Ex Parte Duppert

Patent Trial and Appeal BoardAug 4, 2017

13428406 (P.T.A.B. Aug. 4, 2017)

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. 13/428,406 03/23/2012 Ronald J. Duppert 508917 9138 53609 7590 08/08/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER WAN, DEMING ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 08/08/2017 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 RONALD J. DUPPERT Appeal 2015-008120 Application 13/428,406 Technology Center 3700 Before KENNETH G. SCHOPFER, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’ final decision rejecting claims 1—22, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Throughout this opinion, we refer to the Appellant’s Appeal Brief (“Appeal Br.,” filed Feb. 10, 2015), Reply Brief (“Reply Br.,” filed Sept. 8, 2015), and Specification (“Spec.,” filed Mar. 23, 2013), and to the Examiner’s Answer (“Ans.,” mailed July 8, 2015) and Final Office Action (“Final Act.,” mailed Oct. 23, 2014). 2 According to the Appellant, the real party in interest is Bitzer Kuhlmaschinenbau GmbH. Appeal Br. 2. Appeal 2015-008120 Application 13/428,406 STATEMENT OF THE CASE The Appellant’s invention “generally relates to scroll compressors for compressing refrigerant.” Spec. 11. Claims 1 and 15 are the independent claims on appeal. Claim 1 (Appeal Br. 15 (Claims App.)) is illustrative of the subject matter on appeal and is reproduced below (with added bracketing and paragraphing for clarity): 1. A scroll compressor comprising: [(a)] a housing; [(b)] 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; and [(c)] a drive unit configured to rotate a drive shaft about an axis to drive the second scroll body in an orbital path, the drive shaft having an eccentric drive configured to engage a corresponding drive hub on the second scroll body; [(d)] wherein, the eccentric drive has a drive surface acting on the corresponding drive hub in a first plane, the drive shaft having a locating feature for a counterweight, the locating feature being aligned in either the first plane or aligned in a second plane parallel to the first plane. REJECTIONS Claims 1—9, 11, 12, and 14—22 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ignatiev (US 7,841,845 B2, iss. Nov. 30, 2010) and Tazoe et al. (US 2006/0159567 Al, pub. July 20, 2006) (“Tazoe”). Final Act. 2. 2 Appeal 2015-008120 Application 13/428,406 Claims 10 and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ignatiev and Tazoe, as applied to claims 9 and 12, and further Iio et al. (US 5,145,346, iss. Sept. 8, 1992) (“Iio”). Id. at 15. ANALYSIS The Appellant contends that the Examiner’s rejection of independent claims 1 and 15 is in error because, in pertinent part, the combination of Ignatiev and Tazoe does not disclose the eccentric drive having a locating feature for a counterweight aligned in the first plane with the drive surface or in a second plane parallel to the first plane, as required by limitation (d) of claim 1, and similarly recited in claim 15. See Appeal Br. 5—7; see also Reply Br. 6. We agree. The Examiner finds, in relevant part, that Ignatiev discloses a drive shaft with a crank shaft pin, i.e., the eccentric drive, with a drive surface acting on the corresponding drive hub in a first plane. Final Act. 3. The Examiner further finds that the drive shaft inherently has a locating feature in that the balance weight of Ignatiev “must be fixing [sic] attached to the shaft in order to balance the eccentric motion of the orbit scroll.” Ans. 4. The Examiner acknowledges that Ignatiev does not teach that the location feature is aligned in either the first or second plane, but relies on Tazoe for this feature. Id. Specifically, the Examiner finds that Tazoe teaches “a locating feature with flat surfaces” in disclosing a driving shaft with a flat driving surface and a second flat surface to secure a balance weight. Id. We find persuasive the Appellant’s argument that the Examiner does not adequately show how or where Ignatiev discloses a locating feature for a counterweight that can be modified by Tazoe to be aligned in the first or 3 Appeal 2015-008120 Application 13/428,406 second plane. See Appeal Br. 6—7; Reply Br, 6. The Examiner has not directed our attention to, and we do see, where Ignatiev discloses a counterweight or a flat or rectangular surface to which the counterweight abuts. See Spec. ]Hf 6, 54. Although the Examiner finds that such a feature is inherent (Ans. 4), we agree with the Appellant that the Examiner has not adequately “provide[d] a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Reply Br. 5 (quoting Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)). As the Appellant points out, that the flat portion of Ignatiev to which the Examiner refers as the locating feature may be used to affix the counterweight (see Final Act. 4; Ans. 4) is not sufficient to establish the inherency of a locating feature, because there may be other possible ways to secure a counterweight. Reply Br. 5—6; see also Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Because we do not find supported the Examiner’s finding that Ignatiev discloses a locating feature, we do not ascertain how one of ordinary skill in the art would understand how to modify Ignatiev with Tazoe to disclose the locating feature aligned in the first or second plane. As such, we find persuasive the Appellant’s argument that the Examiner has not adequately shown that the combination of Ignatiev and Tazoe discloses the claimed locating feature. See Appeal Br. 7. 4 Appeal 2015-008120 Application 13/428,406 Based on the foregoing, we are persuaded of error in the Examiner’s rejection of independent claims 1 and 15. Thus, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 1 and 15 and dependent claims 2—9, 11, 12, 14, and 16—22. The Examiner relies on the same findings for the rejection of claims 10 and 13, which ultimately depend from claim 1. See Final Act. 15. Thus, for the same reasons as for claim 1, we also do not sustain the rejection under 35 U.S.C. § 103 of dependent claims 10 and 13. DECISION The Examiner’s rejections of claims 1—22 under 35 U.S.C. § 103(a) are REVERSED. REVERSED 5