Jens Hoehne

Patent Trials and Appeals Board

Sep 17, 2019

14168140 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/168,140 01/30/2014 Jens Hoehne WBF-026 1036
47713 7590 09/17/2019
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
COMLEY, ALEXANDER BRYANT
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
09/17/2019 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 JENS HOEHNE
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Appeal 2018-009221
Application 14/168,1401
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 28–31, 35, 36, 38–44, 46, 47, 49, 51,
and 52. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 “The real party in interest is the assignee, Pressure Wave Systems GmbH,
a limited liability company formed under the laws of Germany.” Appeal
Br. 1.
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Application 14/168,140

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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 28, 38, and 47 are the independent claims on appeal.
Claim 28, reproduced below, is illustrative of the claimed subject matter.
28. A device comprising:
a compressor arrangement with a compressor element,
wherein the compressor element divides the compressor
arrangement into a first volume and a second volume, and
wherein the first volume contains a working gas that is
compressed by the compressor element;
a hydraulic cylinder with a hydraulic piston, wherein the
hydraulic piston is coupled to the compressor element;
a compensation container connected to the first volume
by a gas line with a non-return valve that opens in the direction
of the first volume, wherein the compensation container is
connected by the gas line to the second volume, wherein the
working gas flows between the compensation container and the
second volume, and wherein the working gas flows from the
compensation container to the first volume; and
a cooling device, wherein the first volume is connected to
the cooling device such that compressed working gas from the
first volume flows into the cooling device and expands in the
cooling device.

Rejections
Claims 28–31, 35, 38–42, 44, 46, 47, 49, and 52 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Suganami et al.
(US 4,911,618, issued Mar. 27, 1990) (“Suganami”) and Ingersoll et al.
(US 2012/0096845 A1, publication Apr. 26, 2012) (“Ingersoll”).
Claims 36 and 51 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Suganami, Ingersoll, and Dehne (US 3,640,082,
issued Feb. 8, 1972).
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Application 14/168,140

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Claim 43 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Suganami, Ingersoll, and Newcomb (US 1,307,210, issued
June 17, 1919).

ANALYSIS
Independent claim 28 recites:
a compensation container connected to the first volume
by a gas line with a non-return valve that opens in the direction
of the first volume, wherein the compensation container is
connected by the gas line to the second volume, wherein the
working gas flows between the compensation container and the
second volume, and wherein the working gas flows from the
compensation container to the first volume.
Appeal Br. 19 (Claims App’x). Independent claims 38 and 47 call for a
similar compensation container. See id. at 20–22 (Claims App’x).
The Examiner’s rejection of independent claims 28, 38, and 47 relies
on a finding that the claimed “compensation container” reads on Suganami’s
purification chamber 16. Final Act. 8–10. In support of this finding, the
Examiner provides a dictionary definition of the term “‘compensate’ as ‘to
offset an error, defect, or undesired effect’.” Ans. 14; Compensate
Definition 2, MERRIAM-WEBSTER.COM, https://www.merriamwebster.com/
dictionary/compensate (last visited Sept. 11, 2019).
The Appellant argues that one of ordinary skill in the art reading the
Specification would not have interpreted the term “compensate” as the
Examiner does. See Appeal Br. 9; Reply Br. 6–8. The Appellant’s
argument is persuasive.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
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reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
At the outset, we note the Appellant’s claims and Specification lack
an explicit definition for “compensation container” or “compensation.” The
Examiner refers to the Specification to understand the use of the term
“compensation container.” Specifically, the Examiner explains that the
“[S]pecification states that any reduction in the volume of the working
medium caused by cooling in the cooling device 21 can be compensated by
the gas within the compensation [container] 32 (i.e. by allowing
compensation gas to flow through the check valve 35 and into the chamber
[(first gas volume)] 26).” Ans. 12; see Spec. Fig. 2. Similarly, the
Appellant points to the Specification at paragraph 32, which describes
“‘[t]he reduction of the volume of the working medium resulting from
cooling down in the cooling device 21 can thereby be compensated.’”
Appeal Br. 9; see id. at 2–3.
Based on these similar understandings of how the Specification uses
the term “compensation container,” as well as our own, we fail to understand
how one of ordinary skill in the art, upon reading the Specification, would
understand the claimed “compensation container” as a container that offsets
an error, defect, or undesired effect. Additionally, we note that the
Examiner fails to explain on the record how the Specification describes the
“compensation container” as offsetting an error, defect, or undesired effect.
The Appellant argues “[f]rom the use of the term ‘compensation
container’ in the claims and [S]pecification, it is clear that ‘compensation’
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Application 14/168,140

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supplements something that has been diminished, such as compensation for
the reduced volume of gas as the gas cools.” Appeal Br. 9. Consistent with
the Appellant’s view, the term “compensate,” when used in the field of
mechanics, is defined as, “to counterbalance (a force or the like); adjust or
construct so as to offset or counterbalance variations or produce
equilibrium”). Compensate Definition 3 (Mechanics), DICTIONARY.COM,
https://www.dictionary.com/browse/compensate (last visited Sept. 11,
2019). In view of the foregoing, we determine that the Appellant’s
understanding of the term “compensation container” is in line with giving
the claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
at 1364 (citations omitted).
As discussed above, the Examiner’s rejection of independent claims
28, 38, and 47 relies on a finding that the claimed “compensation container”
reads on Suganami’s purification chamber 16. See Final Act. 8–12. The
Examiner supports this finding by explaining that purification chamber 16
filters out impurities from a gas. See Ans. 13. However, we determine that
the support for the Examiner’s finding is based on a definition of
“compensation container” that is inconsistent with the Specification as
understood by one of ordinary skill in the art. Further, we determine that the
Examiner’s finding is inadequately supported under a proper construction of
the term “compensation container.”
Thus, we do not sustain the Examiner’s rejection of independent
claims 28, 38, and 47 as unpatentable over Suganami and Ingersoll. The
remaining rejections based on Suganami and Ingersoll in combination with
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Application 14/168,140

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Dehne or Newcomb rely on the same inadequately supported finding
discussed above. The inadequately supported finding is not cured by
additional findings and/or reasoning. Thus, we do not sustain the rejections
of claims 36, 43, and 51.

DECISION
We REVERSE the Examiner’s decision rejecting claims 28–31, 35,
36, 38–44, 46, 47, 49, 51, and 52.

REVERSED