Ex Parte Rim

Patent Trials and Appeals Board

Mar 22, 2016

12092972 - (D) (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/092,972 05/08/2008 Seong-Hwang Rim
23413 7590 03/24/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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. CONFIRMATION NO.
MIF0002US 8095
EXAMINER
RAYMOND, KEITH MICHAEL
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEONG-HWANG RIM
Appeal2014-000937
Application 12/092,972 1
Technology Center 3700
Before ANTON W. PETTING, KENNETH G. SCHOPPER and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
10-13 and 16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
According to Appellant, "[t]he present invention relates to a cooler for
a transformer [and] ... adopts the generation cycle for the cooling method of
the transformer." Spec. 1.
1 According to Appellant, the real party in interest is Song-Hwang Rim. Br.
3.
Appeal2014-000937
Application 12/092,972
CLAHvIS
Claims 10-13 and 16 are on appeal. Claim 16 is the only independent
claim on appeal and recites:
16. A cooler for cooling a transformer containing insulation
oil therein, the cooler comprising:
a refrigerant boiler coupled to the transformer to cool the
transformer, said refrigerant boiler containing refrigerant therein
which has a boiling temperature within the range of an operating
temperature of the transformer, said refrigerant boiler coupled
with a refrigerant circulation pipe for circulating the refrigerant
there-through,
wherein the transformer is cooled as the refrigerant in said
refrigerant boiler is heated by heat exchange between the
transformer and the refrigerant, which causes the refrigerant to
boil and transform from a liquid phase to a gas phase and thereby
cooling the insulation oil of the transformer by the latent heat
absorbed during evaporation of the refrigerant;
a condenser for condensing and transforming the
refrigerant from the gas phase to the liquid phase, the condenser
installed at a position higher than the refrigerant boiler for
facilitating by gravity the circulation of the condensed refrigerant
through the refrigerant circulation pipe;
a pressure valve connected to an outlet of the refrigerant
boiler; and
an expander connected between the pressure valve and the
condenser,
wherein said cooling the transformer is performed using a
generation cycle.
Br. 27.
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Application 12/092,972
REJECTIONS
1. The Examiner rejects claims 10, 11, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Yamazaki2 in view ofBharathan3
and Official Notice.
2. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Yamazaki in view ofBharathan, Official Notice,
and Bounce. 4
3. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Yamazaki in view ofBharathan, Official Notice,
and Rim. 5
DISCUSSION
Claims 10, 11, and 16
With respect to claim 16, the Examiner finds that Yamazaki discloses
a refrigerant boiler, refrigerant circulation pipe, and a condenser as claimed.
Final Action 3 (citing Yamazaki 3, Fig. 4, Abstract). The Examiner
acknowledges that Yamazaki does not disclose a pressure valve, an
expander, or cooling the transformer using a generation cycle as claimed.
Id. The Examiner finds that Bharathan discloses a working fluid power
system using the technique of cooling a heat source with a refrigerant line
having a generation cycle and an expander. Id. (citing Bharathan Fig. 1 ).
The Examiner concludes that it would have been obvious to include
Bharathan's technique in Yamazaki's system because "one of ordinary skill
2 Yamazaki et al., JP 03041706, pub. Feb. 22, 1991.
3 Bharathan et al., US 2003/0167769 Al, pub. Sept. 11, 2003.
4 Bounce, US 1,841,083, iss. Jan. 12, 1932.
5 Rim, KR 20-0375025, pub. Feb. 4, 2005.
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Application 12/092,972
in the art would have recognized that applying the known technique would
have yielded predictable results, i.e. generating power from the vaporized
refrigerant" or to "increase system efficiency by producing power with the
refrigerant loop." Id. at 4, 7. The Examiner also takes Official Notice "that
pressure valves at the inlet of expanders are all well known in the gas
cooling art" and concludes that including a pressure valve for expanding gas
would be an obvious modification in the proposed combination and would
"provide for a control of the working fluid throughout the cooling
cycle." Id.; Ans. 7.
We agree with and adopt the Examiner's findings and conclusions
regarding the prior art with respect to claim 16. Final Action 2--4, 7-8; Ans.
2-10. For the reasons discussed below, we are not persuaded of error by
Appellant's arguments.
Appellant first argues that the rejection should be reversed because
Bharathan fails to teach a cooler for cooling a transformer, wherein cooling
is performed using a generation cycle. Br. 11. However, one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Thus, Appellant's argument against Bharathan is unpersuasive
because it fails to consider the combination relied upon by the Examiner.
Specifically, the Examiner acknowledges that Bharathan does not teach
cooling a transformer, which is why the Examiner proposes to combine
Yamazaki' s transformer system with Bharathan' s cooling technique.
Next, Appellant argues that "Yamazaki as a whole provides no reason
for one of ordinary skill in the art to modify its system in the manner
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Application 12/092,972
required to meet at least Claim 16." Br. 12 (citations omitted). Appellant
asserts that producing power within Yamazaki' s system "would be an added
function which is not necessary, and not taught or suggested by Yamazaki.
Id. at 12-13. Appellant also asserts that "neither Yamazaki nor Bharathan
suggests the desirability of the modification" proposed by the Examiner. Id.
at 13. Appellant's argument does not address the motivation for making the
proposed combination provided by the Examiner. The Examiner need not
find express teachings in the art to support the conclusion of obviousness.
Rather, an obviousness rejection may be based on "'some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."' KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F.3d at 988). Further, "'[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."' Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at
416). We find that the Examiner has articulated reasons for making the
proposed combination that are supported by the cited portions of the
references and Appellant does not persuasively identify any errors with the
Examiner's conclusion.
Appellant also argues Yamazaki and Bharathan are silent regarding
pressure valves and do not provide any teaching or suggestion "of a
desirability to include" a pressure valve as claimed. Br. 15. Further,
Appellant asserts that "Hiwata6 teaches away from the generation cycle and
component thereof," and thus, there is no suggestion or motivation to modify
6 Hiwata et al., 2004/0074254 Al, pub. Apr. 22, 2004.
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Application 12/092,972
Yamazaki with Bharathan and Hiwata to teach a pressure valve as claimed.
Id. at 16. As an initial matter, the Examiner cites Hiwata only as additional
prior art supporting the Examiner's Official Notice. See Ans. 8. As noted
by the Examiner, Appellant does not traverse the Examiner's assertion of
Official Notice. Based on the rejection before us, i.e. Yamazaki in view of
Bharathan and Official Notice, we are not persuaded of error by Appellant's
argument for the same reasons identified previously. Specifically,
Appellant's argument is based on attacking the references individually, does
not consider the combination proposed by the Examiner, and does not
address the Examiner's articulated reasoning supporting the conclusion of
obviousness.
Finally, Appellant argues that the Examiner uses an improper standard
of obviousness "based on improper hindsight, which fails to consider the
totality of [Appellant's] invention and to [sic] the totality of the cited
references." Br. 16-17. We are not persuaded. As discussed above, we
agree with the Examiner that each of the limitations claimed are taught or
suggested by the art of record. Appellant has not explained how the
rejection includes information "gleaned only from applicant's disclosure."
See In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971).
Based on the foregoing, we determine that the Examiner established a
prima facie showing of obviousness with respect to claim 16 without error.
Accordingly, we sustain the rejection of claim 16. Claims 10 and 11 fall
with claim 12.
Claim 12
With respect to claim 12, the Examiner finds that Yamazaki as
modified by Bharathan "does not explicitly disclose wherein the refrigerant
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boiler is installed in a body of the transformer to receive heat therefrom."
Final Action 5. The Examiner finds that Bounce teaches a system in which a
heat exchanger is installed in the body of a transformer. Id. (citing Bounce
col. I, 11. 16-19). The Examiner concludes that it would have been obvious
"to include the heat exchanging refrigerant boiler inside the transformer ...
in order to advantageously provide a compact system and protect system
components from the elements." Id. at 5---6.
We agree with and adopt the Examiner's findings regarding the scope
and content of the prior art with respect to claim 12. See Final Action 5---6;
Ans. 10-12. For the reasons discussed below, we are unpersuaded by
Appellant's arguments.
Appellant argues that there is "no suggestion or motivation to rely on
the disclosure of Bounce in combination with Yamazaki or any other
reference, to teach the claimed invention." Br. 19. In support, Appellant
asserts that "Bounce discloses a different basic cycle for energy conversion,
a different process for circulation and requires a main operation device." Id.
We are not persuaded. Appellant does not address the motivation provided
by the Examiner for the proposed combination and Appellant fails to explain
how the structure of Bounce leads to the conclusion that no suggestion or
motivation exists for the combination. Thus, we determine that the
Examiner established a prima facie showing of obviousness with respect to
claim 12 without error. Accordingly, we sustain the rejection of claim 12.
Claim 13
With respect to claim 13, the Examiner acknowledges that the
combination of Yamazaki and Bharathan does not explicitly disclose a
radiator coupled with the refrigerant boiler. Final Action 6. The Examiner
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Application 12/092,972
finds that Rim teaches a system with a transformer having a radiator coupled
to a refrigerant boiler. Id. (citing Rim Fig. 5). The Examiner concludes that
it would have been obvious to include a radiator coupled to the refrigerant
boiler "in order to advantageously increase cooling efficiency and save
operating costs by using air as a heat transfer medium." Id.
We agree with and adopt the Examiner's findings and conclusions
regarding the scope and content of the prior art with respect to claim 13. See
id.; Ans. 12-14. As discussed below, we are not persuaded by Appellant's
arguments.
Similar to claim 12, Appellant first argues that there is "no suggestion
or motivation to rely on the disclosure of Rim in the combination with
Yamazaki" because Rim discloses a different structure than the claim. Br.
21. We are unpersuaded for the same reasons identified above with respect
to claim 12. Further, Appellant argues that Rim cannot be relied upon as
prior art because Seong-Hwan Rim is the inventor for the present application
and the Rim reference and thus, it is not subject matter developed by another
person. However, the Examiner correctly notes that Rim was published in
2005, "well more than a year before applicant's effective filing date." Thus,
we determine that the Examiner established a prima facie showing of
obviousness with respect to claim 13 without error. Accordingly, we sustain
the rejection of claim 13.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 10-
13 and 16.
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).
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Application 12/092,972
AFFIRMED
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