Ex Parte Kopko et al

Patent Trial and Appeal Board

Aug 25, 2017

12726895 (P.T.A.B. Aug. 25, 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.
12/726,895 03/18/2010 William L. Kopko JOCI:0040/YOD/HEW 2181
75576 7590 08/28/2017
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
08/28/2017 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 WILLIAM L. KOPKO and MUSTAFA K. YANIK
____________

Appeal 2016-0052851
Application 12/726,8952
Technology Center 3700
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3–8, 10–18, 21, and 23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 15, 2015) and Reply Brief (“Reply Br.,” filed April 15, 2016), and
the Examiner’s Answer (“Ans.,” mailed February 17, 2016) and Final Office
Action (“Final Act.,” mailed May 11, 2015).
2 Appellants identify Johnson Controls Technology Company as the real
party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relates generally to free cooling
refrigeration systems” (Spec. ¶ 2).
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A refrigeration system comprising:
a free cooling system configured to exchange heat
between a cooling fluid and ambient air;
a heat exchanger common with the free cooling system
and a vapor-compression refrigeration system, the heat
exchanger configured to receive a refrigerant and to transfer heat
from the refrigerant to the cooling fluid, wherein the heat
exchanger is disposed upstream of a condenser, and wherein the
heat exchanger and the condenser are on a high-pressure side of
the vapor-compression refrigeration system;
a first circuit of the free cooling system, the first circuit
extending from a load to an inlet of an ambient heat exchanger,
through the ambient heat exchanger to an exit of the ambient heat
exchanger, from the exit of the ambient heat exchanger through
an evaporator of the vapor-compression refrigeration system,
and back to the load from the evaporator; and
a second circuit of the free cooling system, the second
circuit extending from the exit of the ambient heat exchanger,
through the heat exchanger common with the free cooling system
and the vapor-compression refrigeration system, and to the inlet
of the ambient heat exchanger.

REJECTIONS
Claims 1, 3–5, 7, 8, 10–18, 21, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chambers (GB 2145217, pub. Mar. 20, 1985),
Roberto (US 6,640,561 B2, iss. Nov. 4, 2003), and Jonsson (US 4,199,955,
iss. Apr. 29, 1980).
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Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chambers, Roberto, Jonsson, and Sulzer (CH 392576, iss. May 31, 1965).

ANALYSIS
Independent Claims 1, 10, and 18 and Dependent Claims 3–5, 7, 8, 11–17,
21, and 23
Appellants argue claims 1, 3–5, 7, 8, 10–18, 21, and 23 as a group
(App. Br. 6–12). We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner
acknowledges that Chambers fails to disclose a heat exchanger upstream of a
condenser, i.e., “a heat exchanger common with the free cooling system and
a vapor-compression refrigeration system, . . . wherein the heat exchanger is
disposed upstream of a condenser,” as recited in claim 1 (Final Act. 4). The
Examiner cites Jonsson to cure the deficiency of Chambers (id. at 5). And
the Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of Appellants’ invention “to have
provided Chambers with a condenser downstream of the heat exchanger as
taught by Jonsson in order to liberate excess heat from the refrigerant and
allow the refrigeration cycle to function more efficiently” (id. (citing
Jonsson, col. 3, ll. 15–20)).
Appellants assert that the Examiner erred in rejecting independent
claim 1 under § 103(a) because the hypothetical combination of Chambers
and Jonsson, “at most, teaches or fairly suggests a heat exchanger common
to a vapor-compression refrigeration cycle and a free cooling loop
downstream of a water-cooled heat exchanger, rather than a common heat
exchanger disposed upstream of a condenser,” as recited in claim 1 (App.
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Br. 8–9). Appellants ostensibly maintain that the combination of Chambers
and Jonsson, thus, at best, teaches or suggests “adding the heat exchanger of
Jonsson upstream of the ‘top heat exchanger in system 10’ of Chambers
[i.e., the claimed ‘heat exchanger common between a free cooling system
and a vapor-compression refrigeration system’]” (id. at 9).3 But Appellants
offer no persuasive argument or technical reasoning to support that position.
We also are not persuaded by Appellants’ further argument that
“adding the heat exchanger of Jonsson downstream of the ‘top heat
exchanger in system 10’ of Chambers would be superfluous, and thus, not
obvious to one of ordinary skill in the art” (id. at 9–10). Appellants argue
that positioning an additional heat exchanger downstream of the “top heat
exchanger in system 10” would be superfluous because the “top heat
exchanger in system 10” is already condensing the refrigerant flowing
through the chiller 10 of Chambers” (id.).4 Yet, even assuming, that the
Chambers heat exchanger condenses refrigerant flowing through chiller 10,
positioning the Jonsson condenser downstream of the Chambers heat
exchanger still would not be superfluous because, as the Examiner observes,
the Jonsson condenser “may then serve to condense any remaining vapor
refrigerant or provide subcooling,” both of which function to increase the
efficiency of the refrigeration system (Ans. 15).

3 As Appellants observe, adding the Jonsson condenser upstream of the
Chambers heat exchanger is inconsistent with the claim language (App.
Br 9). It also is not what the Examiner proposed.
4 Appellants observe, “it appears that the chiller 10 of Chambers is a vapor-
compression refrigeration cycle, and that the ‘top heat exchanger in
system 10’ is a condenser” (App. Br. 10).
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Appellants also argue that the Examiner’s proposed modification of
Chambers would not have been obvious because adding the heat exchanger
of Jonsson downstream of the “top heat exchanger in system 10” of
Chambers would not change the functional properties of the system and
would add an extra component (and extra expense) to the system without
any additional benefit (App. Br. 10–11). Yet Appellants do not dispute the
Examiner’s finding that the additional heat exchanger provides additional
heat dissipation and, therefore, increased efficiency and reduced compressor
operating temperature (Ans. 15). To the contrary, Appellants concede that
“adding the heat exchanger of Jonsson to the system of Chambers may
possibly enhance efficiency of the system of Chambers” (Reply Br. 3).
Appellants argue that the added expense of the heat exchanger
outweighs any potential benefit and that adding a heat exchanger is
inconsistent with Chambers’s intended purpose of constructing an air
conditioning system that is relatively inexpensive (App. Br. 11; see also
Reply Br. 3–4). But Appellants identify no evidence of record, short of
attorney argument, to support that position. Cf. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (attorney argument cannot take the place of
evidence in the record).
Moreover, even assuming arguendo that Chambers and Jonsson would
not have been combined for economic reasons, this does not mean that the
combination would have been non-obvious to a person of ordinary skill in
the art. Appellants do not dispute that using a plurality of heat exchangers
on the high pressure side of a refrigeration system is well-known (see
Ans. 13). Nor do Appellants contend that there is any technical
incompatibility to prevent the Examiner’s proposed combination of
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Chambers and Jonsson. “[T]he fact that the two disclosed apparatus would
not be combined by businessmen for economic reasons is not the same as
saying that it could not be done because . . . there was some technological
incompatibility that prevented their combination. Only the latter fact is
telling on the issue of nonobviousness.” Orthopedic Equip. v. United States,
702 F.2d 1005, 1013 (Fed. Cir. 1983).
Finally, Appellants argue that the Examiner’s position is “clearly
based on hindsight improperly gained from the present disclosure” and that
“the examiner failed to produce at least an articulated reasoning with a
rational underpinning to support the hypothetical combination of the discrete
components of Chambers and Jonsson” (App. Br. 12).
As described above, the Examiner provides articulated reasoning with
some rational underpinning to support the obviousness conclusion.
Specifically, the Examiner finds that it would have been obvious to provide
Chambers with a condenser downstream of the heat exchanger, as taught by
Jonsson, “in order to liberate excess heat from the refrigerant and allow the
refrigeration cycle to function more efficiently” (Final Act. 4–5 (citing
Jonsson col. 3, ll. 15–20)). It is clear from the record that the Examiner’s
rejection is based on the disclosures of Chambers and Jonsson, and not on
the disclosure of Appellants’ application.
We are not persuaded that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s
rejection of claim 1, and claims 3–5, 7, 8, 10–18, 21, and 23, which fall with
claim 1.
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Dependent Claim 6
Claim 6 depends from independent claim 1. Appellants do not present
any argument in support of the patentability of dependent claim 6 except to
assert that Sulzer does not cure the alleged deficiencies of Chambers,
Roberto, and Jonsson, and that claim 6 is allowable for the same reasons set
forth with respect to claim 1 (App. Br. 12–13). We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection of
dependent claim 6.
DECISION
The Examiner’s rejections of claims 1, 3–8, 10–18, 21, and 23 under
35 U.S.C. § 103(a) are 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)(1)(iv).

AFFIRMED