Ex Parte Lucas et al

Patent Trial and Appeal Board

Oct 20, 2014

12463457 (P.T.A.B. Oct. 20, 2014)

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.
12/463,457 05/11/2009 Michael John Lucas 065424-9139-01 9650
123446 7590 10/20/2014
Ingersoll-Rand Company
Krieg DeVault LLP
One Indiana Square, Suite 2800
Indianapolis, IN 46204
EXAMINER
HAMO, PATRICK
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
10/20/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL JOHN LUCAS,
JAMES DAVID GILLON, and JASON WILLIAM HUNT
____________________

Appeal 2012-009262
Application 12/463,457
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, LISA M. GUIJT, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
13. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a double throat pulsation dampener for a
compressor. Claim 1, reproduced below, is illustrative of the claimed
subject matter:

Appeal 2012-009262
Application 12/463,457

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1 A method of attenuating fluid dynamic pulsations that
propagate through a flow of fluid at a convective velocity of the
fluid, the pulsations having an organized vortical structure, the
method comprising:
directing the flow to a pulsation dampener inlet having a
first area;
transitioning the organized vortical structure to a small-
scale turbulent structure by squeezing the vorticies by passing
the flow of fluid through a passage having a second area that is
smaller than the first area, then instantaneously expanding the
flow of fluid by passing it into a chamber having a third area
measured at an inlet of the chamber that is larger than the
second area, the third area being the largest area within the
chamber; and
discharging the flow of fluid from the chamber via a
contracting flow path, the flow of fluid including attenuated
fluid dynamic pulsations and acoustic pulsations that travel
through the flow of fluid at the speed of sound.

REJECTIONS
Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Bloomer (US 6,347,609 B1, iss. Feb. 19, 2002). Ans. 4.
Claims 1 and 3–13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gobert (US 5,905,233, iss. May 18, 1999) and Bloomer.
Ans. 6.

OPINION
The rejection under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection under § 102 is premised on the
interpretation of noise in Bloomer as the recited “fluid dynamic pulsations.”
Ans. 10. The Examiner, however, provides no explanation as to how the
noise in Bloomer meets the other recited limitations associated with the fluid
Appeal 2012-009262
Application 12/463,457

3
dynamic pulsations such as having a “vortical structure” or “propagat[ing] . .
. at a convective velocity of the fluid.” App. Br. 11–12. Noise travels at the
speed of sound, and there is no indication that Bloomer’s fluid travels at that
same speed. In fact, as Bloomer’s fluid travels in the opposite direction of
the noise (col. 1, ll. 46–47), it cannot have the same velocity because
velocity includes a directional component. Even if “organized” is a term of
degree as the Examiner suggests (Ans. 10), the Examiner provides no
scientific evidence or technical reasoning to explain why Bloomer’s noise
has any type of “vortical structure.” The Examiner’s proposed claim
construction is clearly unreasonable and the Examiner’s rejection under
§ 102 cannot be sustained.

The rejection under 35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection under § 103(a) is premised on the notion
that it would have been obvious to incorporate Bloomer’s resonator into
Gobert, in place of Gobert’s noise suppressing nozzle arrangement 30, such
that fluid would flow through Bloomer’s resonator in a direction opposite to
that taught in Bloomer. Ans. 6–7, 11. The Examiner asserts one skilled in
the art would understand Bloomer’s resonator should be connected in this
direction so as to point to the source of the noise in Gobert’s device,
supercharger 5. Ans. 11. Appellants contend that there is no evidence of
record to suggest directing fluid through Bloomer’s resonator in a direction
opposite to that taught by Bloomer. App. Br. 16–17, 19.
Generally, for a combination to be obvious to one skilled in the art
there must be at least a reasonable expectation that the combination would
successfully yield a functioning device. See In re O’Farrell, 853 F.2d 894,
Appeal 2012-009262
Application 12/463,457

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903–04 (Fed. Cir. 1988). Whether there is a reasonable expectation of
success is a question of fact. Medichem S.A. v. Rolabo S.L., 437 F.3d 1157,
1165–66 (Fed. Cir. 2006). Neither the Examiner nor Appellants have
introduced any evidence or technical reasoning to demonstrate why
Bloomer’s device may or may not work with the air flow reversed. This is
an important fact in light of which the determination of obviousness must be
made. At most, the issue is in equipoise. As the Examiner bears the burden
of establishing patentability, the Examiner’s rejection cannot be sustained on
the record before us. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)
(“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled
to a patent unless, ‘concerning novelty and unobviousness,’ clearly places a
burden of proof on the Patent Office which requires it to produce the factual
basis for its rejection of an application under sections 102 and 103.”)

DECISION
The Examiner’s rejections are reversed.

REVERSED

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