Ex Parte Herring

Patent Trial and Appeal Board

Dec 13, 2017

13718115 (P.T.A.B. Dec. 13, 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.
13/718,115 12/18/2012 Neal R. Herring 62733US01;
67097-2122PUS1
3370
54549 7590 12/15/2017
TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY
EXAMINER
400 West Maple Road
Suite 350
MALATEK, KATHERYN A
Birmingham, MI 48009 ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL R. HERRING1
Appeal 2017-002393
Application 13/718,115
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and enter A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, United Technologies Corporation, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal 2017-002393
Application 13/718,115
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An oscillating heat pipe of a gas turbine engine comprising:
a plurality of channels that define a circuit of a continuous
loop through which a working fluid flows;
an evaporator of a gas turbine engine, wherein the working
fluid flows through the evaporator to accept heat from a first
fluid, and the first fluid is located near or in an engine core; and
a condenser of the gas turbine engine, wherein the working
fluid flows through the condenser to reject heat to a second fluid,
and the second fluid is located outwardly of the engine core,
wherein the plurality of channels oscillate and make multiple
passes within the circuit between the evaporator and the
condenser.
REJECTIONS
I. Claims 1, 3—5, 8, 9, 17, 19, and 22 stand rejected under
35 U.S.C. § 102(b) as anticipated by Norris et al.
(US 2008/0141954 Al, pub. June 19, 2008) (hereafter “Norris
’954”).
II. Claims 2, 10-12, 15, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Norris ’954 and Norris et al.
(US 2008/0310955 Al, pub. Dec. 18, 2008) (hereafter “Norris
’955”).
III. Claims 6 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris ’954 and Hardesty (US 2009/0101308
Al, pub. Apr. 23,2009).
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IV. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris ’954, Hardesty, and Flores
(US 5,701,751, iss. Dec. 30, 1997).
V. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris ’954, Norris ’955, and Hardesty.
VI. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris ’954, Norris ’955, Hardesty, and
Flores.
VII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris ’954 and Flores.
DISCUSSION
Rejections I—VII
Claims 1—16, 21, and 22
As set forth below in the new ground of rejection, claims 1—16, 21,
and 22 are indefinite. Accordingly, we cannot sustain the Examiner’s
rejections of these claims under 35 U.S.C. §§ 102(b) and 103(a), because to
do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele,
305 F.2d 859, 862—63 (CCPA 1962) (holding that the Board erred in
affirming an obviousness rejection of indefinite claims because the rejection
was based on speculative assumptions as to the meaning of the claims). It
should be understood, however, that our decision to reverse these rejections
is based solely on the indefmiteness of the claimed subject matter, and does
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Application 13/718,115
not reflect on the adequacy of the prior art evidence applied in support of the
rejections.2
Claims 17 and 19
In rejecting independent claim 17, the Examiner finds that Norris ’954
discloses a method of cooling a fluid in a gas turbine engine that includes, in
relevant part, a step of “providing an oscillating heat pipe (40A, 40B)
including a plurality of channels (46A, 46B) that define a circuit of a
continuous loop through which a working fluid flows (paragraph 0007 11. 5—
16, paragraph 0016).” Final Act. 4. The Examiner also finds that Norris
’954 discloses “repeating the second and third steps above such that the
working fluid makes multiple passes within the circuit between the
evaporator (42A, 42B) and the condenser (44A, 44B; paragraph 0007 11. 5—
13).” Id. at 5.
Appellant argues that Norris ’954 “does not disclose a heat pipe
wherein ‘the plurality of channels oscillate and make multiple passes within
the circuit between the evaporator and the condenser.’” Appeal Br. 3; see
also Reply Br. 1 (asserting that Norris ’954 “does not disclose a plurality of
channels that oscillate and make multiple passes,” or “a circuit with multiple
passes”). This argument is unpersuasive because it is not commensurate
with the scope of claim 17. As stated by our reviewing court in In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is
2 In the event of further prosecution and clarification as to the scope of
claims 1—16, 21, and 22, the Examiner may wish to consider the pertinence,
if any, of Sameer Khandekar, “An Introduction to Pulsating Heat Pipes,”
Electronics Cooling, Vol. 9, No. 2, 2003, available at
https://www.electronics-cooling.com/2003/05/an-introduction-to-pulsating-
heat-pipes/, particularly with respect to Figure 1(a).
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Application 13/718,115
the claim.” It is well established that limitations not appearing in the claim
cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Here, claim 17 recites “providing an oscillating heat pipe
including a plurality of channels that define a circuit of a continuous loop
through which a working fluid flows . . . [, and] the working fluid makes
multiple passes within the circuit between the evaporator and the
condenser.” Appeal Br. 9 (Claims App.) (emphasis added). However, claim
17 does not recite that the plurality of channels oscillate and make multiple
passes between the evaporator and the condenser, nor that the circuit makes
multiple passes between the evaporator and the condenser.
Appellant also argues that “the cyclical movement of the fluid of
Norris [’954] is not disclosed as moving in multiple passes in a circuit.” Id.
at 3 (citing Norris ’954 17). Appellant asserts that Norris ’954 “discloses a
single pass in a circuit.” Id.', see also Reply Br. 1 (asserting that a “single
pass would include flow from an evaporator to a compressor and back to an
evaporator”). According to Appellant, “[e]ven if the fluid cycles in the
sealed system of Norris [’954,] as the Examiner contends, the fluid still
makes a single pass in the circuit.” Reply Br. 1—2.
We are not persuaded by Appellant’s argument. Norris ’954 discloses
that “[t]he vapor cooling assembly is configured to transport thermal energy
from the vaporization section to the condenser section at a relatively high
rate through cyclical evaporation and condensation of a working medium
sealed within the vapor cooling assembly.” Norris ’954 17. The Examiner
explains “that the working fluid does indeed make multiple passes within the
heat pipe as it performs its function.” Ans. 3. According to the Examiner,
“[h]eat pipes would not work if the fluid made a single pass between
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evaporator and condenser sections because the heat transfer would
immediately end.” Id. In this regard, Appellant does not offer any factual
evidence or persuasive technical reasoning to refute the Examiner’s position
or explain why it is deficient.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that Norris ’954 discloses that “the working fluid makes
multiple passes within the circuit between the evaporator and the
condenser,” as called for in claim 17. Appeal Br. 9 (Claims App.).
Accordingly, we sustain the rejection of independent claim 17, and of its
dependent claim 19, for which Appellant does not present separate
arguments (see id. at 3), under 35 U.S.C. § 102(b) as anticipated by Norris
’954.
Claim 18
In rejecting claim 18, which depends from claim 17, the Examiner
acknowledges that Norris ’954 “is silent about the evaporator accepting heat
from an oil system or bleed air from a high pressure compressor.” Final Act.
9. However, the Examiner finds that Norris ’955 “teaches, in Figure 1, the
evaporator (18) accepting heat from at least one of oil of an oil system, oil
from a gearbox, or bleed air from a high pressure compressor (22), wherein
the first fluid is at least one of oil or air (paragraph 0009 11. 5—8).” Id. The
Examiner determines that it would have been obvious to further modify
Norris ’954 “with the bleed air heat exchanger of [Norris ’955] in order to
provide a means to transfer thermal energy between two fluids while
maintaining physical separation of those fluids ([Norris ’955] paragraph
0009 11. 8-10).” Id.
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Appellant argues that, “[i]f Norris [’954] was modified such that the
heat from a fluid from an oil system or bleed air of a high compressor was
transferred, this modification as suggested by the Examiner would change
how Norris [’954] would function.” Appeal Br. 3^4. In particular,
Appellant asserts that “the heat would no longer transfer heat from the
combustion chamber 34 or could change how the heat is transferred.” Id. at
4; see also id. (noting that “[i]t is well established that if a “a ‘proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification’” (quoting MPEP
§ 2143.01(V)). According to Appellant, “if the engine component was
changed, Norris [’954] would function differently, ruining a purpose of
Norris [’954].” Reply Br. 2.
We are not persuaded by Appellant’s argument. Appellant does not
provide factual evidence or persuasive technical reasoning to explain how or
why the Examiner’s proposed modification of Norris ’954’s heat pipe would
change how heat is transferred or prevent the heat pipe from functioning as
intended. In other words, Appellant does not explain why using Norris
’954’s heat pipe to remove heat from oil or bleed air, as proposed by the
Examiner, would change the function of the heat pipe in any way that would
destroy its principle of operation or yield anything other than a result that
would have been predictable to one of ordinary skill in the art. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
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As discussed above, the Examiner articulates adequate reasoning
based on rational underpinnings as to why it would have been obvious to one
of ordinary skill in the art to modify Norris ’954 to include accepting heat
from a first fluid in the form of oil or bleed air, as taught by Norris ’955.
See Final Act. 9. The Examiner explains that Norris ’954 teaches “a heat
pipe to cool a core engine component,” and Norris ’955 teaches “that the
core engine component can be one of ‘oil from an oil system, oil from a
gearbox or bleed air from a high pressure compressor.’” Ans. 3. According
to the Examiner, the proposed modification “only changes (or adds to) the
specific core engine component that [Norris ’954] cools,” and, thus,
“consists of a simple substitution of one known element for another to obtain
predictable results.” Id. at 4 (citing KSR, 550 U.S. at 415 421). In this
regard, Appellant’s argument does not specifically address the Examiner’s
articulated reasoning for the proposed combination of teachings or explain
why the reasoning is lacking.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s conclusion that the subject matter of claim 18 would have been
obvious. Accordingly, we sustain the rejection of claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Norris ’954 and Norris ’955.
Claim 20
In rejecting claim 20, which depends from claim 17, the Examiner
finds that Norris ’954 “is silent about regulating heat pipe working fluid
pressure,” but finds that “Flores teaches, in Figure 1, the step of regulating a
pressure (2) of the working fluid in the oscillating heat pipe (col 5 11. 20-
29).” Final Act. 12. The Examiner determines that it would have been
obvious to modify the heat pipe of Norris ’954 with the pressure regulator of
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Flores “in order to facilitate compression to a pressure greater than the
saturation pressure of the steam (working fluid) at the borehole (evaporator
site; Flores col. 5 11. 26—29).” Id. at ll.3
Appellant argues that “[tjhere is no reason to employ” Flores’s
pressure regulator in Norris’954’s heat pipe. Appeal Br. 6. Appellant
asserts that Norris ’954 “discloses that sections of pulse detonation engines
can be subject to sudden pressure spikes and turbulence as a natural
consequence of the detonation process (paragraph 3),” and “[a] cooling
system works to prevent this (paragraph 4).” Id. According to Appellant,
“[bjecause of the cooling system, there is no reason to additionally employ a
pressure regulating system.” Id.
We are not persuaded by Appellant’s argument. Norris ’954 discloses
that “sections of detonation engines, especially sections of pulse detonation
engines, can be subject to sudden pressure spikes and turbulence as a natural
consequence of the detonation process.” Norris ’954 13. We agree with the
Examiner that “[t]he sudden pressure spikes cited by Appellant are
associated with combustion gases in an engine combustor, not the working
fluid in the heat pipe cooling system.” Ans. 5. Moreover, Appellant does
not proffer any evidence or persuasive technical rationale to explain why the
Examiner’s findings and reasoning with respect to regulating pressure of the
working fluid in the heat pipe are flawed or deficient. As discussed above,
the Examiner articulates adequate reasoning based on rational underpinnings
as to why one of ordinary skill in the art would have been led to modify the
3 In rejecting claim 20, the Examiner relies on the reasoning articulated in
the rejection of claim 7, which appears on page 11 of the Final Action. See
Id. at 13.
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heat pipe of Norris to include a pressure regulator (see Final Act. 11; Ans.
5), which Appellant does not persuasively refute.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s conclusion that the subject matter of claim 20 would have been
obvious. Accordingly, we sustain the rejection of claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Norris ’954 and Flores.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1—16, 21, and 22 under
35 U.S.C. § 112, second paragraph, as indefinite.
Independent claims 1 and 10 recite, in relevant part, “a plurality of
channels that define a circuit of a continuous loop through which a working
fluid flows . . . , wherein the plurality of channels oscillate and make
multiple passes within the circuit between the evaporator and the
condenser.” Appeal Br. 7, 8 (Claims App.) (emphasis added). The scope of
a plurality of “channels” that “oscillate” is unclear. An ordinary' meaning of
“oscillate” is “to move or travel back and forth between two points.”
Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) (emphasis added).
Given this ordinary' meaning, it is unclear what is meant by the plurality of
channels oscillating (i.e., moving) between the evaporator and condenser.
With respect to the channels, Appellant’s Specification describes that
“oscillating heat pipe 62 includes a series of meandering, hermetically sealed
channels 68 having a capillary dimension that define a continuous sealed
loop.” Spec. 140. The Specification also describes that “[a] pressure
difference between the fluid 70 in an evaporator 76 and the fluid 70 in a
condenser 78 drives the fluid 70 (which includes liquid slugs 72 and vapor
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Application 13/718,115
plugs 74) to move through the oscillating heat pump [Uc] 62 and between the
evaporator 76 to the condenser 78.” Id. (emphasis added). In other words,
the Specification describes that working fluid 70 moves back and forth (i.e.,
oscillates) between evaporator 76 and condenser 78, but it is unclear how the
channel structure itself would oscillate (i.e., move back and forth), as recited
in the claims. As such, the metes and bounds of the language reciting that
“the plurality of channels oscillate” is not clear to those skilled in the art
when the claims are read in light of the Specification.
DECISION
The Examiner’s decision rejecting claims 1—22 under 35 U.S.C.
§ 103(a) is reversed as to claims 1—16, 21, and 22 and affirmed as to claims
17-20.
We enter a new ground of rejection of claims 1—16, 21, and 22 under
35 U.S.C. § 112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, 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
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the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution 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. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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