Ex Parte Kakiuchi et al

Patent Trial and Appeal Board

Jun 29, 2018

13650908 (P.T.A.B. Jun. 29, 2018)

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.
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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.
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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.
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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
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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
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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).
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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.
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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.
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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
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