Ex Parte Nakhamkin

Board of Patent Appeals and Interferences

May 23, 2012

12818186 (B.P.A.I. May. 23, 2012)

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.
12/818,186 06/18/2010 Michael Nakhamkin 31-351-ACAES 7167
20736 7590 05/24/2012
Manelli Selter PLLC
2000 M STREET NW SUITE 700
WASHINGTON, DC 20036-3307
EXAMINER
JETTON, CHRISTOPHER M
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
05/24/2012 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 MICHAEL NAKHAMKIN
____________

Appeal 2012-003291
Application 12/818,186
Technology Center 3700
____________

Before JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Nakhamkin (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-21. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
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Application 12/818,186

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The Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. An adiabatic Compressed Air Energy
Storage (CAES) system, comprising:
a low pressure compressor structure
constructed and arranged to compress air and
to discharge the compressed air at temperature
sufficient to provide the only heat needed
in the system to produce power;
a first heat exchanger constructed and
arranged to extract heat from the compressed air
outputted by the low pressure compressor
structure;
a thermal storage device constructed and
arranged to store the extracted heat during off-peak
load periods;
a motor-driven high pressure compressor
constructed and arranged to receive compressed air
cooled by the first heat exchanger for further
compression;
an aftercooler constructed and arranged to
extract heat from the further compressed air
without any provision to store thermal energy;
an air storage constructed and arranged to
receive and store the further compressed air cooled
by the aftercooler;
a second heat exchanger constructed and
arranged to transfer heat stored in the thermal
storage device to preheat the compressed air
released from the air storage during
peak periods; and
a turbine structure constructed and arranged
to expand the preheated compressed air released
from the air storage to produce power,
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wherein the preheated compressed air
expanded by the turbine structure is heated only by
heat from the thermal storage device and without
burning fuel.

Independent claim 11 is directed to a method of utilizing and
recovering energy and heat obtained during low pressure compression of air
in an adiabatic compressed air energy storage (CAES) system, including the
step of “heating the compressed air released from the air storage using only
heat stored by the thermal energy storage device and without burning fuel.”
Emphasis added.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 1, 2, 7-11, 15-17, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Frutschi (US 4,523,432, issued Jun. 18, 1985).
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Frutschi and Bellac (US 5,384,489, issued Jan. 24, 1995).
Claims 4-6, 12-14, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Frutschi and Nakhamkin (US 4,872,307, issued Oct. 10.
1989).

OPINION
Obviousness based on Frutschi
The Examiner finds the Frutschi substantially discloses the subject
matter of independent claims 1 and 11 (Ans. 4-5), “except for the preheated
compressed air expanded by the turbine structure [being] heated only by heat
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Application 12/818,186

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from the thermal storage device and without burning fuel” (Ans. 5). The
Examiner turns to Frutschi’s disclosure which describes:
Air storage plants with so called “adiabatic
operation”—i.e. operation without a gas turbine
combustion chamber—are indeed known, in which
the air leaving the air reservoir before entry into
the gas turbine is heated by means of an air storage
device in which the air that has been compressed
was cooled during the charging process. However,
this arrangement is based on an air storage
circulation which differs considerably from that
described above as far as the turbine process and
compression process are concerned. The heat
storage device known in this way fulfil[l]s the
function of the otherwise usual combustion
chamber, so that the heat exchange constitutes a
genuine heating of the air to the gas turbine entry
temperature.

Col. 1, ll. 39-52. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to modify Frutschi’s air storage power
station by omitting the combustion chambers 13ʹ, 13ʺ and the recuperator 14
in order “to heat the compressed air only by heat from the thermal storage
device since it has been held that omission of an element and its function in
a combination where the remaining elements perform the same function as
before involves only routine skill in the art.”1 Ans. 7.
As stated by the Examiner, the Examiner and Appellant dispute
whether “omitting the combustion chambers [13ʹ, 13ʺ] and recuperator [14]

1 The Examiner appears to be relying on the Manual of Patent Examining
Procedure (MPEP) § 2144.04 II B, which states that “the omission of an
element and retention of its function is an indicia of obviousness.” See In re
Edge, 359 F.2d 896 (CCPA 1966).

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of Frutschi” would be obvious to a person of ordinary skill in the art. Ans.
10. When determining whether a claim is obvious, an Examiner must make
“a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is
improper. Id. “Rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Here, it appears that the Examiner relies on In re Edge, 359 F.2d 896
(CCPA 1966) and incorrectly finds that the modified Frutschi system having
the combustors 13ʹ, 13ʺ and recuperator 14 removed would not perform
differently than the Appellant’s compressed air energy storage (CAES)
system and thus, there is no patentable distinction. Ans. 4. However, we
cannot agree, because the Examiner’s analysis substitutes a per se rule of
obviousness, namely, that omission of elements while retaining the function
of the omitted element as a general proposition is not a patentable
distinction, for an apparent reason to modify Frutschi’s system underpinned
by a careful consideration of the facts. No comparison is provided between
the facts of Edge and the facts of the underlying application to explain how
the holding of Edge applies to the claims on appeal. As such, the
Examiner’s proposed reason why the omission of Frutschi’s combustors 13ʹ,
13ʺ and recuperator 14 is not a patentable distinction is not persuasive of the
obviousness of the subject matter of claims 1, 2, 7-11, 15-17, and 21.
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The Examiner also suggests that one of ordinary skill in the art
“would be motivated to remove the combustion process [from Frutschi]
because of the added maintenance and fuel costs required for a combustion
gas turbine.” Ans. 6-7. Appellant responds that Frutschi’s conventional
compressed air energy storage (CAES) system having a typical compressed
air energy storage (CAES) plant compressor is “directed by the reduction of
the power consumption and costs.” App. Br. 9. However, the presently
claimed adiabatic compressed air energy storage (CAES) system provides
the compressor with a very high discharge temperature, even though this
negatively increases the compressor’s power and costs, in order to
“positively increase[] the power generated by the stored compressed air due
to higher inlet temperature of the turbine.” Id. In particular, Appellant notes
that in Frutschi, the heat stored in the low pressure compressor heats the air
entering the recuperator 14 to 150°C to reduce the fuel consumption in the
combustion chambers, but this heat is not sufficient for the compressed air
entering the turbines 12ʹ, 12ʺ. Id. Thus, Frutschi requires combustion
chambers 13ʹ, 13ʺ to further heat the compressed air prior to entering the
turbines. Id. If the combustion chambers 13ʹ, 13ʺ of Frutschi were removed,
the air received by the turbines 12ʹ, 12ʺ would not be heated sufficiently to
produce power. Id. Thus, Appellant contends that “[a]lthough Frutschi may
disclose that air storage plants with adiabatic operation are known, there is
no suggestion in Frutschi that the a [sic] low pressure compressor structure
discharges the compressed air at a temperature sufficient to provide the only
heat needed in the system to produce power as in claim 1” and thus, Frutschi
requires the combustion chambers to produce the heat required. App. Br.
10.
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We agree with Appellant. The Examiner has failed to show by a
preponderance of the evidence that if the combustion chambers 13ʹ, 13ʺ and
recuperator 14 were removed from Frutschi’s air storage power station, the
remaining structure would produce sufficient heat for the air entering the
turbine to be expanded to produce power. In the Response to Argument
section of the Examiner’s Answer, the Examiner alleges that “[w]hether
[Frutschi’s] heat is sufficient or not to produce power is dependent on how
much power needs to be produced.” Ans. 16. However, we find the
Examiner’s allegation unpersuasive because in response to Appellant’s
argument that “without combustion in Frutschi ‘the air received by the
turbines 12ʹ, 12ʺ would not be heated sufficiently to produce power,” the
Examiner acknowledged that “this may be true for the specific turbines in
the preferred embodiments [of Frutschi].” Ans. 15. As the Examiner has
not proposed to modify Frutschi’s air storage power station with turbines
that would work with the lower temperature air resulting from the removal
of the combustion chambers 13ʹ, 13ʺ and the recuperator 14, we cannot agree
that it would have been obvious to one of ordinary skill in the art to remove
the combustion chambers 13ʹ, 13ʺ and the recuperator 14 from Frutschi’s air
storage power station.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 11, and claims 2, 7-10, 15-17, and 21 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Frutschi.
Obviousness based on Frutschi and Bellac
and Obviousness based on Frutschi and Nakhamkin

Turning to the Examiner’s rejections of the claims dependent upon
independent claims 1 and 11, we note that neither Bellac nor Nakhamkin
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Application 12/818,186

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cure the deficiency discussed supra with respect to the Examiner’s rejection
based on Frutschi alone. As such, we do not sustain the Examiner’s
rejections under 35 U.S.C. § 103(a) of claim 3 as unpatentable over Frutschi
and Bellac, and of claims 4-6, 12-14, and 18-20 as unpatentable over
Frutschi and Nakhamkin.

DECISION
We reverse the Examiner’s rejections of claim 1-21.

REVERSED

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