Ex Parte Yoshida et alDownload PDFPatent Trial and Appeal BoardJun 10, 201611794303 (P.T.A.B. Jun. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111794,303 0612712007 55694 7590 06/14/2016 DRINKER BIDDLE & REATH (DC) 1500 K STREET, N.W. SUITE 1100 WASHINGTON, DC 20005-1209 FIRST NAMED INVENTOR Tsutomu Yoshida 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. 48494-0008 (407206) 1018 EXAMINER KRAMER, DEVON C ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 06/14/2016 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): DBRIPDocket@dbr.com penelope.mongelluzzo@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TSUTOMU YOSHIDA and TOMOHIKO SERITA Appeal2014-004628 Application 11/794,303 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and FREDERICK C. LANEY, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tsutonm Yoshida and Tomohiko Serita ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1, 2, and 4--15 in this application. Claim 3 has been cancelled. Br. 1. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appeal Brief identifies Max Co. Ltd. as the real party in interest. Br. 1. Appeal2014-004628 Application 11/794,303 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, and it recites: 1. An air compressor comprising: an electric motor; a compressor adapted to be driven by the electric motor for generating compressed air; a pair of air tanks adapted to store the compressed air generated by the compressor, each formed into an elongated barrel shape, and disposed parallel to each other at an interval; an inverter control substrate on which an inverter module that makes up a control unit for the electric motor is mounted; a case for accommodating the inverter control substrate therein; and a cooling fan adapted to generate cooling air so as to cool the compressor, the electric motor and the inverter module via the case, wherein the inverter module is interposed between the inverter control substrate and a base of the case, the inverter module is mounted on an upper side of the inverter control substrate, and the base of the case positions on an upper side of the inverter module, wherein a surface of the inverter module is in directly close contact with the base of the case, wherein the base of the case extends substantially horizontally, and wherein the inverter control substrate is parallel to the base of the case wherein the case is formed into a box shape so that an entirety of the inverter control substrate is accommodated therein, and wherein the base of the case extends substantially in parallel to a flowing direction of the cooling air so that the cooling air flows along an external surface of the base serving as a cooling surface. Br. 16-17 (Claims App.). 2 Appeal2014-004628 Application 11/794,303 REJECTIONS ON APPEAL2 Claims 1, 6-9, and 11-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nakayama (JP 2000-283046 A, pub. Oct. 10, 2000) and Takemoto (US 2004/0197213 Al, pub. Oct. 7, 2004). Claims 2, 4, 5, and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nakayama, Takemoto, and Kajiura (US 6,320,776 Bl, iss. Nov. 20, 2001). ANALYSIS A. Unpatentability based on Nakayama and Takemoto Claims 1, 6--9, 11-13, and 15 In rejecting claim 1, the Examiner finds Nakayama discloses each and every limitation except: (a) Nakayama's inverter module is not "in directly close contact" with the base of the case, and (b) Nakayama's inverter control substrate is not parallel to the base of the case. Final Act. 3--4. We reproduce here Nakayama's Figure 6, and the Examiner's annotations to a portion of Figure 6: --- ---tiase of case inverter inverter substrate Examiner's Annotations 2 The rejection of claim 15 as indefinite under 35 U.S.C. § 112, second paragraph, has been withdrawn. See Final Act. 2; Ans. 9. 3 Appeal2014-004628 Application 11/794,303 Nakayama's Figure 6 illustrates electrical power supply controller 20 for powering and controlling electric motor 12 to operate compressor 7. Nakayama, Abstract, i-f 30. Controller 20 includes transistor circuit 27 and motor inverter control 30. Id. i-fi-134, 43. Transistor circuit 27 generates heat, so it is attached to heat sink 29, which helps to dissipate the heat into a cooling airflow (arrows A) generated by fans 17 and 18. Id. i-fi-132, 34, 40- 41. Inverter control 30 is separated from transistor circuit 27, and the heat generated by the circuit, to improve reliability. Id. i-fi-1 12, 53. This separation is achieved, in part, by mounting inverter control 30 on the rear end of casing 21, and mounting heat sink 29 and transistor circuit 27 on the inside surface of cover portion 2 lB of casing 21. Id. i-fi-135, 40, 43, 53. The Examiner's annotations to Nakayama's Figure 6 show where the claimed inverter, inverter substrate, and base are found. Final Act. 3--4. The Examiner finds Nakayama's inverter and inverter substrate are "perpendicular to the base" and "indirectly connected to the base," not "parallel to the base" and "in directly close contact with the base" as recited in claim 1. Id. at 4, 10. The Examiner determines "rearranging the [inverter] substrate in such a way that it is parallel to the base of the case and making it to contact directly with the case is an obvious rearrangement option for a skill in the art." Id. at 4. The Examiner further finds Takemoto exemplarily discloses inverter 135 being directly in close contact with base 122 of case 122, 131, and inverter substrate 130 being parallel to base 122. Final Act. 4--5, 10, 12 (citing Takemoto, Figs. 2A and 4, i-f 59). The Examiner determines it would have been obvious to modify Nakayama's inverter substrate to lie horizontally and parallel to Nakayama's base, as taught by Takemoto, to 4 Appeal2014-004628 Application 11/794,303 reduce the vertical dimension of the base. Id. at 5. According to the Examiner, it is evident from Nakayama's Figure 6 that this modification would have the additional benefit of the cooling air (arrows A) flowing along the external surface of the base, serving to cool the longer side of the inverter substrate, and thus reduce drag. Id. at 5, 10-11; Ans. 11. Appellants argue Nakayama teaches away from the Examiner's proposed modification to Nakayama's Figure 6. Br. 6-7. Appellants contend Nakayama "unmistakably states that because the transistor circuit 27 is arrange[ d] remotely and separately from inverter control part 30, the reliability of the inverter control part 30 is increased." Id. (emphasis added, citing Nakayama i-fi-153-54). According to Appellants, the Examiner's modification to Nakayama's Figure 6 would cause inverter control 30 to "substantially approach" transistor circuit 27, which is discouraged by Nakayama. Id. at 7. The Examiner responds that, as modified, Nakayama's "inverter substrate will assume a horizontal position attached to the heat sink 29 or the case." Final Act. 11. According to the Examiner, attachment to heat sink 29 would locate the inverter even further away from the heat generating components of power controller 20, when compared to the arrangement shown in Figure 6. Id. Further according to the Examiner, attachment to the case would maintain the existing gap between inverter control 30 and the heat generating components, in light of Nakayama's paragraph 53. Id. We are not persuaded of Examiner error in determining a person of ordinary skill in the art would modify Nakayama by rotating the inverter control (i.e., the box identified at page 4 of the Final Office Action) and its substrate to a horizontal configuration, without materially lessening the 5 Appeal2014-004628 Application 11/794,303 distance between the inverter control and transistor circuit 27. In particular, in looking at Nakayama's Figure 6, there is ample room for the rotation to take place without bringing the inverter control materially closer to circuit 27. Thus, a preponderance of the evidence does not support Appellants' argument that Nakayama's disclosed desire to maintain separation between the inverter control and transistor circuit 27 would teach away from the modification. Appellants also argue the Examiner's proposed modification would bring Nakayama's inverter control and substrate "in direct contact with motor housing 12." Br. 8-9. This is so, according to Appellants, because Takemoto's inverter control 135 is in direct contact with Takemoto's motor housing 121. Id. at 8 (citing Takemoto, Fig. 2A, i-fi-1 46, 48). According to Appellants, a person of ordinary skill in the art would not make this modification because it would cause the inverter control to intercept the air flow along motor housing 12, thereby preventing efficient cooling. Id. at 9, 11. We are not persuaded that the need to maintain airflow in Nakayama would have prevented a person of ordinary skill in the art from rotating the inverter control and substrate to a horizontal configuration, in light of Takemoto. Such rotation does not require the bodily incorporation of Takemoto's particular structure in which the cooling stream moves through the motor housing (Takemoto, Fig. 2A) rather than passing by the outside of the motor housing (Nakayama, Fig. 6). See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (obviousness does not require all of the features of a secondary reference to be bodily incorporated into a primary reference). A person of ordinary skill in the art would have known to rotate Nakayama's 6 Appeal2014-004628 Application 11/794,303 inverter to a horizontal configuration and maintain its position underneath the cooling airflow A without attaching it to Nakayama's housing 13 for motor 12. See Nakayama, Fig. 6. Appellants further argue the Examiner relies on impermissible hindsight, in reasoning the arrangement of claim 1 provides a clear benefit that the longer side of the inverter substrate lies along the flow of air and thus reduces drag, and also reduces a radial dimension of the case. Br. 10- 11. Appellants contend the Examiner's reasoning appears to be taken from Appellants' Specification. Id. at 11 (citing Spec. 4:20-24, 8: 19-21 ). We are not persuaded that the Examiner relies on impermissible hindsight. Nakayama indicates incentives in manufacturing compressors include using an airflow to cool electrical components, and minimizing the height and width of the compressor. Nakayama, Abstract, i-fi-17, 10, 15, 34. Thus the Examiner's reliance on these considerations as motivations for rotating Nakayama's inverter control and substrate is not impermissible hindsight based on Appellants' Specification. For the foregoing reasons, we sustain the rejection of claim 1 as unpatentable over Nakayama and Takemoto. Appellants argue dependent claims 6-9, 11-13, and 15 are allowable solely by virtue of their dependency from claim 1. Br. 14. We accordingly sustain the rejection as to those claims as well. Claim 14 Appellants argue claim 14 is patentable separately from its parent claim 1. Br. 11-14. Claim 14 adds "a second cooling fan ... wherein the base of the case extends horizontally from the [first] cooling fan to the second cooling fan." Br. 19 (Claims App.). 7 Appeal2014-004628 Application 11/794,303 The Examiner finds Nakayama's primary fan 17 and secondary fan 18 correspond to the first and second cooling fans of claim 14. Final Act. 7. According to the Examiner, once Nakayama is modified as discussed for claim 1, "the base of the case assumes horizontal direction and thus it is evident that the base of the case extends horizontally from the primary cooling fan to the secondary coolingfan." Id. (emphasis added). Appellants argue Nakayama's case 21A, 21B defines space B for enclosing high-power components such as transistor circuit 27, rectifier 25, and smoothing circuit 26. Br. 12. By contrast, Appellants argue, Nakayama's reactor 28 is disposed outside space B of case 21A, 21B. Id.; see also Nakayama, i-fi-138-39, Figs. 6, 7, 9 (reactor 28 "is attached to the front end side of box part 21A," outside space B defined by covering part 21B). According to Appellants, Nakayama's base (i.e., the upper, horizontal plate of casing part 2 lB) does not extend horizontally from fan 17 to fan 18, as recited in claim 14. Br. 12. Appellants further assert that feature would not have been obvious from Nakayama, because the presence of reactor 28 and frame 6 restrict extending the base to extend from fan 17 (id.), and the Examiner does not provide any reason for doing so (id. at 13). We are persuaded of Examiner error. Nakayama's Figures 3, 6, 7, and 9 illustrate metal plate 2 lA extends horizontally from fan 17 to fan 18. See Nakayama i135. However, Nakayama's case 21 is defined by covering device 2 lB in combination with plate 2 lA, and covering device 2 lB extends horizontally only from reactor 28 to fan 18. Id. Figs. 6, 7, and 9. Nakayama's case 21 does not extend horizontally from fan 17 to fan 18, as required by claim 14. Moreover, the Examiner does not provide any reason for modifying Nakayama's covering device 21B to extend from fan 17. See 8 Appeal2014-004628 Application 11/794,303 Final Act. 7, 13-14; Ans. 14-15. Therefore, we do not sustain the rejection of claim 14 as unpatentable over Nakayama and Takemoto. B. Unpatentability based on Nakayama, Takemoto, and Kajiura Appellants argue the passages of Kajiura cited by the Examiner in relation to dependent claims 2, 4, 5, and 10 fail to remedy the deficiencies of Nakayama and Takemoto in relation to claim 1. Br. 11, 14. For reasons provided above, we are not persuaded of Examiner error in rejecting claim 1, and we likewise sustain the rejection of claims 2, 4, 5, and 10 as unpatentable over Nakayama, Takemoto, and Kajiura. DECISION The Examiner's decision to reject claims 1, 2, and 4-15 is affirmed as to claims 1, 2, 4-13, and 15, and reversed as to claim 14. 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-IN-PART 9 Copy with citationCopy as parenthetical citation