13100587 (P.T.A.B. Jan. 11, 2018)

Ex Parte Wortmann et al

Patent Trial and Appeal BoardJan 11, 2018

13100587 (P.T.A.B. Jan. 11, 2018)

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. 13/100,587 05/04/2011 Jurgen Wortmann 074014-0405-US (286568) 3294 123223 7590 01/16/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER MCALLISTER, STEVEN B ART UNIT PAPER NUMBER 3749 NOTIFICATION DATE DELIVERY MODE 01/16/2018 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): IPDocketWM @ dbr.com penelope. mongelluzzo @ dbr. com DB RIPDocket @ dbr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURGEN WORTMANN, CLAUS SCHAFER, MICHAEL LUTZ, FABIAN SEELER, MARTIN GARTNER, FELIX MAJOR, KERSTIN SCHIERLE-ARNDT, OTTO MACHHAMMER, GUNTHER HUBER, and STEPHAN MAURER Appeal 2017-001231 Application 13/100,587 Technology Center 3700 Before: MICHAEL L. HOELTER, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jurgen Wortmann et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 6, and 7.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is BASF SE. App. Br. 2 2 Claim 8—12 have been withdrawn from consideration. Final Act. 1, Appeal Br. 3. Appeal 2017-001231 Application 13/100,587 CLAIMS Independent claim 1, reproduced below, represents the claimed subject matter. 1. A device for storing heat, comprising a heat storage medium which absorbs heat in order to store heat and releases heat in order to use the stored heat, and a container for holding the heat storage medium, the container being closed by a gastight cover, wherein the device comprises volume compensation means in order to compensate for a volume increase of the heat storage medium due to a temperature rise and a volume decrease due to a temperature reduction, wherein the volume compensation means comprise a buffer container, into which part of the heat storage medium can flow when there is a volume increase of the heat storage medium, and wherein the buffer container has a volume which is much smaller than the volume of the container for holding the heat storage medium. REJECTIONS I. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck (US 4,345,715, iss. Aug. 24, 1982) and Conner (US 4,691,692, iss. Sep. 8, 1987). Final Act. 4. II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck, Conner, and Lyon (US 4,108,374, iss. Aug. 22, 1978). Final Act. 6. III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck, Conner, and Johnson (US 4,233,960, iss. Nov. 18, 1980). Final Act. 7. 2 Appeal 2017-001231 Application 13/100,587 OPINION Rejection I - Claim 1 The Examiner finds, inter alia, that Van Craenenbroeck discloses a device for storing heat 16, comprising a heat storage medium (i.e., water) that absorbs heat to store heat and releases heat to use the stored heat, and a container 1 for holding the heat storage medium that is closed by a volume compensation means (gastight cover 15, 18) that compensates for a volume increase of the heat storage medium due to a temperature rise and a volume decrease due to a temperature reduction. Final Act. 4. The Examiner finds that Van Craenenbroeck discloses a buffer container 14 having a volume that is smaller than the volume of the container 1, but the Examiner states that Van Craenenbroeck does not explicitly disclose part of the heat storage medium flowing into the buffer container 14 when there is a volume increase of the heat storage medium. Id. The Examiner finds, however, that Conner discloses “a solar energy system comprising two heat transferring storage tanks connected via a coupling allowing heat transferring fluid to flow between the two tanks,” and the Examiner concludes that “[i]t would have been obvious” to modify Van Craenenbroeck’s device “to have a second storage tank coupled to the first storage tank (via existing line 24 of Van Craenenbroeck) as taught by Conner ... to preserve the heat transfer fluid and ultimately preserve resources thus reducing costs of replenishing the fluid.” Id. at 5 (citing Conner Fig. 1, col. 5,11. 40-52). According to the combination proposed by the Examiner, “as the flexible diaphragm element of Van Craenenbroeck rises above element 24, water will then flow out of the vessel via pipe element 25 and into the second storage tank as taught by Conner, Jr.” Id. 3 Appeal 2017-001231 Application 13/100,587 The Examiner considers the claim language “when there is a volume increase of the heat storage medium” to recite the intended use of the claimed apparatus, which must result in a structural difference between the claimed invention and the prior art to patentably distinguish the claimed invention from the prior art. Final Act. 5—6, Ans. 6. Regarding the buffer container having a smaller volume than the main container, the Examiner additionally concludes that it would have been an obvious matter of design choice to modify the combination of Van Craenenbroeck and Conner “to have a smaller buffer container since the present application does not show that the buffer container being smaller than the heat storage container solves a particular problem or is for any specific purpose and because it appears that the apparatus would function equally well in either configuration.” Final Act. 6. Appellants first argue that Van Craenenbroeck discloses a safety device (i.e., a cooling tank) for a heater exchanger, rather than a device for storing heat or a container for a heat storage medium. Appeal Br. 7. Appellants further argue that Van Craenenbroeck’s container 1, because it is a cooling tank including water that is cooled before entering the tank, cannot “absorb[] heat in order to store heat and release[] heat in order to use the stored heat” as recited in claim 1. Id. (see Van Craenenbroeck 3:21—25 (“water flowing from the central heating installation to the safety device, can be somewhat cooled in such a way that said safety device will not be damaged by the high temperature.”)). The Examiner responds that Van Craenenbroeck’s container 1 performs heat storage because, unless the liquid therein is “at absolute zero,” it will “comprise ‘heat’, which is merely the kinetic energy of the liquid at 4 Appeal 2017-001231 Application 13/100,587 the molecular level.” Ans. 6. The Examiner further contends that Van Craenenbroeck’s water being “somewhat cooled” (Van Craenenbroeck 3:21—25) does not teach removing all heat from the water. Id. at 7. Appellants disagree, contending that “it would be clear to a person of ordinary skill in the art that ‘a device for heat storage’ means that the medium in the device . . . has a temperature . . . above ambient temperature or room temperature” because, if the medium temperature “were below ambient or room temperature, a skilled person would have used the term ‘cooling device’ or the like.” Reply Br. 1. According to Appellants, as soon as the temperature of the medium is below ambient temperature, “there is no possibility of storing [useful] heat.” Id. Claim 1 recites “[a] device for storing heat” via “a heat storage medium” that absorbs heat “to store heat” and releases heat “to use the stored heat.” Van Craenenbroeck’s central heating installation vessel 1 receives and holds water that comes from the heat installation and returns to the heat installation as part of the heat installation cooling system. Van Craenenbroeck 4:57 — 5:60. Van Craenenbroeck’s medium thus moves between hotter and cooler components of its system to transfer heat therebetween, and some of that heat is retained in the medium during storage in the vessel 1. We discern no error in the Examiner’s finding that Van Craenenbroeck discloses a device for storing heat. Regarding the recitations of absorbing heat to store heat, and releasing heat to use the stored heat, these recitations are functional. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (reasoning that the prior art structure meets the functional limitations when it is “inherently capable of’ performing the claimed functions). The Examiner reasons that Van 5 Appeal 2017-001231 Application 13/100,587 Craenenbroeck’s device is capable of performing the claimed functions, because its water holds “heat,” or kinetic energy, that is stored and can be released in Van Craenenbroeck’s system. Regardless of Van Craenenbroeck’s system being described as a cooling mechanism, Appellant does not argue that Van Craenenbroeck’s system is incapable of storing and releasing heat as claimed. We therefore are not persuaded that the Examiner’s findings and conclusions are in error, regardless of Van Craenenbroeck’s medium being “somewhat cooled” before storage in the vessel 1. Appellants also argue that it is “not apparent why someone designing a device for storing heat would find it obvious to combine Conner with a safety device for heat exchange equipment, such as Van Craenenbroeck.” Appeal Br. 9. The Examiner, however, concluded that the proposed combination of Van Craenenbroeck and Conner would have been obvious “to preserve the heat transfer fluid and ultimately preserve resources thus reducing costs of replenishing the fluid.” Final Act. 4. Appellants have not explained why this reasoning lacks a rational basis. Appellants further argue that Conner does not disclose a buffer container having a “much smaller” volume than a main container, as recited in claim 1, and that a skilled artisan combining Van Craenenbroeck and Conner would use two containers that are identical in size. Appeal Br. 9. The Examiner responds that Conner is relied on only to disclose the open coupling of two containers that would allow overflow of working fluid from one container to the other and that Van Craenenbroeck is relied on to disclose a buffer container having a volume smaller than the storage container 1. Ans. 7. 6 Appeal 2017-001231 Application 13/100,587 The Examiner contends that, alternatively, a smaller volume buffer container would be an obvious matter of design choice. In reply, Appellants contend that a reduced gas overhead necessarily results from a smaller volume of the buffer container, such that the reduced gas overhead is an effect resulting from the volume of the buffer container. Reply Br. 1. Because we discern no error in the Examiner’s finding that Van Craenenbroeck discloses a buffer container (expansion tank 14) having a relatively smaller volume that the vessel 1, we decline to consider the issue of design choice. See Van Craenenbroeck 3:57—66 (describing expansion tank 14 to accommodate a “small volumne change” in the heating installation water). For the reasons explained above, we sustain the rejection of claim 1. Rejections II and III - Claims 6 and 7 Appellants make no argument that claims 6 and 7 would be patentable over the cited references if claim 1 is not patentable over Van Craenenbroeck and Conner. Appeal Br. 12,13. We sustain rejections IV and V. DECISION We AFFIRM the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck and Conner. We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck, Conner, and Fyon. We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Van Craenenbroeck, Conner, and Johnson. 7 Appeal 2017-001231 Application 13/100,587 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 8