Ex Parte Bertolotti

Board of Patent Appeals and Interferences

May 5, 2009

10868259 (B.P.A.I. May. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO PAOLO BERTOLOTTI
____________

Appeal 2009-1559
Application 10/868,259
Technology Center 2800
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Decided: 1 May 5, 2009
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Before ROBERT E. NAPPI, KARL D. EASTHOM, and THOMAS S.
HAHN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1559
Application 10/868,259

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1-3, 6-10, and 26-37. Subsequent to the appeal, the
Examiner withdrew the rejections of claims 6, 7, 26, 31, 33, and 37 (Ans. 2,
3). 2 Claim 32 depends from withdrawn claim 31, and claims 34 and 35
depend from withdrawn claim 33. Thus, the rejection to claims 32, 34, and
35 are considered to be withdrawn also. Claims 11-20 were withdrawn from
consideration prior to the appeal pursuant to a restriction requirement.
Claims 4, 5, and 21-25 have been cancelled (App. Br. 2). Therefore, the
rejections of claims 1-3, 8-10, 27-30, and 36 are before us. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
According to Appellant: “[a] wind power energy system includes a
compression system that produces pressurized air with a first temperature
that is received by a storage system at a second temperature that is
approximately equal to the first temperature. The wind power energy
system is insulated . . . to create an essentially adiabatic system.” A
generator generates electricity using the stored pressurized air. (Abstract).
Claim 1, illustrative of the invention, follows:
1. A wind power energy system comprising:
a compression system producing pressurized air having a first
temperature;

2 The Examiner’s Answer (mailed Jan. 2, 2008) (“Ans.”) and Appellant’s
Brief (filed Aug. 20, 2007) (“App. Br.”) and Reply Brief (filed Mar. 3, 2008)
(“Reply Br.”) detail the respective positions of the parties.
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Application 10/868,259

a storage system receiving said pressurized air at a second
temperature substantially equal to said first temperature; and
insulation for maintaining the second temperature substantially
equal to the first temperature.
The Examiner relies on the following prior art references:
Leavitt US 320,482 Jun. 23, 1885
Allison US 4,447,738 May 8, 1984
Kirschner US 5,438,845 Aug. 8, 1995
Enis US 6,927,503 B2 Aug. 9, 2005
(filed Oct. 4, 2002)

The Examiner rejected:
Claims 1-3, 8-10, and 36 under 35 U.S.C. § 103(a) based upon Allison
and Enis.
Claims 27, 28, and 30 under 35 U.S.C. § 103(a) based upon Allison,
Enis, and Leavitt.
Claim 29 under 35 U.S.C. § 103(a) based upon Allison, Enis, Leavitt,
and Kirschner.
ISSUES
Appellant’s and the Examiner’s arguments and rejections raise the
following issues:
Did Appellant demonstrate that the Examiner erred in finding that
Allison and Enis collectively teach “insulation for maintaining the second
temperature substantially equal to the first temperature” as set forth in
representative claim 1?
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Application 10/868,259

Did Appellant demonstrate that the Examiner erred in finding that the
references teach the limitations of claims 8-10, 27, and 29?

FINDINGS OF FACT (FF)

1. Allison discloses a wind power electrical generator system
including a wind mill which activates an air compressor to generate a supply
of pressurized air. An air motor activated by the supply of pressured air
drives a generator to produce electrical power. (Allison, Abstract; Fig. 1).
2. Enis discloses a wind mill system that employs a compressor to
force “compressed air energy into one or more high pressure storage tanks
located on the ground nearby” (col. 7, ll. 52-55; Abstract).
3. Enis’s Figure 3 is reproduced below:

The details of Enis’s storage tank and compressor components are depicted
above (Fig. 3; col. 5, ll. 28-33).
4. Enis discloses that increased air temperature inside the storage
tanks produces several advantages: increased efficiency and air flow of the
turboexpanders, increased energy and pressure of the air in the tanks, and
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Application 10/868,259

prevention of freezing otherwise occurring by expansion of the air in the
tanks (col. 8, l. 64 to col. 9, l. 12). To obtain the advantages: “[t]he present
invention is preferably able to maintain the temperature of the expanding air
at an acceptable level, to help maintain the operating efficiency of the
system” (col. 9, ll. 12-14).
5. Enis teaches that the high-pressure storage tanks are preferably
located in close proximity to the energy storage stations, which stations
include, inter alia, compressors, and the “storage tanks are preferably . . .
insulated to maintain existing temperatures in the tank” (col. 8, ll. 1-8
(emphasis added); see also col. 7, ll. 48-65).
6. Enis discloses using, inter alia, waste heat from the compressor to
heat compressed air in the storage tanks (col. 3, ll. 37-42; col. 8, ll. 46-48).
7. Kirschner improves upon prior art venturi devices typically
employed in cooling/refrigeration systems by controlling the degree of
circulation flow. A venturi device uses energy in the air to accomplish
circulation. (Col. 1, ll. 5-52). Kirschner discloses that compressors in the
system create heat by compressing the circulating air which must then be
cooled by a turboexpander and heat exchangers (col. 3, ll. 27-32). Kirchner
defines “‘[r]efrigeration’” as “any decrease in internal energy which is
typically associated with a decrease in the temperature of a heat load” (col.
3, ll. 2-5).
8. With respect to claim 8, the Examiner found (Ans. 9):
The properties, like heat conductivity, of insulating
materials are extremely well known in the art. . . . Selecting an
insulating material having a particular rate of heat conductivity
when in contact with a working fluid having a temperature
higher than the surrounding environment in which the system
operates is a well known step in the design and construction of
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Application 10/868,259

a system in which maintaining the temperature of the working
fluid is an important design consideration. A particular heat
conductivity requirement is the result of requirements like
working fluid optimum temperature, flow rate, tank
construction and working environment temperature.

9. With respect to claim 9, the Examiner found (id.): “The insulating
properties and uses of glass wool are extremely well known in the art. . . .
Glass wool is a well known insulating material commonly used as the
outermost layer of tanks containing pressurized fluids.”
10. With respect to claim 10, the Examiner found (id.): “The
thickness of insulating materials is extremely well known in the art. . . . The
thickness of any particular insulating layer is commonly determined by the
temperature surrounding the system, the temperature of the working fluid
and the thermal conductivity of the material of which the storage tank of
[sic] constructed.”
11. Appellant does not challenge the Examiner’s findings in FF 7-9.
12. Glass wool is defined as: “glass fibers in a mass resembling
cotton batting or wool used esp. for thermal insulation and air filters or
fabricated into various products (as acoustic tile or wallboard).” Webster’s
Third New International Dictionary Of The English Language Unabridged
(G&C Merriam Co. 1971) (emphasis added).

PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting any
prima facie conclusion of obviousness. The burden then shifts to Appellant
to rebut the Examiner’s prima facie case with opposing evidence and
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .” Kahn, 441 F.3d at 985-986 (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998).
“[W]hen . . . the prior art . . . is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007)(citation omitted). “[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” Id. at 417(citation omitted). In “difficult . . . cases
. . . the claimed subject matter may involve more than the . . . mere
application of a known technique to a piece of prior art ready for the
improvement.” Id. “‘Our suggestion test is in actuality quite flexible and
not only permits, but requires, consideration of common knowledge and
common sense.’” Id. at 421 (citation omitted).

ANALYSIS
Issue 1
Appellant’s argument (App. Br. 4) that Enis does not teach or suggest
insulating Allison’s air compressors is not material to the rejection, as the
Examiner reasoned (Ans. 8), because claim 1 does not require an insulated
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compressor.3 Appellant does not challenge the Examiner’s finding (id.) that
“ALLISON is cited as disclosing the construction of a wind power electrical
generator system comprising a compression system producing pressurized
air having a first temperature, and a storage system receiving said
pressurized air at a second temperature substantially equal to said first
temperature.” Since Appellant does not challenge the Examiner’s finding
that Allison’s storage tanks receive a substantially equal temperature from
the compressor or the finding that Enis teaches insulating the storage tanks
(id.), it follows that Appellant has not demonstrated error in the Examiner’s
finding that the combination teaches maintaining the two temperatures as
substantially equal as recited by claim 1.
Additionally, Enis teaches that wind mill storage systems save energy
by maintaining the pressurized air temperature of the air in storage tanks,
and that the pressurized air temperature can be maintained by insulation (FF
2-5). Claim 1 does not define where the compression and pressure systems
begin and end. Defining the compression system of claim 1 as ending at the
inlet to Enis’s insulated tank where “HOT AIR FROM FINAL STAGE OF
COMPESSOR” enters the tank inlet (FF 3), at a minimum, suggests, that the
hot air immediately outside the tank inlet from the compressor (i.e., the
“compression system”) and inside the tank (i.e., the “storage system”) would
at least be substantially equal, and thereafter maintained as such with Enis’s

3 Appellant groups claims 1 and 36 together (App. Br. 4). Accordingly,
claim 1 is selected to represent the group. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 2-3 present related issues as discussed below.

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tank insulation (FF 5). Therefore, Enis renders claim 1 obvious with or
without Allison.
Claim 2 defines “substantially equal” as follows: the “second
temperature is at least 50% of said first temperature.” Claim 3 narrows
“substantially equal” further, reciting “about 85%.” Therefore, by
implication, claim 3 precludes lower tank temperatures below 50% but does
not preclude “substantially equal” tank/compressor temperatures “about
85%.” Appellant on one hand argues (App. Br. 5) that claims 2-3 require
cooling the air in the tank, but on the other hand, argues (Reply Br. 1) with
respect to claim 1 that “the compressors of the Allison reference would not
be insulated. Therefore, the combination would not appear to be capable of
maintaining the temperature of the pressurized air as claimed because too
much heat would be lost through the compressors.”
Appellant’s argument cuts both ways (and ignores the Examiner’s
findings with respect to Enis). That is, Enis’s tank and compressor system
temperatures are either substantially equal without tank cooling (due to heat
loss in the compressors) or they are not. In any case, claims 2-3 do not
require tank cooling as the Examiner reasoned (Ans. 8), and Figure 3 of
Enis, for reasons disclosed above, discloses or suggests temperatures that are
“substantially equal” at either side of the tank inlet, thereby meeting “at least
50%,” and “about 85%,” since Appellant does not define nor quantify
“about” or “maintaining” sufficiently to define over Enis’s system. “The
problem in this case is that the appellants failed to make their intended
meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). “It is the applicants’ burden to precisely define the invention, not the
PTO’s.” Id.
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Thus, Enis either teaches or suggests the claimed inventions recited in
claims 1-3. See In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting that
obviousness rejections can be based on references that happen to anticipate
the claimed subject matter). Enis reasonably suggests maintaining the tank
air temperature substantially equal to the compressor temperature air, since
Enis teaches maintaining the tank heat with insulation and using waste heat
from a closely located compressor, as necessary, for purposes of efficiency
(FF 2-6). In light of Enis’s teachings, skilled wind energy artisans would
have recognized that adding only compressor waste heat to the tanks would
have been efficient, thereby maintaining, for at least some period of time, the
temperatures recited in claims 1-3.
Therefore, for the reasons discussed above, we will sustain the
Examiner’s rejection of claims 1-3, and claim 36, which was not separately
argued.
Issue 2
With respect to claims 8-10, Appellants do not challenge the
Examiner’s findings that skilled artisans would have known how to calculate
the insulation properties of heat conductivity and thickness, based on the
thermal properties of the system, and that glass wool is a well known
thermal insulator (FF 8-11). Rather, Appellants challenge (App. Br. 5, 6) the
obviousness of employing a well known glass wool insulator and known
parameters associated with insulators in the system of Allison and/or Enis.
The definition of glass wool supports the Examiner’s finding (FF 9)
that glass wool is a known insulator (FF 12). “[C]ommon knowledge and
common sense,” see KSR at 1743, indicates that the thickness and/or
material of an insulator affects its ability to insulate; i.e., its thermal
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conductivity, supporting the Examiner’s findings (FF 8-10). As the
Examiner also generally found (FF 8), heat conductivity requirements
involve considerations of “working fluid optimum temperature, flow rate,
tank construction and working environment temperature.” Enis generally
discloses insulating a tank in such an environment to maintain an optimally
efficient temperature as discussed above (FF 2-6).
Since the particular design requirements for known insulators such as
glass wool were well known (FF 8-12), employing such an insulator in place
of Enis’s generic insulator at a certain thickness to obtain a certain heat
conductivity as desired, to prevent tank air from freezing or to otherwise
maintain an efficient temperature as Enis teaches (FF 2-6), would have
involved “the mere substitution of one element for another known in the
field” or no “more than the . . . mere application of a known technique.” See
KSR at 417. Such a combination “‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement” id. (citation
omitted). Accordingly, we will sustain the Examiner’s rejection of claims 8-
10.
Claim 27 only requires the additional limitation of two different
storage portions. Enis discloses employing one or more storage tanks (FF 2,
4-6). Accordingly, the Examiner’s rationale (Ans. 6) that more tanks
involve a mere duplication of parts is reasonable. Skilled artisans would
have employed as many tanks as necessary to hold sufficient energy (see FF
2, 4-6). While the Examiner also employs Leavitt to support the finding
(id.), that finding is cumulative to our finding. Therefore, we will also
sustain the Examiner’s rejection of claim 27, and of claims 28 and 30 which
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are dependent therefrom and which were not separately argued (see App. Br.
7).
Claim 29, which depends from claim 27, recites “the second storage
portion includes a venturi section.” Claim 27 requires the second storage
portion to “hold pressurized air from the compression system.” As the
Examiner found (Ans. 7, 11), Kirschner discloses a venturi to circulate air in
a refrigeration system (FF 7). The Examiner reasoned (Ans. 7) that it would
have been obvious to modify the system of “ALLISON in view of ENIS et
al. further in view of C.LEAVITT for the purpose of circulating a refrigerant
fluid within a circulation path within a refrigeration chamber.”
The Examiner’s reasoning does not articulate why Kirschner’s venturi
would have been obvious to include in “the second storage portion” that
holds pressurized air as required by claim 29. Therefore, the Examiner has
failed to satisfy the initial burden, the prima facie case of obviousness, as
Oetiker and Kahn require. Accordingly, we will not sustain the Examiner’s
rejection of claim 29.

CONCLUSION

Appellant did not demonstrate that the Examiner erred in finding that
Allison and Enis collectively teach “insulation for maintaining the second
temperature substantially equal to the first temperature” as set forth in
representative claim 1. Appellant did not demonstrate that the Examiner
erred in finding that the references teach the limitations of claims 8-10 and
27, but did demonstrate that the Examiner erred in finding that the references
teach the limitations of claim 29.
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DECISION

We affirm the Examiner’s decision rejecting claims 1-3, 8-10, 27, 28,
30, and 36. We reverse the Examiner’s decision rejecting claim 29.
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)(2006).

AFFIRMED-IN-PART

ELD

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
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Application/Control No.

10/868,259
Applicant(s)/Patent Under
Reexamination
Appeal No. 2009-1559
Notice of References Cited
Examiner

Art Unit

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