Satoshi Nomura et al.

Patent Trials and Appeals Board

May 13, 2020

13989291 - (D) (P.T.A.B. May. 13, 2020)

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.
13/989,291 05/23/2013 Satoshi Nomura 2368.P0007US 4116
23474 7590 05/13/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
WIBLIN, MATTHEW
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
05/13/2020 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI NOMURA, MASANORI AKIZUKI, and
HIROSHI KANEMITSU
Appeal 2019-002874
Application 13/989,291
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and
MICHAEL L. HOELTER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 3, and 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Taiho Kogyo Co.,
Ltd. Appeal Br. 1.
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Application 13/989,291
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CLAIMED SUBJECT MATTER
The claims are directed to a swash plate type compressor. Claim 3,
reproduced below, is illustrative of the claimed subject matter:
3. A swash plate compressor comprising:
a shaft;
a swash plate that rotates around the shaft;
a piston having a spherical indent portion that moves in a
reciprocating fashion with the rotation of the swash plate;
a shoe having a flat portion which slides on the swash plate and
a spherical surface portion which slides on the spherical indent portion
of the piston; and
a coating layer comprising a resin formed on a surface of the
swash plate, the coating layer having spiral or concentric shaped
grooves provided therein having a center approximately at the center
of the swash plate, wherein
the top of each of the spiral or concentric shaped grooves
makes contact with the shoe only at a line extending across the top of
each of the grooves and the diameter of the flat portion of the shoe is
no more than 9.5 mm and the pitch of a concentric protrusion formed
between the grooves satisfies the following relationship

where L is the length of the concentric protrusions that contact the flat
portion of the shoe and N is the number of concentric protrusions that
contact the flat portion of the shoe.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hattori US 4,568,252 Feb. 4, 1986
Sugawara US 5,896,803 Apr. 27, 1999
Kanayama US 6,921,205 B2 July 26, 2005
OPINION
The Examiner rejects claims 2, 3, and 6 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Sugawara in view of Hattori and
Kanayama. Non-Final Act. 6. The Appellant argues all of the claims
together, and thus, we select claim 3 as representative with claims 2 and 6
standing or falling with claim 3. See 37 C.F.R. § 41.37(c)(1)(iv).
As to claim 3, the Examiner finds that Sugawara discloses the
invention substantially as claimed, but fails to disclose the shoe diameter or
the diameter of the flat portion of the shoe, and thus, fails to disclose the
recited diameter of the flat portion being less than 9.5 mm. Non-Final Act.
7. The Examiner also finds that Sugawara fails to disclose a coating layer
having the recited grooves and protrusions, or the protrusions making a line
contact with the flat portion of the shoe with a pitch such that the cumulative
length of the protrusions is greater than 300 mm as recited. Non-Final Act.
7–8, 9.
The Examiner correctly finds that Hattori discloses a swash plate type
compressor with a shoe diameter of 13.5 mm, and a flat portion diameter
that is preferably 60–80% of the shoe diameter, which results in a flat
portion diameter of 8.1–10.8 mm, thereby disclosing diameters that are “no
more than 9.5 mm” as recited. Non-Final Act. 8, citing Hattori, col. 3, ll.
52–53; col. 4, ll. 56–60. The Examiner also correctly finds that Hattori
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teaches that the disclosed diameter range reduces friction and power
consumption while improving durability through better lubrication of the
sliding surfaces. Non-Final Act. 8, citing Hattori, col. 7, ll. 21–27. Based
thereon, the Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have modified Sugawara in view of Hattori “by
providing a shoe diameter of 13.5 mm,” which results in the flat portion
diameter claimed, “for the purpose of enabling reducing the friction and
consequently power economizing and improving the durability through
better lubrication of the sliding surfaces.” Non-Final Act. 8–9.
As to the coating, the Examiner finds that Kanayama discloses a
coating layer for reducing friction having a plurality of spiral or concentric
shaped grooves and protrusions with the top of the protrusions contacting the
shoe along a line contact, and “a pitch distance” of 0.05–1.00 mm between
neighboring concentric shaped grooves. Non-Final Act. 10; see Kanayama,
Figs. 1(a)–2(c); col. 1, ll. 5–19; col. 3, ll. 1–4. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to have further
modified the device of Sugawara/Hattori “by applying a grooved coating
layer to the swashplate surface, as taught by Kanayama, for the purpose of
reducing swashplate/piston foot friction.” Non-Final Act. 10. The Examiner
notes that such modification results in a cumulative protrusion length of at
least 1417.07 mm when the diameter of the flat portion is 9.5 mm as
encompassed in the range disclosed in Hattori, and when the pitch distance
is 0.05 mm as disclosed in the range of Kanayama. Non-Final Act. 10; see
also Ans. 6–9.
The Appellant initially argues that Sugawara does not disclose
numerous limitations recited in claim 3. Appeal Br. 4; Reply Br. 2.
However, as discussed above, the Examiner has conceded that Sugawara
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does not disclose such limitations and has relied on Hattori and Kanayama
for such teachings. Thus, the Appellant unpersuasively argues Sugawara
separately. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Appellant also argues that Sugawara “does not disclose that the
shoe is only contacted by the swash plate at only the flat portion (d1) of the
shoe and not the entire surface thereof.” Appeal Br. 4. However, it is not
apparent that the claim requires this exclusive contact at the flat portion.
Nevertheless, as the Examiner correctly points out, Figures 1 and 2 of
Sugawara show such contact by the flat portion 16 of the piston shoe, and
Sugawara describes, in this regard, that “the annular surface 17 formed
between the rounded edge 14 and flat surface 16 provides a wedge gap 17a
which facilitates intrusion of lubricant oil between the bottom surface 12 and
flat surface 8 of the swash plate 4 during operation of the compressor.”
Sugawara, col. 6, ll. 40–50; Figs. 1, 2; see also Ans. 3.
The Appellant further argues that “the Sugawara reference teaches
away from employing a line contact as used in the present invention instead
of a flat surface” because, in its discussion of prior art, Sugawara discusses a
prior art device having a convex surface as being undesirable in that it
results in the summit portion of the convex surface having higher bearing
pressure and failure. Reply Br. 2, citing Sugawara, col. 2, ll. 25–34; see also
id. at 4. According to the Appellant, this discussion in Sugawara teaches
away from using line contact as claimed considering “a line contact has the
same disadvantages because the line contacted surface generates a higher
bearing pressure as compared with a flat surface.” Reply Br. 2, 4.
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We disagree, and see little correlation between a single summit of a
convex surface and a plurality of line surfaces recited by the claims.
Kanayama, which post-dates Sugawara, clearly establishes that providing a
plurality of line surfaces for contact with the flat surface of the shoe was
well-known at the time of the Appellant’s invention, and discloses that such
construction further reduces friction. Therefore, this argument is
unpersuasive.
The Appellant also argues that Kanayama discloses that its ridge
portions are easily worn due to high contact surface pressure to allow for
“good proper initial running-in property.” Appeal Br. 5–6, citing
Kanayama, col. 3, ll. 49–64. Based thereon, the Appellant argues that
“although the initial state of the ridge portions are such that they have a
peak, the ridge portions are designed so that they will be worn down to a
planar shape during normal operation.” Appeal Br. 5–6, citing Kanayama,
col. 3, ll. 49–64. In that regard, the Appellant provides a drawing of what
Kanayama would presumably look like in “normal run-in state.” Appeal Br.
6. Thus, the apparent argument is that the ridge portions of Kanayama do
not contact the shoe “only at a line” as recited.
This line of argument is also unpersuasive. As the Appellant
acknowledges and as discussed above, Kanayama discloses a plurality of
protrusions, the top of which contact the shoe along a line contact.
Kanayama, Figs. 1(a)–2(c); see also Ans. 5 (“the claimed limitation[] is
disclosed by the depicted ‘top of each of the . . . grooves’ aka ‘protrusions’
aka ‘ridges’ of Fig. 2.”). It is immaterial that such line contact is only
temporary because of wear. Cf. In re Mullin, 481 F.2d 1333, 1335–36
(CCPA 1973) (an intermediate product can anticipate a claimed device even
if the intermediate product is merely a stage in the final product of a non-
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anticipatory product). In addition, although not necessary for our decision,
we do not find credible the Appellant’s implied assertion that the protrusions
of the claimed invention is not subject to wear. 2
The Appellant further argues that the test data presented in the
Specification is sufficient to rebut any prima facie case of obviousness.
Appeal Br. 7. According to the Appellant, “Figures 5 and 6 in the present
specification show the criticality of the claimed cumulative length” of at
least 300 mm at which “no seizure occurred even after applying a load of
1700N or more” whereas seizure occurred with a cumulative length less than
300 mm. Appeal Br. 7. The Appellant also refers to Figures 5 and 7 as
showing unexpectedness and “criticality of the diameter flat portion being at
least 9.5 mm” in reducing wear depth, friction coefficient, and notes that a
“comparative shoe having a flat part diameter of 11.5 mm, which falls
within the general disclosure of Hattori, clearly had a higher friction
coefficient and was inferior to that of the present invention.” App. Br. 7–9;
see also Reply Br. 3–4; Spec. Figs. 5–7.
We are not persuaded by these arguments. We initially question the
value of the experimental data provided in the Specification, which is based
on a very small number of data samples. Our understanding is that three
swash plate samples were tested in the experimental data shown in each of
Figure 5 and Figure 6. See Spec. ¶¶ 15–16. Our understanding as to the
experimental data shown in Figure 7 is that it is based on testing of four

2 Indeed, the Specification’s reference to reduction in “wear depth” in
Figures 5 and 6 undermines both the Appellant’s reliance on wear of
Kanayama’s “normal run-in state” to distinguish Kanayama, and the
Appellant’s implied assertion that the protrusions of the claimed invention
are not subject to wear.
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samples having different diameter flat portions. See Spec. ¶ 17. With such
small sample sizes, the probative value of the experimental data is
questionable.
In addition, we do not view the evidence provided in the Specification
as establishing criticality. Criticality may be shown by establishing that the
claimed range achieves unexpected results relative to the prior art range. In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims. . . . These cases have
consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.”). The claimed
invention “may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges ‘produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.’” In re Huang, 100 F.3d 135, 139
(Fed. Cir. 1996) (citation omitted).
As to the assertion of criticality of the claimed cumulative length, we
note that the claim merely places a lower limit on the required cumulative
length such that it must be at least 300 mm. The Examiner has shown that
when the coating taught in Kanayama is applied to the flat portion diameter
in the range disclosed in Hattori, the recited cumulative length of at least 300
mm results. It would not have been unexpected to one of ordinary skill in
the art familiar with mechanical engineering principles, that having larger
cumulative length, i.e., greater surface area of contact between the flat
surface of the shoe and the swash plate, while maintaining grooves for
lubrication, would increase the load capability and its resistance to seizing.
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The converse would also not have been unexpected to one of ordinary skill.
Likewise, reduction in wear depth would have also been expected by one of
ordinary skill considering the increased surface contact area that results from
the increased cumulative length. In our assessment, the data provided in the
Specification merely indicates that the Appellant discovered, through
experimentation, an optimum value of a result effective variable, which is
within the skill of one of ordinary skill in the art. See In re Boesch, 617 F.2d
272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
As to the assertion of unexpected reduction in friction coefficient by
decreasing the diameter of the flat portion, the Appellant does not
adequately explain how this reduction in friction is unexpected. As already
discussed, Hattori establishes that the flat portion diameter should preferably
be 60–80% of the shoe diameter of 13.5 mm, which results in a flat portion
diameter of 8.1–10.8 mm, thereby disclosing 8.1–9.5 mm that satisfies the
claimed limit of “no more than 9.5 mm,” and thus, teaches to one of ordinary
skill that the diameter of the flat portion is a result effective variable in
reducing friction.
As to the asserted criticality of the recited upper limit on the flat
portion diameter to “no more than 9.5 mm,” the Appellant argues that the
“comparative shoe having a flat part diameter of 11.5 mm, which falls
within the general disclosure of Hattori, clearly had a higher friction
coefficient and was inferior to that of the present invention.” App. Br. 8.
However, as noted, the preferred embodiment disclosed in Hattori results in
a flat portion diameter of 8.1–10.8 mm, thereby disclosing 8.1–9.5 mm that
satisfies the claimed limit. Although the resultant range of Hattori includes
diameters that are outside of the claimed range, the Appellant merely further
optimized this range to narrow the upper limit of the diameter to 9.5 mm. In
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other words, we again view this evidence as indicating that the Appellant
merely discovered through experimentation, an optimum value of a result
effective variable, which is within the skill of the art. See In re Boesch, 617
F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456.
Therefore, in view of the above, the Appellant appears to have
determined, through experimentation, what Appellant believes to be optimal
ranges for the parameters of cumulative length of the protrusions, and
diameter of the flat portion of the shoes. Such optimization of previously
recognized result effective variables does not render the claimed invention
patentable. Accordingly, we affirm the Examiner’s rejection of claim 3, and
claims 2 and 6 fall therewith.

CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2, 3, 6 103(a) Sugawara, Hattori,
Kanayama
2, 3, 6
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED