Ex Parte 5335512 et alDownload PDFPatent Trial and Appeal BoardSep 24, 201290009867 (P.T.A.B. Sep. 24, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/009,867 02/17/2011 5335512 404.10344REO 4961 30734 7590 09/25/2012 BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVE. N.W. WASHINGTON, DC 20036-5304 EXAMINER GELLNER, JEFFREY L ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/25/2012 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 APPEALS BOARD ____________________ Ex parte SPX CORPORATION Patent Owner and Appellant ____________________ Appeal 2012-007870 Reexamination control 90/009,867 Patent 5,335,512 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG, RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE SPX Corporation (hereinafter “Appellant”), the real party in interest1 of Patent 5,335,512 (hereinafter the ‘“512 patent”),2 appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 9-13 under 35 1 See Appellant’s Appeal Brief filed December 14, 2011 (hereinafter “App. Br.”) at 3. 2 The ‘512 patent issued on August 9, 1994 to John P. Hancock et al. Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 2 U.S.C. § 103(a) as unpatentable over Gramkow,3 alone or in combination with one of A’Gramkow,4 Elliot,5 or Ewer,6 (Final Office Action, mailed June 16, 2011, pages 2-7). Claims 1-8 and 14-16 of the ‘512 patent are not subject to this reexamination. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral hearing was held on August 15, 2012. A transcript of the oral hearing will be made of record in due course. We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by Ronald J. Shore of the law firm Antonelli, Terry, Stout & Kraus, LLP (Request for Ex Parte Reexamination, filed February 17, 2011 (hereinafter “Request”)). The ‘512 patent relates to a device for recovering, processing and storing refrigerant from a refrigeration system (‘512 patent, col. 1, ll. 9-14). Claim 9, which is the sole independent claim on appeal and representative of the subject matter on appeal, reads as follows: 3 US 5,094,087, issued March 10, 1992 to Asger Gramkow (hereinafter “Gramkow”). 4 A’Gramkow A/S, “Instructions: Reclaim Station – Type RE 1215” (hereinafter “A’Gramkow”). 5 US 4,902,226, issued February 20, 1990 to Raymond D. Elliott et al (hereinafter “Elliott”). 6 US 5,199,271, issued April 6, 1993 to John W. Ewer (hereinafter “Ewer”). Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 3 9. A single pass refrigerant recovery device for withdrawing refrigerant from a refrigeration system to be serviced, processing the refrigerant so withdrawn, and depositing the refrigerant so processed into a storage means, the recovery device comprising a compressor, an oil separator disposed downstream from the compressor, an oil return line means having a first end disposed downstream from the oil separator means and a second end disposed upstream from the compressor means, a valve means for controlling the flow of material in the oil return line means, and means for controlling the opening and closing of the valve means for permitting the controlled flow of materials in the oil return line means between the oil separator means and the compressor means during operation of the device to ensure an adequate replenishment of a supply of oil in the compressor, and for biasing the valve in an open position when the device is not operating to permit refrigerant to flow therethrough to substantially balance the pressure upstream from the compressor with the pressure downstream from the compressor. (App. Br. 16, Claims Appendix.) As an initial matter, Appellant has not presented separate arguments for any particular rejected claim. Rather, Appellants’ arguments are principally directed to independent claim 9. Any claim not separately argued will stand or fall with independent claim 9. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal Reexam Patent 5 II. REJ A. T In Examin 87-104 A Request valve lo F system In to the su gas is p compre It system location 2012-0078 ination Co ,335,512 ECTIONS HE REJEC rejecting er incorpo (Ans. 8). ccordingly 84), whic cated in an igure 3 of (col. 3, ll. describin ction side assed throu ssor throug is undispu having an upstream 70 ntrol No. BASED TIONS the claims rates by re , the Exam h is reprod oil return Gramkow 43-46). g a simila of compre gh an oil h a condu ted that F oil return l from the c 90/009,86 ON GRAM based on ference th iner relie uced belo line and a depicts a r embodim ssor 8, at separator it 12” (col igure 3 of ine, includ ompresso 7 4 KOW IN Gramkow e rejection s on Figur w (with ar n oil sepa schematic ent, Gram the discha 10, from w . 3, ll. 58-6 Gramkow ing a valv r (see Ans VIEW O in view o s stated in e 3 of Gra rowed lab rator for c diagram o kow states rge side of hich regai 2). illustrates e, from an . 5; Reque F ELLIOT f Elliott or the Reque mkow (An els added t onvenienc f a refrige that “gas which the ned oil is a refriger oil separa st 84; App T OR EW Ewer, the st on page s. 7-8; o identify e and clari rant recove can be dra compress led back to ant recove tor to a . Br. 7). T ER s a ty). ry wn ed the ry he Appeal Reexam Patent 5 Examin controll 84). F F system driven g F ll. 3-4 a T downstr solenoid Gramko 2012-0078 ination Co ,335,512 er further ing (i.e. op igure 6 of igure 6 of 60 includin as compre igure 1 of nd 9). he Examin eam oil se valves (1 w (see Re 70 ntrol No. finds that G ening and Elliott and Elliott dep g a refrig ssor unit 6 Ewer depi er finds th parators (9 04/32), sim quest 92 a 90/009,86 ramkow closing) t Figure 1 icts a sche eration typ 2 (Elliott, cts a diagr at Elliott 2/14) and ilar to the nd 101). 7 5 teaches a c he solenoi of Ewer ar matic sho e, hermeti col. 4, ll. am of an a and Ewer t oil return arrangem ontrol uni d valves (c e reproduc wing a coo cally enclo 60-62 and ir conditio each comp lines (106 ent illustr t 54 (not s ol. 4, ll. 3 ed below. lant and a sed electr col. 8, ll. 2 ning syste ressors (6 /28) comp ated in Fig hown) for 6-38; Requ ir supply ic motor 9-32). m 10 (col 2/12) with rising ure 3 of est . 3, Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 6 The Examiner finds that Elliott teaches that when the compressor and the solenoid valve is turned off, “the solenoid valve is biased in an open position . . . to permit pressure unloading, i.e. to permit the released oil and air to flow therethrough to substantially balance the pressure upstream from the compressor with the pressure downstream from the compressor” (Request 92-93). Indeed, Elliott teaches that “[w]hen the solenoid valve is deenergized, it moves automatically to the open position” such that “[o]il accumulated in the bottom of coalescer 92 is moved through the tube 106 ahead of the pressurized air” which “unloads the outlet valve on the compressor so that the motor when it starts will not be overloaded in trying to start the compressor against a high outlet pressure” (Elliott, col. 10, ll. 1-11). The Examiner similarly finds that Ewer teaches that “when the device is not operating the solenoid valve is biased in an open position . . . to inherently permit refrigerant to flow therethrough to substantially balance the pressure upstream from the compressor with the pressure downstream from the compressor” and that the normally open solenoid valve ‘“permits a separator to compressor oil return cycle at system shut down’ . . . and provides a safety advantage in case of component failure or loss of electrical power” (Request 101-102). Indeed, Ewer teaches that “[t]he use of a normally open solenoid valve insures that electrical failure in the solenoid/timer portion of the system while the compressor is still operating will allow a continual flow of lubricating oil back to the compressor, thus providing a fail-safe backup to prevent inadequate lubrication of the compressor” (Ewer, col. 3, l. 65 to col. 4, l. 2). The Examiner concludes that it would have been obvious to control the valve in the device of Figure 3 of Gramkow for oil return during operation of the Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 7 device and to bias open the valve to balance the pressure across the compressor when the device is not operating, as taught by Elliott and Ewer (Request 93 and 102). The reason to do so, according to the Examiner’s conclusion, is “in order to lubricate the compressor and reduce start up load on the compressor” as taught by Elliott (Request 93) and “to provide an oil return cycle at shut down, as a safety advantage to ensure lubrication in case of component failure or loss of electrical power, and to reduce load at start up of the compressor,” as taught by Ewer (Request 102). B. ISSUE ON APPEAL The dispositive issue on appeal is: Does the evidence support the Examiner’s conclusion that a refrigerant recovery system including a “means for controlling the opening and closing of the valve” in an oil return line for “controlled flow of materials in the oil return line . . . during operation of the device” and “for biasing the valve in an open position when the device is not operating,” as recited in claim 9, would been obvious to one of ordinary skill in the art in view of Gramkow and Elliott or Ewer? C. ANALYSIS Appellant contends that one of ordinary skill the art would understand that the valve in the oil return line of Gramkow could not be open when the device is not operating because Gramkow provides no means by which to prevent oil from flowing not only to the compressor but also back through acid filter 72 and into receiver container 2 (App. Br. 7-8). According to Appellant, the oil back flow into container 2 would be lost, and one of ordinary skill in the art would not operate the system of Gramkow in a manner that would cause a loss of oil being fed back to Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 8 the compressor (id.). The testimony provided by the Rice Declaration7 supports the Appellant’s contention that oil backflow would lead to oil loss (see Rice Decl. ¶¶ 8 and 9). Appellant argues that neither Elliott nor Ewer cure the deficiency of Gramkow, as they have no check valve or other mechanism to address this problem (App. Br. 12-13 and 14; Rice Decl. ¶ 12). We note that the claims do not require a check valve or complete efficiency in the return of oil to a compressor. The claims only recite a structure for a refrigerant recovery system, which is taught by Figure 3 of Gramkow, and which is capable of functioning according to the teachings of and for the benefits taught by Elliott and Ewer. The Examiner has provided a sufficient rationale as to why the skilled artisan would have operated the solenoid valve of Gramkow according the teachings of Elliot and Ewer, namely to ensure lubrication and safely reduce load at start up of the compressor. Accordingly, the Examiner has sufficiently established a prima facie case of obviousness. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). While Appellant presents evidence that a backflow of oil would lead to oil loss, Appellant does not appear to allege, and Appellant’s evidence does not suggest, that a biased open valve would render the device inoperable for its 7 The Declaration under 37 C.F.R. § 1.132 of Dr. James Rice, dated and entered into the record on August 16, 2011 (hereinafter “Rice Declaration” or “Rice Decl.”). Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 9 intended purpose. To the contrary, Appellant indicates that, even with some oil loss, oil would nonetheless reach the compressor in the manner taught by Elliott and Ewer (App. Br. 8; Rice Decl. ¶ 9 (“oil would not only flow back to the compressor . . . ”)). Likewise, Appellant does not appear to allege that a biased open valve, as taught by Elliott and Ewer, would not allow refrigerant to flow through the valve to substantially balance the pressure upstream and downstream of the compressor, as functionally recited in claim 9. Thus, we are unpersuaded by Appellant’s argument that the skilled artisan would not have arrived at the claimed invention, even if the combined teachings of Gramkow and Elliott or Ewer would result in an inferior product due to inefficient return of oil. ‘“[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)); see also Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“Trade- offs often concern what is feasible, not what is, on balance, desirable. Motivation to combine requires the latter.”). With respect to Elliott, Appellant further contends that because Elliott teaches energizing and deenergizing the solenoid valve along with the compressor, it fails to teach “opening and closing the valve means during operation” of the device (App. Br. 14). Claim 9 requires a “means for controlling the opening and closing of the valve means for permitting the controlled flow of materials in the oil return line means between the oil separator means and the compressor means during Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 10 operation of the device to ensure an adequate replenishment of a supply of oil in the compressor” (emphasis added). In this case, “operation of the device” refers to the operation of the “single pass refrigerant recovery device,” which is the only “device” referenced in the claim. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”). Thus, the “device” in the claim is not the compressor, as suggested by Appellant. Elliott is directed to a compressor for providing a clean air supply system for operating the various tools and accessories utilized by a dentist (Elliott, Abstract). Elliott teaches that when the device (in Elliott, an air supply system) is operating, the solenoid valve is controlled to open and close, and the compressor turns off and on, depending upon the outlet air pressure sensed by the pressure regulator switch (Elliott, col. 9, ll. 40-68). Thus, we agree with the Examiner that Elliott teaches the periodic activation of the solenoid valve during operation of the device as recited in claim 9. The weight of the evidence taken as a whole supports the Examiner’s conclusion of obviousness under the law. III. CONCLUSION On the record before us, we affirm the rejections on claims 9-13 under 35 U.S.C. § 103(a) as unpatentable over Gramkow in view of either Elliot or Ewer. In affirming these rejections of all of the claims under reexamination, we need not address the Examiner’s additional rejections based on A’Gramkow in view of Gramkow or over Gramkow alone. Appeal 2012-007870 Reexamination Control No. 90/009,867 Patent 5,335,512 11 IV. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED rvb PATENT OWNER: BAKER & HOSTELER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVE., N.W. WASHINGTON, DC 20036-5304 THIRD-PARTY REQUESTER: ANTONELLI, TERRY, STOUT & KRAUS, LLP 1200 NORTH SEVENTEENTH STREET SUITE 1800 ARLINGTON, VA 22209-3873 Copy with citationCopy as parenthetical citation