11203783 (B.P.A.I. Mar. 21, 2011)

Ex Parte Mahl

Board of Patent Appeals and InterferencesMar 21, 2011

11203783 (B.P.A.I. Mar. 21, 2011)

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. 11/203,783 08/15/2005 George Mahl III A04169US (98955.1P) 9180 22920 7590 03/22/2011 GARVEY SMITH NEHRBASS & NORTH, LLC LAKEWAY 3, SUITE 3290 3838 NORTH CAUSEWAY BLVD. METAIRIE, LA 70002 EXAMINER TYLER, CHERYL JACKSON ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 03/22/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte GEORGE MAHL III ____________________ Appeal 2009-010417 Application 11/203,783 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-010417 Application 11/203,783 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 8, 12, and 14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a method for combining a heat pump cycle with a power cycle. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of power generation comprising: (a) a power cycle; and (b) a heat pump cycle, the heat pump cycle supplying heat to the power cycle. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mucic Abdelmalek US 4,955,931 US 5,136,854 Sep. 11, 1990 Aug. 11, 1992 REJECTIONS Claims 1-4 and 8 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Abdelmalek. Ans. 3. Claims 6, 7 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Abdelmalek. Ans. 3. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Abdelmalek and Mucic. Ans. 3. Appeal 2009-010417 Application 11/203,783 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have reached the determination that the applied prior art establishes the lack of novelty of claims 1-4 and 8 and the prima facie obviousness of claims 5- 7, 12, and 14. Therefore the rejections of all claims on appeal are affirmed. Our reasons follow. We accept and adopt as our own the Examiner’s findings of fact from lines 4-7 on page 3 of the Answer. We agree with the Examiner’s finding that Abdelmalek discloses a heat pump cycle and a power cycle. We also agree with the Examiner’s ultimate finding of fact that Abdelmalek anticipates the subject matter of claims 1-4 and 8. With respect to the obviousness rejection of claims 6, 7 and 12, as unpatentable over Abdelmalek alone, we agree with the Examiner’s conclusion that the use of any well known refrigerant in the cycles of Abdelmalek would have been obvious to one of ordinary skill. We note that Appellant has not argued this conclusion of obviousness by the Examiner in the Brief. Finally, we also affirm the 35 U.S.C. § 103 rejection of claims 5 and 14 as unpatentable over Abdelmalek in view of Mucic. We agree with the Examiner’s finding that Mucic teaches a power cycle in which compressor 26 operates independently of the turbine 4. Ans. 4. We further agree with the Examiner’s conclusion that it would have been obvious to modify Abdelmalek so that the compressor 5 operates independently of turbine 15 in view of Mucic to yield a predictable result of more versatility of use and also lower the repair and replacement cost. In our view, this is the use of a known technique to improve a similar device with predictable results. Appeal 2009-010417 Application 11/203,783 4 Appellant’s main argument with regard to all three rejections is that Abdelmalek does not disclose a heat pump cycle but rather shows a refrigeration cycle. Br. 3-6. With respect to this argument, we adopt as our own the two responses provided by the Examiner starting on page 4 and continuing to page 5 of the Answer. In view of the fact that Appellant’s heat pump cycle and the first cycle of Abdelmalek show exactly the same components, operating exactly the same way, and in view of the fact that Appellant uses the terminology “refrigeration/heat pump cycle” in his own Specification (see, e.g., Spec. 2, l. 31), we hold that Abdelmalek discloses a heat pump and a power cycle in the same method. DECISION The rejection of claims 1-4 and 8 under 35 U.S.C. § 102 is affirmed. The rejection of claims 6, 7 and 12 under 35 U.S.C. § 103 is affirmed. The rejection of claims 5 and 13 under 35 U.S.C. § 103 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk GARVEY SMITH NEHRBASS & NORTH, LLC LAKEWAY 3, SUITE 3290 3838 NORTH CAUSEWAY BLVD. METAIRIE LA 70002