Ex Parte Taras et al

Patent Trial and Appeal Board

Aug 31, 2017

12902200 (P.T.A.B. Aug. 31, 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.
12/902,200 10/12/2010 Michael F. Taras PA7003USAA; 1653
60246-691US1
26096 7590 09/05/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ALOSH, TAREQ M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
ptodocket @ cgolaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL F. TARAS, ALEXANDER LIFSON,
and MICHAEL L. BALISTRERI
Appeal 2016-0060481
Application 12/902,2002
Technology Center 3700
Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 4—12, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Aug. 26,
2015), Reply Brief (“Reply Br.,” filed Feb. 5, 2016), and Sur-Reply Brief
(“Sur-Reply Br.,” filed May 26, 2016, and the Examiner’s Answer (“Ans.,”
mailed Dec. 7, 2015), Supplemental Answer (“Supp. Ans.,” mailed Mar. 30,
2016, and Final Office Action (“Final Act.,” mailed Apr. 3, 2015).
2 According to Appellants, the real party in interest is Carrier Corporation.
Appeal Br. 1. “Ultimately, Carrier Corporation is owned by United
Technologies Corporation.” Id.
Appeal 2016-006048
Application 12/902,200
BACKGROUND
According to Appellants, the Specification “relates to refrigerant
system controls for providing a reheat function to accurately tailor
environmental conditions to desired conditions.” Spec. 12.
CLAIMS
Claim 1 is the only independent claim on appeal and recites:
1. A refrigerant system comprising:
at least one refrigerant circuit comprising at least one
compressor for compressing a refrigerant and delivering it
downstream to a heat rejection heat exchanger;
a bypass line provided around said heat rejection heat
exchanger for selectively allowing at least a portion of
refrigerant to bypass said heat rejection heat exchanger;
a first valve controlling flow to said heat rejection heat
exchanger and a second valve on said bypass line to
individually control the flow of refrigerant through said heat
rejection heat exchanger and around said heat rejection heat
exchanger;
an expansion device positioned downstream of said heat
rejection heat exchanger, and an evaporator positioned
downstream of said expansion device, refrigerant from said
evaporator passing back to said at least one compressor;
a reheat cycle incorporated into said refrigerant system,
including a third valve for selectively delivering at least a
portion of refrigerant through a reheat heat exchanger, said
reheat heat exchanger being positioned in the path of air
downstream of said evaporator; and
a control for said system programmed to be operable in a
dehumidification mode to achieve a desired level of
dehumidification and temperature control to air being delivered
over said evaporator and said reheat heat exchanger and into an
environment to be conditioned, said control programmed for
initially opening said second valve on said bypass line to a
relatively open position to achieve additional reheat control,
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Application 12/902,200
said control programmed for continuing to open said second
valve, and monitoring a supply air temperature into the
environment to be conditioned, and once said second valve
reaches a particular relatively high open percentage, if said
supply air temperature is still below a desired temperature, said
control programmed for then beginning to close said first valve
on a line leading to said heat rejection heat exchanger to
achieve additional reheat control.
Appeal Br. 9.
REJECTIONS
1. The Examiner rejects claims 6, 8, and 9 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1,2, 4—7, and 12 under 35 U.S.C. § 102(b)
as anticipated by Lifson ’268.3
3. The Examiner rejects claims 8—11 under 35 U.S.C. § 103(a) as
unpatentable over Lifson ’268.
4. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Lifson ’268 in view of Lifson ’660.4
5. The Examiner rejects claims 1, 2, and 4—12 under 35 U.S.C. § 103(a) as
unpatentable over Lifson ’268 in view of Taras.5
6. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Lifson ’268 in view of Taras and Lifson ’660.
3 Lifson et al., WO 2008/150268 Al, pub. Dec. 11, 2008 (“Lifson ’268”).
4 Lifson et al, US 7,353,660 B2, iss. Apr. 8, 2008 (“Lifson ’660”).
5 Taras et al., US 2006/0225444 Al, pub. Oct. 12, 2006.
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Appeal 2016-006048
Application 12/902,200
DISCUSSION
Indefiniteness
Claim 6
The Examiner finds that the limitation “said control provides head
pressure control when said position of said at least one of first and second
valves is such that control of a head pressure is deemed desirable,” as recited
in claim 6, “renders the claim indefinite, as it is unclear when head pressure
control would be undesirable in a refrigerant system.” Final Act. 2. The
Examiner also finds that “it cannot be discerned what pressure is referred to
by the recitation of ‘head pressure’” and that “head pressure control” lacks
sufficient antecedent basis. Id.
Appellants argue:
At most, this is not an indefmiteness argument, but rather a
statement that the claim may be broad. However, a worker of
ordinary skill in the art would recognize that the situation
described in paragraph 31 of the specification is a situation
where head pressure control would be “desirable”. The
situation is a result of the overall claimed control of claim 1,
and a worker of ordinary skill in the art would understand what
is meant by claim 6.
Appeal Br. 5—6.
We are not persuaded of error. Although the Specification at
paragraph 31 provides one example of when head pressure control is
desirable, the Specification does not effectively provide an objective
standard for measuring the scope of the term “desirable.” Claim scope
cannot depend solely on the unrestrained, subjective opinion of a particular
individual purported to be practicing the invention. Datamize LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)); see also
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014)
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Application 12/902,200
(holding the claim phrase "unobtrusive manner" indefinite because the
specification did not “provide a reasonably clear and exclusive definition,
leaving the facially subjective claim language without an objective
boundary”). Accordingly, we sustain the rejection of claim 6 here.
Claims 8 and 9
The Examiner finds that claims 8 and 9 are indefinite based on the
limitation “said control operates in oil return mode when at least one of said
first and second valves is in a position to indicate a need for oil return,” as
recited in claim 8. Final Act. 2. The Examiner finds that “it cannot be
discerned what is required of the control and what position of one of the first
and second valves is required, and further what the structural relationship
between the valves and control is necessary, to provide an indication of a
need for oil return.” Id. The Examiner also finds that “there is insufficient
antecedent basis for the recitation of ‘oil return mode’.” Id.
Appellants argue that the “situation described in paragraph 33 of the
specification makes clear that claim 8 is not indefinite,” and “a worker of
ordinary skill in the art would recognize when there would be a need for oil
return, given the claimed control of claim 1, and challenges it may raise with
other system functions.” Appeal Br. 6.
We are not persuaded of error. We agree with the Examiner that
Appellants’ reliance on paragraph 33 of the Specification does not provide
clarity to the claim. The Specification describes a sub-routine “for ensuring
that the oil return to the compressor is adequate” and that “if the time
elapsed since entering the cooling mode is greater than a maximum time,
then the system moves into charge/oil return mode.” Spec. 133. However,
we see no indication of an objective standard by which it may be determined
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that there is “a need for oil return,” as required by the claim. Accordingly,
we sustain the rejection of claims 8 and 9 here.
Obviousness: Lifson ’268 in view of Taras
Regarding this rejection, Appellants address the claims as a single
group. See Appeal Br. 7. We discuss claim 1 below, and claims 2 and 4—12
stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Lifson ’268 discloses
a refrigerant circuit, a bypass line, a first valve, a second valve, an expansion
device, a reheat cycle, and a control as claimed. Final Act. 3^4 (citing
Lifson ’268 Fig. 2; || 22, 23). In addition to finding that Lifson ’268’s
controller is programmed as claimed, the Examiner finds that a control
programmed as claimed would have been obvious in view of Taras. Id. at
8—9. Specifically, the Examiner finds that Taras “teaches a control
programmed to control the degree of opening of first and second valves (26
and 122, respectively; see Fig. 1 A) so as to achieve additional reheat control
by allowing refrigerant to bypass a condenser (24) prior to delivery to a
reheat heat exchanger (30).” Id. at 8 (citing Taras 128). The Examiner
further finds:
Note ‘at least a portion of the refrigerant’ [in Taras paragraph
28] is clear disclosure of any level of refrigerant bypassing
condenser 24, including bypassing the entire amount of
refrigerant in the circuit. Further note that Taras ’444 explicitly
teaches providing maximal reheating (by having the entire flow
of refrigerant bypass condenser 24) would be provided at the
expense of reducing the cooling capacity of the circuit.
Therefore, it would have been obvious to one of ordinary skill
in the art, at the time of the claimed invention, to provide the
control of Lifson ’268 with the capacity to bypass the entire
flow of refrigerant around the heat rejection heat exchanger
(124), as taught by Taras ’444, during reheat operations in
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Application 12/902,200
which bypassing only a partial flow of refrigerant would be
insufficient in raising the temperature of supply air to a desired
temperature (when the second valve 162 is, e.g., entirely open
and the partial flow of refrigerant being bypassed would
provide a temperature below a desired temperature) by means
of subsequently closing the first valve (123), thereby providing
additional reheating capacity in such necessary circumstances
while reducing cooling capacities only as necessary (i.e., when
a partial flow of refrigerant bypassing 124 would provide
insufficient heating), thus improving the operational flexibility
of the system of Lifson ’268.
Id. at 9.
The Examiner continues in response to Appellants’ arguments:
Taras clearly discloses that the maximal reheat provided by
completely bypassing a condenser comes at the expense of
commensurately reducing the cooling capacity of the
refrigerant. So, in obviously applying these teachings of Taras
to the control of Lifson ’268, which controls his first and
second valves - i.e., providing complete bypassing of the
condenser by closing the first valve 123 of Lifson ’268 only
when partial bypassing does not sufficiently reheat
dehumidified air - the resulting, obvious control meets the
limitations of the control recited by claim 1.
Ans. 11.
As discussed below, we are not persuaded of reversible error by
Appellants’ arguments with respect to this rejection.
As an initial matter, we discuss the appropriate construction of the
limitations at issue in Appellants’ arguments. Specifically, Appellants do
not argue that Lifson ’268 does not disclose the structure claimed, i.e., the
refrigerant circuit, bypass line, first and second valves, expansion device,
reheat cycle, or control. Rather, the issues before us relate only to the
functional language provided with respect to the claimed control. The claim
requires that the control is “programmed to be operable” to open and close
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Application 12/902,200
the first and second valves in a particular order “to achieve a desired level of
dehumidification and temperature control.” We are not aware of, and
Appellants do not identify, any particular structure required to perform the
claimed function beyond a controller that is programmable. Thus, we find
that the claimed control reads on any prior art controller that is
programmable and capable of performing the claimed function.
With respect to this rejection, Appellants only argue that neither
Lifson ’268 nor Taras “recite a control in the two distinct stages as required
by the claims.” Appeal Br. 7. We are not persuaded for two reasons. First,
we find that both Lifson ’268 and Taras disclose a control that is
programmable to open and close first and second valves. See Lifson ’268
1116, 22, 23; see also Taras 114, 9, 28. We see no distinction in the
structure of Lifson ’268 or Taras that would indicate their controls are not
capable of being programmed to function as claimed. Second, the rejection
relies on the combination of Lifson ’268 and Taras to show that the claimed
functionality would have been obvious, a finding which Appellants do not
specifically address. See Final Act. 8—9. Thus, Appellants’ argument
against the references individually, i.e., the argument that neither Lifson
’268 nor Taras individually describe the use of a controller as claimed, is not
persuasive of error.
Based on the foregoing, we sustain the rejection of claims 1 as
obvious. We also sustain the rejection of claims 2 and 4—12 for the same
reasons.
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Application 12/902,200
Remaining Rejections
Because our conclusion with respect to the obviousness rejection over
Lifson ’268 and Taras is dispositive with respect to all claims on appeal, we
do not reach the remaining anticipation and obviousness rejections.
CONCLUSION
We AFFIRM the rejection of claims 6, 8, and 9 under 35 U.S.C.
§112, second paragraph.
We AFFIRM the rejection of claims 1, 2, and 4—12 under 35 U.S.C.
§ 103(a) as unpatentable over Lifson 268 in view of Taras.
We do not reach the remaining rejections.
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).
AFFIRMED
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