Ex Parte Sonnenrein

Patent Trial and Appeal BoardApr 11, 2013

11728918 (P.T.A.B. Apr. 11, 2013)

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. 11/728,918 03/27/2007 Gerrit Sonnenrein SGL 05/030 4765 24131 7590 04/11/2013 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER TYLER, CHERYL JACKSON ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 04/11/2013 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 GERRIT SONNENREIN ____________ Appeal 2011-003049 Application 11/728,918 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003049 Application 11/728,918 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 13-15 and 18-26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 13, the sole independent claim, is representative of the subject matter on appeal, and recites: 13. An apparatus for cooling foods, comprising: a cold accumulator containing expanded graphite and a phase change material configured to pass through a solid-liquid phase change at a temperature within a temperature range from 0°C to 10°C; a line for conducting a water-based liquid to be cooled through said cold accumulator; and a device for removing heat from said cold accumulator. REFERENCES The Examiner relied upon the following prior art references: REJECTIONS Appellant seeks review of the rejection of claims 13-15 and 18-26 under 35 U.S.C. § 103(a) based on Nakayama and Ottinger. Nakayama US 6,119,464 Sep. 19, 2000 Ottinger US 2004/0084658 A1 May 6, 2004 Appeal 2011-003049 Application 11/728,918 3 ANALYSIS Appellant argues the claims collectively. App. Br. 13-14 (“Claim 13 is, therefore, patentable over the art and since all of the dependent claims are ultimately dependent on claim 13, they are patentable as well.”) We consider the claims collectively and claims 14, 15, and 18-26 stand or fall with claim 13. 37 C.F.R. § 41.37 (c)(1)(vii) (2011). The Examiner found that Nakayama discloses the claimed invention except for the material contained in the cold accumulator, which material the Examiner found was disclosed in Ottinger. Ans. 3-4.1 The Examiner concluded that it would have been obvious to modify Nakayama so that the cold accumulator contains expanded graphite and a phase change material to “yield the predictable result that the cold accumulator is sturdy and easy to manufacture.” Id. at 4. The Examiner also concluded that a person having ordinary skill in the art “would be able to design the cold accumulator containing expanded graphite to work within the disclosed desired temperature ranges” stated in claim 13. Id. Whether Nakayama Discloses “A Line for Conducting” Appellant argues that claim 13 operates “on the heat exchange principle of conduction,” contrary to Nakayama which Appellant asserts operates on the heat exchange principle of “forced convection.” App. Br. 5- 6.2 The basis for Appellant’s position regarding the claimed invention is the phrase in claim 13 that calls for “a line for conducting a water-based liquid to be cooled through said cold accumulator.” Id. at 6. 1 Citations to “Ans. ___” are to the indicated page in the Examiner’s Answer mailed August 31, 2010. 2 Citations to “App. Br. ___” are to the indicated page in the Appeal Brief filed July 27, 2010. Appeal 2011-003049 Application 11/728,918 4 We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). It is the appellant’s burden to precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). The word “conduction” has a variety of meanings. One meaning is the classic meaning from physics which is “the transfer of energy, such as heat or an electric charge, through a substance. In heat conduction, energy is transferred from molecule to molecule by direct contact; the molecules themselves do not necessarily change position, but simply vibrate more or less quickly against each other.”3 However, another meaning of the word “conduction” is “the act of conducting, as of water through a pipe.”4 The claim language upon which Appellant relies is not the word “conduction” or “conducting;” it is the phrase “a line for conducting a water- based liquid to be cooled through said cold accumulator.” The Specification explains that pipe coil 8 carries a water-based liquid to be cooled from an inlet 5 to an outlet 4.5 Spec. p. 6, ll. 20-24. Thus, pipe coil 8 carries, or 3 THE AMERICAN HERITAGE® SCIENCE DICTIONARY, http://dictionary.reference.com/browse/conduction (last viewed: April 04, 2013). 4 DICTIONARY.COM UNABRIDGED, http://dictionary.reference.com/browse/conduction (last viewed: April 04, 2013). 5 While the Specification also discloses that pipe 8 consists of “readily heat- conducting material, for example metal,” Spec. p. 8, ll. 16-18, one of ordinary skill in the art would understand the phrase “a line for conducting a Appeal 2011-003049 Application 11/728,918 5 conducts, this water-based fluid through cold accumulator 6 from inlet to outlet. Id. at ll. 33-38. Accordingly, we do not agree with Appellant that this phrase of claim 13 requires a specific type of energy transfer. Even if claim 13 were to be read to require the type of energy transfer argued by Appellant, the Examiner correctly found that line 4 (i.e., reference numeral 4) in Nakayama is “for conducting a water-based liquid through the accumulator” (reference numeral 1 in Nakayama). Ans. 3. Nakayama discloses that a coiled beverage duct 4 is provided in the tank 1. Nakayama, col. 5, ll. 16-17. Beer or other beverage to be cooled enters inlet 5 traveling through duct 4. Id. at col. 5, ll. 23-27. Duct 4 serves to conduct the beer through cold water 11 and the beer exits through an outlet 6. Id. at col. 5, ll. 24-28. Water 11 serves as a coolant in the tank for the beer in coiled duct 4. Id. at col. 5, ll. 16-17. The cold water 11 in Nakayama serves to cool the beverage in coiled duct 4 through the same physical process used by the cold accumulator 6 in the disclosed and claimed invention to cool the liquid in coiled pipe 8. Nakayama’s water 11 is cooled by ice 12. Nakayama, col. 4, ll. 23-27. Thus, we agree with the Examiner, that Nakayama’s “solid ice 12, as well as liquid water 11,” are part of Nakayama’s cold accumulator. See Ans. 5. Thus, Appellant’s evidence and arguments do not apprise us of error by the Examiner in finding that Nakayama discloses “a line for conducting a water-based liquid to be cooled through said cold accumulator” as called for in claim 13. water-based liquid to be cooled through said cold accumulator,” in the context of the claim, to refer to liquid moving through a pipe and not a type of energy transfer. Appeal 2011-003049 Application 11/728,918 6 Whether the Broad Temperature Range Disclosed in Ottinger Suggests the Narrow Temperature Range in the Claims Appellant acknowledges that Ottinger discloses a phase change material. App. Br. 7. Appellant does not dispute that Ottinger discloses a phase change material having expanded graphite mixed with the phase change material. Appellant argues that Ottinger covers an extremely wide temperature spectrum of -100°C to +500°C, whereas the claimed range is very narrow, 0°C to 10°C. Id. at 7. Because of the breadth of the Ottinger disclosure, Appellant asserts that a prima facie case of obviousness is “not necessarily established.” Id. at 9. Although the range disclosed in Ottinger is very broad, the Examiner found that “since the beverage in the line 4 [of Nakayama] is being cooled to a temperature range of from 2 to 8 degrees C, then the temperature range of liquid 11 must necessarily be around that range as well.” Ans. 6. Thus, the Examiner focused on the temperature range disclosed in Nakayama, 2°C to 8°C, not the broader range disclosed in Ottinger. Further, Appellant has not persuaded us that the Examiner erred in finding that one of ordinary skill in the art would be able to design a phase change material of the type taught in Ottinger to meet the particular temperature range claimed to cool the liquid in the cooling line in Nakayama to the desired temperature. Id. Thus, Appellant’s focus on the range in Ottinger is misplaced. Appellant also argues that he has “established the criticality” of the claimed temperature range, thereby establishing that claim 13 is patentable. App. Br. 9. The only support for the alleged “criticality” of the temperature range is a statement in the Specification that this range is “very effective” and “does not involve the risk that water-based drinks freeze.” Id. at 8 Appeal 2011-003049 Application 11/728,918 7 (quoting Spec. 3-4). No other evidence has been provided to establish the alleged critical difference between the range of 2°C to 8°C in Nakayama and the range of 0°C to 10°C in claim 13. Whether it is critical or not, Nakayama discloses a nearly identical temperature range. As found by the Examiner, Nakayama provides the necessary guidance to a person having ordinary skill in the art with regard to the selection of the working temperature range of the graphite and phase change material in the cold accumulator. Ans. 6. Appellant’s evidence and arguments do not apprise us of error in the findings and conclusions of the Examiner regarding the claimed temperature range. Whether Nakayama Would Be Destroyed Appellant also argues that the proposed modification would destroy the function of Nakayama. App. Br. 11-13. Appellant’s position is based on considering only the ice in Nakayama as the cooling medium. Id. at 11. As explained by the Examiner, both the ice and the water constitute the cooling medium in Nakayama. Ans. 5. Nakayama expressly discloses that water serves as a coolant in the tank through which the coiled duct conducts a beverage. Nakayama, col. 5, ll. 16-17. Thus, Appellant has not persuaded us that the proposed modification of the references would destroy the basic functionality of Nakayama. DECISION Upon consideration of the record as a whole in light of Appellant’s contentions and the preponderance of relevant evidence, we AFFIRM the rejection of claims 13-15 and 18-26. Appeal 2011-003049 Application 11/728,918 8 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)(1)(iv). AFFIRMED mls