Ex parte Roland

Board of Patent Appeals and Interferences

Feb 25, 1999

08249400 (B.P.A.I. Feb. 25, 1999)

Application for patent filed May 26, 1994.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte RUSSELL A. ROLAND

Appeal No. 97-4249
Application No. 08/249,4001

ON BRIEF

Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally
rejecting claims 1-9 and 11-20, which constitute all of the
Appeal No. 97-4249
Application No. 08/249,400
Our understanding of this reference was obtained from a2
PTO translation, a copy of which is enclosed.
2
claims remaining of record in the application, claim 10 having
been canceled.
The appellant's invention is directed to a thermal storage
system for buildings.
The subject matter before us on appeal is illustrated by
reference to claim 1, which has been reproduced in an appendix
to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Wasielewski 2,656,157 Oct. 20,
1953
Holowczenko et al. (Holowczenko) 4,757,690 Jul. 19,
1988
Foley 4,827,735 May 9,
1989
Mantegazza et al. (Mantegazza) 5,228,504 Jul. 20,
1993
O'Neal 5,372,011 Dec. 13,
1994
(Filed Aug. 30, 1993)
Japanese Application
(Oogushi et al. ) 53-11343 Feb. 1, 19782
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
Appeal No. 97-4249
Application No. 08/249,400
3
(1) Claims 1, 4-6, 9 and 17-20 on the basis of O'Neal, Oogushi
and Wasielewski.
(2) Claims 2 and 3 on the basis of O'Neal, Oogushi, Wasielewski
and Foley
(3) Claim 7 on the basis of O'Neal, Oogushi, Wasielewski and
Holowczenko.
(4) Claim 8 on the basis of O'Neal, Oogushi, Wasielewski and
Mantegazza.
(5) Claims 11-16 on the basis of O'Neal, Oogushi, Wasielewski,
Holowczenko and Mantegazza.
The rejections are explained in the Examiner's, Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
All of the examiner's rejections are under 35 U.S.C. §
103. The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention.
Appeal No. 97-4249
Application No. 08/249,400
4
See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). To this
end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the
art and not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The appellant's invention is directed to heat storage and
exchange systems that can be used in buildings. Basically
speaking, these systems comprise a heat exchange medium through
which flow the fluids of two interrelated circulating systems.
One system removes heat from the medium through a first heat
exchanger located therein, causing the medium to become cooler.
The other system adds heat to the medium by means of a second
heat exchanger located in the medium. A primary feature of the
appellant's inventive improvements to such systems is the
"interweaving" of the conduits of the first heat exchanger with
the conduits of the second heat exchanger. This feature also
is set forth in the claims and, as will be explained below, is
a key factor in our analysis of the examiner's rejections. At
this point, therefore, it is necessary for us to interpret the
Appeal No. 97-4249
Application No. 08/249,400
5
term "interweaving." We begin by noting that, as explained in
the appellant's specification, each of the heat exchange
systems comprises a plurality of spaced, generally parallel
conduit legs which, together, form a continuous conduit that
actually
traverses a sinuous path. The parallel legs of one of the heat
exchangers are horizontally oriented, while those of the other
are vertically oriented. The relationship between the legs of
the two heat exchangers is best illustrated in Figure 4, where
parallel legs 106 of first heat exchanger 24 are horizontally
oriented, and legs 114 of second heat exchanger 26 are
vertically oriented. As explained on pages 37 and 38 of the
appellant's specification, and as viewed in Figure 4, the
adjacent and connected (at the bottom, as shown) legs 114 of
the first heat exchanger are slightly offset from one another,
sufficiently to allow the horizontal legs 106 of the other heat
exchanger to pass between them, much as in a woven fabric.
This is what the appellant has called "interweaving" of the
conduits of the first heat exchanger with regard to those of
the second.
The requirement for such "interweaving", appears in all
three of the independent claims. Claim 1 recites a first heat
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6
exchanger comprising a first conduit "having a generally
serpentine configuration with a plurality of spaced, generally
parallel legs" and a second heat exchanger with a second
conduit
having the same configuration. The claim then goes on to
require
"said first conduit at least partially interweaving between two
or more legs of said second conduit." Claims 11 and 16 set
forth
first and second heat exchangers each having a plurality of
spaced, generally parallel conduits which form first and second
"continuous" conduits, with "said conduits of said first heat
exchanger interweaving between two or more of said conduits of
said second heat exchanger." The examiner has rejected
independent claim 1 as being unpatentable over O'Neal in view
of Oogushi and Wasielewski, and independent claims 11 and 16 on
the basis of these three references plus Holowczenko and
Mantegazza. In each case, the examiner has first combined the
teachings of O'Neal and Oogushi in order to, in his opinion,
arrive at the basic structure recited in each of the
independent claims. Be that as it may, the examiner then has
taken the position that one of ordinary skill in the art would
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7
have found it obvious to interweave the conduits of the two
heat exchangers of the modified O'Neal structure in view of the
teachings of Wasielewski. We do not agree.
Wasielewski discloses a heat transfer apparatus which, in
pertinent part, has a first heat exchanger comprising a
plurality of spaced, parallel horizontally oriented conduit 6
and a second heat exchanger comprising a plurality of spaced,
parallel vertically oriented conduits 7. These are each
separate conduits, which span the distance between,
respectively, vertical
walls 8 and horizontal walls 9. They do not form a serpentine
configuration, as required by claim 1, nor are they connected
together so that they form a continuous conduit, as required
by claims 11 and 16. While the rows of vertical conduits are
interposed between the rows of horizontal conduits, it is our
view that this does not constitute interweaving, as defined
above and required by the claims. Moreover, even if one were
to accept the examiner's position that Wasielewski discloses
an interweaved arrangement, the examiner has not pointed out,
and we fail to perceive, any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to
modify the Oogushi serpentine conduits, as transposed into the
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8
O'Neal apparatus, in such a fashion. The mere fact that the
prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). We find such suggestion to be lacking here.
The problem of lack of suggestion exists also in the
examiner's first combination of references, that is, the
modification of the O'Neal apparatus on the basis of the
teachings of Oogushi. The examiner has admitted that the
O'Neal heat exchangers are not of serpentine configuration
with a
plurality of spaced, generally parallel legs (Answer, page 4).
It is the examiner's position, however, that such an
arrangement is shown by Oogushi, and that it would have been
obvious to employ this in O'Neal "for the purpose of efficient
heat transfer" (Answer, sentence bridging pages 4 and 5).
This implies that Oogushi teaches that the serpentine
arrangement is more efficient than those of O'Neal, the
configurations of which were not disclosed. The examiner has
not pointed out, nor can we discern, any such teaching in
Oogushi. The fact is that in Oogushi both the prior art
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9
apparatus (Figure 1) and the inventive apparatus (Figure 3),
utilize a pair of serpentine heat exchangers, with the
improvement provided by Oogushi being the use of full length
plates 11 (Figure 3) rather than partial length plates 8
(Figure 1).
The teachings of the other references applied against
independent claims 11 and 16, as well as against various of
the dependent claims, fail to alleviate the deficiencies
pointed out above.
It is our conclusion that the teachings of the references
applied against independent claims 1, 11 and 16 fail to
establish a prima facie case of obviousness with regard to the
subject matter recited in each, and we therefore will not
sustain the
rejections of these claims or of the others, all of which
depend
from them.
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10
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA/jlb
Appeal No. 97-4249
Application No. 08/249,400
11
James R. Vance
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