Tansley, Ian

Patent Trials and Appeals Board

Dec 31, 2019

15262486 - (D) (P.T.A.B. Dec. 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.
15/262,486 09/12/2016 Ian Tansley 116326-8015.US01 1024
22918 7590 12/31/2019
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN TANSLEY
Appeal 2019-004525
Application 15/262,486
Technology Center 3700
Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
BEVERLY M. BUNTING Administrative Patent Judges.

BUNTING, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE

1 In this Decision, we refer to the Specification filed September 12, 2016
(“Spec.”); Final Office Action dated April 24, 2018 (“Final Act.”); Appeal
Brief filed December 20, 2018 (“Appeal Br.”); Examiner’s Answer dated
March 21, 2019 (“Ans.”); and Appellant’s Reply Brief filed May 16, 2019
(“Reply Br.”).
Appeal 2019-004525
Application 15/262,486
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Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–22, and 24–27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to a portable refrigeration apparatus for
maintaining internal storage temperature without electrical power. Spec.
Abstract. Of the claims on appeal, claims 1, 12, and 24 are independent.
Appeal Br. Claim App. Claim 1, reproduced below with revised formatting,
is illustrative of the subject matter on appeal:
1. A chilling panel comprising:
a casing layer that is thermally insulating and forms an exterior
side of the chilling panel;
a coolant compartment defined by thermally conductive side
walls abutting an interior side of the casing layer and
configured to contain a cooling element;
an inner wall layer constructed of thermally conductive material
and forms the interior side of the chilling panel;
a liquid reservoir compartment defined as the volume between
the inner wall layer and a combination of the coolant
compartment and the casing layer, and in fluid
communication with the coolant compartment;
an internal thermal insulator affixed to the coolant compartment,
the internal thermal insulator positioned and sized such that
liquid contained in the liquid reservoir compartment is
thermally insulated from the cooling element in the coolant
compartment on a surface of the coolant compartment parallel
with a major plane of the chilling panel; and

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Sure Chill
Company Limited. Appeal Br. 2.
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means for removably interconnecting the chilling panel with a
number of other chilling panels so that when interconnected,
a combination of the chilling panel and the other chilling
panels forms a sealed container.
REFERENCES
The Examiner relies on the following prior art references:
REJECTIONS ON APPEAL3
The Examiner maintains the following rejections on appeal:
1. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Corder, Tansley, and McGrath.
Final Act. 6–8.

3 The Examiner acknowledges that the rejection of claims 1, 3–11, and 27
under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point
out and distinctly claim the subject matter that Applicant regards as the
invention (Final Act. 4–5) was withdrawn in the Advisory Action dated
November 6, 2018, and the amendment dated October 24, 2018 was entered
in the record. Ans. 4.
Name Reference Date
Schlosser
(“Schlosser”)
US 4,498,312 February 12, 1985
McGrath et al.
(“McGrath”)
US 5,875,599 March 2, 1999
Lantz
(“Lantz”)
US 2006/0174648 A1 August 10, 2006
Long et al.
(“Long”)
US 2010/0102057A1 April 29, 2010
Linder
(“Linder”)
US 8,215,125 July 10, 2012
Corder et al.
(“Corder”)
US 8,424,335 B2 April 23, 2013
Tansley
(“Tansley”)
WO 2013/110957 A2 August 1, 2013
Gray
(“Gray”)
US 2016/0243000 A1 August 25, 2016
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2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, and Long. Id.
at 8.
3. Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, and Gray. Id.
at 9.
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, and
Schlosser. Id. at 10.
5. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, and Linder.
Id.
6. Claims 11–14, 17, and 21–22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Corder, Tansley,
McGrath, and Lantz. Id. at 11–13.
7. Claims 15 and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Corder, Tansley, McGrath,
Lantz, and Long. Id. at 13–14.
8. Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Corder, Tansley, McGrath,
Lantz, and Gray. Id. at 14–15.
9. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, Lantz, and
Linder. Id. at 15.
10. Claims 10, 24, and 27 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Corder, Tansley,
McGrath, Long and Schlosser. Id. at 15–18.
11. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, Long,
Schlosser and Gray. Id. at 18.
12. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Corder, Tansley, McGrath, Long,
Schlosser and Linder. Id. at 18–19.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments and determine that Appellant has identified reversible error in the
Examiner’s rejections of claims 1, 3–11, and 27, but not as to claims 12–22
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and 24–26. Accordingly, we reverse the Examiner’s rejections of claims 1,
3–11, and 27, and affirm the Examiner’s rejections of claims 12–22 and 24–
26 based on the fact-finding and reasoning set forth below, and in the Final
Action, Advisory Action, and Answer.
OBVIOUSNESS BASED AT LEAST IN PART ON
CORDER, TANSLEY, AND MCGRATH
Appellant argues that independent claims 1, 12, and 24 are not
obvious based at least on Corder, Tansley, and McGrath (Appeal Br. 4–9)
and does not provide a separate argument for the dependent claims (id. at 8).
As such, the dependent claims stand or fall with the corresponding
independent claim. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Corder teaches most of the elements of claim
1, and relies on Tansley and McGrath for the rest. Final Act. 6–8. For
example, the Examiner finds that Corder discloses a chilling panel having
(1) casing layer 320; (2) coolant compartment 310 “defined by thermally
conductive sidewalls abutting an interior side” of casing layer 320 and
containing cooling element 315; (3) inner wall layer (interior surface of
inner wall layer 110); (4) liquid reservoir compartment 115 defined as the
volume between inner wall layer 110 and the combination of coolant
compartment 310 and casing layer 320, internal thermal insulator 120
“affixed to the coolant compartment 310;” and (5) that the chilling panels
form a sealed container. Ans. 6–7. The Examiner acknowledges that Corder
does not teach that the liquid reservoir compartment is in fluid
communication with the coolant compartment and turns to the disclosure in
Tansley regarding casing layer 10, coolant compartment 28, inner wall layer
16, and liquid reservoir 14 in fluid communication with coolant
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compartment 28 and internal thermal insulator 22. Id. at 7. The Examiner
reasons that
[i]t would have been obvious to one of ordinary skill in the art at
the time of effective filing to have placed the liquid reservoir
compartment and the coolant compartment of Corder in fluid
communication with the arrangement taught by Tansley in order
to promote circulation of liquid and the cooling of the payload.
Id. The Examiner relies on McGrath for its teaching regarding removable,
interconnecting chilling panels that form a sealed container. Id. at 8. As to
the proposed combination of Corder and McGrath, the Examiner reasons
that it would have been obvious to add screws, locks or latches between
adjacent chilling panels, “in order to ensure the container maintains its
structure and contains its payload” and for ease of handling. Id. at 8.
As to claim 12, the Examiner finds that Corder teaches (1) a plurality
of interconnected chilling panels 400 that define an inner volume 109 and
contain fluid compartment 115 in communication with cooling element 315;
and (2) internal thermal insulator 120 positioned and sized so that fluid
compartment 115 is thermally insulated from cooling element 315 “on a
surface of the cooling element parallel with a major plane of each respective
chilling panel.” Final Act. 11. The Examiner turns to McGrath for its
teaching regarding a means for removably interconnecting the chilling
panels to form a sealed container, including screws, locks or latches. Id.
at 11–12 (citing McGrath Figures 2, 3, 4A, 4B, 6, and 7). The Examiner
repeats his reasoning from claim 1. Id. at 12.
For claim 24, the Examiner finds that Corder teaches (1) a number of
interconnected chilling panels 400 with inner volume 109; (2) cooling
elements 315 positioned within each chilling panel; (3) reservoirs 115
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positioned on the interior side of internal volume 109 and “in thermal
communication” with cooling element 315 and air within internal
volume 109. Final Act. 16. Acknowledging that Corder does not teach that
the fluid compartment is in fluid communication with the cooling element,
the Examiner turns to the teaching in Tansley regarding a chilling panel
having “casing layer (10), cooling element (28), inner wall layer (16), a
liquid reservoir (14) in fluid communication with the cooling element (28),
and an internal thermal insulator (22).” Id. The Examiner reasons that it
would have been obvious to one of ordinary skill in the art “to have placed
the liquid reservoir compartment and the coolant compartment of Corder in
fluid communication with the arrangement taught by Tansley in order to
promote circulation of liquid and the cooling of the payload.” Id. Again, the
Examiner relies on McGrath for its teaching regarding a means for
removably interconnecting the chilling panels to form a sealed container,
including screws, locks or latches. Id. at 16–17 (citing McGrath Figures 2,
3, 4A, 4B, 6, and 7). The Examiner repeats his reasoning from claim 1. Id.
at 17.
Whether the layers of Corder are affixed to the coolant compartment.
Claim 1 requires “an internal thermal insulator affixed to the coolant
compartment.” Appeal Br. Claims App. Appellant contends that because
Corder’s layers 330, 320, 315, 120, 115, and 110 are nested, they are not
“attached (or affixed) to one another” and “layer 315 is not affixed to
layer 120.”4 Appeal Br. 5 (citing Corder 5:10–20). The Examiner responds

4 We note that heading V. A. of Appellant’s argument appears to be directed
to claims 1 and 12, but Appellant’s express arguments only refer to claim 1.
Appeal Br. 4–5. Because claim 12 does not recite the term affixed, our
analysis is limited to Appellant’s arguments in connection with claim 1.
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that thermal insulator 120 and the coolant compartment are affixed as a
result of “friction of their contact.” Ans. 5–6. More persuasive is
Appellant’s argument that “[c]ontact alone does not necessitate or imply
attachment.” Reply 2. Indeed, a general purpose dictionary defines affix to
mean “to attach physically,” and the Examiner does not explain sufficiently
how Corder’s thermal insulator 120 and cooling compartment are physically
attached. See Merriman-Webster.com (accessed December 19, 2019),
https://www.merriam-webster.com/dictionary/affix.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1. Accordingly, we reverse the rejection of claim 1. For the same
reasons, we reverse the rejections of claims 3–11 and 27, which ultimately
depend from claim 1.
The “reservoirs positioned on the interior of the sealed container and on
each side of the internal volume and in fluid communication with the cooling
element” limitation.
As to claims 1, 12, and 24, Appellant argues that the cited references
fail to disclose “reservoirs positioned on the interior of the sealed container
and on each side of the internal volume and in fluid communication with the
cooling element.” Appeal Br. 6. Specifically, Appellant maintains that the
proposed combination fails to disclose “a cooling element as distinct from
the liquid reservoir.” Id. (emphasis added). In Appellant’s view, the
proposed modification would result in a hole in layer 120 of Corder, and that
a hole in Corder’s layers “would not cause thermal communication between
different elements.” Id. (emphasis added). In the Reply Brief, Appellant
clarifies its position, stating that
[e]ach of 115 and 315 includes the same physical components
and once joined together (via the teachings of Tansley), any
delineation as to which portion was element 115 and 315
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respectively would be an arbitrary and capricious choice.
Because elements 115 and 315 of Corder are both ‘phase change
material,’ once connected, it is impossible to identify where one
begins and another ends.
Reply 2.
As the Examiner points out, this limitation is only recited in claim 24,
and not claim 12.5 Ans. 6. Appellant’s suggestion that the cooling element
is distinct from the liquid reservoir is inapposite because neither claim 12
nor claim 24 explicitly requires this limitation. Additionally, neither
claim 12 nor claim 24 requires thermal communication between different
elements. The Examiner explains persuasively how Corder’s phase change
material 115, 315 (1) may be ice or water; (2) if the region occupied by 315
is ice, as the ice melts, it changes phase to water; (3) if there is ice
within 115, as the ice melts, it similarly changes phase to water that may
also melt to a water phase; and Corder describes how “the panels may be in
fluid communication thus 315 of the top, bottom, left, and right sides may
communicat[e] with each other; similarly all of 115 may do the same.”
Ans. 6 (citing Corder 5:14–34).
As such, Appellant’s argument does not persuade us that the
Examiner’s finding that the proposed combination discloses “reservoirs
positioned on the interior of the sealed container and on each side of the
internal volume and in fluid communication with the cooling element” is
erroneous as to claims 12 and 24.

5 Because we are apprised of reversible error as to claim 1, we need not
consider Appellant’s remaining arguments in connection with claim 1.
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That the proposed combination would be non-functional.
Appellant further argues that the proposed combination is “non-
functional” because “integrating a hole into element 120 of Corder would
thwart the purpose elements of 115 and 315 of Corder.” Appeal Br. 6.
Appellant supports this argument by pointing out that Corder teaches a
thermally insulated and thermally controlled container formed by
assembling differently sized sleeves of phase change material, i.e., 115, 215,
and 315. Appeal Br. 6–7 (citing Corder 1:65–2:8). In Appellant’s view, by
making a hole between the layers, phase change sleeves 115, 215, and 315
“could no longer adjust the container for multiple sizes” and a tiered phase
change material could not be utilized “because each layer of the material
would melt simultaneously as they are in thermal communication.” Id. at 7.
Recognizing that claims 12 and 24 do not expressly require thermal
communication, Appellant clarifies in its Reply Brief that enabling any type
of fluid communication between the layers of Corder would “render[] the
cited combination ineffective for the intended purpose of Corder to scale
tiers up and down at will.” Reply 5, see Ans. 6 (“[T]he office notes that the
claims require the coolant compartment and liquid reservoir to be in fluid
communication thus appellant's incorrect assertion of no thermal
communication is irrelevant.”).
Appellant’s arguments directed to the intended purpose of Corder’s
elements 115 and 315 are unavailing. Corder contemplates that various
sizes of sleeves 110, 210, 310 of phase change material 115, 215, 315 may
be utilized. See e.g., Corder Tables 1, 2, and 3. Likewise unpersuasive are
Appellant’s arguments suggesting that the proposed modification would
include a hole between layers. Appellant does not explain sufficiently why
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one of skill in the art would necessarily make a hole between layers when
combining Tansley’s teachings regarding fluid communication with
Corder’s mobile refrigeration system. As the Examiner points out, he relies
on the teachings of Tansley for fluid communication, and in particular, the
teaching in Tansley regarding:
cooling element 28 (which may include ice; page 22 first
paragraph or page 4 lines 8-10) and a fluid which may be water
(page 17 lines 10-11). Region 20b of Tansley corresponds to
115 of Corder; region 20a of Tansley corresponds to 315 of
Corder; and insulation 22 of Tansley corresponds to
insulation 120 of Corder. Tansley provides for fluid
communication between the cooling element and the liquid
reservoir by way of opening 24.
Ans. 7. We agree with the Examiner that Appellant’s argument are
erroneously premised on the bodily incorporation of Tansley’s fluid
communication between the fluid compartment and cooling element into
Corder’s mobile refrigeration system. Ans. 8–9. This argument ignores the
Examiner’s proposed modification. Nor does Appellant explain why one of
skill in the art, in implementing Tansley’s fluid communication between the
fluid compartment and cooling element into Corder’s mobile refrigeration
system, would be limited to providing a hole between layers. Appellant’s
assertions are contrary to KSR International Co. v. Teleflex Inc., 550 U.S.
398 (2007), which states that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR at 421. KSR explains explicitly
that the ordinary artisan recognizes “that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” KSR at 420 (emphasis added). As such, Appellant’s
arguments do not persuade us that the proposed modification would change
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the principle purpose of Corder or destroy its stated operating principle,
namely “[a] modular collection of components from which a variety of
thermally insulated and thermal controlled containers can be assembled.”
Corder Abstract.
That the proposed modification impermissibly relies on hindsight.
Appellant contends that the Examiner’s modification of Corder using
the teachings of McGrath impermissibly relies on hindsight. Appeal Br. 8–
9. Specifically, Appellant argues that McGrath discloses insulation, and that
“there is no teaching, suggestion, or motivation in McGrath that simple,
removably-interconnected insulation panels could or should actively provide
cooling.” Id. at 8. Additionally, Appellant argues that the provided
motivation “to modify the teachings of Corder and Tansley into removably
interconnected panels” is based on hindsight. Id. at 9. We are not
persuaded by Appellant’s argument. It is well settled that “[a] suggestion,
teaching, or motivation to combine the relevant prior art teachings does not
have to be found explicitly in the prior art, as the teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references.” In re Kahn, 441 F.3d 977, 987 (Fed.
Cir. 2006) (emphasis added).
Appellant does not dispute the Examiner’s reasoning, which comports
with the Federal Circuit’s recognition of “[t]he normal desire of artisans to
improve upon what is already generally known.” In re Ethicon, Inc., 844
F.3d 1344, 1351 (Fed. Cir. 2017). We find that the Examiner provides a
reasoned basis, supported by a preponderance of the evidence in the record,
explaining why one of ordinary skill would utilized the teachings of Corder,
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as modified by Tansley and McGrath, to arrive at the claimed invention of
claims 12 and 24.
Based on the foregoing, we are not persuaded of error in the rejection
of claims 12 and 24. For the same reasons, we affirm the rejection of claims
13–22, and 25–26, which fall with claims 12 and 24 respectively.
Accordingly, we affirm the Examiner’s rejections of claims 12–22 and 24–
26 as obvious based at least on Corder, Tansley, and McGrath.
CONCLUSION
The Examiner’s rejections of claims 1, 3–11, and 27 are reversed.
The Examiner’s rejections of claims 12–22, and 24–26 are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3 103 Corder, Tansley,
McGrath
1, 3
4 103 Corder, Tansley,
McGrath, Long
4
5–7 103 Corder, Tansley,
McGrath, Gray
5–7
8 103 Corder, Tansley,
McGrath,
Schlosser
8
9 103 Corder, Tansley,
McGrath, Linder
9
11–14, 17,
21–22
103 Corder, Tansley,
McGrath, Lantz
12–14, 17,
21–22
11
15, 19 103 Corder, Tansley,
McGrath, Lantz,
Long
15, 19
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16, 18 103 Corder, Tansley,
McGrath, Lantz,
Gray
16, 18
20 103 Corder, Tansley,
McGrath, Lantz,
Linder
20
10, 24, 27 103 Corder, Tansley,
McGrath, Long,
Schlosser
24 10, 27
25 103 Corder, Tansley,
McGrath, Long
Schlosser, Gray
25
26 103 Corder, Tansley,
McGrath, Long
Schlosser, Linder
26
Overall
Outcome
12–22, 24–
26
1, 3–11, 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART