “the
requirement that the pressure regulating valve maintain a pressure at all
times is not recited in the claim language.” Ans. 16. The Examiner further
notes that as “Appellant does not provide for any specific special definition
in the specification for a pressure regulating valve, the pressure regulating
valve is broadly interpreted to be a valve that regulates pressure in the
system.” Id. Based on this interpretation, the Examiner determines that
“[s]uch a valve can be any valve which in one way or another regulates (i.e.
controls) the pressure flowing through the system in which it is located” and
finds that Barbier’s “relief valve meets the claimed limitations of being a
pressure regulating valve.” Ans. 16–17. We agree.
In response to the Examiner’s determination and finding, Appellants
argue that “[a] pressure regulating valve as required by the claim is one that
can maintain a pressure within a housing shell, and yet not ruin the purpose
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of the pulse width modulation of the suction valve.” Reply Br. 2. As
discussed supra, the feature of “maintain[ing] the pressure within a housing
shell” is not required by claim 1. Although the claims are interpreted in light
of the specification, limitations from the specification are not read into the
claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Appellants
further argue that:
If a valve such as disclosed in Barbier were actually
provided in a system that has a pulse width modulated suction
valve . . . [the] relief valve would repeatedly fully open every
time the pulse width modulation suction valve is closed. As
such, no control over the flow of fluid to the compressor would
be achieved at all by the pulse width modulation control of the
suction valve.
Reply Br. 2.
Appellants’ argument is not persuasive because in this case the
Examiner finds, and Appellants do not dispute, that Farley teaches that it is
known to use pulse width modulation for a suction valve. Ans. 9; App. Br.
4. “[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.” In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
For these reasons, we sustain the Examiner’s rejection of independent
claim 1, and claims 2, 3, 6, 7, 11–13, 16 and 17 that fall therewith.
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Claims 41, 5, 10, 14, 15 and 20
Appellants note that “claims 4 and 14 require that the pressure
regulating valve and bypass line ‘[be] designed to maintain a pressure of less
than 2 psia.’” Reply Br. 2. Appellants further note that dependent claims “5
and 15 require that the valve and bypass ‘maintain a pressure of
approximately 1 psia.’” Id. Appellants argue that “[t]here is no showing
within these references [Barbier and Farley] that those very low pressures
would ever be reached.” Id.
In response to this argument, the Examiner finds that “Barbier would
be capable of opening up when small pressure drops exist across the valve in
order to maintain lubricant flow through the compressor during all operating
conditions.” Ans. 18. The Examiner further determines that “[i]f the
pressure regulator was capable of providing the claimed pressure within the
compressor housing for an instant, the pressure inside the compressor
housing would be maintained for an instant.” Id. Based on this
determination the Examiner finds that such an instant would occur in the
Barbier system and concludes that the requirements of claims 4, 5, 14, and
15 are met by Barbier. See Ans. 18–19.
The Examiner’s analysis lacks factual support. Barbier does not
describe what is considered to be “low pressure” within the context of its
system. Thus, the Examiner finding that Barbier’s system is capable of
maintaining pressures of less than 2 psia is speculative. Further, the
Examiner’s claim construction is unreasonable. During examination of a
patent application, pending claims are given their broadest reasonable

1 We note that claim 4 depends from itself. We treat this as a typographical
error as claim 4 has not been amended and claim 4 as originally filed
depends from independent claim 1.
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construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404–05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (emphasis added). The Examiner’s interpretation of
the limitation “to maintain a pressure of less than 2 psia in said housing shell
when said suction valve is closed” (Clm. 4, App. Br. 7) is not consistent with
the Specification which describes maintaining the pressure for more than an
instant. See Spec., p. 3, ll. 15–23.
For these reasons, we do not sustain the Examiner’s rejection of
claims 4, 5, 14 and 15. Claims 10 and 20 similarly require that “a pressure
of between 0.5 and 2.0 psia is maintained within said housing shell when
said suction valve is closed.” App. Br., Clms. App’x. Accordingly, we do
not sustain the Examiner’s rejection of claims 10 and 20.
Rejections Based on Barbier, Farley and Lindstrom
Claims 8 and 18
Appellants argue that none of the references teach that “the flow of
refrigerant into the housing be into a chamber in the housing shell that
receives the electric motor.” App. Br. 6 (emphasis added). The Examiner
correctly finds that “Lindstrom teaches that it is well known in the art of
refrigeration and air conditioning, to use a hermetically sealed compressor
which is characterized by the fact that the compressor and its electric drive
motor are enclosed within a single housing.” Ans. 13 (citing Lindstrom, col.
1, ll. 11–17); however, the Examiner does not identify, nor do we discern,
where Lindstrom describes the flow of the refrigerant into the housing being
located such that it is into a chamber with the housing that receives the
motor. Simply put, Lindstrom fails to provide sufficient detail to determine
where the flow of refrigerant occurs.
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For this reason, we do not sustain the Examiner’s rejection of claims 8
and 18.
Claims 9 and 19
Appellants do not present separate arguments for the patentability of
claims 9 and 19 which depend from independent claims 1 and 11,
respectively. Accordingly, we sustain the Examiner’s rejection of these
claims.
Claims 21 and 22
Claim 21 requires that “a pressure of between 0.5 and 2.0 psia is
maintained within said housing shell when said suction valve is closed.”
App. Br. 10. For the reasons discussed supra we do not sustain the
Examiner’s rejection of claim 21, and claim 22 which depends therefrom.

DECISION
The Examiner’s rejections of claims 1–3, 6, 7, 9, 11–13, 16, 17, and
19 under 35 U.S.C. § 103(a) are AFFIRMED.
The Examiner’s rejections of claims 4, 5, 8, 10, 14, 15, 18, and 20–22
under 35 U.S.C. § 103(a) are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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