Ex Parte Rini et alDownload PDFPatent Trial and Appeal BoardJul 20, 201611970442 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111970,442 01107/2008 23557 7590 07/22/2016 SALIW ANCHIK, LLOYD & EISENSCHENK A PROFESSIONAL ASSOCIATION PO Box 142950 GAINESVILLE, FL 32614 FIRST NAMED INVENTOR Daniel P. Rini 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. RTI.103XCD1 3066 EXAMINER MENDOZA-WILKENFE, ERIK ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): euspto@slepatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL P. RINI and LOUIS CHOW Appeal2014-007897 Application 11/970,442 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and MARK A. GEIER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Daniel P. Rini and Louis Chow (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-8 and 11-34. Claims 9 and 10 cancelled. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as Rini Technologies, Inc. Br. 4. Appeal2014-007897 Application 11/970,442 THE CLAIMED SUBJECT MATTER Claims 1, 3, 5, and 7 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A method for absorbing thermal energy from a heat source, compnsmg: absorbing thermal energy from a heat source so as to transfer thermal energy from the heat source to a primary coolant; transporting the primary coolant to a heat absorber comprising a phase change material so as to transfer thermal energy from the primary coolant to the heat absorber, wherein transfer of thermal energy from the primary coolant to the heat absorber melts at least a portion of the phase change material, wherein the heat absorber comprises primary coolant tubing embedded in the heat absorber, wherein the heat absorber comprises a host material having voids that are filled with the phase change material such that the phase change material is in thermal contact with the host material, wherein the primary coolant tubing is in thermal contact with at least a portion of the host material, wherein the primary coolant travels through the primaf'J coolant tubing, \'I/herein thermal energy is transferred from the primary coolant to the phase change material through the primary coolant tubing. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hitchin Klett Harrison Kramer Lee US4,491,172 US 6,399,149 Bl US 2002/0162339 Al US 6,827,135 Bl US 6,892, 798 B2 2 Jan. 1, 1985 June 4, 2002 Nov. 7, 2002 Dec. 7, 2002 May 17, 2005 Appeal2014-007897 Application 11/970,442 REJECTIONS I. Claims 1-8, 11-20, and 25-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hitchin and Klett. Non-Final Act. 2- 12. II. Claims 21, 23, 24, and 31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hitchin, Klett, and Kramer. Id. at 12. III. Claims 22 and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hitchin, Klett, and Lee. Id. at 12-13. IV. Claims 32-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hitchin, Klett, and Harrison. Id. at 13-14. OPINION Rejection I The Examiner finds that Hitchin, which "us[ es] a crystallization heat storage material" (Non-Final Act. 16), teaches all of the limitations of independent claim 1 except for "the heat absorber including a host material having voids that are filled with a phase change material such that the phase change material is in thermal contact with the host material." Id. at 2. For that limitation, the Examiner turns to Klett' s teaching of "a heat absorber including a host material having voids ... that are filled with a phase change material, such as paraffin" (Id. (citing Klett, 6:14--19)) and concludes that it would have been obvious "to use a host material having voids ... that are filled with a phase change material ... as the heat storage material in the system of Hitchin, the motivation being to increase the heat conductivity of the heat storage material and as an obvious substitution of one known heat storage material for another" (Id. at 3). 3 Appeal2014-007897 Application 11/970,442 The Examiner finds that "[ c ]rystallization heat storage materials ... and phase change heat storage materials ... are both known in the art for use in heat storage devices." Id. at 16. The Examiner acknowledges that the crystallization heat storage material taught in Hitchin is able to store heat indefinitely, whereas the phase change heat storage material taught in Klett is able to store and release energy quickly. Id. The Examiner, however, concludes that one of ordinary skill in the art would select a desired heat storage material "based on the intended use of the device, such as whether one wanted to store the energy for a short time or a long time" and that it would have been obvious to one of ordinary skill in the art to substitute Klett's carbon and paraffin heat storage material for Hitchin's crystallization material for "an intended use in which it is desired to absorb heat quickly and release the heat quickly." Id. Appellants identify the principle of operation of Hitchin as "us[ing] the heat storage medium to retain heat indefinitely until purposefully nucleated to the crystalline state." Br. 10 (emphasis omitted) (citing Hitchin, 4:67-5:8, 5: 19-23). Similarly, Appellants identify the purpose of Hitchin's system as provid[ ing] an efficient system for storing heat from a heat source that delivers heat slowly over time, such as absorbed solar energy, and more particularly, to provide an apparatus that "is able to store the heat energy for controlled periods of time, and even indefinitely, without any significant loss in such energy." Id. (emphasis omitted) (citing Hitchin, 1:43--45, 2:59---68). Appellants argue that it would not have been obvious to combine Klett with Hitchin because replacing Hitchin's crystallization heat storage material with Klett' s foam core filled with paraffin wax changes the principle of operation of Hitchin and renders the system of Hitchin 4 Appeal2014-007897 Application 11/970,442 unsatisfactory for its intended purpose. Br. 9. We agree with Appellants that the Examiner's proposed combination would contradict the intended purpose of Hitchin-storage of energy for controlled periods of time, even indefinitely, without any significant loss in energy. Hitchin, 1 :41--45; see also id. at 6:50-59 ("[The energy storage apparatus of Hitchin] provides for an efficient transfer of heat into and out of the heat storage medium and an efficient storage of heat in a form in which the latent heat of crystallization can be released at any selective time and at a predetermined, practically useful temperature or temperature range. Furthermore, the storage of latent heat of crystallization can occur for an indefinite period of time without any loss of this particular component during such period of storage."). We do not question that Klett' s foam core with paraffin wax could be used as a heat storage material in an energy storage device in situations where it may be desirable to have higher thermal conductivity in order to absorb heat quickly and release heat quickly. See Ans. 16. The problem with relying on that basis as the rationale for leading one of ordinary skill in the art to modify Hitchin, however, is that it completely overlooks both the stated purpose of Hitchin to indefinitely store heat for selective release at a later time, and the solution that Hitchin proposes to overcome problems of other systems in achieving that purpose-a particular heat storage medium having the properties of (i) melting and crystallizing in a particular temperature range, (ii) storing heat in a melted state, and (iii) releasing heat when nucleated into the crystalline state in the particular temperature range. See Hitchin, 1:4---6, 41--45, 6:51-59. Taking into account the importance of the particular heat storage material described in Hitchin for achieving the particular desired purpose, 5 Appeal2014-007897 Application 11/970,442 we find that the Examiner has not sutliciently explained how the teachings of Klett's foam core filled with paraffin wax could be applied to Hitchin's energy storage apparatus to provide a combination that would have maintained Hitchin's intended purpose of storage for a controlled period of time, even indefinitely, without any significant loss in energy and for a subsequent selective release of the energy. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the "predictable result" discussed in KSR also means "that the combination would have worked for its intended purpose"). The reason being proffered by the Examiner as to why a person of ordinary skill would have replaced Hitchin's crystalline storage material with Klett's foam core filled with paraffin wax-i.e., to increase the heat conductivity of the heat storage material for quick storage and quick release of energy-is undermined by Hitchin' s teachings conveying the importance of providing for the indefinite storage of energy and its selective release, rather than a quick release. In other words, the Examiner asserts that a desire to increase the heat conductivity of the heat storage material to provide for quick energy storage and quick energy release is the reason to combine Klett with Hitchin, but Hitchin is concerned with indefinite storage and selective release of energy (not quick storage and quick release). Moreover, Hitchin criticizes the use of phase change materials for "lead[ing] to formation of refractory phases with low latent heat of crystallization and low solubility." Hitchin, 1:37-39. Appellants explain that Klett' s foam core with paraffin wax would be unable to provide indefinite storage and selective release of energy as intended in Hitchin. More particularly, as to providing indefinite storage, 6 Appeal2014-007897 Application 11/970,442 Appellants argue that Klett's heat storage medium "cannot retain heat without loss and there is no indication that heat loss from the heat storage medium ... can be controlled" because Klett "will begin dissipating the heat absorbed as soon as the heat is applied." Br. 11 (emphasis omitted). As to the selective release of energy, Appellants argue that "nor is control available, for example via nucleation, for transferring heat out of the phase change material only when desired" because Klett instead relies on the heat absorber being large enough and being out of the sun long enough to work. Id. at 11-12. Appellants further argue that "Klett has no mechanism for triggering release of the heat or preventing heat from being released." Id. at 13 (emphasis omitted). Appellants additionally argue that "the existence of a heat sink material whose purpose is to remove and dissipate heat would not be an obvious material of choice for one of ordinary skill in the art to store energy---even for a short time." Br. 13. We agree. Because the reason to modify Hitchin proposed by the Examiner-to increase heat conductivity of the heat storage material for quick absorption and release of heat-is contrary to and undermines the intended purpose of Hitchin, and because the proposed modification would render Hitchin unsatisfactory for its intended purpose, we agree with Appellants that the Examiner has not articulated a reason with rational underpinnings to adequately explain why one of ordinary skill in the art would have modified Hitchin with the teachings of Klett. For the foregoing reasons, we are persuaded that the Examiner erred in concluding that the combination of Hitchin and Klett renders obvious the subject matter of independent claims 1, 3, 5, and 7, and we do not sustain the 7 Appeal2014-007897 Application 11/970,442 rejection of independent claims 1, 3, 5, and 7, nor claims 2, 4, 6, 8, 11-20, and 25-29 which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Hitchin and Klett. Rejections II-IV The Examiner rejects, under 35 U.S.C. § 103(a): claims 21, 23, 24, and 31 as unpatentable over Hitchin, Klett, and Kramer; claims 22 and 30 as unpatentable over Hitchin, Klett, and Lee; and claims 32-34 as unpatentable over Hitchin, Klett, and Harrison. Final Act. 12-14. Claims 21-23 and 32- 34 depend indirectly from independent claim 1, and claims 24, 30, and 31 depend indirectly from independent claim 3. App. Br. (Claims App.). The rejection of these claims relies on the Examiner's reasoning to combine Hitchin and Klett that we found to be deficient to render obvious the claimed subject matter. The Examiner does not explain how Kramer, Lee, and/or Harrison cures this underlying deficiency. Accordingly, for the reasons discussed supra, we do not sustain the Examiner's rejection, under 35 U.S.C. § 103(a), of: claims 21, 23, 24, and 31 as unpatentable over Hitchin, Klett, and Kramer; claims 22 and 30 as unpatentable over Hitchin, Klett, and Lee; and claims 32-34 as unpatentable over Hitchin, Klett, and Harrison. DECISION The Examiner's decision to reject claims 1-8 and 11-34 under 35 U.S.C. § 103(a) is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation