General Electric Company

Patent Trials and Appeals Board

Aug 31, 2021

2020003785 (P.T.A.B. Aug. 31, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/401,886 01/09/2017 Guanghua Wang 21339-151667-US 1460
75248 7590 08/31/2021
FITCH, EVEN, TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
EXAMINER
HUANG, FRANK F
ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
08/31/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GUANGHUA WANG, JASON EDWARD DEES,
SCOTT MICHAEL OPPENHEIMER, and NAVEENAN THIAGARAJAN
________________

Appeal 2020-003785
Application 15/401,886
Technology Center 2400
________________

Before JOSEPH L. DIXON, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 3–8, and 11–22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to systems for imaging turbomachinery. Spec.
¶ 1. Claim 1 is illustrative of the invention and is reproduced below:
1. An infrared imaging device comprising:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, General Electric Company is the
real party in interest. Appeal Br. 1.
2 According to the claims filed on January 23, 2019, claim 2 was cancelled
and claims 9 and 10 were withdrawn.
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a case;
a plurality of electronic components configured to collect
data, said plurality of electronic components having a
predetermined temperature parameter, said plurality of electronic
components disposed within said case;
a heat transfer structure disposed within said case, said
heat transfer structure configured to conduct heat away from said
plurality of electronic components, wherein said heat transfer
structure is further configured to regulate a temperature of said
electronic components below the predetermined temperature
parameter; and
an insulation material positioned within [said] casing,
said plurality of electronic components disposed within said
insulation material.
Appeal Br. 13 (Claims Appendix) (emphases added to denote disputed
limitations).

REJECTION
The Examiner rejects claims 1, 3–8, and 11–223 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Hatcher (US 9,255,526
B2, issued February 9, 2016) and Chamberlain (US 7,422,365 B2, issued
September 9, 2008). Ans. 3–9; Final Act. 2–9.
ANALYSIS
The Examiner finds that Hatcher teaches a cooling system 34 disposed
within casing 20, which the Examiner maps to the limitation “a heat transfer
structure disposed within said case” recited in claim 1. Ans. 3–4 (citing
Hatcher, 5:25–38, Figs. 1–3); Final Act. 3–4 (citing Hatcher, 5:25–38, Figs.

3 The Examiner lists 1–8 and 11–22 as being rejected under 35 U.S.C. § 103.
Ans. 3; Final Act. 3. However, we interpret the inclusion of claim 2 as a
typographical error pursuant to footnote 2 above. See n.2. We, therefore,
refer to the rejected claims as claims 1, 3–8, and 11–22.
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1–3). Moreover, the Examiner finds Hatcher teaches casing 20 includes
optical window 26, man way 22, and monitoring system 32 surrounding
optical camera 40, which the Examiner maps to the limitation “an insulation
material positioned within casing, said plurality of electronic components
disposed within said insulation material” recited in claim 1. Ans. 3–4 (citing
Hatcher, 5:25–38, Figs. 1–3); Final Act. 3–4 (citing Hatcher, 5:25–38, Figs.
1–3). The Examiner determines that a person having ordinary skill in the art
at the time of the invention (hereinafter “PHOSITA”) would combine
Hatcher’s AC unit and camera system and Chamberlain’s preset operating
temperature in order to cool within working temperatures of the camera to
have a benefit of a working camera with a correct long wavelength
sensitivity cut-off. Ans. 5 (citing Chamberlain, 1:62–2:4); Final Act. 5
(citing Chamberlain, 1:62–2:4).
Appellant argues if Hatcher’s optical window 26, man way 22, and
monitoring system cover 32 of Hatcher surrounding optical camera system
40 correspond to the claimed “case,” then portable air conditioning system
34 is positioned outside of the case (optical window 26, man way 22, and
monitoring system cover 32), not within the case as recited in claim 1.
Appeal Br. 8; Reply Br. 1–3. In addition, Appellant argues Hatcher’s optical
window 26, man way 22, and monitoring system cover 32 cannot
simultaneously correspond to the claimed “case” and the claimed “insulation
material positioned within casing.” Appeal Br. 8; Reply Br. 1–3. Appellant
argues there is no suggestion in the cited references of miniaturizing
Hatcher’s portable AC unit, positioning Hatcher’s miniaturized AC unit
within a casing, adding insulation to Hatcher’s on-line monitoring system
30, and positioning electronic components within Hatcher’s miniaturized AC
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unit and/or adding insulation to Hatcher’s on-line optical monitoring system
30. Appeal Br. 9; Reply Br. 1–3. Appellant argues the Examiner relies on
impermissible hindsight in combining Hatcher and Chamberlain because the
rejection lacks articulated reasoning for combining the two references.
Appeal Br. 9–11; Reply Br. 4–5. We disagree with Appellant.
The Examiner finds Hatcher teaches a cooling system 34 (i.e., heat
transfer structure) disposed within casing 20 (i.e., said case), which teaches
the limitation “a heat transfer structure disposed within said case” recited in
claim 1. Ans. 3–4 (citing Hatcher, 5:25–38, Figs. 1–3); Final Act. 3–4
(citing Hatcher, 5:25–38, Figs. 1–3). The Examiner also finds Hatcher
teaches casing 20 includes (i.e., positioned within casing) optical window
26, man way 22, and monitoring system 32 (i.e., the combination of
elements 26, 22, and 32 teach the claimed “insulation material”) surrounding
optical camera 40 (i.e., plurality of electronic components), which teaches
the limitation “an insulation material positioned within casing, said plurality
of electronic components disposed within said insulation material” recited in
claim 1. Ans. 3–4 (citing Hatcher, 5:25–38, Figs. 1–3); Final Act. 3–4
(citing Hatcher, 5:25–38, Figs. 1–3).
Appellant’s improper hindsight argument is unavailing. Appeal Br.
9–11. Appellant has not provided persuasive evidence that combining the
respective teachings of the references (as concluded by the Examiner —
Ans. 5 (citing Chamberlain, 1:62–2:4); Final Act. 5 (citing Chamberlain,
1:62–2:4)) would have been “uniquely challenging or difficult for one of
ordinary skill in the art,” or that such a combination would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant
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provided any objective indicia of non-obviousness, which, as our reviewing
court explains, “operate[] as a beneficial check on hindsight.” Cheese Sys.,
Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013).
In this case, the Examiner determines that a PHOSITA would
combine Hatcher’s AC unit and camera system and Chamberlain’s preset
operating temperature in order to cool within working temperatures of the
camera to have a benefit of a working camera with a correct long
wavelength sensitivity cut-off. Ans. 5 (citing Chamberlain, 1:62–2:4); Final
Act. 5 (citing Chamberlain, 1:62–2:4). We, therefore, determine the
Examiner has set forth sufficient “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988).
Appellant does not argue claims 3–8 and 11–22 separately with
particularity. Appeal Br. 4–11. Accordingly, we sustain the Examiner’s
rejection of: (1) independent claims 1, 12, and 19; and (2) dependent claims
3–8, 11, 13–18, and 20–22 under 35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8, 11–
22
103 Hatcher,
Chamberlain
1, 3–8, 11–
22

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Application 15/401,886

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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)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED