Ex parte LOC et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08380223 (B.P.A.I. Jun. 29, 1998)

Application for patent filed January 26, 1995. 1
According to the appellants, the application is a continuation
of Application No. 08/046,542, filed April 13, 1993, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY S. LOC and GERALD R. PRUITT
____________
Appeal No. 97-1761
Application No. 08/380,2231
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
Appeal No. 97-1761
Application No. 08/380,223
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 16 through 25, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 97-1761 Page 3
Application No. 08/380,223
In determining the teachings of Yano, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellants' convenience.
In determining the teachings of Kuhl, we will rely on3
the translation provided to the PTO by Schreiber Translations,
Inc. A copy of the translation is attached for the
appellants' convenience.
BACKGROUND
The appellants' invention relates to a linear compressor.
An understanding of the invention can be derived from a
reading of exemplary claim 16, which appears in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Zimmer 2,049,936 Aug. 4,
1936
Yano 62-209239 Sep. 14,2
1987
(Japan)
Kuhl WO 92/12358 July 23,3
1992
(WIPO)
In addition, the examiner also relied upon admitted prior
art (i.e., Figures 1-3).
Appeal No. 97-1761 Page 4
Application No. 08/380,223
Claims 16 through 19, 23 and 24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Yano or Kuhl in
view of the admitted prior art.
Claims 16, 20 through 22 and 25 stand rejected under
35 U.S.C. § 103 as being unpatentable over Zimmer in view of
the admitted prior art.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 24, mailed August 28, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 23, filed April 3, 1996) and reply brief
(Paper No. 25, filed November 6, 1996) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, to the
Appeal No. 97-1761 Page 5
Application No. 08/380,223
declaration of Gerald R. Pruitt (Paper No. 19, filed January
5, 1996) and to the respective positions articulated by the
appellants and the examiner. Upon evaluation of all the
evidence before us, it is our conclusion that the examiner has
not established obviousness with respect to the claims under
appeal. Accordingly, we will not sustain the examiner's
rejections under 35 U.S.C. § 103. Our reasoning for this
determination follows.
The evidence of nonobviousness submitted by the
appellants must be considered en route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. See
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871
(Fed. Cir. 1983). Accordingly, we must carefully evaluate
both the combined teachings of the applied prior art and the
objective evidence of nonobviousness supplied by the
appellants. See In re Oetiker, 977 F.2d 1443, 1445-46, 24
USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re Piasecki, 745
F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
Rejection utilizing Yano or Kuhl
Appeal No. 97-1761 Page 6
Application No. 08/380,223
The admitted prior art shown in the appellants' Figures
1-3 discloses a linear compressor 10. The linear compressor
10 comprises, inter alia, a housing 14 having a cylinder 16
defining a compression chamber, a piston 20 slidably located
in the cylinder, a motor 26 for causing the piston to
reciprocate, and a spring 38 having a single coil. The single
coil spring 38 has one end attached to a flange 52 fixed to
the housing 14 and the other end attached to retainer 54 which
is attached to the motor 26.
Yano discloses a coil spring. As shown in Figures 1-3,
the coil spring is an integral structure having an
installation section 3 (i.e., a first end member), an
installation section 4 (i.e., a second end member), and two
coiled wires 1 and 2 extending between the installation
sections 3 and 4. The installation sections 3 and 4 are
provided with screw holes 5 for securing the spring to other
members. The two coiled wires 1 and 2 are opposed to each
other (i.e., 180° out of phase with each other). Yano teaches
that a problem with a coil spring consisting of a single wire
is that such a spring generates a bending moment such that the
Appeal No. 97-1761 Page 7
Application No. 08/380,223
center of the coil spring bends. Yano further teaches that
his coil spring having two coil wires solves the bending
moment problem.
Kuhl discloses a helical spring. As shown in Figure 1,
the spring 1 has three turns 2, 3 and 4 between end members 8
and 9.
The declaration of Pruitt establishes: (1) linear
compressors have been in development from the middle 1960's;
(2) wear out life of linear compressors has been a significant
concern through this development; (3) the prior art linear
compressor exhibited piston wear at the rate of 400 millionths
of an inch per thousand hours of operation and an associated
loss of compression ratio of 25% after 4,000 hours; (4) this
same compressor, after replacing the single coil spring with a
double helix spring, exhibited piston wear at the rate of less
than 60 millionths of an inch per thousand hours of operation
and an associated loss of compression ratio of 7% after 15,700
hours; (4) prior workers in this field, including Magnavox and
Texas Instruments, have tried for many years to solve the
Appeal No. 97-1761 Page 8
Application No. 08/380,223
The "Name and Address Change" (Paper No. 22, filed April4
3, 1996) stated that the corporate name of Hughes Aircraft
Company had been changed to HE Holdings, Inc., doing business
as Hughes Electronics. We note that this name change has not
been recorded in the PTO pursuant to 37 CFR § 3.11.
problem of short compressor life, but have failed to do so;
(5) Texas Instruments attempted to improve compressor life by
utilizing multiple individual springs with carefully
controlled angular orientation, but these showed no
substantial improvement; and
(6) Hughes Aircraft Company (the real party in interest in
this application) in the two years following the use of the4
double helix spring in their coolers has sold approximately
600 linear coolers compared to selling less than 50 linear
coolers in the two years prior to the use of the double helix
spring in their coolers. In addition, Pruitt states that the
improvement shown by his invention when compared to the prior
art "is a dramatic and completely unexpected magnitude of
improvement" and that the improvement in wear and life of the
linear compressor is "significant and startling."
Appeal No. 97-1761 Page 9
Application No. 08/380,223
While the combined teachings of the applied prior art may
have made the subject matter of claims 16 through 19, 23 and
24 prima facie obvious, it is our opinion that Pruitt's
declaration is sufficient to rebut the prima facie case of
obviousness. As stated in In re De Blauwe, 736 F.2d 699, 706
n. 8, 222 USPQ 191, 197 n. 8 (Fed. Cir. 1984), "A proper
showing of unexpected results will rebut a prima facie case of
obviousness. In re Fenn, 639 F.2d 762, 208 USPQ 470 (CCPA
1981); In re Murch, 464 F.2d 1051, 175 USPQ 89 (CCPA 1972)."
Furthermore, when the appellants demonstrate substantially
improved results, as the appellants did here, and state that
the results were unexpected, this suffices to establish
unexpected results in the absence of evidence to the contrary.
See In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed.
Cir. 1995). The examiner has not provided any persuasive
basis to question the comparative data and assertion that the
demonstrated results were unexpected. Thus, we are persuaded
that the examiner's determination that the evidence contained
in the declaration was insufficient to rebut the examiner's
prima facie case of obviousness was erroneous.
Appeal No. 97-1761 Page 10
Application No. 08/380,223
For the reasons set forth above, the decision of the
examiner to reject claims 16 through 19, 23 and 24 under 35
U.S.C. § 103 as being unpatentable over Yano or Kuhl in view
of the admitted prior art is reversed.
Rejection utilizing Zimmer
Zimmer discloses a yieldable shaft coupling. As shown in
Figure 2, the shaft coupling includes a casing 1, a flange 2,
a spring coupler B and flange 17. The spring coupler B
includes a tube having two helical slots 3 and 4 spaced apart
by portion 5. The slots 3 and 4 form two helical spring
sections and the slots 3 and 4 are respectively right hand and
left hand.
The teachings of the admitted prior art and the evidence
in the Pruitt declaration have been set forth above.
Upon evaluation of all the evidence before us, we reach
the conclusion that it would not have been obvious to one of
ordinary skill in the art at the time the invention was made
to replace the single coil spring in the prior art linear
Appeal No. 97-1761 Page 11
Application No. 08/380,223
compressor with a spring as shown by Zimmer. Thus, we agree
with the appellants' argument (brief, p. 13) that the combined
teachings of Zimmer and the admitted prior art would not have
suggested the claimed invention. That is, the examiner did
not establish a prima facie case of obviousness. In any
event, for the reasons set forth previously, we are persuaded
that the evidence contained in Pruitt's declaration was
sufficient to overcome a prima facie case of obviousness.
For the reasons set forth above, the decision of the
examiner to reject claims 16, 20 through 22 and 25 under 35
U.S.C. § 103 as being unpatentable over Zimmer in view of the
admitted prior art is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 16 through 25 under 35 U.S.C. § 103 is reversed.
Appeal No. 97-1761 Page 12
Application No. 08/380,223
REVERSED
`
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1761 Page 13
Application No. 08/380,223
PATENT DOCKET ADMINISTRATION
HUGHES ELECTRONICS
BLDG. C01/A126
P.O. BOX 80028
LOS ANGELES, CA 90080-0028
APPEAL NO. 97-1761 - JUDGE NASE
APPLICATION NO. 08/380,223
APJ NASE
APJ COHEN
APJ STAAB
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 10 Jun 98
FINAL TYPED: