Ex Parte Tønnessen

Patent Trial and Appeal Board

Feb 28, 2017

14123075 (P.T.A.B. Feb. 28, 2017)

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.
14/123,075 11/27/2013 Leif Arne T0nnessen FMCE-P231 8459
7590 02/28/2017
Henry Query, P.C.
2100 Manchester Road
Suite 506
EXAMINER
HANSEN, KENNETH J
Wheaton, IL 60187 ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
02/28/2017 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 LEIF ARNE TONNES SEN
Appeal 2017-001178
Application 14/123,075
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and NATHAN A. ENGELS,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lief Arne Tonnessen (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject claims 1—17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-001178
Application 14/123,075
CLAIMED SUBJECT MATTER
Independent claims 1 and 13 are pending. Claim 1, reproduced
below, illustrates the claimed subject matter.
1. A compressor system comprising:
a compressor unit and a motor unit which each comprise a
rotor arranged on bearings;
said motor unit and bearings being located in a housing
and submerged in a cooling, lubricating and barrier liquid
enclosed in the housing;
a cooling arrangement to cool the fluid; and
a circulation arrangement to circulate the fluid through the
housing;
wherein the motor unit is a permanent magnet motor unit.
REJECTIONS
I. Claims 1—7 and 9-12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Saban (WO 2010/014640 A2; pub. Feb. 4, 2010). Final
Act. 2.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Saban and Lorett (US 4,669,961; iss. June 2, 1987). Final
Act. 5.
III. Claims 13—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Saban, Guinard (US 3,694,110; iss. Sept. 26, 1972) and
Stinessen (US 5,382,141; iss. Jan. 17, 1995). Final Act. 5.
ANALYSIS
Rejection I
Appellant argues claims 1—7 and 9-12 as a group. Appeal Br. 15. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 2—
7 and 9—12 stand or fall with claim 1.
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Application 14/123,075
Reasoning
The Examiner finds that the embodiment of Saban’s Figure IB
discloses the claimed pumping system, except that it includes a “pumping
companion device 104a” instead of the recited “compressor unit.” Final Act.
2—3. The Examiner finds, however, that the embodiment of Saban’s Figure
1C discloses a compressor 104b, and concludes that it would have been
obvious to provide a compressor 104b in place of the pump 104a in the
embodiment of Figure IB. Id. at 3.
Appellant first argues that one skilled in the art “would not have found
it obvious to modify Saban in the manner suggested by the Examiner.”
Appeal Br. 7. According to Appellant, although Saban discloses a generic
embodiment wherein an electric machine 102 is coupled to a companion
device 104 that can be a pump or compressor, Saban does not “teach or
suggest that a pump and compressor are interchangeable in the non-generic
embodiments of the invention disclosed later in the application, and . . . the
person of ordinary skill in the art would recognize that these components are
not interchangeable.” Id. at 7—8, 11.
The pump and compressor are not interchangeable, Appellant argues,
because compressors operate at much higher speeds than pumps, and so
require different cooling schemes. Appeal Br. 12. In particular, the bearings
that support a compressor drive shaft must be cooled to prevent overheating.
Id. Appellant contends that Saban recognizes this requirement, and thus the
bearings 122 supporting the compressor 104b in Figure 1C are exposed to
the process fluids for cooling thereby, whereas the bearings 122 supporting
the pump 104a in Figure IB are not exposed to cooling fluid or otherwise
cooled. Id. at 11-12. Thus, Appellant asserts, one skilled in the art “would
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Application 14/123,075
not have found it obvious to replace the pump 104a with a compressor,”
because the pumping system embodiment of Figure IB cannot cool the
compressor bearings, which would “sufficiently discourage the person of
ordinary skill in the art from attempting to replace the pump 104a with a
compressor.” Id. at 12.
The Examiner responds, referring to Saban’s statement that “the
companion device 104 can include one or more of a [pump or compressor]”
(Saban p. 12,11. 2-4), that Saban discloses the interchangeability of a pump
and a compressor for use with the disclosed motor. Ans. 14. The Examiner
acknowledges that pumps differ from compressors, but disagrees that this
fact contradicts their interchangeability disclosed in Saban. Id.
The Examiner has the better argument. Saban’s statement that the
motor companion device can be either a pump or compressor indicated their
interchangeability. Further, “[a] person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton,” fitting pieces of multiple
patents (or embodiments thereof) like pieces of a puzzle and taking into
account “the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418—
421 (2007). We are not persuaded that one skilled in the art could not
substitute a compressor for the pump of the embodiment of Saban’s Figure
IB and also appreciate and accommodate the need to cool the bearings
supporting the compressor shaft.
Appellant also argues that one skilled in the art, upon recognizing that
the embodiment of Figure IB could not cool the compressor bearings, would
not modify the embodiment of Figure IB to include such cooling means, but
rather would “discard the pumping embodiment of Figure IB and go straight
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Application 14/123,075
to the compressor embodiment of Figure 1C.” Appeal Br. 13. Given that
Saban discloses the embodiments of Figures IB and 1C as exemplary (Spec,
p. 5, 12, 17, Appellant has not persuaded us that the embodiment of Figure
1C is the only obvious implementation of a pump system employing a
compressor.
Findings
Appellant argues that, even if one skilled in the art would have found
it obvious to modify Saban as suggested by the Examiner, “the resulting
compressor system nevertheless fails to disclose the claimed invention.”
Appeal Br. 7.
Claim 1 recites the “motor unit [with a rotor] and bearings being
located in a housing and submerged in a cooling, lubricating and barrier
liquid enclosed in the housing.” According to Appellant, the broadest
reasonable interpretation of the barrier liquid recited in this limitation
requires that the liquid fill, and be contained in, the housing at certain
pressure. Appeal Br. 13—14 (citing original Specification p. 4,11. 34—35
(“The motor unit 2 and first, second and third bearings 4, 5, 6 are all
arranged within a housing 7, filled with a liquid.”), p. 4,11. 36—39 (“the
liquid also act as a barrier fluid, as it is kept at a pressure equal to or above a
pressure of the process fluid” to “prevent the process fluid from entering the
housing”)). Appellant appears to additionally construe this limitation to
require that all of the bearings are submerged in the barrier liquid.
Appellant contends that the bearings 122 of the pump 104a of Saban’s
embodiment of Figure IB are located in housing 148 that does not include
the cooling fluid present in the motor housing 110a. Appeal Br. 14. Further,
the bearings 122 of the compressor 104b of Saban’s embodiment of Figure
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1C are exposed to the process fluids (not a cooling barrier liquid) in housing
148 as the process fluids are conveyed from the inlets 150 to the outlets 152.
Id.
The Examiner appears to construe this limitation to require that less
than all of the bearings are submerged in the barrier liquid. The Examiner
thus disagrees with Appellant, arguing that Saban’s motor bearings are in
housing 110a, not housing 148. Ans. 16. Housing 110a, the Examiner
contends, includes “a cooling[,] lubricating and barrier liquid.” Id. (citing
Saban p. 13,11. 11—13 (discussing the operating pressure of the motor
housing cooling liquid)).
Given that claim 1 does not specify whether all of the bearings or
some of the bearing are submerged in the barrier liquid, the Examiner
reasonably construes the limitation to require that less than all of the
bearings are submerged in the barrier liquid. We therefore are not persuaded
that the Examiner’s finding is in error. Some, but not all, of Saban’s
bearings are submerged in a barrier liquid.
For the reasons set forth above, we sustain the rejection of claim 1 as
obvious over Saban. Claims 2—7 and 9-12 fall with claim 1.
Rejection II
Appellant makes no argument that claim 8 would be patentable over
Saban and Lorett, if claim 1 is not patentable over Saban. We therefore
sustain Rejection II.
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Application 14/123,075
Rejection III
Appellant argues claims 13—17 as a group. Appeal Br. 20. We select
claim 13 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 14—17
stand or fall with claim 13.
Independent claim 13 recites, inter alia, the housing comprising “a
first chamber” for the motor, “a second chamber” for the compressor, and “a
third chamber” having a bearing therein, wherein the second (compressor)
chamber is located between the first (motor) chamber and the third (bearing)
chamber, and the first and third chambers are “fluidly sealed from the
second chamber and contain[] a cooling, lubricating and barrier liquid within
which the motor unit and the first bearing are submerged,” and wherein
“during operation of the compressor system the fluid is circulated between
the first and third chambers.”
The Examiner finds that Saban discloses a compressor unit, motor,
rotors, bearings, and a housing comprising a first chamber for the motor, a
second chamber for the compressor, and a third chamber having a bearing
therein. Final Act. 5—6. The Examiner provides the following annotated
version of Saban’s Figure IB to illustrate the first through third chambers.
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Id. at 7. The Examiner also finds that Saban’s first and third chambers are
fluidly sealed from its second chamber, contain a cooling, lubricating and
barrier liquid within which the motor is submerged, and that fluid is
circulated between the first and third chambers. Final Act. 6 (citing Saban
p. 18,11. 29-30 (“The electric machine 102b may also be provided without
an integrated fluid circulation pump 130.”)).
The Examiner then finds that, although Saban’s first bearing (in the
third chamber) is not expressly disclosed to be submerged in a cooling,
lubricating barrier liquid, bearings 122 in the motor housing 110a are
submerged in such a liquid. Final Act. 6. Further, Guinard discloses
bearings 22 submerged in barrier liquid. Id. (citing Guinard, Figs. 2 and 3,
2:58—62). The Examiner concludes that it would have been obvious to one
having ordinary skill in the art to have used Gurnard’s submerged bearings
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in Saban’s third chamber “to provide a reliable bearing arrangement using
liquid cooling.” Id.
Regarding the second (compressor) chamber being located between
the first (motor) chamber and the third (bearing) chamber, the Examiner
finds that Stinessen discloses a compressor system with oil cooled and
lubricated bearings 15, and a compressor chamber located between a motor
chamber and a bearing chamber. Final Act. 7. The Examiner concludes that
it would have been obvious to one having ordinary skill in the art to have
positioned Saban’s compressor chamber between the bearing chamber and
the motor chamber “to effectively support the driven shaft for balanced
rotation as shown by Stinessen.” Id. at 7—8.
Findings
Appellant again argues that the Examiner erred in finding that the
embodiment of Saban’s Figure IB discloses a compressor, when it instead
discloses a pump, and again argues that that one skilled in the art would not
have found it obvious to replace the pump 104a in the embodiment of Figure
IB with a compressor. Appeal Br. 15. For the reasons set forth above
regarding Rejection I, we are not persuaded by this argument.
Reasoning
Appellant also argues that, even if it would have been obvious to
replace the pump 104a with a compressor, the resulting combination of
Saban, Guinard and Stinessen would not render claim 13 obvious. Appeal
Br. 15—16. According to Appellant, the Examiner’s reason for modifying
Saban in accordance with Stinessen (i.e., to effectively support the drive
shaft for balanced rotation (Final Act. 8,11. 2—6)) is not valid. Appeal Br.
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Application 14/123,075
19. According to Appellant, Saban’s “right-most bearing 122 already
effectively supports the drive shaft for balanced rotation,” such that one
skilled in the art “seeking to improve Saban would have absolutely no
reason to look to Stinessen for the teaching that a bearing should be located
on the end of the shaft so that the compressor will be positioned between this
bearing and the motor.” Id. According to Appellant, one skilled in the art
“has already been taught by Saban that such a [supporting] bearing
arrangement is possible.” Id.
Stinessen shows that, if the compressor 12, 13 and motor 8 are located
adjacent each other along a common shaft 9, 11, there would be bearings at
multiple points along the shaft 9, 11, including at the ends thereof, which
includes a bearing 16 to support the shaft 9, 11 on an end opposite the motor
8. See Stinessen Fig. 1, 6:4—27.
Absent an explanation of why the arrangement of motor, compressor,
and bearing chambers in Stinnessen is not a viable arrangement, we are not
persuaded that one skilled in the art would only look to the bearing chamber
arrangement provided in Saban, and would not consider placing a bearing
chamber at the end of Saban’s shaft 142a opposite the motor, particularly if
one skilled in the art would understand that providing a compressor in the
embodiment of Saban’s Figure IB would require a liquid cooled bearing to
support the faster shaft speeds. We therefore are not persuaded by
Appellant’s argument that the Examiner’s reasoning lacks a rational basis.
For the reasons set forth above, we sustain the rejection of claim 13.
Claims 14—17 fall with claim 13.
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DECISION
We AFFIRM the rejection claims 1—7 and 9—12 under 35 U.S.C.
§ 103(a) as unpatentable over Saban.
We AFFIRM the rejection claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Saban and Forett.
We AFFIRM the rejection claims 13—17 under 35 U.S.C. § 103(a) as
unpatentable over Saban, Guinard and Stinessen.
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)(l)(iv).
AFFIRMED
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