Ex Parte Gerdes

Patent Trial and Appeal BoardNov 27, 2012

10187201 (P.T.A.B. Nov. 27, 2012)

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. 10/187,201 07/02/2002 Ralf Gerdes 033275-252 7443 7590 11/27/2012 Robert S. Swecker BURNS, DOANE, SWECKER & MATHIS, L.L.P. P.O. Box 1404 Alexandria, VA 22313-1404 EXAMINER HAYES, JOHN W ART UNIT PAPER NUMBER 3628 MAIL DATE DELIVERY MODE 11/27/2012 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 RALF GERDES ____________ Appeal 2010-008292 Application 10/187,201 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008292 Application 10/187,201 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-30 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM-IN-PART. THE INVENTION The Appellant’s claimed invention is directed to a method of operating a gas storage plant (Spec. [0001]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for operating a gas storage power plant with at least one gas reservoir, at least one compressed-air-operated engine and at least two compressors, in which the at least two compressors are activated for charging the gas reservoir and at the same time are driven by at least one electrical drive device, and in which the at least one engine is activated for discharge in the gas reservoir and at the same time drives at least one current generation device, wherein a number of compressors or engines which are jointly active depends on a current price at a particular time. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Laing US 4,873,828 Oct. 17, 1989 Burke. US 5,924,283 Jul. 20, 1999 Mistr US 6,153,943 Nov. 28, 2000 Appeal 2010-00892 Application 10/187,201 3 The following rejections are before us for review: 1. Claims 1-29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mistr and Burke. 2. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over Mistr, Burke, and Laing. FINDINGS OF FACT We find the following findings of fact below are supported at least by a preponderance of the evidence1. Additional facts may appear in the Analysis section below. We adopt the Examiners facts regarding Mistr at col. 2:56-67, col. 3:51-63, col. 5:12-14, col. 10:41-46, col. 13:33-49; and Burke at col. 3:45-63 as found in the Answer at pages 3-5. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the prior art fails to disclose or suggest the claim limitation wherein a “number of compressors or engines which are jointly active depends on a current price at a particular time.” In contrast, the Examiner has determined that the cited rejection is proper (Ans. 3-6, 25-27). We agree with the Examiner. We adopt the fact findings cited above and also adopt the rationale for the rejection outlined in the Answer at pages 3-6. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-00892 Application 10/187,201 4 Here, Mistr has shown a compression turbine 12 connected to a gas storage reservoir 27 which is connected to an expansion turbine 18. Burke has shown a similar system with multiple compressors in which it is disclosed that it can be beneficial to produce the compressed air when the cost of electricity is low and also to use the compressed air during peak periods. The modification of Mistr to operate in a similar manner and use the production compressors when the price is low as suggested by Burke would have been an obvious modification to one of ordinary skill in the art to maximize profits. For these reasons the rejection of claim 1 is sustained. The Appellant has provided the same or similar arguments for claims 3-8, 10-19, and 21-29 and the rejection of these claims is sustained for the same reasons. With regard to claim 9, the modification of Mistr in view of Burke to have adjustable levels for price thresholds would have been an obvious modification to program the system to run automatically and would result in the argued claim limitations. The rejection of claim 9 is therefore sustained. The Appellant argues that the rejection of claim 2 is improper because there is no cited reason for the modification for the various claimed first, second, third, and fourth current prices, each of which has a relationship to drive a device (App. Br. 7). We agree with the Appellant’s arguments as the rejection of record (Ans. 7) fails to provide an articulated reasoning with rational underpinnings for the specifically cited claim limitation. The rejection of claim 2 is therefore not sustained. Claim 20 includes a similar claim limitation and the rejection of this claim is not sustained for the same reasons. Appeal 2010-00892 Application 10/187,201 5 With regard to claim 30, the Appellant argues that the claim limitation for at least two compressors assigned to a different pressure stage is improper (App. Br. 8-9). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 22-25). We agree with the Examiner. Laing shows a system with both a first pressure stage 5 and a second stage 12. The modification of the cited combination of Mistr and Burke to further include at least two compressors each assigned to the same pressure stage would have been an obvious, predictable modification to have a smoother pressure flow into the gas reservoir. For these reasons the rejection of claim 30 is sustained. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 3-19, and 21-29 under 35 U.S.C. § 103(a) as unpatentable over Mistr and Burke; and claim 30 under 35 U.S.C. § 103(a) as unpatentable over Mistr, Burke, and Laing. We conclude that Appellant has shown that the Examiner erred in rejecting claims 2 and 20 under 35 U.S.C. § 103(a) as unpatentable over Mistr and Burke. DECISION The Examiner’s rejection of claims 2 and 20 is reversed. The Examiner’s rejection of claims 1, 3-19, and 21-30 is sustained. AFFIRMED-IN-PART mls