MITSUBISHI HEAVY INDUSTRIES, LTD.

Patent Trials and Appeals Board

Jan 31, 2022

2021004803 (P.T.A.B. Jan. 31, 2022)

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. 15/748,386 01/29/2018 Satoshi Makino P180078US00 5915 38834 7590 01/31/2022 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER DAVIS, JASON GREGORY ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SATOSHI MAKINO, YUKIHIRO IWASA, and YASUHIRO WADA Appeal 2021-004803 Application 15/748,386 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and BRADLEY B. BAYAT, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 8 and 11-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “MITSUBISHI HEAVY INDUSTRIES MARINE MACHINERY & EQUIPMENT CO., LTD.” Appeal Br. 2. Appeal 2021-004803 Application 15/748,386 2 STATEMENT OF THE CASE Claimed Subject Matter Claim 8, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 8. A compression device comprising a centrifugal compressor and a silencer, the centrifugal compressor comprising: an impeller for compressing a fluid; an inlet guide, housing the impeller, for guiding the fluid; and a scroll casing forming a scroll chamber for guiding the fluid which has passed through the inlet guide to outside, the scroll casing consisting of a single member; wherein the silencer comprises a silencer assembly bolt penetrating through the silencer in a direction along a rotational axis of the impeller and fastening the silencer to the scroll casing, wherein the silencer comprises: a first side wall extending in a direction intersecting with the rotational axis of the impeller; and an annular second side wall provided between the first side wall and the centrifugal compressor and surrounding the rotational axis, wherein an ambient-air introduction space for guiding an ambient air to the inlet guide is formed between the first side wall and the second side wall, wherein the silencer assembly bolt extends from the first side wall to the scroll casing in a direction along the rotational axis of the impeller and fastens the first side wall, the second side wall, and the scroll casing, wherein the silencer further comprises at least one silencer element provided in the ambient-air introduction space, wherein the silencer element is supported, in the ambient- air introduction space, by the silencer assembly bolt, wherein the scroll casing comprises a scroll chamber- forming portion forming the scroll chamber, and an annular Appeal 2021-004803 Application 15/748,386 3 outer projection projecting from the scroll chamber-forming portion toward the silencer, and wherein the silencer assembly bolt fastens the silencer and the outer projection in a state where the second side wall abuts the outer projection. References The prior art relied upon by the Examiner is: Name Reference Date Appel US 4,667,769 May 26, 1987 Ono et al. (“Ono”) US 8,096,127 B2 Jan. 17, 2012 Tezuka et al. (“Tezuka Translation”)2 EP 3,067,569 A1 Mar. 19, 2015 Tezuka et al. (“Tezuka ’844”) WO 2015/151844 A1 Aug. 10, 2015 Rejection Claims 8 and 11-18 are rejected under 35 U.S.C. § 103 as unpatentable over Tezuka ’844, Appel, and Ono. ANALYSIS The Examiner’s rejection relies on a finding that Tezuka ’844 teaches a compression device including centrifugal compressor 10 and a silencer. Non-Final Act. 4-6. The Examiner finds: Tezuka ’844’s centrifugal compressor 10 includes a scroll casing (scroll part 13, outer scroll casing 13c, inner scroll casing 13d) and an annular outer projection; and Tezuka ’844’s silencer includes a first side wall, a second side wall, and a 2 The Examiner identifies Tezuka EP 3,067,569 as a translation of Tezuka ’844. We have continued with this construction. Appeal 2021-004803 Application 15/748,386 4 silencer assembly bolt. Non-Final Act. 4-6; see Tezuka Translation ¶ 141. In the Answer, at pages 5 and 6, the Examiner appears to provide two annotated copies of a portion of Tezuka ’844’s Figure 1, which are shown below. Appeal 2021-004803 Application 15/748,386 5 Figure 1 shows “a vertical cross-sectional view showing a turbocharger of a first embodiment.” Tezuka Translation ¶ 35. The Examiner’s annotations point out structures of Tezuka ’844 that the Examiner finds correspond to the claimed invention, including a scroll casing’s outer projection, and a silencer’s first side wall, second side wall, and silencer assembly bolt. Notably, the Examiner finds Tezuka ’844 teaches, “wherein the scroll casing comprises a scroll chamber-forming portion forming the scroll chamber, and an annular outer projection projecting from the scroll chamber-forming portion toward the silencer,” as recited in claim 8. Non-Final Act. 5. The Examiner finds Tezuka ’844, among other things, fails to teach “wherein the silencer assembly bolt extends from the first side wall to the scroll casing in a direction along the rotational axis of the impeller and fastens the first side wall, the second side wall, and the scroll casing” and “wherein the silencer assembly bolt fastens the silencer and the outer projection in a state where the second side wall abuts the outer projection,” as recited in claim 8. Non-Final Act. 6. The Examiner finds Appel teaches the former recitation. Id. at 6-7. Specifically, the Examiner finds Appel’s silencer (muffler 5)’ includes silencer assembly bolt (tension screw 25), which “extends from a first side wall ([front wall] 7’) to the scroll casing in order to fasten the first side wall, a second side wall ([back wall 6]), and scroll casing.” Id. (citing Appel, col. 2, l. 58-col. 3, l. 2, 26-29, Fig. 1b). Appel’s Figure 1b is shown below: Appeal 2021-004803 Application 15/748,386 6 Appel’s Figure 1b shows a part-sectional, part side view of a turbo supercharger compressor inlet and a muffler coupled thereto. Appel col. 2, ll. 35-39, col. 3, ll. 18-21. As for the latter recitation, the Examiner finds that a replacement of Tezuka ’844’s silencer for Appel’s silencer would have resulted in subject matter claimed. In the Examiner’s words: Appel teaches the silencer (5’) has a back wall [6] which is attached to the inlet portion of the supercharger “in any suitable manner, for example by flanges and the like” (column 2, line 67 through column 3, line 1). When adding the silencer of Appel to the inlet wall of Tezuka, the silencer assembly bolt (25 of Appel) would pass through the back wall and into the flange (outer projection) in the scroll casing of Tezuka which holds the silencer assembly bolt. The combination would indirectly join the silencer to the inlet guide via the scroll casing in a state where the second side wall abuts the outer projection. Non-Final Act. 8 (emphasis added). Lastly, we note that the Examiner does not rely on Ono to teach either the former or the latter recitation of claim 8. See id. at 7; Ans. 4 (“The [E]xaminer did not rely on Ono to teach joining the silencer to the compressor.”). The Appellant argues that the combined teachings of Tezuka ’844, Appel, and Ono do not teach the following recitations of claim 8: Appeal 2021-004803 Application 15/748,386 7 wherein the scroll casing comprises a scroll chamber- forming portion forming the scroll chamber, and an annular outer projection projecting from the scroll chamber-forming portion toward the silencer, and wherein the silencer assembly bolt fastens the silencer and the outer projection in a state where the second side wall abuts the outer projection. See Appeal Br. 4-7; Reply Br. 3-5. The Appellant’s argument is persuasive. In this case, the Examiner fails to adequately explain, using evidence or technical reasoning, how Appel teaches that tension screw 25 fastens or joins, either directly or indirectly, to an annular outer projection of scroll chamber-forming portion, as required by claim 8. As pointed out by the Appellant, Appel’s silencer and scroll casing is joined by a “flange or the like” and not tension screw 25. See Reply Br. 2-4; Appel col. 2, l. 58-col. 3, l. 2, Fig. 1b. The Appellant adds that tension screw 25 would have been aligned with Tezuka ’844’s compressor bolt (e.g., fastening bolt 43) rather than the bolt the Examiner identified in Tezuka ’844 as a silencer assembly bolt. See Reply Br. 2. We fail to understand how a replacement of Tezuka ’844’s silencer for Appel’s silencer would have resulted in “wherein the silencer assembly bolt fastens the silencer and the outer projection in a state where the second side wall abuts the outer projection,” as recited in claim 8. Thus, we do not sustain the Examiner’s rejection of independent claim 8 and dependent claims 11-18. Appeal 2021-004803 Application 15/748,386 8 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 11-18 103 Tezuka ’844, Appel, Ono 8, 11-18 REVERSED