Kelley, William A.

Patent Trials and Appeals Board

Mar 13, 2020

14673462 - (D) (P.T.A.B. Mar. 13, 2020)

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.
14/673,462 03/30/2015 William A. Kelley 73558-100 1785
35161 7590 03/13/2020
DICKINSON WRIGHT PLLC
1825 EYE ST., NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
TANENBAUM, TZVI SAMUEL
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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):
dwpatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM A. KELLEY

Appeal 2019-005077
Application 14/673,462
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23–36 and 47–54. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
William A. Kelley. Appeal Br. 4.
Appeal 2019-005077
Application 14/673,462

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claims 23, 29, and 50 are the independent claims on appeal.
Claim 23, reproduced below, is illustrative of the claimed subject matter.
23. A heat pump system comprising:
a hot side heat exchanger that defines an inlet port and an
outlet port, the hot side heat exchanger configured to
exchange heat with ambient air on a hot side of the
heat pump system;
a cold side heat exchanger that defines an inlet port and
an outlet port;
a means for expanding gas and extracting work from
expansion of gas, the means for expanding having an
inlet port and an outlet port, the inlet port of the
means for expanding coupled to the outlet port of the
hot side heat exchanger, and the outlet port of the
means for expanding coupled to the inlet port of the
cold side heat exchanger;
a means for compressing gas coupled to the means for
expanding, the means for compressing utilizing at
least some of the work extracted by the means for
expanding for compressing gas, the means for
compressing having an inlet port and an outlet port,
the inlet port of the means for compressing coupled to
the outlet port of the cold side heat exchanger, and the
outlet port of the means for compressing coupled to
the inlet port of the hot side heat exchanger;
a means for adding mechanical work to the means for
compressing gas, the means for adding mechanical
work provides less than all the mechanical work used
by the means for compressing gas; and
a means for transporting heat from the cold side heat
exchanger to the hot side heat exchanger through the
means for compressing, the means for transporting
heat moves within an internal flow path of the heat
pump system;
Appeal 2019-005077
Application 14/673,462

3

the heat pump system comprises a closed cycle, the
means for transporting heat has a constant total mass
and constant total volume, and the means for
transporting heat remains in gas phase throughout the
heat pump system.

Rejections
Claims 23–25, 28–31, 34, 35, and 47–49 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hugenroth (US 2014/0311167
A1, pub. Oct. 23, 2014) and Kikuchi et al. (US 2007/0101755 A1, pub. May
10, 2007) (“Kikuchi”).
Claims 26 and 33 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hugenroth, Kikuchi, and Robinson, Jr. et al.
(US 4,009,587, iss. Mar. 1, 1977) (“Robinson”).
Claims 27 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hugenroth, Kikuchi, and Sauterleute (US 6,199,387 B1,
iss. Mar. 13, 2001).
Claims 36, 50, 53, and 54 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hugenroth, Kikuchi, and Okamoto et al.
(US 2010/0275634 A1, pub. Nov. 4, 2010) (“Okamoto”).2
Claim 50 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hugenroth, Kikuchi, Okamoto, and Bergman, Jr. et al. (US 5,524,442,
iss. June 11, 1996) (“Bergman”).

2 The heading for the rejection under 35 U.S.C. § 103 as unpatentable over
Hugenroth, Kikuchi, and Okamoto omits claim 54 (Final Act. 16), but the
Examiner analyzes claim 54 in the body of the rejection (id. at 20).
Therefore, we understand claim 54 to be rejected by the Examiner under this
ground of rejection.
Appeal 2019-005077
Application 14/673,462

4

Claim 51 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hugenroth, Kikuchi, Okamoto, and Sauterleute.
Claim 52 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hugenroth, Kikuchi, Okamoto, and Robinson.

ANALYSIS
Independent claim 23 recites “a hot side heat exchanger that defines
an inlet port and an outlet port, the hot side heat exchanger configured to
exchange heat with ambient air on a hot side of the heat pump system.”
Appeal Br. 44.
For the rejection of claim 23, the Examiner finds that Hugenroth’s
Ericsson cycle device includes “hot side heat exchanger 55 that defines an
inlet port and an outlet port (not labeled).” Final Act. 4 (emphasis omitted)
(citing Hugenroth Fig. 3); see Hugenroth ¶ 61. However, the Examiner also
finds that Hugenroth’s device fails to teach “the hot side heat exchanger
configured to exchange heat with ambient air on a hot side of the heat pump
system.” Final Act. 5–6 (emphasis omitted).
The Examiner turns to Kikuchi’s disclosure to remedy Hugenroth’s
deficiency. Id. at 6. The Examiner finds that Kikuchi’s Figure 2, “directed
to a compressor-turbine type heat pump, teaches a hot side heat exchanger
120 configured to exchange heat with ambient air (e.g. via fan F).” Id. The
Examiner determines “[i]t would have been obvious to one of ordinary skill
in the art . . . to modify Hugenroth by Kikuchi with the motivation of
obtaining a relatively simple and inexpensive method of rejecting heat and
eliminating the need for a water cooler from the design.” Id.
Appeal 2019-005077
Application 14/673,462

5

The Appellant points out that Hugenroth’s Ericsson cycle device is
designed to avoid adiabatic behavior (i.e., “[t]he heat exchangers added by
Hugenroth are to keep the device as close as possible to isothermal”). Reply
Br. 15. The Appellant argues that the proposed modification would change
Hugenroth’s Ericsson cycle device –– specifically, heat exchanger 55 –– to
operate adiabatically. See Appeal Br. 21–22; Reply Br. 9–11, 15. The
Appellant’s argument is persuasive.
The Examiner’s rejection relies on the reasoning that a skilled artisan
would have been motivated to replace Hugenroth’s hot heat exchanger 55
with Kikuchi’s hot side heat exchanger 120, which according to the
Examiner is configured to exchange heat with ambient air (e.g., via fan F), in
order to obtain a relatively simple and inexpensive method of rejecting heat
and eliminating the need for a water cooler from the design. Final Act. 6.
The Examiner acknowledges the Appellant’s argument and appears to agree
with Appellant that the proposed modification would change the isothermal
behavior of Hugenroth’s device to be adiabatic. See Ans. 5–6. However,
the Examiner fails to adequately explain, on the record, why one of ordinary
skill in the art would have modified Hugenroth’s Ericsson cycle, which
relies on isothermal or near isothermal behavior, to operate using a different
type of thermodynamic cycle.
Thus, we do not sustain the Examiner’s rejection of independent
claim 23 as unpatentable over Hugenroth and Kikuchi. We likewise do not
sustain the rejection of dependent claims 24, 25, 28, and 47–49 under the
same ground of rejection.
The Examiner’s rejection of independent claim 29 relies on the same
findings and reasoning as discussed above. See Final Act. 11, Ans. 5–6. For
Appeal 2019-005077
Application 14/673,462

6

the reasons discussed above, we do not sustain the Examiner’s rejection of
independent claim 29 as unpatentable over Hugenroth and Kikuchi. We
likewise do not sustain the rejection of dependent claims 30, 31, 34, and 35
under the same ground of rejection.
The Examiner’s rejections of independent claim 50 rely on similar
findings and reasoning as discussed above. See Final Act. 17–25, Ans. 5–6.
The deficiency in these rejections is not cured by the additional findings
and/or reasoning associated therewith. Thus, we do not sustain the
Examiner’s rejection of claim 50 as unpatentable over Hugenroth, Kikuchi,
and Okamoto, or the Examiner’s rejection of claim 50 as unpatentable over
Hugenroth, Kikuchi, Okamoto, and Bergman.
The remaining rejections of dependent claims 26, 27, 32, 33, 36, and
51–54 also fail to include additional findings and/or reasoning that cures the
deficiency in the rejections of the independent claims from which they
depend.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–25, 28–
31, 34, 35,
47–49
103 Hugenroth, Kikuchi

23–25,
28–31, 34,
35, 47–49
26, 33 103 Hugenroth, Kikuchi,
Robinson
26, 33
27, 32 103 Hugenroth, Kikuchi,
Sauterleute
27, 32
36, 50, 53,
54
103 Hugenroth, Kikuchi,
Okamoto
36, 50, 53,
54
Appeal 2019-005077
Application 14/673,462

7

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
50 103 Hugenroth, Kikuchi,
Okamoto, Bergman
50
51 103 Hugenroth, Kikuchi,
Okamoto, Sauterleute
51
52 103 Hugenroth, Kikuchi,
Okamoto, Robinson.
52
Overall
Outcome
23–36,
47–54

REVERSED