Bronswerk Marine Inc.

Patent Trials and Appeals Board

Jun 10, 2020

2019006244 (P.T.A.B. Jun. 10, 2020)

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.
14/801,221 07/16/2015 Augusto San Cristobal 55921686-1US 9993
20988 7590 06/10/2020
NORTON ROSE FULBRIGHT CANADA LLP
1, PLACE VILLE MARIE
SUITE 2500
MONTREAL, QUEBEC H3B 1R1
CANADA
EXAMINER
ZEC, FILIP
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/10/2020 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 AUGUSTO SAN CRISTOBAL
____________

Appeal 2019-006244
Application 14/801,221
Technology Center 3700
____________

Before STEFAN STAICOVICI, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Oct. 18, 2018, hereinafter “Final
Act.”) rejecting claims 1–15. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Bronswerk Marine Inc. is identified as the real party in
interest in Appellant’s Appeal Brief 3 (filed Mar. 18, 2019, hereinafter
“Appeal Br.”).
Appeal 2019-006244
Application 14/801,221

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INVENTION
Appellant’s invention relates to sea or fresh water-cooled refrigeration
systems used in ships. Spec. para. 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A self-enclosed modular refrigeration unit of a
refrigeration system comprising:
at least one compressor adapted to compress a
refrigerant;
a heat exchanger adapted to be connected to a cooling
water network to condense the refrigerant with cooling water;
a suction line connected to a suction side of the
compressor and adapted to provide a feed of refrigerant to the
compressor;
a discharge line connected to a discharge side of the
compressor and to the heat exchanger to direct compressed
refrigerant to the heat exchanger;
a head pressure control valve in the discharge line
downstream of the heat exchanger to control an upstream
pressure;
a casing enclosing the compressor, the heat exchanger,
the head pressure control valve;
an outlet line having an outlet end downstream of the
head pressure control valve adapted to output cooling
refrigerant having passed through the head pressure control
valve; and
an inlet end upstream of the suction line adapted to
provide a feed of refrigerant to the compressor.

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REJECTIONS

I. The Examiner rejects claims 1–6, 8, and 9 under 35 U.S.C.
§ 103 as being unpatentable over Song,2 Hamilton,3 and
Tipton.4
II. The Examiner rejects claim 7 under 35 U.S.C. § 103 as being
unpatentable over Song, Hamilton, Tipton, and Jayanth.5
III. The Examiner rejects claims 10, 13, and 14 under 35 U.S.C.
§ 103 as being unpatentable over Horton,6 Song, Hamilton, and
Tipton.
IV. The Examiner rejects claim 11 under 35 U.S.C. § 103 as being
unpatentable over Horton, Song, Hamilton, Tipton, and Jin.7
V. The Examiner rejects claim 12 under 35 U.S.C. § 103 as being
unpatentable over Horton, Song, Hamilton, Tipton, and Yano.8
VI. The Examiner rejects claim 15 under 35 U.S.C. § 103 as being
unpatentable over Horton, Song, Hamilton, Tipton, and Sakae.9

2 Song et al., US 2006/0123817 A1, published June 15, 2006.
3 Hamilton, US 2013/0186122 A1, published July 25, 2013.
4 Tipton, US 2002/0139137 A1, published Oct. 3, 2002.
5 Jayanth et al., US 2012/0075754 A1, published Mar. 29, 2012.
6 Horton, US 4,356,708, issued Nov. 2, 1982.
7 Jin et al., US 2006/0112705 A1, published June 1, 2006.
8 Yano, US 2007/0039346 A1, published Feb. 22, 2007.
9 Sakae et al., US 2010/0154465 A1, published June 24, 2010.
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ANALYSIS
Rejection I
Appellant does not present arguments for the patentability of claims
2–6, 8, and 9 apart from claim 1. See Appeal Br. 8–18. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2–6, 8, and 9 standing or falling with claim 1.
The Examiner finds that Song discloses an air conditioning system
including, inter alia, heat exchanger 54, but “does not teach that the heat
exchanger is connected to a cooling water network and is adapted to
condense the refrigerant with cooling water.” Final Act. 3–4 (citing Song,
paras. 52, 62, 63, Fig. 2). Nonetheless, the Examiner finds Hamilton
discloses refrigeration unit 11 including heat exchanger 15 connected to
cooling water network 12 and adapted to condense the refrigerant. Id. at 4
(citing Hamilton, para.25). Thus, the Examiner concludes that it would have
been obvious for a person of ordinary skill in the art to connect Hamilton’s
cooling water network 12 to Song’s heat exchanger 54 because, “by water
cooling the refrigerant within the condenser as opposed to air cooling[,] . . .
a greater rate of heat transfer would have occurred between the refrigerant
and the heat medium improving performance of the refrigeration unit.” Id.
According to the Examiner “it is known in the refrigeration art to have water
cooled condensers,” as evidenced by Cawley (US 2003/0057396 A1,
published Mar. 27, 2003), which “discloses typical cooling mediums to cool
refrigerant in heat exchangers being air and water” and Park et al. (US
2012/0138270 A1, published June 7, 2012, hereinafter “Park”), which
discloses in paragraph 7 that in “‘the water-cooled condensers … the
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cooling efficiency is higher than the air-cooled condensers’.” Final Act. 15–
16; Advisory Action 2 (dated Dec. 27, 2018, hereinafter “Adv. Act.”).
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction. See Appeal Br. 15.
According to Appellant, because Song’s disclosure is limited to an air heat
exchanger, the Examiner has failed to provide objective evidence as to “why
such unconventional modifications to an indoor hot water system . . . would
have been obvious to the POSITA.” Id. at 15–16.
We are not persuaded by Appellants’ argument that the Examiner’s
determination of obviousness is based on impermissible hindsight
reconstruction. The Examiner has provided adequate reasoning with rational
underpinnings to combine the teachings of Song and Hamilton, namely, to
improve the performance of Song’s refrigeration unit “by replacing the air to
refrigerant heat exchanger with the water to refrigerant heat exchanger.” See
Examiner’s Answer (dated June 21, 2019, hereinafter “Ans.”) 6; In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In fact, the Examiner’s
modification constitutes an improvement to Song’s air conditioning system
to replace the air to refrigerant heat exchanger with the water to refrigerant
heat exchanger to lead to the predictable result of improved cooling
efficiency, as evidenced by Park, and the modification is well within the
skill of one having ordinary skill in this art. KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
Appellant further argues that the Examiner has failed to provide “any
objective evidence as to how a POSITA would have routed an indoor hot
water tank water supply to the outside for connection to an outdoor air
conditioning unit.” Appeal Br. 15. Appellant explains that because Song’s
air conditioning system is employed in a continuous manner, thereby
generating high heat outputs, whereas Hamilton’s hot water tank is small
and used intermittently, “the Song refrigeration system, if connected to the
Hamilton water heater, would become inoperable for its intended purpose of
air conditioning,” due to Hamilton’s insufficient heat storage capacity. Id. at
16–17 (citing Song, paras. 24, 25); Reply Brief 3–4 (dated Aug. 21, 2019,
hereinafter “Reply Br.”). Thus, according to Appellant, some of the heated
water in the system of Song, as modified by Hamilton, would have been
used and replaced with fresh water before the air conditioning system would
be able to function as intended. Appeal Br. 17. As such, Appellant asserts
that a skilled artisan’s acknowledgment of “Song’s outdoor air conditioner
. . . be[ing] rendered inoperable for its intended purpose . . . would have
superseded any possible benefit of trying to achieve a higher operating
efficiency of the air conditioner as alleged by the Examiner.” Id.
We are not persuaded by Appellant’s arguments because
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device of the other.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
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invention must be expressly suggested in any one or all of the
references.

In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted). In
this case, we agree with the Examiner that the rejection does not “state[] that
the indoor hot water tank of Hamilton would be placed on the outside.”
Ans. 8 (emphasis omitted). The Examiner is also correct that the rejection
“should not be taken as a bodily incorporation of the water heater of
Hamilton into the prior art of Song.” Id. at 9 (emphasis added). Rather, the
Examiner is providing Hamilton’s water-cooled condenser and cooling
water network to Song’s refrigeration unit such that the water-cooled heat
exchanger of Song, as modified by Hamilton, would be “connected to a
cooling network and . . . [would be] adapted to condense the refrigerant with
cooling water as taught by Hamilton.” Id. at 8.
Naturally, some adaptions would be required when modifying Song’s
refrigeration unit to include Hamilton’s water-cooled condenser connected
to a cooling water network. However, we must attribute skill to the
hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769 F.2d
738, 742 (Fed. Cir. 1985). The fact that some judgment and mechanical skill
may be required to select the appropriate size and capacity of Hamilton’s
water-cooled condenser and cooling water network, when adapting it to
Song’s refrigeration unit, to arrive at the recited combination, does not
necessarily mean that such combination constitutes a nonobvious invention.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 10–12 (1966)
(discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)).
Finally, we are also not persuaded by Appellant’s argument that
“swapping the water-cooled condenser as taught by Park . . . into the hot
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water system of Hamilton instead of Hamilton’s heat exchanger 14 would
clearly fail to remedy the resulting inoperability of Song” because this
argument does not address the Examiner’s rejection. Appeal Br. 18. The
Examiner is correct in stating that “Park was cited as evidence . . . to
demonstrate that it would have been obvious to replace the air cooled
condenser [of Song] with a water cooled condenser, [as taught by Hamilton,]
in order to improve the performance/efficiency of the invention of Song.”
Ans. 11 (emphasis added). Hence, the Examiner’s rejection does not
employ Park to modify Hamilton’s hot water system, as Appellant asserts,
but rather as evidence to support a reason with rational underpinning to
modify Song’s refrigeration unit to include Hamilton’s water-cooled
condenser and cooling water network, namely, to improve the performance
of Song’s refrigeration unit by improving its cooling efficiency. Moreover,
the fact that the Examiner’s reason to provide Hamilton’s water-cooled
condenser and cooling water network to Song’s refrigeration unit is to
improve cooling efficiency, may come at the expense of an air-cooled
condenser’s design simplicity “should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000); see also Park para. 7.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of independent claim 1 as unpatentable over Song,
Hamilton, and Tipton. Claims 2–6, 8, and 9 stand with claim 1.

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Rejections II–VI
Appellant relies on the arguments discussed supra in Rejection I, and,
in addition, asserts “claims 2–15 also recite additional features further
distinguishing them over the prior art of record.” See Appeal Br. 18. Such
arguments are insufficient to apprise us of error in Rejections II–VI. See In
re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and naked
assertion that the corresponding elements were not found in the prior art.”).
Accordingly, for the same reasons discussed above, we likewise
sustain Rejections II–VI.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–6, 8, 9 103 Song, Hamilton,
Tipton
1–6, 8, 9
7 103 Song, Hamilton,
Tipton, Jayanth
7
10, 13, 14 103 Horton, Song,
Hamilton, Tipton
10, 13, 14
11 103 Horton, Song,
Hamilton, Tipton,
Jin
11
12 103 Horton, Song,
Hamilton, Tipton,
Yano
12
15 103 Horton, Song,
Hamilton, Tipton,
Sakae
15
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Overall
Outcome
1–15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED