Ex parte TAYLOR

Board of Patent Appeals and Interferences

Apr 30, 1998

08030734 (B.P.A.I. Apr. 30, 1998)

Application for patent filed March 12, 1993.1
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(2) is not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHRISTOPHER TAYLOR
__________
Appeal No. 98-0102
Application 08/030,7341
__________
HEARD: Jan. 13, 1998
__________
Before CALVERT, FRANKFORT and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
7, 10, 12, 15 and 24 to 33, all of the claims remaining in the
Appeal No. 98-0102
Application 08/030,734
An amendment after final rejection, seeking to add claim 34 (Paper No.2
14, filed October 13, 1994) was denied entry by the examiner.
2
application.2
The claims on appeal are drawn to methods for increasing
the energy efficiency of a refrigeration system, of a heat
pumping system, or of a combination thereof. Claim 1 is
representative and reads:
1. A method for increasing the energy efficiency of
a refrigeration system of the type comprising
insulated enclosing means; a space, to be maintained
at depressed temperatures, and separated from its
surroundings by said enclosing means; heat absorber
means, on the inside of said enclosing means; heat
supplier means, outside of said enclosing means and
to be maintained at a temperature which is greater
than that of said surroundings; and refrigerating
means to depress the temperature of said heat
absorber means; energy being supplied to said
refrigerating means in order to maintain the
temperature difference between said heat supplier
means and said heat absorber means
wherein the method comprises
constructing said heat absorber means to largely
envelop said enclosed space and effecting the
reduced difference between the operating
temperatures of said heat supplier means and said
heat absorber means, substantially as permitted by
said largely enveloping construction.
Appeal No. 98-0102
Application 08/030,734
3
The references applied by the examiner in the final
rejection are:
Gould 2,191,198 Feb. 20, 1940
Morrison 2,356,778 Aug. 29, 1944
Derosier 4,399,664 Aug. 23, 1983
O’Reilly 4,407,142 Oct. 04, 1983
The claims on appeal stand finally rejected as follows:
1. Claims 1 to 3, 5 to 7, 10, 24 to 29, 32 and 33, as
being unpatentable over Morrison, under 35 USC § 103;
2. Claims 4, 12 and 15 as being unpatentable over
Morrison in view of Derosier or O’Reilly, under 35 USC § 103;
3. Claims 30 and 31, as being unpatentable over
Morrison in view of Gould, under 35 USC § 103.
We note initially that appellant asserts on page 49 of
his brief that the final rejection was premature, and on page
52, that the amendment after final rejection (footnote 2,
supra) should not have been denied entry. However, these are
matters which are not within our jurisdiction to consider, and
should have been raised by petition to the Commissioner under
37 CFR 1.181, rather than on appeal to this Board. See Ex
Appeal No. 98-0102
Application 08/030,734
In reviewing the claims, we note that claims 26 and 29 recite a3
“thermoelectric” system having “hot junction means” and “cold junction means”.
This is evidently intended to refer to the solid state system disclosed on
page 18 of the specification, but the quoted terms do not have clear
antecedent basis in the specification, as required by 37 CFR 1.75(d)(1). Such
antecedent basis should be provided in any subsequent prosecution.
4
parte Jackson, 1926 Comr. Dec. 102, 104 (Comr. 1924)
(premature final rejection) and In re Mindick, 371 F.2d 892,
894, 152 USPQ 566, 568 (CCPA 1976) (refusal to enter
amendment).
Before comparing the prior art applied by the examiner
with the claims on appeal, we must first determine whether the
language of the claims is sufficiently precise that their
scope can be determined; in other words, whether they comply
with the requirements of 35 USC § 112, second paragraph.3
Each of the independent claims on appeal (1 to 3, 5 to 7
and 24 to 33) recites the step of, inter alia, “effecting the
reduced difference between the operating temperatures of said
heat supplier means and said heat absorber means,
substantially as permitted by said largely enveloping
construction” (instead of “heat supplier means” and “heat
absorber means,” claims 24, 25 and 27 to 29 recite “condenser
Appeal No. 98-0102
Application 08/030,734
5
means” and “evaporator means”, and claim 26 recites “hot
junction means” and “cold junction means”, respectively). In
construing this recitation, we must determine the meaning of
“the reduced difference”, which incidentally, has no
antecedent basis in the claims. The word “reduced” is a word
of relationship or degree, since the difference can only be
“reduced” relative to some other difference. The claims do
not
specify what the temperature difference is reduced in relation
to, and in such a circumstance, we must determine whether
appellant’s specification provides some standard for measuring
the degree or relationship recited, so that one of ordinary
skill would understand what is claimed when the claim is read
in light of the specification. Seattle Box Co., Inc. v.
Industrial Crating and Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984).
From appellant’s specification, it appears that the
claimed operating temperature difference is “reduced” relative
to the operating temperature difference in a system using an
“immersed type” heat absorber. For example, as stated in the
last paragraph on page 11 of the specification (emphasis
Appeal No. 98-0102
Application 08/030,734
6
added):
Since the amount of heat 13, is less than it would
be if the Heat Absorber 1 was replaced by a Heat
Absorber of the type which is immersed in the
contents of the enclosed space, and since the heat
transfer area in contact with the contents of the
enclosed space, is almost equal to the entire inside
area of the lining of the enveloped part of the
enclosure, and therefore usually greater than that
of a Heat Absorber of said "immersed" type, the
temperature differential (T -T ) is much less thanc aO O
it would be if a Heat Absorber of said "immersed"
type was used. Consequently the temperature
difference (T -T ) is less than it would be if as aO 0
Heat Absorber of said "immersed" type was used.
Consequently the energy input required at 9 to
maintain said temperature difference (T -T ) is lesss aO 0
than it would be if a Heat Absorber of said
"immersed" type was used.
Similar statements are found on pages 14 and 17.
We do not consider that, reading the claimed step of
“effecting the reduced difference” in light of the disclosure,
one of ordinary skill in the art would be able to determine,
with sufficient precision, what the bounds of the claimed
subject matter are. See In re Merat, 519 F.2d 1390, 1396, 186
USPQ 471, 476 (CCPA 1975). From the specification, it appears
that the temperature difference is “reduced” relative to a
system using an “immersed” heat absorber. But against what
such system is the reduction to be compared? Is it a system
Appeal No. 98-0102
Application 08/030,734
7
where the identical
apparatus is used, except that a “largely enveloping” heat
absorber is substituted for an “immersed” type heat absorber?
Apparently not, since appellant states on page 25, lines 3 to
6 of his brief, that “the enveloping construction alone,
i.e.[,] when not accompanied by compressor size reduction,
effects substantially no reduction in work consumed, or
reduced temperature difference, relative to Sketch No. 1 [the
“immersed” heat absorber system]”. Thus, one of ordinary
skill would not be able to determine whether or not the method
claimed by the appellant would cover the operation of a
particular system having a “largely enveloping” heat absorber
or heat supplier, because no definite standard is provided for
determining whether the temperature difference is “reduced”,
as claimed.
The problem is illustrated in comparing claim 1 with the
Morrison patent. Morrison discloses a refrigeration system
with a heat absorber (evaporator 1, 2) which “largely
envelops” space 11, and it is evident that there will be an
operating temperature difference between the heat supplier
Appeal No. 98-0102
Application 08/030,734
8
means (condenser 19) and the heat absorber means (evaporator).
Does this difference constitute a “reduced difference” which
is effected “substantially as permitted by said largely
enveloping construction”, as claimed? We do not consider that
one of ordinary skill, reading claim 1 in light of the
disclosure, would be able to answer this
question. As stated in In re Hammack, 427 F.2d 1378, 1382,
166 USPQ 204, 208 (CCPA 1970):
All provisions of the statute must be complied with
in order to obtain a patent. The requirement stated
in the second paragraph of section 112 existed long
before the present statute came into force. Its
purpose is to provide those who would endeavor, in
future enterprise, to approach the area
circumscribed by the claims of a patent, with the
adequate notice demanded by due process of law, so
that they may more readily and accurately determine
the boundaries of protection involved and evaluate
the possibility of infringement and dominance.
Appellant’s claims do not comply with this requirement.
Accordingly, pursuant to our authority under 37 CFR
1.196(b), claims 1 to 7, 10, 12, 15 and 24 to 33 are rejected
for failure to comply with 35 USC § 112, second paragraph.
Claims 3, 4, 7, 10, 12 and 15 are also rejected under the
second paragraph of 35 USC § 112 on the following additional
Appeal No. 98-0102
Application 08/030,734
9
grounds:
(i) In claim 3, appellant recites “a space” (line 3),
“another space” (line 6), and “said space” (lines 13 and 14),
but it is not clear which of the previously-recited spaces
“said space” refers to. Evidently, it should be -- said
another space --. Likewise, in claim 7 (lines 11 and 12) and
claim 10 (line 3), “said space” is indefinite and should
apparently be -- said first-mentioned-space --.
(ii) Dependent claims 4, 12 and 15 are indefinite in that they
are not clearly related to their respective parent claims.
Claim 4, for example, reads:
4. The improvement of claim 3, specifically in
regard to refrigerators, and recovery of reject heat
for use in heating, and maintaining the temperature
of water to meet associated requirements for hot
water.
The limitations recited in this claim are not recited as being
related to the elements and steps recited in parent claim 3;
for example, how do the refrigerators recited in claim 4
relate to claim 3? If it is intended that the enclosing
means, first-mentioned space, and heat absorber means of claim
Appeal No. 98-0102
Application 08/030,734
10
3, constitute a refrigerator, then claim 4 should so state.
Where, as here, speculative assumptions must be made as
to the meaning of terms employed in the claims and as to the
scope of the claims, in order to make a rejection under 35 USC
§ 103,
such a rejection should not be made. In re Steele, 305 F.2d
859, 863, 134 USPQ 292, 295 (CCPA 1962). We will therefore
reverse, pro forma, the rejections under 35 USC § 103 in this
case. However, this is not to say that if the rejections
under 35 USC
§ 112 made in this decision should be overcome, the claims
would necessarily be patentable over the references on which
the 35 USC § 103 rejections were based.
Conclusion
The examiner’s decision to reject claims 1 to 7, 10, 12,
15 and 24 to 33 under 35 USC § 103 is reversed, pro forma.
Claims 1 to 7, 10, 12, 15 and 24 to 33 are newly rejected
under 35 USC § 112, second paragraph, pursuant to 37 CFR
Appeal No. 98-0102
Application 08/030,734
11
§ 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 98-0102
Application 08/030,734
-12-
§ 1.136(a).
REVERSED
37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-0102
Application 08/030,734
-13-
Christopher Taylor
4207 Province Drive
Wilmington, NC 28405