Vaisman, Igor

Patent Trials and Appeals Board

Dec 9, 2019

14583931 - (D) (P.T.A.B. Dec. 9, 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.
14/583,931 12/29/2014 Igor Vaisman 67382-0261/RCA11122US 1085
126260 7590 12/09/2019
FISHMAN STEWART PLLC
and ROLLS-ROYCE CORPORATION
39533 Woodward Avenue
Suite 140
Bloomfield Hills, MI 48304
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
bhrec@fishstewip.com
patentmail@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IGOR VAISMAN
Appeal 2019-003172
Application 14/583,931
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM A. CAPP, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 7‒11, 16‒18, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected claims 1, 2, 7‒11, 16‒18, and 20 as
unpatentable over the prior art.2 Appellant argues that the combined

1 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 Rolls-Royce
Corporation. Appeal Br. 3.
2 Claims 3 and 19 are canceled, and claims 4‒6 and 12‒15 are withdrawn
from consideration. Appeal Br. 5.
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teachings of the prior art do not render obvious the claimed subject matter.
For the reasons explained below, we agree with Appellant that the Examiner
has not articulated adequate reasoning to explain why one having ordinary
skill in the art would have been led to modify the prior art in the manner set
forth in dependent claims 8 and 16. Appellant has not, however,
demonstrated error in the Examiner rejection of the remaining claims on
appeal. Thus, we affirm in part.
CLAIMED SUBJECT MATTER
The claims are directed to a trans-critical CO2 cooling system in
aerospace applications. Spec. 1, Title. Claims 1, 9, and 17 are independent.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. A cooling system, comprising:
a first heat exchanger for cooling a refrigerant;
a turbine configured to receive the refrigerant from the
first heat exchanger;
at least one compressor configured to compress the
refrigerant;
an ejector configured to receive all the refrigerant
directly from the turbine as a motive stream that evacuates and
compresses the refrigerant from an evaporator;
a liquid separator coupled to an output of the ejector and
configured to provide liquid refrigerant to an evaporator loop
and vapor refrigerant to the at least one compressor; and
the evaporator loop comprising:
an expansion device positioned to expand the
liquid refrigerant from the liquid separator; and
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the evaporator configured to receive the refrigerant
from the expansion device, heat the refrigerant from a
heat load, and pass the refrigerant to the ejector.
Appeal Br. 28 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Takeuchi US 6,834,514 B2 Dec. 28, 2004
Shimazu US 2011/0023533 A1 Feb. 3, 2011
Finney US 8,327,651 B2 Dec. 11, 2012
Brasz EP 0 676 600 B1 Sept. 6, 2000
Hays A Transcritical CO2
Turbine-Compressor 3
July 12, 2004
REJECTIONS
The following rejections are on appeal:
1. Claims 1, 2, 7, and 9‒11 are rejected under 35 U.S.C. § 103 as
unpatentable over Takeuchi and Shimazu, as further evidenced by
Brasz and Hays.
2. Claim 8, 16‒18, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Takeuchi and Shimazu, as further evidenced by
Brasz and Hays, and further in view of Finney.

3 Hays, L., & Brasz, J. (2004). A Transcritical CO2 Turbine-Compressor.
Int’l. Compressor Engineering Conference, School of Mechanical
Engineering, Purdue University. Available at
http://docs.lib.purdue.edu/icec/1628.
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OPINION
Rejection of claims 1, 2, 7, and 9‒11 over Takeuchi and Shimazu, as further
evidenced by Brasz and Hays
Claims 1 and 9
Appellant argues claims 1 and 9 as a group. Appeal Br. 10‒22. We
select claim 1 as representative, and claim 9 stands or falls with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner found that Takeuchi discloses the cooling system of
claim 1 comprising a first heat exchanger, an expansion device, a
compressor, an ejector, a liquid separator, and an evaporator loop,
substantially as claimed. Final Act. 3‒4. The Examiner found that
Takeuchi’s expansion device, i.e., flow amount control valve 900, is not a
turbine. Id. The Examiner found that Shimazu discloses a trans-critical CO2
type refrigeration system that uses a turbine configured to receive refrigerant
from a first heat exchanger. Id. at 4. The Examiner determined that it would
have been obvious at the time of the invention to have provided Takeuchi
with Shimazu’s turbine and its associated components, “either in addition to
the expansion member 900 or replacing the expansion member” to capture
the energy of expansion, thus increasing the efficiency of operation. Id. The
Examiner further cites to Brasz and Hayes as evidence that the efficiency of
Takeuchi’s system would be improved by the proposed modification to
replace Takeuchi’s control valve 900 with Shimazu’s turbine. Id. at 5.
Appellant does not appear to contest the Examiner’s findings as to the
scope and content of Shimazu, Brasz, and Hayes. Appeal Br. 11 (“Appellant
does not conte[st] the base teachings of Shimazu, Brasz, or Hays”). Instead,
Appellant argues that the proposed modification to add a turbine to
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Takeuchi’s cooling system is in error because the modification would render
Takeuchi’s system “inoperable for its intended purpose[].” Appeal Br. 11.
Appellant contends that because the turbine would extract energy from
Takeuchi’s refrigerant flow prior to the flow entering the ejector, the
addition of the turbine to Takeuchi’s system would “reduce[] the amount of
energy available in the refrigerant at the ejector 40” thereby “negatively
impact[ing]” the ejector “to the extent that Takeuchi is rendered inoperable
for its intended purpose.” Id. at 13.
We do not find Appellant’s arguments credible. First, Appellant does
not produce evidence that the reduced energy resulting from insertion of a
turbine upstream of the ejector would render Takeuchi’s ejector inoperable.
Rather, Appellant urges us to deduce from Takeuchi’s description of the
operation of ejector 40 that any reduction in enthalpy of the fluid prior to
ejector 40, would result in inoperability of the ejector. Id. at 13‒14. We do
not have any evidence before us, however, to support such a finding.
Second, Appellant does not reconcile its assertion of inoperability of the
modified Takeuchi system with the fact that its own cooling system employs
a turbine upstream of an ejector. As noted by the Examiner, if the change to
substitute Takeuchi’s expansion valve 900 for a turbine renders Takeuchi
inoperable, then it would also render Appellant’s own system inoperable.
Ans. 6, 11.
Appellant also attempts to improperly place a burden on the Examiner
to prove no negative impact from the proposed modification. Specifically,
Appellant contends that the Examiner’s proposed modification “ignores the
fact that the operating condition of Takeuchi would be impacted, and the
Examiner has not met the burden of showing that Takeuchi would not be
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negatively impacted.” Appeal Br. 14; see also id. at 17 (Appellant arguing
that neither Brasz nor Hayes includes a system having a turbine and an
ejector); id. at 18 (Appellant arguing that the Examiner’s “position ignores
the fact that the refrigerant must be at a certain and defined degree of super-
heating at the inlet to the nozzle, which has not been addressed by the
Examiner.”). Appellant further argues that “the Examiner has not made a
prima facie case that an ejector would behave in the same fashion if energy
were to be extracted from the refrigerant prior to its entry into the ejector
from expansion device 900 of Takeuchi (and having an increased liquid
fraction).” Id. at 19.
We agree with the Examiner that “a modification need not provide
benefit without cost.” Ans. 10‒11. Rather, “a given course of action often
has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006). The Examiner provided adequate
evidence and reasoning of a benefit to the proposed modification. Final
Act. 4; Ans. 9. As explained by the Examiner, even if the benefit of
improvement of the efficiency of the compressor comes at a cost to the
efficiency of the ejector, that reason alone is not persuasive that a person
having ordinary skill in the art would not have been led to make the
proposed modification. Ans. 10. Again, Appellant has not provided
evidence to support a finding that the modification would render the ejector
inoperable.
Further, Appellant has not asserted that a person having ordinary skill
in the art would have had no reasonable expectation of success in making the
proposed modification. “For obviousness under § 103, all that is required is
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a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007) (“the expectation of success need only be reasonable, not
absolute”). The Examiner does not have a burden to show no negative
impact to a system based on a proposed modification designed to achieve a
different benefit to the system. Ans. 11; Medichem, 437 F.3d at 1165. The
Examiner provided detailed reasoning as to the benefit of the proposed
modification with explanation, based on teachings in the art, as to how the
proposed modification would be implemented in Takeuchi to achieve the
benefit. Ans. 9‒15. Thus, the Examiner set forth a prima facie case of
obviousness. At this point, it became incumbent upon Appellant to set forth
arguments, supported by adequate evidence, to rebut the showing. See In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (explaining that when a
prima facie case of obviousness is made, the burden shifts to the applicant to
come forward with evidence and/or argument supporting patentability).
Appellant’s arguments amount to mere attorney argument about
inoperability of the ejector that is not supported by adequate evidence.
Appellant further argues, in response to the Examiner’s alternative
proposed modification to replace Takeuchi’s valve 900 with Shimazu’s
turbine, that the Examiner has not shown how a turbine could be used to
throttle the amount of refrigerant according to the requirements of Takeuchi.
Appeal Br. 15‒16. The Examiner provided adequate evidence in the record
to support the finding that it was well known in the art at the time of the
invention that a throttle valve could be replaced with a turbine. Ans. 12
(citing Brasz ¶ 14 and Hayes, Abst.). As the Examiner explained, with
reference to evidence, it was understood in the art at the time of the
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invention that “‘throttling’ in the context of refrigeration systems refers to
expansion.” Id. (citing Oxford Dictionary of Mechanical Engineering,
definition of “throttle valve”).
Appellant further argues that the Examiner’s articulated reason to
combine the prior art teachings is inadequate because the Examiner failed to
explain how the energy of the turbine would be used to improve “efficiency
of operation” of the system. Appeal Br. 20. The Examiner relied on the
teachings in the art that show connection of the turbine to a drive shaft to
supply energy either to the primary compressor (as in Hays and Brasz) or to
power a second compressor (as in Shimazu). Ans. 15. In each reference, the
primary compressor is powered by a motor. Shimazu ¶ 58, Hays 4, Fig. 5,
Brasz ¶ 28. Energy recovered by the turbine is used to reduce the load on
the motor that is required to supply refrigerant to the system. Shimazu
¶ 163, Hays Abstract, Brasz ¶ 14. As explained by the Examiner, using this
energy recovered by the turbine to drive a compressor improves
performance of the primary compressor. Ans. 15.
For these reasons, we find that the Examiner has articulated adequate
reasoning, supported by evidence and based on rational underpinnings, to
show that the subject matter of claim 1 would have been obvious to one
having ordinary skill in the art in light of Takeuchi and Shimazu. Appellant
has not identified error in the Examiner’s rejection of claims 1 and 9. Thus,
we sustain the rejection of claims 1 and 9 under 35 U.S.C. § 103 as
unpatentable over Takeuchi and Shimazu.
Claims 2 and 10
Appellant presents the same arguments rebutting the rejection of
dependent claims 2 and 10 as addressed above in the discussion of the
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rejection of claims 1 and 9. Appeal Br. 22. We find these arguments
equally unpersuasive of error for these dependent claims. Thus, we sustain
the rejection of claims 2 and 10 under 35 U.S.C. § 103.
Claim 7
Claim 7 depends from claim 1 and further recites “a first compressor
that compresses the refrigerant to a first pressure, and a second compressor
that compresses the refrigerant to a second pressure that is greater than the
first pressure.” Appeal Br. 28‒29 (Claims Appendix). The Examiner
determined that it would have been obvious, in view of Shimazu’s teaching
of using a first compressor 1 and a second compressor 9, which is connected
via a drive shaft to turbine expander 3, to modify Takeuchi’s system to add a
second compressor downstream of compressor 10. Final Act. 5–6.
Appellant argues that the proposed modification is based on the
Examiner’s construction of a “hypothetical system in which turbine 3 of
Shimazu is positioned in the Takeuchi system (and connected to compressor
10), the system also having a second compressor that is somehow positioned
to compress refrigerant to a ‘second, greater pressure’ from the first.”
Appeal Br. 23.
Appellant’s argument is based on a misunderstanding of, or does not
address, the detailed explanation of the application of the teachings of
Shimazu to Takeuchi as set forth in the Final Office Action. Final Act. 5‒6.
Specifically, as pointed out by the Examiner in the Answer, the rejection set
forth in the Final Office Action proposes to modify Takeuchi to connect the
turbine to a secondary compressor, in the same manner as taught in
Shimazu. Ans. 16‒18. Thus, Appellant is incorrect in its description of the
proposed modification as being based on the turbine being connected to
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Takeuchi’s primary compressor. For these reasons, Appellant has not
identified error in the Examiner’s rejection of claim 7. Thus, we sustain the
rejection of claim 7 under 35 U.S.C. § 103 as unpatentable over Takeuchi
and Shimazu.
Claim 11
Appellant does not present arguments specifically directed to the
patentability of claim 11. We treat claim 11 as falling with claim 9, from
which it depends. 37 C.F.R. § 41.37(c)(1)(iv). Thus, we sustain the
rejection of claim 11 under 35 U.S.C. § 103.

Rejection of claims 8, 16‒18, and 20 over Takeuchi and Shimazu, as
evidenced by Brasz and Hays, and further in view of Finney
Claim 17
Appellant argues that Finney does not rectify the deficiencies in the
combined teachings of Shimazu and Takeuchi. Appeal Br. 24. Thus,
Appellant appears to rely on the arguments presented against the proposed
combination of Takeuchi and Shimazu as the basis for seeking reversal of
the rejection of independent claim 17. We find these arguments unavailing
for the reasons discussed above. Thus, we sustain the rejection of claim 17
under 35 U.S.C. § 103.
Claims 18 and 20
Appellant does not present arguments specifically directed to the
patentability of claims 18 and 20. We treat these claims as falling with
claim 17, from which they depend. 37 C.F.R. § 41.37(c)(1)(iv). Thus, we
sustain the rejection of claims 18 and 20 under 35 U.S.C. § 103.
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Claims 8 and 16
Claims 8 and 16 depend from claims 1 and 9, respectively, and recite
a second evaporator loop comprising a second expansion device, a second
evaporator, and a mixer. Appeal Br. 29, 30 (Claims Appendix). The
Examiner acknowledged that the embodiment of Figure 14 of Takeuchi
lacks a second evaporator, but the Examiner found that the embodiment
shown in Takeuchi’s Figure 20 discloses the claimed second evaporator
loop. Final Act. 6‒7. The Examiner proposed to modify the embodiment of
Figure 14 of Takeuchi, with a second evaporator loop, as taught in the
Figure 20 embodiment.
Appellant argues that the Examiner erred in the proposed modification
because the embodiment of Figure 20 in Takeuchi relies on a three-way flow
amount control valve 900 that cannot be replaced with a turbine having only
a single inlet and a single outlet. Appeal Br. 25‒26. The Examiner responds
that providing an additional evaporator, as shown in Figure 20, to the
embodiment of Figure 14 of Takeuchi, would not necessitate the use of a
three-way valve. Ans. 19. The Examiner explains that at least in the mode
where the bypass path is not open, Takeuchi’s “system is performing as if
valve 900 weren’t there at all.” Id.
We understand from the Examiner’s response that the Examiner is
proposing to replace the three-way valve taught in the dual evaporator
embodiment of Takeuchi with a turbine, as taught in Shimazu, such that the
bypass mode of Takeuchi is eliminated. The Examiner has not, however,
explained adequately what would have led one having ordinary skill in the
art to make such a modification. Thus, we agree with Appellant that the
explanation for the proposed modification to Takeuchi’s Figure 14
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embodiment to add a second evaporator and a turbine to result in the subject
matter of dependent claims 8 and 16 is insufficient. For these reasons, we
do not sustain the rejection of claims 8 and 16 under 35 U.S.C. § 103 as
unpatentable over Takeuchi, Shimazu, and Finney, as evidenced by Brasz
and Hays.
CONCLUSION
We sustain the Examiner’s rejections under 35 U.S.C. § 103 of
claims 1, 2, 7, 9‒11, 17, 18, and 20. We do not sustain the Examiner’s
rejection under 35 U.S.C. § 103 of claims 8 and 16. Thus, we affirm the
Examiner’s decision on unpatentability of claims 1, 2, 7, 9‒11, 17, 18,
and 20; we reverse the Examiner’s decision on unpatentability of claims 8
and 16.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1, 2, 7, 9‒11 103 Takeuchi,
Shimazu,
Brasz, Hays
1, 2, 7, 9‒11
8, 16‒18, 20 103 Takeuchi,
Shimazu,
Finney,
Brasz, Hays
17, 18, 20 8, 16
Overall
Outcome
1, 2, 7, 9‒11,
17, 18, 20
8, 16
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TIME PERIOD FOR RESPONSE
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