`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC COMPANY
`Petitioner
`
`v.
`
`TAS ENERGY INC.
`Patent Owner
`Of
`Patent No. RE44,079
`Reissued: March 19, 2013
`Filed: March 12, 2010
`(Originally Issued as Patent No. 7,343,746 on March 18, 2008)
`Inventor: Tom L. Pierson
`Title: Method of Chilling Inlet Air for Gas Turbines
`____________
`
`Case IPR: Unassigned
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. RE44,079
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is
`
`respectfully requested for claims 1, 9, 14, 18-22, 24, 25, 30-32, 34, 36, 40-42, 48-
`
`50, 57, and 58 of U.S. Patent No. RE44,079. This petition requests review of
`
`twenty-three claims; therefore, excess claim fees are required. Petitioner
`
`authorizes the director to charge deposit account no. 02-4550 for the $26,800 fee
`
`per 37 C.F.R. § 42.15, along with any additional fees required.
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. GROUNDS FOR STANDING ........................................................................ 1
`
`III. OVERVIEW OF THE ’079 Patent and PRIOR ART ..................................... 2
`
`A. The Priority Applications ................................................................................ 2
`
`B. The Claimed Subject Matter of the ’079 Patent .............................................. 3
`
`C. Prosecution History ......................................................................................... 4
`
`1. After Arguing that the Limitation of “Mechanical Chillers”
`Distinguished the Prior Art, that Limitation was Deleted .................................. 5
`
`2. Applicant Argued that the “Dew Point” Limitation Distinguished
`the Prior Art, then Deleted that Limitation During Prosecution of the
`Reissue Application ............................................................................................ 5
`
`D. PRIOR ART OVERVIEW .............................................................................. 6
`
`1. Clark - Inlet Air Cooling and Chilled Water................................................ 7
`
`2. Andrepont – Inlet Air Cooling and Chilled Water ....................................... 7
`
`3. Hartman – Variable Flow Limitations ......................................................... 8
`
`4. Ondryas – Series Chillers ............................................................................. 8
`
`5. ASHRAE Cool Storage Guide – Thermal Energy Storage and Series
`Chillers ..............................................................................................................10
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED ..................................11
`
`A. Statutory Grounds of Challenge ....................................................................11
`
`1. Claims 1, 9, 14, 18, 19-20, 22, 24, 25, 30, 31, 32, 34, and 40-42 are
`unpatentable under 35 U.S.C. § 102 in view of Clark. .....................................12
`
`2. Claims 21 and 36 are unpatentable under 35 U.S.C. § 103 over
`Andrepont in view of Hartman. ........................................................................12
`
`3. Claims 48, 49, and 50 are unpatentable under 35 U.S.C. § 102 in
`view of Ondryas. ...............................................................................................12
`
`4. Claims 48, 49, 50, 57, and 58 are unpatentable under 35 U.S.C. § 103
`over Ondryas in view of ASHRAE Cool Storage Guide. .................................12
`
`B. Claim Construction ........................................................................................13
`
`1. “Operating parameter associated with the gas turbine plant”
`(Claims 9, 50) ....................................................................................................14
`
`
`
`i
`
`

`

`2. “Wet bulb temperature sensor”
`(Claims 1, 2, and 4-9) ........................................................................................14
`
`3. “Load requirements of the gas turbine”
`(Claims 20, 22, 25, 30, 31, 34, 40, 41) ..............................................................15
`
`C. Level of Ordinary Skill ..................................................................................16
`
`D. Detailed Application Of Prior Art To The Challenged Claims Of The ’079
`Patent ....................................................................................................................17
`
`1. Claims 1, 9, 14, 18, 19-20, 22, 24, 25, 30, 31, 32, 34, and 40-42 are
`unpatentable under 35 U.S.C. § 102 in view of Clark ......................................18
`
`a) Claim 1 is Anticipated by Clark .............................................................20
`
`b) Claim 9 is Anticipated by Clark .............................................................23
`
`c) Claim 14 is Anticipated by Clark ...........................................................24
`
`d) Claim 18 is Anticipated by Clark ...........................................................25
`
`e) Claim 19 is Anticipated by Clark ...........................................................27
`
`f) Claim 20 is Anticipated by Clark ...........................................................29
`
`g) Claim 22 is Anticipated by Clark ...........................................................30
`
`h) Claim 24 is Anticipated by Clark ...........................................................31
`
`i) Claim 25 is Anticipated by Clark ...........................................................32
`
`j) Claim 30 is Anticipated by Clark ...........................................................32
`
`k) Claim 31 is Anticipated by Clark ...........................................................33
`
`l) Claim 32 is Anticipated by Clark ...........................................................34
`
`m) Claim 34 is Anticipated by Clark ........................................................35
`
`n) Claim 40 is Anticipated by Clark ...........................................................36
`
`o) Claim 41 is Anticipated by Clark ...........................................................37
`
`p) Claim 42 is Anticipated by Clark ...........................................................37
`
`2. Claims 21 and 36 are unpatentable under 35 U.S.C. § 103 in view of
`Andrepont and Hartman ....................................................................................38
`
`a) Claim 21 is Obvious Over Andrepont and Hartman. .............................38
`
`b) Claim 36 is Obvious Over Andrepont and Hartman ..............................42
`
`3. Claims 48, 49 and 50 are Anticipated by Ondryas ....................................43
`
`a) Claim 48 is Anticipated by Ondryas .......................................................44
`
`b) Claim 49 is Anticipated by Ondryas. ......................................................46
`
`
`
`ii
`
`

`

`c) Claim 50 is Anticipated by Ondryas. ......................................................47
`
`4. Claims 48, 49, 50, 57, and 58 are unpatentable under 35 U.S.C. § 103
`in view of Ondryas and ASHRAE Cool Storage Guide ...................................48
`
`a) Claim 48 is Obvious Over Ondryas and ASHRAE Cool
`Storage Guide ................................................................................................48
`
`b) Claim 49 is Obvious over Ondryas in View of ASHRAE Cool
`Storage Guide ................................................................................................50
`
`c) Claim 50 is Obvious over Ondryas in View of ASHRAE Cool
`Storage Guide ................................................................................................51
`
`d) Claim 57 is Obvious over Ondryas in View of ASHRAE Cool
`Storage Guide ................................................................................................51
`
`e) Claim 58 is Obvious over Ondryas in View of ASHRAE Cool
`Storage Guide ................................................................................................53
`
`V. Mandatory Notices.........................................................................................54
`
`A. Real Party-in-Interest .....................................................................................54
`
`B. Related Matters ..............................................................................................54
`
`C. Lead and Back-up Counsel and Service Information ....................................55
`
`VI. CONCLUSION ..............................................................................................56
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`Cases
`
`TABLE OF AUTHORITIES
`
`Page
`
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ............................................................................13
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 12, 16
`
`Mintz v. Dietz & Watson, Inc.
`679 F.3d 1372 (Fed. Cir. 2012) ............................................................................17
`
`Custom Accessories, Inc. v. Jeffrey-Allan Indus, Inc.
`807 F.2d 955 (Fed. Cir. 1986) ..............................................................................17
`
`In re GPAC
`57 F. 3d 1573 (Fed. Cir. 1995) .............................................................................17
`
`Statutes
`
`35 U.S.C § 102 ................................................................................................. passim
`
`35 U.S.C § 103 ................................................................................................. passim
`
`Rules
`
`37 C.F.R. § 42.8 ................................................................................................. 54-55
`
`37 C.F.R. § 42.22(a) ................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ..............................................................................................13
`
`37 C.F.R. § 42.104(a) ................................................................................................. 1
`
`37 C.F.R. § 42.104(b) ..............................................................................................11
`
`
`
`iv
`
`

`

`
`LIST OF EXHIBITS FOR PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. RE44,079,
`CLAIMS 1, 9, 14, 18-22, 24, 25, 30-32, 34, 36, 40-42, 48-50, 57, and 58
`
`No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`
`1013
`1014
`1015
`
`
`
`
`
`
`
`
`
`
`
`Description
`U.S. Patent No. RE44,079 (the ’079 Patent)
`U.S. Patent No. 6,318,065 (the ‘065 Patent)
`U.S. Patent No. 6,470,686 (the ‘686 Patent)
`U.S. Patent No. 6,769,258 (the ‘258 Patent)
`Clark, Kenneth M., Ebeling, Jerry A. and Godwin, Edward, June
`1998, “The Application of Thermal Energy Storage for District
`Cooling and Combustion Turbine Inlet Air Cooling”, Proceedings
`of the 89th Annual IDEA Conference, pp. 85-97 (“Clark”)
`“Summer Peaking Capacity Via Chilled Water Storage Cooling of
`Combustion Turbine Inlet Air”, Andrepont et al., Proceedings of the
`56th Annual American Power Conference, Vol. 56, pp. 1345-1350,
`1994 (“Andrepont”)
`“Design Issues of Variable Chilled-Water Flow Through Chillers”,
`Thomas Hartman, ASHRAE Transactions, June 1996 (“Hartman”)
`“Options in Gas Turbine Power Augmentation Using Inlet Air
`Chilling”, Ondryas et al., 1991 (“Ondryas”)
`Design Guide for Cool Thermal Storage, ASHRAE, 1993
`(“ASHRAE Cool Storage Guide”)
`Excerpts from the file history of U.S. Patent No. 7,343,746 (the
`’746 Patent), which reissued as the ’079 Patent
`Excerpts from the file history of the ’079 Patent
`Information Disclosure Statement from file history of U.S. Patent
`No. 7,343,746 (the ’746 Patent), which reissued as the ’079 Patent
`Information Disclosure Statement from file history of ’079 Patent
`Information Disclosure Statement from file history of ’065 Patent
`Declaration of Douglas Reindl, Ph.D.
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to Rules 42.22 and 42.104, Petitioner General Electric Company
`
`seeks inter partes review of claims 1, 9, 14, 18-22, 24, 25, 30-32, 34, 36, 40-42,
`
`48-50, 57, and 58 of U.S. Patent No. RE44,079 (“the ’079 Patent,” attached as Ex.
`
`1001).1
`
`As evidenced by the prior art references cited in this Petition and the
`
`Declaration of Dr. Reindl, the methods of circulating chilled water to cool inlet air
`
`recited in the ’079 Patent were well known before their respective priority dates.
`
`Petitioner submits that had these references been considered by the Patent Office
`
`during prosecution as set forth herein, none of the challenged claims would not
`
`have issued, and therefore, this petition for inter partes review should be granted.
`
`II. GROUNDS FOR STANDING
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ’079
`
`Patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ’079
`
`Patent on the grounds identified herein.
`
`
`1 Petitioner filed petitions for inter partes review on November 18, 2013 for the
`
`following three related patents: U.S. Patent Nos. 6,318,065 (IPR2014-00161);
`
`6,470,686 (IPR2014-00162); and 6,769,258 (IPR2014-00163).
`
`
`
`1
`
`

`

`As further detailed below, the challenged claims are invalid under 35 U.S.C.
`
`§102 and §103. Thus, “there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a).
`
`III. OVERVIEW OF THE ’079 PATENT AND PRIOR ART
`
`A. The Priority Applications
`
`The ’079 Patent claims priority to three applications, which issued as the
`
`following patents:
`
`
`
`a.
`
`U.S. Patent No. 6,318,065 (“the ’065 Patent”), which was filed
`
`August 6, 1999;
`
`
`
`b.
`
`U.S. Patent No. 6,470,686 (“the ’686 Patent”), which was filed
`
`September 24, 2001; and
`
`
`
`c.
`
`U.S. Patent No. 6,769,258 (“the ’258 Patent”), which was filed
`
`July 26, 2002.
`
`The first two patents—the ’065 Patent and the ’686 Patent—share the same
`
`disclosure and the claims generally relate to inlet air cooling using chilled water
`
`systems with two chillers in series. The ’258 Patent is a continuation-in-part (CIP)
`
`of the ’686 Patent and has the same disclosure as the ‘079 Patent. The new subject
`
`matter recited in these patents is presented under the heading “Additional Methods
`
`and Systems” and includes additional well-known chilled water features, such as
`
`
`
`2
`
`

`

`the variable flow operation recited in the claims of the ’258 Patent. (’258 Patent,
`
`col. 17).
`
`Although most, if not all, of the claims challenged herein are not entitled to
`
`the priority date of the earlier applications, all of the prior art cited herein predates
`
`the earliest priority applications. Accordingly, Petitioner has not requested a
`
`finding that the challenged claims are not supported by the priority applications.
`
`B.
`
`The Claimed Subject Matter of the ’079 Patent
`
`Although the challenged claims include seven independent claims, those
`
`claims include many common limitations. The common limitations recite basic
`
`elements of chilled water systems for inlet air cooling and their inherent functions,
`
`including:
`
` “Gas Turbine Limitations” – chilling inlet air to a gas turbine or a
`
`compressor of a gas turbine
`
` “Chilling System Limitations” – circulating water through water
`
`chillers to lower the temperature of the circulated water;
`
` “Inlet Air Chiller Limitations” – circulating cold water through air
`
`chillers (i.e., cooling coils) to transfer heat from inlet air to the cold
`
`water;
`
` “Water Tank Limitations” – water tanks connected to a chilling
`
`system and having a column of water with a top and bottom;
`
`
`
`3
`
`

`

` “Water Tank – Charge Limitations” – removing water from the
`
`tank, passing it through a water chiller to reduce its temperature, and
`
`introducing it back into the tank at the bottom of the tank; and
`
` “Water Tank– Discharge Limitations” – removing cold water from
`
`the water tank and passing it through the inlet air chiller to lower the
`
`temperature of inlet air.
`
`These chilling system and water tank limitations recite features that are inherent in
`
`chilled water systems that use water tanks for thermal energy storage. For
`
`example, the purpose of including a water chiller in a chilled water system is to
`
`lower the temperature of water passing through the chiller, and the purpose of
`
`including a water tank in a chilled water system is so that water can be chilled and
`
`introduced to the tank during a charge cycle, and then removed and passed through
`
`an air chiller to cool air passing over the air chiller during a discharge cycle.
`
`(Reindl Decl., ¶¶34 and 40).
`
`The majority of the challenged claims vary only in their recitation of “Inlet
`
`Air Temperature Control Limitations.” As discussed in more detail below, each
`
`of the claimed manners of controlling inlet air temperature was well known.
`
`C.
`
`Prosecution History
`
`The ’079 Patent is a reissue patent of U.S. Patent No. 7,343,746 (“the ’746
`
`Patent”), which issued on March 18, 2008 with seven claims. (Ex. 1002).
`
`
`
`4
`
`

`

`1.
`
`After Arguing that the Limitation of “Mechanical Chillers”
`Distinguished the Prior Art, that Limitation was Deleted
`
`All of the original claims filed with the application that issued as the ’746
`
`Patent (which later reissued as the ’079 Patent) required two mechanical chillers
`
`arranged in series. (Ex. 1010, pp. 170-172). These claims were rejected over
`
`various references, including Ondryas (cited herein), which disclosed a mechanical
`
`chiller in series with an absorption chiller. The Applicant distinguished Ondryas
`
`by arguing that although it teaches chillers in series, it does not teach two
`
`mechanical chillers in series. (Ex. 1010, p. 82, “Ondryas…teaches just the
`
`opposite suggesting that when multiple mechanical chillers are used they should be
`
`in parallel.”) (emphasis added). After the rejection of Ondryas was withdrawn,
`
`however, the Applicant deleted the term “mechanical” from the claims. (Id. at p.
`
`33, alleging that “Claim 56 is a substantial rewrite of the [sic] Claim 43.”) The
`
`Applicant did not advise the examiner of this deletion and the examiner did not re-
`
`assert Ondryas.
`
`2.
`
`Applicant Argued that the “Dew Point” Limitation
`Distinguished the Prior Art, then Deleted that Limitation
`During Prosecution of the Reissue Application
`
`During prosecution of the ’746 Patent, a new independent claim (claim 52)
`
`was added with the limitation of maintaining “a leaving air temperature slightly
`
`above the dew point temperature of the ambient air to maintain high efficiency on
`
`the power plant.” (Ex. 1010, p. 65). The Applicant argued that the cited prior art
`
`
`
`5
`
`

`

`and “all gas turbine inlet cooling systems” chill the air well below the dew point.
`
`(Id. at pp. 32-33). The examiner accepted this argument and allowed this claim.
`
`During prosecution of the reissue application, Applicant deleted the
`
`limitation regarding the “dew point” from independent claim 1 and added 52 new
`
`claims. (Ex. 1011, pp. 148-157). The vast majority of the 52 newly-added claims
`
`did not include either the dew point limitation or the series chiller limitations.
`
`In addition, examination of the 52 newly-added claims appears to have been
`
`very cursory. Only two claims (independent claims 1 and 14) of the 59 pending
`
`claims were rejected over the prior art (Id. at p. 86-93) and Applicant overcame
`
`these rejections by adding a water storage tank, a well-known common feature in
`
`chilled water systems (Id. at pp. 30-46). No further rejections were made and all
`
`59 claims were allowed.
`
`D.
`
`PRIOR ART OVERVIEW
`
`The prior art references relied upon comprise Exhibits 1005-1009. These
`
`references disclose the chilled water systems described in the ’079 Patent and
`
`illustrate the use of these conventional systems in the manners recited in the
`
`challenged claims.
`
`Clark, Andrepont, and Hartman were not previously considered by the
`
`Patent Office. Although ASHRAE Cool Storage Guide and Ondryas were
`
`submitted to the Patent Office, ASHRAE Cool Storage Guide was submitted to the
`
`
`
`6
`
`

`

`Patent Office with key page omitted and Applicant’s arguments regarding Ondryas
`
`were based on claim features that were later deleted by Applicant without
`
`informing the examiner of the deletion.
`
`1.
`
`Clark - Inlet Air Cooling and Chilled Water
`
`Clark (Ex. 1005) was published in June of 1998 and relates to thermal
`
`energy storage for both district cooling and combustion turbine inlet air cooling.
`
`Clark discloses all of the basic chilled water and inlet air cooling limitations of the
`
`vast majority of the claims. Clark was not considered by the Patent Office during
`
`its examination of the ’079 Patent.
`
`2.
`
`Andrepont – Inlet Air Cooling and Chilled Water
`
`Andrepont (Ex. 1006) was published in 1994 and discloses a chilled water
`
`system for cooling inlet air to gas turbines.
`
`
`
`7
`
`
`
`

`

`Fig. 2 of Andrepont (marked up and reproduced above) illustrates a chilled
`
`water system with a thermal storage water tank that can be charged with cold water
`
`using a chiller package and discharged to cooling coils to provide inlet air cooling.
`
`Andrepont was not considered by the Patent Office during its examination of the
`
`’079 Patent.
`
`3. Hartman – Variable Flow Limitations
`
`Hartman (Ex. 1007) was published in 1996 and describes the advantages of
`
`variable flow chilled water systems. Hartman discloses “[a]pplying variable flow
`
`to chilled-water systems is particularly attractive because chilled-water pumping
`
`has two associated power cost, directly as pumping power and also as a load on the
`
`chiller plant.” (p. 1). Hartman was not considered by the Patent Office during its
`
`examination of the ’079 Patent.
`
`4. Ondryas – Series Chillers
`
`Ondryas (Ex. 1008) was published in 1991 and describes various inlet air
`
`cooling systems that were available at that time. As discussed above, Ondryas
`
`discloses inlet air cooling using two chillers (an absorption chiller and a
`
`mechanical chiller) in series.
`
`
`
`8
`
`

`

`Ondryas was cited to the Patent Office during prosecution of the ’079 Patent
`
`
`
`and certain claims were initially rejected over Ondryas. (Ex. 1010, pp. 96-97).
`
`The claims at that time required series mechanical chillers and the Applicant
`
`overcame the rejection by arguing that Ondryas did not teach series mechanical
`
`chillers. (Id. at p. 82). One year later, however, the Applicant removed the
`
`“mechanical” limitation by canceling that claim and presenting a new claim as a
`
`“substantial rewrite” of the canceled claim but without that limitation. (Id. at p.
`
`33). A comparison of the chilling system requirements of original claim 43 and the
`
`“substantial rewrite” of that claim (claim 56) is presented below:
`
`Chilling System of Original Claim 43
`
`Chilling System of Claim 56
`
`passing at least a portion of the liquid
`
`passing at least a portion of the liquid
`
`chilling water through the first
`
`chilling system through a first chiller
`
`mechanical chiller, the liquid chilling
`
`and then a second chiller, the liquid
`
`
`
`9
`
`

`

`water passing through the first
`
`chilling water solution passing through
`
`mechanical chiller being lowered to a
`
`the first chiller being lowered to a first
`
`first temperature, and the liquid
`
`temperature; and the liquid chilling
`
`chilling water passing through the
`
`solution passing through the second
`
`second mechanical chiller being
`
`chiller being lowered to a second
`
`lowered to a second temperature that is
`
`temperature which is lower than the
`
`lower than the first temperature
`
`first
`
`
`
`Applicant did not mention in its response that the “substantial rewrite” of
`
`claim 43 resulted the deletion of the “mechanical” limitation. Petitioner submits
`
`that had the examiner realized the limitation relied upon to overcome Ondryas was
`
`deleted from the claims, the challenged claims would not have issued. In addition,
`
`Ondryas is presented herein in a new light and in combination with a reference that
`
`was not previously considered in its entirety by the Patent Office.
`
`5.
`
`ASHRAE Cool Storage Guide – Thermal Energy Storage
`and Series Chillers
`
`ASHRAE Cool Storage Guide (Ex. 1009) was published in 1993 by
`
`ASHRAE, a well-known organization involved in heating, refrigerating, and air-
`
`conditioning issues. ASHRAE Cool Storage Guide discloses all of the elements
`
`recited in the claims of the ’079 Patent relating to water chillers, cooling coils, and
`
`
`
`10
`
`

`

`charging and discharging thermal storage water tanks to provide cooled air.
`
`ASHRAE Cool Storage Guide also describes the use of series chillers. (p. 95).
`
`Portions of ASHRAE Cool Storage Guide were submitted to the Patent
`
`Office during prosecution of the ’079 Patent and its three priority applications.
`
`(Ex. 1012 (IDS with ’746 Patent), Ex. 1013 (IDS with ’079 Patent), Ex. 1014 (IDS
`
`with ’065 Patent). However, the portions of ASHRAE Cool Storage Guide cited to
`
`the Patent Office in the ’079 Patent and priority applications excluded page 4-9,
`
`which described series chillers—the feature that the Examiner indicated was
`
`allowable. (Id., citing only “pages 4-1 to 4-7; 4-10 to 4-18; and 4-24 to 4-26” of
`
`ASHRAE Cool Storage Guide).
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review of
`
`claims 1, 9, 14, 18-22, 24, 25, 30-32, 34, 36, 40-42, 48-50, 57, and 58 of the ’079
`
`Patent, and a finding that each claim is unpatentable under 35 U.S.C § 102 and/or
`
`35 U.S.C § 103, as set forth herein and as supported by the Declaration of Dr.
`
`Reindl (“Reindl Decl.”) (Ex. 1015).
`
`A.
`
`Statutory Grounds of Challenge
`
`As evidenced by the prior art in this Petition, chilled water systems were
`
`well known and commonly applied to inlet air cooling applications.
`
`
`
`11
`
`

`

`The statutory grounds under 35 U.S.C. §102 and §103 on which the
`
`challenge to the claims are based and the prior art relied upon for each ground are
`
`as follows:
`
`1.
`
`Claims 1, 9, 14, 18, 19-20, 22, 24, 25, 30, 31, 32, 34, and 40-42 are
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`unpatentable under 35 U.S.C. § 102 in view of Clark.
`
`2.
`
`Claims 21 and 36 are unpatentable under 35 U.S.C. § 103 over
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`Andrepont in view of Hartman.
`
`3.
`
`Claims 48, 49, and 50 are unpatentable under 35 U.S.C. § 102 in view
`
`of Ondryas.
`
`4.
`
`Claims 48, 49, 50, 57, and 58 are unpatentable under 35 U.S.C. § 103
`
`over Ondryas in view of ASHRAE Cool Storage Guide.
`
`As discussed below, the references anticipate or render the claims obvious.
`
`Predictable combinations of known elements that are used according to their
`
`established functions are not patentable. See KSR International Co. v. Teleflex,
`
`Inc. 550 U.S. 398, 417. In KSR, the U.S. Supreme Court held that:
`
`[w]hen there is a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions, a
`
`person of ordinary skill has good reason to pursue the known options
`
`within his or her technical grasp. If this leads to the anticipated
`
`success, it is likely the product not of innovation but of ordinary skill
`
`and common sense. In that instance the fact that a combination was
`
`obvious to try might show that it was obvious under §103.
`
`
`
`12
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`

`

`
`Id. at 421.
`
`B. Claim Construction
`
`In this proceeding, claims are given the broadest reasonable interpretation in
`
`light of the specification. 37 C.F.R. § 42.100(b); see also In re Yamamoto, 740
`
`F.2d 1569, 1571 (Fed. Cir. 1984).2 Consistent with this requirement, and solely for
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`the purpose of this proceeding, Petitioner proposes the following claim
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`constructions.
`
`
`
`Claim Term
`
`Proposed Construction for the
`
`Broadest Reasonable Interpretation
`
`operating parameter associated with
`
`any parameter relating to gas turbine
`
`the gas turbine plant
`
`operation
`
`(claim 9, 50)
`
`wet bulb temperature sensor
`
`any device that obtains the wet bulb
`
`(claims 18, 41)
`
`temperature or obtains ambient dry bulb
`
`temperatures and humidity conditions.
`
`
`2 Petitioner notes that the claim construction standard in this proceeding is different
`
`from that applied in a district court proceeding. Accordingly, the constructions
`
`proposed herein do not preclude Petitioner from advancing an alternative
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`construction, if appropriate, in any district court proceeding.
`
`
`
`13
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`

`

`Claim Term
`
`Proposed Construction for the
`
`Broadest Reasonable Interpretation
`
`load requirements of the gas turbine
`
`a thermal or electrical load related to the
`
`(claims 20, 22, 25, 30, 31, 34, 40, 41)
`
`operation of the gas turbine or inlet air
`
`cooling system
`
` A
`
` discussion of each term and the rationale behind the proposed broadest
`
`reasonable interpretation is set forth below.
`
`1.
`
`“Operating parameter associated with the gas turbine
`plant” (Claims 9, 50)
`
`The term “operating parameter” appears only in the claims of the ’079
`
`Patent. Although the term “parameter” appears in the specification, the uses of that
`
`term do not relate to any parameter of the “gas turbine plant.” Instead those usages
`
`relate only to the chilling system itself, such as tank parameters. In the absence of
`
`any description of this term in the specification, its broadest reasonable
`
`interpretation must mean any parameter relating to gas turbine operation.
`
`2.
`
`“Wet bulb temperature sensor” (Claims 1, 2, and 4-9)
`
`The ’079 Patent describes the “wet bulb temperature” as a temperature
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`measured by any means:
`
`As used herein, the term "wet bulb temperature" refers to the
`
`temperature measured by a thermometer with its bulb wrapped in wet
`
`
`
`14
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`

`

`muslin, although the wet bulb temperature may also be measured by
`
`any means known to those skilled in the art but most commonly is
`
`calculated electronically by simultaneously measuring dry bulb
`
`temperature and relative humidity. Preferably, the wet bulb
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`temperature is electronically calculated by simultaneously measuring
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`the dry bulb temperature and the relative humidity of the air. (Col.
`
`22:9-18).
`
`Accordingly, a wet bulb temperature sensor can be either a device that obtains the
`
`wet bulb temperature or a device that obtains dry bulb temperatures and humidity
`
`conditions.
`
`3.
`
`“Load requirements of the gas turbine” (Claims 20, 22, 25,
`30, 31, 34, 40, 41)
`
`The term “load requirements” appears only in the claims of the ’079 Patent.
`
`Loads associated with gas turbines an inlet air cooling systems include thermal and
`
`electrical loads. Along with ambient conditions (temperature and humidity), the
`
`amount of air passing over the cooling coil caused by the operation of the gas
`
`turbine determines the thermal load. (Reindl Decl., ¶62). Electrical loads relate to
`
`an amount of electricity generated by the gas turbine for use. The decision whether
`
`to provide an inlet air cooling systems to a gas turbine is based on both thermal and
`
`electrical load requirements. (Id.). For example, if the gas turbine is not located in
`
`a warm environment or energy demands do not make it desirable to increase
`
`capacity, inlet air cooling may not be economically useful. (Id.).
`
`
`
`15
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`

`

`The ’079 Patent uses the term “load” to generally refer to thermal loads on
`
`the cooling coil. For example, the ’079 Patent makes the following reference to
`
`the term “load.”
`
`As the ambient temperature decreases, the temperature of the inlet air
`
`entering the cooling coil also decreases; therefore, the circulating
`
`water temperature can increase slightly and still maintain a desired
`
`leaving air temperature. The leaving air temperature remains constant
`
`because the load (Q) on the cooling coil decreases and thus the
`
`required log mean temperature difference (LMTD) between the air
`
`and the circulating water is reduced. (col. 20:45-59) (emphasis
`
`added).
`
`
`
`Although the specification generally refers to thermal loads, the broadest
`
`reasonable interpretation of the term “load requirements” for the purpose