2020001637 (P.T.A.B. Sep. 8, 2020)

Dharendra Goswami et al.

Patent Trials and Appeals BoardSep 8, 2020

2020001637 (P.T.A.B. Sep. 8, 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. 13/665,389 10/31/2012 Dharendra Yogi Goswami 292103-1140 6359 24504 7590 09/08/2020 THOMAS | HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 EXAMINER HINCAPIE SERNA, GUSTAVO A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/08/2020 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): docketing@thomashorstemeyer.com ozzie.liggins@tkhr.com uspatents@tkhr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DHARENDRA YOGI GOSWAMI, ELIAS K. STEFANAKOS, and NITIN GOEL ____________ Appeal 2020-001637 Application 13/665,389 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, JAMES P. CALVE, and BRADLEY B. BAYAT, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9 and 26–31. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the University of South Florida. (Appeal Br. 2). Appeal 2020-001637 Application 13/665,389 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a system for thermal energy storage (Spec., page 3, lines 5, 6). Claim 9, reproduced below, is representative of the subject matter on appeal. 9. A thermal energy storage system comprising: a first cascade containing thermal energy storage capsules that encapsulate first phase change material particles suspended within a liquid; a second cascade containing thermal energy storage capsules that encapsulate second phase change material particles suspended within a liquid; wherein the melting point of the first phase change material particles is higher than the melting point of the second phase change material particles. THE REJECTIONS The following rejections are before us for review: 1. Claims 9 and 26–28 are rejected under 35 U.S.C. § 103 as unpatentable over Mathur (US 2012/0018116 A1; published Jan. 26, 2012), Yahnker (US 2007/0128505 A9; published June 7, 2007, and White (US 2011/0083436 A1; published Apr. 4, 2011. 2. Claims 29–31are rejected under 35 U.S.C. § 103 as unpatentable over Mathur, Yahnker, White, and Bank (US 2009/0211726 A1; published Aug. 27, 2009). Appeal 2020-001637 Application 13/665,389 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS The Appellant argues that the rejection of claim 9 under 35 U.S.C. § 103 as unpatentable over Mathur, Yahnker, and White is improper because the Yahnker reference is nonanalogous art (Appeal Br. 19–24). The Appellant also argues that one of ordinary skill in the art would have not been motivated to combine Mathur and Yahnker as the references are so different (Appeal Br. 23; Reply Br. 4–9). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 5, 6). We agree with the Examiner. The Appellant has argued that Yahnker is not a proper reference because it is nonanalogous art (Appeal Br. 19–24). We determine that the Appellant arguments are not persuasive in this regard. We agree with and adopt the rationale for the rejection set forth in the Final Rejection and Answer. With regards to the arguments of nonanalogous art The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-001637 Application 13/665,389 4 the circumstances,’–in other words, common sense–in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” [Id.] (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA1979))). In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). Here, Mathur is directed to a thermal energy storage system (abstract, Fig. 1). Yahnker is directed to a thermal management system for battery packs in a power tool (Title, Fig. 1A, para. 82). Yahnker at paragraph 2 states that the invention relates to “battery cooling systems” but it is still a related thermal management system. Yahnker’s thermal management thus is used with an energy generation system, namely, batteries and the problem to be solved is the same, namely, managing energy from an energy generation system. Here, the reference is still pertinent to the problem solved by the inventor which is directed to better thermal management systems. Appellant describes the purpose of the liquid in which phase change material particles are suspended as enhancing heat transfer. Spec. 6:3–16. Yahnker teaches an improved heat transfer purpose for its fluid solution. See Yahnker, para. 82; In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (holding that a reference with the same purpose as a claimed invention relates to the same problem and is reasonably pertinent to the problem that the invention attempts to solve). For these above reasons the arguments directed to Yahnker being a nonanalogous reference are not persuasive and the rejection of claim 9 is sustained. With regards to claim 28, the Appellant argues that the limitation requires that the phase change materials have melting points of “at least 300” degrees Celsius and that a reference has not been cited to disclose this. Appeal 2020-001637 Application 13/665,389 5 With regards to claims 29 and 31 the Appellant argues that the capsules be made of a “ceramic” and “polymeric” material respectively and the cited prior art does not disclose this. In contrast, the Examiner has taken Official Notice and determined that the particular material composition and melting points are known in the art and that traversal of such was not properly taken. Regardless of whether such traversal was taken, here one of ordinary skill in the art would have been able to vary the materials used in the capsules and melting points based on the desired energy transfer and such a modification using known materials would have been obvious in the cited combination. Accordingly, the rejection of the argued dependent claims 28, 29, and 31 is sustained. The Appellant has presented the same arguments for the remaining claims and the rejection of these claims is sustained as well. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting Claims 9 and 26–28 under 35 U.S.C. § 103 as unpatentable over Mathur, Yahnker, and White. We conclude that Appellant has not shown that the Examiner erred in rejecting Claims 29–31 under 35 U.S.C. § 103 as unpatentable over Mathur, Yahnker, Bank, and White. Appeal 2020-001637 Application 13/665,389 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9, 26–28 103(a) Mathur, Yahnker, White 9, 26–28 29–31 103(a) Mathur, Yahnker, White, Bank 29–31 Overall Outcome 9, 26–31 TIME PERIOD FOR RESPONSE 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