Ex Parte HerringDownload PDFPatent Trial and Appeal BoardDec 13, 201713718115 (P.T.A.B. Dec. 13, 2017) Copy Citation 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): ptodocket @ cgolaw. com 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). 2 Appeal 2017-002393 Application 13/718,115 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 3 Appeal 2017-002393 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). 4 Appeal 2017-002393 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 5 Appeal 2017-002393 Application 13/718,115 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. 6 Appeal 2017-002393 Application 13/718,115 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.”). 7 Appeal 2017-002393 Application 13/718,115 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 8 Appeal 2017-002393 Application 13/718,115 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. 9 Appeal 2017-002393 Application 13/718,115 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 10 Appeal 2017-002393 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 11 Appeal 2017-002393 Application 13/718,115 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) 12 Copy with citationCopy as parenthetical citation