Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardMay 9, 201813428072 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/428,072 03/23/2012 53609 7590 05/11/2018 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 FIRST NAMED INVENTOR Xianghong Wang 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. 508927 5142 EXAMINER THIEDE, PAUL WILLIAM ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 05/11/2018 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIANGHONG WANG and KENNETH D. HEUSLER1 Appeal2017-007215 Application 13/428,072 Technology Center 3700 Before JAMES P. CALVE, LEE L. STEPINA, and SEAN P. O'HANLON, Administrative Patent Judges. CAL VE, 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 1-12. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Bitzer Kuehlmaschinenbau GmbH is identified as the real party in interest. Appeal Br. 2. Appeal2017-007215 Application 13/428,072 CLAIMED SUBJECT MATTER Claims 1 and 6 are independent. Claim 1 is reproduced below. 1. A scroll compressor comprising: a housing; scroll compressor bodies disposed in the housing, the scroll bodies including a first scroll body and a second scroll body, the first and second scroll bodies having respective bases and respective scroll ribs that project from the respective bases, wherein the scroll ribs mutually engage, the second scroll body being movable relative to the first scroll body for compressing fluid; a drive unit configured to rotate a drive shaft to drive the second scroll body in an orbital path, the drive shaft having a longitudinal axis and an eccentric drive pin configured to engage a drive hub on the second scroll body; and a counterweight comprising: a hub portion with an opening therein that permits the counterweight to be assembled onto the drive shaft; and a perimeter portion attached to the hub portion, and positioned radially outward from the hub portion; wherein a radial axis divides the counterweight into a first region above the radial axis and into a second region below the radial axis, the perimeter portion being larger than the hub portion in the first region and in the second region, the mass of the hub portion in the first region being equal to the mass of the hub portion in the second region, and the mass in the perimeter portion being distributed between the first region and the second region such that the center of mass of the counterweight is located on the radial axis. Appeal Br. 18 (Claims App'x). REJECTIONS Claims 1-12 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2 Appeal2017-007215 Application 13/428,072 Claims 1, 2, 4--10, and 12 are rejected under 35 U.S.C. § I03(a) as unpatentable over Elson (US 2009/0136372 Al, pub. May 28, 2009) and Beagle (US 2009/0185931 Al, pub. July 23, 2009). Claims 1-5 are rejected under 35 U.S.C. § I03(a) as unpatentable over Reinhart (US 7,717,687 B2, iss. May 18, 2010), Fain (US 5,370,513, iss. Dec. 6, 1994), and Beagle. Claim 5 is rejected under 35 U.S.C. § I03(a) as unpatentable over Reinhart, Fain, Beagle, and Phelps (US 3,211,365, iss. Oct. 12, 1965). Claims 6-11 are rejected under 35 U.S.C. § I03(a) as unpatentable over Reinhart and Beagle. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable over Reinhart, Beagle, and Phelps. Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable over Reinhart, Beagle, and Fain. ANALYSIS Claims 1-12 as being indefinite Appellants argue claims 1-12 as a group. Appeal Br. 6-8. We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). "a radial axis" (claims 1, 6) The Examiner determines claim 1 is indefinite because it is unclear how "a radial axis" can divide the counterweight into volumetric regions like the first and second region when an axis is a line and a plane would have to be disposed through the radial axis to divide the counterweight into first and second regions. Final Act. 6-7. The Examiner determines it is unclear what is meant by "a first region above the radial axis" and "a second region below the radial axis" when a mere line cannot define a region or a space. Id. at 7. 3 Appeal2017-007215 Application 13/428,072 Appellants argue that "according to the claims, the radial axis does define a plane dividing the counterweight" and "[t]he Examiner's assertion, that the claimed radial axis is a line, appears to be based on the cross- sectional representation of FIG. 13." Appeal Br. 6. Appellants argue "the radial axis is necessarily shown as a line on the two-dimensional drawing of FIG. 13, [but] one of ordinary skill in the art would readily understand that limits of the first and second regions" and "upon inspection of FIG. 13, one of ordinary skill in the art would readily comprehend how the radial axis 300 divides the counterweight 230 into a first region 302 above the radial axis, and a second region 304 below the radial axis." Id. at 6-7. Inventors must "claim their invention in 'full, clear, concise, and exact terms."' One-E-Way, Inc. v. Int'! Trade Comm 'n, 859 F.3d 1059, 1062 (Fed. Cir. 2017) (quoting 35 U.S.C. § 112). A "claim is indefinite when it contains words or phrases whose meaning is unclear." Ex parte McAward, No. 2015-006416, slip op. at 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). Thus, "claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms." Id. (quoting Packard, 751 F.3d at 1313)). We agree with the Examiner that it is unclear what is meant by "a radial axis divides the counterweight into a first region above the radial axis and into a second region below the radial axis" where mass in the perimeter portion is distributed between regions "such that the center of mass of the counterweight is located on the radial axis." Appeal Br. 18 (Claims App'x). 2 2 Claim 6 recites a method that requires "axially distributing the mass of the counterweight such that the center of mass is on a radial axis that divides the 4 Appeal2017-007215 Application 13/428,072 An ordinary meaning of "axis" includes "a straight line about which a body or a geometric figure rotates or may be supposed to rotate" and "a straight line with respect to which a body or figure is symmetrical." See Definition of "axis" in Merriam-Webster at http://www.merriam- webster.com/ dictionary/axis (last viewed April 30, 2018). The Specification uses the term "axis" according to its first meaning to describe drive shaft 46 being rotated by stator 50 and rotor 52 "about a central axis 54." Spec. ,r 30. There is no indication in the Specification that counterweight 230 rotates about the claimed radial axis, however. It is not clear that Appellants have used the term "axis" according to its second understood meaning as a line of symmetry for a body or figure. The Specification illustrates central axis 54 of drive shaft 46 extending in an axial direction along drive shaft 46; however, drive shaft 54 has "an offset eccentric drive section 7 4 that has a cylindrical drive surface 7 5 ... about an offset axis that is offset relative to the central axis 54." Id. ,r 33. Similarly, Appellants disclose radial axis 300 in Figure 13 as defining first region 302 and second region where perimeter portion 308 is a larger size in first region 302 than second region 304. Appellants argue Figure 13 shows perimeter portion 308 of counterweight 230 as larger in first region 302 than in second region 304. Reply Br. 8. Appellants argue that counterweight 230 is not a symmetric T-shape in cross-section. Id. As a result, Appellants appear to be using the term "axis" in radial axis in an unconventional manner. It is not clear what the scope of this limitation entails, however. We agree with the Examiner that it is not clear counterweight into a first region and a second region." Appeal Br. 19 (Claims App'x). 5 Appeal2017-007215 Application 13/428,072 how a single line or axis can separate a volumetric counterweight 230 into two separate regions. If Appellants intend the "radial axis" to define a plane that divides counterweight 230 into an upper section (first region 302) and lower section (second region 304), claim 1 should recite this feature more clearly. One purpose of prosecution before the PTO is to "more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." In re Miyazaki, Appeal 2007-3300, 2008 WL 5105055, at *6 (BPAI 2008) (precedential) ("The USPTO, as the sole agency vested with the authority to grant exclusionary rights to inventors for patentable inventions, has a duty to guard the public against patents of ambiguous and vague scope."). Determining the meaning of this term is not an academic exercise; it is a distinction with a difference that matters to the scope of the claims because claim 1 ( and claim 6) requires the center of mass of the counterweight to be "located on the radial axis." Appeal Br. 18 ( claim 1 ), 19 ( claim 6). There is a difference in meaning between a counterweight that has its center of mass located along a radial axis that is a single line versus a center of mass located along a radial axis that is a planar element. "a first region" and "a second region" (claims 1, 6) We also agree with the Examiner that it is unclear, when the claim language is read in light of the Specification, how the mass of perimeter portion 308 can be distributed between the first and second regions to locate the center of mass of the counterweight on the radial axis. Final Act. 8; Ans. 5---6. This is so because the Specification discloses that a third region 310 must be added below second region 304 in order "to reduce or eliminate any 6 Appeal2017-007215 Application 13/428,072 imbalance in the counterweight 230." Spec. ,r 64. Claim 1 only recites a counterweight divided into two regions: a first region and a second region. Appellants do not address these findings of the Examiner. See Appeal Br. 7; Reply Br. 7-8; see 37 C.F.R. § 4I.37(c)(iv) ("The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant."); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board's practice as set forth in Ex Parte Frye of requiring appellants to identify error in a rejection); Ex Parte Frye, 94 USPQ 2d 1072, 1075-76 (BP AI 2010) (precedential) (holding that a panel reviews rejections for error based on issues identified by an appellant). The Examiner's findings are supported by a preponderance of evidence as illustrated by Appellants' Figures 12 and 13, which are reproduced below. FIG.U 7 Appeal2017-007215 Application 13/428,072 Fig. 13 is a section view of drive shaft 46 and counterweight 230 with first region 302, second region 304, and third region 310. Spec. ,r,r 60-64. Fig. 12 is a perspective view of drive shaft 46 and counterweight 230. As illustrated above, counterweight 23 0 includes a larger perimeter portion 308 connected to a disk-shaped hub portion 306. The Specification discloses that "conventional scroll compressors" typically have first regions corresponding to first region 302 that are "significantly larger than a second region corresponding to second region 304. Id. ,r 63. The Specification also discloses that this asymmetrical arrangement "causes an imbalance in the counterweight that results in the aforementioned undesirable moment during rotation of the counterweight, due to the counterweight center of mass being located well above the radial axis in the first region." Id. Appellants add a third region 310 below second region 304 "to reduce or eliminate any imbalance in the counterweight 230." Id. ,r 64. However, claim 1 does not recite a third region of the claimed counterweight. Thus, it is unclear if the claimed "second region" also includes a third region, which also is located below the radial axis in order to shift the center of mass of the counterweight 230 down to the radial axis 300. "By adding the third region 310 onto the second region 304, the center of mass of the counterweight 230 is shifted from the first region 302 down to the radial axis 300 to reduce or eliminate any undesirable moment introduced by the rotating counterweight 230." Id. The fact that the center of mass of the counterweight is claimed to be on the radial axis implies the counterweight may include third region 310 to enlarge the size/mass of perimeter 308 below radial axis 300. However, claim 1 does not recite a third region and merely recites that "the mass in the perimeter portion being distributed between the first region and the second 8 Appeal2017-007215 Application 13/428,072 region such that the center of mass of the counterweight is located on the radial axis." It is not clear if the third region is unclaimed, included as part of the claimed "second region," or some other arrangement is intended. Further complicating the interpretation of the claim language is Appellants' apparent use of "region" in the Specification and in the arguments in referring to left and right portions of counterweight 23 0 ( as illustrated in Figure 13), but the claims use "region" in referring to top and bottom portions of counterweight 230. "larger" We agree with Appellants that a skilled artisan would understand the term "larger" in claim 1 to mean the size of the perimeter portion is greater than the size of the hub portion when read in light of the Specification. A broad claim is not necessarily indefinite. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009). However, the Examiner's findings raise an issue of indefiniteness in view of this meaning and the lack of clarity in the claim scope when this meaning is given to claim 1. As discussed above, Appellants assert that the radial axis 300 divides perimeter portion 308 of counterweight 230 into two sections of different size. Appellants contend that perimeter portion 308 above radial axis 300 in first region 302 is larger than perimeter portion 308 located below radial axis 300 in second region 304. Therefore, it is unclear how the mass of perimeter portion 308 can be distributed between the recited first and second regions in such an imbalanced manner yet cause the center of mass of counterweight 230, which includes perimeter portion 308 and hub portion 306, to be located on radial axis 300 with the mass of the hub portions in the first and second regions being equal. 9 Appeal2017-007215 Application 13/428,072 Claim 11 We are not persuaded that claim 11 is indefinite because it claims "the radial axis divides the perimeter portion into two unequal parts." Final Act. 8-9. The meaning of this limitation is clear given the disclosure discussed above. Claim 6 recites that perimeter portion 308 is larger than hub portion 306 in both the first and second regions. Claim 11 recites that the perimeter portion is divided into unequal parts by radial axis 300. This meaning again points out the lack of clarity of the claims given the requirement of claim 6, from which claim 11 depends, that the center of mass is on the radial axis. For all the foregoing reasons, we sustain the rejection of claims 1-12 as being indefinite but not the separate rejection of claim 11 as indefinite. Prior Art Rejections of Claims 1-12 We agree with the Examiner that prior art such as Elson discloses a counterweight 88 that would be symmetrical about a radial axis that divides counterweight 88 into two equal sections, and Beagle teaches to locate the center of mass of counterweight 130 to maximize balancing of the overall rotational body within the scroll compressor during operation. Final Act. 10-12. We also note that Appellants have not claimed the radial axis in relation to any other element of a scroll compressor. Therefore, a radial axis may be positioned in any manner that divides a symmetrical counterweight into equal parts to place the center of mass of the counterweight along the radial axis. See Howmedica Osteonics Corp. v. Zimmer, Inc., 640 F. Appx 951, 957 (Fed. Cir. 2016) (non-precedential) ("[W]hen the PTO shows 10 Appeal2017-007215 Application 13/428,072 sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.") (quoting In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). However, because of the indefiniteness of the claims, as discussed above, we cannot resolve the prior art rejections. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."); see also In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) ( determinations of obviousness cannot be made for claims where a determination of claim scope requires considerable speculation and assumptions). We therefore reverse proforma the prior art rejections. Our decision is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. DECISION We affirm the rejection of claims 1-12 as being indefinite. We reverse proforma the prior art rejections of claims 1-12. 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 11 Copy with citationCopy as parenthetical citation