12302222 (P.T.A.B. Aug. 4, 2016)

Ex Parte Khelifa et al

Patent Trial and Appeal BoardAug 4, 2016

12302222 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/302,222 0610512009 Noureddine Khelifa 35161 7590 08/04/2016 DICKINSON WRIGHT PLLC 1825 Eye St., NW Suite 900 WASHINGTON, DC 20006 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. 8949-91810 5170 EXAMINER RUSSELL, DEVON L ART UNIT PAPER NUMBER 3744 MAILDATE DELIVERY MODE 08/04/2016 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 NOUREDDINE KHELIF A, WOLFGANG KRAMER, STEFFEN KORFMANN, and THOMAS PETERS Appeal2014-008291 Application 12/302,222 1 Technology Center 3700 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the Examiner's Final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is W ebasto SE. Appeal Br. 3. Appeal2014-008291 Application 12/302,222 BACKGROl.J1'-JD According to Appellants: The invention relates to a cold and/or heat accumulator comprising a plurality of carrier elements charged with a cold or heat storage medium and at least one first heat exchanger provided to be perfused by a first heat transfer medium and comprising at least one first serpentine-shaped hollow profile, wherein at least one carrier element is arranged at least between some of the first serpentines respectively formed by two adjacent first limbs and a first connecting zone. Spec. ,-r 1. CLAIMS Claims 1-7 are on appeal. Claim 1 is the only independent claim and recites: 1. A cold and/or heat accumulator comprising a plurality of carrier elements charged with a cold or heat storage medium and at least one first heat exchanger provided to be perfused by a first heat transfer medium and comprising at least one first serpentine- shaped hollow profile, wherein at least one carrier element is disposed between at least some of the first serpentines respectively formed by two adjacent first limbs and a first connecting zone, wherein the carrier elements are formed by a plurality of carrier element strips, and wherein each of the carrier element strips has an elongated shape in the direction from one of the two adjacent first limbs towards the other of the two adjacent first limbs. REJECTIONS 1. The Examiner rejects claims 1-7 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. 2 Appeal2014-008291 Application 12/302,222 2. The Examiner rejects claims 1--4 and 6 under 35 U.S.C. Â§ 102(b) as anticipated by Yildirim. 2 3. The Examiner rejects claim 5 under 35 U.S.C. Â§ 103(a) as unpatentable over Yildirim in view of Johnston. 3 4. The Examiner rejects claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Yildirim in view of Lang4 and Waseda. 5 DISCUSSION Indefiniteness The Examiner rejects claims 1-7 as indefinite based on the claim limitation "elongated shape in the direction from one of the two adjacent first limbs towards the other of the two adjacent first limbs." Final Act. 3. Specifically, the Examiner finds that "[t]he metes and bounds of the term 'elongated shape' is unclear and the term is not used anywhere in the [S]pecification. As best understood, the term means that the body has a dimension that extends in the defined direction." Id. at 2. Further, in response to Appellants' arguments the Examiner states: The examiner maintains the position that (1) the metes and bounds of "elongated shape" are unclear based on the originally filed disclosure, (2) use of the definition proposed by the appellant for the term 'elongated' would constitute the addition of new matter, and (3) even were the board to accept the appellant's proposed definition, the limitation should be given minimal patentable weight as the 'elongated' term only addresses 2 Yildirim et al., DE 10242463 Al, pub. Mar. 25, 2004. 3 Johnston, US 4,665,975, iss. May 19, 1987. 4 Lang et al., US 2004/0069456 Al, pub. Apr. 15, 2004. 5 Waseda et al., WO 2005/012791 Al, pub. Feb. 10, 2005. The Examiner cites Waseda et al., US 7,275,503 B2, iss. Oct. 2, 2007, as the English translation for Waseda '791. Final Act. 5. 3 Appeal2014-008291 Application 12/302,222 a rearrangement of parts or selection of dimensions which has no discussion or criticality in the [S]pecification. Ans. 6. We are persuaded of error by Appellants' argument that that one of ordinary skill in the art would understand the metes and bounds of the claimed "elongated shape." See Reply Br. 2. We agree with Appellants that the term elongated shape would be understood by one of ordinary skill in the art as a shape having a length larger than its width, and we find that, in the context of the claim as a whole, one of ordinary skill in the art would readily understand that the claim requires each of the carrier element strips to have a length that is longer than its width in the direction from one adjacent first limb to the other adjacent first limb. Id. Further, we find that the Examiner has not established that interpreting the claim in this manner constitutes new matter or indicates that the limitation should be given little patentable weight. Accordingly, we do not sustain this rejection. Anticipation We are persuaded that the Examiner erred in rejecting independent claim 1 as anticipated by Yildirim because the Examiner failed to show that Yildirim discloses a plurality of carrier element strips that each have an elongated shape under the interpretation of the claim found above. Appeal Br. 13-14. The Examiner states: The [E]xaminer concedes that Yildirim does not disclose that the carrier strips have a dimension from one serpentine limb toward the other that is longer than the width of the carrier strips, but maintains that the point is moot because this definition of "elongated" is not controlling and would constitute new matter as discussed above. 4 Appeal2014-008291 Application 12/302,222 Ans. 10. We disagree that this point is moot, and find that the Examiner has not established that Yildirim discloses a plurality of carrier element strips consistent with the interpretation of the claim discussed above. Thus, we do not sustain this rejection. Obviousness The Examiner has not relied on or cited any portion of the art of record that cures the deficiency in the rejection of claim 1, as discussed above. Thus, we do not sustain the rejections based on obviousness. CONCLUSION For the reasons above, we reverse the rejections of claims 1-7. REVERSED 5