John Edward. Boyd

Patent Trials and Appeals BoardJul 31, 2019

13732388 - (D) (P.T.A.B. Jul. 31, 2019)

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. 13/732,388 01/01/2013 John Edward Boyd JEB200-1001US 5372 65360 7590 07/31/2019 John Boyd 17 Ferris Drive Old Greenwich, CT 06870 EXAMINER HARMON, CHRISTOPHER R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): john.boyd@fisherbroyles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN EDWARD BOYD ____________ Appeal 2018-007802 Application 13/732,3881 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the Examiner’s decision rejecting claims 1–28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 “The real party in interest is the inventor, John Boyd, residing in Old Greenwich, CT.” Br. 1. Appeal 2018-007802 Application 13/732,388 2 STATEMENT OF THE CASE Subject Matter on Appeal The Appellant’s “invention relates generally to conduit heating systems for use with fireplace, wood stoves and other heat sources to transfer heat to remote areas of a home, building or other structure, preferably comprising portable and/or interchangeable components.” Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A portable heat transfer system for transferring thermal energy from a heat source to a heat radiator, said portable heat transfer system comprising: (a) a portable heat sink adapted to receive thermal energy from said heat source, wherein said portable heat sink is adapted to be placed adjacent to or placed on top of said heat source; (b) a portable heat radiator adapted to radiate heat; and (c) a portable thermal conduit for transferring heat from said portable heat sink to said portable heat radiator, wherein said portable heat sink or said portable heat radiator are portable so that individuals can move either or both components to different locations within a home, building or other structure and wherein said portable thermal conduit is flexible and wherein said portable heat sink is not attached to, or built or positioned within said heat source, wherein said portable thermal conduit has a length greater than 4 feet and said portable heat sink comprises one or more surfaces comprising an insulation layer, and (i) wherein said portable heat sink comprises at least one handle or grip for moving said portable heat sink, or (ii) wherein said portable heat sink comprises wheels or rollers for moving said portable heat sink, or (iii) wherein said portable heat sink comprises combination of (i) and (ii). Appeal 2018-007802 Application 13/732,388 3 Rejections The Examiner maintains, and the Appellant appeals, the following rejections: I. Claims 12–14, 16, 19, 23, and 24 under 35 U.S.C. § 112, second paragraph, as indefinite; II. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz2 and Essig3; III. Claims 1–5, 8–11, 15, 16, 18, 21, 22, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz, Jones4, and Kilar5; IV. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz, Jones, Kilar, and Tisbo6; V. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz, Jones, Kilar, and Hultmark7; VI. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Jacobs8, Nischwitz, and Schon9; VII. Claims 1–8, 10, 11, 18, 20–23, and 25–28 under 35 U.S.C. § 103(a) as unpatentable over Lange10 and Osborne11; 2 Nischwitz (US 4,258,879, iss. Mar. 31, 1981). 3 Essig, Jr. et al. (US 7,612,735 B2, iss. Nov. 3, 2009) (“Essig”). 4 Jones (US 3,866,595, iss. Feb. 18, 1975). 5 Kilar (US 4,284,067, iss. Aug. 18, 1981). 6 Tisbo et al. (US 5,901,730, iss. May 11, 1999) (“Tisbo”). 7 Hultmark (US 2008/0086884 A1, pub. Apr. 17, 2008). 8 Jacobs (US 6,886,036 B2, iss. Mar. 15, 2005). 9 Schon (US 2010/0186820 A1, pub. July 29, 2010). 10 Lange (US 2008/0173260 A1, pub. July 24, 2008). 11 Osborne (GB 2,469,494, pub. Oct. 20, 2010). Appeal 2018-007802 Application 13/732,388 4 VIII. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Lange, Osborne, and Rubio12; IX. Claims 1, 2, 4, 6–8, 10, 21, and 23–26 under 35 U.S.C. § 103(a) as unpatentable over Lange, Bull13, and Coelho14; X. Claims 1, 3–6, 8, 10–14, 18–23, and 25–28 under 35 U.S.C. § 103(a) as unpatentable over Hoinski15 and Osborne; XI. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Hoinski, Osborne, and Rubio; XII. Claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over Hoinski, Osborne, and Santos16; and XIII. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Hoinski, Osborne, and Hon17.18 ANALYSIS Rejection I Claims 12–14 Claim 12 recites, “[t]he heat transfer system of claim 1, wherein said portable heat sink comprises a heat sensing mechanism adapted to increase 12 Rubio et al. (US 2007/0227529 A1, pub. Oct. 4, 2007) (“Rubio”). 13 Bull (US 4,496,099, iss. Jan. 29, 1985). 14 Coelho et al. (US 5,103,651, iss. Apr. 14, 1992) (“Coelho”). 15 Hoinski (US 4,187,834, iss. Feb. 12, 1980). 16 Santos (US 4,422,614, iss. Dec. 27, 1983). 17 Hon (US 7,730,676 B2, iss. June 8, 2010). 18 The Examiner has withdrawn the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz, Jones, Kilar, and Schon. Ans. 3. Appeal 2018-007802 Application 13/732,388 5 or decrease the average distance of a surface of the portable heat sink to the heat source.” Br., Claims App. The Examiner rejects claim 12 under 35 U.S.C. § 112, second paragraph, because the claim is indefinite for two reasons. Final Act. 4–5. The first reason for the rejection of claim 12 is because the claim invokes 35 U.S.C. § 112, sixth paragraph, and “the disclosure does not provide sufficient detail for one of ordinary skill in the art determine what applicant regards as his invention.” Id. at 4; see In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) (“[i]f an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.”). The absence of the words “means” or “step for” from the disputed claim elements creates a rebuttable presumption that § 112, sixth paragraph, does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). To overcome this presumption, the disputed claim terms must either fail to “‘recite sufficiently definite structure,’ or else recite[] ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Claim 12 does not include the term “means,” but it does include a non-structural generic placeholder “mechanism” along with a linking phrase “adapted to.” Br., Claims App. Notably, the use of the term “heat sensing” before “mechanism” does not modify the term “mechanism” to add sufficient structure to preclude the invocation of § 112, sixth paragraph; rather, the term “heat sensing,” generally, helps to identify the mechanism’s Appeal 2018-007802 Application 13/732,388 6 function. And, the term “mechanism” is not otherwise modified by any structure, material, or acts for performing the claimed function, i.e., “to increase or decrease the average distance of a surface of the portable heat sink to the heat source.” Accordingly, the rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, does not apply due to the lack of the term “means” is overcome. Therefore, we agree with the Examiner’s construction of claim 12 as invoking 35 U.S.C. § 112, sixth paragraph. See Manual of Patent Examining Procedure (MPEP) § 2181(I) (A)–(C) (9th ed., rev. 8, Jan. 2018)). The Appellant submits that one of ordinary skill in the art would understand the meaning of claim 12 in view of the Specification. Br. 11–12 (citing Spec. 12–13). The Appellant’s argument is persuasive as the Specification identifies an inverted pyramidal component as the heat sensing mechanism. See Spec. 13. We note that if one skilled in the art would be able to identify the structure, material, or acts for performing the claimed function, then the requirements of 35 U.S.C. § 112, second paragraph, are satisfied. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999). “While the specification must contain structure linked to claimed means, this is not a high bar: ‘[a]ll one needs to do in order to obtain the benefit of [§ 112, ¶ 6] is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of [§ 112,] ¶ 2.’” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (quoting Atmel, 198 F.3d at 1382). Appeal 2018-007802 Application 13/732,388 7 In this case, the Examiner does not persuasively explain why one skilled in the art would fail to understand that an inverted pyramidal component may be the corresponding structure that performs the function recited in claim 12, i.e., “to increase or decrease the average distance of a surface of the portable heat sink to the heat source.” Rather, the Examiner’s rejection appears to be primarily based on whether the Specification clearly describes “how the [inverted] pyramidal expands to perform the recited movement.” Ans. 6 (emphasis added). Therefore, the Examiner’s first reason for the rejection of claim 12 as indefinite is not adequately supported. The second reason for the rejection of claim 12 is because the phrase “the average distance” “does not clearly establish any specific surface to be considered nor a specific distance which may be involved in any ‘averaging’ calculation.” Id.; see Final Act. 5. In this case, the Examiner’s concern is directed to a matter of breadth, not indefiniteness. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Therefore, the Examiner’s second reason for the rejection of claim 12 as indefinite is not adequately supported. Thus, for the reasons provided above, we do not sustain the Examiner’s rejection of claim 12 under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 13 and 14 depend from claim 12. Br., Claims App. The Examiner’s rejection of claims 13 and 14 as indefinite appears to be based on the same or similar reasons for which the Examiner rejects claim 12. See Final Act. 4. Thus, we do not sustain the Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 112, second paragraph, as indefinite. Appeal 2018-007802 Application 13/732,388 8 Claim 16 Claim 16 recites, “[t]he heat transfer system of claim 15, wherein said portable heat sink comprises a mechanism proximate said rounded bottom for rocking said portable heat sink away from said heat source.” Br., Claims App. The Examiner rejects claim 16 as indefinite because the claim invokes 35 U.S.C. § 112, sixth paragraph, but “the disclosure does not provide sufficient detail for one of ordinary skill in the art determine what applicant regards as his invention.” Final Act. 4. Claim 16 does not include the term “means,” but it does include a non-structural generic placeholder “mechanism” along with a linking phrase “for.” Br., Claims App. The claim does limit the position of the “mechanism” by reciting “rocking said portable heat sink away from said heat source.” Id. However, limiting the position of the “mechanism” does not modify the term “mechanism” by sufficiently definite structure for performing the claimed function, i.e., “rocking said portable heat sink away from said heat source.” Accordingly, the rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, does not apply due to the lack of the term “means” is overcome. Therefore, we agree with the Examiner’s construction of claim 16 as invoking 35 U.S.C. § 112, sixth paragraph. See Manual of Patent Examining Procedure (MPEP) § 2181(I) (A)–(C) (9th ed., rev. 8, Jan. 2018)). The Appellant submits that one of ordinary skill in the art would understand the meaning of claim 16 in view of the Specification. See Br. 10–12 (citing Spec. 12–13). The Appellant’s argument is not persuasive of Examiner error. Appeal 2018-007802 Application 13/732,388 9 In this case, the Specification fails to disclose the particular structure that performs the claimed function. The Specification merely describes that “the heat sink comprises a mechanism proximate said rounded bottom for rocking said heat sink away from said energy source” (Spec. 13), which is substantially similar to the language of claim 16. In light of the foregoing, we determine that the Specification lacks a structure linked to the claimed means. Stated otherwise, one skilled in the art would not be able to identify the structure, material, or acts for performing the function of claim 16. Thus, we sustain the Examiner’s rejection of claim 16 under 35 U.S.C. § 112, second paragraph, as indefinite. Claim 19 Claim 19 recites, “[t]he heat transfer system of claim 18, wherein said system comprises a mechanism to increase the distance between said portable heat sink and said heat source if said temperature is too high.” Br., Claims App. The Examiner rejects claim 19 as indefinite because the claim invokes 35 U.S.C. § 112, sixth paragraph, but “the disclosure does not provide sufficient detail for one of ordinary skill in the art determine what applicant regards as his invention.” Final Act. 4. For reasons similar to those discussed above with regard to claim 16, we agree with the Examiner’s determination that claim 19 invokes 35 U.S.C. § 112, sixth paragraph. The Appellant submits that one of ordinary skill in the art would understand the meaning of claim 19 in view of the Specification. See Br. 10–12 (citing Spec. 12–13). The Appellant’s argument is persuasive. Appeal 2018-007802 Application 13/732,388 10 The Specification identifies that the heat sensing mechanism may employ at least one spring to increase distance by expanding when heated above a certain temperature causing the heat sink to rotate, tilt, or otherwise move relative to the heat source. Spec. 13. Therefore, the Specification links a structure to the claimed means. Thus, we do not sustain the Examiner’s rejection of claim 19 under 35 U.S.C. § 112, second paragraph, as indefinite. Claim 23 Claim 23 recites: (c) a portable thermally insulated two-way conduit for transferring heat from said heat sink to said heat radiator, . . . compris[ing] a first conduit for transferring heat transfer fluid from said portable heat sink to said portable heat radiator and a second conduit for transferring heat transfer fluid from said portable heat radiator to said portable heat sink and wherein said portable heat radiator comprises a fan. Br., Claims App. The Examiner rejects claim 23 because the term “conduit” in the phrase “two-way conduit” is necessarily singular and cannot include a plurality of conduits, more specifically, three conduits. Final Act. 5; Ans. 7– 8. The Appellant argues that one of ordinary skill in the art would readily understand the meaning of claim 23. Br. 14. The Appellant’s argument is persuasive. The Examiner’s construction of the term “conduit” as singular is inconsistent with the Specification. The Specification describes “[a] reference to an element in the singular means ‘one or more’ and not ‘one and Appeal 2018-007802 Application 13/732,388 11 only one[.]’” Spec. 22. Accordingly, the Specification instructs that the term “conduit” may include one or more conduits. Also, the plain language of claim 23 –– as understood by one of ordinary skill in the art –– may call for only two conduits; namely, a two-way conduit including a first conduit and a second conduit. Further, we determine that the apparent redundancy in the claimed functionality for the two-way conduit and the first conduit –– i.e., “transferring heat from said heat sink to said heat radiator” and “transferring heat transfer fluid from said portable heat sink to said portable heat radiator,” respectively –– does refer to overlapping subject matter, but is not unclear. Thus, we do not sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 112, second paragraph, as indefinite. Claim 24 Claim 24 recites “[a] kit comprising, in one or more containers, components of portable heat transfer system of claim 1 including said portable heat sink, said portable heat radiator, and said portable thermal conduit.” Br. Claim App. The Examiner determines that the phrase “components of” lacks antecedent basis and that “it is not clear if the ‘components’ listed are a complete list.” Final Act. 5; Ans. 8. The Appellant argues that “one of ordinary skill in the art would readily understand the meaning of the limitations of claim 24.” Br. 15. The Appellant’s argument is persuasive. Based on a plain reading of the claim, the phrase “components of” refers to the components listed in claim 1, i.e., the portable heat sink, the portable heat radiator, and the portable thermal conduit. Appeal 2018-007802 Application 13/732,388 12 Thus, we do not sustain the Examiner’s rejection of claim 24 under 35 U.S.C. § 112, second paragraph, as indefinite. Rejection II–V Claim 23 The Appellant argues that the Examiner errs in finding that claim 23’s recitation of “a portable heat radiator” reads on Nischwitz’s heat radiator 98 because it is explicitly mounted on a wall. See Br. 22; Nischwitz, Fig. 4. The Examiner agrees with the Appellant that Nischwitz’s heat radiator 98 is mounted on a wall, but, nonetheless, finds that it is portable. See Ans. 12; Final Act. 6. The Appellant’s argument is persuasive. We agree with the Appellant and the Examiner that Nischwitz’s Figure 4 shows radiator 98 mounted on a wall. In other words, Figure 4 shows radiator 98 fixed to the wall. See Mount Definition 11, DICTIONARY.COM, https://www.dictionary.com/browse/mount (last visited July 22, 2019) (“to attach to or fix on or in a support, backing, setting, etc.: to mount a photograph; to mount a diamond in a ring”). We fail to understand how or why one of ordinary skill in the art would understand radiator 98 to be portable when it is mounted (e.g., fixed) in or on the wall. Moreover, we note that Nischwitz’s written description fails to add any significant details concerning the structural relationship between radiator 98 and the wall that would lead one of ordinary skill in the art to ascertain that the radiator is portable. Also, the Examiner fails to rely on Essig in any manner that would remedy the deficiency in the Examiner’s finding that radiator 98 is portable. Appeal 2018-007802 Application 13/732,388 13 Thus, we do not sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over Nischwitz and Essig (Rejection II). Claims 1–5, 8–11, 15, 16, 18, 21, 22, and 24–26 The deficiency in Rejection II is replicated in Rejections III–V. See Final Act. 8. In Rejections III–V the Examiner modifies Nischwitz’s heat radiator 98 to have wheels and a handle in view of the teachings of Kilar, which the Examiner determines makes radiator 98 portable. See id. at 9–10; Ans. 12 n.1, 13. The addition of wheels and a handle to Nischwitz’s heat radiator 98 fails to remedy the deficiency, because it does not alter the structural relationship between the radiator and the wall. Further, the Examiner fails to rely on Jones, Tisbo, and/or Hultmark in any manner that remedies the deficiency. Thus, we do not sustain the Examiner’s rejections of claims 1–5, 8–11, 15, 16, 18, 21, 22, and 24–26 (Rejections III–V). Rejection VI The Examiner rejects claim 20 as unpatentable over Jacobs, Nischwitz, and Schon. Final Act. 14–15. The rejection relies on a finding that Nischwitz teaches a “portable heat transfer block 40’ not attached to or built or positioned within a heat source (fireplace), lines 104, 106, and thermal radiating element 98.” Id. at 15. As best understood, this finding is a necessary finding for the rejection to be adequately supported. See id.; Ans. 18. The Examiner concludes “[i]t would have been obvious to one of ordinary skill in the art to add a thermal radiating element as part of the heat transfer system of Jacob for the reasons set forth in Nischwitz.” Final Act. 15 (emphasis added). This conclusion merely sets forth the notion that Appeal 2018-007802 Application 13/732,388 14 somewhere in Nischwitz’s disclosure the reason for the modification is set forth. Therefore, the conclusion offers little more than a finding that adding a radiating element could occur, but provides no reason why the modification would provide a benefit to Jacobs’ cooking heat absorber. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have understood that prior art could be combined insufficient; “it does not imply motivation to pick out those two references and combine them to arrive at the claimed invention”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see also Br. 47 (“[O]ne of ordinary skill in the art would not be motivated to modify Jacobs in view of Nischwitz to result in the presently claimed invention.”). Thus, we do not sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Jacobs, Nischwitz, and Schon (Rejection VI). Rejections VII and VIII The Examiner finds that Lange teaches a heat sink (evaporator coil 211). Final Act. 16. The Examiner also finds that Osborne teaches heat sink (annular heat exchanger 6) with handle 13 for purposes of making a heat sink portable and insulated. See id. at 17. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the surface of Lange’s evaporator coil 211 to provide a handle with an insulating Appeal 2018-007802 Application 13/732,388 15 layer, in view of the teachings of Osborne, “in order to prevent transfer of undesired heat outside the heat sink and as a common safety measure during handling by a user.” Id.; see id. at 18. The Appellant argues that “[i]t would not have been obvious to one of ordinary skill in the art to modify the teachings of Lange in view of the teachings of Osborne to result in the presently claimed invention.” Br. 57. Generally, the Appellant distinguishes Lange’s portable air heater, as shown in Figures 10 and 11, from Osborne’s solar panel for water purification and argues that “Osborne does not in any way relate to . . . the heating system of Lange.” Id.; see also id. at 49–56; Osborne, Abstract, 8:245–253, Figs. 1–8. More specifically, the Appellant argues that that Lange’s “[e]vaporator coil (211) would not require an insulation surface or insulated handle.” Br. 55. The Appellant’s argument is persuasive. Lange’s portable air heater, as shown in Figures 10 and 11, has two separate portable units: condenser section 200; and evaporator section 201. Lange ¶¶ 270–272. Evaporator section 201 includes evaporator coil 211. Id. at 272. Osborne’s solar panel includes annular heat exchanger 6 having inlet 8 and outlet 9 tubes held in shape by clamps 12. See Osborne, Abstract, 9:281–283, Figs. 5–8. One clamp extends into handle 13, which provides a user the ability to transport annular heat exchanger 6 from the solar panel to three stone cooking stove 21. See id. at 7:218, 9:290, 11:338– 341. The Examiner’s reasoning seeks to place an insulated handle on the surface of Lange’s evaporator coil 211 as a safety measure during handling by a user. See Final Act. 17–18. However, there is no indication in Lange that evaporator coil 211 would need to be handled in such a manner. For Appeal 2018-007802 Application 13/732,388 16 example, Lange fails to disclose how evaporator coil 211 is situated in evaporator section 201; it is possible that evaporator coil 211 may not be able to be removed from evaporator section 201 and/or separate portable unit 207. Therefore, the Examiner’s reasoning appears to be based on speculation. Thus, we do not sustain the Examiner’s rejection of claims 1–8, 10, 11, 18, 20–23, and 25–28 as unpatentable over Lange and Osborne (Rejection VII). The Examiner’s rejection of claim 24 fails to rely on Rubio in any manner that would remedy the deficiency discussed above. Thus, we do not sustain the Examiner’s rejection of claim 24 as unpatentable over Lange, Osborne, and Rubio (Rejection VIII). Rejection IX Claim 1 recites, “said portable heat sink is not attached to, or built or positioned within said heat source.” Br., Claim App. (emphasis added). We note that the Examiner construes the emphasized portion of claim 1 to be “not limiting any of the structure of the heat sink.” Ans. 26. We disagree with the Examiner’s construction. The foregoing limitation of claim 1 further limits the structure of the heat sink by requiring: (1) that the portable heat sink not be attached to the heat source; and (2) the portable heat sink not be built or positioned within said heat source. Moreover, one of ordinary skill in the art would understand that the term “attached” is a broad term that refers to both direct and indirect attachments. See, e.g., Spec. Fig. 1 (Figure 1 showing heat sink 102 not directly and not indirectly attached to heat source 101, and not built or positioned within heat source 101). Appeal 2018-007802 Application 13/732,388 17 The Examiner finds Lange teaches “a heat sink as claimed as the portable evaporator includes evaporation coil 211 not attached to or built or positioned within heat source/combustion burner 210 . . . (considered commonly placed above or adjacent the burner . . . ).” Final Act. 16 (citing Lange ¶¶ 270–272, Figs. 10–11). The Examiner also finds that Lange’s combustion burner 210 corresponds to the “heat source” as required by claim 1. Ans. 19; see also Final Act. 16. The Appellant argues Lange’s evaporator coil 211 does not correspond to the “portable heat sink” required by independent claim 1. Br. 52. More specifically, the Appellant contends that Lange’s “evaporator coil 211 is attached to the combustion chamber 208 including the combustion burner 210 since all are included within the evaporator section 201.” Id. at 53. The Appellant’s argument is persuasive. As for the physical relationship between combustion burner 210 and evaporation coil 211, Lange describes that “evaporator section 201 is . . . mounted in a separate portable unit 207 and includes a combustion chamber 208 and a combustion burner 210 and an evaporation coil 211.” Lange ¶ 272, Figs. 10–11. Notably, Lange’s Figures 10 and 11 fail to show if there is a direct or indirect attachment between combustion burner 210 and evaporation coil 211. Therefore, we determine that the Examiner fails to adequately support the finding –– using evidence or technical reasoning –– that evaporation coil 211 is not attached to combustion burner 210. Further, the Examiner’s rejection includes a finding that Bull teaches heat sink (heat exchanger) 46 and heat source (wood stove) 10a. Final Act. 20–21. However, Bull’s heat exchanger 46 is built within stove 10a. See Bull, Figs. 2, 3, col. 5, ll. 35–44, 54–55. And, the Examiner fails to Appeal 2018-007802 Application 13/732,388 18 adequately explain on the record how Lange’s evaporation coil 211 would be modified by the teachings of Bull so as to not be directly or indirectly attached to and not be built or positioned within a heat source (e.g., combustion burner 210 or wood stove). Accordingly, the Examiner’s reliance on Bull’s teachings does not remedy the deficiency as discussed above. Lastly, the Examiner’s rejection relies on Coelho to include a handle on Lange’s heat sink (see Final Act. 22, Ans. 26), which also does not remedy the deficiency as discussed above. Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 6– 8, 10, 21, and 23–26 as unpatentable over Lange, Bull, and Coelho (Rejection IX). Rejections X–XIII The Appellant argues that Hoinski’s heat sink (i.e., solar heat absorbing panel) 101 does not correspond to the “portable heat sink” required by independent claim 1. Br. 76. More specifically, the Appellant points to claim 1’s recitation, “said portable heat sink is adapted to be placed adjacent to or placed on top of said heat source” and contends that the heat source of heat sink 101, which is a solar heat absorbing panel, is the sun. Id. The Appellant argues that Hoinski’s solar panel 101 is not adapted to be placed adjacent to or placed on top of the sun. See id. The Appellant’s argument is persuasive. We note that the Examiner does not appear to respond to the Appellant’s argument in the Answer. We note that the Examiner finds that Osborne “discloses portable units as claimed including a heat sink with insulated handle 13 adapted for thermal heat transfer from a heat source Appeal 2018-007802 Application 13/732,388 19 including a wood stove.” Final Act. 23. However, the Examiner’s rejection only provides a reason to remedy Hoinski’s failure to teach “the portability of the heat sink and/or radiator” by including an insulated handle. See id. The Examiner fails to provide articulate reasoning with some rational underpinning as to why one of ordinary skill in the art would either replace Hoinski’s heat source or add another heat source (i.e., a wood stove) as an alternative. See id. But see Ans. 31 (“[t]he addition of the teachings of Osborne i.e.[,] to include portability, insulated handle, and alternate use over a wood stove heat source do not change the principal operation of transferring heat from one location to another.”). Accordingly, the Examiner’s reliance on Osborne’s teachings does not cure the errant finding that Hoinski’s solar panel 101 is adapted to be placed adjacent to or placed on top of the heat source. Thus, we do not sustain the Examiner’s rejection of claim 1 as unpatentable over Hoinski and Osborne (Rejection X). Further, we note that claims 3–6, 8, and 10–28 include the same limitation or recite a similar limitation as claim 1. See Br., Claims App. The Examiner’s rejections of these claims fail to rely on Hoinski, Osborne, Rubio, Santos, and/or Hon in any manner that would remedy the deficiency discussed above. Thus, we do not sustain the Examiner’s rejections of claims 3–6, 8, and 10–28 (Rejections X–XIII). DECISION We AFFIRM the Examiner’s decision rejecting claim 16 under 35 U.S.C. § 112, second paragraph, as indefinite (Rejection I). Appeal 2018-007802 Application 13/732,388 20 We REVERSE the Examiner’s decision rejecting claims 12–14, 19, 23, and 24 under 35 U.S.C. § 112, second paragraph, as indefinite (Rejection I). We REVERSE the Examiner’s decision rejecting claims 1–28 under 35 U.S.C. § 103(a) (Rejections II–XII). 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-IN-PART