Ex Parte Reis et al

Patent Trial and Appeal Board

Sep 29, 2017

12723651 (P.T.A.B. Sep. 29, 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.
12/723,651 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 Claims 3, 5, and 7 have been withdrawn.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.
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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.
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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
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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.
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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
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