Ex Parte Ast et al

Patent Trial and Appeal Board

Sep 14, 2017

12827510 (P.T.A.B. Sep. 14, 2017)

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.
12/827,510 06/30/2010 Gabor Ast 237721-1 5204
6147 7590 09/18/2017
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
STANEK, KELSEY L
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABOR AST, HERBERT KOPECECK,
THOMAS JOHANNES FREY, and PIERRE SEBASTIEN HUCK1
Appeal 2016-007103
Application 12/827,510
Technology Center 3700
Before DANIEL S. SONG, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—10, 21—25, and 27 in the present application. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as “Appellant” herein. The real party in interest is
General Electric Company (Appeal Brief (hereinafter “App. Br.”) 3).
Appeal 2016-007103
Application 12/827,510
The claimed invention is directed to a system and method for
providing electrical power to an electrical grid (Spec., Background and
Abstract). Representative independent claim 1 reads as follows (App. Br.
13, Claims App’x, emphasis added):
1. A system comprising:
a power grid; and
an organic Ranking [sic, Rankine] cycle (ORC) plant
coupled to the power grid and comprising:
an internal combustion engine or gas turbine
(engine/turbine) cooling fluid loop configured to transfer
engine/turbine cooling fluid heat to a low temperature (LT) ORC
loop working fluid, the engine/turbine cooling loop and the LT
ORC loop together configured to generate transient power via at
least one LT expander;
a thermal oil loop configured to transfer heat generated via
the engine/turbine to a high temperature (HT) ORC loop working
fluid, the thermal oil loop and the HT ORC loop together
configured to generate transient power via at least one HT
expander; and
one or more storage facilities selected from one or more
thermal oil storage tanks configured to receive and store heated
thermal oil, one or more cooling fluid storage tanks configured
to receive and store heated cooling fluid, and combinations
thereof, such that sufficient thermal energy is stored to provide
for corresponding ORC loop extended transient operation to
follow power demands and immediately adjust the transient
power during a time range of up to ten minutes to the power grid
and thereby stabilize the power grid during periods of increased
or decreased power grid loading.
Independent claim 21 is broader than independent claim 1, but
includes the same limitations that are of issue in the present appeal.
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Application 12/827,510
The Examiner rejects claims 1—10, 21—25, and 27 under 35 U.S.C.
103(a) as follows:2
1. Claims 1—9 and 21—25 as obvious over Ast et al. (US
2009/0000299 Al; published: Jan. 1, 2009), in view of Juchymenko
(US 2010/0018207 Al; published: Jan. 28, 2010), and Ellis et al. (US
2009/0179429 Al; published: July 16, 2009) (Final Office Action
(hereinafter “Final Act.”) 4).
2. Claim 10 as obvious over Ast in view of Juchymenko, Ellis,
and Roberts (US 7,260,934 Bl; issued: Aug. 28, 2007) (Final Act. 9).
3. Claim 27 as obvious over Ast in view of Juchymenko, Ellis,
and Klochko et al. (US. 7,493,763 Bl; issued: Feb 24, 2009) (Final
Act. 9).
ANAFYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1: Claims 1—9 and 21—25
The Examiner rejects independent claim 1 finding that Ast discloses
most limitations of the claim except for the recited thermal oil storage tank
2 The Examiner’s rejection of the claims under 35 U.S.C. § 112, first
paragraph, in the Final Action has been withdrawn in the subsequent Answer
(Answer “hereinafter “Ans.”) 2).
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Application 12/827,510
or a cooling fluid storage tank; a system including a power grid so that the
additional power is provided to “stabilize the power grid during periods of
increased or decreased power grid loading”; and the specified ten minute
time range during which transient power to the power grid is adjusted (Final
Act. 4—5).
The Examiner finds that Juchymenko teaches an organic Rankine
cycle system for recovery and conversion of thermal energy, the system
including an internal combustion engine, a thermal oil loop, and a thermal
oil storage tank (46) to which thermal oil is diverted (Final Act. 4, citing
Juchymenko 163, Fig. 3). The Examiner concludes that:
It would have been obvious to a person with ordinary skill in the
art at the time of the invention to modify the system of Ast to
include the thermal oil storage tank of Juchymenko to store
thermal energy during periods when the Rankine cycle is
inoperative (Juchymenko, Page 5, [0063]).
(Final Act. 4).
The Examiner further finds that Ellis teaches a system in which
additional power from the Rankine cycle plant is supplied to the power grid
to balance the power grid during intentional or unintentional power losses
(Final Act. 5, citing Ellis ^fl[ 10, 15, 53). Based thereon, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to combine Ast with the teachings of Juchymenko and Ellis “in order to
provide balance to the power grid.” (Final Act. 5).
As to the specifically recited “adjusting] the transient power during a
time range of ten minutes,” the Examiner observes that Ellis describes non­
limiting examples of “how the system can be implemented in deciding when
and for how long energy should be stored,” and concludes that:
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Application 12/827,510
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to adjust the transient power
during a time range of up to ten minutes to the power grid, since
it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable
ranges involves only routine skill in the art. In re Aller, 105
USPQ 233.
(Final Act. 5).
The Examiner’s rejection of independent claim 21 is substantially the
same as that of independent claim 1 (Final Act. 7—8).
The salient portions of Ellis read as follows:
A system as described herein may be retrofitted to an existing
power plant to enable the power plant to provide additional
power during peak periods, for instance.
(Ellis 115, emphasis added).
There are numerous strategies that can be implemented in
deciding when and for how long energy should be stored. In one
variation, a price arbitrage strategy could be adopted in which
energy is stored during times of relatively low electricity prices
and converted into electricity during times of relatively high
electricity prices, such as during business hours. In one variation
of such a strategy, the relative price of electricity over time would
act, at least in part, as a driver in the optimization of profit. In
some variations, a seasonal storage strategy could be adopted.
Another non-limiting example would be to store a portion of the
energy harvested in the spring to later convert in the summer.
Overall plant economics can improve with addition of thermal
storage capacity in the hot reservoir and the cold reservoir.
Further, thermal energy may be stored in order to help balance
the power grid and to supply additional electrical power to
supplement capacity or intentional or unintentional reductions
in output from a power generating plant.
(Ellis 153, emphasis added).
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Application 12/827,510
The Appellant argues independent claims 1 and 21 together, and does
not generally dispute the findings of the Examiner relative to Ast and
Juchymenko (App. Br. 8). However, as to Ellis, the Appellant argues that:
Ellis appears to merely describe seasonal and long term type
power storage strategies. In contrast, Ellis does not appear to be
directed to storage of thermal energy in order to provide for
immediate or short term or very short term transient operation to
follow power demands and immediately adjust the transient
power during a time range of up to ten minutes to the power grid
and thereby stabilize the power grid during periods of increased
or decreased power grid loading as recited in previously
presented versions of claims 1 and 21.
(App. Br. 9, citing to Ellis 1 53; see also Reply Br. 4).
Based thereon, the Appellant asserts that: no prima facie case of
obviousness has been established (Reply Br. 2); the Examiner’s assertion
that the example strategies and capabilities described in Ellis is non-limiting
“are not supported on factual basis”; and the asserted “general conditions” is
not disclosed so that “‘discovering the optimum or workable ranges’
involves more than routine skills in the art.” (App. Br. 11; see also Reply
Br. 6).
We are unpersuaded by the Appellant’s arguments. As the Examiner
finds (Ans. 3), Ellis discloses several non-limiting examples or “strategies”
for using its system to store and generate energy, including strategies based
on: price of electricity throughout various times of the day (i.e., based on
“business hours”); the season; and “balancing] the power grid and to supply
additional electrical power to supplement capacity or intentional or
unintentional reductions in output from a power generating plant.” (Ellis
1 53). Therefore, in disclosing a strategy to balance the power grid from
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“intentional or unintentional reductions in output from a power generating
plant,” Ellis discloses providing transient operation and adjusting the
transient power to the power grid. In addition, Ellis’s disclosure is also not
limited to a particular strategy considering it discloses multiple strategies
and further utilizes the term “variation” in describing such strategies.
The Appellant asserts that the Examiner fails to appreciate “the
criticality of short term or very short term transient operation [that] has been
non-limitingly described by Appellant” (App. Br. 11, citing Spec. ]ff[ 3, 10,
22, 23; see also Reply Br. 7). In particular, the Appellant argues that:
The pertinent issue is having a specific and designated power
strategy for specifically “immediate”, “transient”, and “up to ten
minutes” time period. Scientifically, a strategy intended for a
long time period may be different and distinct from a strategy
intended for “immediate”, “transient”, and “up to ten minutes”
time period and one does not follow from the other. Therefore,
“immediately adjust the transient power during a time range of
up to ten minutes” is neither equivalent of nor follows from a
generic description of long term seasonal and long term power
shortage strategies of Ellis, just because “ten minutes” is part of
“long time”.
(Reply Br. 6).
The Appellant’s arguments are unpersuasive. Firstly, as discussed
supra, Ellis discloses strategies that address short, transient time periods,
during which “intentional or unintentional reductions in output from a power
generating plant” would occur (Ellis 1 53). Unintentional reductions in
output from a power generating plant would occur suddenly, and in order for
the system disclosed in Ellis to “balance the power grid,” it would have to
respond quickly to such reductions.
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Secondly, the claims at issue are system claims, not method claims
directed to a particular control strategy. The language of the limitation at
issue is generally directed to the functional capability and intended use of
the claimed system. However, there is no recited structure that distinguishes
the claimed system from the system of the prior art as applied in the
rejection. Accordingly, it is not apparent why the system as applied in the
rejection would not be capable of the recited function and use because, as
generally noted by the Examiner, “there is nothing preventing the system
from operating for a short time range.” (Ans. 3). Indeed, the Appellant’s
own Specification discloses that its system is operable in a manner similar to
the manner disclosed by Ellis in that its system: “can provide the requisite
backup power capability”; is “useful to provide additional thermal peak
power from a thermo oil loop if required by the ORC plant operation”; is
useful “to supply auxiliary power if the power plant is off’; is “capable of
providing short time increases and/or decreases of output power if demanded
from the grid side”; and can “compensate for power fluctuations due to
day/night ambient temperature fluctuations.” (Spec. Tflf 22, 23).
Thirdly, to any extent that Ellis’s disclosure of “balancing] the power
grid” does not implicitly disclose the “up to ten minutes” time range, we
generally agree with the Examiner that the recited time period is a workable
range discoverable by those in the art (Final Act. 5). See generally, In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (discovery of an optimum value of a
result effective variable is ordinarily within the skill of the art). In that
regard, Ellis establishes that a person of ordinary skill in the art had the skill
to devise control strategies for balancing the power grid effected by
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Application 12/827,510
unexpected power reductions (i.e., “unintentional reductions”), or
alternatively, on an hourly (i.e., “business hours”) or seasonal basis. These
time periods establish a time range that encompasses the claimed time range
of “up to ten minutes.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. . . . [When] claimed ranges are completely
encompassed by the prior art, the conclusion is even more compelling than
in cases of mere overlap.” In re Peterson, 315 F.3d at 1329-30.
Finally, the Appellant asserts that “‘discovering the optimum or
workable ranges’ involves more than routine skill[s] in the art” (Reply
Br. 7). However, the Appellant does not even provide any persuasive
analysis or arguments in support of this assertion, much less any evidence.
Therefore, in view of the above, we affirm the Examiner’s rejection of
independent claims 1 and 21. The Appellant does not separately argue
dependent claims 2—9, 22—25, and 27 that ultimately depend from claims 1
or 21. Accordingly, the rejection of these dependent claims are also
affirmed.
Rejections 2 and 3: Claims 10 and 27
The Appellant does not separately argue the limitations of claims 10
and 27, but instead, argues that the additionally relied upon references
(Roberts and Klochko) fail to address the deficiencies of Ast, Juchymenko,
and Ellis (App. Br. 12; see also Reply Br. 7). However, having found no
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deficiency in the combination of Ast, Juchymenko, and Ellis, we affirm
these rejections as well.
CONCLUSION
The Examiner’s rejections of claims 1—10, 21—25, and 27 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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