Ex Parte Perryman

Patent Trial and Appeal BoardMay 23, 2018

13417133 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/417,133 03/09/2012 94165 7590 05/25/2018 LeonardPatel PC 9891 Irvine Center Drive Suite 100 Irvine, CA 92618 FIRST NAMED INVENTOR Virgil Dewitt Perryman 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. 1624.0003 9465 EXAMINER SHIRSAT, VIVEK K ART UNIT PAPER NUMBER 3743 NOTIFICATION DATE DELIVERY MODE 05/25/2018 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): patents@leonardpatel.com spatel@leonardpatel.com mleonard@leonardpatel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIRGIL DEWITT PERRYMAN Appeal2017-008965 Application 13/417, 133 Technology Center 3700 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant 1 appeals from the Examiner's rejection of claims 1-5, 7, 8, 21, and 22. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. According to Appellant, the invention relates to a solar energy collection system that is used "to collect[] and stor[ e] energy from photons from various spectra, including infrared." Spec. i-f 1. Claim 1 is the sole 1 According to Appellant, the real party in interest is Virgil Dewitt Perryman. Appeal Br. 3. Appeal2017-008965 Application 13/417, 133 independent claim on appeal. Below, we reproduce claim 1 as representative of the appealed claims. 1. An apparatus, comprising: a reflector configured to reflect and focus a majority of solar energy from visible light and infrared spectra, the reflector coated with a film comprising gold and at least one other metal, the at least one other metal reflects a majority of visible light, the reflector having a reflectance across the infrared spectrum of greater than 98%; and a light trap configured to receive concentrated solar energy from the reflector, wherein the light trap comprises a solid black body that is configured to absorb a majority of the concentrated visible light and infrared energy and convert the absorbed energy into thermal energy. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. claims 1, 4, 5, 7, 21, and 22 under U.S.C. Â§ 103(a) as unpatentable over Atkinson, Jr. (US 4,286,581, iss. Sept. 1, 1981) (hereinafter "Atkinson"), Kaufman, Sr. (US 4, 148,300, iss. Apr. 10, 1979) (hereinafter "Kaufman"), and Maruko (US 4,439,020, iss. Mar. 27, 1984); II. claims 2 and 3 under U.S.C. Â§ 103(a) as unpatentable over Atkinson, Kaufman, Maruko, and Blevins (US 2010/0031954 Al, iss. Feb. 11, 2010); and III. claim 8 under U.S.C. Â§ 103(a) as unpatentable over Atkinson, Kaufman, Maruko, and E. Randich et al., Chemically Vapor 2 Appeal2017-008965 Application 13/417, 133 Deposited ZrB2 As A Selective Solar Absorber*, Thin Solid Films, 83, General Film Behaviour, (1981 ), pp. 393-398. ANALYSIS Rejection I Appellant argues that the rejection of independent claim 1 is in error because, among other reasons, "Atkinson is not amenable to combination with Kaufman as proposed" in order to provide the claimed solid black body. Appeal Br. 22; see also id. at 19-23. Based on our review of the record, including the Appeal Brief and Reply Brief, and the Final Office Action and Examiner's Answer, we agree with Appellant. Thus, we do not sustain the rejection of claim 1, or the rejection of its dependent claims 4, 5, 7, 21, and 22 rejected with claim 1. The Examiner finds that although Atkinson discloses a black body, Atkinson does not disclose a solid black body, as claimed. See, e.g., Answer 3 ("Atkinson fails to explicitly teach ... a solid black body."). Although not entirely clear, the Examiner apparently relies on Kaufman's "black coated piping" of heat exchanger 102 to disclose the claimed solid black body. Id. at 4 ("Kaufman teaches a solar radiation energy concentrator wherein the black body comprises a black coated piping body for absorbing incident solar radiation (see Kaufman Fig. 5, element 102).") (italics added). As described in Appellant's Specification, "a black body ... is configured to absorb a majority of the concentrated visible light and infrared energy and convert the absorbed energy into thermal energy." Spec. ,-r 5; see also, e.g., id. ,-r 23. As the name at least suggests, however, "[h]eat exchanger 102 of Kaufman does not store heat, but[,] rather[,] transfers heat, as heat 3 Appeal2017-008965 Application 13/417, 133 exchangers are designed to do." Appeal Br. 22. The Examiner does not address Appellant's argument in the Examiner's Answer. Thus, based on our review, we determine that the Examiner does not support adequately the finding that Kaufman's heat exchanger 102 discloses a solid black body, as the claim term is understood by one of ordinary skill in the art. Notwithstanding the above discussion, we agree with Appellant that even if Kaufman discloses a solid black body, the Examiner does not establish that it would have been obvious to replace Atkinson's black body with a solid black body. As Appellant points out, "Atkinson relies on pipes, valves, pressure, and the presence of a fluid to function." Appeal Br. 22; see also id. at 22-23. Further, Atkinson describes reasons for using, as well as advantages resulting from using, a non-solid black body/fluid system. See id. Still further, we agree with Appellant that the substitution is more than simply using a solid black body in place of Atkinson's non-solid black body. Conversely, the Examiner's stated reason for using Kaufman's solid black body in place of Atkinson's black body is the Examiner's "belie[fJ the apparatus of Atkinson [is] capable of at least one operation," presumably before self-destructing for the reasons argued on page 23 of Appellant's Appeal Brief, "with [Kaufman's] solid black body configuration." Answer 11. In view of the above-discussed structural and functional differences between Atkinson and Kaufman, the Examiner does not provide the required articulated reasoning with a rational underpinning sufficient to establish that it would have been obvious to use a solid black body in Atkinson. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 4 Appeal2017-008965 Application 13/417, 133 Rejections II and III Each of claims 2, 3, and 8 depend from claim 1. The Examiner does not rely on any other reference to remedy the above-discussed deficiencies in claim 1 's rejection. Thus, we do not sustain the rejections of claims 2, 3, and 8. DECISION We REVERSE the Examiner's obviousness rejections of claims 1-5, 7, 8, 21, and 22. REVERSED 5