Ex Parte LaMarca et al

Patent Trial and Appeal Board

Oct 24, 2018

14061343 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/061,343 10/23/2013
22822 7590
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
10/26/2018
ST LOUIS, MO 63101
FIRST NAMED INVENTOR
Drew Philip LaMarca
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.
306/2233US 3291
EXAMINER
TRPISOVSKY, JOSEPH F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
IPDEPT@LEWISRICE.COM
KDAMMAN@LEWISRICE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DREW PHILIP LAMARCA and
THOMAS ZICH
Appeal2017-011164
Application 14/061,343
Technology Center 3700
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
LISA M. GUIJT, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision in the Non-Final Office Action (dated May 20, 2016, hereinafter
"Non-Final Act.") rejecting claims 1-12.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant is the Applicant, EC Energy, LLC, identified by the Appeal
Brief (filed Dec. 12, 2016, hereinafter "Appeal Br.") as the real party in
interest. Appeal Br. 1.
Appeal 2017-011164
Application 14/061,343
INVENTION
Appellant's invention relates "to the field of air cooling or
refrigeration systems ... which improve efficiency by cooling liquid
refrigerant prior to evaporation." Spec. para. 2.
Claims 1 and 12 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An air cooling system comprising:
a refrigerant;
a compressor;
a condenser in fluid communication with said
compressor, said condenser condensing said refrigerant entering
said condenser from a gas state to a liquid state;
a sub cooler, said sub cooler comprising:
a container including a liquid bath; and
an exchanger in fluid communication with said
condenser, said exchanger at least partially submerged in said
liquid bath;
wherein, said refrigerant enters said exchanger from said
condenser in a liquid state and said liquid refrigerant in said
exchanger is cooled by said liquid hath; and
an evaporator in fluid communication with said
exchanger, said refrigerant in said evaporator absorbing heat to
phase transition from a liquid state to a gas state.
REJECTIONS
I. The Examiner rejects claims 1-3, 6, and 10-12 under 35 U.S.C.
§ 103(a) as being unpatentable over Gazes (US 5,852,939, issued Dec.
29, 1998) and Rawlings et al. (US 5,081,848, issued Jan. 21, 1992,
hereinafter "Rawlings").
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II. The Examiner rejects claim 4 under 35 U.S.C. § I03(a) as being
unpatentable over Gazes, Rawlings, and Lindberg et al. (US 6,736,191
B 1, issued May 18, 2004, hereinafter "Lindberg").
III. The Examiner rejects claim 5 under 35 U.S.C. § I03(a) as being
unpatentable over Gazes, Rawlings, Lindberg, and Wiggs (US
2008/0016894 Al, published Jan. 24, 2008).
IV. The Examiner rejects claims 7-9 under 35 U.S.C. § I03(a) as being
unpatentable over Gazes, Rawlings, and Milder et al. (US
2009/0287355 Al, published Nov. 19, 2009, hereinafter "Milder").
ANALYSIS
Rejection I
Appellant has not presented arguments for the patentability of claims
2, 3, 6, and 10-12 apart from claim 1. See Appeal Br. 12-21. Therefore, in
accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 3, 6, and 10-12 standing or falling with claim 1.
The Examiner finds Gazes discloses a cooling system including, inter
alia, a compressor 1, a condenser 4, an underground sub-cooler 6 having a
coiled heat exchanger for cooling liquid refrigerant transferred from
condenser 4, and an evaporator 15 where the cooled liquid refrigerant
absorbs heat to transition to a gas state. Non-Final Act. 2 ( citing Gazes, col.
3, 11. 22-33, 51-55, Fig. 1 ). The Examiner further finds that the sub-cooler
of Gazes does not include a container having a liquid bath, wherein the heat
exchanger is at least partially submerged in the liquid bath such that the
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Application 14/061,343
liquid bath cools the liquid refrigerant. Id. Nonetheless, the Examiner finds
that Rawlings discloses a heat exchanger 98 including a container 100
holding a liquid bath 102, wherein the heat exchanger is at least partially
submerged in the liquid bath such that the liquid bath cools the liquid. Id. at
3 (citing Rawlings, col. 5, 11. 41-54, Fig. 2). The Examiner further finds that
Rawlings discloses a liquid based heat exchanger as an alternative to a
ground heat exchanger, wherein the liquid bath can be connected to a water
well 104 or other sources of ground water. Id. ( citing Rawlings, col. 5, 1.
63---col. 6, 1. 3). Thus, the Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to substitute the ground coil
heat exchanger in the cooling system of Gazes with Rawlings' liquid based
heat exchanger "in order to allow for temperature control of the liquid bath
to maintain the ground source heat exchanger at a desired temperature." Id.
Appellant first argues that a person of ordinary skill in the art "would
not recognize a water bath heat exchanger as an 'alternative' that may be
universally substituted for a geothermal system" because a water bath heat
exchanger system requires a supply of water and additional components not
needed for a geothermal heat exchanger ( container, pumps, valves,
conduits). Appeal Br. 13-14.
We appreciate that a water-based heat exchanger requires a water
source and components that are different from those of a geothermal heat
exchanger. However, we are not persuaded by Appellant's arguments
because if a water supply is available, a water-based heat exchanger
performs the same heat exchange function as a geothermal heat exchanger,
which is "overcom[ing] the [inefficiency] problems associated with heat
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exchange [between the refrigerant of an air conditioning system] with the
outside ambient air" that has a variable (inconsistent) temperature. Gazes,
col. 1, 11. 13-24, 47--49; see also Examiner Answer 7 (dated Feb. 27, 2017,
hereinafter "Ans."). Hence, in the presence of a water source, the
substitution of one type of heat exchanger, i.e., water-based, for another type
of heat exchanger, i.e., geothermal, in similar air conditioning applications,
is nothing more than an obvious selection between indisputably known
alternatives and the application of routine technical skills. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007) (citing United States v. Adams, 383
U.S. 39, 50-51 (1966)) ("[W]hen a patent claims a structure already known
in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result."). Here, Appellant does not provide an adequate
explanation why a person of ordinary skill in the art could not have
implemented such a substitution or why the results of the substitution would
have been unpredictable. Moreover, we agree with the Examiner that
Rawlings specifically discloses an air conditioning system including either
ground source heat exchanger 52 or water-based heat exchanger 52A for
performing the same heat exchange function of maintaining the temperature
of a fluid at a constant temperature. Ans. 7; see also Rawlings, col. 3, 11. 49-
52, col. 5, 11. 35-55, Figs. 1, 2.
Secondly, Appellant argues that Rawlings fails to disclose "a liquid
refrigerant cooled by a water bath," as called for by claim 1, "but rather
merely a water circuit in which no phase transition takes place." Appeal Br.
15. According to Appellant, Rawlings discloses "that a 'heat transfer
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Application 14/061,343
fluid'," which is different from a "refrigerant," "absorbs heat from a
refrigerant in a refrigerant/heat transfer fluid exchanger, and the heat transfer
fluid ( not the refrigerant) is pumped to [the] water bath [heat] exchanger."
Id.
We are not persuaded by Appellant's arguments because Appellant
cannot show nonobviousness by attacking Gazes and Rawlings individually
when the rejection as articulated by the Examiner is based on a combination
of Gazes and Rawlings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). In this case, we agree with the Examiner that Gazes discloses a
refrigerant flowing through compressor 1, condenser 4, and then through
underground heat exchanger (coils) 6. Ans. 7; see also Gazes, col. 3, 11. 23-
33, Fig. 1. The Examiner employs the disclosure of Rawlings to substitute
its water-based heat exchanger 52A for the underground (geothermal) heat
exchanger 6 of Gazes. Id. at 7-8. Hence, in the system of Gazes, as
modified by Rawlings, the refrigerant of Gazes flows through compressor 1,
condenser 4, and then through the water-based heat exchanger of Rawlings.
Thirdly, Appellant argues that the Examiner's reasoning to combine
the disclosures of Gazes and Rawlings lacks rational underpinnings because
it:
(a) does not make sense on its face; (b) is a merely conclusory
description of the characteristics of the resulting combination; not a
motivation to make the combination in the first place; ( c) is
discouraged by the primary reference, Gazes; and ( d) overlooks that
Gazes already teaches an adequate means for maintaining the
exchanger at a desired temperature.
Appeal Br. 1 7. Specifically, Appellant argues that
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Application 14/061,343
Id.
[I]t is incoherent to say, as the Examiner has, that a POSIT A
would replace the ground source heat exchanger of Gazes with
the water bath of Rawlings in order to maintain the ground
source heat exchanger at a desired temperature. There is no
such ground source heat exchanger in the Examiner's proposed
combination.
We do not agree with Appellant's interpretation of the Examiner's
language. The Examiner is correct in that the water-based heat exchanger
52A of Rawlings, which constitutes a substitute for the underground heat
exchanger (coils) 6 of Gazes, is explicitly described as a "ground source heat
exchanger." Ans. 8; see also Rawlings, col. 5, 1. 36. Moreover, Rawlings
discloses that ground source heat exchanger 52A includes a tank 100
containing water 102 that can be located underground. Rawlings, col. 5, 11.
36-40, Fig. 2. As such, in light of Rawlings' disclosure, the Examiner's use
of the phrase "ground source heat exchanger" to describe the heat exchanger
of Gazes, as modified by Rawlings, is clear and makes sense to a person of
ordinary skill in the art. Hence, we do not agree with Appellant that "[ t ]here
is no such ground source heat exchanger in the Examiner's proposed
combination." Appeal Br. 17 ( emphasis added).
We also do not agree with Appellant that the Examiner's reasoning to
combine the disclosures of Gazes and Rawlings is conclusory because, as
argued by Appellant, it does not set forth why a person of ordinary skill
would make the combination. See Appeal Br. 17-18; Reply Brief 3 ( dated
Apr. 27, 2017, hereinafter "Reply Br."). Rather, the Examiner has provided
a reason with rational underpinnings, namely, substitution of one known
type of heat exchanger, i.e., water-based, for another known type of heat
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exchanger, i.e., geothermal. See Non-Final Act. 3. Hence, in the presence
of a water source, the substitution of one type of heat exchanger, i.e., water-
based, for another type of heat exchanger, i.e., geothermal, in similar air
conditioning applications, is merely a selection between known alternatives.
Moreover, because Rawlings provides an explicit disclosure that ground
source heat exchanger 52 (geothermal) and water-based heat exchanger 52A
perform the same heat exchange function, and, thus, constitute known
alternatives, the Examiner's reasoning comes from the prior art. See
Rawlings, col. 3, 11. 49--52, col. 5, 11. 35-55, Figs. 1, 2.
Furthermore, we appreciate Appellant's position that Gazes already
teaches an adequate heat exchanger. See Appeal Br. 17, 19; see also Reply
Br. 3. However, as discussed supra, a water-based heat exchanger performs
the same heat exchange function as a geothermal heat exchanger. See
Gazes, col. 1, 11. 13-24, 47--49; Rawlings, col. 3, 11. 49--52, col. 5, 11. 35-55.
In addition, Gazes discloses that each type of heat exchanger has certain
disadvantages; for example, a water-based heat exchanger requires a water
source, whereas a geothermal heat exchanger is subject to refrigerant build-
up or requires extended land space to bury the heat exchanger. See Gazes,
col. 1, 11. 49--57, col. 2, 11. 8-31. As such, in light of the disadvantages noted
by Gazes for each type of heat exchanger, a person of ordinary skill in the
art would know to choose either one or the other depending on the
application and the environmental conditions, i.e., water source availability,
land space availability. See Gazes, col. 1, 11. 49--57, col. 2, 11. 8-31. For
example, even if a water-based heat exchanger requires a water source and
additional components, as Appellant argues (see Appeal Br. 19),
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nonetheless, if the water source is available and space is limited, the skilled
artisan would readily appreciate to use a water-based heat exchanger to
avoid refrigerant build-up that occurs in a geothermal heat exchanger.
Finally, Appellant argues that "Gazes ... teaches away from the use
of a water bath" because "the point of Gazes is to replace a water bath with a
superior technology that does not have the downsides of a water bath."
Reply Br. 4; see also Appeal Br. 17-18 (citing Gazes, col. 1, 11. 49-57).
We do not agree with Appellant that Gazes "criticize[ s ], discredit[ s ],
and discourage[s] the Examiner's solution." Appeal Br. 20. Rather, Gazes
discloses the function of geothermal and water-based heat exchangers, and
the disadvantages of each type of heat exchanger. See Gazes, col. 1, 11. 7-
26, 47--49. More specifically, Gazes discloses that a water-based heat
exchanger requires a water source, whereas a geothermal heat exchanger is
subject to refrigerant build-up or requires extended land space to bury the
heat exchanger. See Gazes, col. 1, 11. 49-57, col. 2, 11. 8-31. Although we
appreciate that Gazes describes the "problems" of water-based and
geothermal heat exchangers, we note that the "mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourages" the use of a water-based heat exchanger in the
system of Gazes. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). If
the disclosure of problems associated with a water-based heat exchanger
were a teaching away, as Appellant contends, then the disclosure in Gazes of
a vertically oriented geothermal heat exchanger would likewise be a
teaching away because it has the "problem" of "liquid refrigerant build-up."
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See Gazes, col. 2, 11. 8-11. However, Gazes is not "discouraged" from using
a vertically oriented geothermal heat exchanger, albeit modified, as vertical
ground coils 6. See id., col. 3, 11. 31-32, Fig. 1. Hence, Gazes does not
"replace a water bath with a superior technology," as Appellant asserts, but
rather, improves a vertically oriented geothermal heat exchanger to correct
the problem of refrigerant build-up by using oil traps 24. See Gazes, col. 4,
11. 15-24.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Gazes and Rawlings.
Claims 2, 3, 6, and 10-12 fall with claim 1.
Re} ections II-IV
Appellant does not present any other substantive arguments with
respect to the rejections of claims 4, 5, and 7-9, but rather relies on the
arguments discussed supra. See Appeal Br. 12-21.
Accordingly, for the same reasons discussed above, we also sustain
the rejections under 35 U.S.C. § 103(a) of claim 4 as unpatentable over
Gazes, Rawlings, and Lindberg; of claim 5 as unpatentable over Gazes,
Rawlings, Lindberg, and Wiggs; and of claims 7-9 as unpatentable over
Gazes, Rawlings, and Milder.
SUMMARY
The Examiner's decision to reject claims 1-12 under 35 U.S.C.
§ 103(a) is affirmed.
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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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