Ex Parte Matteson et al

Patent Trial and Appeal Board

May 31, 2016

13063024 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/063,024 03/09/2011 Peter S. Matteson
54549 7590 06/03/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
PA7209US;
67097-1503US 1
CONFIRMATION NO.
9570
EXAMINER
ANDEREGG,ZACHARYR
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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 PETERS. MATTESON and
MICHAEL D. ARNER
Appeal2014-003860
Application 13/063,024
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003860
Application 13/063,024
STATEMENT OF THE CASE1,2
Peter S. Matteson and Michael D. Amer (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject claims 1-18. Claims
19 and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "geothermal power plants and,
more particularly, to a method and apparatus for operating the turbine inlet
and bypass valves thereof." Spec. i-f 1; Fig. 1. Claims 1 and 11 are
independent. Claim 1 is illustrative of the claimed subject matter and
recites:
1. A vapor expansion system of the type having in serial flow
relationship a turbine, a condenser, a pump and an evaporator
compnsmg:
a pneumatically actuated inlet valve with an actuator
moveable to a position for fluidly connecting the evaporator to a
turbine inlet by way of said inlet valve;
a conduit which fluidly interconnects said evaporator to
1 Appellants filed a Notice of Correction ("Notice") dated May 5, 2014, which
included a revised Claim Appendix. We consider the claims submitted with
the Notice as the claims that are before us for review for the reasons stated in
the Notice.
2 In the Final Action, the Examiner rejected claims 8 and 18 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. See Final Act. 2-3. In so doing,
the Examiner suggested a correction to the language of those claims. By
Amendment dated July 29, 2013, Appellants adopted the Examiner's
suggested correction. In the Advisory Action mailed August 12, 2013, the
Examiner indicated the proposed amendments filed July 29, 2013 would be
entered for purposes of appeal. Consequently, the aforementioned rejection
of claims 8 and 18 under 35 U.S.C. § 112, second paragraph, is moot and not
before us on appeal.
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Application 13/063,024
said actuator such that pressurized refrigerant from said
evaporator is selectively caused to move said actuator to open
said pneumatically actuated inlet valve.
REJECTIONS
I. Claims 1, 3, 7, and 8 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McClanahan (US 2004/0107700 Al; pub.
June 10, 2004) and Tanaka (US 5,005,370; iss. Apr. 9, 1991).
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McClanahan, Tanaka, and Ring (US 4,749,001; iss. June 7, 1988)
(hereinafter "Ring '00 l ").
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
overMcClanahan, Tanaka, and Smith (US 4,800,737; iss. Jan. 31, 1989).
IV. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McClanahan, Tanaka, and Ziwica (US 2006/0039762
Al; pub. Feb. 23, 2006).
V. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McClanahan, Tanaka, and Ring (US 4,749,000; iss. June
7, 1988) (hereinafter "Ring '000").
VI. Claims 11, 13, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McClanahan, Tanaka, and Ring '001.
VII. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McClanahan, Tanaka, Ring '000, and Ring '001.
VIII. Claim 14 stands rejected under 35 U.S.C. § 103(a)as unpatentable
over McClanahan, Tanaka, Ring '000, and Smith.
IX. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McClanahan, Tanaka, Ring '000, and Ziwica.
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Claims 1, 3, 7, and 8
ANALYSIS
Appellants do not present arguments for dependent claims 3, 7, and 8
separate from those presented for "all claims," including independent claim
1. See Br. 2-3. As such, Appellants argue claims 1, 3, 7, and 8 together as a
group. We select claim 1 as representative. See 37 C.F.R. 41.37(c)(l)(iv)
(2015). Claims 3, 7, and 8 stand or fall with claim 1.
Regarding claim 1, the Examiner finds that McClanahan teaches "a
vapor expansion system (see Fig. 1) having in serial flow relationship a
turbine (106), a condenser (109), a pump (111) and an evaporator (101 ),
comprising an inlet valve (105) fluidly connecting the evaporator to a
turbine inlet (104) by way of said inlet valve." Final Act. 3; Ans. 3. The
Examiner further finds that Tanaka teaches:
a pneumatically actuated valve (50) with an actuator (70)
moveable to a position, as well as a conduit (7 6) which fluidly
interconnects an evaporator to said actuator such that pressurized
refrigerant from said evaporator is selectively caused to move
said actuator to open said pneumatically actuated valve (column
10, lines 35-40).
Final Act. 3; see also Ans. at 3--4. The Examiner concludes:
It would have been obvious to a person having ordinary skill in
the art to substitute the pneumatically actuated valve and conduit
of Tanaka for the valve of McClanahan such that the evaporator
was fluidly connected to the turbine inlet by the valve and the
conduit fluidly interconnected the evaporator to the actuator such
that the pressurized refrigerant from the evaporator is selectively
caused to move the actuator to open the pneumatically actuated
valve. In doing so, pressure in the evaporator would be able to
be relieved in case it got too high, and the pressurized potential
energy released from the evaporator would be put to mechanical
use instead of being wasted by being released to the atmosphere.
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Application 13/063,024
Final Act. 3--4; see also Ans. 4.
At the outset, Appellants assert that it is not their contention that the
McClanahan and Tanaka references are necessarily "non-analogous." Br. 3.
Our reviewing court has established guidance for determining whether prior
art is analogous to a claimed invention:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (citing In re Deminski,
796 F.2d 436, 442 (Fed. Cir. 1986)).
In the McClanahan system, pressurized refrigerant is used to power a
turbine. See McClanahan i-f 76; Fig. 1. In the Tanaka system, pressurized
refrigerant is used in a refrigerating system to cool a space, such as, for
example, air conditioning of an automobile. See Tanaka, col. 1, 11. 6-17;
col. 2, 11. 3-5, 38--43. Since both McClanahan and Tanaka are directed to
thermo-fluid systems in which a pressurized refrigerant delivered from an
evaporator is used to perform work, we deem these references to be from the
same field of endeavor as the claimed invention and, therefore, analogous
art.
In addition, Appellants assert that "the control being affected by
Tanaka, et al. is so distinct from the control required by the claims that there
would be no reason to utilize anything shown in Tanaka, et al. to achieve the
claimed control over a turbine." Br. 3. Such a statement is an expression of
opinion and speculative attorney argument and is not founded on a factual
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basis in the record before us. Lawyer arguments and conclusory statements
which are unsupported by factual evidence are entitled to little probative
value. In re De Blauwe, 736, F.2d 699, 705 (Fed. Cir. 1984) (arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
Br. 3.
Appellants further contend:
First, Tanaka, et al. discloses an air conditioning system.
Its evaporator does not communicate with a turbine at all.
Moreover, its valve is an expansion device which is utilized to
control superheat delivered to a compressor.
There is no corresponding structure in the McClanahan
power cycle. Simply, there would be nothing that would suggest
utilizing an evaporator fluid in McClanahan, et al. to control the
valve 105. Tanaka's valve 50 teaches control for superheat.
There is no benefit of this control to the turbine inlet valve of
McClanahan ....
Tanaka, et al., at best, discloses a control completely
unrelated to turbines, while McClanahan, et al. discloses a
turbine. Nothing in the combination of references would teach
one skilled in this art to modify McClanahan in the manner
proposed.
In response, the Examiner states:
Tanaka has not been relied upon to teach a turbine, only to
provide the teaching that it is old and well known to utilize excess
pressure in an evaporator to actuate a valve in order to relieve the
excess pressure. It is noted that McClanahan provides the
teaching of the turbine, as well as the teaching of both an
evaporator and a valve downstream of the evaporator, which
corresponds to the disclosed structure of Tanaka.
Ans. 10.
At the outset, to the extent that Appellants are arguing that elements of
Tanaka must be able to be bodily incorporated into the McClanahan system
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for obviousness, we disagree. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, as
pointed out by the Examiner, the Tanaka reference, although directed toward
an air conditioning system, teaches one of ordinary skill in thermo-fluid
systems certain advantages in providing a valve actuated by a pneumatic
release of pressure from a pressure source such as an evaporator, namely,
excess pressure relief in the evaporator and improved system efficiency by
utilizing the evaporator alone rather than an external energy source to power
the turbine. See Final Act. 3--4; Ans. 3--4, 10-11.
Moreover, to the extent that Appellants are arguing the alleged
deficiencies of the references individually rather than considering the
Examiner's rejection as a whole, such argument is unavailing. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d at 425) (Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures).
Here, the Examiner relies on McClanahan, not Tanaka, for teaching,
inter alia, a turbine. See Final Act. 3; Ans. 3. Further, the Examiner relies
on Tanaka, not McClanahan, for teaching a pneumatically actuated valve
with an actuator moveable to a position, as well as a conduit which fluidly
interconnects an evaporator to the actuator such that pressurized refrigerant
from the evaporator is selectively caused to move the actuator to open the
pneumatically actuated valve. See Final Act. 3; Ans. 3--4. The Examiner
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also provides well-grounded reasons for combining the relied upon teachings
of McClanahan and Tanaka. See Final Act 3--4; Ans. 3--4, 10-11. That is, it
would be reasonable to substitute the pneumatically actuated valve and
conduit of Tanaka for the valve of McClanahan "such that the pressurized
refrigerant from the evaporator is selectively caused to move the actuator to
open the pneumatically actuated valve ... and the pressurized potential
energy released from the evaporator would be put to mechanical use instead
of being wasted by being released to the atmosphere." See Final Act. 4;
Ans. 4; see also id. at 10-11.
Appellants do not provide any persuasive evidence or argument to
apprise us of error in the Examiner's findings or conclusions. Moreover,
Appellants do not provide any evidence or argument sufficient to show that
the proposed modification would have been beyond the level of ordinary
skill in the art. Neither do Appellants provide any persuasive evidence or
argument sufficient to show that the proposed modification would have been
more than a predictable use of the prior art elements according to their
established functions. "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). "If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability." Id. at 417.
Appellants additionally contend:
In the final rejection, the Examiner argues that it would
have been obvious to modify the references to "utilize excess
potential energy." However, this is completely unsupported
technically and in this prior art. It is not proper to modify the
control of such complex systems without some assurance that the
modification would have a benefit and/or be successful. No such
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Br. 3.
teaching is found here, other than in Appellant's disclosure.
To which the Examiner responds:
Tanaka states (column 1, lines 11-17) that his expansion valve is
used to control the extent of a valve opening to keep the degree
of superheat at a predetermined level so that the efficiency of the
evaporator is kept at a high level and the flow rate of refrigerant
into the evaporator can be controlled. One having ordinary skill
in the art would appreciate that flow rate and pressure in a given
thermo-fluid system are proportional variables, and therefore the
teaching of Tanaka to provide a valve actuated by a pneumatic
release of pressure from a pressure source (the evaporator) would
certainly benefit one seeking to improve the turbine system of
McClanahan by utilizing an already available energy source of
excess pressure in the evaporator. In doing so, an increase in the
flow rate of refrigerant powering the turbine would be
experienced by the system, which would subsequently result in
an increased electrical output of the turbine due to an increased
angular velocity of the turbine blades. Furthermore, this
improvement in efficiency can be achieved without the use of an
external energy source by utilizing the excess potential energy
stored in the over-pressurized evaporator.
Ans. 10-11.
The Examiner's findings and conclusions are based on rational
underpinnings. Appellants do not apprise us of Examiner error. Further, to
the extent that Appellants are arguing hindsight, the Examiner's rejection
does not include knowledge gleaned only from the Appellants' disclosure.
Rather, for the reasons discussed above, the rejection takes into account the
teachings ofMcClanahan and Tanaka, i.e., knowledge that was within the
level of ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this regard, we agree
with the Examiner that "it is old and well known [as taught by Tanaka] to
utilize excess pressure in an evaporator to actuate a valve in order to relieve
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the excess pressure." See Ans. 10.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as unpatentable over McClanahan and
Tanaka. We further sustain the Examiner's rejection of dependent claims 3,
7, and 8, which fall with claim 1.
Claim 2
Appellants contend that, with respect to dependent claim 2: "[i]t is not
Appellant[s'] contention that a normally closed valve is a novel component
in a vacuum but the claim places the valve at a particular location.
However, nothing within Ring (001) would teach one to modify
McClanahan. Again, there must be a reason to so modify a reference." Br.
3.
The Examiner finds that, with regard to substituting the normally
closed pneumatically actuated valve of Ring ('001) for the pneumatically
actuated valve of the combination of McClanahan and Tanaka:
[O]ne having ordinary skill in the art would recognize that a
normally opened valve would not work in the modification of
McClanahan in view of Tanaka. The Ring '001 reference was
brought in to show that normally closed valves are old and well
known in the art as McClanahan nor Tanaka did not specify the
"normalcy" of their valves. If a normally opened valve was used
in the combination, when pressure in the evaporator (upstream of
the valve) became too high, the valve would be actuated to
decrease in aperture size, effectively further increasing the
pressure upstream of the valve until failure occurred in the
system. The only realizable option to one having ordinary skill
would be to provide a normally closed valve such that when
pressure in the evaporator increased, the excess pressure actuated
the valve to increase aperture size, thereby allowing a greater
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volume of refrigerant through the valve and in tum decreasing
the pressure build up in the evaporator. One having ordinary skill
in the art would have recognized the safety benefit to having a
self-regulating valve of this nature within a pressurized system
such as the one taught by McClanahan.
Ans. 11; see also id. at 4--5; Final Act. 4--5.
The Examiner's findings and conclusions are based on rational
underpinnings. Appellants have made no attempt to point out where the
Examiner's findings relative to the presence of a normally closed
pneumatically actuated valve in the prior art or in the combination of the
teachings of the prior art is deficient. As such, Appellants' argument does
not apprise us of Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of dependent claim 2 as unpatentable over McClanahan, Tanaka,
and Ring '001.
Claim 4
Br. 4.
Appellants contend that, with respect to dependent claim 4:
[I]t [is] not Appellant[s'] contention it invented the concept of a
pressure regulator, and that appears to be all that the Examiner
points to Smith to disclose.
However, there is nothing within Smith that would lead
one to provide such a regulator at the location required by the
claims in the McClanahan, et al. device.
In response to Appellants' argument, the Examiner finds that:
One having ordinary skill in the art would have appreciated the
use of a pressure regulator [of Smith] between an evaporator and
a pneumatically actuated valve [as taught by the combined
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teachings of McClanahan and Tanaka] because a pneumatically
actuated valve is designed to operate based upon increasing
pressure. Furthermore, one having ordinary skill would
recognize that for any practical valve, there exists a pressure at
which the valve would rupture, rendering a pressure regulator
extremely useful in ensuring safety from failure in the system
due to a maximum pressure being applied to the valve.
Ans. 12; see also id. at 5; Final Act. 5.
The Examiner's findings and conclusions are based on rational
underpinnings. Appellants have made no attempt to point out where the
Examiner's findings relative to the presence of a pressure regulator in the
prior art or in the combination of the teachings of the prior art is deficient.
Such an argument is insufficient to apprise us of Examiner error.
Accordingly, for the foregoing reasons, we sustain the
Examiner's rejection of dependent claim 4 as unpatentable over
McClanahan, Tanaka, and Smith.
Claims 5 and 6
6:
Br. 4.
Appellants contend that, with respect to dependent claims 5 and
Ziwica has nothing to do with the basic flow structure of
McClanahan, as modified, and would not suggest the use of any
such valve into the McClanahan system.
Again, it is not Appellant[ s '] contention it invented the
solenoid valve, nor a three-way valve with a vent port. Rather,
it is the use of such components at the claimed location which is
claimed here.
In response to Appellants' argument, the Examiner finds that:
[O]ne having ordinary skill in the art would recognize that
refrigerant used to actuate a pneumatic valve based upon excess
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pressure would need to be released from the pneumatic valve in
some capacity. Ziwica was relied upon to show that a three way
solenoid valve with a vent port is a viable solution that is old and
well known in the art for this purpose. Furthermore, one having
ordinary skill would have appreciated that the evaporator in the
system serves as a pressure input, and the pneumatically actuated
valve is receiving that pressure, and cannot release the pressure
back to the input. It would be within the realm of an ordinary
skilled artisan to seek to solve this problem by providing a three
way solenoid valve with a vent port to vent the excess pressure
in the pneumatically actuated valve back into the system so that
it could be utilized in performing work on the turbine.
Ans. 13; see also id. at 5-6; Final Act. 5-6.
The Examiner's findings and conclusions are based on rational
underpinnings. Appellants have made no attempt to point out where the
Examiner's findings relative to the presence of a three way solenoid valve in
the prior art or in the combination of the teachings of the prior art is
deficient. Such an argument is insufficient to apprise us of Examiner error.
Accordingly; for the foregoing reasons; we sustain the Examiner's
rejection of dependent claims 5 and 6 as unpatentable over McClanahan,
Tanaka, and Ziwica.
Claims 9-11, 13, 17, and 18
Appellants contend that, with respect to dependent claims 9 and 10,
independent claim 11, and dependent claims 13, 1 7, and 18:
[T]he Examiner argues that the Ring ('000) patent can be added
to McClanahan taken with Tanaka to show a pneumatic bypass
valve which is normally open. Again, it is not Appellant[ s ']
contention that such structure is itself novel, however, nothing
within Ring would suggest to a worker in this art to include such
structure into McClanahan, et al. at the claim location.
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Br. 4.
In response to Appellants' argument, the Examiner finds that:
[O]ne having ordinary skill in the art would appreciate that when
using excess potential energy in the system of McClanahan as
modified to improve efficiency of a turbine, it would be
advantageous to close the bypass of the turbine using the same
excess energy when additional pressure was to be released by the
normally closed pneumatic valve. If the bypass were to be left
open in this situation, the turbine would not benefit from the
additional pressure released and part of the excess energy would
be wasted by increasing the pressure in the line bypassing the
turbine. Because the turbine benefits from an increased flow rate
due to an increased pressure upstream of the turbine blades, it
would have been obvious to an ordinarily skilled artisan that
leaving a bypass of the turbine open in the case where pressure
was high would waste the potential energy in the flow that was
bypassing the turbine. The only remedy to this is providing that
the valve in the bypass line close when the pressure in the
evaporator is high, and a normally open pneumatically actuated
valve would be obvious to use to close the bypass line because
used in conjunction with excess pressure from the evaporator
would allow the system to be self-regulating.
Ans. 13-14; see also id. at 6-8; Final Act. 6-7.
The Examiner's findings and conclusions are based on rational
underpinnings. Appellants have made no attempt to point out where the
Examiner's findings relative to the presence of a normally open bypass valve
in the prior art or in the combination of the teachings of the prior art is
deficient. Such an argument is insufficient to apprise us of Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejections of dependent claims 9 and 10 as unpatentable over McClanahan,
Tanaka, and Ring '000 and of independent claim 11, and its dependent
claims 13, 17, and 18, as unpatentable over McClanahan, Tanaka, and Ring
'001.
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Claim 12
Appellants contend that, with respect to dependent claim 12 "[t]his
claim is improperly rejected for the reasons set forth above with regard to
claim 2 and for those set forth above with regard to claim 11." Br. 5.
As we find no deficiency in the Examiner's rejection of claims 2 and
11, we also sustain the rejection of claim 12 as unpatentable over
McClanahan, Tanaka, Ring '000, and Ring '001.
Claim 14
Appellants contend that, with respect to dependent claim 14 "[t]his
rejection is improper for the reasons set forth above with regard to claim 4,
and for those set forth above with regard to claim 11." Br. 5.
As we find no deficiency in the Examiner's rejection of claims 4 and
11, we also sustain the rejection of claim 14 as unpatentable over
McClanahan, Tanaka, Ring '000, and Smith.
Claims 15 and 16
Appellants contend that, with respect to dependent claims 15 and 16
"[t ]his claim [sic] is improperly rejected for the reasons set forth above with
regard to claim 11, and further those set forth above with regard to claims 5
and 6." Br. 5.
As we find no deficiency in the Examiner's rejection of claims 5, 6,
and 11, we also sustain the rejection of claims 15 and 16 as unpatentable
over McClanahan, Tanaka, Ring '000, and Ziwica.
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DECISION
We AFFIRM the decision of the Examiner to reject claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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