Ex Parte DiFoggio

Patent Trial and Appeal Board

May 27, 2016

11745735 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111745,735 05/08/2007 Rocco DiFoggio
58846 7590 05/31/2016
Michael Roebuck, P,C,
6750 WEST LOOP SOUTH
SUITE 920
Houston, TX 77401
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
594-45206-US 1334
EXAMINER
DUKE, EMMANUEL E
ART UNIT PAPER NUMBER
3744
MAILDATE DELIVERY MODE
05/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROCCO DIFOGGIO
Appeal2014-004007
Application 11/745,735
Technology Center 3700
Before ANTON W. PETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 3---6, 10, 11, 13-16, and 18-26. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellant identifies the real party in interest as "Baker Hughes
Incorporated." (Appeal Br. 2.)
Appeal2014-004007
Application 11/745,735
STATEMENT OF THE CASE
The Appellant's invention "relates to down hole tools and in particular
to controlling heat flow in down hole tools." (Spec. i-f 1.)
Illustrative Claim2
1. An apparatus for controlling heat flow in a downhole tool,
the apparatus comprising:
a passive thermal rectifier material, not requiring electrical
power, wherein the passive thermal rectifier material has
higher thermal conductivity in a first than in a second
direction, wherein the passive thermal rectifier material is
positioned between a heat source and a heat sink in the
downhole.
Strachan
Turner
Chang
References
US 5, 288,336 Feb. 22, 1994
US 6, 134,892 Oct. 24, 2000
C.W. Chang, et al., Reports Solid-State Thermal Rectifier,
SCIENCE MAG. (Nov. 17' 2006)3
T"tl. • , • A Kejectzons·
The Examiner rejects claims 1, 3, 5, 6, 10, 11, 13, 14, 16, 18-22, 25,
and 26 under 35 U.S.C. § 103(a) as unpatentable over Turner and Chang.
(Final Action 4, 6-7.)
The Examiner rejects claims 4, 15, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Turner, Chang, and Strachan. (Id. at 8.)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 17-21 of the Appeal Brief.
3 http://www.sciencemag.org/cgi/content/full/314/5802/112.
4 The Examiner's rejection of claims 10, 11, 13-16, and 18-26 under
35 U.S.C. § 112, first paragraph and the Examiner's rejection of claim 1
under 35 U.S.C. § 102(b) (see id.) have been withdrawn (see Answer 2).
2
Appeal2014-004007
Application 11/745,735
ANALYSIS
Claims 1, 10, and 16 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 3---6, 11, 13-15, and 18-26)
depending therefrom. (See Claims App.) Independent claim 1 is directed to
"[a]n apparatus for controlling heat flow in a downhole tool," independent
claim 10 is directed to "[a] method for controlling heat flow in a downhole
too 1," and independent claim 16 is directed to " [a] system for controlling
heat flow" involving "a downhole tool." (Id.)
The Examiner finds that Turner discloses an apparatus, a method, and a
system for controlling heat flow in a downhole tool. (See Final Action 4---6.)
Turner discloses a downhole tool including an electronic system having one
or more electronic components; and Turner shows a heat flow circuit wherein
arrows indicate heat flowing from an electronic component 54 to the tool's
housing 52. (See Turner, col. 4, 11. 5-11, col. 9, 11. 19--45, Fig. 5A.)
Independent claims 1, 10, and 16 each requires "a passive thermal
rectifier material" having "higher thermal conductivity in a first direction"
than it does "in a second direction." (Claims App.)
The Examiner finds that Chang teaches a passive thermal rectifier
material for providing "a thermal version of [a] check valve in a heat flow
circuit." (See Final Action 4.)5 The Examiner further finds that one of
5 Independent claims 1 and 10 each recites a passive thermal rectifier
material "not requiring electrical power." (Claims App.) The Appellant
contends that Chang's material does not have "[a] higher thermal
conductivity in a first direction than in a second direction without the aid of
electrical power." (Appeal Br. 14 (emphasis added).) However, we agree
with the Examiner that Chang teaches rectifiers wherein "the transmission of
heat in one direction more the reverse direction is due to physical properties
and characteristic of the passive thermal rectifier and requires no electrical
3
Appeal2014-004007
Application 11/745,735
ordinary skill in the art "would have taken advantage" of Chang's teaching
"of the well-known concept of a passive thermal rectifier that has a higher
thermal conductivity in a first direction than in a second direction" and
would "incorporate that teaching into Turner." (Id. at 11.) And the
Examiner explains that this incorporation would yield "the benefit of
providing a thermal version of [a] check valve in a heat flow circuit." (Id.)
The Appellant points out that the Examiner mischaracterizes Turner's
thermal interface material 64 as a "thermal rectifier." (See Reply Br. 10.)
However, the Examiner explicitly finds that Turner does not disclose "the
limitation of wherein the passive thermal rectifier material has a higher
thermal conductivity in a first direction than in a second direction." (Final
Action 4.) As discussed above, the Examiner looks to Chang to teach this
limitation. (Id.) Thus, regardless of the name given to Turner's thermal
interface material 64, the Examiner's obviousness rejection does not rely
upon a finding that Turner's material 64 is a rectifier having higher thermal
conductivity in a first direction than in a second direction.
The Appellant advances arguments implicating that the Examiner's
rejection is based upon a mere substitution of one thermal rectifier for
another. (See Reply Br. 10.)6 We are not persuaded by these arguments
because the Examiner's proposed combination of the prior art does not entail
a substitution of parts. Rather the Examiner's proposed combination of the
power for transmission of heat from high mass density end to low mass
density end." (Answer 10.)
6 For example, the Appellant states that "the Examiner apparently believes
that, in present invention, we are merely substituting one thermal rectifier (of
Chang) for another thermal rectifier (of Turner)." (Reply Br. 10.)
4
Appeal2014-004007
Application 11/745,735
prior art involves applying a known thermal-check-valve technique to
benefit the heat flow circuit of a prior art downhole tool. (See Final
Action 11.) In other words, the Examiner's proposed combination of the
teachings of Turner and Chang amounts to the mere application of a known
technique to a piece of prior art ready for improvement. 7
The Appellant asserts that "[a] thermal rectifier (also called thermal
diode or thermal check valve) cannot be replaced by an ordinary isotropic
thermal conductor and still get the same thermal behavior." (Reply Br. 11.)
However, the Examiner's proposed combination of the prior art does not
entail removing a thermal check valve from a heat flow circuit and replacing
it with a thermal conductor. And the Examiner's articulated reason for the
proposed combination of the prior art does not rest upon the replacement of
one component for another in a heat flow circuit yielding "the same thermal
behavior."
As discussed above, the Examiner's proposed combination of the
prior art involves incorporating a known thermal-check-valve technique into
the heat flow circuit of a prior art downhole tool in order to take advantage
of more beneficial thermal behavior. The Appellant does not contend that
the thermal behavior resulting from this incorporation would not be
predictable and/ or improved. 8
7 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (In order to be
non-obvious, the claimed subject matter must amount to more than "the
mere application of a known technique to a piece of prior art ready for the
improvement"); see also MPEP § 2143 (I) (D).
8 The Appellant subsequently states that "[a]s discussed above there was not
a reasonable expectation of success of arriving at the invention using the
combination of Turner and Chang." (Reply Br. 12 (italics removed).)
5
Appeal2014-004007
Application 11/745,735
The Appellant argues, for the first time in the Reply Brie±: that "there
was a long felt unfilled need met by the present invention." (Reply Br. 11
(capitalization omitted).) This argument is not raised in the Appeal Brief, is
not offered in response to a new position presented in the Examiner's
Answer, and is not accompanied by a showing of good cause. As such, we
do not consider this argument for purposes of the present appeal. 9
Thus, in view of the foregoing, we sustain the Examiner's rejection of
independent claims 1, 10, and 16; and the dependent claims fall therewith. 10
DECISION
We AFFIRM the Examiner's rejections of claims 1, 3---6, 10, 11, 13-16,
and 18-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
However, a position that the result of a prior art combination would not yield
"the same thermal behavior" does not equate to a position that the prior art
combination would not be successful, improved, and/or predictable.
Moreover, the Appellant's comments regarding "the same thermal behavior"
concern a combination (i.e. the replacement of a thermal rectifier with a
thermal conductor) that is not aligned with the Examiner's rejection.
9 See 37 C.F.R. § 41.41.
10 The Appellant does not offer further arguments regarding features recited
in the dependent claims and/or the additional prior art reference (Strachan).
(See Appeal Br. 14; see also Reply Br. 12.)
6