Ex Parte Benedict et al

Patent Trial and Appeal Board

Sep 20, 2018

14602336 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/602,336 01/22/2015 Michael Alexander Benedict
141821 7590 09/24/2018
Dority & Manning, P.A. and Haier US Appliance
Solutions, Inc.
Post Office Box 1449
Greenville, SC 29602-1449
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.
273090-1/GECA-567 3514
EXAMINER
TRPISOVSKY, JOSEPH F
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ALEXANDER BENEDICT and DAVID G. BEERS
Appeal2018-001244 1
Application 14/602,3362
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18 and 20. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
August 14, 2017) and Reply Brief ("Reply Br.," filed November 17, 2017),
the Examiner's Answer ("Ans.," mailed September 20, 2017), and Final
Office Action ("Final Act.," mailed April 19, 2017).
2 Appellants identify Haier US Appliance Solutions, Inc. as the real party in
interest (App. Br. 1 ).
3 Claim 19 is indicated as allowable (Final Act. 11 ).
Appeal2018-001244
Application 14/602,336
THE INVENTION
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A regenerator, comprising:
a plurality of working units extending along a
longitudinal direction between a first end of the regenerator and
a second end of the regenerator, each working unit comprising a
plurality of discrete, elongate elements extending along the
longitudinal direction and forming, at locations between the
elongate elements, a plurality of flow channels that extend
along the longitudinal direction between the elongate elements
and are configured for the flow of a heat transfer fluid
therethrough, wherein each elongate element is formed from
magneto caloric material.
(App. Br. 13 (Claims Appendix)).
THE REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 7-12, 17, 18, and 20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Zhang et al. (US 2010/0071383 Al,
pub. Mar. 25, 2010) ("Zhang") and Bahl et al. (US 2011/0239662 Al,
pub. Oct. 6, 2011) ("Bahl").
II. Claims 3---6 and 13-16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Zhang, Bahl, and Morimoto et al.
(US 2012/0285179 Al, pub. Nov. 15, 2012) ("Morimoto").
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Application 14/602,336
ANALYSIS
Rejection I
Independent claims 1 and 9
Appellants argue the rejection of independent claims 1 and 9 under
separate headings, but the arguments presented are the same. (See App.
Br. 3-9). We select claim 1 as representative of the independent claims. See
37 C.F.R. §41.37( c)(l )(iv).
The Examiner finds that Zhang discloses every limitation of claim 1
except "Zhang does not explicitly teach each working unit comprising a
plurality of discrete, elongate elements extending along the longitudinal
direction and forming, at locations between the elongate elements, a
plurality of flow channels that extend along the longitudinal direction
between the elongate elements." (Final Act. 2-3). According to the
Examiner, Bahl discloses a "working unit comprising a plurality of discrete,
elongate elements extending along the longitudinal direction and forming, at
locations between the elongate elements, a plurality of flow channels that
extend along the longitudinal direction between the elongate elements." (Id.
at 3). In particular, the Examiner finds that Figure 11 of Bahl discloses a
plurality of discrete elongate elements, specifically "elements shown with
different Curie temperatures T ci-T c4." (Id.). The Examiner determines that
it would have been obvious to a person having ordinary skill in the art at the
time of Appellants' invention
to modify the regenerator of Zhang to have each working unit
comprising a plurality of discrete, elongate elements extending
along the longitudinal direction and forming, at locations
between the elongate elements, a plurality of flow channels that
extend along the longitudinal direction between the elongate
elements taught by Bahl in order to increase efficiency and
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Application 14/602,336
(Id.).
cooling span of the device while providing ease of assembly
and flexibility in the flow travel design.
Appellants argue that Zhang discloses only a single annular
container 18 and not a plurality of working units. Appellants also argue that
"channels 34 in container 18 are not formed from magneto caloric material
(MCM) as required by claim 1." (App. Br. 5).
Responding to Appellants' arguments in the Answer, the Examiner
maintains that "each chamber (34) of the circular container ( 18) containing
magneto caloric material (20) of Zhang meets the limitation of a plurality of
working units as claimed." (Ans. 10-11). See also, Ans. 12 ("Zhang
teaches working units (interpreted as each flow channel 34 through container
18 having magneto caloric material 20; Figs. 2-5)." According to the
Examiner,
combining the concept of the working unit (magnetocaloric
bed) having a plurality of discrete, elongate elements (T cl - T c4,
Fig. 11) with the bed having a plurality of flow channels that
extend along the longitudinal direction between the elongate
elements (Fig. 12) of Bahl to the working units of the magnetic
regenerator of Zhang, the combination would arrive at the
limitations as claimed.
(Id. at 11).
Zhang discloses a magnetic refrigeration device that includes, in
pertinent part, magnetocaloric material and a heat transfer fluid that is
passed through the magnetocaloric material. Zhang discloses that magnetic
refrigeration device 10 includes an annular container 18 defining a plurality
of channels 34 and a magnetocaloric material 20. (Zhang ,r 14; Figs. 3-5).
Zhang further discloses that "[ e Jach of the plurality of channels 34 is fluidly
separate and contains magnetocaloric material 20 in a form such as a
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Application 14/602,336
powder, small pellets or beads, a porous solid, and the like, such that a fluid
can flow therethrough." (Id. ,r 22).
Bahl also discloses a magnetic refrigeration device that includes
magnetocaloric materials and a working fluid for heat transfer. (Bahl ,r,r 1-
3). Specifically, Bahl discloses a magnetocaloric bed and plural pathways
formed within the magnetocaloric bed for the flow of a working fluid. (Id. ,r
7). In the example of Figure 11, the magnetocaloric bed is "made up of
plural components each in the form of a radially arranged plate 44." (Id. ,r
60). The Examiner's modification proposes to substitute Zhang's
magnetocaloric material ( e.g., "porous solid") in each of the channels 34
with a magnetocaloric bed comprised of radially arranged plates 44 as
disclosed in Bahl.
Appellants' argument that Zhang's channels 34 "are not formed from
magneto caloric material (MCM) as required by claim 1" (App. Br. 5) is not
persuasive of Examiner error at least because it is not commensurate with
the scope of claim 1. Claim 1 does not require that the working units are
formed from magneto caloric material. Rather, claim 1 requires that "each
elongate element is formed from magneto caloric material." See claim 1
supra.
In the Reply Brief, Appellants argue that, in light of the Specification,
particularly paragraph 54 and the drawings, "one of ordinary skill in the art
would understand that 'discrete' requires individual or separate elongate
elements." (Reply Br. 4). According to Appellants, Bahl discloses "at best,
a single bed 4 of magnetic caloric material that forms all the flow channels
therein." (Id. at 6).
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Application 14/602,336
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). In interpreting claim language, we
apply the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the Specification. This means that the words of the claim
must be given their plain meaning unless the plain meaning is inconsistent
with the specification. In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989).
We have reviewed the portions of Appellants' Specification cited by
Appellants. We see nothing in paragraph 54 or the other cited portions to
indicate that the term "discrete" is used apart from its ordinary and
customary meaning. In this case, an ordinary and customary meaning of the
term "discrete" is "separate entity or thing" or "individually distinct."
See, e.g., "Discrete" defined as "constituting a separate entity: individually
distinct[,] several discrete sections"4; "Discrete ideas or things are separate
and distinct from each other. "5
Applying this interpretation of the term "discrete," we find that
Appellants do not persuasively explain why Bahl's plates 44 are not
"discrete" elongate elements. As pointed out by the Examiner (Final Act. 3;
4 https://www.merriam-webster.com/dictionary/discrete (accessed
September 18, 2018).
5 https://www.collinsdictionary.com/us/dictionary/english/discrete (accessed
September 18, 2018).
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Application 14/602,336
Ans. 2), Bahl discloses that the magnetocaloric bed is made up of a plurality
of distinct plates 44, with different plates having distinct properties. For
example, referring to Figure 11, Bahl discloses that "the magnetocaloric
component is made up of a large number of long, thin magnetocalorically
active plates stacked together with constant distance and arranged in a
cylindrical shell" and "[t]he long plates may be compositionally graded
along their length or subdivided into several shorter plates with different
magnetocaloric properties." (Bahl ,r 60).
In view of the forgoing, we are not apprised of reversible error.
Accordingly, we sustain the rejection of independent claims 1 and 9.
Dependent claims 2 and 12
Claim 2 depends from claim 1 and recites "wherein each elongate
element is positioned adjacent to, and in contact with, at least one other
elongate element in a manner that defines at least one of the plurality of flow
channels between the elongate elements." App. Br. 13 (Claims Appendix.).
Claim 12 depends from claim 9 and contains a similar limitation.
The Examiner's position is that "Zhang teaches elongate elements
(individual channels 34 having magneto caloric material 20) are positioned
around the circular container (18) and are at least in thermal contact with at
least one other elongate element [thus] meeting the limitation of 'in contact
with."' (Ans. 13).
Appellants argue that the Examiner's construction of "in contact with"
as including "in thermal contact with" is unreasonably broad and
inconsistent with the usage of the phrase "in contact with" in Appellants'
Specification. (Reply Br. 7).
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Application 14/602,336
We agree with Appellants.
The claim language requires a structural configuration such that each
elongate element is positioned adjacent to, and in contact with, another
elongate element. And, Appellants' Specification consistently describes the
word "contact" to mean physical contact. This usage is consistent with the
plain meaning of the term contact, which is defined as "[a] coming together
or touching, as of objects or surfaces."6 Thus, the Examiner's interpretation
of the term "in contact with" as constituting "thermal contact" (without
touching) is inconsistent with the Specification and the plain language of the
claim.
Moreover, we find that the Examiner's reliance on Bahl fails to cure
the deficiency in Zhang. Bahl discloses that the magnetocaloric bed defines
paths for the flow of liquid in the spaces between the plates 44. See, e.g.,
(Bahl ,r 61 ). Plates 44 on opposite sides of a given fluid path are not in
contact. We fail to see, and the Examiner has not adequately explained, how
the disputed claim limitations are taught by the combination of Zhang and
Bahl. See Ans. 13-14. Therefore, because these claim features are not
taught or suggested by the relied-upon prior art, we do not sustain the
rejection of claims 2 and 12.
Dependent claims 7 and 17
Claim 7 depends from claim 1 and recites "wherein the elongate
elements have a circular cross-sectional shape, and wherein the cross-
6 The American Heritage® Dictionary of the English Language ( 6th ed.),
https :// search. credoreference. com/ content/ entry/hmdictenglang/ contact/,
accessed September 16, 2018.
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Application 14/602,336
sectional shape of the elongate elements and the location of the elongate
elements relative to each other defines the cross-sectional shape and of the
flow channels." Claim 17 depends from claim 9 and contains similar
limitations.
The Examiner's position is that "Bahl teaches the elongate elements
of the magneto caloric bed (bed 4, 44 with elongate elements shown in
Fig. 11 also defined as having fluid channels in Fig. 12) are arranged in a
circular ring shape of the regenerator (Fig. 7)." (Ans. 14). According to the
Examiner, "when considering the entire cross-section of the bed (4) having
the fluid passages defined by the elongate elements therein, Bahl teaches the
plurality of elongate elements have a circular cross-sectional shape." (Id.).
However, as pointed out by Appellants (App. Br. 11 ), claim 7 requires
that "the elongate elements have a circular cross-sectional shape." In other
words, claim 7 requires that each of the elongate elements has a circular
cross-sectional shape, individually. Because the Examiner's finding that
Bahl discloses an overall arrangement of plates 44 into a circular ring shape
fails to disclose this contested limitation, we do not sustain the rejection of
claims 7 and 1 7.
Dependent claims 8, 10, 11, 18, and 20
Appellants do not separately argue the rejection of dependent
claims 8, 10, 11, 18, and 20. As such, we sustain the rejection of claims 8,
10, 11, 18, and 20 for the same reasons set forth above with respect to
independent claims 1 and 9.
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Application 14/602,336
Re} ection II
Appellants do not argue the rejection of dependent claims 3---6 and
13-16. As such, we summarily sustain the rejection.
DECISION
The Examiner's decision to reject claims 1, 3---6, 8-10, 11, 13-16, 18,
and 20 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 2, 7, 12, and 17 under
35 U.S.C. § 103(a) 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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