Ex Parte Wu et al

Patent Trial and Appeal Board

Jan 23, 2018

13800322 (P.T.A.B. Jan. 23, 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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SUB-02015-US-NP 7053
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/800,322 03/13/2013 Guolian Wu
01/25/2018130333 7590
PRICE HENEVELD LLP
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
01/25/2018 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):
ptomail @priceheneveld.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUOLIAN WU, STEVEN KUEHL,
ALBERTO GOMES, and NIHAT CUR1
Appeal 2017-000192
Application 13/800,322
Technology Center 3700
Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
AMBER L. HAGY, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 4, and 6—20. App. Br. 9.2 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 12—14.
1 Appellants list Whirlpool Corporation as the real party in interest. Appeal
Brief filed December 1, 2015 (“App. Br.”) 1.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
June 3, 2015 (“Final Act.”); the Examiner’s Answer mailed July 28, 2016
(“Ans.”); and the Reply Brief filed September 16, 2016 (“Reply Br.”).
Appeal 2017-000192
Application 13/800,322
STATEMENT OF THE CASE
Appellants explain that their invention is for “improving the energy
efficiency of [a] room air conditioner or unitary air conditioning system by
using [a] dual suction compressor.” Spec. 1.
Claims 1, 3, 4, and 6—9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thybo (WO 2011/072685; published June 23, 2011) and
Haussmann (US 5,076,353; issued Dec. 31, 1991). Final Act. 4—7.
Claims 10, 11, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thybo, Haussmann, and Lilie (WO 2011/134030 A2;
published Nov. 3, 2011). Final Act. 7—9.
Claims 12, 13, 16—18, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Thybo, Haussmann, and Karsten (US 2,215,327; issued
Sept. 17, 1940). Final Act. 9-11.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Appellants’ arguments primarily focus on independent claim 1.
Appellants also present separate arguments in relation to dependent claims 8
and 12. We address these arguments seriatim.
I.
Independent claim 1, reproduced below, illustrates the appealed
claims:
1. A high-efficiency air conditioning system for chilling an
interior of a building comprising:
a compressor;
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Application 13/800,322
a condenser having a condenser fan associated with the
condenser that moves air to cool the condenser;
at least two evaporator sections wherein a first evaporator
section operates at a first evaporator pressure and a second
evaporator section operates at a second evaporator pressure that
is different than the first evaporator pressure, wherein the
compressor is a dual suction compressor and the first evaporator
section and the second evaporator section are each separate
evaporators, and wherein at least two of the evaporator sections
share a common evaporator fin having thermal break portions
that provides reduced conductive thermal communication
between adjacent sections compared to a single continuous non-
interrupted fin evaporator;
at least a first throttling device and a second throttling
device having different throttling characteristics with the first
throttling device being less restrictive than the second throttling
device;
a plurality of refrigerant conduits; and
wherein a refrigerant fluid leaves the compressor along a
common refrigerant flow-path portion of a refrigerant circuit
from the compressor, through the condenser and into the first and
second throttling devices which deliver refrigerant fluid to a first
evaporator section and to a second evaporator section
respectively and wherein the common refrigerant flow-path is
split into a first evaporator circuit portion of the refrigerant
circuit and a second evaporator circuit portion of the refrigerant
circuit and wherein the first evaporator circuit portion operates
at a higher temperature than the second evaporator circuit portion
and includes both the first throttling device and the first
evaporator section and wherein the second evaporator circuit
portion includes both the second throttling device and the second
evaporator section and wherein the first evaporator circuit
portion and the second evaporator circuit portion merge and
rejoin the common refrigerant flow-path portion after the
refrigerant fluid passes through the first evaporator section and
the second evaporator section.
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Application 13/800,322
IA.
The Examiner finds that Thybo discloses all of the limitations of
claim 1 with the exceptions of not teaching a condenser fan and not teaching
that two of the evaporator sections share a common fin. Final Act. 4—6. The
Examiner finds that it was well known to provide a fan to cool a condenser
with air. Id. at 5. The Examiner further finds that “Haussmann discloses a
heat exchanging system hav[ing] two heat exchanger sections (14 and 16)
wherein the at least two heat exchanger sections share a common fin (3 8)
having thermal break portions (36) that provides reduced conductive thermal
communication between adjacent sections compared to a single continuous
non-interrupted fin evaporator.” Id. at 6 (citing Haussmann FIG. 6, col. 2,
11. 30-34). The Examiner concludes that it would have been obvious “to
have provided Thybo with the common fin of Haussmann in order to
increase the mechanical strength of the separate heat exchangers.” Id.
(citing Haussmann col. 2,11. 48—50).
Appellants do not dispute that Thybo discloses plural lines
respectively communicating between the evaporators 5a—c and the
compressor 2. See generally App. Br; Reply Br. Appellants note that
claim 1 sets forth a dual suction compressor and argue that Thybo contains
no “discussion or description of any kind of a dual suction structure for the
disclosed compressor. App. Br. 5. According to Appellants, “it is common
in the field for multiple evaporators to be connected to a single port
evaporator [sic: compressor], and this is what is described by Thybo.” Id.
Appellants urge that “one skilled in the art would likely construe Thybo as
disclosing a conventional single port compressor that is connected to
multiple suction lines 9a, 9b, 9c.” Reply Br. 2.
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Application 13/800,322
The record supports Appellants’ assertion that it was known to route
multiple compressor suction lines to a common header and then run from the
header outlet, a single suction port the rest of the way to the compressor.
See, e.g., Karsten FIG. 1 (depicting the outlet chambers of control valves 33,
34 communicating with the compressor suction line 24 through connections
33a, 34a and an unlabeled common header) (hereafter referred to as “a single
port compressor”). We also agree with Appellants that Thybo’s Figure 1
only depicts schematically the multiple evaporator outlet lines that run to
Thybo’s compressor (see Thybo FIG. 1), and, as such, it is unclear whether
Thybo’s plural suction lines enter separate ports in the compressor’s housing
(i.e., constitute “a dual port compressor”) or, alternatively, like Karsten,
constitute “a single port compressor.”
However, Appellants point to no express definition in their
Specification and provide no extrinsic evidence to demonstrate how one of
ordinary skill would interpret the claim term “dual suction compressor.”
That is, Appellants provide insufficient evidence to support their assertion
that one of ordinary skill would interpret only a dual port compressor as
constituting “a dual suction compressor,” as claimed. Restated, Appellants
do not demonstrate that the Examiner unreasonably interpreted the claim
term “dual suction compressor” as reading on all systems having plural
evaporators and evaporator paths, regardless of whether the system’s suction
lines possess a single-port configuration or dual-port configuration—
i.e., regardless of whether the common header is external or internal to the
compressor housing.3
3 Because Appellants do not provide sufficient evidence to support the
argument that claim 1 ’s dual suction compressor must have two suction
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Application 13/800,322
It is well settled that unsupported arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Appellants additionally argue that Haussmann does not teach or
suggest a dual suction compressor. App. Br. 5. It is immaterial, though,
whether Haussmann teaches a dual suction compressor. The Examiner relies
upon Thybo—not Haussmann—for teaching this feature, and for the reasons
set forth above, Appellants do not demonstrate error in this finding.
IB.
Appellants next note that claim 1 requires the evaporator sections
share a common evaporator fin. Id. Appellants contend the Examiner erred
in concluding that it would have been obvious to combine Haussmann’s
teachings of using a common fin into Thybo’s system for the purpose of
increasing the mechanical strength of the separate heat exchangers. Id.
Appellants provide two arguments in support of this general contention. Id.
at 5—6.
Appellants first argue Haussmann only teaches that including a
common fin increases strength of the liquefier—not of separate heat
exchangers, as advanced by the Examiner. Id. at 5 (citing Haussmann col. 2,
11. 48-49). The Examiner subsequently explains, though, that Haussmann
uses the term liquefier in a manner that is synonymous with an evaporative
heat exchanger (Ans. 10), and Appellants do not provide sufficient argument
ports passing though the compressor housing, we need not decide whether a
single-port compressor and a dual-port compressor were, at the time of the
invention, art recognized equivalent types of dual suction compressors.
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Application 13/800,322
or evidence to demonstrate that this interpretation is improper. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining that there is no
ipsissimis verbis test for determining whether a reference discloses a claim
element, i.e., identity of terminology is not required).
Appellants next note that Thybo’s evaporator paths are disposed in
parallel, whereas Haussmann’s are disposed in series. App. Br. 5—6.
Appellants argue that because of this difference, “[Thybo’s design is] not
amenable to having a common fin because of the spacing that will occur
between the separate evaporator paths.” Id. at 5. Appellants further argue
that “there would be no suggestion for an artisan to provide the parallel
evaporator circuit with common fins, as claimed[, and t]he rejection is
merely a hindsight reconstruction of Appellant’s invention using Appellant’s
claims as a template.” Id. at 6.
Appellants do not provide evidence, however, that Thybo’s system
must require so much spacing between the parallel evaporator paths so as to
preclude the use of a common evaporator. And as noted by the Examiner,
Haussmann teaches that the one-piece fin arrangement includes “substantial
decoupling with respect to thermal conduction.” Ans. 11 (citing Haussmann
col. 2,11. 45—61). Accordingly, Appellants have not demonstrated
sufficiently the Examiner erred in concluding that one of ordinary skill
would have been motivated to employ Haussmann’s common evaporator fin
for obtaining Haussmann’s disclosed benefit of increased mechanical
strength.
Conclusion
For the foregoing reasons, Appellants have not demonstrated error in
the Examiner’s rejection of independent claim 1. Accordingly, we affirm
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Application 13/800,322
the obviousness rejection of that claim, as well as that of dependent claims 3,
4, 6, 7, and 9, which are not separately argued.4 See 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants also present no separate arguments regarding the
obviousness rejection of claims 10, 11, and 15 over Thybo, Haussmann, and
Lilie (App. Br. 7); with respect to the obviousness rejection of claims 16—18,
and 20 over Thybo, Haussmann, and Karsten (id. at 8); or with respect to the
obviousness rejection of claim 19 over Thybo, Haussmann, Lilie, and
Karsten (id. at 8—9). Accordingly, we affirm the obviousness rejections of
these claims for the reasons set forth in relation to independent claim 1.
II.
Dependent claim 8 reads as follows:
8. The high-efficiency air conditioning system of claim 1,
wherein the first evaporator section operates to remove more
latent heat than the second evaporator section and the second
evaporator section removes more sensible heat than the first
evaporator section.
Appellants argue that the Examiner erred in concluding Thybo teaches
this limitation. App. Br. 6—7. According to Appellants, “the Examiner fails
to point to any teaching or suggestion of this language in Thybo, other than
reference to points 14 and 15 along the bottom axis of [Thybo’s] Figure 4.”
Id. at 6. Appellants also argue that the Examiner erred in concluding
claim 8’s “language is a mere functional limitation that is not sufficient to
4 Upon further prosecution, the Examiner and Appellants should address the
clerical matter that claims 3, 4, 6, 7, 13, and 18 depend from canceled
claim 2. Cf. the Appeal Briefs Claims Appendix with Appellants’
Amendment filed November 15, 2015, which, inter alia, canceled claim 2.
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Application 13/800,322
define over the prior art because the claim language relates to the functional
operation of the device and not to the structure of the device.” Id. at 6—7
(citing Final Act. 11).
We agree with Appellants that the Final Action misapplies the law
regarding functional claim language. The appropriate test in the present case
is whether Thybo, in fact, teaches the claimed function.
The Examiner subsequently clarified the technical reasoning
underlying the rejection, though, in a manner that properly applies the law.
See Ans. 14—15 (explaining a technical rationale for why Thybo’s FIG. 4
teaches claim 8’s limitation regarding the respective evaporator sections’
removal of latent and sensible heat). Appellants do not provide sufficient
arguments or evidence to explain why the Examiner’s position, as clarified
in the Answer, is in error. See Reply Br.
Accordingly, we affirm the obviousness rejection of claim 8.
III.
Dependent claims 12 reads as follows:
12. The high-efficiency air conditioning system of claim 1,
wherein the first evaporator section is positioned within a
primary air cooling path that delivers chilled air to the interior of
the building and the second evaporator section is positioned
between an outside air port of the building and the primary air
cooling path such that the second evaporator section chills air
received into the interior of the building from outside the
building.
Appellants argue, inter alia, that contrary to the Examiner’s position
(see Final Act. 9, 12), “in Karsten, the second evaporator section is not
between the primary cooling path and the outside air inlet because both
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Application 13/800,322
evaporators are in the primary cooling path and not in different paths[,] as
claimed.” App. Br. 8. The Examiner responds that Karsten can be
interpreted as satisfying the claimed flow-path limitations because
“[cjommon air flowing through both of the evaporators does not preclude
Karsten from meeting the claimed limitation.” Ans. 19.
We disagree with the Examiner’s interpretation. The Specification
renders it reasonably clear that claim 12 is directed to Appellants’ Figure 3
embodiment. See Spec. FIG. 3 and associated discussion at || 34^40
(explaining how the secondary evaporator section of FIG. 3 receives outdoor
air through vents 138, but is not within the primary air cooling flow path
134). That is, Appellants’ Specification indicates there is a difference of the
secondary evaporator section being in the primary air cooling path (see
FIG. 2) and being positioned between an outside air port and the primary air
cooling path (see FIG. 3), as recited in claim 12.
For the foregoing reasons, we reverse the obviousness rejection of
claim 12, as well as claim 13, which recites similar language.
Claim 14 contains similar language, and the Examiner does not rely
on the additionally cited reference, Filie, to cure the deficiency in the
reasoning noted above. See Final Act. 10—11. We therefore reverse the
obviousness rejection of claim 14 for the foregoing reasons, as well.
IV.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 12—14 under 35 U.S.C. § 112(a)
or pre-AIA § 112,11, for lacking adequate written description.
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Application 13/800,322
As discussed in the preceding sections, Appellants’ Figure 2
embodiment comprises a dual-suction-compressor air conditioning system
wherein the primary and secondary evaporator sections are disposed
adjacently, both within the primary air cooling path. See, e.g., Spec. FIG. 2.
Appellants’ Figure 3 embodiment comprises a distinct dual-suction-
compressor air conditioning system wherein the primary and secondary
evaporator sections are not disposed adjacently, but are instead disposed
such that the primary evaporator section is within the primary air cooling
path and the secondary evaporator section is between the outside and the
primary air cooling path. See, e.g., Spec. FIG. 3.
In the claims’ originally filed form, independent claim 1 was generic
to the embodiments of Figure 2 and Figure 3, more broadly setting forth an
air conditioning system having first and second evaporator circuits.
Originally filed claim 5 ultimately depended from claim 1 and further recited
“wherein at least two of the evaporator sections share a common evaporator
fin that provides reduced conductive thermal communication between
adjacent sections compared to a single continuous non-interrupted fin
evaporator.” That is, claim 5 narrowed claim 1 to Appellants’ Figure 2
embodiment. See Spec. | 53 (explaining that the optional common-fin
feature can be used in relation to the Figure 2 embodiment, but not the
Figure 3 embodiment: “in the context of Fig. 3, the evaporator system could
be used and the evaporators would not be arranged relative to one another
and the airflow path to have the airflow over the fins 302 feed between the
fins 304) (emphasis added).
Claim 12, on the other hand, originally depended from generic
independent claim 1 and limited claim 1 to the Figure 3 embodiment. See
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Application 13/800,322
claim 12 (setting forth that “the second evaporator section is positioned
between an outside air port of the building and the primary air cooling
path).”
During prosecution, Appellants amended the claims to cancel claim 5
and incorporate that claim language into independent claim 1. See
Amendment filed November 15, 2015. The effect of that amendment was to
limit claim 1 to the Figure 2 embodiment and to cause dependent claim 12
now to be directed to a combination of the embodiments of Figure 2 and
Figure. However, the Specification does not provide support for a combined
embodiment wherein the separated evaporator sections (FIG. 3) are
connected by common fins (FIG. 2).
Because Appellants’ Specification does not demonstrate that the
inventor was in possession of an embodiment that combined these two
distinct features, we newly reject claim 12 as lacking adequate written
description pursuant to 35 U.S.C. § 112(a) or pre-AIA § 112,11.
Claims 13 and 14 likewise depend from claim 1 and likewise include
language that is similar to that of claim 12. We therefore newly reject these
claims under § 112 for the same reason.
DECISION
The Examiner’s decision rejecting claims 1,3,4, and 6—11 and 15—20
is affirmed.
The Examiner’s decision rejecting claims 12—14 is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 12—14 under 35 U.S.C. § 112(a)
or pre-AIA § 112,11.
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Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Rule 41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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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-IN-PART
37 C.F.R, $ 41.50(b)
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