Ex Parte Lengert

Board of Patent Appeals and Interferences

May 21, 2012

10558894 (B.P.A.I. May. 21, 2012)

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.
10/558,894 11/30/2005 Jorg Lengert 2004P03875WOUS 6143
22116 7590 05/22/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
NGUYEN, HOANG M
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
05/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORG LENGERT
____________

Appeal 2009-015077
Application 10/558,894
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jorg Lengert (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 15-34 under 35 U.S.C. § 103(a) as
unpatentable over Kalina ʼ918 (US 5,953,918, issued Sep. 21, 1999) and
Kalina ʼ421 (US 6,820,421 B2, issued Nov. 23, 2004). Appellant cancelled
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/558, 894

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THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a method and device for
executing a thermodynamic cycle process used by thermal power stations to
convert heat into mechanical or electrical energy. Spec. 1. Claims 15, 26,
and 27 are independent. Claim 15, reproduced below, is illustrative of the
subject matter on appeal.
15. A method for performing a
thermodynamic cycle process, the method
comprising:
pumping a flow of liquid working medium
at an increased pressure and forming a
pressurized, liquid working medium flow;
heating up and partly vaporizing the
pressurized, liquid working medium flow by partly
condensing an expanded working medium flow;
creating a first partly vaporized working
medium flow and a partly condensed, expanded
working medium flow;
directly transferring an entirety of the first
partly vaporized working medium flow to a
heat exchanger for further vaporizing the first
partly vaporized working medium flow with heat
which is transferred from an external heat source;
creating a second at least partly vaporized
working medium flow;
separating a liquid phase from a vapor phase
of the second at least partly vaporized
working medium flow;
expanding the vapor phase;
converting an energy of the vapor phase into
a usable form;
creating an expanded vapor phase;
mixing the liquid phase with the expanded
vapor phase;
creating the expanded working medium
flow;
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completely condensing the partly
condensed, expanded working medium flow; and
creating the liquid working medium flow.

App. Br., Clms. App’x.

OPINION
The Examiner finds that Figure 3 of Kalina ʼ918 discloses a Kalina-
type power plant, i.e., one that uses a mixture of ammonia and water as the
working medium rather than just water as is used in a Rankine-type power
plant (see Spec, 1-2, para. [0004]), including heat exchangers HE-1, HE-2,
HE-3, HE-5, and a separator S with mixing means. Ans. 3. The Examiner
also finds that Kalina ʼ918 “does not disclose that the liquid from the
separator is joined directly with the exhaust of the turbine, but [instead the
liquid from the separator] go[es] through heat exchanger[] HE-3.” Id. The
Examiner turns to Figure 2 of Kalina ʼ421 to teach “a power plant
comprising heat exchanger HE2, a separator S2, a turbine T1, and heat
exchangers HE1 and HE4,” wherein “the separator S2 separat[es] the
working fluid so that the gas going to drive the turbine through 72, and the
liquid 24 is joining the exhaust of the turbine 73.” Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
“to join the liquid of the separator in [Kalina ʼ]918 directly with the exhaust
of the turbine as taught by [Kalina ʼ]421 for the purpose of achieving
appropriate temperature at the location.” Id.
Appellant contends that the Examiner uses impermissible hindsight in
combining Kalina ʼ918 with Kalina ʼ421, because there is “no indication in
the Kalina ʼ918 reference, or anywhere else, that the ‘temperature at that
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location’ was not appropriate.” App. Br. 6-7. Appellant notes that Kalina
ʼ918 likely “chose the temperature used specifically because it was
appropriate for the system presented in Kalina ʼ918.” App. Br. 7. Thus,
Appellant also contends that “[a]bsent any teaching or suggestion in the
references, or even based on knowledge of those of ordinary skill in the art,
that the temperature at that location was inappropriate, then there is no
motivation to modify the Kalina ʼ918 reference,” except through the use of
impermissible hindsight. Id.
The Federal Circuit has stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). It is improper to base a conclusion of obviousness upon facts
gleaned only through hindsight. “To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.”
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).
We agree with Appellant. We find that the Examiner’s explanation of
the rejection consists of nothing more than a series of essentially
unconnected discussions of selected teachings of the Kalina ʼ918 and Kalina
ʼ421 references followed by a conclusory statement of obviousness. The
determination as to whether there was an apparent reason to combine the
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known elements of Kalina ʼ918 and Kalina ʼ421 in the manner claimed
requires an analysis regarding the teachings of Kalina ʼ918 and Kalina ʼ421,
and the knowledge of a person having ordinary skill in the art. However, the
Examiner has not provided an analysis as to how the known elements of
Kalina ʼ918 and Kalina ʼ421 would be combined in the manner called for in
independent claims 15, 26, and 27.
In addition, the Examiner has not articulated a reason having some
rational basis as to why it would have been obvious to a person of ordinary
skill in the art to combine the teachings of Kalina ʼ918 and Kalina ʼ42 as
required by KSR and discussed supra. The Examiner’s reasoning that it
would have been obvious to one of ordinary skill in the art to modify Kalina
ʼ918 by Kalina ʼ421 “for the purpose of achieving appropriate temperature at
that location” (Ans. 3), is a mere conclusory statement that is not supported
by either Kalina ʼ918, Kalina ʼ421, or the general knowledge within the art.
Thus, we agree with Appellant that since neither of the Kalina ʼ918 and
Kalina ʼ421 references, nor the general knowledge within the art, indicates
that the temperature at the location where Kalina ʼ918’s liquid 10 exits the
separator S was not appropriate, it would not have been obvious to one of
ordinary skill in the art to join the liquid 10 from the separator S in Kalina
ʼ918 directly with the exhaust 34 of the turbine T in accordance with the
teaching of Kalina ʼ421.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 15-34 under 35 U.S.C. § 103(a) as unpatentable over Kalina ʼ918
and Kalina ʼ421.
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DECISION
We reverse the Examiner’s rejection of claims 15-34.

REVERSED

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