ARKEMA FRANCE

Patent Trials and Appeals Board

Aug 27, 2020

2019006238 (P.T.A.B. Aug. 27, 2020)

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.
14/372,396 07/15/2014 Wissam Rached 0078840-000122 4335
21839 7590 08/27/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
FURDGE, LARRY L
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WISSAM RACHED

Appeal 2019-006238
Application 14/372,396
Technology Center 3700
____________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 6, 8–14, 16, 17, and 19–32, the
only claims now pending in the application. We have jurisdiction under
35 U.S.C. § 6(b). A telephonic oral hearing was conducted on August 19,
2020, with Travis D. Boone, Esq., appearing on behalf of Appellant.
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ARKEMA
FRANCE. Appeal Br. 2.
Appeal 2019-006238
Application 14/372,396

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method and apparatus involving a
cascade refrigeration system designed to operate optimally. Spec. 1. Claims
1 and 14 are illustrative, and are reproduced below:
1. A process for cooling a fluid or a body within an
installation by means of at least one first vapor compression
circuit comprising a first heat-transfer fluid and of at least one
second vapor compression circuit comprising a second heat-
transfer fluid, the process comprising:
- in the first vapor compression circuit:
at least partial evaporation of the first heat-transfer fluid
by exchange of heat with said fluid or body;
compression of the first heat-transfer fluid;
at least partial condensation of the first heat-transfer fluid
by exchange of heat with the second heat-transfer fluid;
reduction in pressure of the first heat-transfer fluid;
- in the second vapor compression circuit:
at least partial evaporation of the second heat-transfer fluid
by exchange of heat with the first heat-transfer fluid;
compression of the second heat-transfer fluid;
at least partial condensation of the second heat-transfer
fluid by exchange of heat with an external medium;
reduction in pressure of the second heat-transfer fluid;
the process additionally comprising:
- measurement of the temperature of the external medium;
and
- adjustment of the temperature of the second heat-transfer
fluid at the evaporation, as a function of the temperature
of the external medium,
wherein the process comprises the calculation of an
optimum evaporation temperature as a function of the
measurement of the temperature of the external medium,
Appeal 2019-006238
Application 14/372,396

3
in which the optimum evaporation temperature is defined
by the formula Topt = A x Text + B, in which Text is the
temperature of the external medium in degrees Celsius, A
is a dimensionless constant and B is a constant in degrees
Celsius,
wherein A has a value from 0.3 to 0.6, and
wherein the external medium is external to the installation.

14. An installation for cooling a fluid or a body, comprising at
least:
- a first vapor compression circuit comprising a first heat transfer
fluid;
- a second vapor compression circuit comprising a second heat-
transfer fluid;
- a cascade heat exchanger, configured for exchanging heat
between the first heat-transfer fluid and the second heat transfer
fluid;
the first vapor compression circuit comprising:
- a first evaporator configured for exchanging heat
between the first heat-transfer fluid and said fluid or body;
- one or more first compressors;
- a first expansion device;
the second vapor compression circuit comprising:
- one or more second compressors;
- a second condenser configured for exchanging heat
between the second heat-transfer fluid and an external
medium;
- a second expansion device;
the installation also comprising:
- a device for measuring the temperature of the external
medium;
Appeal 2019-006238
Application 14/372,396

4
wherein the installation is configured to adjust the
evaporation temperature in the cascade heat exchanger, as
a function of the measurement of the temperature of the
external medium,
additionally comprising a module for calculating an
optimum evaporation temperature as a function of the
measurement of the temperature of the external medium,
in which the optimum evaporation temperature is defined
by the formula Topt = A x Text + B, in which Text is the
temperature of the external medium in degrees Celsius, A
is a dimensionless constant and B is a constant in degrees
Celsius,
wherein A has a value from 0.3 to 0.6, and
wherein the external medium is external to the installation.

THE REJECTIONS
The Examiner rejects:
(i) claims 14, 19, 20–24, and 29–32 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
(ii) claims 14, 19, 20–24, and 29–32 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(iii) claims 1–3, 5, 8, 9, 11–14, 16, 19, 20, 22–26, 29, and 30, under
35 U.S.C. § 103(a) as being unpatentable over Wang (US 2011/0072836 A1,
published Mar. 31, 2011) in view of Yamasaki (US 2004/0244407 A1,
published Dec. 9, 2004);
(iv) claims 6 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Wang in view of Yamasaki and Hara (JP 2007278666 (A), published
Oct. 25, 2007);
Appeal 2019-006238
Application 14/372,396

5
(v) claims 10 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over Wang in view of Yamasaki and Takemasa (JP 2003279181 (A),
published Oct. 2, 2003); and
(vi) claims 27, 28, 31, and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Wang in view of Yamasaki and Minor (WO 2011/056824
A2, published May 12, 2011).
Rejections of claims 16 and 17 under the first and second paragraphs
of 35 U.S.C. § 112, were withdrawn in the Answer, in that those claims
depend from independent claim 1, and not from independent claim 14,
which is subject to those rejections. Ans. 3; Appeal Br. 9.

ANALYSIS
Claims 14, 19, 20–24, and 29–32--§ 112 Written Description
The Examiner finds that the limitations, “expansion device,” “a device
for measuring the temperature of the external medium,” and “a module for
calculating an optimum evaporation temperature,” are not disclosed in
sufficient detail such that a person of ordinary skill in the art could
reasonably conclude that Appellant was in possession of an invention
including those elements at the time the original application was filed. Final
Act. 2–3. Appellant identifies portions of the Specification and drawings
evidencing that these elements were present and identified in the application
as filed. Appeal Br. 10–12. In response, the Examiner acknowledges that
the terms used in the claims appear in the application as filed, but maintains
that the Specification “do[es] not impart to one so skilled in the art exactly
what structure the Appellant is actually claiming,” and asserts that the claims
therefore do not comply with 35 U.S.C. § 112(f) or pre-AIA § 112, sixth
Appeal 2019-006238
Application 14/372,396

6
paragraph, nor the written description requirement of § 112, first paragraph.
Ans. 14–15.
The Examiner’s position conflates the written description requirement
with an indefiniteness analysis of “means-plus-function” limitations
permitted by 35 U.S.C. § 112(f)/pre-AIA § 112, sixth paragraph, which
limitations, for indefiniteness purposes, require identification of some
specific structure for performing the recited function. The same does not
necessarily apply to an analysis directed to the written description
requirement.
Here, the Examiner does not maintain that persons of ordinary skill in
the art would not understand what function an expansion device, a
temperature measuring device, or a calculation module, would perform. The
Examiner additionally does not maintain that such devices or modules were
generally not known to exist by persons skilled in the art. To the contrary,
the Examiner, in the analysis of the indefiniteness rejection directed to the
same claim elements, indicates that persons of ordinary skill in the art would
recognize, for example, that either a valve or capillary tube could be used as
an expansion device; that a temperature detector or sensor could be used as a
temperature measurement device; and that a controller or microprocessor
could be used as a calculating module. Final Act. 4–5. The Examiner does
not establish absence of possession of the objected-to claim limitations in the
context of the claimed invention.
The rejection of claims 14, 19, 20–24, and 29–32 as failing to comply
with the written description requirement of 35 U.S.C. § 112 is not sustained.

Appeal 2019-006238
Application 14/372,396

7
Claims 14, 19, 20–24, and 29–32--§ 112 Indefiniteness
The Examiner finds that the limitations, “expansion device,” “a device
for measuring the temperature of the external medium,” and “a module for
calculating an optimum evaporation temperature,” are indefinite because, the
terms “device” and “module” do not recite particular or adequate structure
for performing the attendant functions identified in the modifying language.
Final Act. 4–5. The Examiner, as discussed in the preceding section,
proffers that there are many ways of effecting the functions, as would be
recognized by persons of ordinary skill in the art, and gives examples for
each of the three limitations. Id. As also noted in the preceding section, in
the Answer, the Examiner raises the issue as to whether these claim
limitations comport with the requirement, related to indefiniteness but
discussed in the Answer in the context of written description, that a claim
term set forth in “means-plus-function” format must clearly link or associate
disclosed structure(s) with the claimed function. In re Donaldson Co.,
16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
Appellant argues only that, for the same reasons that the claim
limitations are supported by adequate written description, the limitations are
also sufficiently definite to pass muster under the second paragraph of 35
U.S.C. § 112. Appeal Br. 8–12. The Reply Brief does not respond to the
Examiner’s attempt to invoke 35 U.S.C. § 112, sixth paragraph, in the
analysis of the claim limitations at issue.
With respect to the Examiner’s position as laid out in the Final
Action, Appellant’s Appeal Brief arguments suffice in identifying Examiner
error. The arguments do not directly address the Examiner’s position that
persons skilled in the art would recognize that many devices or modules
Appeal 2019-006238
Application 14/372,396

8
could perform the recited functions, but that is not a fatal flaw, in that the
Examiner’s position is plainly directed to possible overbreadth of the claim
limitations, which is not a factor in an indefiniteness analysis. SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005)
(breadth is not indefiniteness); see also, In re Gardner, 427 F.2d 786, 788
(CCPA 1970).
As to the suggestion that the indefiniteness of the claim limitations at
issue involves their being interpreted as “means-plus-function” limitations
subject to the requirements of 35 U.S.C. § 112, sixth paragraph (now
§ 112(f)), even in the absence of particular arguments on Appellant’s part,
we are not in a position to support the Examiner, not only because the issue
was explicitly identified for the first time in the Answer on appeal, but also
because the Examiner does not fully and adequately step through the 3-
prong analysis required by MPEP § 2181(I) to establish that the terms must
be interpreted as “means-plus-function” limitations.
The rejection of claims 14, 19, 20–24, and 29–32 as being indefinite
under 35 U.S.C. § 112 is not sustained.

Claims 1–3, 5, 8, 9, 11–14, 16, 19, 20, 22–26, 29, and 30--§ 103(a)--
Wang/Yamasaki
The process of independent claim 1 requires a step of calculating an
optimum evaporation temperature, as a function of the temperature of the
medium that is external to a cooling installation, with the optimum
temperature being defined by the formula “Topt = A x Text + B”.2 Appeal Br.,

2 Claim 1 recites that a temperature of a second heat-transfer fluid at the
evaporation is adjusted as a function of the external medium, but does not
Appeal 2019-006238
Application 14/372,396

9
Claims Appendix. According to claim 1, “Text” is the temperature of the
external medium, in degrees Celsius, “A” is a dimensionless constant, and
“B” is a constant with degrees Celsius as its unit.
The Examiner relies on Wang as disclosing most of the limitations in
claim 1, including that Wang measures the temperature of the medium
external to the cooling installation and employs that measurement in the
control of components in the installation, but acknowledges that Wang does
not disclose calculating an optimum evaporation temperature as a function
of the temperature of the external medium by way of the equation recited in
claim 1. Final Act. 6–7. The Examiner turns to Yamasaki as disclosing
“calculating an target evaporation temperature as a function of the
measurement of an internal medium, i.e., the temperature of a chamber that
is cooled by the installation, with the target temperature being one that
achieves improved efficiency.” Id. at 7.
The Examiner additionally takes the position that, in Yamasaki, the
target evaporation temperature is defined by the formula Tyc = Tx * 0.2 – 6 +
z. Id., citing Yamasaki, ¶ 87.3 Having in mind that the variable in the
claimed equation, Text, is a temperature external to the installation, the
Examiner acknowledges that Tx in the Yamasaki equation is a temperature
internal to the installation, but takes the position that Tx “can correspond to
the external temperature where one skilled in the art could substitute an

explicitly state that that temperature must be adjusted to the optimum
temperature determined by the recited equation.
3 We understand paragraph 87 of Yamasaki to disclose that the target
evaporation temperature is selected as the lower (in numerical value) of
variables Tya and Tyc, resulting from calculation by two different equations,
however, Appellant does not appear to contest the Examiner’s finding that
Yamasaki determines the target evaporation temperature by Tyc alone.
Appeal 2019-006238
Application 14/372,396

10
external temperature value.” Id. The Examiner then reduces the Yamasaki
equation to eliminate the variable “z” in an effort to obtain an equation in
similar form to that in claim 1, again noting that Tx in Yamasaki is an
internal temperature, but “one skilled in the art could substitute an external
temperature value as measured by the sensor of Wang into the formula of
Yamasaki.” Id. at 15. The Examiner selects, for the variable “z,” which, by
Yamasaki’s teaching represents the temperature external to the installation,
the example of 41º C, and ends up with the equation Tyc = 0.2 * Tx + 3. Id.
The Examiner maintains that the dimensionless constant, 0.2, in this form of
the Yamazaki equation, corresponds to “A” in the claim 1 equation (which is
recited as having a value between 0.3 and 0.6), is a known result effective
variable, and concludes that it would have been obvious to use a
dimensionless constant within the claimed range as a matter of routine skill
in the art. Id. at 8.
What the Examiner fails to recognize, and which Appellant points out,
is that the variable “z” in the Yamazaki equation, per paragraph 87 thereof,
already represents the external temperature (“z denotes a value (z = Tr
(outside air temperature) – 32)”). Appeal Br. 16. As such, Appellant
maintains, and we agree, that the Examiner presents no basis for alleging
that it would have been obvious, in the Yamasaki equation, to further
substitute an external temperature for the internal temperature Tx, which is
the temperature measured at the chamber being cooled in the Yamasaki
structure. Reply Br. 5. Tellingly, the Examiner does not address, in the
Answer, why it would have been obvious to substitute an external
temperature for an internal one as the variable Tx, in view of Appellant’s
Appeal 2019-006238
Application 14/372,396

11
highlighting that the Yamasaki equation already, in a different part of its
equation, factors in the external temperature in the variable “z”.
The rejection of claim 1 as being unpatentable over Wang and
Yamasaki is therefore not sustained.
We note that independent claim 14 recites an installation, or system,
and not a process. In terms of the limitation at issue involving an optimum
temperature being defined by, and calculated in accordance with, the same
equation as is present in claim 1, claim 14 recites “a module for calculating
an optimum evaporation temperature,” without actually requiring that the
calculation be performed. Also in this regard, claim 14 recites that the
installation is configured to adjust the evaporation temperature as a function
of the measurement of the external medium temperature, but does not
require that the functional relationship be that of the optimum evaporation
temperature equation. Because neither the Examiner nor Appellant draws
any distinction between claims 1 and 14, we construe claim 14 as requiring a
module particularly configured to be able to perform the calculation of
optimum evaporation temperature in accordance with the recited equation.
On that basis, we also do not sustain the rejection of claim 14 as being
unpatentable over Wang and Yamasaki.
Claims 2, 3, 5, 8, 9, 11–13, 16, 19, 20, 22–26, 29, and 30, each depend
from one of claims 1 and 14, and the rejection of those claims as being
unpatentable over Wang and Yamasaki is not sustained for the same reasons
discussed above.

Appeal 2019-006238
Application 14/372,396

12
Claims 6 and 17--§ 103(a)--Wang/Yamasaki/Hara
The Examiner does not rely on Hara in any manner that cures the
deficiencies in the combination of Wang and Yamasaki. The rejection of
claims 6 and 17 is therefore not sustained.

Claims 10 and 21--§ 103(a)--Wang/Yamasaki/Takemasa
The Examiner does not rely on Takemasa in any manner that cures the
deficiencies in the combination of Wang and Yamasaki. The rejection of
claims 10 and 21 is therefore not sustained.

Claims 27, 28, 31, and 32--§ 103(a)--Wang/Yamasaki/Minor
The Examiner does not rely on Minor in any manner that cures the
deficiencies in the combination of Wang and Yamasaki. The rejection of
claims 27, 28, 31, and 32 is therefore not sustained.

DECISION
The rejection of claims 14, 19, 20–24, and 29–32 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement, is reversed.
The rejection of claims 14, 19, 20–24, and 29–32 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, is reversed.
The rejections of claims 1–3, 5, 6, 8–16, 16, 17, and 19–32 under 35
U.S.C. § 103(a) are reversed.

Appeal 2019-006238
Application 14/372,396

13
CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 19,
20–24,
29–32
112, first
paragraph
Written Description 14, 19, 20–
24, 29–32
14, 19,
20–24,
and 29–32
112, second
paragraph
Indefiniteness 14, 19, 20–
24, and 29–
32
1–3, 5, 8,
9, 11–14,
16, 19, 20,
22–26, 29,
30
103(a) Wang, Yamasaki 1–3, 5, 8, 9,
11–14, 16,
19, 20, 22–
26, 29, 30
6, 17 103(a) Wang, Yamasaki, Hara 6, 17
10, 21 103(a) Wang, Yamasaki,
Takemasa
10, 21
27, 28, 31,
32
103(a) Wang, Yamasaki,
Minor
27, 28, 31,
32
Overall
Outcome

1–3, 5, 6, 8–
14, 16, 17,
19–32

REVERSED