Ex Parte Schroeder et al

Patent Trial and Appeal Board

Jul 19, 2016

12454376 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/454,376
7590
Jon Murray Schroeder
3501CR279
Leander, TX 78641
05/18/2009
07119/2016
FIRST NAMED INVENTOR
Jon Murray Schroeder
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.
5557
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1755
MAILDATE DELIVERY MODE
07/19/2016 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 JON MURRAY SCHRODER and GERALD PHILIP HIRSCH
Appeal2014-008423
Application 12/454,376
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY,
and MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal from the Examiner's rejection of claims 1-3, 8-12,
14, and 65----67. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellants identify Jon Murray Schroeder as the Real Party in
Interest. App. Br. 2.
Appeal2014-008423
Application 12/454,376
The Claimed Invention
Appellants' disclosure relates to a system to collect, store, and convert
sunlight to electricity comprising certain elements, including: (a) a reflective
parabolic solar collector; (b) a target for directly capturing sunlight reflected
from and focused by the collector; ( c) an insulated heat store adapted for
receiving and storing heat captured by the target; and ( d) an insulated inlet
duct and an outlet duct connected, respectively, between the target and the
heat store. App. Br. 2, 3; Spec. i-f 112. Claim 1 is representative of the
claims on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 2):
1. A system to collect, store and convert sunlight to
electricity comprising:
(a) a reflective parabolic solar collector;
(b) a target for directly capturing sunlight reflected from
and focused by said collector;
( c) an insulated heat store adapted for receiving and
storing heat captured by said target;
( d) an insulated inlet duct and an outlet duct respectively
connected between the target and the heat store, air
heated within said target being circulated:
I. through said inlet duct to said heat store;
ii. through said heat store from said inlet duct to said
outlet duct; and
iii. back to said target via said outlet duct;
( e) a means for transferring heat from said heat store to a
thermoelectric generator, said thermoelectric generator
including:
I. bismuth telluride and antimony telluride based
semiconductors;
ii. hot fins; and
iii. cold fins; and
(f) a means for controlling the amount of heat transferred
from said heat store to said thermoelectric generator.
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Appeal2014-008423
Application 12/454,376
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hermann US 2,252,427 Aug. 12, 1941
Hanson US 4,095,998 June 20, 1978
Awalt, Jr. US 4,143,705 March 13, 1979
(hereinafter "Awalt")
Nagatomo et al., US 4,497,240 Feb. 5, 1985
(hereinafter "N agatomo ")
Skjold Petersen US 4,906,504 Mar. 6, 1990
(hereinafter "Petersen")
Pinnavaia et al., US 2002/0160176 Al Oct. 31, 2002
(hereinafter "Pinna vaia")
Bikos et al., US 2003/0228213 Al Dec. 11, 2003
(hereinafter "Bikos")
Yamaguchi et al., US 2004/0221577 Al Nov. 11, 2004
(hereinafter "Yamaguchi")
Marshall US 2005/0109387 Al May 26, 2005
Chakraborty et al., US 2008/0083446 Al Apr. 10, 2008
(hereinafter "Chakraborty")
Lazzara et al., US 2008/0216822 Al Sept. 11, 2008
(hereinafter "Lazzara")
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Appeal2014-008423
Application 12/454,376
The Rejections
On appeal, the Examiner maintains the following rejections:2
1. Claims 12, 66, and 67 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter the applicants regard as the invention.
2. Claims 1-3, 8, 9, and 14 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lazzara in view of Marshall in view
of Hanson.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lazzara in view of Marshall in view of Hanson as applied
to claims 1-3, 8, 9, and 14, and in further view of Pinnavaia.
4. Claim 65 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lazzara in view of Marshall in view of Hanson as applied
to claims 1-3, 8, 9, and 14, and in further view of Awalt.
5. Claims 66 and 67 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lazzara in view of iviarshall in view of Hanson as applied
to claims 1-3, 8, 9, and 14, and in further view of Yamaguchi.
6. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lazzara in view of Marshall in view of Hanson as applied
to claims 1-3, 8, 9, and 14, and in further view of Hermann.
7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lazzara in view of Marshall in view of Hanson as applied
to claims 1-3, 8, 9, and 14, and in further view of Petersen.
2 See Advisory Action mailed November 12, 2013.
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Appeal2014-008423
Application 12/454,376
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer, which we adopt as our
own. Nevertheless, we highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
The Examiner rejects claims 12, 66, and 67 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter the applicants regard as the invention.
Ans. 2, 3; Non-Final Act. 3, 4.
In response to this rejection, Appellants offer no substantive
arguments on the merits. 3 Instead, Appellants contend that the Examiner's
rejection "must be summarily overruled and struck" because the "June 27th
Office Action lacks an express rejection of claims 12, 66 and 67 under ...
35 U.S.C. [§] 112" and due to the "lack of any notice" that these claims were
being rejected on§ 112 grounds. Reply Br. 2--4.
Appellants' contentions, however, are petitionable-not appealable-
matters, and are, therefore not within the discretion of the Board. See MPEP
§ 1201, Rev. 07.2015, 9th ed., (Nov. 2015) ("The Board will not ordinarily
hear a question that should be decided by the Director on petition .... "). As
such, we do not address these procedural matters in this Appeal.
3 As noted below, Appellants also do not address or present any substantive
arguments in response to the Examiner's rejections of claims 12, 66, and 67
under 35 U.S.C. § 103(a) as being unpatentable over the cited art, i.e.,
Rejections 5 and 7 stated above.
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Appeal2014-008423
Application 12/454,376
Moreover, because the Examiner's rejection of claims 12, 66, and 67
under 35 U.S.C. § 112 has not been withdrawn and the Appellants offer no
substantive argument on the merits, we summarily affirm the rejection.
Rejection 2
Appellants argue claims 1-3, 8, 9, and 14 as a group. We, therefore,
select claim 1 as representative of this group, and the remaining claims stand
or fall with claim 1.4 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Lazzara, Marshall, and
Hanson suggests all of the limitations of claim 1. Ans. 5-7. The Examiner
finds that Lazzara discloses the majority of claim 1 's limitations, except that
it does not disclose that the "outlet duct ... leads back to the target" nor
suggest the "use of a thermoelectric device" as required by the claim. Id. at
6, 7 (citing Lazzara, Figs. 1-8, Abstract, i-fi-125, 28, 29). The Examiner,
however, relies on Marshall and Hanson for teachings that account for these
limitations. Id. In particular, the Examiner finds that Marshall teaches that
the thermal transfer fluid is "commonly recirculated in a thermal energy
harnessing system" and that "heated fluid can be used to generate power
from a number of devices including a turbine/ generator or a thermoelectric
device." Id. (citing Marshall, Fig. 1). The Examiner finds further that
Hanson teaches that a bismuth telluride/antimony telluride "thermoelectric
generator can have top and bottom fins placed in the hot exhaust and cooling
4 Because Appellants do not present any specific or additional arguments for
the patentability of the claims in response to Rejections 3 through 7 stated
above, each of these rejections also stands or falls with Rejection 2 and the
patentability of claim I. 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2014-008423
Application 12/454,376
side and [that] these [elements] aid in heat transfer." Ans. 7 (citing Hanson,
Fig. 1, col. 2, 11. 10-40).
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention: (a) "to modify the blower of ... Lazzara so that the cooled fluid
can be recirculated into the inlet of the target store as disclosed by Marshall
because it [would] allow for a self-contained system with less external
variables to consider"; (b) "to modify the energy generating device of
Lazzara by replacing it with a thermoelectric device as disclosed by
Marshall because it [would be] an effective device to harness thermal
energy"; and ( c) "to add a [bismuth telluride/antimony telluride]
thermoelectric device having top and bottom fins to the system of Lazzara as
disclosed by Hanson because it would allow for a larger amount of heat
transfer area and be an effective method to generate electricity." Ans. 6, 7.
Appellants argue that this rejection should be reversed because the
Examiner "fails to identify which element(s) of the iviarshall published
patent application's FIG. 1 ... are to be combined with what particular FIG.
or FIGs. in the Lazzara" reference. App. Br. 8. Relying on their own
proposed modification to Lazzara's Figure 1,5 Appellants further argue that
combining the disclosures of Lazzara and Marshall in the manner found by
the Examiner would render Lazzara's "solar power system 10 inoperable for
its intended purpose because there exists no way for heated fluid to flow
from the solar collection assembly 12 to its thermal storage assembly 14."
Id. at 11, 12.
5 Appellants' proposed modification to Lazzara's Figure 1 is depicted at and
provided as Exhibit B to the Appeal Brief.
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Application 12/454,376
We are not persuaded by Appellants' arguments because they are
premised on the physical, bodily incorporation of Marshall into Lazzara.
The test, however, for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is
what the combined teachings of those references would have suggested to
one of ordinary skill in the art. See id. at 425; see also In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does
not involve an ability to combine their specific structures."); In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.").
Based on the record before us and contrary to Appellants' argument,
the Examiner provides a reasonable basis and identifies sufficient evidence
in the record to evince why one of ordinary skill would have combined the
teachings of the cited references to arrive at Appellants' claimed invention.
See Lazzara, Figs. 1-8, 12, Abstract, i1i125-29; Marshall, Abstract, Fig. 1, i1i1
10, 20, 21, 23; Hanson, Fig. 1, col. 2, 11. 10-40. As the Examiner concluded,
it would have been obvious to one of ordinary skill in the art at the time of
the invention to modify both Lazzara' s blower and its energy generating
device based on Marshall's teachings and suggestions that such
modifications would have, respectively, allowed for a self-contained system
with less external variables to consider and constituted an effective device to
harness thermal energy. Marshall, Fig. 1, i1i121, 23. That Appellants
disagree with the Examiner's reason for combining the references, without
more, is insufficient to establish reversible error. KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known
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Appeal2014-008423
Application 12/454,376
in the art can provide a reason for combining the elements in the manner
claimed).
Appellants' proposed modification to Lazzara's Figure 1 and
argument that combining Lazzara's and Marshall's teachings in such a way
would render Lazzara's system inoperable are also unpersuasive because one
of ordinary skill in the art is presumed to be skilled in the art and, as such,
would not have combined the teachings and assembled the art in a way that
would render the system inoperable for its intended purpose, as Appellants
argue. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed
on the part of one of ordinary skill in the art). Appellants' conclusory
assertion that "the skill level of one of ordinary skill in the relevant art is
indeed very, very low" (Reply Br. 10), without more, is insufficient to rebut
this presumption or otherwise establish reversible error in the Examiner's
findings and rationale for combining the references. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we affirm the Examiner's rejection of claims 1-3, 8, 9,
and 14 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Lazzara, Marshall, and Hanson.
Rejections 3 through 7
With respect to Rejections 3 through 7, as previously noted above,
Appellants do not present any specific or additional arguments for the
patentability of the claims.
Accordingly, based on the findings and technical reasoning provided
by the Examiner, and for the reasons discussed above for affirming
Rejection 2, we also affirm Rejections 3 through 7.
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Appeal2014-008423
Application 12/454,376
DECISION/ORDER
The Examiner's rejections of claims 1-3, 8-12, 14, and 65----67 under
35 U.S.C. § 103(a) are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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