Ex Parte Benignos

Patent Trial and Appeal BoardJul 31, 2018

13904740 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/904,740 08/16/2013 6147 7590 08/02/2018 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 FIRST NAMED INVENTOR Jorge Carretero Benignos 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 268127 (551-0104) 1003 EXAMINER WAGGENSPACK, ADAM J ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 08/02/2018 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): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORGE CARRETERO BENIGNOS Appeal2017-009252 Application 13/904, 740 1 Technology Center 3700 Before MEREDITH C. PETRA VICK, MICHAEL C. ASTORINO, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellant appeals from the Examiner's decision rejecting claims 7, 8, 13, 14, and 20-32. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to the Appellant, "[t]he real party in interest is General Electric Company." Appeal Br. 2. Appeal2017-009252 Application 13/904, 7 40 STATEMENT OF THE CASE Claimed Subject Matter Claims 7, 13, and 2 0 are the independent claims on appeal. Claim 7, reproduced below, is illustrative of the subject matter on appeal. 7. A heat exchanger assembly comprising: an inlet configured to accept a fluid to be cooled; an outlet configured to provide an exit for a flow of the fluid that has been cooled; and a core, the core comprising: at least one passageway formed therein configured for passage of the fluid to be cooled from the inlet to the outlet; and a cooling surface configured to receive a cooling flow therethrough, the core configured to direct the cooling flow to pass by at least a portion of the at least one passageway to cool the fluid, wherein the core is comprised of a high temperature geopolymer composite material, the high temperature geopolymer composite material configured for use at temperatures above about 300 degrees Celsius, the high temperature geopolymer composite material having a thermal conductivity below about 20 Watts/(meter*degree Kelvin), wherein the high temperature geopolymer composite material has an in-plane thermal conductivity of about 10 Watts/(meter*degree Kelvin) or lower and a through-plane thermal conductivity of about 1 Watts/(meter*degree Kelvin) or lower. Rejections Claims 7, 8, 20-25, and 29--32 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Thomas (US 2016/0123230 Al, pub. May 5, 2016) in view of Waltz (US 2010/0194179 Al, pub. Aug. 5, 2010), either alone or 2 Appeal2017-009252 Application 13/904, 7 40 also in view of Tethal et al. (US 2014/0300030 Al, pub. Oct. 9, 2014) (hereinafter "Tethal"). Claims 7, 8, 13, 14, and 20-32 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Rolt (US 7,716,913 B2, iss. May 18, 2010) in view of Thomas, Waltz, and Tethal. ANALYSIS The Examiner's rejections rely on Thomas to teach a heat exchanger and Waltz and/or Tethal to teach a geopolymer composite material. See Final Act. 3--4, 8. The Examiner finds that none of the applied prior art teaches "wherein the high temperature geopolymer composite material has an in-plane thermal conductivity of about 10 Watts/(meter*degree Kelvin) or lower," as recited in independent claims 7, 13, and 20. See id. at 4--5, 8. To remedy this deficiency in the applied prior art, the Examiner reasons: As to the particular claimed thermal conductivities, it is Examiner's position that having the material have the particular thermal conductivities claimed is obvious, as thermal conductivity is a results effective variable with the results being how much heat, thermal conductivity is a results effective variable with the results being how much heat is conducted through the material to exchange heat ( and in what directions as to the in-plane versus through-plane thermal conductivity). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the materials' thermal conductivity in the claimed range, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F .2d 272 ... (CCPA 1980). 3 Appeal2017-009252 Application 13/904, 7 40 Id. at 4--5. The Examiner appears to bolster the foregoing reasoning by finding that Waltz teaches that in-plane thermal conductivity is a result effective variable. See Ans. 18 (citing Waltz ,r 29). The Appellant argues that the Examiner's rejection is based on impermissible hindsight. See Appeal Br. 7-10. The Appellant's argument is persuasive. The Examiner's rejection relies on Waltz's teaching of a geopolymer composite material, which has an in-plane thermal conductivity greater than about 100 W/mk, to be modified to be 10 W/mk or lower, as claimed. It is the Examiner's position that a skilled artisan would know that modifying a geopolymer composite material will effect "in what direction and how efficiently heat will flow in-plane, and it would be routinely optimized by one of ordinary skill in the art to obtain the desirable result." Ans. 18 (citing Waltz ,r 29). Additionally, the Examiner determines that "it is obvious to select values within the claimed range as being suitable for a heat exchanger." Id. at 21-22. However, this determination appears to rely on the Appellant's invention as described by the Specification. For example, the Examiner explains that the particular [ claimed] values listed are within the range that would be considered obvious to one of ordinary skill in the art, noting also that Appellant['s] specification (noting the table at [0032]) apparently discloses that the claimed ranges are known (it is noted also that the material is disclosed as being produced using ordinary art known methods, further indicating that the claimed ranges are known and within the level of ordinary skill in the art). Id. at 20; see also id. at 21 (citing Spec. ,r,r 14, 30). In this case, the Examiner fails to adequately explain-with evidence and/or technical reasoning and without the benefit of the Appellant's Specification - how 4 Appeal2017-009252 Application 13/904, 7 40 reaching a desirable result in this particular case would involve modifying the in-plane thermal conductivity to be 10 W/mk or lower as claimed. Further, the Examiner suggests that Waltz's geopolymers (including polysialate with carbon reinforcement) may be capable of or otherwise may be modified to meet the claimed range of the in-plane thermal conductivity of about 10 Watts/(meter*degree Kelvin) or lower. See, e.g., Ans. 19 ("Waltz's geopolymer (polysialate with carbon reinforcement) is the same as the sole example geopolymer provided by the specification, which per se means that this material must be capable of taking on the claimed values."; "[A]lthough Waltz does not disclose the material having the specific thermal conductivities, Waltz discloses that the thermal conductivities can be varied ([0029]), indicating that the particular range given for those values is not necessarily limiting."). These suggestions fail to remedy the deficiency in the Examiner's rejection. Thus, we do not sustain the Examiner's rejections under 35 U.S.C. Â§ 103 of: claims 7, 8, 20-25, and 29--32 as unpatentable over Thomas in view of Waltz, either alone or also in view of Tethal; and claims 7, 8, 13, 14, and 20-32 as unpatentable over Rolt in view of Thomas, Waltz, and Tethal. DECISION We REVERSE the Examiner's decision rejecting claims 7, 8, 13, 14, and 20-32. REVERSED 5