Ex Parte DeSteese et alDownload PDFPatent Trial and Appeal BoardApr 17, 201411004611 (P.T.A.B. Apr. 17, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN G. DESTEESE, LARRY C. OLSEN, JOHN W. JOHNSTON, PETER M. MARTIN, and TIMOTHY J. PETERS __________ Appeal 2012-010056 Application 11/004,611 Technology Center 1700 ____________ Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 37-46, 48, 49, and 52-55. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appeal 2012-010056 Application 11/004,611 2 We AFFIRM and ENTER A NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Appellants’ invention is directed to a thermoelectric power source including a multiple thermoelements (i.e., an n-type and a p-type thermoelement pair) attached to a flexible substrate (Spec. 5:20-28). The thermoelements form a thermocouple assembly attached to a heat delivery member (i.e., a heat pipe) and a heat removal member (i.e., a heat pipe) (Fig. 15; Spec. 6: 10-22). Claim 37 is illustrative: A thermoelectric power source comprising: a thermoelectric module having at least one thermoelectric couple comprising a thin film p-type thermoelement, a thin film n-type thermoelement positioned adjacent the p-type thermoelement, and an electrically conductive member electrically connecting a first end of the p- type thermoelement with a second end of the n-type thermoelement; a high-temperature heat pipe connected to a hot connection of the thermoelectric module; a low-temperature heat pipe connected to a cold connection of the thermoelectric module; a working fluid in the low-temperature and/or high-temperature heat pipes; wherein the thermoelectric power source is capable of transferring heat to and from the thermoelectric module by a phase change of the working fluid in the low-temperature and high-temperature heat pipes; and the thermoelectric power source does not include an electrical and/or mechanical power device, other than gravity, external to the low temperature heat pipe or the high temperature heat pipe acting on the working fluid to transfer heat to and from the thermoelectric module. Appeal 2012-010056 Application 11/004,611 3 Appellants appeal the following rejections: 1. Claims 37-46, 48, 49, and 52-55 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 37-45 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Migowski (WO 89/07836, published Aug. 24, 1989) in view of Eggemann (US 3,931,673, patented Jan. 13, 1976) and further in view of Stachurski (US 4,125,122, patented Nov. 14, 1978). 3. Claims 46 and 52-55 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Migowski in view of Eggemann. 4. Claims 48 and 49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Migowski in view of Eggemann and Akiba (US 2003/0140957 A1, published Jul. 31, 2003). 5. Claims 48 and 49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Migowski in view of Eggemann and Stachurski. REJECTION (1): § 112, WRITTEN DESCRIPTION The Examiner’s findings regarding the § 112 rejection are located on pages 5-6 of the Answer. The Examiner finds that the Specification fails to provide written descriptive support for a thermoelectric power source that does not include an electrical and/or mechanical power device, other than gravity, external to the low temperature heat pipe or the high temperature heat pipe acting on the working fluid to transfer heat to and from the thermoelectric module (Ans. 5). The Examiner finds that the Specification does not disclose whether the use of an external electrical or mechanical Appeal 2012-010056 Application 11/004,611 4 power device to run the claimed/disclosed thermoelectric power source is precluded (Ans. 5). Appellants argue that a heat pipe by definition is a passive heat transfer device that does not need an external electrical or mechanical power device for fluid flow and heat transfer (App. Br. 8). Appellants contend that Figure 15 of the Specification shows that there are no external power devices to the heat pipes (Ans. 8-9). We begin our analysis by construing independent claims 37 and 46 which recite, in relevant part, that the “power source does not include an electrical and/or mechanical power device, other than gravity, external to the low temperature heat pipe or the high temperature heat pipe . . .” (claim 37) and “without the need of an electrical and/or mechanical power device, other than gravity, external to the low temperature or high temperature members” (claim 46). These phrases may be rewritten as the power source does not include an electrical power device or a mechanical power device, or an electrical and mechanical power device, other than gravity, external to the low temperature heat pipe or high temperature heat pipe (claim 37) or without the need of an electrical power device, or a mechanical power device, or an electrical and mechanical power device, other than gravity (claim 46). We find that the meanings of claims 37 and 46 are unclear and indefinite. The disputed phrases that include negative limitations that expressly exclude an electrical power source, or a mechanical power source, or an electrical and a mechanical power source, other than gravity are contradictory and inconsistent in that the claims includes any power source not excluded by the alternative claim language and at the same time, Appeal 2012-010056 Application 11/004,611 5 excluding any power source other than gravity. For example, if in the first listed alternative power source, electrical power sources are excluded, then mechanical power sources may be included by implication. But if mechanical power sources are included in the device then the meaning of “other than gravity” renders the claim unclear as to whether the mechanical power sources are included or excluded. Appellants’ arguments seem to indicate that the claims should be construed as limited to a device that is free of any external power source other than gravity. However, we find that the claims as written are indefinite for the reason indicated supra. Because we find that the claims are indefinite, we enter a new ground of rejection of independent claims 37 and 46, and the claims that depend therefrom. Because we cannot discern the meaning of the disputed limitations in the claim, we pro forma reverse the Examiner’s § 112, first paragraph, rejection for lack of written description. In re Steele, 305 F.2d 859, 863 (CCPA 1962). Because the interpretation of the disputed claim phrase is not contested or otherwise an issue with regard to the prior art rejections, we address the merits of the prior art rejections to avoid piece meal appeals and for administrative and judicial economy. In addressing the prior art rejections, we understand the Examiner to have conditionally construed the claims as using a heat pipe with only gravity as its energy source. This interpretation is supported by Eggemann that lists heat pipes as an alternative to using pumps, for example, which would require mechanical or electrical power to activate the pumps (col. 1, ll. 37-39). REJECTIONS (2) TO (5): § 103 Appeal 2012-010056 Application 11/004,611 6 The Examiner finds that the Migowski discloses most of the limitations of claims 37 and 46 including a thin film TE module having two heat sources 7 (Ans. 7). The Examiner finds that Migowski fails to teach explicitly the low and high temperature sources are heat pipes (Ans. 7). The Examiner finds that Eggemann teaches a thermoelectric device wherein cold and hot members or plates comprise heat pipes having working fluid which recirculates within the heat pipes (Ans. 8). The Examiner concludes that it would have been obvious to have used heat pipes as disclosed by Eggemann in Migowski’s device in order to operate the device in Seebeck mode to generate electricity due to the presence of a temperature gradient between the high-temperature and low-temperature heat pipes (Ans. 8). Appellants argue that the neither Migowski nor Eggemann discloses a thermoelectric device using heat pipes (App. Br. 11). Appellants contend that the portion of Eggemann cited by the Examiner as disclosing heat pipes is in the background of Eggemann’s invention and is directed to a NYO report. Id. Appellants contend that they have reviewed the NYO report and they find that there is no disclosure in the NYO report of using heat pipes. Id. Contrary to Appellants’ argument, Eggemann’s discloses that the device described at column 1, lines 31-44, includes hot and cold fluid is circulated using heat pipes. Despite Appellants review of the NYO report as allegedly failing to teach using heat pipes, Eggemann, as one of ordinary skill in the art, summarized the NYO report as including heat pipes. In other words, Eggemann evinces that one of ordinary skill in the art would have understood using heat pipes in thermoelectric devices to moderate heat transfer among the device. Appeal 2012-010056 Application 11/004,611 7 Based upon this understanding of the prior art, we agree with the Examiner that the substitution of Eggemann’s heat pipes for the heat devices of Migowski would have been nothing more than the predictable use of prior art elements (i.e., heat pipes) according to their established function (i.e., circulating fluids to transfer heat as taught by Eggemann). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Regarding the rejections of claims 48 and 49, Appellants argue that Akiba and Stachurski fail to teach heat pipes (App. Br. 12). Appellants further contend that Akiba and Stachurski teach a different configuration for circulating the fluid through the heat transfer devices. Id. Appellants’ arguments are unpersuasive because they attack the references individually instead of addressing what the combined teachings would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner does not cite Akiba and Stachurski to teach heat pipes or to suggest using Akiba’s or Stachurski’s heat transfer device in Migowski’s thermoelectric device. (Ans. 12-13). As noted supra, we find that Eggemann would have suggested using heat pipes in Migowski’s device. Rather, the Examiner cites Akiba and Stachurski to teach suitable working fluids for heat transfer devices. Id. Appellants do not contest or otherwise show error in the Examiner’s conclusion that it would have been obvious to use the working fluids of Akiba or Stachurski in the heat transfer device of Migowski as modified by Eggemann. Id. On this record and for the above reasons, we affirm the Examiner’s §103 rejections. Appeal 2012-010056 Application 11/004,611 8 DECISION The Examiner’s decision is affirmed and we enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). TIME PERIOD FOR RESPONSE In addition to affirming the examiner's rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited Appeal 2012-010056 Application 11/004,611 9 prosecution, the affirmed rejection is overcome. If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED & NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) cdc Copy with citationCopy as parenthetical citation