Ex Parte Fennessy et al

Patent Trial and Appeal Board

Aug 16, 2017

12555152 (P.T.A.B. Aug. 16, 2017)

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.
12/555,152 09/08/2009 CRAIG FENNESSY ACDL3913UA 1045
26822 7590 08/18/2017
Hackler Daghighian Martino & Novak
433 North Camden Drive, Fourth Floor
Beverly Hills, CA 90210
EXAMINER
MENDOZA-WILKENFEL, ERIK
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
marc @martinopatentlaw.com
jcf@hdmnlaw.com
marc@hdmnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG FENNESSY and DUANE BERGMANN
Appeal 2015-007638
Application 12/555,152
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—8 and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007638
Application 12/555,152
THE INVENTION
Appellants’ invention relates to a portable transfer system for
cryogenic fluids. Spec. 1. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A portable gas filling system for transfer of cryogenic
fluids at low pressure to high pressure gas cylinders, the system
comprising:
a movable platform;
a cryogenic fluid pump, disposed on the platform,
configured to be connectable to an off platform cryogenic fluid
Dewar;
a vaporizer, disposed on the platform, configured to be
connectable between the fluid pump and an off platform gas
cylinder;
a vacuum pump, disposed on the platform, configured for
purging of interconnecting system lines; and
a gas accumulator disposed on the platform configured for
enabling storage of gas and connected to a gas return line
configured for pressurization of the Dewar;
wherein at least a width of the movable platform is less
than 36 inches wherein the portable gas filling system including
the cryogenic fluid pump, the vaporizer, the vacuum pump and
the gas accumulator are also within the 36 inch width of the
movable platform.
The Examiner relies upon the following as evidence in support of the
THE REJECTIONS
rejections:
Biever US 3,727,652
Mattiola US 4,881,374
Platz US 5,762,119
Cohen US 6,886,609 B2
Deppermann US 2009/0025288 A1
Brunner US 2009/0308083 A1
Botti EP 0 706 903 A1
Apr. 17, 1973
Nov. 21, 1989
June 9, 1998
May 3, 2005
Jan. 29, 2009
Dec. 17, 2009
Apr. 17, 1996
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Appeal 2015-007638
Application 12/555,152
The following rejections are before us for review:
1. Claims 1—4 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Platz, Mattiola, Brunner, and Cohen.
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Platz, Mattiola, Cohen, Brunner, and Biever.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Platz, Mattiola, Brunner, Cohen, Biever, and Botti.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Platz, Mattiola, Brunner, Biever, Cohen, and Deppermann.
OPINION
Unpatentability of Claims 1—4 and 10 over
Platz, Mattiola, Brunner, and Cohen
Claim 1
The Examiner finds that Platz discloses the invention substantially as
claimed except for, among other things, a vacuum pump, for which the
Examiner relies on Mattiola. Final Action 2—3. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Platz with Mattiola’s purge system
to remove unwanted fluid from system lines. Id.
The Examiner concedes that Platz does not teach a gas accumulator
connected to a return line, for which the Examiner relies on Brunner. Id.
at 3—4. The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to modify Platz
with Brunner’s gas return line. Id. at 4.
The Examiner further concedes that Platz does not explicitly teach a
movable platform configured to pass through a 36 inch door. Id. The
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Appeal 2015-007638
Application 12/555,152
Examiner relies on Cohen as describing a mobile cryogenic supply system
on mobile support means comprised of pallets or skids. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Platz by placing the system
on a pallet as taught Cohen. Id. at 5. According to the Examiner, a person
of ordinary skill in the art would have done this to accomplish the
predictable result of being able to lift up the portable system using a fork lift.
Id. The Examiner relies on a Department of Defense standard as evidence
that pallets may be less than 36 inches wide. Id. Finally, the Examiner finds
that it would have been a matter of obvious design choice to create a system
that is 36 inches wide. Id. (citing In re Rose, 220 F.2d 459 (CCPA 1955)).
Appellants’ arguments for patentability relate primarily to the size
(width) of their invention. Appeal Br. 11—16. Appellants contend that Platz
is directed to a system that is transportable on a semi-tractor/trailer rig. Id.
at 12. Similarly, Appellants point to language in Cohen that they contend
indicates that Cohen’s system is so large that it must be transported by
barges, ships, aircraft, trailers, and rail cars. Id. at 13.
Appellants further argue that the Examiner has failed to articulate
sufficient reasoning as to why a person of ordinary skill in the art would
have found it obvious to reduce Platz and Cohen to the claimed width. Id.
at 15. Appellants point out that their invention is not a mere change in size,
as evidenced by the Examiner’s need to combine four prior art references.
Id. Appellants point out that their invention entails more than just shrinking
the size of the individual components, as it also entails combining them onto
a single, mobile platform of the claimed width. Id.
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Appeal 2015-007638
Application 12/555,152
Finally, Appellants argue that their invention lies in the discovery of a
problem, namely, the time and effort required to transport high pressure gas
cylinders to a refilling station. Id. at 17. Appellants claim that their
invention required insight into the problem and that, even though their
solution might appear to be obvious in hindsight, their insight into the
underlying problem renders their invention patentable. Id. at 17—18.
Appellants rely on principles espoused in the cases of In re Sponnoble, 405
F.2d 578, 585 (CCPA 1969) and In re Peeks, 612 F.2d 1287, 1288 (CCPA
1980) in support of this position.
In response, the Examiner states that Platz and Cohen demonstrate
that it is known to have a portable gas filling system on a “skid.” Ans. 15.
The Examiner then refers to Department of Defense Design Criteria
Standard: MIL-STD-1660 section 4.8.3, as evidence that a “skid” can be less
than 36 inches in width. Id.
The document: Department of Defense Design Criteria
Standard: MIL-STD-1660 section 4.8.3, provided to the
appellant in previous office actions, teaches a skid (pallet style
1A which is 35 X 45-1/2 (inches)) that has a width less than 36
inches. The overall concept to take away from the examiner's
position is that fluid systems are known to be placed on pallets
or skids for the purpose of mobility and that the width of a
pallet (broadly interpreted as a skid) is known.
Id. at 16. However, the Examiner then concedes that: “Nowhere in Cohen
does it say what the skid dimensions should or should not be in order to be
transported by a flatbed truck.” Id. at 17. The Examiner then reverts to
principles of “design choice” stating that sizing the system to fit onto a 36
inch wide platform represents a mere change in size that requires no more
than ordinary skill. Id.
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Appeal 2015-007638
Application 12/555,152
As an initial matter, we think that the Examiner errs in finding that
Platz may be only 36 inches wide because it refers to being placed on a skid.
Platz explains that:
In the illustrated embodiment, mobile chassis 12 is in the form
of a trailer having a plurality of wheels 20 and is adapted for
connection to and towing by a vehicle 22, such as a truck
tractor. In this embodiment, the other components are mounted
on chassis 12. In an alternate embodiment (not shown), the
other components could be mounted to a skid which could then
be transported on a flatbed trailer.
Platz, col. 2,11. 59—65. Figure 1 of Platz shows a system that fills the entire
surface of a truck trailer. Platz, Fig. 1. There is no teaching in Platz to
support the Examiner’s supposition that the system would be reduced in size
if first mounted on a skid before being transported on a flatbed trailer.
Similarly, Cohen discloses a system comprised of tanks 7 and 9,
hydrogen precursor conversion means 13 including water electrolysis unit 23
and methanol reformer 25, hydrogen receiving tanks 15, compressor
system 17, and delivery means 21 which typically includes pressure
regulators, flow control valves, a flow metering and recording system,
piping, and high pressure hoses and connections for transferring hydrogen
product to a receiving facility. Cohen 8,1. 18 — col. 9,1. 23. Cohen’s Figure
depicts the system mounted on a tractor-trailer rig. Id. Fig. (tractor 3,
trailer 5). Cohen explains that transportation means for the system are
comprised of trucks, trailers, tractor-trailers, rail cars, barges, ships, and
aircraft. Id. col. 2,11. 43 46. Although Cohen also mentions pallets and
skids (col. 7,1. 42), no reasonable person would interpret Cohen as
disclosing a system that is only 36 inches wide. The Examiner’s reliance on
a Military Specification as disclosing that a pallet can be 36 inches wide is
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Appeal 2015-007638
Application 12/555,152
unavailing. Ans. 5. Just because the Military Specification indicates that
some pallets may be 36 inches wide does not mean that Cohen contemplates
such size when it refers to a pallet. Furthermore, there is no clear teaching in
Cohen that the system can fit on a single pallet of any size, much less only
one pallet that is less than 36 inches wide.
In view of the foregoing discussion, the finding by the Examiner that
Platz and/or Cohen disclose a portable system on a moveable platform that is
only 36 inches wide is not supported by a preponderance of the evidence.
Instead, a person of ordinary skill in the art would view Platz and Cohen as
emblematic of the problem to be solved, i.e., systems so large that receiving
tanks would need to be transported out of a building to Platz’s or Cohen’s
truck for refilling.
That brings us to the issue of whether it would have been obvious, as
a matter of mere design choice, to decrease the size of the combined
PI atz/Matti ol a/Bmnn er/Coh en system to the claimed dimension. We agree
with the Examiner that In re Rose generally stands for the proposition that
patentability may not be predicated upon mere compactness or size. Rose,
220 F.2d at 463. However, this begs the question of whether Appellants’
invention is merely a matter of reduction in size. We are persuaded by
Appellants’ arguments that the invention involves more than that.
Appellants explain that, prior to their invention, refilling high pressure
gas cylinders entailed moving cylinders from inside a building to a trailer
located outside of the building. Appeal Br. 11. Appellants’ invention
obviates this movement of gas cylinders by creating a refilling station that
can be moved into a building through a 36 inch door so that refilling can
occur inside the building and without moving the cylinders. Id. Appellants
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Application 12/555,152
allege, and the Examiner does not dispute, that refilling in this manner
reduces cost and saves time. Id.
We are persuaded by Appellants’ argument that patentability in this
case arises from insight into the problem to be solved even if the solution
then becomes obvious in light of this insight.
[A] patentable invention may lie in the discovery of the source
of a problem even though the remedy may be obvious once the
source of the problem is identified. This is part of the ‘subject
matter as a whole’ which should always be considered in
determining the obviousness of an invention ....
Peeks, 612 F.2d at 1290 (quoting Sponnoble, 405 F.2d at 585). Here, the
Examiner never addresses Appellants’ “problem to be solved” arguments
based on Sponnoble and Peeks, despite being required to do so.
Where an applicant contends that the discovery of the source of
a problem would have been unobvious to one of ordinary skill
in the pertinent art at the time the claimed invention was made,
it is incumbent upon the PTO to explain its reasons if it
disagrees.
Id. (emphasis added).
Reviewing the record before us, we find no support for the
Examiner’s conclusion that it would have been obvious to solve the problem
related to inefficiencies in filling gas cylinders using a large, truck mounted
facility such as Platz, by reducing the size of the constituent components of a
refilling station and rearranging them to fit on a portable platform that will
fit through a door.
For the foregoing reasons, we do not sustain the Examiner’s
unpatentability rejection of claim 1.
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Appeal 2015-007638
Application 12/555,152
Claims 2—4 and 10.
Claim 10 is an independent claim that is substantially similar in scope
of claim 1. Claims App. Claims 2-4 depend, directly or indirectly, from
claim 1. Id. The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2-4 and 10.
Unpatentability of Claims 5—8
over Combinations based on Platz and Cohen
Claims 5—8 depend, directly or indirectly, from claim 1. Claims App.
These claims are rejected over Platz and Cohen together with various other
references. Final Action 7—9. The Examiner’s grounds of rejection of these
rely on Platz and Cohen for the same factual findings as the rejection of
claim 1. Id. The rejections of these claims suffer from the same infirmity
that was identified above with respect to claim 1, which infirmity is not
cured by the additionally cited references. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
rejections of claims 5—8.
DECISION
The decision of the Examiner to reject claims 1—8 and 10 is
REVERSED.
REVERSED
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