Ex Parte Benignos

Patent Trial and Appeal Board

Jul 31, 2018

13904740 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/904,740 08/16/2013
6147 7590 08/02/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Jorge Carretero Benignos
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.
268127 (551-0104) 1003
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE CARRETERO BENIGNOS
Appeal2017-009252
Application 13/904, 740 1
Technology Center 3700
Before MEREDITH C. PETRA VICK, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 7, 8, 13, 14, and 20-32. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, "[t]he real party in interest is General Electric
Company." Appeal Br. 2.
Appeal2017-009252
Application 13/904, 7 40
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 7, 13, and 2 0 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A heat exchanger assembly comprising:
an inlet configured to accept a fluid to be cooled;
an outlet configured to provide an exit for a flow of the
fluid that has been cooled; and
a core, the core comprising:
at least one passageway formed therein configured
for passage of the fluid to be cooled from the inlet to the
outlet; and
a cooling surface configured to receive a cooling
flow therethrough, the core configured to direct the
cooling flow to pass by at least a portion of the at least one
passageway to cool the fluid,
wherein the core is comprised of a high temperature
geopolymer composite material, the high temperature
geopolymer composite material configured for use at
temperatures above about 300 degrees Celsius, the high
temperature geopolymer composite material having a thermal
conductivity below about 20 Watts/(meter*degree Kelvin),
wherein the high temperature geopolymer composite material
has an in-plane thermal conductivity of about 10
Watts/(meter*degree Kelvin) or lower and a through-plane
thermal conductivity of about 1 Watts/(meter*degree Kelvin) or
lower.
Rejections
Claims 7, 8, 20-25, and 29--32 are rejected under 35 U.S.C. § 103 as
being unpatentable over Thomas (US 2016/0123230 Al, pub. May 5, 2016)
in view of Waltz (US 2010/0194179 Al, pub. Aug. 5, 2010), either alone or
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Appeal2017-009252
Application 13/904, 7 40
also in view of Tethal et al. (US 2014/0300030 Al, pub. Oct. 9, 2014)
(hereinafter "Tethal").
Claims 7, 8, 13, 14, and 20-32 are rejected under 35 U.S.C. § 103 as
being unpatentable over Rolt (US 7,716,913 B2, iss. May 18, 2010) in view
of Thomas, Waltz, and Tethal.
ANALYSIS
The Examiner's rejections rely on Thomas to teach a heat exchanger
and Waltz and/or Tethal to teach a geopolymer composite material. See
Final Act. 3--4, 8. The Examiner finds that none of the applied prior art
teaches "wherein the high temperature geopolymer composite material has
an in-plane thermal conductivity of about 10 Watts/(meter*degree Kelvin) or
lower," as recited in independent claims 7, 13, and 20. See id. at 4--5, 8. To
remedy this deficiency in the applied prior art, the Examiner reasons:
As to the particular claimed thermal conductivities, it is
Examiner's position that having the material have the particular
thermal conductivities claimed is obvious, as thermal
conductivity is a results effective variable with the results being
how much heat, thermal conductivity is a results effective
variable with the results being how much heat is conducted
through the material to exchange heat ( and in what directions as
to the in-plane versus through-plane thermal conductivity). It
would have been obvious to one having ordinary skill in the art
at the time the invention was made to have the materials' thermal
conductivity in the claimed range, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art. In re Boesch, 617 F .2d 272
... (CCPA 1980).
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Appeal2017-009252
Application 13/904, 7 40
Id. at 4--5. The Examiner appears to bolster the foregoing reasoning by
finding that Waltz teaches that in-plane thermal conductivity is a result
effective variable. See Ans. 18 (citing Waltz ,r 29).
The Appellant argues that the Examiner's rejection is based on
impermissible hindsight. See Appeal Br. 7-10. The Appellant's argument is
persuasive. The Examiner's rejection relies on Waltz's teaching of a
geopolymer composite material, which has an in-plane thermal conductivity
greater than about 100 W/mk, to be modified to be 10 W/mk or lower, as
claimed. It is the Examiner's position that a skilled artisan would know that
modifying a geopolymer composite material will effect "in what direction
and how efficiently heat will flow in-plane, and it would be routinely
optimized by one of ordinary skill in the art to obtain the desirable result."
Ans. 18 (citing Waltz ,r 29). Additionally, the Examiner determines that "it
is obvious to select values within the claimed range as being suitable for a
heat exchanger." Id. at 21-22. However, this determination appears to rely
on the Appellant's invention as described by the Specification. For example,
the Examiner explains that
the particular [ claimed] values listed are within the range that
would be considered obvious to one of ordinary skill in the art,
noting also that Appellant['s] specification (noting the table at
[0032]) apparently discloses that the claimed ranges are known (it
is noted also that the material is disclosed as being produced using
ordinary art known methods, further indicating that the claimed
ranges are known and within the level of ordinary skill in the art).
Id. at 20; see also id. at 21 (citing Spec. ,r,r 14, 30). In this case, the
Examiner fails to adequately explain-with evidence and/or technical
reasoning and without the benefit of the Appellant's Specification - how
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Appeal2017-009252
Application 13/904, 7 40
reaching a desirable result in this particular case would involve modifying
the in-plane thermal conductivity to be 10 W/mk or lower as claimed.
Further, the Examiner suggests that Waltz's geopolymers (including
polysialate with carbon reinforcement) may be capable of or otherwise may
be modified to meet the claimed range of the in-plane thermal conductivity
of about 10 Watts/(meter*degree Kelvin) or lower. See, e.g., Ans. 19
("Waltz's geopolymer (polysialate with carbon reinforcement) is the same as
the sole example geopolymer provided by the specification, which per se
means that this material must be capable of taking on the claimed values.";
"[A]lthough Waltz does not disclose the material having the specific thermal
conductivities, Waltz discloses that the thermal conductivities can be varied
([0029]), indicating that the particular range given for those values is not
necessarily limiting."). These suggestions fail to remedy the deficiency in
the Examiner's rejection.
Thus, we do not sustain the Examiner's rejections under 35 U.S.C.
§ 103 of: claims 7, 8, 20-25, and 29--32 as unpatentable over Thomas in
view of Waltz, either alone or also in view of Tethal; and claims 7, 8, 13, 14,
and 20-32 as unpatentable over Rolt in view of Thomas, Waltz, and Tethal.
DECISION
We REVERSE the Examiner's decision rejecting claims 7, 8, 13, 14,
and 20-32.
REVERSED
5