Ex Parte Garimella et al

Patent Trial and Appeal Board

Mar 19, 2018

13058182 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/058, 182 02/08/2011
6980 7590 03/21/2018
TROUTMANSANDERSLLP
600 PEACHTREE ST NE STE 3000
ATLANTA, GA 30308-2219
FIRST NAMED INVENTOR
Srinivas Garimella
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.
GTRC4534 8586
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
j im. schutz@troutmansanders.com
ryan. schneider@troutmansanders.com
patents@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIV AS GARIMELLA and
MATTHEW DELOS DETERMAN
Appeal2017-000939
Application 13/058, 182
Technology Center 3700
Before STEVEN D.A. McCARTHY, KEVIN F. TURNER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 215-217,
219-222, 224, 225, 227, 229-231, 233, 234, 236, 237, and 239-251, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Georgia Tech Research Corp. Br.
3.
Appeal2017-000939
Application 13/058, 182
Claimed Subject Matter
Claims 215, 231, and 245 are independent. Claim 215, reproduced
below with disputed limitations emphasized, illustrates the claimed subject
matter.
215. An integrated heat and mass transfer apparatus
compnsmg:
a heat and mass transfer system utilizing absorption and
having a plurality of heat exchange regions for affecting a heat
transfer function of a particular component, wherein the plurality
of heat exchange regions comprises an absorber, a desorber, a
condenser, and an evaporator;
a fluid coupling system configured to couple a thermally
modified flow of a coupling fluid through at least one heat
exchange region;
a pair of cover plates that include ports for introducing a
working fluid and the coupling fluid into functional components
and for transporting the working fluid and the coupling fluid out
of the functional components;
wherein the plurality of heat exchange regions are defined
by a plurality of rows of microchannels of a plurality of shims,
the shims being stacked, planar, and heat conducting shims, each
shim comprising:
openings that define a plurality of fluid voids for
containing:
the working fluid; and
the coupling fluid for conveying thermal
energy into or out of the heat and mass transfer
system;
wherein at least some of the openings of the stacked
shims form a header for directing at least one of the
working fluid and the coupling fluid;
the plurality of rows of microchannels being formed by
microscale indentations on the plurality of shims;
wherein the plurality of rows of microchannels comprise:
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a first row of microchannels for communicating a
first flow of the working fluid from an inlet fluid void
associated with the particular component of the heat and
mass transfer system into an outlet fluid void associated
with the particular component of the heat and mass
transfer system; and
a second row of microchannels for communicating
either a second flow of the working fluid associated with
the particular component of the heat and mass transfer
system or a flow of the coupling fluid for the heat transfer
function of the heat exchange regions, wherein the second
row of microchannels are in thermal contact with the first
row of microchannels to conduct heat between the first
flow of the working fluid in the first row of microchannels
and either the second flow of the working fluid or the flow
of the coupling fluid in the second row of microchannels
for the heat transfer function of the at least one heat
exchange region;
wherein at least one of the shims forms a portion of the
absorber, the desorber, the condenser, and the evaporator;
wherein mass is transferred between a first fluid stream
and a second fluid stream such that a refrigerant is absorbed by
an absorbent via vapor inlet holes through which a vapor
component of the first fluid stream mixes with the second fluid
stream; and
wherein the system provides a heating or cooling function
via the thermally modified flow of the coupling fluid.
Rejection
I. Claims 215-217, 219-222, 224, 225, 227, 229-231, 233, 234,
236, 237, and 239-251 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Johnston (US 4,763,488, issued Aug. 16, 1988). Final Act.
3-14.
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DISCUSSION
Claims 216, 217, 219-222, 224, 225, 227, 229-231,
233, 234, 236, 237, 239-244, and 246--251
Appellants state that they "appeal[] the rejection of Claims 215 and
245." Br. 3; see also Br. 4-5 (presenting only rejection of claims 215 and
245 as grounds to be reviewed); Br. 9 (requesting rejection of independent
claims 215 and 245 to be withdrawn). "An appeal, when taken, is presumed
to be taken from the rejection of all claims under rejection unless cancelled
by an amendment filed by the applicant and entered by the Office." 37
C.F.R. § 41.3l(c) (2017) (emphasis added). Because claims 216, 217, 219-
222, 224, 225, 227, 229-231, 233, 234, 236, 237, 239-244, and 246-251
were rejected in the Final Action and have not been canceled by Appellants,
the rejection of these claims is before us on appeal, but is not contested by
Appellants. Accordingly, Appellants have waived argument as to claims
216,217,219-222,224,225,227,229-231,233,234,236,237,239-244,
and 246-251, and we summarily sustain the rejection of these claims under
§ 102(b) as anticipated by Johnston. See 37 C.F.R. § 41.37(c)(l)(iv)
("Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.").
Claims 215 and 245
Claim 215 recites that "at least one of the shims forms a portion of the
absorber, the desorber, the condenser, and the evaporator." Appellants
contend Johnston fails to disclose an absorber, desorber, condenser, and
evaporator made from a common shim. Br. 5. Johnston, Appellants argue,
"makes clear that it is concerned with construction and operation of a heat
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exchanger/rectifier/ generator," and "the details of the construction and
operation of other components in the cycle are not addressed." Id. at 6.
As acknowledged by Appellants, id., Johnston discloses heat
exchange regimes including "A-Evaporator," "B-Refrigerant pre-cooler,"
"C-Condenser," "D-Absorber/Rectifier," "E-Liquid Heat
Exchanger/Rectifier," and "F-Generator/Rectifier." Johnston col. 5, 11. 26-
34. Johnston teaches that "[t]he exchange in regimes A, B, and C presents
few problems, involving two essentially pure streams and phase change, and
these regimes are not further considered in any significant detail." Id. at col.
5, 11. 35-38. Appellants are correct that Johnston describes its heat
exchanger device, which is formed from stacked plates with channels
formed in them, primarily in the context of the rectifier/generator (i.e.,
regimes E and F). See Br. 5-6; Johnston col. 7, 11. 3-5 ("The device
constitutes the heat exchanger/rectifier/generator (i.e. embodies regimes E
and F) .... "). Johnston explicitly discloses, however, that:
[I]t will be appreciated that the device might readily be modified
to incorporate regimes A, B, C and/or D. That is, an additional
fluid flow channel region may be incorporated in each of the
plate elements which are shown in FIGS. 5, 6 and 7, and which
are to be hereinafter described, with appropriate porting to and
from the additional channel regions being provided.
Johnston col. 7, 11. 6-13 (emphases added).
We agree with the Examiner that Johnston, at column 7, lines 6-13,
expressly discloses an embodiment in which the stacked plates of the
rectifier/ generator (i.e., desorber) incorporate the other components of the
system, including the absorber, condenser, and evaporator. Ans. 16.
Appellants emphasize Johnston's language that the device "might readily be
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modified," Johnston col. 7, 1. 7, and argue Johnston, therefore, does not
disclose the identical invention in as complete detail as contained in the
claim. Br. 7. Appellants contend "[t]he mere suggestions of undisclosed
modifications are not sufficient to support anticipation." Id. Such a
modification, however, does not preclude anticipation because the
modification is expressly disclosed in Johnston.
Appellants also contend Johnston fails to enable an absorber,
desorber, condenser, and evaporator being formed from a common set of
shims because "Johnston provides no guidance whatsoever regarding how to
combine the components on a single shim or shim pair." Id. Appellants
argue that "due to the nature of an absorption refrigeration system, the
claimed components necessarily operate at vastly different temperatures and
pressures," "the thermal and mechanical stresses on the shims are
substantial, and the tolerances for a microchannel shim-constructed
component are miniscule," and "Johnston does not appreciate or discuss any
solution to these issues." Id. Appellants acknowledge "[t]he suggestion that
the single component of Johnston 'might readily be modified' may very well
motivate one of ordinary skill in the art to endeavor to create such a system,"
but Appellants argue "this disclosure falls far short of disclosing the
extensive modifications necessary to include all components on a device
such that at least one shim forms a portion of each component." Id. at 7-8.
"[D]uring patent prosecution, an examiner is entitled to reject claims
as anticipated by a prior art publication or patent without conducting an
inquiry into whether or not that prior art reference is enabling." In re Antor
Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012). "As long as an
examiner makes a proper prima facie case of anticipation by giving adequate
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notice under§ 132, the burden shifts to the applicant to submit rebuttal
evidence of nonenablement." Id. Here, the prima facie rejection of claims
"put the burden of proving the nonenablement" of Johnston on Appellants.
Id.
Whether a prior art reference is enabling is a question of law based
upon underlying factual findings. Id. at 1287. "[T]he mere use of forward-
looking language (such as terms like 'should') does not show one way or
another whether a person of ordinary skill in the art would have to engage in
undue experimentation to perform the claimed invention." Id. at 1289-90.
"Indeed, undue experimentation is determined based on both the nature of
the invention and the state of the art." Id. at 1290. An applicant may not be
required to submit evidence such as affidavits to challenge enablement of the
prior art, such as "[w]hen a reference appears to not be enabling on its face."
In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013).
In this case, we are not persuaded that Johnston would not enable one
of skill in the art to incorporate a portion of the absorber, desorber,
condenser, and evaporator into at least one of Johnston's plate elements
without undue experimentation. As an initial matter, the claim limitation at
issue is broad in that it does not specify any particular manner in which at
least one of the shims must form "a portion" of the recited components.
Far from a wishful-thinking, terse press release, Johnston is a detailed,
issued patent with 19 drawings and 14 columns of text disclosing the
invention, including dimensions of etching of the channels. See, e.g.,
Johnston col. 9, 11. 10-14; Ans. 18. Appellants acknowledge that Johnston
uses "4+ pages" to provide "[t]he level of detail required ... to fully enable
a single component." Br. 7. One of ordinary skill in the art would have
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recognized that many of these details would have been relevant to
constructing the other heat exchange components of the system, and, as the
Examiner finds, one of ordinary skill in the art would have been able "to
design channel sizes to accommodate various pressures and flow rates."
Ans. 18. Appellants do not offer any rebuttal to this finding. Indeed, the
discussion of many of the components in Appellants' Specification indicates
that similar considerations apply to every component. See, e.g., Spec.
36:23-27 ("Variations, options, and other details associated with
microchannel geometries, coupling fluid inlet and outlet passages 1204,
1206, and voids for the condenser 1200, including shapes, cross-sections,
and dimensions, apply equally and are similar to those described previously
in conjunction with the recuperative solution heat exchanger 800.").
Johnston indicates that "regimes A, B, and C," i.e., the evaporator,
refrigerant pre-cooler, and condenser, "are not further considered in any
significant detail" because the exchange in these components "presents few
problems." Johnston col. 5, 11. 35-36. Johnston then provides additional
discussion as to the absorber and other general considerations regarding
design of the system. Id. at col. 5, 1. 41-col. 6, 1. 67. Johnston's description,
though detailed, is not simplistic, which evidences a high level of ordinary
skill in the art. A high level of one of ordinary skill in the art is consistent
with Johnston's lack of detail as to certain variations, such as precisely how
to incorporate the absorber, desorber, condenser, and evaporator into each
plate. Appellants' Specification also evidences predictability in the art, as it
indicates that "the microchannel cross-section shape and dimensions are
determined based on heat and mass transfer requirements, operating
pressures, structural strength of the assembled apparatus, manufacturing
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constraints for dimensional tolerances and bonding of the shims and cover
plates, and other similar application-specific factors," without explaining the
specific significance of each of these application-specific factors. Spec.
30:4-7. We also agree with the Examiner that Johnston provides guidance
for incorporating the additional components into the plates, namely by
adding fluid flow regions and porting to and from these regions. Ans. 18;
see Johnston col. 7, 11. 8-13.
Considering each of the above factors, we determine that Appellants
have not shown Johnston is non-enabling. See In re Wands, 858 F.2d 731
(Fed. Cir. 1988).
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 215 under
35 U.S.C. § 102(b) as anticipated by Johnston. Thus, we sustain the
rejection of claim 215, and, for the same reasons, the rejection of claim 245,
which is not argued separately. See Br. 5-8.
DECISION
We affirm the Examiner's rejection of claims 215-217, 219-222, 224,
225,227,229-231,233,234,236,237,and239-251.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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