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Patent Trials and Appeals Board

Nov 29, 2019

15232869 - (D) (P.T.A.B. Nov. 29, 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.
15/232,869 08/10/2016 Hadi Malek 83681726; 67186-276PUS1 5161
46442 7590 11/29/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HADI MALEK, DANIEL BOSTON,
JACOB MATHEWS, and BRETT STEPHENS
____________

Appeal 2019-003154
Application 15/232,869
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–6, 8–14, and 21–27.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC as the
real party in interest. Appeal Brief filed September 10, 2018 (“Appeal Br.”)
at 2.
2 Final Office Action entered March 8, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is generally directed to an assembly comprising
a photovoltaic module including a solar cell and a cooling system having a
heat pipe adapted to dissipate heat from the solar cell. Spec. Abstr. Claim 1
illustrates the subject matter on appeal, and is reproduced below with
contested language italicized:
1. An assembly, comprising:
a photovoltaic module including a solar cell; and
a cooling system including a heatsink axially displaced
from said photovoltaic module and a heat pipe extending
between said solar cell and said heatsink and adapted to
dissipate heat from said solar cell.
Appeal Br. 11 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered October 25, 2018 (“Ans.”):
I. Claims 1, 3, 9–12, 21, 22, 25, and 27 under 35 U.S.C.
§ 102(a)(1) as anticipated by Lim;3
II. Claims 2 and 13 under 35 U.S.C. § 103 as unpatentable over
Lim in view of Kajiwara;4
III. Claims 4 and 6 under 35 U.S.C. § 103 as unpatentable over
Lim in view of Benoit;5
IV. Claim 5 under 35 U.S.C. § 103 as unpatentable over Lim in
view of Foong;6

3 Lim (US 2012/0037210 A1; February 16, 2012).
4 Kajiwara (US 4,658,599; April 21, 1987).
5 Benoit (US 2008/0083450 A1; April 10, 2008).
6 Foong (US 2011/0048496 A1; March 3, 2011).
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V. Claims 8 and 23 under 35 U.S.C. § 103 as unpatentable over
Lim in view of Dessel;7
VI. Claim 24 under 35 U.S.C. § 103 as unpatentable over Lim in
view of Gray;8 and
VII. Claim 26 under 35 U.S.C. § 103 as unpatentable over Lim in
view of Neulander.9
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions, we affirm the Examiner’s rejection
of claims 1, 3, 9–12, 21, and 22 under 35 U.S.C. § 102(a)(1), and rejections
of claims 2, 4, 6, 8, 13, 23, and 24 under 35 U.S.C. § 103, for the reasons set
forth in the Final Action, the Answer, and below. We reverse the
Examiner’s rejection of claims 14, 25, and 27 under 35 U.S.C. § 102(a)(1),
and rejections of claims 5 and 26 under 35 U.S.C. § 103, for the reasons set
forth in the Appeal Brief and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to

7 Dessel (US 2003/0221717 A1; December 4, 2003).
8 Gray (US 3,842,596; October 22, 1974).
9 Neulander (US 5,947,111; September 7, 1999).
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require an applicant to identify the alleged error in the examiner’s
rejections.”).
Rejection I: Claims 1, 3, 9–12, 21, 22, 25, and 27 under 35 U.S.C.
§ 102(a)(1) as Anticipated by Lim
Claims 1, 3, and 9–12
Appellant presents arguments for claim 1, and does not address claims
3 and 9–12, which depend from claim 1. Appeal Br. 3–6. We accordingly
limit our discussion to claim 1 (37 C.F.R. § 41.37(c)(1)(iv)), which requires
the claimed assembly to comprise, in part, a cooling system including a
heatsink axially displaced from a photovoltaic module.
Appellant argues that Lim does not disclose a heatsink axially
displaced from a photovoltaic module because Lim discloses heat sink 40
positioned directly beneath photovoltaic module 30. Appeal Br. 3 (citing
Lim Figures 2, 4, and 8–10). Appellant argues that Figure 6 of Lim does not
illustrate a photovoltaic module, and the position of a photovoltaic module
relative to heat sink 40 shown in Figure 6 is, therefore, unclear. Appeal Br.
3–4. Appellant argues that “[e]ven if the photovoltaic module was only
received against the portion of the heat pipe 60 that is marked as ‘61a,’ at
least a portion (e.g., the bottom most fin 44 in Figure 6) of the heat sink 40
would still be directly beneath the photovoltaic module and therefore not
‘axially displaced’ therefrom.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
We begin our analysis by interpreting the phrase “axially displaced”
recited in claim 1. Appellant does not direct us to a definition of “axially
displaced” in Appellant’s Specification, and we find no such definition in
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the Specification. Nor do we find any limiting description of “axially
displaced” in Appellant’s Specification, as discussed more fully below. We
accordingly agree with the Examiner that a heatsink “axially displaced”
from a photovoltaic module as recited in claim 1 should be interpreted
according to its plain meaning as “a heatsink positioned away from the
photovoltaic module by a distance relating to or along an axis.”10 Ans. 6.
Although Appellant argues in the Reply Brief that the “correct
interpretation” of “axially displaced” is “offset to a side,” in view of
Appellant’s Figures 2A, 2B, and 4, which each depict “heat sink 32 . . . as
being horizontally offset from the photovoltaic module 18” (Reply Br. 2),
Appellant’s Specification explicitly states that “Figures 2A and 2B illustrate
an exemplary cooling system 26 for passively cooling a photovoltaic module
18,” and “Figure 4 schematically illustrates another exemplary cooling
system 126.” Spec. ¶¶ 36, 47 (emphasis added). The Specification also
identifies “another non-limiting embodiment, best shown in Figure 2B . . . .”
Spec. ¶ 41 (emphasis added). The Specification thus explicitly indicates that
Figures 2A, 2B, and 4 illustrate exemplary, non-limiting embodiments of
Appellant’s invention. Consequently, interpreting “axially displaced” as
Appellant argues based on Figures 2A, 2B, and 4 would improperly import
limitations from the Specification into claim 1, resulting in an overly narrow
interpretation of “axially displaced.” It is well-settled that “limitations are

10 “Displaced” means moved or put out of the usual or proper place. See,
e.g., https://www.dictionary.com/browse/displaced. “Axial” means of,
relating to, or having the characteristics of an axis. See e.g.,
https://www.merriam-webster.com/dictionary/axial. Thus, “axially
displaced” means moved or positioned away from by a distance along an
axis.
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not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993)); see also E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “‘in
view of the specification’” without importing limitations from the
specification into the claims unnecessarily (citation omitted)).
Contrary to Appellant’s arguments, a heatsink “axially displaced”
from a photovoltaic module is properly interpreted according to its plain
meaning as “a heatsink positioned away from the photovoltaic module by a
distance relating to or along an axis” due to the lack of any definition or
limiting description of the phrase in the Specification.
Although Appellant argues—citing Lim’s Figures 2, 4, and 8–10—
that Lim discloses heat sink 40 positioned directly beneath photovoltaic
module 30, rather than axially displaced from photovoltaic module 30
(Appeal Br. 3), the Examiner’s rejection is based on the embodiment of Lim
shown in Figure 6, which illustrates heat pipe 60 comprising upper plate 61
and lower plate 62. Ans. 5–7; Lim ¶¶ 83, 84, Fig. 6. Lim discloses that
upper plate 61 includes attaching part 61a to which a photovoltaic module is
attached, and dissipation part 61b, which “extends from attaching part 61a.”
Lim ¶ 84; Fig. 6. Lim discloses that heat sink 40 is attached to an outer
surface of lower plate 62 at a position corresponding to dissipation part 61b
of upper plate 61. Lim ¶ 86; Fig. 6.
As the Examiner finds (Ans. 6–7), Lim discloses that heat sink 40 is
positioned away from a photovoltaic module along both horizontal and
vertical axes when the photovoltaic module is attached to attaching part 61a.
Specifically, when a photovoltaic module is attached to attaching part 61a of
upper plate 61, heat sink 40 is positioned to the left of the photovoltaic
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module along a horizontal axis because heat sink 40 is attached to lower
plate 62 at a position corresponding to dissipation part 61b of upper plate 61,
which “extends from attaching part 61a.” And heat sink 40 is positioned
lower along a vertical axis than the photovoltaic module because heat sink
40 is attached to lower plate 62, which is below upper plate 61.
Although Appellant argues that the bottom-most fin 44 of heat sink 40
in Lim’s Figure 6 is directly beneath the photovoltaic module when the
photovoltaic module is received against attaching part 61a, and therefore not
axially displaced from the photovoltaic module (Appeal Br. 3–4), Figure 6
of Lim, as understood in light of the disclosure of paragraph 86, does not
show any overlap between the bottom-most fin 44 of heat sink 40 and
attaching part 61a. Rather, Figure 6 shows that all fins 44 of heat sink 40 are
directly beneath dissipation part 61b of upper plate 61, rather than attached
to part 61a.
We, accordingly, sustain the Examiner’s rejection of claims 1, 3, and
9–12 under 35 U.S.C. § 102(a)(1).
Claim 14
Claim 14 depends from claim 1 and recites that the heat pipe includes
an evaporation section and a condenser section elevated relative to the
evaporation section.
Referring to the cooling device (heat pipe) illustrated in Figure 6 of
Lim, the Examiner finds that Lim discloses that working fluid in inner space
65 evaporates and ascends in a vapor phase to dissipation part 61b, where
the vapor condenses after transferring heat to heat sink 40. Final Act. 5
(citing Lim ¶¶ 52, 87, 117–119; Fig. 6). The Examiner finds that Lim thus
discloses that “the heat pipe includes an evaporation section (65) and a
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condenser section (e.g. top section of the dissipation part 61b) elevated
relative to the evaporation section as the working fluid is ascended to be
condensed (see fig. 6).” Final Act. 5; see also Ans. 8 (“the lower portion
[65] below the wick (64) and below the photovoltaic module (at the
attaching part 61a) corresponding to instant evaporation section (or where
the evaporation takes place) and the top condenser section (or where the
condensation takes place) parallel to the wick section (64) corresponding to
instant condenser section (see annotated Fig. 6 of Lim below).”).
Appellant argues that the evaporation section of heat pipe 60
illustrated in Lim’s Figure 6 is established by a combination of wick 64 and
lower plate 62, and the condenser section of the heat pipe 60 is established
by dissipation part 61b. Reply Br. 5 (citing Lim ¶¶ 83–88). Appellant
argues that, consequently, “the condenser section is not elevated relative to
the evaporation section. Rather, the upper surface of the condenser section
61b lies in the same plane as the upper surface of the evaporation section
64/62, and the lower surface of the condenser section 61b lies in the same
plane as the lower surface of the evaporation section 64/62.” Reply Br. 5.
We begin our analysis by interpreting the phrase “said heat pipe
includes an evaporation section and a condenser section elevated relative to
the evaporation section” recited in claim 14. The Specification indicates
without elaboration that the heat pipe of Appellant’s invention may include a
condenser section elevated relative to an evaporation section. Spec. ¶ 16.
The Specification also describes exemplary heat pipe 30 including condenser
section 36 that “may be slightly elevated relative to the evaporation section
34 such that condensed working medium 38 may return to the evaporation
section 34 with the aid of gravity.” Spec. ¶ 43. The Specification explains
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that “in this non-limiting embodiment, the heat pipes 30 are thermosyphons.
In another non-limiting embodiment [illustrated in Figure 2B], an angled
section 99 of the heat pipe 30 elevates the condenser section 36 relative to
the evaporation section 34.” Spec. ¶ 43; Fig. 2B.
The Specification thus describes an exemplary structure feature—an
angled section—that elevates the condenser section of the illustrative heat
pipe shown in Figure 2B relative to the evaporation section of the heat pipe.
Although the Specification does not describe any additional structural
features that may elevate the condenser section of Appellant’s heat pipe
relative to the evaporator section, one of ordinary skill in the art would have
understood from the Specification disclosures discussed above that in those
embodiments of Appellant’s heat pipe where the condenser section is
elevated relative to the evaporator section, the heat pipe includes some
structural feature, or has some structural design, that elevates the condenser
section of the heat pipe relative to the evaporator section. Accordingly, we
interpret claim 14 to implicitly require the recited heat pipe to include one or
more structural features that elevate the condenser section relative to the
evaporator section, although such structural feature(s) are not explicitly
recited in the claim.
We now turn to the Examiner’s rejection of claim 14 in which, as
discussed above, the Examiner finds that inner space 65 of heat pipe 60
illustrated in Lim’s Figure 6 corresponds to an evaporation section as recited
in claim 14. Lim discloses, however, that working fluid is contained in both
a lower portion of inner space 65, which is positioned between upper plate
61 and lower plate 62 of heat pipe 60, and in wick 64, which is positioned in
inner space 65 below attaching part 61a of upper plate 61. Lim ¶¶ 85, 87;
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Fig. 6. As discussed above, Lim discloses that a photovoltaic module is
attached to attaching part 61a of upper plate 61, and discloses that heat sink
40 is attached to an outer surface of lower plate 62 at a position
corresponding to dissipation part 61b of upper plate 61. Lim ¶ 84, 86. Lim
explains that to produce power, the photovoltaic module is installed at an
incline or angle (¶¶ 50, 112, 115). Lim discloses that “[t]he working fluid
that is contained in the wick 64 and the lower portion of the inner space [65]
is evaporated by heat of the photovoltaic module and then ascends in a vapor
phase. The ascending vapor transfers heat to the heat sink 40 or the air and
thus condenses and cools off.” Lim ¶ 87.
Lim thus discloses that wick 64 and inner space 65 constitute the
evaporation section of heat pipe 60 because Lim indicates that heat from the
photovoltaic module causes working fluid in both of these areas to
evaporate. As Appellant argues (Reply Br. 5), Lim’s Figure 6 shows that
wick 64 and inner space 65 lie in the same plane as the section of heat pipe
60 where condensation occurs—the area above heat sink 40 extending to
dissipation part 61b of upper plate 61.
Lim discloses that heat pipe 60 functions as a thermosiphon by virtue
of being installed at an incline or angle that positions the area above heat
sink 40 extending to dissipation part 61b of upper plate 61 (condenser
section) at a higher elevation than inner space 65 and wick 64 (evaporation
section). More specifically, Lim discloses that disposing heat pipe 60 at an
incline (as shown in Figure 6) causes evaporated working fluid in inner
space 65 and wick 64 (evaporation section) to ascend to the area above heat
sink 40 extending to dissipation part 61b of upper plate 61 (condenser
section), where the vapor condenses after transferring heat to heat sink 40,
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and the condensed working fluid then descends back to inner space 65 and
wick 64 (evaporation section). Lim ¶¶ 87, 88. Accordingly, rather than
disclosing some structural feature of heat pipe 60 that elevates the area
above heat sink 40 extending to dissipation part 61b of upper plate 61
(condenser section) relative to inner space 65 and wick 64 (evaporation
section)—as required by claim 14 as we have interpreted it—Lim discloses
that such elevation is achieved by the angle at which the photovoltaic
module, to which heat pipe 60 is attached, is installed.
We, accordingly, do not sustain the Examiner’s rejection of claim 14
under 35 U.S.C. § 102(a)(1).
Claim 27
Independent claim 27 recites a heat pipe including an evaporation
section, a condenser section, and an angled section that elevates the
condenser section relative to the evaporation section.
The Examiner finds that heat pipe 60 illustrated in Figure 6 of Lim
includes “an angled section that elevates the condenser section relative to the
evaporation section,” and the Examiner provides the following annotated
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copy of Figure 6 to illustrate the asserted angled section in heat pipe 60
(Final Act. 6–7):

Figure 6 illustrates heat pipe 60.
As Appellant argues (Appeal Br. 5–6; Reply Br. 6–7), however, and
as discussed above in connection with claim 14, Figure 6 of Lim shows that
wick 64 and inner space 65 (evaporation section) lie in the same plane as the
section of heat pipe 60 where condensation occurs—the area above heat sink
40 that extends to dissipation part 61b of upper plate 61 (condenser
section)—such that an “angled section” does not exist between these two
sections of heat pipe 60 as the Examiner asserts.
As also discussed above, Lim discloses that heat pipe 60 functions as
a thermosiphon by virtue of being installed at an incline or angle that
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positions the area above heat sink 40 that extends to dissipation part 61b of
upper plate 61 (condenser section) at a higher elevation than inner space 65
and wick 64 (evaporation section), rather than disclosing an angled section
that elevates the area above heat sink 40 extending to dissipation part 61b
(condenser section) relative to inner space 65 and wick 64 (evaporation
section).
We, accordingly, do not sustain the Examiner’s rejection of claim 27
under 35 U.S.C. § 102(a)(1).
Claim 21
Claim 21 depends from claim 1 and recites that the “heat sink is offset
to the rear of the photovoltaic module.”
Appellant argues that Figure 6 of Lim does not show the photovoltaic
module so “it is not possible to determine whether the heat sink 40 would be
offset to the rear of the photovoltaic module.” Appeal Br. 4.
As discussed above, however, Lim explicitly discloses that the
photovoltaic module is attached to attaching part 61a of upper plate 61. Lim
¶ 84; Fig. 6. As also discussed above, Lim discloses that dissipation part
61b of upper plate 61“extends from attaching part 61a,” and heat sink 40 is
attached to an outer surface of lower plate 62 at a position corresponding to
dissipation part 61b of upper plate 61. Lim ¶¶ 84, 86; Fig. 6. As the
Examiner explains in the Answer (Ans. 9), Lim’s Figure 6, when considered
with paragraph 84, shows that the photovoltaic module is attached to
attaching part 61a—on the top surface of heat pipe 60—and heat sink 40 is
attached to lower pipe 62 at a position opposite dissipation part 61b, which
is on the bottom surface of heat pipe 60. Accordingly, contrary to
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Appellant’s arguments, heat sink 40 is beneath, or offset to the rear of, the
photovoltaic module.
We, accordingly, sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 102(a)(1).
Claim 22
Claim 22 depends from claim 1 and recites that the “heat sink and
[the] photovoltaic module do not overlap one another.”
Appellant argues that Lim’s Figure 6 does not show the photovoltaic
module so “it is not possible to determine whether the heat sink 40 and the
photovoltaic module over[lap] or not.” Appeal Br. 5. Appellant also argues
that “[e]ven if the photovoltaic module was only received against the portion
of the heat pipe 60 that is marked as ‘6la’ in Figure 6, at least a portion (e.g.,
the bottom most fin 44 in Figure 6) of the heat sink 40 would overlap the
photovoltaic module.” Appeal Br. 5.
As discussed above, however, Figure 6 of Lim shows that bottom-
most fin 44 of heat sink 40 and attaching part 61a do not overlap, because
Figure 6 depicts all fins 44 of heat sink 40 positioned directly beneath
dissipation part 61b of upper plate 61. Lim discloses that the photovoltaic
module is attached to attaching part 61a, which contains wick 64. Lim ¶ 84.
Figure 6 and paragraphs 84 and 86 support the Examiner’s interpretation of
Lim as teaching the heat sink and photovoltaic module in non-overlapping
positions.
We, accordingly, sustain the Examiner’s rejection of claim 22 under
35 U.S.C. § 102(a)(1).
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Claim 25
Claim 25 depends from claim 1 and recites that the “heat pipe is a
thermosyphon that relies on gravitation forces to dissipate heat, and
comprising a second heat pipe that is a heat spreader that relies on capillary
forces to dissipate the heat.”
The Examiner finds that Lim discloses an assembly in which heat pipe
60 is a thermosiphon and comprises a heat pipe section (dissipation part 61b)
that relies on gravitation forces to dissipate heat and a heat pipe section (e.g.,
wick 64 or attaching part 61a) that is a heat spreader that relies on capillary
forces to dissipate heat. Final Act. 6 (citing Lim ¶¶ 62, 83–66, 117–122,
Fig. 6).
As Appellant argues (Appeal Br. 5), however, the assembly illustrated
in Figure 6 of Lim includes a single thermosiphon heat pipe 60 and does not
include a second heat pipe as required by claim 25. Although heat pipe 60
appears to dissipate heat by both gravitational and capillary forces, it is
nonetheless a single heat pipe, rather than two separate heat pipes as
required by claim 25.
We, accordingly, do not sustain the Examiner’s rejection of claim 25
under 35 U.S.C. § 102(a)(1).
Rejection II: Claims 2 and 13 under 35 U.S.C. § 103 as
Unpatentable over Lim in view of Kajiwara
Appellant argues claims 2 and 13 together. Appeal Br. 7. We
accordingly select claim 2 as representative, and decide the appeal as to
claims 2 and 13 based on claim 2 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 2 depends from claim 1 and recites that the “photovoltaic
module is mounted to a roof component of a vehicle.”
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The Examiner finds that Kajiwara discloses an assembly comprising a
photovoltaic module and a cooling system, and discloses mounting the
photovoltaic module on a roof component of a vehicle. Final Act. 8 (citing
Kajiwara Fig. 1). The Examiner concludes that it would have been obvious
to one of ordinary skill in the art at the time of Appellant’s invention to
mount the photovoltaic module disclosed in Lim on a roof component of a
vehicle because doing so “would involve nothing more than an intended use
of the assembly of Lim.” Final Act. 9.
Appellant argues that “there is no evidence that the photovoltaic
module of Lim is suitable for use on a vehicle roof component. Indeed, the
vertical footprint of the module appears to be relatively large, thereby
rendering it unsuitable for use as a vehicle roof component.” Appeal Br. 7.
We find no disclosure in Lim, however, indicating that the Figures
provided in the reference are drawn to scale, and Appellant does not identify
any such disclosure. It is well-settled that “patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed.
Cir. 2000); see also Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Cir.
2005); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any
written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”).
Kajiwara discloses an assembly comprising solar cells located on the
roof of a car, and a cooling system including a heat pipe and a radiator (heat
sink) installed remotely from the solar cells, through which coolant is
circulated to the solar cells. Kajiwara Fig. 1. We find no evidence on the
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record before us indicating that the photovoltaic module of Lim’s
assembly—like the solar cells disclosed in Kajiwara—could not be
successfully mounted to a roof component of a vehicle. In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (“[o]bviousness does not require absolute
predictability of success . . . all that is required is a reasonable expectation of
success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d 894, 903‒04
(Fed. Cir. 1988)).
Appellant’s unsupported arguments to the contrary directed to the
dimensions of Lim’s photovoltaic module are, therefore, unpersuasive of
reversible error in the Examiner’s rejection of claims 2 and 13 under 35
U.S.C. § 103, which we accordingly sustain. In re Schulze, 346 F.2d 600,
602 (CCPA 1965) (“Argument in the brief does not take the place of
evidence in the record.”).
Rejection III: Claims 4 and 6 under 35 U.S.C. § 103
as Unpatentable over Lim in view of Benoit
Claim 4
To address the rejection of claim 4, Appellant relies on the arguments
Appellant presents for claim 1 (discussed above), and argues that Benoit
fails to cure the deficiencies of Lim. Appeal Br. 7. Because we are
unpersuaded of reversible error in the Examiner’s rejection of claim 1 for the
reasons discussed above, Appellant’s position as to claim 4 is also
unpersuasive of reversible error. We, accordingly, sustain the Examiner’s
rejection of claim 4 under 35 U.S.C. § 103.
Claim 6
Claim 6 depends from claim 3, which depends from claim 1. Claim 3
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recites that the “cooling system includes a thermal conductor disposed
between the solar cell and [the] heat pipe”, and claim 6 recites that the
“thermal conductor is thermal grease.”
As discussed above, Lim discloses an assembly comprising a
photovoltaic module including a plurality of solar cells, and a cooling
chamber (heat pipe) having an upper plate attached to a rear surface of the
photovoltaic module and a lower plate in contact with a heat sink. Lim
¶¶ 12, 13. The Examiner finds that Lim discloses disposing a thermal
adhesive (thermally conductive material) between the solar cells and the
cooling chamber (heat pipe) of Lim’s assembly (Final Act. 4 (citing Lim
¶¶ 47, 73, 113), but does not disclose that the thermal adhesive is a thermal
grease. Final Act. 9. The Examiner finds, however, that Benoit discloses
using thermal grease to attach photovoltaic assembly 40 to heat removal
system 14. Final Act. 9 (citing Benoit ¶ 40; Fig. 5). The Examiner finds
that Benoit “teaches such thermal grease would have high boiling
temperature and increase contact surface.” Final Act. 9 (citing Benoit ¶¶ 40,
49). In view of these disclosures in Benoit, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to modify the assembly disclosed in Lim by using a
layer of thermal grease as taught by Benoit to adhere Lim’s solar cells to
Lim’s heat pipe. Final Act. 9.
Appellant argues that it would not have been obvious to replace Lim’s
thermal adhesive with the thermal grease disclosed in Benoit because Lim
uses thermal adhesive to attach photovoltaic module 30 to cooling chamber
10, but the thermal grease disclosed in Benoit is not an adhesive and,
therefore, would not be suitable for mounting Lim’s photovoltaic module 30
Appeal 2019-003154
Application 15/232,869
19
to cooling chamber 10. Appeal Br. 7 (citing Lim ¶ 47).
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection, for reasons that follow.
Benoit discloses a solar energy system comprising photovoltaic
assembly 40 including concentrator photovoltaic (CPV) cell 12, heat
removal system 14, and interface structure 16. Benoit ¶¶ 2, 19. Benoit
discloses that “[i]nterface structure 16 is formed of thermally conductive
layers . . . that align and attach heat removal system 14 with CPV cell 12 in
order to prevent overheating of CPV cell 12 and to increase the rate of heat
transfer from CPV cell 12 to heat removal system 14.” Benoit ¶ 22. Benoit
discloses that “[i]nterface structure 16 must also provide mechanical holding
strength in order to maintain the physical attachment and thermal contact of
CPV cell 12 to heat removal system 14.” Benoit ¶ 25. Benoit discloses an
embodiment in which “a layer of high boiling temperature thermal grease 38
filled with aluminum nitride (AlN) microspheres 39 act[s] as interface
structure 16.” Benoit ¶ 40.
One of ordinary skill in the art reasonably would have understood that
when Benoit’s thermal grease 38 acts as interface structure 16, thermal
grease 38 functions to attach concentrator photovoltaic (CPV) cell 12 to heat
removal system 14, in view of Benoit’s disclosure that interface structure 16
functions to physically attach concentrator photovoltaic (CPV) cell 12 to
heat removal system 14. Consequently, Appellant’s argument that the
thermal grease disclosed in Benoit is not an adhesive, and would therefore
be unsuitable for mounting Lim’s photovoltaic module to Lim’s cooling
chamber, does not identify reversible error in the Examiner’s rejection.
Appeal 2019-003154
Application 15/232,869
20
We, accordingly, sustain the Examiner’s rejection of claim 6 under 35
U.S.C. § 103.
Rejection IV: Claim 5 under 35 U.S.C. § 103 as
Unpatentable Over Lim in view of Foong
Claim 5 depends from claim 3, which depends from claim 1. Claim 3
recites that the “cooling system includes a thermal conductor disposed
between the solar cell and the heat pipe,” and claim 5 recites that the
“thermal conductor is a glass pipe.”
The Examiner finds that “Lim discloses a heat pipe . . . used as the
cooling chamber,” but “does not disclose including a thermal conductor of a
glass pipe.” Final. Act. 10. The Examiner finds, however, that Foong
discloses a heat absorber pipe for conducting fluid, which is constructed to
have a glass pipe surrounding a metal pipe. Final Act. 10 (citing Foong
¶ 55). In view of this disclosure in Foong, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to modify Lim’s assembly to include a heat pipe
constructed of a glass pipe surrounding a metal pipe as taught by Foong
“because such modification would involve nothing more than use of a
known material (e.g. glass pipe surrounding metal pipe) for its intended use
(e.g. as a heat pipe) in a known environment to accomplish entirely expected
result.” Final Act. 10.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that the relied-upon disclosures in Lim
and Foong would have suggested a glass pipe thermal conductor disposed
between a solar cell and a heat pipe, for reasons expressed by Appellant and
discussed below.
Appeal 2019-003154
Application 15/232,869
21
Foong discloses a solar reflector assembly comprising reflective panel
14 and solar absorber pipe 30 “adapted for a fluid such as oil to flow.”
Foong ¶ 32. Foong discloses that light energy is reflected from reflective
panel 14 and concentrated on solar absorber pipe 30 to generate heat for
driving an engine. Id. Foong discloses that the absorber pipe may be
constructed of a “solar tube having an insulating glass pipe surrounding a
metal pipe for conducting fluid or more simply a metal pipe without
insulation.” Foong ¶ 55.
The Examiner does not provide a reasoned explanation grounded in
sound factual findings as to why Foong’s disclosure of surrounding a solar
absorber pipe used to generate heat with an insulating glass pipe reasonably
would have suggested disposing a thermal conductor in the form of a glass
pipe between the solar cells and heat pipe of Lim’s assembly. Contrary to
the Examiner’s assertions, the proposed modification would not involve use
of a known material for its intended purpose in a known environment.
Lim’s cooling chamber (heat pipe) is used to cool solar cells in a
photovoltaic module (Lim ¶ 15), whereas Foong’s solar absorber pipe is
used to generate heat (Foong ¶ 32). And while Lim discloses disposing a
thermally conductive adhesive between the photovoltaic module and cooling
chamber (heat pipe) (Lim ¶ 113), Foong discloses surrounding a metal solar
absorber pipe with an insulating glass pipe (Foong ¶ 55). The Examiner,
therefore, does not establish that the relied-upon disclosures in Lim and
Foong reasonably would have suggested a glass pipe thermal conductor
disposed between a solar cell and a heat pipe as required by claim 5.
We, therefore, do not sustain the Examiner’s rejection of claim 5
under 35 U.S.C. § 103.
Appeal 2019-003154
Application 15/232,869
22
Rejection V: Claims 8 and 23 under 35 U.S.C. § 103 as
Unpatentable over Lim in view of Dessel
To address this rejection, Appellant relies on the arguments presented
for claim 1 (discussed above), and argues that the additional reference
applied in this rejection (Dessel) fails to cure the deficiencies of Lim.
Appeal Br. 8. Because we are unpersuaded of reversible error in the
Examiner’s rejection of claim 1 for the reasons discussed above, Appellant’s
position as to this rejection is also unpersuasive of reversible error.
Rejection VI: Claim 24 under 35 U.S.C. § 103 as
Unpatentable over Lim in view of Gray
Claim 24 depends from claim 1 and recites that the “heat pipe is a
rotating heat pipe that relies on centrifugal forces to dissipate heat.”
The Examiner finds that the cooling chamber (heat pipe) disclosed in
Lim is not a rotating heat pipe that relies on centrifugal forces to dissipate
heat. Final Act. 11. The Examiner finds, however, that Gray discloses a
rotating heat pipe that relies on centrifugal forces to dissipate heat from a
heat in section to a heat out section, and provides greatly improved heat
transfer. Final Act. 11 (citing Gray col. 2, l. 57–col. 4, l. 13; col. 4, l. 43–
col. 5, l. 8; Fig. 1). In view of this disclosure in Gray, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of Appellant’s invention to modify Lim’s assembly to include a
rotating heat pipe that relies on centrifugal forces to dissipate heat to
improve heat transfer. Final Act. 11.
Appellant argues that Gray’s heat pipe design would not work with
Lim’s assembly because Gray’s heat pipe is connected to axial shaft 3,
which is journalled for rotation in bearing 4, and shaft 3 and bearing 4 rotate
Appeal 2019-003154
Application 15/232,869
23
the heat pipe to create cylindrical forces for dissipating heat. Appeal Br. 9.
Appellant argues that Lim’s assembly does not include a shaft or bearing for
rotating the heat pipe. Id.
The Examiner responds to Appellant’s arguments in the Answer by
finding that “Gray discloses the rotating pipe includes the shaft and
bearing.” Ans. 15. The Examiner thus implicitly indicates that the proposed
modification of Lim’s assembly involves incorporation of the rotating heat
pipe along with the shaft and bearing disclosed in Gray.
Appellant does not question the Examiner’s finding that Gray
discloses that the rotating heat pipe described in the reference includes a
shaft and bearing (Reply Br. 1–8). Consequently, Appellant’s argument that
Gray’s rotating heat pipe design would not work with Lim’s assembly
because Lim’s assembly does not include a shaft or bearing for rotating the
heat pipe does not identify reversible error in the Examiner’s factual findings
or reasoning. We, accordingly, sustain the Examiner’s rejection of claim 24
under 35 U.S.C. § 103.
Rejection VII: Claim 26 under 35 U.S.C. § 103 as
Unpatentable over Lim in view of Neulander
Claim 26 depends from claim 1 and recites that the assembly
comprises a plurality of separate heat pipes extending between the
photovoltaic module and the heat sink.
The Examiner finds that although “Lim does not disclose using a
plurality of separate heat pipes,” Neulander discloses “a plurality of separate
heat pipes of thermosiphon (106) for transferring heat” that “provide more
even heating within the fluid chamber” and “two or three times the process
fluid (or working fluid) heat transfer area in the same volume.” Final Act.
Appeal 2019-003154
Application 15/232,869
24
12 (citing Neulander col. 7, ll. 10–13, 48–53; Figs. 3, 9, and 11). In view of
these disclosures in Neulander, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of Appellant’s
invention to modify Lim’s assembly “by using a plurality of separate heat
pipes . . . to transfer heat as taught by Neulander.” Final Act. 12.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that the relied-upon disclosures in
Neulander would have suggested modifying Lim’s assembly to include a
plurality of separate heat pipes, for reasons expressed by Appellant and
discussed below.
Neulander discloses an apparatus for controlled heating of a process
fluid comprising a plurality of thermosyphons having evaporator ends and
condenser ends. Neulander col. 3, ll. 13–15, 18–20. Neulander discloses
arranging the evaporator ends in a closely spaced bundle within a burner
chamber, and extending the condenser ends in a wide open, spread-out
configuration into a vessel containing process fluid, so that the condenser
ends are immersed in the process fluid. Neulander col. 3, ll. 20–30.
Neulander discloses that during operation, the evaporator ends receive heat
generated in the burner chamber, and the heat is transferred to the condenser
ends of the thermosyphons, which release heat into the process fluid.
Neulander col. 3, ll. 23–30. Neulander discloses that separating the
condenser ends of the thermosyphons advantageously enables more even
heating of the process fluid. Neulander col. 7, ll. 10–12.
In contrast to Neulander’s use of a plurality of thermosyphons to
evenly heat a process fluid, Lim’s assembly cools a photovoltaic module by
transferring heat from the photovoltaic module to a cooling chamber (heat
Appeal 2019-003154
Application 15/232,869
25
pipe). Lim ¶¶ 13, 15, 16, 84. The Examiner does not provide a reasoned
explanation grounded in sound factual findings as to why Neulander’s
disclosure of evenly heating a process fluid by arranging condenser ends of a
plurality of thermosyphons in a wide open, spread-out configuration in the
fluid reasonably would have suggested modifying Lim’s assembly to include
a plurality of separate heat pipes, when Lim’s assembly cools a photovoltaic
module by maximizing the contact area between the upper plate of a cooling
chamber (heat pipe) and the photovoltaic module. Lim ¶¶ 13, 15, 16, 84.
Therefore, the Examiner does not establish that the relied-upon
disclosures in Lim and Neulander reasonably would have suggested
modifying Lim’s assembly to include a plurality of separate heat pipes, as
required by claim 26. We, accordingly, do not sustain the Examiner’s
rejection of claim 26 under 35 U.S.C. § 103.
Reply Brief
Appellant presents numerous arguments for the first time in the Reply
Brief that Appellant could have raised in the Appeal Brief. See, e.g., Reply
Br. 2–5, 7. We do not consider these arguments because Appellant does not
show good cause for raising these arguments for the first time in the Reply
Brief. 37 C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments
raised for the first time in the Reply Brief that could have been raised in the
Appeal Brief will not be considered by the Board unless good cause is
shown).
Appeal 2019-003154
Application 15/232,869
26
CONCLUSION
Claims

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 9–12,
14, 21, 22,
25, 27
102(a)(1) Lim 1, 3, 9–
12, 21,
22
14, 25, 27
2, 13 103 Lim, Kajiwara 2, 13
4, 6 103 Lim Benoit 4, 6
5 103 Lim, Foong 5
8, 23 103 Lim, Dessel 8, 23
24 103 Lim, Gray 24
26 103 Lim, Neulander 26
Overall
Outcome
1–4, 6,
8–13,
21–24,
5, 14, 25–27
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)(iv).

AFFIRMED IN PART

Notice of References Cited

Application/Control No.

Applicant(s)/Patent Under Patent
Appeal No.
Examiner

Art Unit

Page 1 of 1

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B US-

C US-

D US-

E US-

F US-

G US-

H US-

I US-

J US-

K US-

L US-

M US-
FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

Classification

N

O

P

Q

R

S

T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

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X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
Displaced | Definition of Displaced at Dictionary.com
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displaced [ dis-pleyst ] SHOW IPA
adjective
noun
CONTENT RELATED TO DISPLACED
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1
2
3
After the earthquake, the displaced were temporarily housed in armories.
Trail of Tears
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lacking a home, country, etc.
moved or put out of the usual or proper place.
(used with a plural verb) persons who lack a home, as through political exile, destruction of their
previous shelter, or lack of financial resources (usually preceded by the):
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WORDS RELATED TO DISPLACED
deranged, removed, ectopic
WORDS NEARBY DISPLACED
dispirit, dispirited, dispiriting, dispiteous, displace, displaced, displaced homemaker, displaced person, displacement,
displacement activity, displacement current
ORIGIN OF DISPLACED
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displace [ dis-pleys ] SHOW IPA
verb (used with object), dis·placed, dis·plac·ing.
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Salem witch trials
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DEFINITION FOR DISPLACED (2 OF 2)
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1
2
3
Fiction displaces fact.
First recorded in 1565–75; displace + -ed2
un·dis·placed, adjective
to compel (a person or persons) to leave home, country, etc.
to move or put out of the usual or proper place.
to take the place of; replace; supplant:
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ORIGIN OF DISPLACE
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U.S. HUMANITARIAN AID GOING TO ISIS | JAMIE DETTMER | OCTOBER 20, 2014 | DAILY BEAST
OBAMA WENT TO WAR TO SAVE THEM, BUT THEY CAN’T GET U.S. VISAS | CHRISTINE VAN DEN TOORN, SHERIZAAN MINWALLA | SEPTEMBER 28, 2014 | DAILY BEAST
THE YOUNG GIRLS ESCAPING THE ISIS WAR | CHANDRA KELLISON | SEPTEMBER 16, 2014 | DAILY BEAST
4
5
SEE SYNONYMS FOR displace ON THESAURUS.COM
DICTIONARY.COM UNABRIDGED
BASED ON THE RANDOM HOUSE UNABRIDGED DICTIONARY, © RANDOM HOUSE, INC. 2019
to remove from a position, office, or dignity.
Obsolete. to rid oneself of.
1545–55; dis- + place, perhaps modeled on Middle French desplacer1
relocate.2
depose, oust, dismiss.4
dis·place·a·ble, adjective
pre·dis·place, verb (used with object), pre·dis·placed, pre·dis·plac·ing.
un·dis·place·a·ble, adjective
2. DISPLACE, MISPLACE mean to put something in a different place from where it should be. TO DISPLACE often means to shift something
solid and comparatively immovable, more or less permanently from its place: The flood displaced houses from their foundations. TO
MISPLACE is to put an object in a wrong place so that it is difficult to find: Papers belonging in the safe were misplaced and
temporarily lost.
The aid—mainly food and medical equipment—is meant for Syrians displaced from their hometowns, and for hungry civilians.
Now that he and his family are displaced and the risks have escalated he wants to leave.
Displaced girls, especially, face the triple jeopardy of war, domestic violence and attacks from neighboring men.
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‘THE REAL HOUSEWIVES OF NEW YORK CITY’ LOSES A LEG IN SIXTH-SEASON FINALE | TIM TEEMAN | JULY 23, 2014 | DAILY BEAST
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displace / (dɪsˈpleɪs) /
verb (tr)
DERIVED FORMS OF DISPLACE
BRITISH DICTIONARY DEFINITIONS FOR DISPLACED
1
2
3
4
5
6
Reality shows are as tightly storylined and produced as drama, the genre they displaced.
to move from the usual or correct location
to remove from office or employment
to occupy the place of; replace; supplant
to force (someone) to leave home or country, as during a war
chem to replace (an atom or group in a chemical compound) by another atom or group
physics to cause a displacement of (a quantity of liquid, usually water of a specified type and density)
displaceable, adjective
displacer, noun
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Axial | Definition of Axial by Merriam-Webster
https://www.merriam-webster.com/dictionary/axial[11/16/2019 1:51:37 PM]
Other Words from axial
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axial adjective
ax·​i·​al | \ ˈak-sē-əl \
Definition of axial
: of, relating to, or having the characteristics of an axis1
: situated around, in the direction of, on, or along an axis
: extending in a direction essentially perpendicular to the plane of a cyclic
structure (as of cyclohexane)
// axial hydrogens
— compare EQUATORIAL
2 a
b
SINCE 1828
Axial | Definition of Axial by Merriam-Webster
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Other Words from axial
axiality \ ˌak-​sē-​ˈa-​lə-​tē \ noun
axially \ ˈak-​sē-​ə-​lē \ adverb
Examples of axial in a Sentence
Recent Examples on the Web
// These vary because of the elliptical shape of Earth’s orbit and its axial tilt.
— Dave Epstein, BostonGlobe.com, "Summer is nearly here, which means the days are going to
get shorter," 19 June 2019
// On Earth, our axial tilt plays a much bigger role in governing our annual seasons
than our near-circular orbit.
— National Geographic, "What is the summer solstice? The answer might surprise you.," 20 June
2019
// This exhibit is a tribute to his work and contains not only a number of his pocket
watches and wristwatches, but also, the very first wristwatch to ever have a co-axial
escapement installed in it.
— Jack Forster, Bloomberg.com, "The Weird, Wonderful Treasures Inside Europe’s Greatest
Watch Museum," 5 Mar. 2018
// These tanks are built to withstand the axial force of a vertical launch, but not a crash
into the ocean.
— Eric Berger, Ars Technica, "Amazingly, SpaceX fails to expend its rocket," 1 Feb. 2018
// After that, Pluto’s axial tilt would cause more and more of its surface to be in
shadow, making a worthwhile flyby unfeasible for decades to come.
— Marcia Bartusiak, WSJ, "‘Chasing New Horizons’ and ‘Discovering Pluto’ Reviews: Big
Lessons From a Tiny World," 11 May 2018
// That watch is none other than a Patek Philippe Nautilus, converted to a co-axial
escapement in 1981 at the request of Patek Philippe, by Dr. Daniels.
— Jack Forster, Bloomberg.com, "The Weird, Wonderful Treasures Inside Europe’s Greatest
Watch Museum," 5 Mar. 2018
// By contrast, another hypothetical particle, the dark axial vector boson, isn't ruled out
by this new measurement.
— John Timmer, Ars Technica, "A physical constant’s value shouldn’t depend on how you
measure it," 13 Apr. 2018
// Seasons are all about axial tilt, whether the planet in orbit is tilted towards or away
from the sun.
— Sophie Weiner, Popular Mechanics, "What Are Seasons Like on Other Planets?," 27 Aug.
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2017
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First Known Use of axial
circa 1847, in the meaning defined at sense 1
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ax-hammer
ax-head
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Statistics for axial Tim
Th
184
Se
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axial
axial angle
axial elements
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axial adjective
ax·​i·​al | \ ˈak-sē-əl \
Medical Definition of axial
: of, relating to, or having the characteristics of an axis1
: situated around, in the direction of, on, or along an axis
: extending in a direction essentially perpendicular to the plane of a cyclic
structure (as of cyclohexane)
// axial hydrogens
— compare EQUATORIAL
2 a
b
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Axial | Definition of Axial by Merriam-Webster
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A word for something you want to
avoid
It's a century younger than you'd
expect
A word for a messenger (hopefully
bringing good news)
'Cliché': We’ve Heard It All
Before
'Bounty Hunter': A Hollywood
Invention
Casting Light on 'Angel'
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