Eronini UMEZ-ERONINI

Patent Trials and Appeals BoardJun 15, 2021

2020002452 (P.T.A.B. Jun. 15, 2021)

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. 15/550,164 08/10/2017 Eronini Iheanyi UMEZ-ERONINI 1633 159187 7590 06/15/2021 Eronini Umez-Eronini CONROW, INC. 1428 Primrose Road NW Washington, DC 20012 EXAMINER GONZALEZ, JULIO CESAR ART UNIT PAPER NUMBER 2896 MAIL DATE DELIVERY MODE 06/15/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERONINI IHEANYI UMEZ-ERONINI ____________ Appeal 2020-002452 Application 15/550,164 Technology Center 2800 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7 and 9–12. 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 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies pro se Applicant/Inventor Eronini Iheanyi Umez-Eronini as the real party in interest. Appeal Br. 3. Appeal 2020-002452 Application 15/550,164 2 The invention relates generally to a method and system to improve the capacity factor of energy resources, characterized by distributed intermittent power sources, such as wind turbines in a wind farm, through thermally efficient energy storage in compressed air. Spec. 1. Claims 1 and 4, reproduced from the Claims Appendix to the Appeal Brief, illustrate the invention (formatting added): 1. A method of compressed air energy storage for distributed intermittent power sources such as wind turbines on a wind farm, comprising: distributing air storage, compression and expansion, to a multiplicity of air storage tanks, compressor trains and expander/generator trains at the wind turbines or intermittent power sources; and linking intercoolers and aftercoolers of the compressor trains and reheaters and preheaters of the expander/generator trains in a thermal energy interchange network. 4. A system of compressed air energy storage for distributed intermittent power sources such as wind turbines on a wind farm, comprising: a plurality of compressed air storage tanks and air compression and expansion systems comprising compressor trains with intercoolers and aftercoolers and expander/generator trains with reheaters and preheaters, at a plurality of turbine stations in the wind farm; and a thermal energy interchange network with controlled cooling and heating circuits linking the intercoolers and aftercoolers of the compressor trains and the reheaters and preheaters of the expander/generator trains. Appeal 2020-002452 Application 15/550,164 3 Appellant requests review of the following rejections from the Examiner’s Final Office Action dated March 26, 2019 (Final Act. 4–12): I. claims 1–7 and 9–12 rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement; II. claims 1–7 and 10–12 rejected under 35 U.S.C. § 112(b) as indefinite;2 III. claims 1, 2, 4, and 6 rejected under 35 U.S.C. § 103 as unpatentable over Sinatov (US 2017/0016577 A1, published Jan. 19, 2017) and Enis (US 10,072,646 B2, published Sept. 11, 2018); IV. claims 3 and 9 rejected under 35 U.S.C. § 103 as unpatentable over Sinatov, Enis, and Heronemus (US 2003/0168864 A1, published Sept. 11, 2003); V. claims 7 and 12 rejected under 35 U.S.C. § 103 as unpatentable over Sinatov, Enis, and Wyatt (US 2014/0246232 A1, published Sept. 4, 2014); and VI. claims 5, 10, and 11 rejected under 35 U.S.C. § 103 as unpatentable over Sinatov, Enis, and Pflanz (US 6,100,600, published Aug. 8, 2000). OPINION APPEALED REJECTIONS 35 U.S.C. § 112 Rejection I: 35 U.S.C. § 112(a) – Written Description3 After review of the respective positions the Appellant and the Examiner present, we reverse the Examiner’s rejection of claims 1–7 and 9– 2 The Examiner has withdrawn the § 112(b) rejection of claim 9. Ans. 4. 3 We limit our discussion to claim 1 because Appellant argues the claims together. See generally Appeal Br. Appeal 2020-002452 Application 15/550,164 4 12 under 35 U.S.C. § 112 (a) for the reasons the Appellant provides in the Appeal Brief. We add the following for emphasis. The purpose of the written description requirement in 35 U.S.C. § 112(a) is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (citation omitted)). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351 (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. We refer to the Examiner’s Final Office Action for a complete statement of the Examiner’s rejection of claims 1–7 and 9–12 under 35 U.S.C. § 112(a). Final Act. 4–5. The principal premise of the Examiner’s rejection under this ground is that the Amendment to the claims dated March 12, 2019 introduces new matter and, therefore, the amended claims lack adequate written description Appeal 2020-002452 Application 15/550,164 5 for the added new matter. Final Act. 4.4 The Examiner further explains the Specification does not disclose how components (such as a wind turbine power source, compressor, and other devices) recited in the claims would function together. Id. In response, Appellant points to specific portions of the Specification specifically addressing the Examiner’s explanation and to the prior art reference to Enis5 as evidence of the skill in the art. Appeal Br. 11–15. In addition, Appellant contends that Application Figures 2 and 3 and their associated disclosure provide adequate written descriptive support for the claims, as amended. Appeal Br. 15. Appellant directs attention to the reference to Enis to establish the level of skill in the art with respect to operating systems similar to the claimed invention. Appeal Br. 14. In the Answer, the Examiner maintains the rejection because Appellant’s Specification lacks the specific operation data that Enis provides, such as operating hours, volume, pressure, fuel cost, place, and other relevant information, and that Application Figure 2 does not explain how the devices will be controlled to store air and thus provide an intermittent power source. Ans. 14–15. At the outset, we note that the Examiner fails to identify the language in the claim that is new matter. Final Act. 4. In fact, the subject matter that the Examiner appears to consider as new matter (“how such devices will be 4 Specifically, the Examiner finds the noted amendment “introduces a new matter [issue in the] understanding [of] the scope of the claim language.” Final Act. 4. 5 The Examiner relied on Enis as evidence in the prior art rejections. Appeal 2020-002452 Application 15/550,164 6 able to function or when or under what circumstances the compressor would function and/or the wind turbine power” (id.)) is not recited in the claims. The Examiner also contends that “[t]he present disclosure does not explain how the fluid flow is going to be regulated and how the thermal efficiency is optimized.” Final Act. 4. In response, Appellant again points to specific portions of the Specification specifically addressing the Examiner’s contention. Appeal Br. 15–17. For example, the Specification describes that the inventive method “includes a thermal energy interchange network linking all the turbine stations with well insulated controlled cooling and heating circuits.” Spec. 2; see Appeal Br. 16. The Specification further describes that [e]fficiency and capacity improvements result from the matching of heat production of the energy-storing turbines with the heat demand of the turbines producing power from stored energy. The compression and expansion phases of each turbine station is no longer directly coupled to the global off-peak and peak power demand cycle, and the conventional fuel requirement during expansion is grossly reduced or eliminated but without the attendant need for formal long-term thermal energy storage due to advanced management of the thermal energy interchanges in the heat network. The optimal scheduling of the turbines’ energy storage and power production and generation phases is in addition to the other complex objectives of power and load control of the wind farm. Wind turbines are spread over a large area, and not all turbines encounter the same transient wind conditions. Moreover the layout of turbines on the farm, whether dictated by geographical features, prevailing wind direction or other factors introduce turbine aerodynamic Appeal 2020-002452 Application 15/550,164 7 interaction into the control mix. Separation of the compression and turbo-expander components and operations implies that the compressor size can be optimized independently of the turbo-expander design and standard production compressors may be used in the system configuration. Spec. 3. In addition, the Specification describes that “[t]he turbine subsystem controls multiply to include the additional components associated with the compressor and expander/generator trains and the air storage tank; the farm level controller objectives expand to include regulation of flow and energy interchange in the heat network and optimization of thermal efficiency throughout the farm.” Id. at 6. Lastly, Appellant references Application Figures 2 and 3 as providing adequate written descriptive support for this disputed language. Appeal Br. 16–17. The Examiner asserts that the statements made in the Appeal Brief are only general in nature. Ans. 16. However, the Examiner fails to explain adequately why the cited portions of the Specification are insufficient to reasonably convey to those skilled in the art that the inventor had possession of the disputed subject matter as of the filing date. Therefore, we agree with Appellant that the Examiner has not met the burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. Accordingly, we reverse the Examiner’s rejection of claims 1–7 and 9–12 under 35 U.S.C. § 112(a) for the reasons Appellant presents and we give above. Appeal 2020-002452 Application 15/550,164 8 Rejection II: 35 U.S.C. § 112(b) – Indefiniteness After review of the respective positions the Appellant and the Examiner present, we affirm the Examiner’s rejection of claims 1, 2, 4–7, and 10–12 under 35 U.S.C. § 112(b) for the reasons the Examiner provides. However, we reverse the Examiner’s rejection of claim 3 under 35 U.S.C. § 112(b) for the reasons the Appellant provides in the Appeal Brief. We add the following for emphasis. Claim 1 The Examiner finds that the use of exemplary claim language “such as” in the first claim 1 language “distributed intermittent power sources such as wind turbines on a wind farm” is indefinite because it does not clearly set forth whether the phrase limits the claim to wind turbines on a wind farm as the only distributed intermittent power source. Final Act. 6; Ans. 18. In addition, the Examiner finds the further limitation reciting “the wind turbines or intermittent power sources” in claim 1 is indefinite because it again raises the issue as to what intermittent power sources other than wind turbines are contemplated. Final Act. 6; Ans. 19. With respect to the use of the phrase “such as” in the first claim 1 language, Appellant argues the phrase is used “to imply to the same degree, amount, or extent,” and the Examiner has not demonstrated how “wind turbines on a wind farm” does not satisfy the degree of “intermittent power sources.” Appeal Br. 18; Reply Br. 13–14. We are unpersuaded by Appellant’s argument. The generic phrase “such as wind turbines on a wind farm,” when coupled with “intermittent power source,” gives rise to confusion over the Appeal 2020-002452 Application 15/550,164 9 intended scope of the claim. Compare, e.g. Ex parte Hall, 83 USPQ 38 (Bd. App. 1949) (“material such as rock wool or asbestos”); Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949) (“lighter hydrocarbons, such, for example, as the vapors or gas [*4] produced”); and Ex parte Steigerwald, 131 USPQ 74 (Bd. App. 1961) (“normal operating conditions such as while in the container of a proportioner”). Claims 2, 4, and 5 In the Answer, the Examiner also points out that each of claims 2, 4, and 5 recite the exemplary claim language “such as” and finds that the disputed language fails to set the meets and bounds of the claims for reasons substantially similar as those the Examiner gives for claim 1. Appellant does not provide further arguments with respect to this finding by the Examiner. Therefore, we find no reversible error in the Examiner’s determination that these claims are indefinite. Claim 3 The Examiner finds the claim 3 language “optimization of thermal efficiency” is indefinite because it does not set forth clearly what is considered to be an optimum efficiency. Final Act. 6; Ans. 19. We agree with Appellant’s arguments that claim 3, “read in light of the specification, [as discussed with respect to the written description rejection,] reasonably apprise[s] those skilled in the art both of the utilization and scope of the invention.” Appeal Br. 18; see also id. at 15–17; Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 Appeal 2020-002452 Application 15/550,164 10 F.2d 613, 624 (Fed. Cir. 1985)). That is, one skilled in the art is able to ascertain what “optimization of thermal efficiency” is when reading claim 3 in light of the noted portions of the Specification. Claim 5 The Examiner finds the claim 5 language reciting a number of the claimed system’s components as “incorporated within” one of a number of structures is indefinite because it is not clear how the recited elements are incorporated within the recited structures. Final Act. 6; Ans. 19. We agree with Appellant’s arguments that claim 5, “read in light of the specification, [including Application Figure 2,] reasonably apprise[s] those skilled in the art both of the utilization and scope of the invention.” Appeal Br. 18; see also id. at 15–17; Hybritech Inc., 802 F.2d at 1385 (citing Shatterproof Glass Corp., 758 F.2d at 624). That is, one skilled in the art is able to ascertain that the compression and other devices can be mounted in structures other than a platform when reading claim 5 in light of the Specification. See Spec. 5. Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4–7, and 10–126 under 35 U.S.C. § 112(b) for the reasons the Examiner provides, but reverse the Examiner’s rejection of claim 3 under 35 U.S.C. § 112(b) for the reasons the Appellant provides in the Appeal Brief. 6 For completeness, the rejection of claim 5 on this ground is affirmed in view of the claim language “such as” in the claim. Appeal 2020-002452 Application 15/550,164 11 NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112 35 U.S.C. § 112(b) – Indefiniteness Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the following NEW GROUND OF REJECTION for claims 1–3 and 9 under 35 U.S.C. § 112(b) as indefinite.7 The text of 35 U.S.C. § 112(b) requires “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.” “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112(b) if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech Inc., 802 F.2d at 1385 (citing Shatterproof Glass Corp., 758 F.2d at 624). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. Language is an imprecise method of drawing boundaries 7 This new ground of rejection is applicable only to method claims 1–3 and 9. For the purposes of this opinion, we focus on claim 1 in the new ground with the understanding that our discussion applies to dependent method claims 2, 3, and 9. Appeal 2020-002452 Application 15/550,164 12 delineating patent rights, thus unreasonable precision cannot be demanded. Id. On the other hand, the claims must notify the public of what they are excluded from making and using. Id. For this reason, while exact precision is not required, an applicant is required to use language as precise as the subject matter reasonably permits. Id. Claim 1 Claim 1 recites a method of compressed air energy storage. However, the language of the recited first and second method steps raises an issue of indefiniteness. Claim 1 recites a first method step “distributing air storage, compression, and expansion to a multiplicity of air storage tanks, compressor trains.” It is not clear what this method step entails. According to the Specification, “[c]ompressed air 218 leaving the compressor train 216, enter[s] the air storage tank 219 through a complement of flow and pressure control devices 220. Compressed air supply 221 to the expander/generator train 217, exit[s] the air storage 219 through a complement of flow and pressure control devices 222.” Spec. 4. That is, the Specification describes two distinct steps: (1) compressing air using a compressor train to store the compressed air in an air storage tank and (2) expanding air using an expander/generator as it leaves the air storage tank for further use. The disputed claim language does not reflect these steps nor does it recite how the compressor train and expander/generator function to perform the claimed method step. On the contrary, the disputed language, as written, appears to recite that air is somehow compressed and expanded into air storage tanks. Appeal 2020-002452 Application 15/550,164 13 Based on the noted portion of the Specification, that does not appear to be the case. Claim 1 also recites a second method step “linking intercoolers and aftercoolers of the compressor trains and reheaters and preheaters of the expander/generator trains in a thermal energy interchange network” that also raises an issue of indefiniteness. The Specification describes that the thermal energy interchange networks link all turbine stations and “incorporate circuit headers 304 and 305, which respectively, distribute the cool and hot fluids to the cooling and heating circuits, 209 and 210.” Spec. 2, 5. However, given that the first method step is indefinite because it does not recite how the compressor train and the expander/generator perform the first method step, it is not clear how the linking of intercoolers and aftercoolers in a thermal energy interchange network of the second method step relates to the first method step. Thus, after careful review of the record before us, we determine that the language of independent claim 1 and its dependent claims do not particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention. That is, we are unable to determine the metes and bounds of the subject matter of independent claim 1 and its dependent claims. Accordingly, on this record, claims 1–3 and 9 are indefinite for the reasons we give above. Appeal 2020-002452 Application 15/550,164 14 APPEALED PRIOR ART REJECTIONS Rejections III–VI: 35 U.S.C. § 103 Prior Art Rejections of Method Claims 1–3 and 9 (Rejections III and IV) Having determined that the subject matter of method claims 1–3 and 9 is indefinite for reasons expressed in the above new ground of rejection, we are unable to determine the propriety of the prior art rejections of claims 1–3 and 9 under 35 U.S.C. § 103, as presented in the Examiner’s Rejections III and IV. The review of the prior art rejections of claims 1–3 and 9 would require considerable speculation as to the scope of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, procedurally reverse the prior art rejections of claims 1–3 and 9 under 35 U.S.C. § 103. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 103, and not a reversal based upon the merits of the rejections. Prior Art Rejections of System Claims 4–7 and 10–12 (Rejections III, V, and VI) After review of the respective positions the Appellant and the Examiner present, we affirm the Examiner’s prior art rejections of claims 4– 7 and 10–12 under 35 U.S.C. § 103 for the reasons the Examiner provides. Appellant presents arguments only for independent system claim 4. See generally Appeal Br.8 Accordingly, we select claim 4 as representative 8 We recognize that Appellant’s arguments address the subject matter of independent claims 1 and 4. However, we limit our discussion of the arguments as they apply to independent claim 4 given the procedural reversal of claim 1. Appeal 2020-002452 Application 15/550,164 15 of the subject matter claimed and decide the appeal as to all prior art grounds of rejections based on the arguments presented for claim 4. As a preliminary matter, we address Appellant’s contention that Sinatov is not available as prior art. Appeal Br. 12. Appellant appears to contend that Sinatov (US 2017/0016577 A1, published January 19, 2017) is not prior art against the claimed invention because the earliest date it is entitled to is the filing date of its PCT Application No. PCT/US15/20306, filed: Mar. 12, 2015. Appeal Br. 12. Appellant asserts that this date does not antedate the earliest priority date for Application No. 15/550,164 based on the corresponding Provisional Application No. 62/116,564, filed on Feb. 16, 2015. Id. In the Answer, the Examiner explains the cited portions of Sinatov are entitled to the filing date of March 12, 2014 of its corresponding US Provisional Application No. 61/951,907 as the earliest effective filing date under 35 U.S.C. § 102(d)(2). Ans. 13. Appellant does not contest the Examiner’s above noted explanation in the Reply Brief. See generally Reply Br. Accordingly, we discern no error in the Examiner’s determination that Sinatov is available as prior art against the claimed invention. Independent claim 4 We first note that independent claim 4 is a “system” claim. In order to be patentable the subject matter of a claim must fit into one and only one of the statutory claims of invention enunciated in 35 U.S.C. § 101, i.e., a process, machine, manufacture, or composition of matter. Claims cannot be directed to combinations of those classes of invention. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to Appeal 2020-002452 Application 15/550,164 16 a combination of statutory claims of invention are not permitted and are indefinite). We interpret system claim 4 as directed to an apparatus, i.e., a structure which can be termed a machine or manufacture under 35 U.S.C. § 101. Claim 4 recites a system (apparatus) of compressed air energy storage for distributed intermittent power sources comprising a thermal energy interchange network with controlled cooling and heating circuits linking intercoolers and aftercoolers of compressor trains and reheaters and preheaters of expander/generator trains. We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 4. Final Act. 7–9. Briefly, the Examiner finds Sinatov teaches a system of compressed air energy storage with compressor trains and expander/generator trains, but does not teach intermittent power sources nor a thermal interchange network linking intercoolers and aftercoolers of the compressor train and the reheaters and preheaters of the expander/generator trains. Final Act. 8. The Examiner relies upon Enis to teach intermittent power sources used in air storage power systems, with a thermal energy interchange network of the linked elements of the claim. Id. The Examiner determines it would have been obvious to one of ordinary skill in the art to modify the power system of Sinatov with the features of Enis to enhance the efficiency of the power system. Id. at 9. Appellant argues Enis does not disclose the claimed thermal energy interchange network. Appeal Br. 8–9. According to Appellant, the claimed thermal energy interchange network separates (1) the energy storing Appeal 2020-002452 Application 15/550,164 17 (compressor run) and power production from storage (expander/generator run) functions in time for the same intermittent power source station and (2) the function of power production from the energy resource (e.g., wind) between intermittent power source stations. Id. at 9. Appellant further asserts that [t]he configuration, structure, and functions of the elements necessary for a heat interchange network in this setting, including continuous loops, and branch loops, interaction of cooling and heating circuits, and control of flow and energy interchanges in the network [are] all disclosed in the specifications and drawings of the application. Id. In contrast with the claimed invention, Appellant asserts that Enis’s configuration is different from the claimed invention because Enis’s key innovation was the use of a pressure vessel that no longer needed to supply heat from its thick walls to cooler and cooler expanding gases leaving the vessel. Id. at 10. According to Appellant, Enis discloses a number of features that improve overall system efficiency, depending on various output power objectives, such as a combined heat and power system to power either a steam-driven generator set or an absorption chiller, fuel-driven power generation, hot water, etc. Id. However, Appellant contends that Enis does not disclose how and the means to do the separation in time of heat production during compression and the heat requirement during expansion/generation. Id. Appellant’s arguments do not persuade us of reversible error in the Examiner’s determination of obviousness. Appellant, through the arguments presented, urges us to interpret claim 4 based on components of a system described in the Specification. Appeal Br. 9. However, the language of the Appeal 2020-002452 Application 15/550,164 18 claims only recites a system in general terms as comprising a plurality of compressed air storage tanks and air compression and expansion systems comprising compressor trains with intercoolers and aftercoolers and expander/generator trains with reheaters and preheaters and a thermal energy interchange network with controlled cooling and heating circuits linking the intercoolers and aftercoolers of the compressor trains and the reheaters and preheaters of the expander/generator trains. Claim 4 does not recite the argued continuous loops, and branch loops, interaction of cooling and heating circuits, and control of flow and energy interchanges in the network. Therefore, Appellant’s arguments do not distinguish the claimed invention from the combined teachings of the prior art. Appellant further argues Sinatov teaches a liquid air energy storage (“LAES”) system while Enis and the claimed invention is directed to compressed air energy storage (“CAES”) systems. Appeal Br. 10–11; Reply Br. 9. According to Appellant, the LAES and the CAES technologies are very distinct in terms of their respective operating temperatures (for example, around -186°C v. marginally above ambient temperature) and purposes (enable an adsorber functions v. minimize storage). Appeal Br. 11. Appellant contends LAES uses passive thermal energy storage units but that there is no motivation to distribute LAES liquid air storage to a multiplicity of power stations in an energy farm for design and cost reasons. Id. We are not persuaded of reversible error in the Examiner’s determination of obviousness. As the Examiner explains, Sinatov and Enis “are concerned with the production of electrical energy and ways to improve such production of electric energy by using similar components.” Ans. 9. As further found by Appeal 2020-002452 Application 15/550,164 19 the Examiner, both Sinatov and Enis disclose systems that include “compressors, storage tanks, expanders, generators and thermal storage.” Ans. 9 Sinatov Fig. 1B; Enis Fig. 1. Further, Appellant concedes that the two systems share many components with one another. Appeal Br. 11. Based on this, it would appear that the only difference between the two systems is the temperature at which the air is compressed. While a LAES system includes additional equipment to lower the temperature of the stored air to liquid state, this does not change the fact that both systems are directed to compressing air for storage and subsequently expanding the air for power generation. Sinatov Fig. 1B; Enis Fig. 2. Moreover, as Appellant acknowledges (Appeal Br. 10), Enis is also concerned with waste heat energy and its recovery for use within the system in a thermally efficient manner. Enis col. 3, l. 57–col. 4, l. 14; col. 6, ll. 19–26. Thus, Appellant has not adequately explained why one of ordinary skill in the art would not use the Sinatov system with the intermittent power source9 and thermal interchange network described in Enis in view of Enis’s disclosure of improving thermal efficiency by recovering waste heat. Accordingly, we affirm the prior art rejections of claims 4–7 and 10– 12 under 35 U.S.C. § 103. 9 We note that Appellant has not presented substantive arguments contesting adequately the Examiner’s determination that it would have been obvious to use Enis’s intermittent power source in Sinatov’s system. See generally Appeal Br. and Reply Br. Appeal 2020-002452 Application 15/550,164 20 CONCLUSION We enter a new ground of rejection of claims 1–3 and 9 under 35 U.S.C. § 112(b). We reverse the rejection of claims 1–7 and 9–12 under 35 U.S.C. § 112(a). We affirm the rejection of claims 1–2, 4–7, and 10–12 under 35 U.S.C. § 112(b). We reverse the rejection of claim 3, under 35 U.S.C. § 112(b). We procedurally reverse the prior art rejections of claims 1–3 and 9 under 35 U.S.C. § 103. We affirm the prior art rejections of claims 4–7 and 10–12 under 35 U.S.C. § 103. Because no single rejection or combination of rejections reaches all the claims, our decision is an affirmance in part. Appeal 2020-002452 Application 15/550,164 21 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–7, 9– 12 112 Written Description 1–7, 9–12 1–7, 10– 12 112 Indefiniteness 1, 2, 4–7, 10–12 3 1–3, 9 1, 2, 4, 6 103 Sinatov, Enis 4, 6 1, 2 3, 9 103 Sinatov, Enis, Heronemus 3, 9 7, 12 103 Sinatov, Enis, Wyatt 7, 12 5, 10, 11 103 Sinatov, Enis, Pflanz 5, 10, 11 Overall Outcome 1, 2, 4–7, 10–12 3, 9 1–3, 9 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 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 Appeal 2020-002452 Application 15/550,164 22 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2018). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)