Bruce Mccormick

Patent Trials and Appeals Board

Oct 7, 2019

13333457 - (D) (P.T.A.B. Oct. 7, 2019)

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.
13/333,457 12/21/2011 Bruce McCormick 8076-3002-2 7100
29318 7590 10/07/2019
JAMES D. STEVENS
REISING ETHINGTON P.C.
755 W. BIG BEAVER RD.
SUITE 1850
TROY, MI 48084
EXAMINER
FEBLES, ANTONIO R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
10/07/2019 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):
USPTOmail@gmx.com
USPTOmail@reising.com
stevens@reising.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRUCE MCCORMICK
____________________

Appeal 2019-000390
Application 13/333,457
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3–29.2 Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Savsu
Technologies LLC. Appeal Br. 3.
2 Claim 2 is cancelled.
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Application 13/333,457

2
THE CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent. Claims 3–18 and 26–29 depend
from claim 1. Claims 20–25 depend from claim 19. Claim 1 is reproduced
below.
1. A storage system, comprising:
a thermally insulated storage container having a storage
area and comprising one or more side walls that partly define
the storage area, each of the side walls including a layer of
insulating material;
a contents container having a contents container storage
area for temperature-sensitive items and sized to fit in the
storage area of the thermally insulated storage container;
one or more thermal batteries, each thermal battery
including thermal mass for increasing the total heat capacity of
the storage system and each thermal battery being sized to fit in
the storage area of the thermally insulated storage container
such that the contents container and the one or more thermal
batteries are stacked together in the storage area of the
thermally insulated container, wherein the thermal mass
comprises a phase change material; and
a plurality of passive thermal moderators having a
plurality of different R-values and configured to be
interchangeable and modular components of the storage system,
each passive thermal moderator shaped to be in thermal
communication with the storage area of the contents container
via a first thermal communication area having a first known
surface area and with one of the one or more thermal batteries
via a second thermal communication area having a second
known surface area,
wherein a first one of the thermal moderators of the
plurality of thermal moderators is configured for placement
between the contents container storage area and each thermal
battery when the storage system is used in a first environment
having a first expected temperature, the first thermal moderator
having a first R-value calculated and provided to balance a
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Application 13/333,457

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thermal energy flow rate between the storage area of the
contents container and the one or more thermal batteries with a
thermal energy flow rate between the storage area of the
contents container and the first environment during a phase
change of the phase change material, and
wherein a different second one of the thermal moderators
of the plurality of thermal moderators is configured for
placement between the contents container storage area and each
thermal battery when the storage system is used in a second
environment having a second and different expected
temperature, the second thermal moderator having a different
second R-value calculated and provided to balance the thermal
energy flow rate between the storage area of the contents
container and the one or more thermal batteries with a thermal
energy flow rate between the storage area of the contents
container and the second environment during the phase change
of the phase change material, thereby maintaining a desired
temperature in the storage area of the contents container via use
of the first thermal moderator in the first environment and the
second thermal moderator in the second environment and the
respective balanced thermal energy flow rates in each of the
different environments,
wherein the thermal energy flow rate between the storage
area of the contents container and the one or more thermal
batteries is determined at the thermal communication areas and
the thermal energy flow rate between the storage area of the
contents container and each of the first and second
environments is determined in part by the difference between
the respective first and second expected temperatures outside of
the storage system and the desired temperature in the storage
area of the contents container.

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Application 13/333,457

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REJECTIONS
References Basis Claims
Williams3 § 103(a) 1, 3–9, and 11–16
Williams and Fine4 § 103(a) 10
Williams and Mayer5 § 103(a) 17
Williams and Schryver6 § 103(a) 18
Sekiya7, Rickson8, and
Romero9
§ 103(a) 19–25
Williams and Schumacher10 § 103(a) 14 and 26–29

OPINION
Independent claims 1 and 19 are each directed to a “storage system”
including a “thermal moderator.” The claims recite properties of the
“thermal moderator” in terms of a “thermal energy flow rate” provided by
the “thermal moderator.” Claim 1, for example, recites that
the thermal energy flow rate between the storage area of the
contents container and the one or more thermal batteries is
determined at the thermal communication areas and the thermal
energy flow rate between the storage area of the contents
container and each of the first and second environments is
determined in part by the difference between the respective first

3 US 7,908,870 B2, issued Mar. 22, 2011.
4 US 6,070,427, issued June 6, 2000.
5 US 2004/0079794 A1, published Apr. 29, 2004.
6 US 2011/0308271 A1, published Dec. 22, 2011.
7 US 2006/0191282 A1, published Aug. 31, 2006.
8 US 6,666,032 B1, issued Dec. 23, 2003.
9 US 2008/0135564 A1, published June 12, 2008.
10 US 4,003,214, issued Jan. 18, 1977.
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and second expected temperatures outside of the storage system
and the desired temperature in the storage area of the contents
container.
Claim 19 recites that “the pre-determined thermal energy flow rate is defined
as: Q = (ΔT)(A)/R, wherein ΔT is the difference between the phase change
temperature of the thermal mass and the expected temperature of said
environment, A is said thermal communication area, and R is the R-value of
the super-insulating material.” Each claim defines the structure of the
“storage system,” at least in part, based on the “expected temperature” of the
outside environment in which the “storage system” is used.
We reject claims 1 and 19, as well as claims 3–18 and 20–29
depending therefrom, under 35 U.S.C. § 112, ¶ 2 as indefinite. A claim is
properly rejected as indefinite if, after applying the broadest reasonable
interpretation in light of the specification, the metes and bounds of a claim
are not clear because the claim contains words or phrases whose meaning is
unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per
curiam); see also Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard). Based on the language in claims 1 and 19, we do not
know the structure specified by the recited “thermal energy flow rate”
requirements because it is based on the environment in which the “storage
system” is used (i.e., the temperature of the environment).11 That

11 Claim 1 additionally recites that the “thermal energy flow rate” is based,
in part, on “the desired temperature in the storage area of the contents
container,” as “the difference between the respective first and second
expected temperatures outside of the storage system and the desired
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temperature is unknown, and is not defined in the claim or Specification in a
manner that imparts sufficient specificity into the claims.
The claims say nothing about any particular temperature of the
environment, only that it is an “expected temperature.” The Specification
provides an example use for the storage system, but that, too, only indicates
that “the exterior environment is at a temperature higher than 8°C.” Spec.
¶ 30. Indeed, the Specification acknowledges that “the temperature of the
environment outside of the storage system may certainly vary, and
calculations used to determine appropriate material properties for their
thermal moderators may use average values in many cases.” Id. ¶ 47.
Because we have no guidance as to what the “expected temperature” of the
environment might be, and the claims are each defined, at least in part, based
on that “expected temperature,” we reject the claims as indefinite under 35
U.S.C. § 112, ¶ 2.
The main dispute between Appellant and the Examiner with respect to
the obviousness rejections concerns whether the asserted references teach
the “thermal energy flow rate” recited in the claims, which is dependent on
the recited “expected temperature” of the environment. See Appeal Br.,
generally. Because we determine the claims to be indefinite, and addressing
the “thermal energy flow rate” limitations in dispute would require
speculation on our part, we do not reach the merits of the obviousness
rejections. Instead, we reverse those rejections pro forma. See In re Steele,
305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a

temperature in the storage area of the contents container.” That desired
temperature, too, fails to provide any guidance as to a particular temperature.
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rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims).

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed New Ground
1, 3–9, 11–16 § 103(a)
Williams
1, 3–9, 11–
16

10 § 103(a)
Williams and
Fine
10
17 § 103(a)
Williams and
Mayer
17
18 § 103(a)
Williams and
Schryver
18
19–25 § 103(a)
Sekiya,
Rickson, and
Romero
19–25
14 and 26–29 § 103(a)
Williams and
Schumacher
14 and 26–
29

1 and 3–29 § 112, ¶ 2 1 and 3–29
Overall
Outcome
1 and 3–29 1 and 3–29

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Application 13/333,457

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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1 and 3–29 under 35 U.S.C. § 112, ¶ 2.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)