Ex Parte Pancheva et al

Patent Trial and Appeal BoardMar 19, 2015

13057725 (P.T.A.B. Mar. 19, 2015)

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. 13/057,725 02/04/2011 Marieta Pancheva 4686 7590 03/19/2015 Marieta Pancheva j.k. Ljulin 10, bl. 134, et. 10, ap. 42 Sofia, 1324 BULGARIA EXAMINER HARDEE, JOHN R ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 03/19/2015 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 MARIETA PANCHEVA, VLADIMIR PANCHEV, and ADELINA SUVANDJIEVA ____________ Appeal 2013-005562 Application 13/057,725 Technology Center 1700 ____________ Before JEFFREY T. SMITH, WESLEY B. DERRICK, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Decision of the Primary Examiner finally rejecting claims 1–6 under 35 U.S.C. § 103(a) as unpatentable over Neary (US 6,532,745 B1 issued Mar. 18, 2003). Br. 1–2; Ans. 4–5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 According to Appellants, the Real Parties in Interest are Marieta Pancheva, Vladimir Panchev, and Adelina Pancheva. Br. 1. Appeal 2013-005562 Application 13/057,725 2 Appealed claims 1–6 are set forth below: 1. A composition comprising saturated with carbon dioxide liquids for use as a working fluid in machines using the “Malone” regenerative cycle; 2. The composition according to claim l, wherein the carbonation is accomplished by all possible pressures in the cool reservoir; 3. The composition according to claim 1, wherein the diapason of the temperature change between the cool and the warm reservoir is not limited; 4. The composition according to claim 1, wherein the carbon dioxide solvent is water; 5. The composition according to claim 1, wherein the machine is a heat engine (a motor); 6. The composition according to claim 1, wherein the machine is a heat pump. Br. 4–6 (Claims Appendix). OPINION Upon consideration of the evidence on this record, we agree with Appellants that the Examiner has not carried the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the appealed claims within the meaning of 35 U.S.C. § 103(a). As correctly explained by Appellants, the Examiner erred in finding that Neary—the sole reference cited in support of the rejection—discloses or suggests to one of Appeal 2013-005562 Application 13/057,725 3 ordinary skill in the art a “composition comprising saturated with carbon dioxide liquids,” a feature common to all appealed claims. Ans. 4–5; Br. 3. 2 We determine that the phrase, “saturated with carbon dioxide liquids,” requires a liquid solution that is saturated with carbon dioxide. Our construction is supported by the plain language of claim 1, the title of the invention (“. . . Carbon Dioxide In Liquid Solution”), as well as the description of the invention in the Specification. Spec. 1 (“The invention consists in applying carbon dioxide (CO2) solution in liquid, . . . the solution being saturated with this gas . . .”); id. (“The invention is based on the great solubility carbon dioxide has in liquids, and especially in water . . .”); Fig. 1 (curves showing pressure-temperature relationship of water solutions (saline, with 1% NaCl) with different levels of CO2 saturation). See, e.g., In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (“While the Board must give the terms their broadest reasonable construction, the construction cannot be divorced from the specification and the record evidence.”); In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010). We agree with the Examiner that the claim phrase, “for use as a working fluid in machines using the ‘Malone’ regenerative cycle,” is a statement of intended use that cannot be relied upon to distinguish the prior 2 We do not consider Appellants’ arguments concerning petitionable matters, such as failure to enter amendments or premature issuance of a final rejection. Br. 2–3. See 37 C.F.R. § 1.181 (2012); MPEP § 1201, 9th ed. (2014) (“The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition . . .”). Nor do we consider Appellants’ arguments concerning proposed amended claims that are not the subject of the appealed rejection. Br. 4. Appeal 2013-005562 Application 13/057,725 4 art. Ans. 4. See In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (“A mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.”) The Examiner finds that Neary discloses a fluid comprising a superheated mixture of water vapor and carbon dioxide. Ans. 4 (citing Neary 7:20+). The Examiner concedes that Neary does not disclose a liquid solution of carbon dioxide in water, but contends that such a solution would have been obvious because Neary discloses a working fluid which, when condensed, comprises carbon dioxide dissolved in water. Id. at 4–5. Appellants, on the other hand, contend that Neary’s gaseous mixture of water vapor and carbon dioxide is not comparable to the claimed invention, which uses gaseous carbon dioxide dissolved in liquid phase water. Br. 3. Appellants further contend that Neary’s fluid is used only in a gaseous phase and is not collected or stored in a condensed state. Id. In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). We determine that a preponderance of the evidence supports Appellants’ position. Neary discloses a working motive fluid comprising a superheated vapor state mixture of carbon dioxide and water vapor. Neary Abstract, 2:44–48, 3:63–66, 7:19–22; claim 1. Neary contains no disclosure or suggestion to condense this mixture, nor any disclosure or suggestion that, if it were condensed, it would form a liquid solution that is saturated with dissolved carbon dioxide. The Examiner contends that when Neary’s machine is turned off, the fluid is cooled and condensed to form water Appeal 2013-005562 Application 13/057,725 5 saturated with carbon dioxide. Ans. 5. But the Examiner points to no disclosure or other evidence to support this contention, which is critical to establishing prima facie obviousness. Neary’s disclosure relates to a gas turbine in which the working motive fluid is continuously in a gas phase, not a liquid phase. Neary Abstract, 2:44–48, 3:63–66, 7:19–22; claim 1. Accordingly, in the absence of a prima facie case of obviousness of independent claim 1 and of claims 2–6 dependent thereon, we reverse the rejection of these claims under 35 U.S.C. § 103(a) over Neary. NEW GROUND OF REJECTION Claims 1–6 are rejected under 35 U.S.C. § 102(b) as anticipated by Mitchell et al., US 3,467,526, issued Sept. 16, 1969 (“Mitchell”). As stated above, the subject matter on appeal is directed to a composition wherein a feature common to all appealed claims is a “composition comprising saturated with carbon dioxide liquids.” Mitchell discloses a liquid solution of carbon dioxide in water. Claim 1 is anticipated by Mitchell’s disclosure of a liquid solution that is saturated with carbon dioxide. Mitchell Abstract, 1:64–2:5, 3:8–18 (Table I); see also Ans. 5 (asserting that Appellants’ claim 1 reads on soda water). DECISION The decision of the Examiner to reject claims 1–6 is reversed. We enter a new ground of rejection for claims 1–6 under 35 U.S.C. § 102(b). Appeal 2013-005562 Application 13/057,725 6 This decision contains a new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that a “new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that 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 proceedings 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 37 C.F.R. § 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)(1). REVERSED; 37 C.F.R. § 41.50(b) sl