Ex Parte TwohyDownload PDFPatent Trial and Appeal BoardJan 29, 201813795412 (P.T.A.B. Jan. 29, 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. 13/795,412 03/12/2013 Raymond P. Twohy 047177-9407-US00 7324 23409 7590 01/31/2018 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER WEILAND, HANS R. ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 01/31/2018 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND P. TWOHY Appeal 2017-002221 Application 13/795,4121 Technology Center 3700 Before ANNETTE R. REIMERS, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated November 5, 2015 (“Final Act.”), and as further explained in the Advisory Action dated February 1, 2016, rejecting claims 1-4 and 6-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part, designating our affirmance as to claims 1-3, 6-12, and 14-25 as new grounds of rejection, and entering a new ground of rejection as to claims 4 and 13, all pursuant to our authority under 37 C.F.R. 1 Hussmann Corporation (“Appellant”) is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2. Appeal 2017-002221 Application 13/795,412 § 41.50(b). BACKGROUND The disclosed subject matter “relates to a condenser for condensing a thermal medium, and more particularly, to a microchannel refrigerant condenser with thermoelectric power generation.” Spec. 11. Claims 1, 8, and 19 are independent. Claim 1 is reproduced below, with bracketed letters added to identify each clause: 1. A heat exchanger comprising: [A] an inlet header configured to receive refrigerant; [B] an outlet header configured to discharge the refrigerant; [C] first and second tubes in fluid communication with and extending between the inlet header and the outlet header to direct refrigerant from the inlet header to the outlet header, each of the tubes having a first side and a second side, the first side of the first tube oriented to face the second side of the second tube; [D] a first thermoelectric generator in thermal communication with the first side of the first tube; [E] a second thermoelectric generator in thermal communication with the second side of the second tube; and [/*] a plurality of fins in thermal contact with the first thermoelectric generator and the second thermoelectric generator and with a surrounding environment; [G] wherein one or both of the first thermoelectric generator and the second thermoelectric generator is configured to generate 2 Appeal 2017-002221 Application 13/795,412 electrical energy and is electrically coupled to an electrical device to transfer the electrical energy to the device. REJECTIONS 1. Claims 1, 2, 4, 6, 8, 10, 13-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goenka (US 7,788,933 B2, issued Sept. 7, 2010) and Huettner (US 2009/0205694 Al, published Aug. 20, 2009). 2. Claims 3,11, 12, and 21-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Subramaniam (US 2012/0279245 Al, published Nov. 8, 2012). 3. Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Yanik (US 2010/0050685 Al, published Mar. 4, 2010). 4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Briick (US 2011/0120106 Al, published May 26, 2011). 5. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Yamaguchi (US 2006/0027257 Al, published Feb. 9, 2006). DISCUSSION Rejection 1 - Claims 1, 2, 4, 6, 8, 10, 13-17, 19, and 20 A. Claims 1, 2, 6, 8, 10, 14-17, 19, and 20 Appellant presents certain arguments asserting the patentability of all claims in this Rejection as a group based on alleged errors in the rejections 3 Appeal 2017-002221 Application 13/795,412 of the three independent claims-claims 1, 8, and 19. Appeal Br. 6-10 (addressing claim 1), 10-11 (relying on the claim 1 arguments regarding claim 8), 11-12 (relying on the claim 1 arguments regarding claim 19). Because Appellant also separately argues claims 4 and 13 (see infra Rejection 1 § B), the analysis of the arguments directed to the Rejection overall determines the outcome for claims 1, 2, 6, 8, 10, 14-17, 19, and 20. For this group, we select claim 1 as representative, with claims 2, 6, 8, 10, 14-17, 19, and 20 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). For claim 1, the Examiner relied on Goenka for clauses A through F, but stated that “Goenka does not explicitly disclose that one or both of the first thermoelectric device or the second thermoelectric device [is] . . . configured to generate electrical energy and is electrically coupled to a device to transfer the electrical energy to the device.” Final Act. 3^4. The Examiner found, however, that “Huettner teaches (figures 2, 3, 5 and 6) a heat exchanger with a plurality of thermoelectric generating devices . . . coupled to tubes (29) of a heat exchanger” and teaches a “thermoelectric generator configured to generate electrical energy and . . . electrically coupled to a device to transfer the electrical energy to the device (the thermoelectric devices may be coupled to an electrical load 51 per paragraph 0030).” Id. at 4. According to the Examiner, it would have been obvious for one of ordinary skill in the art at the time of the invention: to have modified the heat exchanger of Goenka to have included the thermoelectric generation devices on the tubes of the heat exchanger as taught by Huettner in place of the thermoelectric devices disclosed by Goenka between the tubes and the fins as that is a known place for a thermal temperature differential essential to the operation of a thermoelectric device, either for 4 Appeal 2017-002221 Application 13/795,412 generating electricity or modifying the temperature of heat exchanger^] doing so would provide a known means for generating a electric voltage from the temperature difference created by the surface of a heat exchanger tube as taught by Huettner (paragraph 0010). Id. First, Appellant argues that “the Examiner has failed to properly determine the scope and content of Goenka,” as required under the framework set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). Appeal Br. 6. Appellant states that “[wjhile Goenka teaches heat exchange between two fluids (e.g., air, coolant), the Examiner has ignored that Goenka’s heat exchanger is designed and constructed to maximize thermal efficiency by way of a thermoelectric device that operates under the Peltier effect (i.e. the device receives electrical current to generate thermal energy).” Id. at 6-7 (footnotes omitted). According to Appellant, “the Examiner fails to recognize that, considering Goenka in its entirety, the central premise of Goenka is to increase the heating and cooling capacity of the heat exchanger using a Peltier effect TED 112.”2 Id. at 7. With this argument, Appellant does not apprise us of error in the Rejection as articulated by the Examiner. Although Appellant does identify certain differences between Goenka and the subject matter of claim 1-such as that the system in Goenka “supplies electrical current to the TED 112” (Appeal Br. 7) rather than thermoelectric device 112, for example, being “configured to generate electrical energy” as recited in clause G-the Examiner does not rely on Goenka to address clause G. See Final Act. 3^4. 2 Goenka uses the term “TED” to refer to a “thermoelectric device.” See Goenka, col. 3,1. 1. 5 Appeal 2017-002221 Application 13/795,412 Instead, the Examiner proposes replacing thermoelectric device 112 of Goenka with thermoelectric generating device 31 of Huettner to address clause G. Id. As to Appellant’s argument regarding the “central premise” of Goenka, because the Examiner does not rely on Goenka regarding the asserted “central premise” or the use of “TED 112” (Appeal Br. 7), Appellant has not shown error in the factual findings relied on by the Examiner regarding claim 1. Second, Appellant asserts that “the Examiner’s proposed modification would improperly change the principle of operation of Goenka.” Appeal Br. 8 (citing Manual of Patent Examining Procedure (MPEP) § 2143.01 (VI)).3 According to Appellant, [understanding what is taught by Goenka as a whole, it would not have been obvious to one of ordinary skill in the art to modify Goenka to include a thermoelectric device that generates electricity consistent with Huettner’s heat exchanger that recycles waste thermal energy to generate electricity under the Seebeck effect because doing so would eliminate the ability to increase heating or cooling capacity by way of Goenka’s thermoelectric device. Appeal Br. 7 (footnote omitted). Appellant asserts “that the Examiner’s contention to the contrary fails to recognize the central premise of Goenka- to increase the heating and cooling capacity of the heat exchanger using a Peltier effect TED 112.” Id. A proposed modification that changes the “basic principles under which the [prior art] was designed to operate” may not support a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We are not apprised of error based on this argument, however, because, in our view, 3 Appellant does not identify the version of the MPEP cited. 6 Appeal 2017-002221 Application 13/795,412 Appellant has not properly defined the “basic principles under which [Goenka] was designed to operate.” Id. We determine that the basic principle of operation of Goenka is the conversion between thermal energy and electrical energy using a thermoelectric device.4 This basic principle of operation includes both (1) conversion from electrical energy to thermal energy-i.e., the “Peltier effect”-and (2) conversion from thermal energy to electrical energy-i.e., the “Seebeck effect.”5 A discussion from Briick supports this understanding and shows the relatedness of these two effects: Such a thermoelectric generator generally includes a plurality of thermoelectric converter elements. Thermoelectric materials are of a type capable of efficiently converting thermal energy into electrical energy (Seebeck effect) and vice-versa (Peltier effect). The “Seebeck effect” is based on the phenomenon in which thermal energy is converted into electrical 4 Because this identified basic principle of operation differs from that identified by the Examiner, we designate this Rejection, as to claims 1, 2, 6, 8, 10, 14-17, 19, and 20, as anew ground. See, e.g., Ans. 13 (“The main principle of operation of the device of Goenka as a whole is to exchange heat between two fluids of heat exchanger[;] the thermoelectric devices serve to maximize that purpose.”). 5 This identification of the basic principle of operation of Goenka does not run contrary to the guidance that ‘ fa] prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” Reply Br. 3 (quoting, with emphasis added, a prior version of MPEP § 2141 (VI), which discusses W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984)). That section of the MPEP (now § 2141.02(VI) (9th ed., Rev. 07.2015, Nov. 2015)) relates to teaching away. Appellant has not argued, or shown, that Goenka teaches away from the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .”). 7 Appeal 2017-002221 Application 13/795,412 energy and is used to produce thermoelectric energy. The “Peltier effect” is the opposite of the Seebeck effect and is a phenomenon which is accompanied by heat absorption, and is caused in the context of a current flow through different materials. The Peltier effect has already been proposed as a method of thermoelectric cooling, for example. Briick 14. Because these effects are two related aspects of the basic principle of operation of Goenka, we are not persuaded that modifying an application of the Peltier effect (as in Goenka) to an application of the Seebeck effect (as in the modified device and the invention of claim 1) represents a “change in the basic principles under which [Goenka] was designed to operate.” Ratti, 270 F.2d at 813; Appeal Br. 7-8 (discussing how Goenka applies the Peltier effect and Huettner applies the Seebeck effect); see also In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Umbarger, 407 F.2d 425, 430-31 (1969), as “finding Ratti inapplicable where the modified apparatus will operate ‘on the same principles as before’”).6 As such, we are not apprised of error based on this argument. In the Answer, the Examiner proposes a modification of Goenka different from that set forth in the Final Office Action: [A]s currently claimed “one or both of the first thermoelectric generator and the second thermoelectric generator is configured to generate electrical energy” in [clause G] of claim 1 thus only one of the thermoelectric devices need to be generating electricity as taught by Huettner (per paragraph 0030), the other could be functioning as Goenka asserts to maximize thermal efficiency as both are known uses for thermoelectric devices. 6 Moreover, the proposed combination involves applying a known technique (i.e., Huettner’s use of the Seebeck effect) to improve a similar device (i.e., Goenka’s heat exchanger with thermoelectric devices) in the same way, and applying the technique is not beyond the level of skill in the art. See KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2017). 8 Appeal 2017-002221 Application 13/795,412 Modifying Goenka to have a included a thermoelectric device to generate electricity as taught by Huettner (paragraph 0030) as opposed to increase the thermal efficiency as disclosed by Goenka would not improperly change the principle of operation of Goenka as only one of the thermoelectric devices would have to extract energy as taught by Huettner based on the limitations of the [AJppellanf s claim 1. Ans. 13. To the extent Appellant has properly identified the basic principle of operation of Goenka, we agree with the Examiner that the alternative modification proposed does not represent a “change in the basic principles under which [Goenka] was designed to operate.” Ratti, 270 F.2d at 813. This is because, in the alternative modified device, only one of thermoelectric devices 112 of Goenka is replaced with a thermoelectric generating device 31 of Huettner, and used to generate a voltage via the Seebeck effect, whereas the other thermoelectric devices 112 of Goenka would continue to increase the thermal efficiency of the heat exchanger via the Peltier effect. Cf. Appeal Br. 7 (stating that “the central premise of Goenka [is] to increase the heating and cooling capacity of the heat exchanger using a Peltier effect TED 112”). In response to the Examiner’s alternative modification, Appellant argues that “there is no basis in Goenka or Huettner for this rationale” and argues that “neither reference suggests or even hints that this [alternative modification] is possible or contemplated.” Reply Br. 4. Appellant also argues that “[t]he Examiner simply concludes that this modification could be made to Goenka without any support for the conclusion” and that the “opinion that something could be achieved, without a factual basis in the 9 Appeal 2017-002221 Application 13/795,412 references themselves or the general knowledge of one of ordinary skill in the art, is an inappropriate basis for a rejection.” Id. We understand the alternative modification (i.e., replacing only one of thermoelectric devices 112 of Goenka with a thermoelectric generating device 31 of Huettner) and the original modification (i.e., replacing all thermoelectric devices 112 of Goenka with thermoelectric generating devices 31 of Huettner) to share the same rationale: “doing so would provide a known means for generating a electric voltage from the temperature difference created by the surface of a heat exchanger tube as taught by Huettner (paragraph 0010).” See Final Act. 4 (discussing Huettner 110); Ans. 15 (discussing Huettner || 9, 10); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). We determine that the Examiner’s reasoning-which relies, in part, on express teachings in Huettner-supports the conclusion of obviousness of the subject matter of claim 1. Third, Appellant argues that the original modification “would render Goenka’s heat exchanger unsatisfactory for its intended purpose.” Appeal Br. 8 (citing MPEP § 2143.01 (V)). According to Appellant, “Goenka’s heat exchanger 100 seeks to increase thermal efficiency using a thermoelectric device operating under the Peltier effect” and “[mjodifying the TED 112 of Goenka as proposed by the Examiner would result in a device that cannot maximize thermal efficiency.” Id. Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed 10 Appeal 2017-002221 Application 13/795,412 modification would not have been obvious. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). In In re Gordon, the Federal Circuit reversed an obviousness rejection because modifying the prior art-by turning a filter upside down-would render it incapable of filtering, and thus, inoperable for its intended purpose. Id. In contrast, in the context of the original modification here, Goenka, as modified, would still be able to perform its intended purpose of “facilitating] heat transfer between the tubes and an atmosphere surrounding the tubes.” Goenka, Abstract. Although the original modification may not provide the same thermal efficiency benefits as the invention of Goenka, Appellant has not shown error in the Examiner’s reasoning that one of ordinary skill in the art would have modified Goenka to realize other benefits-i.e., generation of an electrical voltage. See Final Act. 4; Ans. 15; see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (discuss how “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Inti Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit. . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Fourth, Appellant provides various additional arguments addressing the reasoning provided by the Examiner. See Appeal Br. 8-10 (§ 4). Appellant first argues that the Examiner has not provided any reasoning regarding the original modification. See Appeal Br. 9 (discussing MPEP § 2143 (IV) and quoting that section as providing that ‘“[tjhere must be some 11 Appeal 2017-002221 Application 13/795,412 articulated reasoning with some rational underpinning to support’ a conclusion of obviousness”). We disagree. We determine that the Examiner’s reasoning supports a prima facie case of obviousness of the subject matter of claim 1. See Final Act. 4 (discussing Huettner 110); Ans. 15 (discussing Huettner || 9, 10). By not addressing the reasoning provided, Appellant has not shown error in the relevant findings or the conclusion as to obviousness. Appellant also argues that the cited prior art fails to provide an express teaching, suggestion, or motivation for the original modification. See Appeal Br. 8-9 (quoting Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984), which states: “The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device.”), 8 (“[T]he Examiner does not identify any factual support in either reference for the proposed modification.” (emphasis added)), 9 (“There is no basis in fact in the references or the general knowledge of one of ordinary skill in the art for the Examiner’s position.”). As an initial matter, contrary to this argument, the Supreme Court has made clear that an express teaching, suggestion, or motivation in the prior art is not a requirement for an obviousness determination. See KSR, 550 U.S. at 418-19 (holding that when the teaching-suggestion-motivation test is applied as a rigid and mandatory formula, it is incompatible with Supreme Court precedent). Moreover, Appellant has not substantively addressed the express teachings in Huettner (|| 9, 10) discussed by the Examiner in the context of the reasoning provided. See Final Act. 4; Ans. 15. 12 Appeal 2017-002221 Application 13/795,412 Appellant also argues that, “in rejecting Appellant’s claimed invention, the Examiner . . . relies on Appellant’s own disclosure to arrive at Appellant’s claimed invention.” Appeal Br. 9. The Examiner responds: Huettner teaches, paragraph 0010, that a thermoelectric device may be used to generate electricity; specifically this energy can be used to recover waste thermal energy, per paragraph 0009, in a heat exchanger in order to conserve energy. While Goenka only discloses the use of the thermoelectric device to maximize thermal efficiency[,] Huettner teaches that a thermoelectric device can also be used to generate electricity and... can capture energy that would otherwise be wasted (as per paragraph 0009 of Huettner) [,] thus the motivation to combine there references comes from the teachings of Huettner and not from the Appellant’s disclosure. Ans. 15. Here, Appellant does not identify any knowledge that the Examiner relied upon that was gleaned only from the Specification and that was not otherwise within the level of ordinary skill at the time of the invention, as evidenced by Huettner. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA1971). For the reasons above, we sustain the rejection of independent claim 1. Claims 2, 6, 8, 10, 14-17, 19, and 20 fall with claim 1. Because our fact finding differs from that of the Examiner as identified above (see supra n.4), we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellant with a full and fair opportunity to respond to the rejection as modified. B. Claims 4 and 13 Claim 4 recites, among other limitations, “wherein the device is a component of the refrigeration circuit, and wherein one or both of the first thermoelectric generator and the second thermoelectric generator is 13 Appeal 2017-002221 Application 13/795,412 electrically coupled to the component.” Appeal Br. 15 (Claims App.). Claim 13 recites similar language. For claim 4, the Examiner stated that “Huettner teaches at least one of the first thermoelectric generator and the second thermoelectric generator is electrically coupled to a component of a cooling system (per paragraph 0030).” Final Act. 5. The Examiner made the same finding for claim 13. See id. at 7. Appellant argues that “Goenka and Huettner are equally silent regarding a component of a refrigerant circuit receiving electrical energy due to heat transfer within a heat exchanger of the refrigeration circuit.” Appeal Br. 10 (addressing claim 4); see id. at 11 (relying on the same argument for claim 13). According to Appellant, “[njeither reference suggests, or provides any factual basis for, a device that is a component of the refrigeration circuit and that receives electrical energy generated from thermoelectric generators of a heat exchanger that is part of the same circuit.” Reply Br. 5. We agree with Appellant that neither Goenka nor Huettner, alone or in combination, satisfy the language at issue from claims 4 and 13. As argued, paragraph 30 of Huettner does not support the finding regarding the claim language at issue. Specifically, Huettner does not disclose electrically coupling a thermoelectric generator to a component “of a refrigeration circuit,” as required by claims 4 and 13. Instead, paragraph 30 discloses coupling thermoelectric generating device 31 “to an electrical load 51 such as the grid, or devices in the data center, etc.” Huettner 130 14 Appeal 2017-002221 Application 13/795,412 (emphasis added). The Examiner has not shown how “the grid” or a “device in [a] data center” is a component “of a refrigeration circuit.”7 For these reasons, we do not sustain the rejection of claims 4 and 13. New Ground of Rejection We enter a new ground of rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Subramaniam. For the reasons discussed above (Rejection 1 § A), Goenka, as modified by Huettner, satisfies the limitations of claims 1 and 8, from which claims 4 and 13, respectively, depend. We address each of the limitations of claims 4 and 13 below. wherein the heat exchanger is a condenser within a refrigeration circuit (recited in claims 4 and 13) We adopt the Examiner’s findings that Goenka discloses that “the heat exchanger is a condenser with a refrigeration circuit” because, in column 1, lines 14 to 26, Goenka “discloses using the heat exchanger in . . . air conditioning equipment to remove heat from the fluid flowing within[,] which would act as a condenser would in the refrigeration circuit.” Final Act. 5 (claim 4), 7 (claim 13); see also Goenka, col. 1,11. 15-17 (“Heat exchangers are used for changing the temperature of various working fluids, such as ... an air conditioning refrigerant. . . .”). Moreover, Subramaniam discloses that “[t]he components of refrigeration cycle 50 include a refrigerator compressor unit 52, a condenser 54, valves 56 and 58, and an 7 As noted by Appellant, in the Answer, the Examiner does not address the claim language at issue from claims 4 and 13. See Reply Br. 5. Instead, the Examiner addresses the language preceding the claim language at issue. See Ans. 15 (bottom paragraph). 15 Appeal 2017-002221 Application 13/795,412 evaporator 60-all connected in series and charged with a refrigerant.” Subramaniam 122 (bolding omitted). Subramaniam further discloses that, during refrigeration cycle 50, the temperature of the refrigerant is “lowered by passing the gaseous refrigerant through condenser 54 where heat exchange with ambient air takes place so as to cool the refrigerant.” Id. 123. wherein the device is [(recited in claim 4) or includes (recited in claim 13)] a component of the refrigeration circuit, and wherein one or both of the first thermoelectric generator and the second thermoelectric generator is electrically coupled to the component Subramaniam discloses: If desired, the heat energy within refrigerant that is leaving casing 66 can be harnessed to provide heat or to operate other devices in the appliance so as to increase overall efficiency. For example, before passing into condenser 54, the refrigerant could be routed through another heat exchanger connected between discharge tube 64 and condenser 54. This recovered energy can then be applied at other places within the appliance to provide heat and/or to power other features. For example, a thermoelectric device can be used to drive the fan of an evaporator or a condenser and/or the recovered energy could be used to power internal lighting of the refrigerator 10. Subramaniam 133 (bolding omitted). Thus, Subramaniam discloses at least one (thereby satisfying “one or both”) thermoelectric device being used to drive (i.e., “electrically coupled to”), for example, condenser 54, which Subramaniam discloses is a component of refrigeration cycle 50 (i.e., a “refrigeration circuit”). See id. H 22, 33. It would have been obvious to one of ordinary skill in the art at the time of invention to have modified the heat exchanger of Goenka, as modified by Huettner, for use in the refrigeration circuit of Subramaniam 16 Appeal 2017-002221 Application 13/795,412 and to use the thermoelectric device to power, for example, condenser 54 in Subramaniam because doing so would increase the efficiency of the system, as expressly taught by Subramaniam (| 33). Although Subramaniam teaches an example of recovering energy “through another heat exchanger connected between discharge tube 64 and condenser 54” (| 33 (bolding omitted) (italics added))-i.e., a heat exchanger other than condenser 54 itself-Subramaniam also expressly discloses that, “by passing the gaseous refrigerant through condenser 54[,]. . . heat exchange with ambient air takes place.” Subramaniam 123 (bolding omitted). In light of this teaching and the teaching that “the heat energy within refrigerant that is leaving casing 66 can be harnessed to provide heat or to operate other devices in the appliance so as to increase overall efficiency” (id. 133 (bolding omitted)), we view Subramaniam as teaching the use of condenser 54 to recover energy using a thermoelectric device, as generally disclosed in paragraph 33. In the alternative, it would have been obvious to one of ordinary skill in the art at the time of invention to have modified the heat exchanger of Goenka, as modified by Huettner, for use in the refrigeration circuit of Subramaniam and to use condenser 54 to recover energy using a thermoelectric device (as opposed to “another heat exchanger” (id. 133)) as the substitution of a known structure (condenser 54) for another known in the field (“another heat exchanger”) that yields a predictable result (providing heat energy to be recovered by a thermoelectric device). See KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for 17 Appeal 2017-002221 Application 13/795,412 another known in the field, the combination must do more than yield a predictable result.”). Rejection 2 - Claims 3, 11, 12, and 21-24 A. Claims 3, 11, 12, 21, and 23 Appellant does not separately argue claims 3, 11, 12, 21, and 23 (Appeal Br. 12-13), which depend from one of the independent claims addressed above. Thus, for the reasons discussed above (see supra Rejection 1 § A), we sustain the rejection of claims 3, 11, 12, 21, and 23. We designate our affirmance as to these claims as a new ground of rejection based on their dependence from one of the independent claims. B. Claims 22 and 24 For the additional limitations of claims 22 and 24, the Examiner relies on Subramaniam. See Final Act. 10-11. The Examiner found that: Subramaniam discloses that the transferring electrical energy to an electrical device includes transferring the electrical energy to an electrical device of the refrigerated merchandiser means transferring the electrical energy to an electrically powered device, which could be a fan, a heater or a light (specifically using the captured energy for heating, for powering an fan for driving air through the condenser or for lighting, all per paragraph 0033). Id. at 10. According to the Examiner, it would have been obvious to one of ordinary skill in the art at the time of invention “to have modified the heat exchanger of Goenka and Huettner to use the thermoelectric device to power a fan or other devices of a system as taught by Subramaniam; doing so would serve to increase efficiency of the system as taught by Subramaniam (paragraph 0033).” Id. at 10-11. 18 Appeal 2017-002221 Application 13/795,412 For claim 22, Appellant argues that “Goenka, Huettner, and Subramaniam, either alone or in combination, fail to teach or suggest a method of operating a refrigerated merchandiser that includes transferring the electrical energy converted via a thermoelectric generator to a heater.” Appeal Br. 12. Appellant contends that “there is no factual basis in the art cited for powering a heater via a thermoelectric device in a manner consistent with the subject matter of claim 22.” Id. at 12-13. The Examiner responds that “Subramaniam discloses (paragraph 0033) supplying heat and/or power from a thermoelectric device to power a fan of an evaporator or a condenser[,\ either of which can function as a heater as one of the fluids flowing through or over an evaporator or condenser would be heated.” Ans. 17 (emphasis added). To address this rejection, we first must determine the scope of the term “heater.” As indicated by claim 22, in light of claims 19 and 20, the “heater” is an “electrically-powered device” that is “of the refrigerated merchandiser.” Appeal Br. 18 (Claims App.). Turning to the Specification, the only disclosure of “heater” describes the “heater” as one component that could receive generated power: The power generated by the thermoelectric generators 140 is delivered through wiring to components of the system, or elsewhere, depending on the system configuration. For example, as shown in Fig. 7, the generated power can be delivered to a controller 170, which further conditions the voltage and current to appropriate levels for use in other system components. These system components can include, for example, the condenser fan 174 or other loads 178 (e.g., other fans, lights, valves, heaters, etc.) that can the at least partially powered by the power generated by the thermoelectric generators 140. Spec. 127 (emphasis added); see also Fig. 7 (showing “Loads” 178). 19 Appeal 2017-002221 Application 13/795,412 During examination, claims are given their broadest reasonable interpretation consistent with the specification, reading the claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Appellant does not propose a construction of “heater.” In light of Appellant’s Specification, we see no error in the Examiner’s implicit construction of a “heater” as a structure that provides heat. See Ans. 16-17. Here, neither the claim language nor the Specification limit the construction of “heater” narrower than that implicit construction. Cf. In re Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (discussing, for example, how the “specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring”). The Examiner’s construction aligns with extrinsic evidence as to the meaning of a “heater.” See The American Heritage® Dictionary of the English Language (2016) (via Credo Reference), https://search.credoreference.com/ content/entry/hmdictenglang/heater/O (definition 1: “An apparatus that heats or provides heat”) (last visited January 22, 2018). We turn now to the Examiner’s application of this construction to the prior art. As noted by the Examiner, Subramaniam teaches using a thermoelectric device to provide electrical energy to a “condenser.” See Subramaniam 133 (last sentence). We see no error in the Examiner’s position that a condenser falls within the construction of “heater” in claim 22. As discussed above, Subramaniam discloses that, during refrigeration cycle 50, the temperature of the refrigerant is “lowered by passing the gaseous refrigerant through condenser 54 where heat exchange with ambient air takes place so as to cool the refrigerant.” Id. 123 (bolding omitted). 20 Appeal 2017-002221 Application 13/795,412 Because condenser 54 provides heat to its surrounding, we agree with the Examiner that condenser 54 falls within the scope of the term “heater” in claim 22. For claim 24, Appellant argues that “Goenka, Huettner, and Subramaniam, either alone or in combination, fail to teach or suggest a transferring the electrical energy to an electrical device of the refrigerated merchandiser, wherein the electrically-powered device is a valve of the refrigeration system.” Appeal Br. 13. Appellant also contends that “Subramaniam is equally silent regarding transferring electrical energy from a thermoelectric device to power a valve of a refrigeration system.” Id. As noted by the Examiner, Subramaniam discloses valves 56 and 58 as components of refrigeration cycle 50. See Ans. 17; see also Subramaniam 122 (“The components of refrigeration cycle 50 include a refrigerator compressor unit 52, a condenser 54, valves 56 and 58, and an evaporator 60-all connected in series and charged with a refrigerant.” (bolding omitted) (italics added)). As further noted by the Examiner, “Subramaniam discloses (paragraph 0033) supplying power from a thermoelectric device to power features within the refrigeration appliance itself.” Ans. 17; see also Subramaniam | 33 (“For example, before passing into condenser 54, the refrigerant could be routed through another heat exchanger connected between discharge tube 64 and condenser 54. This recovered energy can then be applied at other places within the appliance to provide heat and/or to power other features.” (bolding omitted)). Although Subramaniam does not specifically list valves 56 and 58 among the exemplary “features” in paragraph 33, we determine that the findings above support the conclusion that the subject matter of claim 24 would have been 21 Appeal 2017-002221 Application 13/795,412 obvious based on the relied-upon prior art. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”). For these reasons, we sustain the rejection of claims 22 and 24. We designate our affirmance as to these claims as a new ground of rejection. Rejections 3 through 5 - Claims 7, 9, 18, and 25 Appellant does not separately argue claims 7, 9, 18, and 25 (Appeal Br. 13-14), each of which depend directly from one of the independent claims addressed above. Thus, for the reasons discussed above (see supra Rejection 1 § A), we sustain the rejection of claims 7, 9, 18, and 25. We designate our affirmance as to these claims as a new ground of rejection based on their dependence from one of the independent claims. DECISION We affirm the decision to reject claims 1-3, 6-12, and 14-25, designating our affirmance as new grounds of rejection, we reverse the decision to reject claims 4 and 13. We enter a new ground of rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over Goenka, Huettner, and Subramaniam. FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant 22 Appeal 2017-002221 Application 13/795,412 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 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 the Manual of Patent Examining Procedure § 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)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 23 Copy with citationCopy as parenthetical citation