Ex Parte Krakow et al

Patent Trial and Appeal Board

Jul 26, 2018

13756098 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/756,098 01/31/2013
24504 7590 07/30/2018
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Burton Krakow
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.
292103-1200 2066
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURTON KRAKOW, ELIAS K. STEP ANAKOS,
and DHARENDRA YOGI GOSWAMI
Appeal2017-009814
Application 13/756,098
Technology Center 3700
Before JEREMY M. PLENZLER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1---6, 11-14, and 25-29. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as the University of South
Florida. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated December 22, 2016.
Appeal2017-009814
Application 13/756,098
STATEMENT OF THE CASE
Claims 1 and 25 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A thermal energy storage system comprising:
multiple thermal energy storage containers adapted
to store thermal energy storage media, the containers
having high emissivity inner surfaces that are adapted to
radiate heat into the stored thermal energy storage media;
and
thermal energy storage media stored within the
storage containers, the storage media comprising a phase
change material that is substantially transparent to thermal
radiation and radiation absorbing material within the phase
change material that absorbs heat radiated by the inner
surfaces, wherein the storage media is tailored so that
nearly total absorption of thermal radiation emitted from
the inner surfaces is reached in a distance that coincides
with a distance between opposing inner surfaces of the
containers.
THE REJECTIONS
I. Claims 1-6, 11-14, and 25-29 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite. 3
II. Claims 1-6, 11-13, and 25-29 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Thiers (WO 2011/088132 Al; published July
21, 2011), Khodadadi (US 2009/0236079 Al; Sept. 24, 2009), and
Newberry (US 2008/0264602 Al; published Oct. 30, 2008).
3 The Examiner withdraws the basis for this rejection regarding the claim
term "high," but otherwise maintains the rejection as stated in the Final
Action. See Ans. 2.
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III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Thiers, Khodadadi, Newberry, and McCall (US
4,624,242; issued Nov. 25, 1986).
ANALYSIS
Reiection I
Claim term: "substantially"
Regarding independent claim 1, the Examiner finds that the claim
term "substantially" is a "relative term[ s] that render the claim[ s] indefinite."
Final Act. 3. The Examiner determines that neither the claims nor the
Specification provides a standard for ascertaining the requisite degree to
which a phase change material ("PCM") must be transparent to thermal
radiation to be substantially transparent to thermal radiation, as claimed. Id.
The Examiner determines that "one skilled in the art would not be
reasonably apprised of the scope of the invention." Id. The Examiner
repeats these findings with respect to identical limitations in independent
claim 25. Id. at 4.
Appellants argue that although the claim term "substantially" is
relative, the "plain and customary meaning[] [is] clear and well known," and
that "substantially" is "understood by persons having ordinary skill and
laypersons alike as meaning 'almost but not quite."' Appeal Br. 7.
The Examiner responds that the clarity of the claims is "compounded"
because
the [S]pecification does not explain how the PCM is both (i)
transparent to thermal radiation that passes through a container
yet also (ii) somehow not transparent to thermal radiation
transmitted from radiation absorbing materials. Therefore, it is
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unclear how the phase changing material is "substantially
transparent" to thermal radiation if the phase changing material
absorbs thermal radiation, and it is unclear how the claimed
energy storage media (which includes the phase change material)
is capable of achieving "nearly total absorption" of thermal
radiation if the claimed phase change material is "substantially
transparent" to thermal radiation.
Ans. 3.
Appellants reply that "[a]s would be appreciated by a person having
ordinary skill in the art of heat transfer, [the heat transfer between the
radiation absorbing materials and the PCMs] is conductive heat transfer,
which is completely different from radiation heat transfer." Reply Br. 2
( citing Spec. 9: 18-19, emphasis added) ("A radiation absorbing material can
be added to the PCM in such cases to absorb the radiation and transfer it to
the PCM.").
Notably, contrary to Appellants' submission supra, the Specification
merely discloses at page 9, lines 18 to 19, that the radiation absorbing
material transfers absorbed radiation to the PCM, but does not specify that
the transfer is conductive heat transfer. Cf Spec. 3: 18-20 ("a radiation
absorbing material ... absorbs radiation and heats the PCM"); see also id.
14:7-14 ( discussing the thermal conductivity of solid sodium chloride); id.
16: 1-3 ("[low melting metals and metal alloys] are expensive but their very
high thermal conductivity may make them worth the price").
Notwithstanding, an enablement rejection is not presented on the record
before us, and we decline to exercise our authority to make a new ground of
rejection.
Regarding the claim language requiring a PCM to be substantially
transparent to thermal radiation, the Specification fails to use the term
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"substantially" except in claims 9 and 16 as originally filed. However, the
Specification discloses that
[ m Jany PCMs are partially or completely transparent to thermal
radiation, such as infrared radiation. When such PCMs are used
in a container ... , the radiance from the high emissivity inner
surfaces of the container can pass straight through the PCM to
the opposite surface of the container without being significantly
absorbed by the PCM. A radiation absorbing material can be
added to the PCM in such cases to absorb the radiation and
transfer it to the PCM.
Spec. 9:14--19 (emphasis added). Use of the term "substantially" does not
necessary render claims indefinite. See, e.g., Ecolab, Inc. v. Envirochem,
Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2011) (noting that terms such as
"substantially" are used ubiquitously in patent claims to avoid a strict
numerical boundary to the specified parameter without necessarily rendering
the claims indefinite). Here, the Specification supports Appellants'
argument that the claim term "substantially" means "almost but not quite,"
as set forth supra, because the Specification discloses that it is desirable for
thermal radiation to pass straight through the PCM without being
significantly absorbed.
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 25, and claims 2-6, 12-14, and 26-29 depending therefrom, as
indefinite due to the use of the claim term "substantially," under 35 U.S.C.
§ 112, second paragraph.
Claim term: "nearly"
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Regarding independent claim 1, the Examiner finds that the claim
term "nearly" is a "relative term[] that render the claim[ s] indefinite." Final
Act. 3. The Examiner determines that neither the claims nor the
Specification provides a standard for ascertaining the requisite degree to
which thermal radiation emitted from the inner surfaces and reached in a
distance between opposing inner surfaces of the containers is absorbed to be
nearly totally absorbed, as claimed. Id. The Examiner determines that "one
of ordinary skilled in the art would not be reasonably apprised of the scope
of the invention." Id. The Examiner repeats these findings with respect to
identical limitations in independent claim 25. Id. at 4.
Appellants argue that although the claim term "nearly" is relative, the
"plain and customary meaning[] [is] clear and well known," and that
"nearly" is "understood by persons having ordinary skill and laypersons
alike as meaning 'almost but not quite."' Appeal Br. 7.
The Examiner again challenges how a PCM is capable of "nearly total
absorption" if the phase change material is "substantially transparent," as
claimed. Ans. 3. Appellants' reply to this determination and our remarks
regarding enablement are set forth supra. SeeReply Br. 2.
The Specification discloses that
the absorption coefficient of the thermal energy storage media
stored in the container can be tailored to suit whatever result is
desired, such as nearly total absorption being reached at a
distance that coincides with the distance between the walls of the
container.
Spec. 11:5-9.
Although the Specification does not precisely define the claim term
"nearly," we note, with respect to the meaning of similar words like "about"
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or "approximately," that their meaning is dependent on the facts of a case,
the nature of the invention, and the knowledge imparted by the totality of the
earlier disclosure to those skilled in the art. See Eiselstein v. Frank, 52 F.3d
1035, 1040 (Fed. Cir. 1995); see also, Ex parte Eastwood, Brindle and Kolb,
163 USPQ 316 (Bd. Pat. App. & Int. 1969) (The descriptive word "about" is
not indefinite as argued by the examiner. ... Rather, the term is clear but
flexible and is deemed to be similar in meaning to terms such as
"approximately" or "nearly".). Given the nature of the invention, we accept
Appellants' definition of the claim term "nearly," as "almost but not quite,"
which imparts flexibility to the claim. Cf WEBSTER'S THIRD NEW INT'L
DICTIONARY 1510 (1993) ( defining "nearly" as "with an approach to
completeness or exactness").
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 25, and therefore, claims 2---6, 12-14, and 26-29 depending therefrom,
as indefinite due to the use of the claim term "nearly," under 35 U.S.C.
§ 112, second paragraph.
Claim limitation: "tailored so that ... "
Regarding independent claim 1, the Examiner finds that the claim
limitation "the storage medium is tailored so that nearly total absorption of
thermal radiation emitted from the container inner surfaces is reached in a
distance that coincides with a distance between opposing inner surfaces of
the container" is indefinite because "it is unclear how the storage media is
'tailored' ( e.g. by what means, materials, density, concentration, total
mass/volume, container geometry, etc.) to achieve 'nearly total absorption of
thermal radiation."' Final Act. 3. The Examiner determines that "[t]he
claims lack the structural details ( e.g. by what means, selection of materials,
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material density, PCM concentration, radiation, absorbing material
concentration, total mass/volume, container geometry, heat exchange fluid
flow rates, etc.) necessary to breathe life into the limitation." Ans. 4. The
Examiner repeats these findings with respect to identical limitations in
independent claim 25. Final Act. 4.
Appellants correctly argue that the issue concerns "claim scope, not
claim indefiniteness." Appeal Br. 8.
The Specification discloses that
[t]he rate of absorption by the seeded PCM can be controlled by
adjusting the concentration or optical density, c, of the radiation
absorbing material. . . . The desired absorption coefficient for
the seeded PCM will therefore depend upon the size of the
container and the temperatures to which the material is exposed.
Accordingly, the absorption coefficient of the thermal energy
storage media stored in the container can be tailored to suit
whatever result is desired, such as nearly total absorption being
reached at a distance that coincides with the distance between the
walls of the container.
Spec. 10: 16-11: 8. Thus, it is clear that the claim limitation including
"tailoring" the thermal energy storage media (i.e., the seeded PCM), as
claimed, means making decisions regarding variables relevant to the thermal
energy storage media. Simply because the variables which may be selected
are not defined in the claim does not render the claim indefinite, as "breadth
is not to be equated with indefiniteness." In re Miller, 441 F.2d 689, 693
(CCPA 1971).
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 25, and therefore, claims 2---6, 12-14, and 26-29 depending therefrom,
as indefinite due to the use of the claim limitation "tailored so that ... ,"
under 35 U.S.C. § 112, second paragraph.
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Rei ection II
Appellants argue claims 1---6, 11-13, and 25-29 as a group. See
Appeal Br. 21. We select independent claim 1 as representative, with claims
2---6, 11-13, and 25-29 falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding independent claim 1, the Examiner finds, inter alia, that
Thiers generally discloses the claimed thermal energy storage system,
including multiple thermal energy storage containers (i.e., heat transfer
devices 1) adapted to store thermal energy media (including PCMs ). Final
Act. 5 (citations omitted). The Examiner also finds that Thiers' heat transfer
devices 1 have "emissive inner surfaces," referring to a coating of an inert
substance 21 (Final Act. 5 ( citing, e.g., Thiers ,r 31 ( disclosing that
aluminum is a suitable inert substance for coating the inner surfaces of the
heat transfer devices 1) ). The Examiner notes that "emissivity is a material
property" and that because Thiers discloses aluminum as a coating material,
wherein aluminum has a known emissivity (i.e., ranging from 0.04 to 0.77),
Thiers discloses that the containers have an emissive surface, as claimed,
albeit a low emissive surface. 4 Ans. 5 (citing Thiers ,r 32).
The Examiner determines that Thiers is "silent with respect to the
inner surfaces as having high emissivity," and relies on Newberry for
teaching "a thermally regulated container" such as a "living space," having
"a heat loss mitigating layer compris[ing] a dark layer having high
4 We agree with Appellants, as the Examiner appears to acknowledge here,
that the claimed "high emissivity inner surfaces" recites a structural, not
functional, property of the surface. See Appeal Br. 14--15; Ans. 10.
Similarly, we agree with Appellants that the claim limitation "radiation
absorbing material" requires the material to structurally be able to absorb
radiation. See Appeal Br. 21-22; Ans. 15.
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emissivity," (i.e., "Martin black paint which has an emissivity of 0.94"),
which "greatly minimiz[ es] an amount of heat leaving the container." Final
Act. 5---6 (citing Newberry ,r 41). The Examiner reasons that it would have
been obvious "to configure the layer as disclosed by Thiers as a dark layer as
taught by Newberry to improve thermal storage capability by mitigating heat
loss from the container." Id. at 6.
The Examiner also determines that Thiers is "silent with respect to
radiation absorbing material within the PCM that absorbs heat," and relies
on Khodadadi for teaching a thermal energy storage media contained within
a thermal energy storage container (i.e., flat enclosure 1306) comprising a
PCM (i.e., PCM 1304) and a radiation absorbing material (i.e., nanoparticles
1302), wherein "the radiation absorbing material absorbs radiated heat, ....
thereby enhancing the thermal conductivity of a PCM within which the
radiation absorbing material is interspersed." Final Act. 6 (citing Khodadadi
,r,r 59, 70, Fig. 13). The Examiner reasons that it would have been obvious
"to configure the thermal energy storage media as disclosed by Thiers to
include a radiation absorbing material as taught by Khodadadi to improve
heat exchange by enhancing the rate at which heat is transferred to a thermal
energy storage media." Id. (citing Khodadadi ,r 59).
The Examiner also relies on Thiers for inherently disclosing the
claimed "wherein" clause requiring that "the thermal energy storage media
is tailored so that nearly total absorption of thermal radiation emitted from
the inner surfaces is reached in a distance that coincides with a distance
between opposing inner surfaces of a container." Final Act. 7 (citing Thiers
i127).
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Appellants argue that Thiers does not disclose that the coating is
emissive. Appeal Br. 1 O; Reply Br. 3; see, e.g., Thiers ,r,r 31, 32 ( disclosing
the application of a corrosion-resistant coating to the inner surface of the
container, which is also inert with respect to the enclosed materials or
PCMs, or is for corrosion resistance). Appellants submit that 'just because
Thiers' layer 21 can 'to some degree' 'reflect' thermal energy does not make
the layer an 'emissive' inner surface that is 'adapted to radiate heat into the
stored thermal energy storage media." Id. at 10-11.
Newberry discloses that
to further decrease heat loss in the system, ... the radiant plate
first side (facing the drywall and living space) may be coated
with a high emissivity coating ... [ for example] by painting ...
the first side ... with a highly emissive coating such as Marin
Black Paint N-150-1 ). The emissivity of the aluminum is already
quite low . . . . By adjusting the emissivity of each of the two
sides in this way, heat escaping from the radiant plate second side
can be minimized, while heat escaping through the radiant plate
first side is maximized.
Newberry ,r 41. Thus, Newberry recognizes aluminum as having low
emissivity, or as being an emissive surface. More importantly, Newberry
teaches, as relied on by the Examiner, that it is known to use highly emissive
coatings on inner surfaces that are adapted to radiate heat, as claimed. Cf
Spec. 7: 10-11 ("this high emissivity is provided by a dark ( e.g., black layer
or coating having high emittance"). Thus, Appellants' argument does not
apprise us of error in the Examiner's findings.
Appellants also argue, with respect to the Examiner's rationale, that
"Thiers does not indicate that heat loss is an issue in [ a system intended for
use in industrial operations that generate large amounts of waste heat] and
Newberry does not identify such heat loss as a problem with thermal energy
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storage systems such as that taught by Thiers." Appeal Br. 12; see Reply Br.
3--4. Appellants submit that "a person having ordinary skill in the art would
not have been motivated to provide such a paint [(i.e., a paint used in a home
heating system)] on Thier[s'] containers [(i.e., of an industrial system
intended for use at temperatures as high as 1,3 OOQC)] to 'increase the heat
radiated toward the thermal energy storage media' as suggested by the
Examiner," because, for example, "Newberry's paint must not degrade when
exposed to [PCMs] (e.g., salts) at high temperatures" and "there is no
evidence in the prior art that Newberry's paints would work in [Thiers']
conditions." Id. at 12, 14. Because of these differences between "a home
heating system" and "an industrial thermal energy storage system,"
Appellants assert that the Examiner improperly relied on hindsight. Id. at
13.
We are not persuaded by Appellants' argument. First, the test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art" In re Keller, 642 F.2d 413,
425 (CCP A 1981 ). To the extent Appellants are holding the Examiner to the
old TSM (teaching, suggestion, or motivation) standard, wherein either
reference has to suggest the Examiner's modification to the system of the
other; such a standard is not required. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007).
As set forth supra, Newberry demonstrates that it is known in the art
of radiant thermal devices to apply a highly emissive coating to the radiant
surface facing the area to be heated by the radiant source to facilitate
radiation absorption. Notably, Newberry teaches that using a high
emissivity coating in such a way is well known in the art of radiant heat
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sources: "In the past, a similar practice has been used on solar flat plate
collectors, wherein on the absorptive side only, emissivity has been
increased to facilitate absorbed radiation." Newberry ,r 43. Further, the
Examiner's combination does not require the application of paint that may
degrade in Thiers' system, but rather, the Examiner proposes modifying the
corrosion-resistant, inert coating disclosed by Thiers to be "a dark layer," as
taught by Newberry, "to improve thermal storage capability by mitigating
heat loss from the container," as set forth supra. In other words, the test for
obviousness is not whether the paint disclosed in Newberry is suitable for
bodily incorporation into the Thier's containers. See, In re Keller, 642, F.2d
413,425 (CCPA 1981). 5 Thus, Appellants' argument does not apprise us of
error in the Examiner's findings or reasoning, and because the Examiner's
rationale is supported by Newberry's teaching, the Examiner did not
improperly rely on hindsight.
Regarding the Examiner's reliance on Khodadadi, Appellants argue
that "it is clear that it would not have been obvious ... to add Khodadadi's
'nanoparticles' to Thiers' [PCM]," because Thiers' discloses "a thermal
energy storage system intended for use with industrial operations that
generate large amounts of waste heat [at temperatures reaching I300QC],"
5 Moreover, the application of an anti-corrosive, inert coating is an
alternate, second embodiment in Thiers, and the Examiner's modification is
equally applicable to Thier's first embodiment (see Thiers ,r 30, Figs. IA,
IB), which does not have an anti-corrosive, inert coating. According to the
Examiner, it would have been obvious to apply a highly emissive coating
directly to the inner surface of Thier's heat transfer device 1 (i.e., a metal-
copper or aluminum----enclosure) filled with PCM, in view ofNewberry's
teaching that it is well known in the art of radiant heat sources to do so. See
Newberry ,r 43.
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wherein the PCMs "can comprise molten salts, which are well known in the
art to have extremely high melting points," as compared to Khodadadi's
"very different" PCMs, which "are low-temperature materials such as water,
which 'melts' at temperatures above O QC," for use in vehicle dashboards,
building materials, textiles, batteries, and cans and bottles. Appeal Br. 16-
19 ( citing Khodadadi ,r,r 4, 30). Appellants further argue that "there is no
indication provided by either Thiers or Khodadadi that the nanoparticles
used in Khodadadi' s '[PCMs]' would be viable in an industrial thermal
energy storage system," (id. at 19) and more particularly, that Khoadadi's
nanoparticles would "not degrade when exposed to [PCMs] ( e.g., salts) at
high temperatures." Id. at 20.
We are not persuaded by Appellants' argument. First, the Examiner's
modification more generally proposes "configuring the thermal energy
storage media as disclosed by Thiers to include a radiation absorbing
material as taught by Khodadadi," as set forth supra, and does not more
specifically require replacing the PCM of Thiers' thermal energy storage
system with the PCM (i.e., water) of Khodadadi's thermal energy system, as
argued by Appellants. See Ans. 11.
Second, although the Examiner similarly does not propose modifying
Thiers' system to include a radiation absorbing material specified for use in
Khodadadi's system (see Ans. 13 ("the specific application of [Khodadadi's]
radiation absorbing materials is irrelevant," as the Examiner is relying on
Khodadadi for teaching that "[ radiation absorbing materials] are known in
the art for their utility in enhancing the rate at which heat is transferred to a
thermal energy storage media within which they are located))," the
Examiner does find that "Khodadadi teaches at least one radiation absorbing
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material [(i.e., cupric oxide or copper oxide)] that has a melting point that
falls within or exceeds the operating range of temperatures specified by
Thiers [(i.e., 120QC-1300QC)]," thus teaching a radiation absorbing material
suitable for Thiers' industrial process. Ans. 13 ( citing Thiers ,r 25).
Notably, cupric oxide is one of the exemplary radiation absorbing materials
disclosed in the Specification. See Spec. 10:4--5 ("Example radiation
absorbing materials include cuprous chloride, ferrous chloride, cobalt
chloride, cupric oxide, and suspended carbon."). The Examiner further
determines that cupric oxide, which is taught by Khodadadi as a radiation
absorbing material, "will remain in the solid-state when exposed to
temperatures as disclosed by Th[ie]rs." Id. at 13 (citing Khodadadi ,r 59).
Appellants do not reply to the Examiner's finding that Khodadadi
discloses radiation absorbing materials, such as cuprous oxide, suitable for
high-temperature industrial thermal energy storage systems. See Reply Br.
6. Thus, Appellants' argument does not apprise us of error in the
Examiner's general reliance on the teachings of Khodadadi, or specific
teaching with respect to using cupric oxide as exemplary radiation absorbing
materials in the system of Thiers.
Appellants further argue that
while the Examiner argued that it would have been obvious to
add Khodadadi' s nanoparticles to Thiers' [PCMs] "to improve
heat exchange by enhancing the rate at which heat is transferred
to a thermal energy storage media," Khodadadi discloses using
nanaoparticles in such high concentrations that radiative heat
transfer would actually be impeded, not enhanced. For example,
... Khodadadi identifies solid particle volume ratios of 0.1 and
0.2. If, as suggested by Khodadadi, such concentrations were
used, the nanoparticles near the walls of the Thiers' container in
which the [PCM] is stored would absorb or reflect nearly all of
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the radiation emitted by the walls such that almost none of the
radiation would even reach the center of the container. . . .
Thus, such a modification would actually reduce heat transfer in
Th[ie ]rs' container and would certainly not result in "nearly total
absorption of thermal radiation emitted from the inner surfaces
is reached in a distance that coincides with a distance between
opposing inner surfaces of the containers" as [ claimed].
Appeal Br. 20.
We are not persuaded by Appellants' argument. The Examiner does
not propose adding Khodadadi' s nanoparticles in high concentrations into
Thiers' PCM, but rather, relies on Khodadadi for teaching that it is known to
add radiation absorbing material with a higher thermal conductivity than the
PCM to enhance the exchange ofheat to or from the PCMs. 6 See Khodadadi
,r 59 ("the [nanoparticle-enhanced PCM)] has a higher thermal conductivity
than the PCM itself since the particles enhance the exchange of heat.").
Again, the test for obviousness is not whether the concentration of radiation
absorbing material (i.e., nanoparticles) disclosed in Khodadadi is suitable for
bodily incorporation into the Thiers' containers. See In re Keller, 642, F.2d
413,425 (CCPA 1981). To the extent Appellants are arguing that
Khodadadi teaches the use of nanoparticles only for releasing heat (i.e.,
freezing) and not absorbing heat, Khodadadi discloses that "the NEPCM
stores thermal energy extremely well," such that "[t]he NEPCM is able to
store hot or cold energy so that regardless of what kind of energy comes in
contact with the NEPCM, the energy is stored within the NE PCM."
6 Notably, Khodadadi teaches that the concentration of radiation absorbing
materials within the PCM may be tailored to achieve certain results, such as
freezing times. See Khodadadi ,r 52 ("As the volume fraction of a filler
material that is suspended in a base PCM is raised, the thermal conductivity
ratio of the liquid to solid increases.").
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Khodadadi ,r 73. Thus, Appellants' argument does not apprise us of error in
the Examiner's findings or reasoning.
Finally, Appellants argue that the Examiner's reliance on paragraph
27 of Thiers for inherently disclosing tailoring the storage media, such that
"nearly total absorption of thermal radiation emitted from the inner surface
is reached in a distance that coincides with a distance between opposing
inner surfaces of the containers," as set forth supra, is in error, because
paragraph 29 of Thiers discloses tailoring the shape and size of the heat
transfer chambers and not the storage media. Appeal Br. 23-24.
Paragraph 29 of Thiers discloses that
[h ]eat transfer chambers can be of any shape and size that is
compatible with the amount of heat available, the length of time
such heat is available, and its temperature. Those three variables
determine the size and shape of the heat transfer devices being
used, so that they will have a residence time in the transfer
chamber equal to the of heat being available, and their mass of
[PCM] will be adequate to the amount of heat and temperature
available.
Thiers ,r 29. Thus, Thiers discloses that the mass of the phase change
material (i.e., storage media) will be adequate (or, in this context, able to)
absorb the amount of heat and temperature available. Further, Thiers
implies that the thermal energy storage system is designed such that the
PCM is adequate to absorb the heat radiated by the system, and implies that
an inadequate mass of PCM would be one that fully changes phase ( within
the distance between opposing inner surfaces of the container) without
absorbing nearly all the heat radiate by the system. Therefore, we are not
apprised of error in the Examiner's determination that Thiers inherently
teaches that the mass of PCM is a parameter that may be tailored in order for
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Thiers' thermal energy storage system to absorb a maximum ( or nearly all)
heat radiated by the system, such that the entire mass of PCM within the
container (from side to opposing side) undergoes a phase change.
Regarding the arguments in the record as to whether Thiers,
Newberry, and/or Khodadadi are properly relied on by the Examiner as
analogous art (See Ans. 6-7, 12-13; Reply Br. 3--4, 6), the analogous art test
requires a showing that a reference is either in the same field of the
applicant's endeavor or reasonably pertinent to the problem with which the
inventor was concerned. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006)
(citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). We determine
that the Appellants' field of endeavor is thermal energy storage systems of
the type that contain thermal energy storage media. See, e.g., Spec. 1: 15-16;
cf Appeal Br. 28 ( claim 1: "A thermal energy storage system comprising:
multiple thermal energy storage containers adapted to store thermal energy
d. ") storage me rn . . . .
We determine that Thiers and Khodadadi are each in the same field of
endeavor as Appellants' invention because each of Thiers, Newberry, and
Khodadadi disclose inventions that are thermal energy storage systems of
the type that contain thermal energy storage media. See, e.g., Thiers,
Abstract, Fig. 1; Khodadadi ,r 73. We also determine that although
Newberry is in the field of endeavor (namely, radiant heating and cooling
systems (see, e.g., Newberry ,r 2)) that is different from Appellants' field of
endeavor, Newberry is reasonably pertinent to the problem with which the
inventor was concerned, namely, the efficient transfer of radiate heat from
one surface into to another area. See, e.g., Spec. 2:4--7 (identifying a
problem faced by the inventor as the efficient transfer of heat from a
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container to the contained material.). Specifically, an object ofNewberry's
invention is to address "inefficiency relat[ing] to the emissivity ... on [a]
side of [a] heat transfer plate," wherein "[i]deally[,] a radiant panel assembly
will efficiently transfer energy from the heat transfer fluid to the hydronic
tube thence to the heat transfer plate and to the drywall." Newberry ,r 16.
We do not agree with Appellants' more narrow determinations that Thiers is
in the field of endeavor of industrial thermal energy storage systems,
Newberry is in the field of endeavor of home radiant heating systems, and
Khodadadi is in the field of endeavor of "heating PCM with thermal
radiation when the PCM is transparent to such radiation." Reply Br. 3--4, 6.
Thus, Thiers, Newberry, and Khodadadi are properly relied on as prior art.
Accordingly, we sustain the Examiner's rejection of claim 1 and
claims 2-6, 11-13, and 25-29 fall with claim 1.
Rei ection III
Appellants argue that McCall does not cure the deficiencies in the
Examiner's findings and reasoning with respect to claim 1. Appeal Br. 25-
16. However, because we do not agree there are any deficiencies in the
Examiner's findings and reasoning, we sustain the Examiner's rejection of
claim 14 for the same reasons stated supra.
DECISION
The Examiner's decision rejecting claims 1-6, 11-14, and 25-29
stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite for
using the claim term "substantially" is REVERSED.
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The Examiner's decision rejecting claims 1-6, 11-14, and 25-29
stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite for
using the claim term "nearly" is REVERSED.
The Examiner's decision rejecting claims 1-6, 11-14, and 25-29
stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite for
using the claim language "tailored so that ... " is REVERSED.
The Examiner's decision rejecting claims 1-6, 11-14, and 25-29
under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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