Ex Parte Nakamura

Patent Trial and Appeal BoardApr 17, 2015

12374725 (P.T.A.B. Apr. 17, 2015)

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. 12/374,725 01/22/2009 Yoichiro Nakamura 11329/15 1211 83377 7590 04/17/2015 BGL/Panasonic P.O. Box 10395 Chicago, IL 60610 EXAMINER BAYOU, AMENE SETEGNE ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 04/17/2015 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 APPEAL BOARD ____________ Ex parte YOICHIRO NAKAMURA ____________ Appeal 2013-0038201 Application 12/374,725 Technology Center 3700 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1–6.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to the Specification, Appellant’s invented a refrigerator compressor using a low viscosity refrigerant oil and having an optimized 1 Appellant identifies “Panasonic Corporation” as the real party in interest. Appeal Br. 2. 2 Our decision references Appellant’s Specification (“Spec.,” filed Jan. 22, 2009), Appeal Brief (“Appeal Br.,” filed Sept. 27, 2012), and Reply Brief (“Reply Br.,” filed Jan. 14, 2013), as well as the Examiner’s Answer (“Answer,” mailed Dec. 4, 2012). Appeal 2013-003820 Application 12/374,725 2 diameter difference between a compression chamber and a piston. See Spec. ¶ 19. Claim 1, which we reproduce below, is the only independent claim under appeal and is representative of the appealed claims. 1. A refrigerant compressor comprising: a hermetic container storing refrigerant oil; an electrically-driven element; and a compressing element driven by the electrically- driven element, the compressing element including a cylinder block having a cylindrical compression chamber and a cylindrical piston reciprocating in the compression chamber, wherein the compression chamber and the piston have a diameter difference in a range of not shorter than 4 µm to not longer than 15 µm, measured between an inner wall of the compression chamber and an outer wall of the piston, and the refrigerant oil, free of ester oil therein, has a viscosity of not more than 8 mm2/s at 40°C and consists mainly of a mixture of a first mineral oil having a viscosity less than the viscosity of the refrigerant oil and a second mineral oil having a viscosity of not less than 20 mm2/s at 40°C. Appeal Br., Claims App. REJECTIONS AND PRIOR ART Appellant appeals the following rejections made by the Examiner: claims 1–4 under 35 U.S.C. § 103(a) as unpatentable over Komine (US 5,548,973, iss. Aug. 27, 1996), Rao (US 5,469,777, iss. Nov. 28, 1995), Muraki (US 5,653,909, iss. Aug. 5, 1997), and Kaimai (US 2002/0193262 A1, pub. Dec. 19, 2002); and Appeal 2013-003820 Application 12/374,725 3 claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Komine, Rao, Muraki, Kaimai, and Kawaguchi (US 2002/0077255 A1, pub. June 20, 2002). ANALYSIS Rejection of claims 1 and 4–6 With respect to claim 1, Appellant argues (see Appeal Br. 5–7) the rejection is in error because the Examiner’s proposed combination of references does not teach or suggest the following claim limitation: the refrigerant oil, free of ester oil therein, has a viscosity of not more than 8 mm2/s at 40°C and consists mainly of a mixture of a first mineral oil having a viscosity less than the viscosity of the refrigerant oil and a second mineral oil having a viscosity of not less than 20 mm2/s at 40°C. Appeal Br., Claims App. Although we have carefully reviewed Appellant’s arguments, we do not find Appellant’s arguments to be persuasive. For the below reasons, we find that the Examiner establishes it would have been reasonable to combine the references as the Examiner proposes. In KSR, the Supreme Court rejected the Federal Circuit’s rigid application of the teaching, suggestion, or motivation test in favor of an expansive and flexible approach. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The Supreme Court noted that, often, it will be necessary “to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id., 550 U.S. at 418. The Supreme Court noted that the Court of Customs Appeal 2013-003820 Application 12/374,725 4 and Patent Appeals “captured a helpful insight” when it first established the teaching, suggestion, or motivation test, but made clear that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id., 550 U.S. at 418. In this case, the Examiner reasonably finds that Kaimai teaches three mineral oils (A1, A2, B1) with viscosities of not more than 8 mm2/s at 40°C, and one mineral oil (B2) with a viscosity of not less than 20 mm2/s at 40°C, each of which is used as refrigerant oil (see, e.g., Answer 6, 12, citing Table 1 of Kaimai). The Examiner also reasonably finds that Muraki teaches that refrigerant oil may be made of only two mineral oils (see, e.g., Answer 5, 12, citing Muraki 2:1–7). Looking at the teachings of Kaimai and Muraki, it would have been reasonable to combine one of mineral oils A1, A2, and B1 with mineral oil B2, resulting in the claimed “refrigerant oil, free of ester oil therein, . . . consist[ing] mainly of a mixture of a first mineral oil having a viscosity less than . . . . [8 mm2/s at 40°C] and a second mineral oil having a viscosity of not less than 20 mm2/s at 40°C” (Appeal Br., Claims App.). Thus, Appellant’s arguments to the contrary (see Appeal Br. 5–7; see also Reply Br. 2–3) are unpersuasive. Appellant further argues that the “combination of Kaimai . . . and Muraki . . . fails to teach the specific viscosity requirement of claim 1 for the combined two mineral oils (‘the refrigerant oil, free of ester oil therein, has a viscosity of not more than 8 mm2/s at 40°C’).” Reply Br. 1; see also Appeal Br. 5. We do not find Appellant’s argument to be persuasive. The discovery of an optimum value of a result effective variable (in this case, the viscosity Appeal 2013-003820 Application 12/374,725 5 of the refrigerant oil used in a compressor) is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955). As stated in In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996): This court and its predecessors have long held . . . that even though applicant’s modification results in great improvement and utility over the prior art, it 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.” Additionally, as stated in 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 [citations omitted]. In the present case, Appellant does not submit evidence sufficient to establish there is anything unpredictable that would result from the claimed combination of a high viscosity mineral oil and a low viscosity mineral oil combined to provide a refrigerant oil with a viscosity of not more than 8 mm2/s at 40°C, and thus we agree with the Examiner that combining the minerals oil to provide a refrigerant oil with a viscosity of not more than 8 mm2/s at 40°C would have been obvious. See Answer 6–8, 12–13. Appeal 2013-003820 Application 12/374,725 6 Appellant also argues (see Appeal Br. 7–9) the rejection is in error because the combination does not teach or suggest the claim limitation “the compression chamber and the piston have a diameter difference in a range of not shorter than 4 µm to not longer than 15 µm, measured between an inner wall of the compression chamber and an outer wall of the piston” (Appeal Br., Claims App.). Although we have carefully reviewed Appellant’s arguments, we do not find any of the arguments to be persuasive, and thus we sustain the rejection of claim 1. For example, the Examiner finds that Rao teaches the claimed diameter difference between a piston and a chamber. See Answer 5, 13–14. The Examiner also states that because Rao discloses “that . . . [the] piston assembly may be adopted in a compressor” (Answer 13; see also id. at 5, citing 4:3–7 of Rao), “[i]t would have been obvious . . . to have modified the compressor of Komine [ ] by selecting a 10 micron radial clearance dimension between the piston and the cylinder as taught by Rao . . . to make sure that any working fluid leak past the piston surface is minimized while optimum lubrication between the piston and the sliding surface is guaranteed” (Answer at 6). Appellant disagrees with the express teaching in Rao, and argues that while Rao’s arrangement is suited for use in an internal combustion engine it is not suited for use in a compressor. See Appeal Br. 7–8. Inasmuch as Rao states “that . . . [the] piston assembly may be adopted in a compressor” (Rao 4:3–7), the Examiner’s finding of the same is reasonable. Because Appellant does not submit any evidence, but submits only attorney argument, that Rao’s piston assembly cannot be used in a refrigerant compressor, Appellant’s arguments that the Examiner errs in proposing to modify Komine based on Rao is unpersuasive. Appeal 2013-003820 Application 12/374,725 7 Based on the foregoing, we sustain the obviousness rejection of claim 1. We also sustain the obviousness rejections of claims 4–6, dependent from claim 1, which Appellant does not argue separately from claim 1 (see Appeal Br. 10). Rejection of claim 2 Appellant argues that none of the references discloses or suggest the refrigerant oil having a viscosity of not more than 8 mm2/s at 40°C and consisting mainly of a mixture of a first mineral oil having a viscosity less than the viscosity of the refrigerant oil and a second mineral oil having a viscosity of not less than 20 mm2/s at 40°C., where the refrigerant oil contains the second mineral oil at not less than 3 wt%. See Appeal Br. 9. We agree with the Examiner, however, that “it would have been obvious . . . to have selected a specific percentage weight (3 wt% or other value) of the secondary mineral to get a desired viscosity of the oil” when looking at the teachings of the references, as a whole (see KSR, 550 U.S. at 418). We note that Appellant does not submit evidence sufficient to establish there is anything unpredictable that would result from the claimed combination (see Woodruff, 919 F.2d at 1578). Thus, we sustain the obviousness rejection of claim 2. Rejection of claim 3 Appellant argues the following: The Examiner needs Muraki . . . to reject claim 2 [sic – 3]. However, Muraki . . . is directed to refrigerating machine oil used with hydrofluorocarbon (HFC) refrigerant. Muraki . . . at col. 3, ll. 27–33. More importantly, Muraki unequivocally denies the use of mineral oils together with HFC refrigerant. Id. at col. 4, ll. 48– Appeal 2013-003820 Application 12/374,725 8 53 (“Naphthenic mineral oils, paraffinic mineral oils, . . . , which ha[ve] been used for the Flon series refrigerant, cannot be used as the base oil of the refrigerating machine oil composition of the present invention because they have poor compatibility with the HFC series refrigerant.”). In other words, Muraki . . . teaches against using mineral oils with HFC refrigerant. Thus, the Examiner cannot use Muraki . . . to reject claim 2 [sic – 3]. Appeal Br. 10. Appellant’s argument is not persuasive. The Examiner does not rely on Muraki to disclose the claimed first and second mineral oils mixed to form the refrigerant oil (see Answer 16), but instead relies on Muraki as a reason for mixing the mineral oils that are disclosed in Kaimai, and proposes to use the mineral oil mixture in Komine’s refrigerant compressor that compresses HFC refrigerant (see id. at 8, citing 2:39–53 of Komine). Further, Kaimai discloses that the disclosed mineral oils are part of “a lubricating oil composition for a refrigerating machine using hydrofluorocarbon (HFC) . . . as a refrigerant.” Kaimai, Abstract. Thus, the Examiner’s rejection appears to be reasonable, and we therefore sustain the obviousness rejection of claim 3. DECISION Based on the above, we AFFIRM the rejections of claims 1–6. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Ssc