Ex Parte Nagata et al

Patent Trial and Appeal Board

Jan 30, 2018

13824414 (P.T.A.B. Jan. 30, 2018)

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.
13/824,414 03/18/2013 Itaru Nagata 70404.1424/sa 4814
54072 7590 02/01/2018
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
JKEATING@KBIPLAW.COM
u spto @ kbiplaw. com
epreston @ kbiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ITARU NAGATA,
KAZUHISA MISHIRO, and RYOTA ONISHI1
Appeal 2017-004222
Application 13/824,414
Technology Center 3700
Before KEN B. BARRETT, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge CALVE.
Opinion Dissenting filed by Administrative Patent Judge BARRETT.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1—18. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Sharp Kabushiki Kaisha is identified as the real party in interest. Appeal
Br. 2.
Appeal 2017-004222
Application 13/824,414
CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent. Illustrative claim 1 is shown below.
1. An air conditioner comprising:
a compressor that operates a refrigeration cycle;
an outdoor heat exchanger that is disposed outdoors;
an indoor heat exchanger that is disposed indoors;
an outdoor fan that supplies outdoor air to the outdoor
heat exchanger; and
an indoor fan that supplies indoor air to the indoor heat
exchanger, wherein the indoor fan and the outdoor fan are
driven and a refrigerant is flowed by the compressor in a
direction through the indoor heat exchanger and the outdoor
heat exchanger so as to perform a warming operation;
in a case where the outdoor heat exchanger has frost, the
indoor fan and the outdoor fan are stopped, and the refrigerant
is flowed in a direction opposite to the direction of the warming
operation so as to perform a defrosting operation;
in a case where a temperature of the outdoor heat
exchanger rises higher than a first temperature during the
defrosting operation, the warming operation is resumed;
in a case where the temperature of the outdoor heat
exchanger does not rise above the first temperature and an
output temperature of the refrigerant output from the
compressor declines below a second temperature during the
defrosting operation, existence of defective defrosting is
determined;
in a case where the existence of the defective defrosting
has been determined, the compressor and the outdoor fan are
driven, the indoor fan is stopped and the refrigerant is flowed in
the direction of the warming operation so as to perform a
defrosting preparation operation, thereafter, the defrosting
operation is resumed; and
in the case where the temperature of the outdoor heat
exchanger rises higher than the first temperature during the
defrosting operation, the warming operation is resumed without
performing the defrosting preparation operation.
Appeal Br. 14 (Claims Appendix).
2
Appeal 2017-004222
Application 13/824,414
REJECTIONS
Claims 1—14, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nishihara (WO 2010/032430 Al, pub. Mar. 25, 2010),
Yoshioka (US 2005/0257558 Al, pub. Nov. 24, 2005), and So (US 2004/
0003604 Al, pub. Jan. 8, 2004).
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nishihara, Yoshioka, So, and Kitakakiuchi (JP 04-
013037, pub. Jan. 17, 1992).
ANALYSIS
Claims 1—14, 17, and 18
Rejected Over Nishihara, Yoshioka, and So
The claimed air conditioner (claim 1) and method of controlling an air
conditioner (claim 7) perform a warming operation. When the outdoor heat
exchanger (coils) has frost, the direction of flow of refrigerant is reversed to
a cooling operation. If the temperature of the outdoor heat exchanger does
not rise sufficiently during defrosting and the temperature of refrigerant
output from the compressor falls below a second temperature, the refrigerant
is flowed in the direction of a warming operation but the indoor fan is
stopped while the outdoor fan is driven.
The Examiner finds that Nishihara determines a defective defrosting
operation as recited above and performs a defrosting preparation operation
by flowing refrigerant in the direction of the warming operation as claimed.
Final Act. 7—4. In particular, the Examiner relies on step S5 of Nishihara’s
defrosting operation to teach the claimed defective defrosting and warming
operation. Id. at 4 (citing Nishihara 36, 37, 66, 74, and 75); Ans. 2—3
(“step S5 condition constitutes existence of defective defrosting”).
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Appeal 2017-004222
Application 13/824,414
Nishihara teaches two defrosting operations. Step S4 blows ambient
air on the outdoor heat exchanger with outdoor fan. Step S5 operates the
compressor in a cooling circuit to defrost the outdoor heat exchanger.
Claims 1 and 7 require the refrigerant to be flowed in the direction of
a warming operation to perform a defective defrosting operation. Appeal Br.
14, 16. In contrast, Nishihara’s Step S5 flows refrigerant in the direction of
a cooling circuit to defrost the outdoor heat exchanger. Nishihara H 36—37.
In Step S5 of Nishihara’s defrosting operation, refrigerant flows in the
direction of a cooling circuit, not in the direction of a warming operation, as
claimed. A defrosting operation is performed “by switching of the four-way
valve is conducted at step S5.” Nishihara 136. “[T]he ‘defrosting operation
by switching of the four-way valve’ means a defrosting operation that is
conducted by switching the four-way valve 2 from the heating circuit to the
cooling circuit to cause the refrigerant to flow in an opposite direction in the
refrigerating cycle.” Id. 137 (emphasis added); see also id. ff 66, 72—73.
Nishihara also teaches that outdoor fan 8 and indoor fan 7 are stopped
when four-way valve 2 is switched to the cooling circuit for defrosting in
Step S5. Id. 173. In contrast to Nishihara’s defrosting operation, claims 1
and 7 require the outdoor fan to be driven during the defective defrosting
operation/preparation. Appeal Br. 14, 16 (Claims Appendix); see Ans. 2—3.
Nor does Nishihara’s alternative defrosting operation at step S4 teach
the claimed defective defrosting/defrosting preparation operation as claimed.
Nishihara teaches that if the outside atmospheric air temperature is > 1°C
(i.e., above freezing), operation of compressor 1 is stopped and outdoor fan
8 blows atmospheric air on the outdoor heat exchanger to defrost the coils.
Id. 1174—75; see also id. H 36-37, 42-A4. 49-50, Fig. 3.
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Appeal 2017-004222
Application 13/824,414
Because Nishihara’s ambient air defrosting operation (step S4) stops
the compressor, it does not teach the claimed defrosting operation, which
operates the compressor and refrigerant flow in a cooling direction, or the
claimed defective defrosting operation, which operates the compressor and
refrigerant flow in a warming direction. Id. at || 36—37, 42-43, 53—55.
The Examiner’s reliance on Yoshioka to teach “the compressor and
the outdoor fan being driven during defrosting and the indoor fan not
driven” (Final Act. 4) does not address these deficiencies in Nishihara.2 The
defrost cycle of Yoshioka “is a reverse cycle system in which a refrigerant is
circulated in the direction reverse to that of the heating cycle.” Yoshioka
| 614. Thus, it is a conventional defrost cycle like Step S5 of Nishihara.
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) holds that “[a]n invention need not operate differently than
the prior art to be patentable, but need only be different.” In other words, an
applicant is not required to define a claimed apparatus by its functionality or
how it operates. However, it also is well-settled that “[a] patent applicant is
free to recite features of an apparatus either structurally or functionally.” In
reSchreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appellants have claimed “[a]n air conditioner” by its structure and
how that structure functions when the outdoor heat exchanger has frost. The
compressor flows refrigerant in different claimed directions, and the outdoor
and indoor fans are selectively driven or stopped for different defrosting
operations.
2 The Examiner’s reliance on So to teach resumption of a warming operation
without performing the defective defrosting operation (Final Act. 4) does not
address this issue either. See Appeal Br. 12.
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Appeal 2017-004222
Application 13/824,414
Rather than merely reciting an intended use for the air conditioner, the
claims recite functional language that describes the design and construction
to be used for the claimed air conditioner whereby if the temperature of the
outdoor heat exchanger does not rise sufficiently during defrosting and the
temperature of refrigerant output from the compressor falls below a second
temperature, the refrigerant is flowed in the direction of a warming operation
but the indoor fan is stopped while the outdoor fan is driven. An air
conditioner with this claimed configuration has not been persuasively shown
to be obvious on this record.
Thus, we do not sustain the rejection of claims 1—14, 17, and 18.
Claims 15 and 16
Rejected Over Nishihara, Yoshioka, So, and Kitakakiuchi
The Examiner’s reliance on Kitakakiuchi to teach features of claims
15 and 16 (see Final Act. 7), which depend respectively from claims 1 and 7,
does not cure the deficiencies of Nishihara. See Appeal Br. 13 (arguing the
patentability of dependent claims for the same reasons as claims 1 and 7).
Thus, we do not sustain the rejection of claims 15 and 16.
DECISION
We reverse the rejection of claims 1—18.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ITARU NAGATA,
KAZUHISA MISHIRO, and RYOTA ONISHI
Appeal 2017-004222
Application 13/824,414
Technology Center 3700
Before KEN B. BARRETT, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
BARRETT, Administrative Patent Judge, dissenting.
I respectfully dissent from my colleagues’ decision.
The claims before us include apparatus claims directed to an air
conditioner and method claims directed to a method for controlling an air
conditioner. Neither the Examiner’s articulation of the rejection nor
Appellant’s allegations of error in the Examiner’s rejection draw a
substantive distinction between these two categories of claims. Appellant
argues that the prior art of record fails to disclose the performance of certain
actions. See, e.g., Appeal Br. 7. In other words, Appellant’s position is that
the prior art does not teach or suggest the operation of the claimed invention.
I fail to see how such arguments show error in the rejection of the apparatus
claims.
Appeal 2017-004222
Application 13/824,414
Apparatus claim 1 recites certain features that clearly are structural
limitations including, for example, a compressor, heat exchangers, and fans.
The Examiner found these limitations to be disclosed by Nishihara, Final
Act. 3, and there does not appear to be any dispute as to these findings. Cf.
Spec. 12 (describing the “conventional” air conditioner as having a
compressor, outdoor and indoor heat exchangers, and outdoor and indoor
fans). The apparatus claim also recites several conditional clauses in the
general format of the phrase “in a case where” followed by a description of
the performance of an operational step. Even assuming arguendo that those
recitations are functional limitations (as opposed to, e.g., mere statements of
intended use), I do not perceive that—and Appellant does not explain
persuasively how—those recitations create any structural distinctions
between the claimed air conditioner apparatus and that of the prior art.
Appellant’s argument is, at most, that the claimed air conditioner is operated
differently than the prior art air conditioner. However, “apparatus claims
cover what a device is, not what a device does.'” Hewlett-Packard Co. v.
Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Because
Appellant has not identified error in the rejection of the apparatus claims and
because Appellant does not argue separately the method claims, I would
affirm the Examiner’s rejection.
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