Vaisman, IgorDownload PDFPatent Trials and Appeals BoardDec 9, 201914583931 - (D) (P.T.A.B. Dec. 9, 2019) Copy Citation 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 Appeal Br. 3. 2 Claims 3 and 19 are canceled, and claims 4‒6 and 12‒15 are withdrawn from consideration.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. Appeal 2019-003172 Application 14/583,931 2 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 Appeal 2019-003172 Application 14/583,931 3 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. Appeal 2019-003172 Application 14/583,931 4 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 Appeal 2019-003172 Application 14/583,931 5 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 Appeal 2019-003172 Application 14/583,931 6 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 Appeal 2019-003172 Application 14/583,931 7 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 Appeal 2019-003172 Application 14/583,931 8 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 Appeal 2019-003172 Application 14/583,931 9 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 Appeal 2019-003172 Application 14/583,931 10 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. Appeal 2019-003172 Application 14/583,931 11 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 Appeal 2019-003172 Application 14/583,931 12 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 Appeal 2019-003172 Application 14/583,931 13 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 Copy with citationCopy as parenthetical citation