Ex Parte Denk et al

Patent Trial and Appeal Board

Jun 30, 2016

12748660 (P.T.A.B. Jun. 30, 2016)

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.
12/748,660 03/29/2010 Thorsten Denk 08-353 5707
34704 7590 07/01/2016
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
CORBOY, WILLIAM
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
07/01/2016 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 THORSTEN DENK, LUIS ZACARIAS,
and ALDO STEINFELD
____________________

Appeal 2014-002829
Application 12/748,660
Technology Center 3700
____________________

Before NEAL E. ABRAMS, JILL D. HILL, and MARK A. GEIER
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thorsten Denk et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting claims 1–13.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Claim 14 is canceled. Ans. 2; see also Br. 20, Claims App.
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CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, represents the claimed
subject matter.
1. A concentrated solar radiation assembly
comprising:
a housing divided into segments by hollow housing
trusses;
window blocks positioned within the segments supported
by the housing trusses;
hollow internal trusses positioned on top of the window
blocks and inside the segments, wherein the hollow housing
trusses and internal trusses define cooling flow paths for
cooling the assembly and
at least one of housing truss liquid inlets and internal
truss liquid inlets communicated with at least one of the hollow
housing trusses and the hollow internal trusses for feeding a
cooling liquid to the cooling flow paths.

Br. 19, Claims App.
REJECTIONS
I. Claims 1, 5–9, 11, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cipriani (US 2,996,845, iss. Aug. 22, 1961)
and Kotlarz (US 3,893,271, iss. July 8, 1975). Final Act. 4.
II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Rasmussen (US 2,927,355, iss.
Mar. 8, 1960). Final Act. 14.
III. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Stupakoff (US 2,220,690, iss. Nov.
5, 1940). Final Act. 15.
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IV. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Wirawan (US 7,278,241 B2, iss.
Oct. 9, 2007). Final Act. 16.
V. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Taylor (US 5,003,744, iss. Apr. 2,
1991). Final Act. 18.
VI. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Craver (US 4,817,585, iss. Apr. 4,
1989). Final Act. 19.
VII. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cipriani, Kotlarz, and Kawaguchi et al. (JP 57090552 A,
pub. June 5, 1982, hereinafter “JP ’552”). Final Act. 21.
OPINION
Rejections I–III and V–VII
Appellants argue claims 1, 2, and 4–13 as a group. Br. 15–18. We
select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2015). Claims 2 and 4–13 stand or fall with claim 1.
The issues in this case, which are dispositive of all of the pending
rejections, are whether: (1) Cipriani and Kotlarz are analogous art; and (2)
whether the Examiner’s reason for combining Cipriani and Kotlarz lacks a
rational basis.
Analogous Art
It is the Examiner’s position that both Cipriani and Kotlarz are
analogous art, because both references are in the claimed field of endeavor
and relevant to the problem faced by Appellants. Ans. 3.
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Regarding the field of endeavor, Appellants argue that the field of
endeavor of the claimed invention is a concentrated solar radiation assembly
comprising various components of a window assembly, whereas Cipriani
and Kotlarz are instead drawn to wall structures including glass panels. Br.
10.
The Examiner responds that the field of endeavor is instead “a
housing divided into segments by hollow housing trusses; window blocks
positioned within the segments supported by the housing trusses; hollow
internal trusses positioned on top of the window blocks and inside the
segments where the hollow trusses support a motive fluid flowing there
through.” Ans. 4. According to the Examiner, Appellants’ proffered
definition of the field of endeavor improperly requires (1) that functional
limitations be read from the Specification into the claim, or (2) that the
preamble be accorded patentable weight. Id. at 3–4.
To determine Appellants’ field of endeavor, we must assess the field
that one skilled in the art would consider within the same endeavor as the
claimed invention. See In re Bigio, 381 F.3d 1320, 1327 (Fed. Cir. 2004).
Common sense is employed “‘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. at 1326 (citing In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992) (quoting In re Wood, 599 F.2d 1032, 1036
(CCPA 1979))).
Even if we give weight to the preamble of claim 1 in determining the
field of endeavor, considering the structure and function of the claimed
invention, it is our conclusion that the structural similarities between solar
radiation assemblies and structural panels including frames for supporting
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transparent material, would have led one of ordinary skill in the art working
in the specific field of solar radiation assemblies to consider all similar
transparent pane support assemblies. We therefore agree with the Examiner
that Cipriani and Kotlarz are analogous art to the claimed invention.
Reasoning with Rational Underpinning
The Examiner concluded that it would have been obvious to one
skilled in the art to modify the interconnecting interior passageways in
Cipriani’s frame elements to include cooling flow paths for cooling the
assembly using a liquid inlet for feeding a cooling liquid to the cooling flow
paths as disclosed Kotlarz
to provide adequate cooling to the structure[,] because having a
structure with different materials such as steel and glass that
have different coefficients of thermal expansion results in
undue stresses between components and by using the fluid to
cool the structure to maintain the structure at a relative[ly]
constant temperature, the stress discontinuities from disparate
expansion are prevented, thereby reducing stress and thermal
fatigue in the structure and extending the longevity of the
device.
Final Act. 7.
Appellants argue that “the combination put forth by the examiner does
not make sense, and is contrary to the teachings of each of Cipriani and
Kotlarz.” Br. 14. Appellants argue that, because Cipriani is directed to
hollow structures that create sealed and interconnected interior passageways,
adding an inlet thereto would be illogical. Id. at 15. Appellants further
argue that the purpose of Cipriani’s interior passageways is to remove
accidental introduction of moisture, and therefore one skilled in the art
would not add inlets thereto for introducing liquid. Id. at 15, 16 (“There is
no reason why the person skilled in the art would ignore the teachings of
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keeping liquid out of the struts and batten elements 34, 35 of Cipriani and
modify that teaching to include liquid inlets into those very structures.”).
The Examiner disagrees, responding that Cipriani discloses air flow
around panel joints for “adequate interior ventilation of the panel joints,”
and Kotlarz discloses cooling via liquid circulated in the interconnected
passageways, such that the Examiner is merely substituting Cipriani’s air
ventilation (passive cooling) with Kotlarz’s liquid (active) cooling for
improved heat transfer and cooling. Ans. 14–15 (citing Cipriani, col. 5, ll.
44–51). According to the Examiner, one skilled in the art “would recognize
that a liquid cooling medium has a greater heating capacity than air,
motivating the switch from air to liquid thereby providing improved cooling
of the structure.” Id. at 15.
We agree with the Examiner. One skilled in the art would understand
that substituting Kotlarz’s active cooling system for Cipriani’s passive
cooling system would improve heat transfer, and would understand how to
implement Kotlarz’s active cooling in the assembly of Cipriani without
interfering with the purpose of Cipriani’s ventilation. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill [in the
art] is also a person of ordinary creativity, not an automaton.”); id. at 420
(“[I]n many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle.”). The Examiner’s
reasoning was based on a rational underpinning.
For the reasons set forth above, we sustain Rejections I–II and V–VII.
Rejection IV
Claim 3 recites the housing comprising “an outer annular flange for
mounting to the solar radiation assembly.” Br. 19, Claims App. The
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Examiner finds this teaching in Wirawan. Final Act. 17 (citing Wirawan
Figs. 2, 2a, and 26). Appellants argue that “[t]he term annular means ‘ring-
shaped, of or forming a ring[.]’ Wirawan shows structures which are
rectangular, and certainly not annular.” Br. 17. The Examiner responds that
the outer flange of Wirawan’s Figure 26 is annular. We agree. We therefore
sustain Rejection IV.

DECISION
We AFFIRM the pending rejections.
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