Ex Parte Minami

Patent Trial and Appeal Board

Jan 18, 2013

11818200 (P.T.A.B. Jan. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENICHIRO MINAMI
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Appeal 2011-000844
Application 11/818,200
Technology Center 3700
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Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
PATRICK R. SCANLON, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a pipe structure for an automotive electric
air conditioner compressor. Claim 1, reproduced below with emphasis
added, is illustrative of the claimed subject matter:
1. A pipe structure of an electric compressor,
comprising:
an electric compressor disposed in an engine
compartment of a vehicle and configured to be driven by
a battery power source to compress a refrigerant;
a harness connecting portion disposed on an upper
surface of the electric compressor and electrically
connecting a harness to the electric compressor; and
a pipe connecting portion disposed forward of the
harness connecting portion and connecting an air
conditioner pipe to the electric compressor,
wherein at least a part of the air conditioner pipe is
disposed above the electric compressor;
wherein the at least a part of the air condition pipe is
disposed forward of the harness connection portion and
configured to protect the harness connection portion in
the event of a collision.

REFERENCES
Goto US 5,651,260 Jul. 29, 1997
Kirby US 2007/0001062 A1 Jan. 4, 2007
REJECTIONS
Claims 1, 2, 9, and 10 stand rejected under 35 U.S.C § 102(b) as
anticipated by Goto. Ans. 3.
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Claims 3-8 stand rejected under 35 U.S.C § 103(a) as unpatentable
over Goto and Kirby. Ans. 5.
ANALYSIS
Claims 1, 2, 9, and 10 – Anticipation – Goto
Independent claim 1 requires that at least part of the air conditioner
pipe be disposed “forward” of the compressor motor’s electric harness
connection portion. App. Br. 19 (Claims Appx.). Claim 2 depends from
claim 1 and therefore contains the same limitation. Id. Independent claims
9 and 10 contain similar language. App. Br. 20-21.1 The Examiner found,
inter alia, that Goto discloses a pipe structure of an electric compressor
wherein at least a part of an air conditioning pipe is disposed forward of a
high-voltage harness connecting portion. Ans. 3-4. In support of this
finding the Examiner relied on Goto Figure 1, as well as an annotated
version of a portion of Figure 1 that the Examiner reproduced in the Answer
as “Fig. S.” Ans. 4. Figure S portrays the compressor motor 11 of Figure 1,
as well as labels ‘X,’ ‘Y,’ and ‘Z,’ added by the Examiner, which, according
to the Examiner, correspond to the pipe connecting portion, air conditioner
pipe, and harness connecting portion, respectively, of the compressor motor.
Ans. 3-4. The Examiner also added a horizontal arrow pointed to the left of
the figure labeled “Forward direction.” Ans. 4.
Appellant argues that the Examiner’s Figure S is “the primary basis
for [the] rejection,” but that Figure S “is not a proper prior art reference
under 35 U.S.C. § 102(b)” because “[n]one of the Examiner-labeled

1 The Specification expressly defines “forward” and “front” to refer to a
forward direction on the front-to-back axis on which the vehicle would
normally travel. Spec. 3-4.
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elements are discussed in the Goto disclosure.” App. Br. 7-8. Appellant
further argues that “Goto fails to disclose, or even show, an air conditioner
pipe . . . arranged in front of a harness connection portion such that the air
conditioner pipe protects the harness connection portion.” App. Br. 11-12.
The Examiner responds that “even though FIG. 1 of Goto does not
specifically reference[] the direction and mutual spatial relationship between
key features (harness, compressor, pipe, pipe connecting portion and harness
connecting portion), FIG. S, as marked up by the Examiner, does so without
altering the disclosed matter.” Ans. 11. The Examiner goes on to note that
“figures 10-14 depict the exact same relationship between said claimed
features in order to stress the importance of the manner in which they are
assembled.” Id. Finally, the Examiner notes that Goto discloses the
“operating section []15” is located on the instrument panel in the vehicle’s
passenger compartment, and constitutes a “valid reference point” from
which “it is safe to assume that the pipe” is forward of the harness. Id.
As an initial matter, we understand the Examiner’s anticipation
rejection to be based on Goto and not on any portion of Figure S that is not
taken directly from Goto Figure 1. The Examiner does not – and of course,
cannot – base his finding that the air conditioner pipe is forward of the
harness connection merely by referring to his own annotations on Figure S.
That said, we agree with Appellant that the Examiner has not shown by a
preponderance of the evidence that Goto teaches placing the air conditioner
pipe forward of the compressor’s electrical harness connection. As the
Examiner acknowledges, Goto Figure 1 “does not specifically reference[]
the direction and mutual spatial relationship” between the harness and the
pipe. Ans. 11. Nor do Figures 10-14, which represent essentially the same
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embodiment as that shown in Figure 1 (Goto, col. 11, l. 29 – col. 12, l. 33;
figs. 10-14), so it stands to reason that these figures’ depiction of compressor
motor 11 would be the same as that shown in Figure 1. Finally, it is simply
unclear to us how locating the operating section 15 on the automobile’s
instrument panel constitutes a “valid reference point” from which one can
assume that the pipe shown attached to the compressor motor 11 is forward
of the harness. Because we are not persuaded that Goto teaches an electric
compressor having a pipe forward of the harness connection portion, we do
not sustain the Examiner’s rejection of claims 1, 2, 9, and 10 as anticipated
by Goto.
Claims 3-8 – Obviousness – Goto and Kirby
The Examiner’s obviousness rejection of claims 3-8 is based on his
finding that Goto discloses an electric compressor having a pipe that is
forward of the harness connection portion. Because, as discussed above, we
disagree with this finding, we cannot sustain the rejection of claims 3-8 as
obvious over Goto and Kirby.
DECISION
For the above reasons, the Examiner’s rejection of claims 1-10 is
reversed.
REVERSED

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