Ex Parte Sun

Board of Patent Appeals and Interferences

Jul 26, 2011

11386306 (B.P.A.I. Jul. 26, 2011)

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.
11/386,306 03/22/2006 Zili Sun 60,298-578; ST 316 2327
26096 7590 07/26/2011
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
DAVIS, MARY ALICE
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
07/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZILI SUN
____________

Appeal 2009-012456
Application 11/386,306
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, KEN B. BARRETT, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/386,306

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STATEMENT OF THE CASE
Zili Sun (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a scroll compressor. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. A scroll compressor comprising:
a non-orbiting scroll member and an orbiting scroll
member each having a base and a generally spiral wrap that
extends from said base, said spiral wraps inter-fit to define a
compression chamber there between, wherein said non-orbiting
scroll member and said orbiting scroll member each comprise a
microstructure having graphite nodules, and said non-orbiting
scroll member and said orbiting scroll member are radially and
axially compliant relative to each other; and
an ether-based lubricant that coats at least a portion of
said non-orbiting scroll member and said orbiting scroll
member.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-3 and 10-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tojo (U.S. Patent No. 6,286, 334 B1, issued Sep. 11,
2001), Fukuhara (U.S. Patent No. 5,277, 562, issued Jan. 11, 1994), and
Hugenroth (U.S. Patent No. 6,077,057, issued Jun. 20, 2000). Ans. 3-8.
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tojo, Fukuhara, Hugenroth, and Ohta (U.S. Patent No. 6,176,094 B1,
issued Jan. 23, 2001). Ans. 8-9.
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Claims 1, 7-9, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ishihara (U.S. Patent No. 6,189, 322 B1, issued Feb. 20,
2001), Fukuhara, and Hugenroth.1 Ans. 13-18.
Claims 1-3 and 10-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Tojo and Fukuhara.2 Ans. 15.
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tojo, Fukuhara, and Ohta.3 Ans. 13-18.
Claims 1, 7-9, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ishihara and Fukuhara.4 Ans. 18-19.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 We have consolidated the grounds of rejection of claims 8 and 9 and the
ground of rejection of claims 1, 7, 20, and 21 into a single ground of
rejection because using legal precedent to support the rejections of claims 8
and 9 does not change the ground of rejection from the ground of rejection
used to reject claims 1, 7, 20, and 21.
2, 3, 4 The Answer sets forth undesignated new grounds of rejection in the
Response to Argument section. Since Appellant has not filed a petition
under 37 C.F.R. § 1.181(a) within two months from the mailing date of the
Answer requesting that the undesignated new grounds of rejection in the
Answer be designated as a new ground of rejection, Appellant has waived
the right to request reopening of prosecution. See Manual of Patent
Examining Procedure (MPEP) § 1207.03 IV, which states that “[a]ny
allegation that an examiner’s answer contains a new ground of rejection not
identified as such is waived if not timely raised (i.e., by filing the petition
within two months of the answer) by way of petition under 37 C.F.R.
1.181(a).”

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OPINION
Obviousness based upon either Tojo or Ishihara
in combination with Fukuhara and Hugenroth

The Examiner finds that Tojo discloses the inventions of independent
claims 1 and 12 substantially as claimed and that Ishihara discloses the
invention of independent claim 1 substantially as claimed, except that
neither Tojo nor Ishihara expressly discloses that the scroll members include
a microstructure having graphite nodules and are radially and axially
compliant relative to each other. Ans. 3-6 and 9-10. The Examiner also
finds that Fukuhara teaches scroll members including a microstructure
having graphite nodules and Hugenroth teaches scroll members that are
radially and axially compliant relative to each other. Ans. 6-7 and 10-11.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to modify the scroll members of either Tojo or
Ishihara to be made of a material with a microstructure having graphite
nodules as taught by Fukuhara in order that the scroll members exhibit high
strength and wear resistance and to have the scroll members be radially and
axially compliant relative to each other as taught by Hugenroth “in order to
provide radial and axial compliance during operation of the compressor.”
Ans. 8 and 12.
Appellant contends that the Examiner’s reasoning to modify either
Tojo or Ishihara by Hugenroth fails to establish a prima facie case of
obviousness. App. Br. 3 and 5. Appellant notes that the Examiner’s
rejection indicates that it would have been obvious to make the scrolls of
either Tojo or Ishihara radially and axially compliant in order to provide
radial and axial compliance. Id. Thus, Appellant asserts the Examiner’s
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reasoning is conclusory as it “merely points out what the arrangement of
Hugenroth might do without identifying any reason that would prompt one
to make the modification in the first place.” Id.
We agree with Appellant that the Examiner’s combination of either
Tojo or Ishihara and Fukuhara with Hugenroth would not have been obvious
to a person of ordinary skill in the art. As asserted by Appellant, the
Examiner’s articulated reasoning of making the scroll members of either
Tojo or Ishihara radially and axially compliant in order to provide radial and
axial compliance is conclusory. Moreover, the Examiner’s articulated
reasoning does not have a rational underpinning to support a conclusion of
obviousness without some evidence or persuasive explanation as to why one
of ordinary skill in the art would have considered radial and axial
compliance desirable. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1-3 and 10-23 under 35 U.S.C. § 103(a) as unpatentable over Tojo,
Fukuhara, and Hugenroth and the Examiner’s rejection of claims 1, 7, 8, 9,
20, and 21under 35 U.S.C. § 103(a) as unpatentable over Ishihara, Fukuhara,
and Hugenroth. Since the rejection of claims 4-6 is based upon the same
faulty reasoning lacking rational underpinning and since Ohta fails to cure
the deficiencies of the combination of Tojo, Fukuhara, and Hugenroth, we
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also do not sustain the Examiner’s rejection of claims 4-6 under 35 U.S.C. §
103(a) as unpatentable over Tojo, Fukuhara, Hugenroth, and Ohta.

Obviousness based upon Tojo and Fukuhara
In the Response to Argument section of the Answer, the Examiner
sets forth grounds of rejection under 35 U.S.C. § 103(a) based upon Tojo
and Fukuhara as noted supra. Ans. 14-17. In these grounds of rejection, the
Examiner finds that Tojo discloses the inventions of independent claims 1
and12 substantially as claimed and in particular, that Tojo inherently
discloses the scroll members to be radially and axially compliant relative to
each other. Ans. 3-6 and 14-15. The Examiner also finds that Tojo fails to
disclose that the scroll members include a microstructure having graphite
nodules, but that this is taught by Fukuhara. Ans. 3-6. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art to modify the scroll members of Tojo to include a microstructure having
graphite nodules as taught by Fukuhara in order to have high strength and
wear resistant scroll members. Ans. 8.
Appellant contends that Tojo’s scroll members are not inherently
radially and axially compliant relative to each other because at page 7,
paragraph 30, the present Specification states that “[c]ompliance allows the
scrolls 32 and 34 to separate under certain conditions, such as to allow a
particle to pass through the scroll compressor 20” and the Examiner has not
pointed to any structure or basis in Tojo that would indicate its scroll
members are separable under the compression forces to allow particles to
pass through the compressor. Reply Br. 1-2. In response to the Examiner’s
finding that, since radial and axial compliance is known in scroll
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compressors, the results of the combination would be predictable, Appellant
also contends that here the prior art elements are not combined according to
known methods to yield predictable results because the use of the ether-
based lubricant in combination with the microstructure having graphite
nodules and radial and axial compliance causes a synergistic effect to allow
the claimed scroll compressor to alleviate wear when operating under more
severe conditions with greater capacity. Reply Br. 2.
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). We agree with the Examiner that Tojo’s scroll members are
inherently radially and axially compliant. Appellant’s Specification defines
radial compliance as maintaining the wraps 46 of the non-orbiting scroll 32
and orbiting scroll 34 in contact under normal operating conditions and axial
compliance as maintaining the wrap 46 of the orbiting scroll 34 in contact
with the base portion 44 of the non-orbiting scroll 32 to provide a seal under
normal operating conditions. Spec. 8. Tojo’s Figures 1 and 5 clearly show
that the scroll members 6, 7 satisfy the Specification’s definition of radial
and axial compliance because the spiral wraps of the non-orbiting scroll
member 7 are maintained in contact with the spiral wraps of the orbiting
scroll members 6 and the spiral wraps of the orbiting scroll member 6 are
maintained in contact with the base portion of non-orbiting scroll member 7.
Thus, we are satisfied that the missing descriptive matter of radial and axial
compliance is necessarily present in the scrolls described in Tojo.
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In response to Appellant’s argument that Tojo’s scrolls are not
inherently radially and axially compliant because the Examiner has not
pointed to any structure or basis in Tojo indicating that the scrolls are
capable of separating under certain conditions so as to allow a particle to
pass through the scroll compressor, we note that Appellant has not defined
what structure and under what conditions the scrolls 32 and 34 of the present
claimed subject matter separate to allow particles to pass through the
compressor. We also note that the Specification describes a tap T which
taps a compressed refrigerant to a chamber behind the base of either the
orbiting or non-orbiting scroll 34, 32 to bias the two scroll members 32, 34
into contact. Spec. 8. If the scroll members 32, 34 are biased into contact
with each other, it is not clear how the scrolls could separate to allow a
particle to pass through the scroll compressor. Thus, without a more
detailed explanation as to how the scrolls 32, 34 of the present claimed
subject matter separate to allow particles to pass through, we find that the
Examiner has established a prima facie case of obviousness based upon
Tojo’s scroll members inherently meeting the claim limitation of being
radially and axially compliant and Appellant’s have not successfully
rebutted that prima facie case of obviousness.
Moreover, we are not convinced by Appellant’s arguments that the
prior art elements are not combined according to known methods to yield
predictable results because the claimed arrangement combines a
microstructure having graphite nodules, radial and axial compliance, and an
ether-based lubricant to provide a synergistic benefit of the combination as a
whole. The Examiner has established that all of the claim elements of a
microstructure having graphite nodules, radial and axial compliance, and an
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ether-based lubricant are known in the prior art. Therefore, the combination
of those known elements would appear to be predictable. Since the
Examiner has articulated a reason why it would have been obvious to
modify Tojo’s structure such that the scroll members comprise
microstructures having graphite nodules, advantages such as synergy which
might flow naturally from the combination do not preclude a conclusion of
obviousness. See Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). To the
extent that Appellant is arguing the secondary indicia of unexpected results,
we note that Appellant has presented attorney argument in lieu of evidence.
Attorney argument is of little probative value in proving secondary indicia of
nonobviousness such as unexpected results by the claimed subject matter. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
In view of the foregoing, we sustain the Examiner’s rejections of
claims 1-3 and 10-23 under 35 U.S.C. § 103(a) as unpatentable over Tojo
and Fukuhara. Since Appellant has not argued the rejection of claims 4-6
separately from the rejection of claims 1-3 and 10-23 (see Reply Br. 2), we
also sustain the Examiner’s rejection of claims 4-6 under 35 U.S.C. § 103(a)
as unpatentable over Tojo, Fukuhara, and Ohta.

Obviousness based upon Ishihara and Fukuhara
The Examiner sets forth a ground of rejection based upon the
combination of Ishihara and Fukuhara. Ans. 18. The Examiner finds that
Ishihara discloses the invention of independent claim 1 substantially as
claimed including that Ishihara inherently discloses that the scroll members
are radially and axially compliant relative to each other. Ans. 9-10, 15, and
18. The Examiner also finds that Ishihara fails to disclose that the scroll
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members include a microstructure having graphite nodules which is taught
by Fukuhara. Ans. 9-10. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to modify the scroll members
of Ishihara to include a microstructure having graphite nodules as taught by
Fukuhara in order to have high strength and wear resistant scroll members.
Ans. 12.
Appellant contends that Ishihara’s scroll members are not inherently
radially and axially compliant relative to each other.
We agree with Appellant that Ishihara’s scroll members do not meet
the claim language of being axially compliant relative to each other. As
discussed supra, axial compliance maintains the wrap of the orbiting scroll
in contact with the base portion of the non-orbiting scroll to provide a seal
under normal operating conditions. In rejecting the claims, the Examiner
appeared to rely upon Ishihara’s Figure 11 embodiment (i.e., only
embodiment having scroll members) which shows the wraps of each scroll
member do not come into contact with the base of the opposing scroll
member. See Ans. 9-10. Therefore, it does not appear that axial compliance
is inherent in Ishihara.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 7-9, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Ishihara and Fukuhara.

DECISION
We reverse the Examiner’s rejection of: claims 1-3 and 10-23 under
35 U.S.C. § 103(a) as unpatentable over Tojo, Fukuhara, and Hugenroth;
claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Tojo, Fukuhara,
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Hugenroth, and Ohta; claims 1, 7, 8, 9, 20, and 21 under 35 U.S.C. § 103(a)
as unpatentable over Ishihara, Fukuhara, and Hugenroth; and claims 1, 7, 8,
9, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over the combination
of Ishihara and Fukuhara.
We affirm the Examiner’s rejections of claims 1-3 and 10-23 under 35
U.S.C. § 103(a) as unpatentable over the combination of Tojo and Fukuhara
and claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Tojo,
Fukuhara, and Ohta.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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