Ex Parte Sokolean et alDownload PDFPatent Trial and Appeal BoardJan 23, 201814413925 (P.T.A.B. Jan. 23, 2018) 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. 14/413,925 01/09/2015 Helmuth Sokolean 103684-102 1546 140282 7590 01/25/2018 Miirtha r'lillina T T P EXAMINER One Century Tower WEILAND, HANS R. 265 Church Street New Haven, CT 06510 ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 01/25/2018 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): ipdocketing@murthalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HELMUTH SOKOLEAN and MARTINUS GEORGE HOEKSTRA Appeal 2017-008595 Application 14/413,9251 Technology Center 3700 Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1—16 and 18—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 The Appellants identify Barcol-Air, Ltd. as the real party in interest. Appeal Br. 4. Appeal 2017-008595 Application 14/413,925 ILLUSTRATIVE CLAIM 1. A heat exchange assembly, comprising: a plurality of profiles arranged in an [sic] parallel array, each profile including: a first distal portion, a central portion and a second distal portion, wherein a length and a width of said central portion define a plane, said first distal portion having a curvature departing from said plane in a first direction, said second distal portion having a curvature departing from said plane in a second direction that is opposite said first direction; wherein each profile is separated from profiles adjacent to it by a distance greater than or equal to about 85 mm; an amount of piping that is thermally coupled with said profiles, wherein with respect to each of said profiles a portion of said piping is disposed along said length of said central portion of said profile and is parallel to said length of said central portion of said profile; a bracketing system configured to anchor said profiles and said piping to a surface; said piping configured to circulate fluid having a temperature differential with respect to an environment in which the heat exchange assembly is disposed, whereby thermal energy is transferred between said piping and said profiles by conduction and thermal energy is transferred radiantly and convectively between said profiles and said environment. CITED REFERENCES The Examiner relies upon the following references: Bergh US 4,766,951 Aug. 30, 1988 Schmitt-Raiser et al. US 5,042,570 Aug. 27, 1991 (hereinafter “Schmitt-Raiser”) 2 Appeal 2017-008595 Application 14/413,925 Klix US 5,950,720 US 6,073,407 US 7,140,425 B2 Sept. 14, 1999 June 13, 2000 Nov. 28, 2006 Sokolean Romero-Beltran Wieder Boussier Fischer et al. (hereinafter “Fischer”) US 2007/0034364 Al Feb. 15, 2007 US 7,725,011 B2 May 25, 2010 US 2013/0199772 Al Aug. 8, 2013 REJECTIONS I. Claims 1—3 and 6 are rejected under 35 U.S.C. § 103 as unpatentable over Sokolean, Klix, and Schmitt-Raiser. II. Claims 4 and 5 are rejected under 35 U.S.C. § 103 as unpatentable over Sokolean, Klix, Schmitt-Raiser, and Romero-Beltran. III. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over Sokolean, Klix, Schmitt-Raiser, and Wieder. IV. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Sokolean, Klix, Schmitt-Raiser, and Fischer. V. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Boussier and Klix. VI. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Boussier, Klix, and Bergh. VII. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Boussier, Klix, and Schmitt-Raiser. VIII. Claims 13—15 are rejected under 35 U.S.C. § 103 as unpatentable over Boussier, Klix, and Sokolean. IX. Claims 16, 19, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Sokolean and Klix. 3 Appeal 2017-008595 Application 14/413,925 X. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable over Sokolean, Klix, and Fischer. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Claims 1—8 (New Ground of Rejection) The Appellants argue that independent claim 1 was rejected erroneously, because Sokolean does not teach or suggest the feature “wherein each profile is separated from profiles adjacent to it by a distance greater than or equal to about 85 mm.” Appeal Br. 12—19. According to the rejection, Sokolean teaches or suggests this feature in its disclosure of air gaps 7 between air-conditioning panels 1, because — even though the air gaps 7 measure only 17 mm in the depicted embodiment — the reference states that “[t]he width of the air gaps should preferably be between 10% and 20% of the width of the air-conditioning panels,” such that recited “separation] ... by a distance greater than or equal to about 85 mm” is achieved simply as a function of panel width. See Answer 17—21 (citing Sokolean col. 2,11. 31—36, 45^47, 61—65). Alternatively, the rejection regards the claimed “distance” between “profiles” as corresponding to other dimensions disclosed in Sokolean that exceed the “85 mm” recited in claim 1 — such as the distance between the seats of pipes 5 of adjacent panels (shown in Sokolean’s Figure 2), which would amount to a distance of 110 to 170 mm, based upon Sokolean’s preferred values (col. 2,11. 60-63). Id. at 19. 4 Appeal 2017-008595 Application 14/413,925 The Appellants contend, in part, that the rejection fails to establish that Sokolean’s air gap 7 properly corresponds to the claimed profile separation distance. Appeal Br. 14—15. Fundamentally, however, claim 1 does not indicate how to determine the recited “distance” by which “each profile is separated from profiles adjacent to it.” Likewise, the Specification is silent on how to determine this “distance.” See Spec. H 32, 37. Accordingly, a person of ordinary skill in the art would not know how to ascertain the recited “distance” and, consequently, would not be able to determine metes and bounds of the recited subject matter of claim 1. Because it is unclear how the claimed “separation] ... by a distance greater than or equal to about 85 mm” should be determined, claim 1 violates the definiteness requirement of 35 U.S.C. § 112(b).2 See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard), Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”) 2 This Decision applies the Leahy-Smith America Invents Act (AIA) version of 35 U.S.C. § 112, because the filing date of the Application under review — January 9, 2015 (see Appeal Br. 1) — is after the September 16, 2012, effective date of Section 4(c) of the AIA (re-designating 35 U.S.C. § 112, 12 as 35 U.S.C. § 112(b)). 5 Appeal 2017-008595 Application 14/413,925 Before a proper review of the rejection under § 103 can be conducted, the subject matter encompassed by the claim must be reasonably understood without resort to speculation. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (a prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious — the claim becomes indefinite”). Therefore, we do not assess the merits of the rejections of independent claim 1 and claims 2—8 depending therefrom, under 35 U.S.C. § 103. Rather, pursuant to our authority under 37 C.F.R. § 41.50(b), we reverse the rejections of claims 1—8, pro forma, and enter a new ground of rejection of the claims as being indefinite under 35 U.S.C. § 112(b). This determination does not reflect on the merits of the underlying rejection based upon 35 U.S.C. § 103. Claims 9—15 The Appellants argue that independent claim 9 was rejected erroneously, because Boussier does not teach or suggest “said profiles being spaced apart from one another by a minimal distance sufficient to facilitate efficient convective heat exchange between said profiles and said environment.” See Appeal Br. 22—23. The Appellants allege that Boussier is silent on the matter of spacing between profiles and, still further, that Boussier teaches away from the recited “efficient convective heat 6 Appeal 2017-008595 Application 14/413,925 exchange,” because Boussier prevents air circulation, thereby avoiding convective heat exchange. Id. The Examiner properly finds that Boussier meets the limitation, through its disclosures in Figure 3 and in column 6, lines 36—38, stating that “[t]he exchanger as described enables a low AT between the temperature source of production and source of use, which is not the case of known devices.” See Non-Final Act. 10—11. Contrary to the Appellants’ teaching- away argument, as the Examiner explains, even though Boussier limits air circulation, convective heat transfer nevertheless occurs within the environment in Boussier’s module, such that Boussier does not teach away from the identified claim features. Answer 22—23. Further, the recited “efficient convective heat exchange” is an expression broad enough to encompass the operation of Boussier. Id. Indeed, as explained in the Answer, even a minimal to zero amount of convective heat exchange would be “efficient” to the operation of Boussier’s module. See id. at 23 (citing Boussier col. 4,1. 64—col. 5,1. 2). The Appellants also state that claim 9 was rejected erroneously, because the Klix reference is “not an analogous heat exchange system to that of claim 9.” Appeal Br. 23. However, the Appellants do not explain the basis for this assertion. In any event, the Examiner properly finds that Klix is analogous art, because it is concerned with heat exchange between profiles and an environment (Answer 23) — thus, Klix may be regarded as within the Appellants’ field of endeavor, as well as reasonably pertinent to the particular problem thereof. See In re Oetiker, 977 F.2d 1443, 1446-47 (Fed. Cir. 1992). For example, the Klix Abstract states that the reference concerns “[c]ei ling radiators for the heating or cooling of rooms”; thus, it is 7 Appeal 2017-008595 Application 14/413,925 within the Appellants’ stated field of endeavor — “[environmental temperature control” (Spec. 12). Finally, the Appellants assert that the “disclosed increase in space between profiles results in greatly increased heating and cooling efficiency per square foot of profile, as evidenced by the graphs included in [the] Evidence Appendix” — advantages that Klix neither teaches nor suggests, such that Klix does not teach or suggest the claimed “efficient convective heat exchange between said profiles and said environment.” Appeal Br. 24. However, as discussed above, the rejection relies upon Boussier — not Klix — for the identified feature of claim 9. See Non-Final Act. 11; Answer 22— 23. Moreover, the particular features characterized as being demonstrated in the Evidence Appendix (see Appeal Br. 24) are not set forth in claim 9. The Appellants also rely upon the foregoing arguments, with regard to dependent claims 10, 14, and 15 — each of which depends (directly or indirectly) from claim 9. Appeal Br. 24—27. Although the Appellants further allege that the cited references do not teach all the limitations of claims 10, 14, and 15, no additional arguments are provided. See id. In regard to dependent claims 11 and 12, respectively, the Appellants state that neither of the respective additional references, Bergh and Schmitt- Raiser, teaches or suggests claim 9’s “first and second group of profiles” or “facilitating] efficient convective heat exchange.” Id. at 25—26. These arguments are unpersuasive, because neither Bergh nor Schmitt-Raiser is relied upon with regard to these features. Instead, the rejection relies upon Boussier as teaching this subject matter. See Non-Final Act. 10—13. The rejection relies upon Boussier’s disclosure of fins 2a—2e and 2g—2k in Figure 3 as teaching the recited “first and second group of profiles.” Id. at 8 Appeal 2017-008595 Application 14/413,925 10 (citing Boussier col. 6,11. 19—25). Appellants do not identify any error in this finding. See Appeal Br. 22. Nor, as discussed above, do the Appellants persuasively argue that Boussier fails to teach the claimed “facilitating] efficient convective heat exchange.” In regard to dependent claim 13, the Appellants state that the additional Sokolean reference does not teach or suggest claim 9’s “facilitating] efficient convective heat exchange.” Appeal Br. 26—27. This argument is unpersuasive, because the rejection does not rely upon Sokolean with regard to these features of claim 9. See Non-Final Act. 11, 13—14. Instead, the rejection relies upon Boussier for this feature, as discussed above, and the Appellants do not persuasively argue the finding to be erroneous. Accordingly, we sustain the rejection of claims 9-15 under 35 U.S.C. §103. Claims 16 and 18—20 The Appellants argue that independent claim 16 was rejected erroneously, because Sokolean fails to recognize the effect of heating and cooling efficiencies from increasing the distance between panels to yield the claimed “efficient convective heat exchange between said panels and said environment.” See Appeal Br. 27—28. In particular, the Appellants emphasize that the range of adjacent panel distances disclosed in Sokolean is “vastly different from the range showing increased heating and cooling capacities” of the Evidence Appendix to the Appeal Brief. Id. at 28. However, as set forth in the Answer, claim 16 merely requires “panels spaced apart from one another by a distance effective to allow efficient 9 Appeal 2017-008595 Application 14/413,925 convective heat exchange between said panels and said environment.” See Answer 24—25. The claim language lacks any specific “distance^]” between the panels and any specific description of what constitutes “efficient convective heat exchange.” Id. at 25. As such, the Appellants do not persuasively argue why Sokolean — which discloses convective heat exchange, wherein cooled air flows through air gaps 7 between air- conditioning panels 1 — does not teach or suggest the identified features of claim 16. See id. (citing Sokolean col. 2,11. 31—35). The Appellants also contend that Klix is not analogous art and cannot be applied to groups of panels, such as claim 16 and Sokolean employ. Appeal Br. 28—29. Yet, the Appellants do not explain adequately why Klix — which is relied upon for teaching the claimed “each panel characterized by a first and a second constant-curvature section each mirrored in respect to the around a central axis running along a length of said panel” (see Non- Final Act. 15—16) — would not apply to groups of profiles, or otherwise explain why Klix might be neither within the Appellants’ field of endeavor nor reasonably pertinent to the particular problem thereof. See Oetiker, 977 F.2d at 1446-47. To the contrary, the Examiner finds that Klix satisfies the analogous-art factors identified in Oetiker, because Klix (like claim 16 and Sokolean) is concerned with heat exchange between panels and an environment. See Answer 26. For example, the Klix Abstract states that the reference concerns “[c]ei ling radiators for the heating or cooling of rooms”; thus, it is within the Appellants’ stated field of endeavor — “[environmental temperature control” (Spec. 12). The Appellants also rely upon the foregoing arguments, with regard to claims 19 and 20 — each of which depends from claim 16. Appeal Br. 29. 10 Appeal 2017-008595 Application 14/413,925 Although the Appellants further allege that the cited references do not teach all the limitations of claims 19 and 20, no additional arguments are provided. See id. As to dependent claim 18, in addition to relying upon the arguments addressed above (regarding base claim 16), the Appellants argue that the additional Fischer reference does not teach or suggest a distance between panels. Appeal Br. 29—30. This argument is unpersuasive, because the rejection does not rely upon Fischer with regard to features concerning distance between panels. See Non-Final Act. 17. Accordingly, we sustain the rejection of claims 16 and 18—20 under 35U.S.C. § 103. DECISION We REVERSE the Examiner’s decision rejecting claims 1—8 under 35U.S.C. § 103. We ENTER A NEW GROUND OF REJECTION for claims 1-8 under 35 U.S.C. § 112(b). We AFFIRM the Examiner’s decision rejecting claims 9—16 and 18— 20 under 35 U.S.C. § 103. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to 11 Appeal 2017-008595 Application 14/413,925 the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 12 Copy with citationCopy as parenthetical citation