Ex Parte Spadacini

Patent Trials and Appeals Board

Apr 18, 2019

13984770 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/984,770 10/14/2013 Claudio Spadacini
86378 7590 04/22/2019
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
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.
PONZ-51417 1410
EXAMINER
DOUNIS, LAERT
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDIO SPADACINI
Appeal2018-002144
Application 13/984,770
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claudio Spadacini ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 5, 6, 9, and 10. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Exergy S .P.A. is identified as the real party in interest. Appeal Br. 1.
Appeal2018-002144
Application 13/984,770
THE CLAIMED SUBJECT MATTER
Appellant's invention "relates to an apparatus and process for energy
generation by super-critical organic Rankine cycle." Spec. 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. An ORC apparatus for generation of energy by super-critical
organic Rankine cycle, comprising:
- an organic working fluid;
- a hot fluid;
- one hairpin heat exchanger (30) to exchange heat between the hot
fluid and the organic working fluid, so as to heat and evaporate said organic
working fluid through a once-through evaporation, in which physical
distinction between preheater, evaporator and superheater is not provided
and the fluid goes on without a break from a starting liquid state to a final
supercritical state;
- at least one turbine (40), wherein a vaporised organic working fluid
after exiting the hairpin heat exchanger (30) is fed to said at least one turbine
( 40), to make a conversion of the thermal energy present in the organic
working fluid into mechanical energy;
- at least one pump;
- at least one condenser (60) where the organic working fluid coming
out of said at least one turbine ( 40) is condensed and sent to said at least one
pump; the organic working fluid being then fed to said one hairpin heat
exchanger (30);
wherein the hairpin heat exchanger (30) comprises a bundle of inner
tubes (70) and an outer shell (80) surrounding the bundle of inner tubes (70);
wherein both the bundle of inner tubes (70) and outer shell (80) extend as a
tube coil formed with at least two rectilinear stretches connected by a curved
stretch;
wherein the organic working fluid flows from a first end (90) to a
second end ( 100) of said bundle of inner tubes (70) and the hot fluid flows
between the outer shell (80) and said bundle of inner tubes (70) from an inlet
(110) to an outlet (120) of said outer shell (80); wherein the hairpin heat
exchanger (30) is a countercurrent heat exchanger.
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Application 13/984,770
REJECTION
Claims 1, 5, 6, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Demuth (Demuth-"Supercritical Binary Geothermal Cycle
Experiments with Mixed-Hydrocarbon Working Fluids and a Vertical, In-
Tube, Counterflow Condenser" Dec. 12, 1985 (U.S. Dept. of Energy)) and
Serth (R.W. Serth, "Process Heat Transfer, Principles and Applications"
(Elsevier 2007)).
DISCUSSION
Appellant argues claims 1, 5, 6, 9, and 10 as a group. Appeal Br. 3-7.
We select claim 1 as representative of the group and claims 5, 6, 9, and 10
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Demuth discloses most of the limitations of
claim 1, but does not disclose a hairpin heat exchanger. Final Act. 5-7. The
Examiner finds that Serth discloses a hairpin heat exchanger as recited in
claim 1. Id. at 7-8 ( citing Serth, 3/86-3/87, Figs. 3 .1, 3 .2). The Examiner
determines that it would have been obvious to modify Demuth's system to
include Serth's hairpin heat exchanger as a substitution of one known
element for another in order to yield predictable results. Id. at 8. The
Examiner refers to the disclosure in Serth that hairpin heat exchangers are
"well suited for 'high temperatures or pressures' and 'low installation cost,
ease of maintenance, and flexibility"' as the predictable results from using a
hairpin heat exchanger. Id. ( citing Serth at 3/87).
Appellant first contends that one of ordinary skill in the art would not
combine Demuth and Serth because "they work in different temperature
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Application 13/984,770
ranges." Appeal Br. 6. In support of this contention, Appellant argues that
an organic Rankine cycle (ORC) "stands for temperature of working fluid
between 180°C and 300°C and low temperatures stands for temperatures of
the working fluid up to 100°C" while Demuth uses geothermal fluids as a
heat source with "working fluid ranges from 38°C ... to 116°C ... (low
temperature ORC)." Id. at 4--5. According to Appellant, "Serth discloses
that its hairpin heat exchanger is suitable for high temperatures." Id. at 6.
The Examiner responds that "no specific temperature ranges are
positively claimed" and Demuth' s "teaching of supercritical pressure ranges
... of the working fluid and an organic working fluid ... meet any implied
temperature ranges claimed." Ans. 3. The Examiner also asserts that a
skilled artisan "would interpret [Serth's] suitability for high temperatures
and pressures as at least being capable of performing in low temperatures
and pressures." Id. at 4.
Appellant's first contention is not persuasive for the following
reasons. As the Examiner correctly notes, claim 1 does not positively recite
any temperature range for operation of the claimed ORC apparatus other
than what may be implied by the recitation that the organic working fluid is
heated to a supercritical state. We note that Appellant does not dispute the
Examiner's finding (Final Act. 6) that Demuth discloses that the organic
working fluid "is heated to a supercritical state" nor does Appellant present
any evidence that Serth' s heat exchanger would not yield predictable results
in Demuth's Rankine cycle. See Appeal Br. 4--7. Consequently, Appellant's
first contention is not persuasive because it is not commensurate with the
scope of claim 1 and does not provide sufficient evidence to dispute the
Examiner's reasoning for combining the teachings of Demuth and Serth, i.e.,
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Application 13/984,770
the substitution of a hairpin heat exchanger as taught by Serth for the heat
exchangers disclosed in Demuth is the substitution of one known element for
another yielding predictable results.
Appellant's second contention is that Serth teaches away from
"considering the hairpin heat exchanger for the geothermal cycle of
Demuth." Id. at 6. In support of this contention, Appellant argues that
hairpin heat exchangers are "required if the differences between the inlet and
outlet are great" but in Demuth "the differences of the temperatures are not
great but are low." Id. In response, the Examiner asserts that "Serth
explicitly teaches that 'hairpins can be easily added to or removed from an
existing battery, or arranged in different series-parallel combination to
accommodate changes in process conditions." Ans. 5 ( citing Serth, 3/87).
We are not persuaded by Appellant's second contention to the extent
that Appellant contends that Serth teaches away from the claimed invention
for the following reasons. First, when a prior art reference discloses a
different solution to a similar problem, it does not teach away from the
claimed subject matter unless the prior art reference also criticizes,
discredits, or otherwise discourages the solution claimed. See Croes, Inc. v.
U.S. International Trade Commission, 598 F.3d 1294, 1308 (Fed. Cir. 2010)
(Prior art taught away by specifically discouraging use of foam straps.); In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Appellant does
not direct us to any disclosure in Serth that criticizes, discredits, or otherwise
discourages the use of a hairpin heat exchanger in the claimed invention.
Second, to the extent that Appellant argues that one of ordinary skill in the
art would not combine the teachings of Serth and Demuth to include a
hairpin heat exchanger because the temperature differential between
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Application 13/984,770
Denmth's inlet and outlet are not great but low, such a contention does not
apprise us of Examiner error. Such an assertion that Serth's hairpin heat
exchanger would not have been combined with Demuth due to Demuth's
temperature differential is unpersuasive because it is unsupported attorney
argument, not commensurate in scope with claim 1 which does not recite
any specific temperature differential of the organic working fluid, and does
not address the Examiner's reasoning for combining the teachings of
Demuth and Serth.
Appellant's third contention is that Serth teaches away "from
considering the hairpin heat exchanger for the geothermal cycle of Demuth."
Appeal Br. 6. In support of this argument, Appellant argues that "Demuth
uses geothermal fluid" and "Serth does not disclose and does not suggest to
use it hairpin heat exchanger with geothermal fluid." Id. As with
Appellant's second contention, Appellant does not direct our attention to any
disclosure in Serth that criticizes, discredits, or otherwise discourages the
use of a hairpin heat exchanger in the claimed invention. To the extent that
Appellant is disputing the Examiner's combination of the teachings of
Demuth and Serth, Appellant does not address the Examiner's reasoning for
combining the teachings of Demuth and Serth. Id. Consequently,
Appellant's third contention is not persuasive.
Appellant's fourth contention is that Serth teaches away from using a
hairpin heat exchanger in the geothermal cycle of Demuth because Serth
discloses "ease of maintenance," Demuth "discloses problems linked to
geothermal fluid fouling," "Serth does not mention ease of maintenance of a
hairpin heat exchanger with geo-fluids," and "[i]t follows that the ease of
maintenance mentioned by Serth cannot be referred to geo-fluids." Appeal
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Br. 6-7. Appellant does not present any evidence to support this contention
nor does Appellant direct our attention to any disclosure in Serth that
criticizes, discredits, or otherwise discourages the use of a hairpin heat
exchanger in the claimed invention. To the extent that Appellant is
disputing the Examiner's combination of the teachings of Demuth and Serth,
Appellant does not address the Examiner's reasoning for combining the
teachings of Demuth and Serth. Id. Consequently, Appellant's fourth
contention is not persuasive.
We have considered all of Appellant's contentions and determine that
Appellant fails to persuasively apprise us of error in the Examiner's factual
findings or rationale, quoted above, for the combination of Demuth and
Serth, which we determine to be reasonable and supported by rational
underpinnings. See KSR Intern. Co. v Teleflex Inc., 550 U.S. 398,416
(2007) ("[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). We thus, sustain the rejection of claim 1. Claims 5, 6, 9, and 10
fall with claim 1.
DECISION
The Examiner's decision rejecting claims 1, 5, 6, 9, and 10 is
affirmed.
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).
AFFIRMED
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