Ex Parte Goswami et al

Patent Trial and Appeal Board

Feb 25, 2019

13665270 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/665,270 10/31/2012
24504 7590 02/27/2019
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Dharendra Yogi Goswami
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.
292103-1130 9591
EXAMINER
DOUNIS, LAERT
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DHARENDRA YOGI GOSWAMI,
ELIAS K. STEFANAKOS, and NITIN GOEL
Appeal2018-005566
Application 13/665,270 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1, 3, 5, 7, 8, 12-16, and 24--29. Notice
of Appeal (filed Nov. 13, 2017); Final Act. 1 (Office Action Summary,
Box 7) (mailed June 20, 2017). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to the Appellants, "[t]he real party in interest is the University
of South Florida." Appeal Br. 2.
Appeal2018-005566
Application 13/665,270
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 5, and 2 7 are the independent claims on appeal, claims 3, 7,
8, 12-16, 24--26, 28, and 29 depend either directly or indirectly from one of
independent claims 1, 5, and 27. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A solar thermal power system comprising:
multiple thermodynamic systems that operate different
types of thermodynamic cycles at different temperature ranges;
and
multiple solar thermal plants that provide thermal energy
to the thermodynamic systems, wherein the solar thermal plants
are of different types and operate at different temperature ranges,
the solar thermal plants being connected in series such that they
each operate using the same solar collector fluid that is
sequentially cycled through each plant in series.
Rejections
I. Claims 5 and 27 are rejected under (pre-AIA) 35 U.S.C.
§ I02(b) as being anticipated by Tani et al. (US 4,449,517, iss. May 22,
1984).
II. Claims 1, 3, 25, and 26 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as being unpatentable over Krieger et al. (US 4,578,953, iss. Apr. 1,
1986) and Sawata et al. (US 4,010,732, iss. Mar. 8, 1977).
III. Claims 7, 8, 12, 13, 14, and 28 are rejected under (pre-AIA)
35 U.S.C. § I03(a) as being unpatentable over Tani and Radcliff et al.
(US 2008/0168772 Al, pub. July 17, 2008).
IV. Claim 15 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
being unpatentable over Tani, Radcliff, and Brostmeyer (US 2006/0225428
Al, pub. Oct. 12, 2006).
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Application 13/665,270
V. Claim 16 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
being unpatentable over Tani, Radcliff, and Ast et al. (US 2010/0319346 A 1,
pub. Dec. 23, 2010).
VI. Claim 24 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
being unpatentable over Krieger, Sawata, and Leibowitz (US 2011/02094 7 4
Al, pub. Sept. 1, 2011).
VII. Claim 29 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
being unpatentable over Tani, Radcliff, and Mandelberg et al.
(US 2012/0240577 Al, pub. Sept. 27, 2012).
ANALYSIS
Rejections I-VII
In view of our determination that claims 1, 3, 5, 7, 8, 12-16, and 24--
29 are indefinite, infra, it follows that the rejection of these claims under
35 U.S.C. § I02(b) and§ I03(a) must fall because they are necessarily based
on a speculative assumption as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862---63 (CCPA 1962). It should be understood,
however, that our decision in this regard is proforma and based solely on
the indefiniteness of the claimed subject matter set forth below, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
New Ground of Rejection
Claims 1, 3, 5, 7, 8, 12-16, and 24--29 are newly rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
A claim is indefinite when its metes and bounds are unclear because
the claim contains words or phrases whose meaning is unclear. In re
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Application 13/665,270
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim
is indefinite when it contains words or phrases whose meaning is unclear);
Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) ( explaining that the US PTO considers a claim indefinite
"when it contains words or phrases whose meaning is unclear").
Independent claims 1, 5, and 27 recite "multiple thermodynamic
systems that operate different types of thermodynamic cycles at different
temperature ranges." Appeal Br., Claims App.
The Examiner and the Appellants disagree as to the metes and bounds
of the phrase "different types of thermodynamic cycles." For example, the
Examiner determines that "one of ordinary skill in the art would consider
identical organic Rankine cycles that operate at different pressure and
temperature ranges to qualify as 'different types' of thermodynamic cycles."
Ans. 5. And, the Appellants assert that "temperature change is not a change
in the type of thermodynamic cycle," so "an organic Rankine cycle is an
organic Rankine cycle, regardless of the temperature at which it is operated."
Reply Br. 5.
We determine that the phrase "different types of thermodynamic
cycles" is indefinite because it is unclear how types of thermodynamic
cycles are different when read in light of the Specification by one of
ordinary skill in the art. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565 (Fed. Cir. 1986).
At the outset, we note that the claim recitation "multiple
thermodynamic systems that operate different types of thermodynamic
cycles at different temperature ranges" references "different types of
thermodynamic cycles" and "different temperature ranges." Because the
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Application 13/665,270
"types of thermodynamic cycles" is separately referenced from "different
temperature ranges," the language of the claim itself is instructive. Here, the
separate references suggest that "different types of thermodynamic cycles"
are not different merely because temperature ranges are different. This
suggestion, however, is in conflict with other pending and appealed claims;
for example, dependent claims 8 and 24 suggest that an organic Rankine
cycle and low temperature organic Rankine cycle are different types of
thermodynamic cycles. Infra.
We also note that the Specification categorizes "different types" of
bottoming cycles in lower available temperatures. See Appeal Br. 14 ( citing
Spec. 7:14--8:10). More specifically, the Specification describes "[a]t lower
available temperatures, bottoming cycles can be of different types, such as
the organic Rankine or Kalina cycles for the production of electric power,
the Goswami cycle for the production of electric power as well as cooling
and/ or ice, and the absorption/refrigeration cycle for the production of
refrigeration/ice." Spec. 7: 19-22 ( emphasis added). Here, the Specification
distinguishes - by example only - an organic Rankine cycle, a Kalina
cycle, and a Goswami cycle, among others, as different types of
thermodynamic cycles. See Reply Br. 6 ("While Applicant identified
specific examples of different types of thermodynamic cycles mentioned in
the specification as proof of what the term 'different types of
thermodynamic cycles' means, Applicant never suggested that the term only
pertains to those particular examples.").
More generally, the Appellants assert that "different types of cycles
can be easily identified with reference to any college thermodynamics
textbook and include well-known thermodynamic cycles such as Rankine
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Application 13/665,270
cycles, Brayton cycles, Otto cycles, and the like." Appeal Br. 13. However,
the Appellants did not submit evidence ( e.g., a college thermodynamics
textbook) in support of the meaning of the claimed phrase "different types of
thermodynamic cycles."
Further, the Specification does not distinguish an organic Rankine
cycle and a steam Rankine cycle as different types of thermodynamic cycles.
The Specification does describe a steam Rankine cycle and an organic
Rankine cycle as "specific thermodynamic cycles." Spec. 4:2-3. And, the
Specification also refers to first and second Rankine cycles without
explicitly naming the working fluid associated with the cycle. See, e.g.,
Spec. 9: 14--18 ( describing both first bottoming cycle 54 and second
bottoming cycle 56 using unspecified Rankine cycles); Spec. 8:20-23 ("The
cascade of bottoming cycles can comprise one or more Rankine cycles using
steam, organic fluids, or other fluids, a Kalina cycle, a Goswami cycle based
on a variety of combinations of working fluids .... " ( emphasis added)).
Consequently, this begs the question, would one of ordinary skill in the art
reading the claims in light of the Specification understand types of
thermodynamic cycles as different based on the working fluid associated
with a particular thermodynamic cycle?
Dependent claims 8, 24, and 29 further confuse the meaning of
"different types of thermodynamic cycles" in "multiple thermodynamic
systems that operate different types of thermodynamic cycles at different
temperature ranges" as recited in the independent claims.
Claim 8, which depends from claim 7 and independent claim 5,
recites, "wherein the top cycle comprises a steam Rankine cycle, the first
bottoming cycle comprises an organic Rankine cycle, and the third
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Application 13/665,270
bottoming cycle comprises a low temperature organic Rankine cycle, an
absorption/refrigeration cycle, or a power/refrigeration cycle." Appeal Br.,
Claims App. Here, claim 8 due to its dependency on claim 5, requires that
"different types of thermodynamic cycles" include: a steam Rankine cycle
and an organic Rankine cycle; and an organic Rankine cycle and a low
temperature organic Rankine cycle. This is unclear because: there is a lack
of support in establishing why one of ordinary skill in the art would
understand types of thermodynamic cycles as different based on the working
fluid associated with a particular thermodynamic cycle; and contrary to the
language of independent claim 5, organic Rankine cycles appear to be
distinguished as different types of thermodynamic cycles due to
temperature/temperature ranges. Claim 24, which depends from
independent claim 1, recites a similar limitation as claim 8, and is equally as
unclear. See id.
Claim 29, which depends from claim 28 and independent claim 27,
recites, "the first and second bottoming cycles comprise Rankine cycles."
Id. This is unclear because the claimed first and second bottoming cycles
are required to be different types of thermodynamic cycles based on claim
29's dependency on independent claim 27, however the claimed "Rankine
cycles" are not distinguished as different types of thermodynamic cycles.
Therefore, we determine that the phrase "different types of
thermodynamic cycles" independent claims 1, 5, and 27 and dependent
claims 8, 24, and 29 are indefinite under 35 U.S.C. § 112, second paragraph.
Additionally, dependent claims 3, 7, 12-16, 25, 26, and 28 are rejected on
the same basis as the independent claim from which they depend.
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Application 13/665,270
DECISION
We REVERSE proforma the Examiner's rejections of claims 1, 3, 5,
7, 8, 12-16, and 24--29 under 35 U.S.C. § 102(b) and§ 103(a).
We enter a NEW GROUND OF REJECTION of claims 1, 3-9, 11,
and 12 under 35 U.S.C. § 112, second paragraph, as indefinite pursuant to
our authority under 37 C.F.R. § 4I.50(b).
37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, 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 will be
remanded to the examiner ....
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record.
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)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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