13031853 (P.T.A.B. Jul. 31, 2017)

Ex Parte Stiesdal

Patent Trial and Appeal BoardJul 31, 2017

13031853 (P.T.A.B. Jul. 31, 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. 13/031,853 02/22/2011 Henrik STIESDAL 2010P01886US 5799 22116 7590 08/02/2017 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 EXAMINER THIEDE, PAUL WILLIAM Orlando, EL 32817 ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 08/02/2017 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): IPDadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRIK STIESDAL Appeal 2015-008262 Application 13/031,85s1 Technology Center 3700 Before HUBERT C. LORIN, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 15—18, 20, 21, 23—26, 28, and 31—34. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “The real party in interest is Siemens Aktiengesellschaft, of Munich, Germany, the assignee of record.” Appeal Br. 3. Appeal 2015-008262 Application 13/031,853 ILLUSTRATIVE CLAIM 15. An energy transfer system for absorbing, temporarily storing and releasing energy, the energy transfer system comprising: a container containing a Phase Change Material; a heat generation element which is located within the container, the heat generation element including an induction heating element, the induction heating element being connected to an external energy source and configured to receive electric energy from the external energy source, and to use the electric energy to heat up the Phase Change Material by electromagnetic induction; and a heat extraction element adapted to extract thermal energy from the Phase Change Material, the heat extraction element being connected to an external heat engine for converting the extracted thermal energy into electric energy. CITED REFERENCES The Examiner relies upon the following references: Mekjean US 3,596,034 July 27, 1971 Koutz US 3,677,008 July 18, 1972 Chubb US 4,037,579 July 26, 1977 Jaisinghani US 2009/0288695 A1 Nov. 26, 2009 REJECTIONS2 I. Claims 15—18, 20, 23, 26, and 31—33 are rejected under 35 U.S.C. § 102(b) as anticipated by Mekjean. 2 In addition to Rejections I—IV herein, the Final Office Action (at page 7) rejects claim 35 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and 2 Appeal 2015-008262 Application 13/031,853 II. Claims 15—18, 20, 23, 24, 26, 28, and 31—33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chubb and Mekjean. III. Claims 21 and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chubb, Mekjean, and Koutz.* * 3 IV. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over Chubb, Mekjean, and Jaisinghani. FINDINGS OF FACT We rely upon and adopt the Examiner’s findings stated in the Final Office Action at pages 8—21 and the Answer at pages 4—6, except as stated otherwise in the Analysis below. Additional findings of fact may appear in the Analysis below. ANALYSIS Anticipation Independent claims 15 and 31 are argued together. Appeal Br. 8—9. Claim 15 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv). The Appellant argues that claim 15 was rejected erroneously, because Mekjean does not teach a “Phase Change Material” that stores “thermal energy.” Appeal Br. 8—9. The Appellant contends that Mekjean teaches distinctly claim the subject matter which the Appellant regards as the invention. This Rejection is withdrawn. See Answer 3. 3 As set forth in the Final Office Action (at pages 20—21), Rejection III included the later-canceled claim 35. 3 Appeal 2015-008262 Application 13/031,853 only storing energy in the form of chemical energy. Id. at 8 (citing Mekjean, col. 7,411. 8-23). Yet, as the Examiner finds, Mekjean teaches the use of heat storage materials — including materials that store/release heat energy when melting/solidifying, in the manner described in the Appellant’s Specification. See Answer 4—5 (citing Mekjean, col. 6,11. 4—16). The Examiner further finds that Mekjean discloses the use of aluminum as a heat storage material (see Answer 5 (citing Mekjean, col. 4,1. 47 (Table II)) — aluminum being the sole Phase Change Material identified specifically in the Appellant’s Specification (see Answer 5 (citing Spec., original claim 25)). Therefore, contrary to the Appellant’s contention, Mekjean cannot suffer from the alleged deficiency, because aluminum inherently possesses whatever properties the Appellant might ascribe to a Phase Change Material. Accordingly, we sustain the rejection of independent claims 15 and 31 — and, for like reasons, dependent claims 16—18, 20, 23, 26, and 32—33 — under 35 U.S.C. § 102(b). Obviousness Independent claims 15, 28, and 31 are argued together. Appeal Br. 10. Claim 15 is selected for analysis herein. See 37 C.F.R. §41.37(c)(l)(iv). 4 The Appellant mistakenly cites column 8 of Mekjean as the source for the passage identified on page 8 of the Appeal Brief. 5 The Answer (page 5) mistakenly cites original claim 3, which we regard as inadvertent. 4 Appeal 2015-008262 Application 13/031,853 The Appellant argues that the rejection of claim 15 lacks a sufficient motivation for combining Mekjean and Chubb. Appeal Br. 10. According to the Appellant, Chubb refers to an energy storage boiler tank used in transforming solar energy into thermal energy, whereas Mekjean teaches transforming electrical energy into chemical energy, such that their sources of energy and materials for storing energy differ. Id. The Appellant also argues that combining Chubb and Mekjean would yield something other than the claimed subject matter, because the combination would transform solar energy into electrical energy, which would then be transformed into chemical energy. Id. Although styled as a challenge to the rejection’s reason or motivation for combining Mekjean and Chubb, the Appellant’s argument does not address the Examiner’s reason for combining these references, which is provided on page 13 of the Final Office Action. Rather, the Appellant appears to be arguing that neither Mekjean nor Chubb is from an analogous art to the claimed subject matter and, therefore, should not be relied upon in an obviousness rejection. Our reviewing court has set forth a two-prong test for determining whether a prior art reference is analogous: (1) whether the reference is from the same field of endeavor as the claimed invention, and (2) if the reference is not from the same field of endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Appellant’s contentions are not sufficient to establish that either Mekjean or Chubb does not satisfy either prong of the analogous-art test, because these contentions are inaccurate or incomplete. As the Examiner finds, contrary to the Appellant’s 5 Appeal 2015-008262 Application 13/031,853 assertions, Mekjean is not limited to transformations involving chemical energy, Chubb does concern heat storage, and Mekjean and Chubb both concern converting excess energy into stored thermal energy that can be later retrieved. See Answer 4—6 (citing Mekjean, Abstract, col. 1,11. 15—20, 22-29, 40-43, col. 6,11. 8-18; Chubb, col. 1,11. 22-30, col. 3,11. 26-27, 13- 52). Finally, the Appellant’s additional assertion — to the effect that combining Chubb and Mekjean could yield something other than the claimed subject matter (see Appeal Br. 10) — does not identify a potential error in the Examiner’s position that the proposed combination would result in the claimed subject matter. Therefore, the Appellant’s arguments are unpersuasive of error in the obviousness rejection of independent claim 15 — as well as independent claims 28 and 31, per 37 C.F.R. § 41.37(c)(l)(iv). Because the Appellant also relies upon the above arguments, in regard to the rejection of dependent claims 16—18, 20, 21, 23—26, and 32—34 (see Appeal Br. 11—13), we sustain the rejection of claims 15—18, 20, 21, 23—26, 28, and 31—34 under 35 U.S.C. § 103(a). DECISION We AFFIRM the Examiner’s decision rejecting claims 15—18, 20, 23, 26, and 31-33 under 35 U.S.C. § 102(b). We AFFIRM the Examiner’s decision rejecting claims 15—18, 20, 21, 23-26, 28, and 31-34 under 35 U.S.C. § 103(a). 6 Appeal 2015-008262 Application 13/031,853 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 7