Ex parte Keintzel et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08444389 (B.P.A.I. Jul. 21, 1998)

Application for patent filed May 19, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GUNTER KEINTZEL, HORST-DIETER OLDENBURG,
MANFRED SCHMITZ-GOEB and KARL-HEINZ DINSTUHLER
_____________
Appeal No. 97-2594
Application 08/444,3891
______________
ON BRIEF
_______________
Before CALVERT, COHEN and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
11 and 15. Claims 2 to 10, 12 to 14, 16, 17 and 19 to 26, the
other claims remaining in the application, stand withdrawn
from consid-eration as being directed to nonelected species.
Appeal No. 97-2594
Application 08/444,389
We note that claim 1, line 11 recites "determining a length" of 2
the storage device, but not that the storage device is the recited length.
Also "a length" in claim 1, line 11 and claim 11, line 25 evidently should be
-- the length --. To be consistent with the paragraph bridging pages 10 and
11 of the specification, we have interpreted "determining a length" in claim
1, line 11, as -- the length --; "to be" in claim 1, line 12, as -- being --;
and "a length" in claim 11, line 25, as -- the length --. The claims should
be appropriately amended in any subsequent prosecution.
2
37 CFR 1.142(b).
The claims on appeal are drawn to a method and apparatus
for generating steam using solar radiation. A copy of claims
1, 11 and 15 is contained in the appendix to appellants'
brief.2
The reference relied upon in rejecting the claims is:
Diggs 3,993,041 Nov. 23, 1976
Claims 1, 11 and 15 stand finally rejected as
unpatentable over Diggs, under 35 USC § 103.
In the final rejection (Paper No. 7) the examiner took
the position that (as to claims 1 and 11) Diggs disclosed all
the claimed subject matter except for the limitation that the
length of the short-term heat storage device in the flow
direction of the heated air is "substantially identical to the
length of the thermocline zone of said short-term heat storage
Appeal No. 97-2594
Application 08/444,389
Speicherung solarer Hochtemperaturwärme [Storing High Temperature Heat3
Energy] (Paul Scherrer Institut, Dec. 1993).
The examiner has not rejected the claims under 35 USC § 112, first4
paragraph, or otherwise contended that the claimed subject matter is not
enabled by appellants' disclosure.
3
device during full load of the [said] steam generator" (claim
1, lines 12 and 13; claim 11, lines 25 to 27). However, he
asserted that this length appears "to be inherent in all [heat
storage] devices" (such as Diggs' vault 22).
With the amendment filed April 22, 1996 (Paper No. 6),
appellants submitted a copy of page 5 of a German
publication , and now, on pages 8 and 9 of their brief,3
include a translation of that page. Appellants assert , and4
the examiner does not dispute, that (brief, pages 9 to 10;
original emphasis):
This publication makes clear that the thermocline
zone (= heat transfer zone), in fact, extends only
over a portion of the length of the heat storage
device. It is also pointed out that in an efficient
storage facility the thermocline zone is narrow with
respect to the heat storage device. Thus, the
thermocline zone is not inherently identical to the
length of the storage facility; it is, in fact,
generally a very narrow band within the heat storage
device. The length of the thermocline zone does not
change when the length of the heat storage device is
changed since the length of the thermocline zone
Appeal No. 97-2594
Application 08/444,389
4
depends on the heat storage material and the heat
transmission coefficient. For example, in the
illustrated device of PSI publication the
thermocline zone is only about 1/3 of the total
length of the heat storage device. This would not
be changed if the length of the heat storage device
were vertically extended. The length of the
thermocline zone would remain the same. It is noted
in the PSI publication that the length of the
thermocline zone depends on the efficiency of the
heat storage device. The efficiency of the storage
device is, of course, dependent on the type of
material, the heat
transmission coefficient, and the construction of
the storage facility. For example, a cylinder of a
small diameter will have a longer thermocline zone
than a cylinder with a large diameter (given an
identical storage material). These relationships
are well known to any engineer skilled in the art
and need no further explanation. Likewise, an
engineer skilled in the art of heat transfer is able
to calculate, based on the material, the heat
transmission coefficient etc. (these values are
available from respective handbooks), the length of
the thermocline zone.
The examiner's response to appellants' arguments seems to
be that, depending on a user's needs, the mass of Diggs' heat
storage material could be made quite small. However, as shown
by appellants, the thermocline zone does not necessarily
extend over the length of the heat storage device. The fact
that the Diggs device could be modified or constructed to have
Appeal No. 97-2594
Application 08/444,389
5
the particular
length recited in the claims does not make such modification
or construction obvious unless there is some suggestion in the
prior art of the desirability of doing so. In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In
re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed.
Cir. 1989). We find no such suggestion in Diggs and therefore
will not sustain the rejection.
The examiner's decision to reject claims 1, 11 and 15 is
reversed.
Reversed
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 97-2594
Application 08/444,389
6
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2594
Application 08/444,389
7
Robert W. Becker & Associates
11896 N. Highway 14
Suite B
Tijeras, New Mexico 87059