Ex Parte Farmer et al

Patent Trial and Appeal Board

Feb 8, 2017

13049075 (P.T.A.B. Feb. 8, 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.
13/049,075 03/16/2011 Joseph C. Farmer IL-12129 9987
24981 7590 02/10/2017
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
EXAMINER
WHITE, SADIE
LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. FARMER and JAMES KASCHMITTER
Appeal 2016-000682
Application 13/049,075
Technology Center 1700
Before CHUNG K. PAK, AVELYN M. ROSS, and DEBRA L. DENNETT,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1 and 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our opinion below, we refer to the Final Action mailed April 22, 2015
(“Final Act.”); the Appeal Brief filed May 5, 2015 (“App. Br.”); the
Examiner’s Answer mailed October 2, 2015 (“Ans.”); and the Reply Brief
filed October 13, 2015 (“Reply Br.”).
2 Appellants identify Lawrence Livermore National Security, LLC and the
United States of America as represented by the United States Department of
Energy as the real parties in interest.
Appeal 2016-000682
Application 13/049,075
STATEMENT OF THE CASE
The claims are directed to an apparatus for waste heat recovery.
Claims 1 and 7, the only appealed claims, are reproduced below with
disputed limitations bolded and italicized:
1. An apparatus for recovery of waste heat, wherein a pipe
carries a hot medium that has heat, consisting of:
a conduit having a first end, a second end, an internal
passage extending from said first end to said second end, and an
outer surface;
a flange on said conduit at said first end of said conduit
for connecting said conduit to the pipe that has heat, enabling
the hot medium that has heat to enter said internal passage of
said conduit;
and enabling the hot medium that has heat to flow
through said internal passage of said conduit;
a multiplicity of coatings of an N-material on said outer
surface of said conduit producing a multiplicity of N-junctions
on said outer surface of said conduit,
a multiplicity of coatings of a P-material on said outer
surface of said conduit producing a multiplicity of P-junctions
on said outer surface of said conduit, wherein said multiplicity
of N-junctions and said multiplicity of P-junctions extend from
said first end of said conduit to said second end of said conduit;
a multiplicity of separators on said outer surf ace of said
conduit between said multiplicity of N-junctions on said
conduit and said multiplicity of P-junctions on said outer
surface of said conduit, and
electrical connectors for said multiplicity of N-junctions
and said multiplicity of P-junctions wherein an electrical
current is produced in said electrical connectors when the hot
medium that has heat flows through said internal passage of
said conduit and the heat flows from the hot medium to said
multiplicity of N-junctions and said multiplicity of P-junctions.
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Application 13/049,075
7. An apparatus for recovery of waste heat consisting of:
a pipe carrying a hot medium that has heat,
a conduit having an end, an internal passage, and an outer
surface,
a flange on said conduit at said end of said conduit for
connecting said conduit to said pipe carrying said hot medium
that has heat, enabling said hot medium that has heat to enter
said internal passage of said conduit and flow through said
internal passage of said conduit,
a first coating of an N-material on said outer surface of
said conduit producing a first N-junction on said outer surf ace
of said conduit,
a first coating of a P-material on said outer surface of
said conduit producing a first P-junction on said outer surf ace
of said conduit,
a first separator on said conduit between said first In­
junction and said first P-junction,
a second coating of an N-material on said conduit
producing a second N-junction on said conduit,
a second coating of a P-material on said conduit
producing a second P-junction on said conduit,
a second separator on said conduit between said second
N- junction and said second P-junction, and
an electrical conductor3 extending from said first N-
junction to said first P-junction to said second N-junction to
said second P-junction, wherein an electrical current is
produced in said electrical connector when said hot medium
that has heat flows through said internal passage of said conduit
and said heat flows from said hot medium to said first N-
3 In the event of further prosecution, the Examiner and Appellants are
advised that the paragraph improperly refers to “an electrical conductor”
and “said electrical connector
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Application 13/049,075
junction, said first P-junction, said second N-junction, and said
second P-junction.
App. Br. 28—29 (Claims App’s).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Thompson US 3,269,872 Aug. 30, 1966
Bass US 5,625,245 Apr. 29, 1997
REJECTIONS
Claim 7 stands rejected under 35U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Claims 1 and 7
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thompson in
view of Bass.
OPINION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claim 7 under
35 U.S.C. § 112, first paragraph, and of claims 1 and 7 under 35 U.S.C. §
103(a) for the reasons set forth in the Final Action and the Answer. We add
the discussion below primarily for emphasis and completeness.
Rejection of claim 7 as lacking written description
The Examiner rejects claim 7 as lacking written description for an
apparatus consisting of, inter alia, a conduit and a pipe. Final Act. 3. The
Examiner finds that the terms “pipe” and “conduit” are used interchangeably
throughout the Specification. Id. Moreover, the Examiner finds that the
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Application 13/049,075
Specification does not provide support for the conduit with thermoelectric
coatings and flanges being connected to a pipe. Id.
Appellants first argue that thermoelectric coatings and flanges in
claim 7 are connected to the conduit, not the pipe. App. Br. 11. This
argument, however, does not address the Examiner’s rejection, which finds
no disclosure in the Specification for connection of a conduit to a pipe,
irrespective of the coatings and flanges.
Appellants next argue that the original application describes claim 7 in
sufficient detail by the use of the term “waste heat system.” Id. at 11—13.
Indeed, Appellants state that they “wish they had used the term ‘waste heat
system’ instead of the term ‘pipe’ in claim 7.” Id. at 12. Appellants contend
that one skilled in the art could clearly conclude that the claim 7 element “a
pipe carrying a hot medium that has heat” is part of the waste heat system.
Id. Pointing to numerous amendments to claim 7 as supporting that a waste
heat system includes a pipe, Appellants suggest that prosecution history can
be used to clarity and explain a claim term. Id. at 13.
To comply with the written description requirement, an applicant’s
specification must convey with reasonable clarity to a person of ordinary
skill in the art that, as of the filing date, the applicant was in possession of
the claimed invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541 F.3d 1115, 1122 (Fed. Cir. 2008). Although the exact terms need not be
used in haec verba, the specification must contain an equivalent description
of the claimed subject matter. Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (disclosure of a television set with a
keypad, connected to a central computer with a video disk player did not
support claims directed to “an individual terminal containing a video disk
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Application 13/049,075
player”). “It is not sufficient for purposes of the written description
requirement of § 112 that the disclosure, when combined with the
knowledge in the art, would lead one to speculate as to modifications that
the inventor might have envisioned, but failed to disclose.” Id.
Appellants provide no evidence that one of ordinary skill in the art at
the time of the invention would understand that a waste heat system includes
“a pipe carrying a hot medium that has heat.” See App. Br. 11—15, 28.
“Arguments of counsel cannot take the place of evidence lacking in the
record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
Moreover, Appellants’ subsequent amendments to claims do not
compensate for a lack of disclosure in the original application. We view the
issue as analogous to an applicant disclosing an automobile and
subsequently claiming a specific fuel injector on the basis that one of skill in
the art would know that such specific fuel injector could be part of an
automobile.
Appellants’ arguments in the Reply Brief are unpersuasive. See Reply
Br. 3—5. Appellants identify different portions of the Specification as
disclosing a pipe and separately a conduit. Id. at 4. However, paragraph 21
of the Specification discloses that “[t]he TEG device 200 has pipe or flue
202 that is completely surrounded for 360 degrees by N-P junctions 206.”
Id. Paragraph 34 discloses “system 500 includes the following components:
a conduit, pipe, or flue.” Id. Thus, the paragraphs are drawn to different
embodiments of the claimed invention (TEG device 200 versus TEG device
500), and both paragraphs disclose a single element, be it called “pipe,”
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Application 13/049,075
“conduit,” or “flue,” and not a pipe carrying a hot medium that is separate
and distinct from a conduit.
The sufficiency of an application’s written description is a question of
fact. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). On the facts above, Appellants do not show reversible
error in the Examiner’s rejection of claim 7 under 35 U.S.C. § 112, first
paragraph.4
Rejection of claim 1 as obvious
The Examiner finds that “coating” is interpreted to include “layer,”
“on said first layer/conduit” is interpreted to include “directly or indirectly
on,” and “flange” is interpreted to include “any rim or projecting surface.”
Final Act. 3. Appellants do not dispute these constructions.
The Examiner finds that Thompson teaches all limitations of claim 1
except for the flange on the conduit. Final Act. 5—7. Specifically, the
Examiner finds that Thompson discloses a conduit as claimed (tubular
member 1), a multiplicity of coatings of an N-material as claimed (N-type
thermoelectric legs 6), a multiplicity of coatings of a P-material as claimed
(P-type thermoelectric legs 5), a multiplicity of separators as claimed
(regions of foamed polyurethane between connected elements 5 and 6), and
electrical connectors as claimed (corresponding to electrical conductor
material 2, adhesive 3, electrical conductor strip 7, and wires 8). Id. at 5—6.
4 We note that the preamble of claim 1 also includes “a pipe [that] carriers a
hot medium that has heat.” In the event of further prosecution, claim 1
should be further analyzed under 35 U.S.C. § 112, first paragraph for the
reasons given above.
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Application 13/049,075
Figures 5 and 7 of Thompson, illustrating the elements identified
above, are reproduced below:
Figure 5 is a perspective view of the assembly illustrated in Figure 3
after bars of thermoelectric material (P-type material designated by “5” and
N-type material designated by “6”) are placed on the electrical conductor
strips. Thompson col. 2,11. 18—20; col. 3,11. 44^47. Figure 7 is a
perspective view of the completely assembled device after a helical cut is
made in a second electrical conductor and the thermoelectric material. Id. at
col. 2,11. 22-24.
Appellants argue that Thompson discloses extra elements beyond
those required by claim 1 and, because claim 1 uses the transitional phrase
“consisting of,” Thompson’s extra elements do not allow the reference to
support a § 103(a) rejection. App. Br. 16—18. Specifically, Appellants argue
that the following elements are present in Thompson and not allowed by
claim 1:
“an electrically insulated clamping means,”
“An adhesive 3 ... a thin layer of a synthetic organic polymer
adhesive such as epoxy resin, one of the polyesters, or a natural
organic material such as cellulose,”
“adhesive material may be fortified with non-electrically conducting,
high thermally conducting materials such as aluminum oxide or
beryllium oxide,”
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Application 13/049,075
“helical path small spaced-apart electrical conductor segments or
strips,”
“bars of thermoelectric material,” and
“A second electrical conductor material.”
Id. at 17.
However, the Examiner finds that these elements of Thompson fall
within the limitations of claim 1, and Appellants fail to demonstrate
reversible error in the Examiner’s analysis.
The electrically insulated clamping means is disclosed as merely an
optional, temporary element in the formation of the device. See Thompson
col. 2,11. 46—50 (“a first electrical conductor material [ ] is then placed in
close contact with the tubular member by an electrically insulating clamping
means or adhesively joined as shown in FIGURE 1.”) (emphasis added).
The clamping means is not shown to be an element in the apparatus taught,
thus is not an extra element of Thompson’s apparatus that is excluded by
claim 1.
As to the adhesive, Thompson teaches that “adhesive 3 may be
applied to the tubular member or to the electrical conductor material.” Id. at
col. 2,11. 50—51. In other words, Thompson, by virtue of using the
permissive or optional language “may be,” teaches that the adhesive need
not be part of its apparatus. Id. Moreover, that the adhesive material may be
fortified with non-electrically conducting, high thermally conducting
materials is of no consequence, as the fortification is not required in
Thompson’s apparatus. Id. at col. 2,11. 58—61.
Further, the requirement in claim 1 for “electrical connectors” is broad
enough to read on the “helical path small spaced apart electrical conductor
segments or strips” and the “second electrical conductor material” taught in
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Appeal 2016-000682
Application 13/049,075
Thompson as an electrical current would be produced in these elements
when a hot medium that has heat flows through the conduit’s internal
passage and the heat flows to the multiplicity of N-junction and P-junctions.
Appellants have not shown reversible error in this finding.
Finally, the multiplicity of coatings of an N-material and a P-material
read on Thompson’s bars of thermoelectric material. The Examiner finds
that the bars of thermoelectric material are layers disposed in contact with
conduit 1 of Thompson. Final Act. 6. The Examiner construed “coatings”
as layers, and Appellants raised no opposition to such construction. See id.
at 3 and App. Br., generally. Claim 1 does not place any restriction on the
multiplicity of coatings to be circumferential or have any specified form,
thus “bars” are not excluded by the claim. The Specification states that
thermoelectric coatings may be “coated as patches” or “coated as adjacent
patches,” confirming that the bars of thermoelectric material taught by
Thompson is included and a circumferentially sprayed application of
thermoelectric material is not required. See Spec. 125.
Appellants fail to establish that Thompson includes elements in
addition to the limitations of claim 1.
The Examiner acknowledges that Thompson does not teach a flange,
but turns to Bass for this element of claim 1. Final Act. 7. Bass teaches a
thermoelectric generator that includes a flange attached to the inlet end of a
muffler pipe of a standard exhaust system. Bass Abstract, col. 3,11. 31—35.
Although we note Appellants’ argument that Bass discloses extra
features excluded by claim 1, we do not find it persuasive because
Appellants do not show that one of ordinary skill in the art would have been
motivated to employ such extra features taught by Bass in the apparatus of
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Appeal 2016-000682
Application 13/049,075
Thompson. See App. Br. 19-21. By focusing on Bass’s extra features only,
Appellants fail to consider the collective teachings of Thompson and Bass.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”). The fact that the secondary reference, Bass, happens to
disclose extra features other than flanges does not indicate that such extra
features are useful for and/or advantageous to the apparatus taught by
Thompson.
As is apparent from the record, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify the ends of the conduit of Thompson’s thermoelectric
device with flanges taught by Bass because:
(1) Thompson teaches that the purpose of his invention is to
produce a thermoelectric device that provides a heat exchange
surface to a flow of fluid, and (2) Bass teaches that a flange
structure is a conventional and effective connection structure to
connect a conduit comprising thermoelectric devices to pipe
structures through which hot gas flows.
Final Act. 7—8. Thus, the Examiner provides articulated reasoning with
rational underpinning to support the conclusion of obviousness. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2009).
For the reasons above, Appellants have not identified reversible error
in the Examiner’s rejection of claim 1 as obvious over Thompson in view of
Bass.
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Application 13/049,075
Rejection of claim 7 as obvious
Unlike claim 1, claim 7 consists of, inter alia, “a first coating of an Im­
material on said outer surface of said conduit” and “a second coating of an
N-material on said outer surface of said conduit.” App. Br. 28—29 (Claims
App ’x). Claim 7 has the same requirements for P-material. Id. at 29. Claim
7 requires a first separator on side conduit between said first N-junction and
said first P-junction and a second separator on said conduit between said
second N-junction and said second P-junction. Id. Claim 7, by using the
transitional term “consisting of,” excludes more than two coatings of N- and
P-materials and more than two separators on the conduit.
The Examiner finds that the a first coating of an N-material
corresponds to the half of each of the N-type thermoelectric legs 6 in the
device of Figure 7 in Thompson disposed closest to the conduit, and the
second coating of an N-material corresponds to the half of the N-type
thermoelectric legs 6 disposed furthest from the conduit. Final Act. 8—9.
The Examiner’s position is not supported by the reference. Nothing in
Thompson teaches or suggests that the thermoelectric legs are formed by
two coatings. Thompson discloses more than two N-type thermoelectric
legs and more than two P-type thermoelectric legs, which does not meet
claim 7’s limitations of N-type material and P-type material to only a first
and a second coating.
This is consistent with the Specification, which discloses that N-type
and P-type material may be coated as patches onto surfaces. Spec. 125.
Two patches in the same plane located in different locations would be two
separate coatings. On this record, the Examiner has not identified any
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Application 13/049,075
reason or suggestion to omit extra P-type and N-type legs (coatings) present
in Thompson. Final Act. 8—9.
The Examiner has not established a prima facie case of obviousness of
claim 7. We do not sustain this rejection under 35 U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 7 is
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)(l)(iv).
AFFIRMED
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