Ex Parte Sundheim et al

Patent Trial and Appeal Board

May 18, 2018

13240858 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/240,858 09/22/2011 Gregory S. Sundheim
23381 7590 05/18/2018
Dorr, Carson & Birney, P.C.
5299 DTC Boulevard
Suite 260
Greenwood Village, CO 80111
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2195/12(b) 3659
EXAMINER
COMINGS, DANIEL C
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
05/18/2018 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 GREGORY S. SUNDHEIM and CHRISTIAN L. PENA
Appeal2017-007457 1
Application 13/240,8582
Technology Center 3700
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references the Appeal Brief ("Br.," filed Oct. 13, 2016), the
Examiner's Answer ("Ans.," mailed Feb. 2, 2017), and the Final Office
Action ("Final Act.," mailed Nov. 30, 2015).
2 According to Appellants, the real party in interest is Gregory S. Sundheim.
Appeal Br. 3.
Appeal2017-007457
Application 13/240,858
BACKGROUND
According to Appellants, "[the] invention relates to the field of
portable, refrigerant recovery units." Spec. 1, 11. 3--4.
CLAIMS
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A portable, refrigerant recovery unit for transferring
refrigerant from a refrigeration system to a storage tank, said
recovery unit including:
first and second piston heads (21,21 ') respectively rigidly
attached to first and second piston rods (23 ,23 '), said piston
rods extending along a common fixed axis (25) and being
respectively rigidly attached to a yoke member (29) of a scotch
yoke arrangement (31) to extend in opposite directions along
said common fixed axis (25), said scotch yoke arrangement
(31) translating rotational motion of a driving member into
reciprocal movement of said yoke member (29) and rigidly
attached piston rods (23 ,23 ') and piston heads (21,21 ') along
said common fixed axis (25),
each piston head being slidably and sealingly received in
a cylinder (33,33') having a first side wall portion (35,35') and a
first end wall (37,37'), said first end wall having an inlet
(39,39') and outlet (41,41') therethrough with respective one-
way valves (43,43' and 45,45') therein, each piston head having
an outer surface (47,47') opposing said first end wall to define a
first chamber (49,49') with said first end wall (37,37') and said
first side wall portion (35,35') of said cylinder (33,33'),
said recovery unit further including incoming lines (7, 7')
in fluid communication with each other and each inlet of each
first chamber upstream of the respective valve (43,43') in each
inlet, said incoming lines additionally being in fluid
communication with the refrigerant in said refrigeration system,
each reciprocating piston rod (23 ,23 ') moving the
respective piston head (21,21 ') along said common fixed axis
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Application 13/240,858
(25) relative to each first end wall (37 ,37') between first and
second positions to respectively expand the volume of the first
chamber ( 49 ,49') to receive refrigerant from said refrigeration
system into said first chamber and to contract the volume of the
first chamber to drive said refrigerant out of said first chamber,
each piston head being in the respective first and second
positions when the other piston head is in the respective second
and first positions wherein any opposing forces (F ,F') exerted
by the refrigerant on the respective outer surfaces (47,47') of the
piston heads (21,21 ') along the common fixed axis (25)
counterbalance one another,
each piston head (21,21 ') further having an underside
(51,51') adjacent the piston rod (23,23') attached to the piston
head (21,21 ') and extending about the piston rod and outwardly
of the common fixed axis (25), said recovery unit further
including second end walls (53,53') respectively opposing the
undersides ( 51,51 ') of the respective piston heads (21,21 ') to
define a respective second chamber (55,55') with the respective
underside (51,51') and a respective second side wall portion
(57,57') of the respective cylinder (33,33'), each piston rod
(23,23') being respectively slidably and sealingly received in
the respective second end wall (53,53'),
said recovery unit further having a respective exhaust
line ( 61,61 ') extending between the respective second chamber
(55,55') and the respective incoming line (7,7'), each exhaust
line ( 61, 61 ') having a one-way valve ( 63, 63 ') therein to restrict
flow through the respective exhaust line ( 61,61 ') to one
direction from the respective second chamber (55,55') to the
respective incoming line (7, 7') to direct contents of the
respective second chambers (55,55') to the respective incoming
line (7,7') upstream of the respective inlet valve (43,43') to the
respective first chamber (49,49') wherein each reciprocating
piston rod (23 ,23 ') moves the respective piston head (21,21 ')
along the common fixed axis (25) relative to the respective first
end wall (37,37') of the respective cylinder (33,33') between
said first and second positions to respectively contract and
expand the volume of the respective second chamber (55,55'),
said one-way valve (63,63') in said respective exhaust line
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(61,61 ') being (a) opened as the volume of the respective
second chamber (55,55') contracts to positively drive the
contents of the respective second chamber (55,55') out of the
second chamber (55,55') and into the respective incoming line
(7, 7') and (b) closed as the volume of the respective second
chamber (55,55') expands.
Br. 27-28.
REJECTION
The Examiner rejects claims 1-24 under 35 U.S.C. § I03(a) as
unpatentable over Sundheim3 in view of Shao4 and Tasco. 5
DISCUSSION
Claims 1-4 and 6-14
With respect to claim 1, the Examiner finds that Sundheim discloses a
refrigerant recovery unit as claimed except that "Sundheim does not teach
the piston chambers each including an exhaust line connected behind the
pistons and provided with one-way outlet valve[s] for emptying the spaces
on the backstroke of the piston by 'positively' driving the contents of the
chamber out." Final Act. 3---6 (citing Sundheim, Fig. 4; ,r,r 24, 25, 30, 35).
With respect to these elements, the Examiner relies on Shao and Tasco. Id.
at 6-7.
As discussed below, we are not persuaded of reversible error in the
rejection of claim 1 by Appellants' arguments.
Appellants first argue that "[i]f Shao's teaching were applied to
[Appellants'] design as proposed by the Examiner, then there would among
3 Sundheim, US 2006/0127231 Al, pub. June 15, 2006.
4 Shao, US 5,076,769, issued Dec. 31, 1991.
5 Tasco Japan, Co., Ltd., Model TAI I OMX, Figure A, Mar. 1, 2011.
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Application 13/240,858
other things be a one-way valved inlet added to each of [Appellants']
underside piston chambers 55, 55' in ... Figure 4." Br. 14. Appellants
assert that the present invention does not include any one-way valved inlets
and Appellants "do[] not want valved inlets [in the] refrigerant system or
source 7,7' into [the] underside piston chambers 55, 55'." Id. at 14--15
(emphasis omitted). We are not persuaded by this argument at least because
Appellants have not shown how the addition of any one-way valved inlets
would be contrary to the claim language at issue here. Although the
Specification may indicate that one-way valved inlets are unwanted,
Appellants have not pointed to any language in the claim that excludes the
addition of components such as one-way valved inlets. See Ans. 13-14.
Next, Appellants argue that Shao teaches directing "the contents of his
underside piston chamber through a one way valve 22b to his discharge
line," which "is essentially the opposite of ... claim 1 which calls for the
contents of [the] underside piston chambers (55,55') to be directed to the
respective incoming refrigerant line 7, 7 upstream of the respective inlet
valve 43,43' to the respective first chamber 49,49' .... " Br. 15. Because
Shao teaches that the contents of the underside of the piston head are
directed to the discharge line, Appellants assert that Shao teaches away from
Appellants' design. Id. at 16. We agree with the Examiner that this
argument against Shao individually is not persuasive. Rather, the Examiner
notes that Shao "is relied upon only to teach the arrangement of valves at the
back of the piston and the use of the piston's backstroke for driving fluid out
from within the pump chamber." Ans. 15. And the Examiner separately
relies upon Tasco as showing "a pump having an outlet line arranged on the
backside of the piston heads thereof and communicating the back spaces of
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the pistons to the inlet line of the pump." Id. Thus, the Examiner relies on
Tasco, and not Shao, with respect to the requirement that the piston is
connected "upstream of the inlet of the front piston chamber so that
refrigerant driven out flows to the incoming line." See Final Act. 7. Thus,
Appellants' argument here fails to address specific combination relied upon
by the Examiner.
Further, to the extent Appellants argue that Shao teaches away from
the claimed invention, we disagree. Appellants argue that the present
Specification distinguishes Shao and that Shao discloses an alternative
embodiment than the embodiment in Appellants' Specification. Br. 14--16.
Appellants do not otherwise point to any evidence in the prior art showing
why Shao may be said to teach away from the claimed device. "A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, ... would be led in a direction divergent from the path that was
taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001 ). We note that a determination of whether a references teaches away is
based on the reference itself, and Appellants do not adequately explain how
any description of the embodiments in the present Specification is relevant
to this analysis. Further, the mere presence of an alternative arrangement in
the art is not sufficient to show that the art teaches away. See DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) ("A reference does not teach away ... if it merely expresses a general
preference for an alternative invention[.]"). Because Appellants have not
pointed to any evidence in the prior art that would have discouraged a person
of ordinary skill in the art from pursuing the path taken by Appellants, we
are not persuaded that Shao teaches away from the claimed device.
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Next, Appellants argue that Tasco's system includes drawbacks that
are specifically addressed in Appellants' disclosure. Br. 16. More
specifically, Appellants assert that claim 1 requires sealing the piston heads
in a cylinder and that Tasco 's piston heads are "not so sealed" and Tasco 's
piston rods and drive mechanism are designed to be exposed. Id. at 16-18.
Appellants also assert that Tasco has no check valves and does not need
them because the "piston undersides are not sealed to create second
chambers." Id. at 18. Still further, Appellants assert that Tasco's system
does not include an interior volume that is positively driven out by piston
movement through check valves. Id. at 18-19.
We are not persuaded by this argument for the reasons provided by
the Examiner. See Ans. 16-17. Specifically, as noted by the Examiner, the
rejection does not rely on Tasco as teaching sealed piston cylinders because
the Examiner finds that "Sundheim teaches ... a pump having a pair of
opposed piston heads each disposed in a counter balanced arrangement in
mutually separate, sealed piston cylinders and each having check valves
arranged to provide inlets and outlets to the piston cylinders." Id. at 17. The
Examiner makes clear that Tasco "is relied upon ... only [ to show] the
specific structure of the piston outlet connected to the pump's inlet line." Id.
at 16-1 7. Thus, we agree with the Examiner that Appellants' argument here
does not address the scope of the rejection before us, which does not rely on
Tasco for the elements discussed by Appellants.
Finally, Appellants assert, without further explanation, that "the
Examiner as to claim 1 has merely pointed to individual structural features
in various environments but there is no teaching, suggestion, motivation, or
anything else other than [Appellants'] own disclosure to put them together in
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the manner of claim 1." Br. 21. We are not persuaded of reversible error by
this argument. In the rejection, the Examiner set forth reasoning for making
the proposed combination of Sundheim, Shao, and Tasco. See Final Act. 6-
7. Appellants do not address the Examiner's reasoning, and without further
explanation, we are not persuaded that the Examiner's reasoning is
inadequate or based solely on Appellants' disclosure.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection of
claim 1. For the same reasons, we sustain the rejections of claims 2--4 and
6-14, for which Appellants do not present separate arguments.
Claim 5
Claim 5 depends from claim 1 and further requires:
wherein the common fixed axis (25) extends substantially
horizontally and each respective exhaust line ( 61 ,61 ') has an
inlet extending from the respective second chamber (55,55')
downwardly along a substantially vertical axis substantially
perpendicular to the horizontally extending common fixed axis
25 substantially at the lowest location of the respective second
chamber (55,55') relative to the common fixed axis (25).
Br. 29.
With respect to the rejection of claim 5, Appellants argue that
Sundheim discloses valved outlets extending horizontally and parallel to the
fixed axis; Shao teaches outlet valves stacked vertically; and "[ t ]here is no
teaching, suggestion, motivation, or anything else to lay [Shao] on its side"
or with the valves 20b, 22b at their lowest positions." Br. 20. Appellants
further assert that "[Shao] even appreciates the potential problem that may
exist in dealing with undesirable elements in the fluids he is pumping ... let
alone how to solve it." Id.
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As discussed below, we are not persuaded of reversible error in the
rejection by these arguments.
With respect to this claim, the Examiner finds that the combination as
proposed with respect to claim 1 would have the claimed orientation of
exhaust lines and inlet locations. In particular, the Examiner indicates that
when the pistons of the art are positioned such that the axes of the pistons
are aligned horizontally, Shao includes exhaust lines and inlets oriented as
claimed. Final Act. 8. We agree. The axis along the piston in Shao runs
perpendicular to the exhaust lines at the inlets to those lines, and if the piston
is arranged so that the axis is horizontal, the outlet passages 21 b, 23b can be
arranged at the lowest point of the chambers. See Shao, Fig. 1. Further, we
agree with the Examiner that Appellants' argument seems to only consider
the art individually and outside the context of the combination proposed by
the Examiner. Without further explanation from Appellants, we are not
persuaded that the Examiner erred in finding that one of ordinary skill in the
art would have maintained the orientation of the outlets of Shao relative to
the piston when combining Sundheim and Shao as proposed. As such, we
agree with the Examiner that the combination teaches the orientation
claimed.
Accordingly, we are not persuaded of reversible error with respect to
this rejection and we sustain it.
Claims 15-2 4
With respect to claims 15-24, Appellants argue only that the rejection
should be reversed for the same reasons discussed with respect to claims 1
and 5. Br. 23-24. Having found no reversible error with respect to claims 1
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and 5, we are also not persuaded of error with respect to claims 15-24.
Accordingly, we sustain the rejection of claims 15-24.
CONCLUSION
We AFFIRM the rejections of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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