Ex Parte Reis et alDownload PDFPatent Trial and Appeal BoardSep 29, 201712723651 (P.T.A.B. Sep. 29, 2017) Copy Citation 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. 12/723,651 03/14/2010 Bradley E. Reis PI 124-1 5787 146032 7590 10/03/2017 AHvanoeH Fnerav Teohnnlnaies; T T .P EXAMINER Timothy R. Krogh 11709 Madison Avenue THOMPSON, JASON N Lakewood, OH 44107 ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/03/2017 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): T im. Krogh @ GrafT ech .com patents @ GrafT ech. com Patrick. Floy d @ GrafT ech. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRADLEY E. REIS, MARK SEGGER, JAMES T. PETROSKI, ROBERT ANDERSON REYNONDS III, JULIAN NORLEY, MARCO NAPOLITANO, MARTIN DAVID SMALC, KIM E. FLEDDERMAN, ANDREW JUSTIN FRANCIS, VICTOR WILLIAM LEIGHT, and DAVID M. KASCHAK Appeal 2015-003578 Application 12/723,651 Technology Center 3700 Before JENNIFER D. BAHR, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bradley E. Reis et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 4, 6, and 8—20. Appeal Br. 3. Claims 3, 5, and 7 have been withdrawn. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is GrafTech International Holdings Inc. Appeal Br. 3. Appeal 2015-003578 Application 12/723,651 CLAIMED SUBJECT MATTER Appellants’ disclosed invention “relates to an improved high temperature heat exchanger, specifically a graphite energy receptor for use in the solar thermal process, which provides for greater and more uniform heat transfer as an element of a solar power system.” Spec. 12. Claims 1, 12, and 16 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A heat exchanger system, comprising: (a) a thermal element comprising a surface; (b) a heat spreader comprising at least one sheet of compressed particles of exfoliated graphite having a density of at least about 0.6 g/cc, an in-plane thermal conductivity of at least 140 W/m-K and a thickness of 0.05 to 1 mm, and further comprising a first surface and a second surface, wherein the heat spreader [is] positioned relative to the thermal element so that the heat spreader [is] at least partially wrapped around the thermal element such that the heat spreader [is] in a thermal transfer relationship with a portion of the thermal element surface; (c) a substrate comprising graphite, wherein the substrate [is] positioned relative to the heat spreader so that the substrate [is] in a thermal transfer relationship with the heat spreader; and (d) an energy collection panel, wherein the energy collection panel [is] in a thermal transfer relationship with the heat spreader to facilitate heat transfer between the energy collection panel and the thermal element. 2 Appeal 2015-003578 Application 12/723,651 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hurlbert US 2003/0230399 A1 Dec. 18,2003 Asmussen US 2006/0272796 A1 Dec. 7,2006 Reis US 2008/0062651 A1 Mar. 13,2008 Metz US 2008/0086965 A1 Apr. 17,2008 REJECTION The following rejection is before us for review: Claims 1, 2, 4, 6, and 8—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hurlbert, Reis, and Metz, as evidenced by Asmussen. Final Act. 2—7. ANALYSIS Appellants argue that the rejection is improper because of allegations that the applied references are non-analogous art. See Appeal Br. 6—12. After careful consideration of the record before us, Appellants’ arguments do not apprise us of error in the Examiner’s factual findings from Hurlbert, Reis, or Metz, which are supported by a preponderance of the evidence, or the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on prior art teachings. In short, we sustain the Examiner’s rejections based on the reasoned positions set forth therein and in light of the Examiner’s thorough responses to Appellants’ arguments. See Final Act. 2—7; Ans. 2—8. We address Appellants’ principal assertions below simply as a matter of emphasis. 3 Appeal 2015-003578 Application 12/723,651 Specifically, Appellants assert that Hurlbert is not analogous art because it serves a different function, or solves a different problem, than the present invention. See Appeal Br. 7—8. Appellants also assert that Reis is not analogous art either, for reasons substantially similar to those proffered against Hurlbert. See id. at 9—10. Finally, Appellants assert that Metz is not analogous art because it is not specifically drawn to the field of heat exchange. See id. at 10-11. These assertions are not persuasive of error in the Examiner’s rejection. Regarding the issue of analogous art, we note that the two-prong test to define the scope of analogous prior art is (1) “whether the art is from the same field of endeavor, regardless of the problem addressed,” and (2) even “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 Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted); see also Appeal Br. 7 (identifying the same two-fold determination). Here, we agree with the Examiner’s determination that Hurlbert and Reis both fall within a reasonably identified field of heat exchange or transfer, same as the present invention, regardless of the intended direction of the energy transfer. See Ans. 3—6. As to Metz, we note that this reference was relied on only as evidence of a suitable material for a structural substrate that includes graphite. See Final Act. 3^4. Thus, based on the limited scope of the teaching relied on from Metz, its teaching is reasonably pertinent to a problem with which Appellants were concerned, namely, choosing a suitable substrate material to have sufficient high strength properties (see, e.g., Spec. 172), such that Appellants’ assertion 4 Appeal 2015-003578 Application 12/723,651 does not apprise us of error in the Examiner’s conclusion that Metz is analogous art as evidence of a suitable substrate material. Moreover, as the Examiner concisely reiterates in the Answer, Hurlbert discloses all of the structural limitations recited in the claimed heat exchanger system, lacking only the explicit disclosure of certain materials, for which Reis and Metz were simply relied on as evidence that such materials were known and suitable for use in a heat exchanger system. See Ans. 2—3, 8. The Examiner’s reliance on Reis and Metz as evidence of known suitable materials, obvious for use in Hurlbert’s heat exchanger system, is reasonable, and Appellants do not persuasively explain how substituting such known materials would have been unpredictable or somehow beyond the level of ordinary skill in the art. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons discussed supra and those well expressed in the Examiner’s Answer. After careful consideration of all the evidence of record, Appellants’ arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection. DECISION We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4, 6, and 8—20 under 35 U.S.C. § 103(a) as being unpatentable over Hurlbert, Reis, and Metz, as evidenced by Asmussen. 5 Appeal 2015-003578 Application 12/723,651 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)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation