Ex Parte Kakiuchi et alDownload PDFPatent Trial and Appeal BoardJun 29, 201813650908 (P.T.A.B. Jun. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/650,908 10/12/2012 Hiroyuki KAKIUCHI 22850 7590 07/03/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 406268US99X DIV 3276 EXAMINER BRADFORD, JONATHAN ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 07/03/2018 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): patentdocket@oblon.com oblonpat@oblon.com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROYUKI KAKIUCHI, T AKAHIKO T AKEW AKI, MASARU FUJII, MASANORI YAMAZAKI, HIDEAKI TAKUMI, HIROMU WATANBE, KOUJI INAGAKI, ATSUSHI KOSAKA, SEIJI INOUE, and SATOSHI INOUE Appeal2016-004892 Application 13/650,908 Technology Center 3700 Before JOHN C. KERINS, MICHAEL L. HOELTER, and SEAN P. O'HANLON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hiroyuki Kakiuchi et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from a final rejection of claims 42, 46, 48, 49, 51---62, 67, 68, 70, 72, 74, 75, 77, and 78. We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing in this appeal was conducted on May 15, 2018, with Teddy S. Gron, Esq., appearing on behalf of Appellants. A transcript of the oral hearing will be made of record in due course. We AFFIRM-IN-PART. Appeal2016-004892 Application 13/650,908 THE INVENTION Appellants' invention is directed to an adsorption heat pump. Claim 42, reproduced below, is illustrative: 42. An adsorption heat pump which comprises an adsorbate, an adsorption/desorption part having an adsorbent for adsorbate adsorption/ desorption, a vaporization part for adsorbate vaporization which is connected to the adsorption/desorption part, and operates with a heat source of 100°C or below, wherein the adsorbent, when examined at 25°C, produces a water vapor adsorption isotherm which, in the relative vapor pressure range of 0.05 to 0.30, has a relative vapor pressure region in which a change in relative vapor pressure of O .15 results in a change in water adsorption amount of 0.18 gig or larger, and wherein the adsorbent is a zeolite comprising at least aluminum, phosphorus, and silicon in the framework structure and the zeolite has a structure represented by CHA in terms of the code defined by International Zeolite Association (IZA). REJECTIONS The Examiner rejects: 1 (i) claims 42, 46, 48, 49, 51---62, 68, 70, 72, 74, 75, 77, and 78 under 35 U.S.C. § 112(b) or§ 112, second paragraph, as being indefinite; and (ii) claims 42, 46, 48, 49, 51-62, 68, 70, 72, 74, 75, 77, and 78 under 35 U.S.C. § 103(a) as being unpatentable over Hiroyuki (JP 11223411, published Aug. 17, 1999),2 in view ofBobonich (Bobonich et al., "The Relation Between the Efficiency of an Adsorbent in a Refrigeration System 1 A rejection of claims 42, 46, 48, 49, 51---62, 68, 70, 72, 74, 75, 77, and 78 under 35 U.S.C. § 112(a) or§ 112, first paragraph, is withdrawn. Ans. 2. 2 An English-language translation of the Japanese published application, dated August 25, 2014, is of record, and reference will be made to that translation, unless otherwise specified. 2 Appeal2016-004892 Application 13/650,908 and its Hydration Isotherm," Theoretical and Experimental Chemistry, Vol. 37, No. 2 (2001), pp. 116-120), and Appellants' Admitted Prior Art; ANALYSIS Rejection (i) - Indefiniteness The Examiner takes the position that it is unclear whether the limitation in claim 42 requiring operation with a heat source of 1 OOQ C or below applies to the "vaporization part" or to the "adsorption/ desorption part." Final Act. 3. The Examiner identifies that, consistent with the Specification, the claim limitation is interpreted as applying to the "adsorption/desorption part." Id. In that claim terms are indeed to be interpreted with a view toward maintaining consistency between the use of the terms in the Specification and the claims, the Examiner has effectively and appropriately resolved any alleged indefiniteness in interpreting the heat source temperature limitation as applying to the adsorption/ desorption part. This rejection is not sustained. The Examiner also regards the limitation in claims 55-57 and 59-61 directed to the "vaporization part" as functioning to remove water from an adsorbent at particular temperature maxima to be unclear, in that the Specification does not disclose that the vaporizer contains adsorbent, but rather only coolant and heat medium. Final Act. 3. The Examiner indicates that, as such, the "vaporization part" is interpreted as referring to the "adsorption/ desorption part." Id. Appellants maintain that a vaporizer functions to cause vaporization of a material and/ or to cause the removal of an adsorbed material in vapor form from an adsorbent, but does not itself use an adsorbent to adsorb water. 3 Appeal2016-004892 Application 13/650,908 Appeal Br. 12. Appellants assert that the terms "adsorbent" and "vaporizer" have art-recognized meanings, and are therefore not indefinite. Id. Even assuming Appellants' position to be correct, the Examiner's confusion is well-placed, in that the Specification describes that water is removed from an adsorbent by heating the adsorbent with a heating source having temperatures at the recited levels, but does not disclose a system in which a vaporizer functions as such a heat source. See, e.g., Spec. 13:16-24. The vaporizer is discussed in terms of sending vapor to an adsorption/desorption column only when such column is in an adsorption mode in which water, in vapor form, is adsorbed by the adsorbent, and not in a desorption mode in which the water would be removed from the adsorbent. See, id., 16:6-26. As such, the Specification lacks disclosure of the claimed removal of water from an adsorbent by a vaporization part, calling into question whether the claims particularly and accurately point out and distinctly claim that which Appellants regard as their invention. The rejection of claims 55-57 and 59---61 as being indefinite is sustained. Concerning claims 42 and 68, the Examiner additionally regards the recitation therein of a "zeolite ha[ ving] a structure represented by CHA in terms of the code defined by International Zeolite Association (IZA)" to be indefinite as an improper use of a trade name. Final Act. 3--4. The Examiner bases the rejection on an observation that the IZA may, at its discretion, amend its code, which would result in a change in the scope of the claims. Id. at 4. Compliance with the provisions of 35 U.S.C. § 112 is determined as of the filing date of the application. 4 Appeal2016-004892 Application 13/650,908 Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). The Examiner does not appear to take the position that, as of the filing date of the present application, there was some uncertainty or lack of clarity as to what the CHA structure in the IZA code was. Thus, one of ordinary skill in the art, with reference to the code in effect as of the filing date of Appellant's application, would readily be able to determine the metes and bounds of the limitation appearing in claims 42 and 68. Accordingly, we will do sustain the rejection of claims 42 and 68, and the claims depending therefrom, as being indefinite. Rejection (ii) -- Obviousness Appellants present arguments, without specifically identifying any claims by number, that appear to be directed to both independent claims 42 and 68. Appeal Br. 13-17. Appellants include, under a separate heading, arguments directed to dependent claims 46, 48, 49, 51, 52, 70, 72, 74, 75, 77, and 78. Id. at 18-19. Those arguments do not differ in substance from the arguments presented for claims 42 and 68, and therefore claims 46, 48, 49, 51, 52, 70, 72, 74, 75, 77, and 78 will be regarded as standing or falling with claims 42 and 68. Appellants additionally provide a separate argument for the patentability of dependent claim 54. That argument is addressed separately below. Claims 4 2 and 68 Appellants argue that Hiroyuki does not suggest the use of a SAP0-34 adsorbent, but rather uses a purportedly lower quality adsorbent, such as a silica gel, and modifies other operating conditions in performing as an adsorption heat pump. Appeal Br. 14. Relatedly, Appellants maintain that, in order to reach the claimed invention, the person of ordinary skill in the art 5 Appeal2016-004892 Application 13/650,908 would have to think in contradiction to what is taught in the prior art, i.e., to use a zeolite adsorbent rather than a silica gel adsorbent. Id. at 16. These arguments fail to address the cited prior art as a whole. Bobonich expressly notes that the candidate adsorbent materials considered in that study include both silica gels and zeolites, including specifically an SAP0-34 composition compared against silica gels. Bobonich, passim. Bobonich discusses that adsorption efficiency can be estimated using temperature characteristic adsorption curves, and concludes from its study that SAP0-34 is one of "the most promising materials for use in adsorption refrigeration systems." Id. at 120. Accordingly, it does not appear that one skilled in the art would be proceeding against the teachings in the art to modify the Hiroyuki system to employ a SAP0-34 adsorbent therein, regardless as to whether Hiroyuki itself does not suggest the same. Appellants further argue that, even if Hiroyuki were modified in view ofBobonich such that an SAP0-34 adsorbent were used, the Examiner has failed to show that the SAP0-34 composition in Bobonich would possess the performance characteristics recited in claims 42 and 68, which involve a recited change in water adsorption amount based on a change in relative vapor pressure within a particular relative vapor pressure range on a particular water vapor adsorption isotherm. Appeal Br. 15-17. Appellants assert that not all SAP0-34 adsorbents will have identical properties, and present a table purporting to evidence that the SAP0-34 adsorbent in Bobonich affirmatively does not meet the claimed performance characteristics noted above. Id. at 15. Certain aspects of Appellants arguments are addressed below. However, ultimately, the dispositive issue in determining the propriety of 6 Appeal2016-004892 Application 13/650,908 this rejection does not tum on the precise teachings of Bobonich. The Examiner takes the further position that, "[t]o the extent that the SAP0-34 manufactured by UOP LLC is different than the SAP0-34 described in Bobonich ... , it would have been obvious to one with ordinary skill in the art to apply UOP LLC SAP0-34 since the company appears to be an ordinary supplier of the material." Final Act. 6-7. Appellants do not challenge this further conclusion. 3 The rejection is sustained on this basis alone. Returning to the Bobonich disclosure, and the alleged lack of disclosure of an SAP0-34 adsorbent meeting the claimed performance characteristics, Appellants make much of the data presented in table form at page 15 of the Appeal Brief. That table purports to evidence that the change in water adsorption amount within the claimed change in relative vapor pressure is 0.055 g/g for the SAP0-34 adsorbent employed in the Bobonich research, which is below the claimed minimum of 0.18 gig. Is it not evident from the Appeal Brief itself where or how that value for the Bobonich adsorbent was obtained. At oral hearing, counsel for Appellants advised that the value was obtained from data appearing in Table 2 of Bobonich (p. 119) for SAP0-34, at the adsorption time of 8 hours, and the l'ia of 12.0 (amount 3 Appellants, in the Reply Brief, assert belatedly that "[ t ]he particular adsorbent described in Example 1 is not described in the present specification as a prior art adsorbent - it is described only as being manufactured by UOP LLC." Reply Br. 5. This argument was not raised in the Appeal Brief, nor is it responsive to a new position taken by the Examiner in the Answer. Appellants also do not show that good cause exists as to why the argument was not previously made. The argument is thus not considered in deciding this appeal. See, 37 C.F.R. § 41.41(b)(2). 7 Appeal2016-004892 Application 13/650,908 of water adsorbed in mol/kg), and performing a units conversion from mol/kg to gig. Hearing Tr. 4--5. Not only are we unable to reproduce the 0.055 gig result appearing in Appellants' Appeal Brief, 4 data in Table 2 of Bobonich does not appear to be pressure dependent, in that Bobonich states that the data are obtained at a constant water vapor pressure of 513 Pa. In contrast, claims 42 and 68 call for a change in water adsorption amount of O .18 g/ g or larger resulting from a change in relative water vapor pressure over a particular range of pressures. As such, the arguments based on a purported disclosure in Bobonich of an SAP0-34 adsorbent falling outside the scope of the claims is unavailing as well. The rejection of claims 42 and 68 is sustained. Claims 46, 48, 49, 51, 52, 70, 72, 74, 75, 77, and 78 fall with claims 42 and 68. Claim 54 Appellants argue that the limitation in claim 54 requiring that the adsorption/desorption part be directly connected to a condensation part is not met by the cited references. Appeal Br. 17-18. The Examiner takes the position that, under a broadest reasonable interpretation of the expression "directly," which the Examiner takes to mean "without changing direction or stopping," the Hiroyuki system discloses this limitation, in that, when valves 103, 104 are open, adsorbate circulates to condenser 14 without changing direction or stopping. Ans. 7. Appellants respond that, under such an interpretation, two sections/ components of an operating unit may be regarded as directly connected, regardless as to whether one or more 4 By our calculation, 12 mol/kg, multiplied by 18 g/mol (water), yields a result of216 g/kg, which converts to 0.216 gig. 8 Appeal2016-004892 Application 13/650,908 functional devices are positioned between those two sections/components. Reply Br. 5. Although Appellants do not appear to have used the term "directly connected" in the portions of the Specification describing the drawing figures, and the apparatus illustrated in Figure 1 generically shows valving 33, 34 present between adsorption columns 1, 2, and condenser 5, that valving appears to operate only to switch a particular adsorption column from adsorption mode to desorption mode, or vice versa. In contrast, Hiroyuki positions a refrigerant vapor compressor 10 between columns 11, 12 and condenser 14. We agree with Appellants that the Examiner's interpretation goes beyond a broadest reasonable interpretation in the context of processing units of these types. A direct connection implies that a fluid passing through the system proceeds from one component to the one directly connected to it, without any deliberate manipulation of the fluid or its properties. The presence of a refrigerant vapor compressor between adsorption columns and a condenser negates this understanding of a direct connection between the two. The rejection of claim 54 is not sustained. DECISION The rejection of claims 42, 46, 48, 49, 51-54, 58, 62, 68, 70, 72, 74, 75, 77, and 78 under 35 U.S.C. § 112, second paragraph, as being indefinite is REVERSED. 9 Appeal2016-004892 Application 13/650,908 The rejection of claims 55-57 and 59---61 under 35 U.S.C. § 112, second paragraph, as being indefinite is AFFIRMED. The rejection of claims 42, 46, 48, 49, 51-53, 55-62, 67, 68, 70, 72, 74, 75, 77, and 78 under 35 U.S.C. § 103(a) as being unpatentable over Hiroyuki, Bobonich, and Appellants' Admitted Prior Art is AFFIRMED. The rejection of claim 54 under 35 U.S.C. § 103(a) as being unpatentable over Hiroyuki, Bobonich, and Appellants' Admitted Prior Art is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation