Ex Parte Kabir et al

Patent Trial and Appeal Board

May 15, 2017

12620506 (P.T.A.B. May. 15, 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.
12/620,506 11/17/2009 Omar M. Kabir 277828-1/47079-210F01US 1709
144467 7590
Mintz Levin/GE
One Financial Center
Boston, MA 02111
05/17/2017 EXAMINER
FINK, THOMAS ANDREW
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
ipdocketingbos @ mintz. com
GPO.mail@GE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMAR M. KABIR and JOHN C. BARTOS
Appeal 2015-002123
Application 12/620,506
Technology Center 2100
Before CAROLYN D. THOMAS, KEVIN C. TROCK, and
SCOTT E. BAIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 28, 31—38, and 40-47, all the pending
claims in the present application. Claims 1—27, 29, 30, and 39 are canceled.
See App. Br. 2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
The present invention relates generally to a pulsation dampener for
minimizing the adverse effects of pulsation waves in a process fluid
generated by a reciprocating compressor. See Abstract.
Appeal 2015-002123
Application 12/620,506
Claim 28 is illustrative:
28. A system, comprising:
a reciprocating compressor, comprising:
a body;
a cylinder disposed in the body, wherein the cylinder
comprises a compression chamber;
a piston disposed in the cylinder adjacent the
compression chamber, wherein the piston has a reciprocating path of
movement in the cylinder to compress a process fluid stream of a gas
in the compression chamber; and
a pulsation dampener coupled to the body, wherein the
pulsation dampener comprises a viscoelastic material disposed in a
volume external to a main flow path of the process fluid stream and
external to the compression chamber, and the viscoelastic material is
configured to dampen a fluid pressure wave directly from the process
fluid stream of the gas external to the compression chamber.
Appellants appeal the following rejections:
Rl. Claims 28, 31—38, and 40-47 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement (Final
Act. 3-10);
R2. Claims 41 47 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Final Act. 10—
ii);
R3. Claims 28, 31—38, and 40-47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over English (US 3,759,057, Sept. 18, 1973)
and Wee (KR 10-2005-0065720, Dec. 23, 2003) (Final Act. 12-20); and
R4. Claims 28, 31—38, and 40-47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over English, Wee, and Moore (US
4,851,271, July 25, 1989) (Final Act. 20-29).
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Application 12/620,506
ANALYSIS
Rejection under § 112, first paragraph, enablement
Claims 28, 31—38, and 40-47
Issue 1: Did the Examiner err in finding that the claims are not
adequately enabled by the written description?
Appellants contend that “the claims are fully enabled by the
specification and drawings” (App. Br. 6, citing Spec. Tflf 43—46), that “the
specification describes a dampening material in valve enclosures (e.g.,
filling or lining), external from a main flow path of a process fluid stream”
(App. Br. 8) and that “one of ordinary skill in the art would readily
understand how to make and use the invention by incorporating the
dampening material into the valve enclosures” (id.).
The Examiner finds that Appellants “do[] not show any details of how
the pulsation dampener or viscoelastic material is configured to dampen
pulsation waves external to the compression chamber” (Ans. 4). . . “in F4A
and F4B of [Appellants’] specification, where exactly is the viscoelastic
material located such that it directly dampens a pressure wave from the
process fluid stream” (id. at 5). The Examiner further finds that “[t]he
amount of the direction given by Appellant appears to be minimal” (Ans. 4).
Specifically, the Examiner finds that it is “unclear as to the exact
location of the pulsation dampers because the reciprocating valves occupy
the entire inner portion of the valve enclosures as they reciprocate back and
forth ... If the interior volumes of the valve enclosures can be ‘completely
filled (e.g., 100%fi . . . how can the valves reciprocate back and forth” (Ans.
32). The Examiner further finds that “it is unclear how the interior walls of
the valve enclosure can be lined with viscoelastic form yet still support the
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Appeal 2015-002123
Application 12/620,506
reciprocating valves as they reciprocate back and forth” (Ans. 33). We
agree with the Examiner.
We note that “[t]he enablement requirement is often more indulgent
than the written description requirement. The specification need not
explicitly teach those in the art to make and use the invention; the
requirement is satisfied if, given what they already know, the specification
teaches those in the art enough that they can make and use the invention
without ‘undue experimentation.’” Amgen, Inc., v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003). Here, the Examiner persuasively
points out inconsistencies between the written disclosure and Appellants’
contentions (see Ans. 35—37) which we agree creates a “confusing
contradiction regarding how to make and use the invention” (id. at 36)
without undue experimentation.
Even setting aside the Examiner’s question, supra, regarding how the
valves would reciprocate back and forth when the enclosures are 100% filled
with viscoelastic material, for example, (which Appellants fail to rebut, i.e.,
there is no Reply Brief), we note more importantly that Appellants’ rebuttal
to the Examiner findings in the Final Action contradicts their own
disclosure.
For example, we agree with the Examiner’s finding that if the process
fluid stream would need to contact the viscoelastic material, as argued by
Appellants (see App. Br. 10-11), then the Specification at paragraph 44
contradicts this principle (i.e., “locating the pulsation dampening in the valve
enclosures 78, 80, 82, 84 . . . the process fluid stream does not flow through
the valve enclosures 78, 80, 82, 84”). In other words, if the process fluid
stream needs to contact the pulsation dampener in order to dampen a fluid
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Appeal 2015-002123
Application 12/620,506
pressure wave, as proffered by Appellants, then why does the Specification
state that the process fluid stream does not actually flow through such valve
enclosures where the pulsation dampener is located? Appellants fail to
address/clarify this point. Thus, Appellants’ statements introduce a
confusing contradiction regarding how to make and use the invention
without undue experimentation.
Accordingly, we sustain the Examiner’s rejection of claim 28 for not
complying with the enablement requirement. Appellants’ arguments
regarding the Examiner’s rejection of independent claims 41 and 45 rely on
the same arguments as for claim 28, and Appellants do not argue separately
for the dependent claims. See App. Br. 5—9. We, therefore, also sustain the
Examiner’s rejection of claims 31—38 and 40-47 for not complying with the
enablement requirement.
Rejection under § 112, first paragraph, written description
Claims 41—47
Issue 2: Did the Examiner err in finding that the claims does not
comply with the written description requirement?
Appellants contend that “[i]n order to absorb a pressure wave ... the
fluid stream would need to contact viscoelastic material within the volume
of the enclosure [and] FIGS. 3 and 7 illustrate that the outlets of the
compressor fluidly communicate with the enclosures 78, 80, 82, and 84”
(App. Br. 10-11).
The Examiner finds that limitations in claims 41 and 45 “are believed
to be new matter . . . the assertion of [Appellants] that the interior volumes
of enclosures would have to be in fluid communication [with] the
compression chamber appears to be illogical” (Final Act. 11). The Examiner
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Application 12/620,506
further finds that “there appears to be no way for the process fluid stream
(indicated in the replacement sheet by 60, 70, 74, and 76) to contact the
shaded areas which indicate the pulsation dampers (i.e., the viscoelastic
material)” (Ans. 35) and that “Appellants] never point[] out where in the
cited figures such details are illustrated . . . there is no corresponding written
disclosure related to figures 3 and 7 that supports this allegation from
appellant[s]” (id. at 38). We agree with the Examiner.
Here, Appellants do not identify where precisely in Figs. 3 and 7 the
claimed enclosure has a volume in fluid communication, or any
corresponding written disclosure which supports the claimed process fluid
stream being in fluid communication with the shaded areas, i.e., the
pulsation dampeners (e.g., viscoelastic material), as shown in replacement
drawings FIGS. 4A and 4B.
Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Here, Appellants fail to
provide factual evidence to support that the claimed wherein the enclosure
has a volume in fluid communication with the compression chamber; a
viscoelastic material disposed in the volume of the enclosure . . . complies
with the written description requirement.
Accordingly, we sustain the Examiner’s rejection of independent
claims 41 and 45, and dependent claims 42 44, 46, and 47 which are not
argued separately. See App. Br. 9-11.
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Rejection under § 103(a) English and Wee
Claims 28, 31—35, and 40—47
Issue 3: Did the Examiner err in finding that Wee teaches or suggests
a viscoelastic material disposed in a volume external to a main flow path, as
set forth in claim 28?
Appellants contend that “the combination would place Wee’s outlet
valve 40 within a volume in a main flow path of the fluid exiting the
compressor 8” (App. Br. 13), therefore “English and Wee fail to teach or
suggest, inter alia, ‘a viscoelastic material disposed in a volume external to a
main flow path of the process fluid stream and external to the compression
chamber’” (id.).
In response, the Examiner finds that “[i]f the viscoelastic layer is
shielded from direct contact with the fluid, then by definition, the
viscoelastic layer of Wee is not in the flow path. . . . The reed valve diverts
the flow path” (Ans. 40). We agree with the Examiner.
Here, the Examiner concedes that English does not explicitly disclose
a pulsation dampener (see Final Act. 12), but instead relies upon Wee to
disclose such features. As such, we shall look for error in the Examiner’s
interpretation of Wee.
Appellants admit that Wee’s elastic member 41 would shield the
viscoelastic member 42 from direct contact with fluid (see App. Br. 13—14).
Therefore, we find unavailing Appellants’ contention that Wee’s shielded
viscoelastic material (i.e., backside of Wee’s outlet valve 40) is in a main
flow path, given this shielding characteristic. We find that any shielding
displaces the viscoelastic material from the main flow path. Thus, it is clear,
and Appellants concede, that Wee’s elastic member 41 diverts the main flow
path away from the viscoelastic material 42 (see Wee’s Figs. 3 and 4). As a
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Application 12/620,506
result, we agree with the Examiner that Wee reasonably teaches a
viscoelastic material disposed in a volume external to a main flow path.
Issue 4: Did the Examiner err in finding that Wee teaches or suggests
the viscoelastic material is configured to dampen a fluid pressure wave
directly from the process fluid stream, as set forth in claim 28?
Appellants contend that “Wee discloses an elastic member 41 that
directly contacts a fluid; instead of the viscoelastic member 42” (App. Br.
14). In other words, Appellants contend that Wee’s viscoelastic material 42
does not directly contact the fluid stream.
In response, the Examiner finds that Wee teaches a gas stream and the
“gas pressure waves would expand outward in all directions towards the
walls of the valve [and] [s]ome of these pressure waves would directly
contact the viscoelastic layer on the back of the reed valve” (Ans. 45). We
agree with the Examiner.
Appellants fail to persuasively rebut the Examiner’s finding that
Wee’s outwardly expanding gas pressure wave will eventually directly
contact the viscoelastic material 42 at some point, thereby dampening the
pressure wave. Appellants merely direct our attention to the diverting
characteristic of Wee’s elastic member 41, but fail to consider or rebut the
expanding gas pressure wave aspect illustrated by the Examiner. As a result,
we agree with the Examiner that Wee reasonably teaches the viscoelastic
material is configured to dampen a fluid pressure wave directly from the
process fluid stream, albeit through an expanding gas pressure wave path.
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Application 12/620,506
For at least the reason noted supra, we sustain the Examiner’s
rejection of claim 28 over the combination of English and Wee. Appellants’
arguments regarding the Examiner’s rejection of independent claims 41 and
45 rely on the same arguments as for claim 28, and Appellants do not argue
separate patentability for the dependent claims 31—35, 40, 42 44, 46, and 47.
See App. Br. 11—19. We, therefore, also sustain the Examiner’s rejection of
claims 31—35 and 40-47.
Claims 35—38
Issue 5: Did the Examiner err in combining English and Wee?
Appellants contend that “filling the volume of the manifold 20 with
30, 50, or 80 percent viscoelastic material would restrict the flow of fluid
through English’s compressor 8 . . . would therefore be inefficient or
inoperable” (App. Br. 14—15).
The Examiner finds that Wee’s element “42 fills 100% of the volume
between layers 41 in F6 . . . [and] discovering the optimum or workable
ranges involves only routine skill in the art” (Final Act. 14-15). The
Examiner further finds that Appellants present “the same types of arguments
[that] apply to why these claims are not enabled . . . the location of the fill is
unclear” (Ans. 48). We agree with the Examiner.
Although Appellants contend that the proposed combination would
render English’s compressor inoperable for its intended purpose because
filling the volume of the manifold 20 would restrict the flow of fluid, as
pointed out by the Examiner {id.), Appellants fail to explain how their own
filling limitation wouldn’t do the same. In other words, if English’s
modified configuration would restrict the flow of fluid, wouldn’t Appellants’
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Application 12/620,506
claimed configuration also restrict the flow of fluid, i.e., how can
Appellants’ valves reciprocate back and forth if the enclosures are filled with
viscoelastic material?
Even if we assume arguendo that Appellants’ system would work
properly (which would also suggest that the similar English modified system
would also work properly), we highlight that an argument that the system is
rendered “unsuitable for its intended purpose” is in essence a “teach away”
argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). The Federal
Circuit has held “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)). Here, Appellants needs to show, but have not shown, that
English discourages filling the volume of the enclosure with various
percentages of viscoelastic material as taught in Wee.
Accordingly, we sustain the Examiner’s rejection of claims 35—38.
DECISION
We affirm the Examiner’s § 112 and § 103(a) rejections Rl—R4.
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).
Our affirmance is dispositive as to all claims on appeal, ft is not
necessary, therefore, to address the other grounds of rejection entered by the
Examiner (i.e., the rejection of claims 28, 31—38, and 40-47 under 35 U.S.C.
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§ 103(a) as being unpatentable over English, Wee, and Moore). See In re
Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (Affirmance of rejection of all
claims under § 103(a) made it unnecessary to reach other grounds of
rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(Having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer).
AFFIRMED
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