ALFA LAVAL CORPORATE AB

Patent Trials and Appeals Board

Mar 12, 2021

2020004266 (P.T.A.B. Mar. 12, 2021)

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.
14/400,759 11/12/2014 Anders Nyander 0076580-000065 2680
21839 7590 03/12/2021
BUCHANAN, INGERSOLL & ROONEY PC
1737 KING STREET
SUITE 500
ALEXANDRIA, VA 22314-2727
EXAMINER
ATTEY, JOEL M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDERS NYANDER, KLAS BERTILSSON, and
CLEMENS WICTOR

Appeal 2020-004266
Application 14/400,759
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES P. CALVE, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s decision to reject claims 2–18. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 Throughout this opinion, we refer to the Appeal Brief (“Appeal Br.,” filed
Sept. 11, 2019), Reply Brief (“Reply Br.,” filed May 20, 2020), the
Examiner’s Answer (“Ans.,” mailed Mar. 20, 2020), and Non-Final Office
Action (“Non-Final Act.,” mailed May 2, 2019).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “Alfa
Laval Corporate AB.” Appeal Br. 2.
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Application 14/400,759

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 16, the sole independent claim, is representative of the subject
matter on appeal and reproduced below.
16. A plate heat exchanger comprising an end-piece and a
package of heat transfer plates, the package of heat transfer
plates possessing a first surface,
the end piece comprising:
a frame part that is extruded and includes an inner
portion, an outer portion and an intermediate portion arranged
between the inner and outer portions, an outer wall surface of
the inner portion of the frame part facing the first surface of the
package of heat transfer plates, the first surface including a
center portion and a peripheral portion encircling the center
portion, the intermediate portion of the frame part comprising a
number of cavities extending in an extrusion direction of the
frame part, the extrusion direction being parallel to an axis of
the frame part, the outer wall surface of the inner portion
possessing outer dimensions at least as large as outer
dimensions of the center portion of the first surface of the
package of heat transfer plates.

References
The prior art relied upon by the Examiner is:
Name Reference Date
Tyson, Jr. et al. (“Tyson”) US 3,834,544 Sept. 10, 1974
Powers et al. (“Powers”) US 2008/0156455 A1 July 3, 2008
Otahal et al. (“Otahal”) US 2012/0175092 A1 July 12, 2012
Sumitomo JP 62-62187 A Mar. 18, 1987

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Rejections
Claims 2–10 and 13–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sumitomo in view of Otahal.3 Non-Final Act. 3–7.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Otahal and Powers. Id. at 7–8.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Otahal and Tyson. Id. at 8.
Claims 2–10 and 13–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sumitomo in view of Official Notice. Id. at 8–13.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Official Notice and Powers.4 Id. at 13.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Official Notice and Tyson.5 Id. at 13–14.

3 Citations to “Sumitomo” are directed to the drawings in the foreign
publication. Citations to “Sumitomo Translation” are directed to the
machine-generated English translation of Sumitomo.
4 The Examiner does not reference “official notice” in the statement for this
ground of rejection. As best understood, this rejection is in furtherance of
the Examiner’s rejection under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of official notice. Non-Final Act. 18. Therefore, we have
included the reference to official notice to remedy the oversight. See Appeal
Br. 36, n.1.
5 The Examiner does not reference “official notice” in the statement for this
ground of rejection. Non-Final Act. 19. As best understood, this rejection is
in furtherance of the Examiner’s rejection under 35 U.S.C. § 103(a) as
unpatentable over Sumitomo in view of official notice. Therefore, we have
included the reference to official notice to remedy the oversight. See Appeal
Br. 36, n.2.
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Claims 2–10 and 13–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sumitomo.6 Id. at 14–18.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Powers. Id. at 18.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of Tyson. Id. at 19.

ANALYSIS
Rejection of claims 2–10 and 13–18 as unpatentable over Sumitomo in view
of Otahal
The Appellant argues that the Examiner’s first ground of rejection of
independent claim 16 relies on a rationale that is not adequately supported.
See Appeal Br. 12–13. The rationale in dispute is:
It would have been prima facie obvious to one of ordinary skill
in the art . . . to have the frame part of Sumitomo be made by
the extrusion taught by Otahal such that the frame part
extrusion [sic] the extrusion direction being parallel to an axis
of the frame part resulting in the cavities extending in an
extrusion direction of the frame (as this is the direction of the
created cavities) the motivation for doing so is to achieve high
strength while using a low amount of material.

6 In the Non-Final Office Action, mailed May 2, 2019, the Examiner stated
that this ground of rejection is under 35 U.S.C. § 103(a) as unpatentable over
Sumitomo in view of official notice. Non-Final Act. 14. As correctly
pointed out by the Appellant, however, this ground of rejection “does not
mention official notice.” Appeal Br. 37. The inclusion of “official notice”
in the statement of the ground of rejection appears to be an oversight.
Therefore, we have removed the reference to official notice in the statement
of the ground of rejection.
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Non-Final Act. 4 (emphasis added) (citing Otahal ¶ 15). According to the
Examiner, Otahal’s paragraph 15 “provides motivation with the statement
‘[t]hanks to the shaping steps described [. . .] achieve high strength while
using a low amount of material’” because “the extrusion taught by Otahal
has to be considered at least part of the ‘shaping steps’ and thus the
motivation is provided for in this statement by the prior art.” Ans. 19.
Otahal’s paragraphs 15–19 describe, with italics added to identify the
portions quoted by the Examiner:
[0015] Thanks to the shaping steps described, the above
described notch is avoided and the flow of force can be
distributed starting from the screw-fastening points over a much
larger transition area to the plates of the plate heat exchanger.
The modulus of resistance of the entire heat exchanger is
likewise considerably increased. This is clearly shown in finite
element strength calculations. In order to achieve high strength
while using a low amount of material, the end plate can have at
least some cut-out portions, preferably honeycomb structures,
on the side facing away from the adjacent plate in order to
reduce the weight. As this 3-dimensional shape cannot be
formed by a conventional punched part, other production
methods must be used. Suitable production methods for this are
for instance:
[0016] specific aluminium casting methods such as
thixocasting or Vacural die casting, in which solderable
alloys can be processed,
[0017] shaping methods such as forging or extrusion,
[0018] sintering methods, where applicable for suitable
alloys,
[0019] mechanical machining, if economically reasonable
(for prototypes).
Otahal teaches that its shaping steps avoid a notch –– located between a
lower basin-shaped heat transfer plate and a flat mounting –– that creates
problems in conventional structures. Otahal ¶¶ 3, 15. Otahal also teaches
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that the structural features of its end plates, e.g., honeycomb structures, are
the features that achieve high strength while using a low amount of material
and that the some types of shaping can form certain these structural features
where others cannot.
In the Appellant’s view, Otahal’s paragraph 15 “makes clear that it is
not the extrusion that achieves high strength with less material, but rather the
use of a mounting plate in which material is removed.” Appeal Br. 13.
Therefore, the Appellant contends that “[t]he high strength/less material
discussion in Otahal thus has nothing to do with formation by extrusion.”
Id. The Appellant’s contention is persuasive.
The Appellant’s point that the process of extrusion does not give
Otahal’s end plate high strength, rather it is the structural design of the end
plate, which can come from different forming methods, e.g., forging, is well
taken. See Otahal ¶¶ 15, 17. In this regard, we appreciate that extrusion can
create certain structural features more easily than other shaping processes.
Notably, however, the Examiner does not explain why extrusion is the only
shaping process that can form Sumitomo’s frame part. Accordingly, we
determine that the Examiner fails to establish that the proffered modification
of Sumitomo’s frame part has some technical basis in the idea that the
achievement of high strength of the end plate would come from extrusion.
See id. ¶ 15; Appeal Br. 13. Further, we determine that the Examiner fails to
adequately explain –– using evidence or technical reasoning –– how
Otahal’s teachings would benefit Sumitomo’s plate type heat exchanger.
For example, the Examiner does not explain how Otahal’s teaching of a
conventional notch is present in Sumitomo’s plate type heat exchanger such
that the use of Otahal’s shaping methods would benefit Sumitomo’s plate
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type heat exchanger. In view of the foregoing, we determine that the
rationale that the Examiner provides for modifying the frame part of
Sumitomo’ end plate lacks rational underpinning.
Thus, we do not sustain the Examiner’s rejection of independent
claim 16 and claims 2–10, 13–15, 17, and 18, which depend therefrom.
Further, the Examiner fails to rely on Powers or Tyson in any manner that
would remedy the deficiency in the Examiner’s rejection as discussed above.

Rejection of claims 2–10 and 13–18 as unpatentable over Sumitomo in view
of Official Notice
The Appellant argues that the Examiner’s second ground of rejection
of independent claim 16 “improperly relies on official notice to establish a
legal conclusion.” Appeal Br. 28. The Appellant points out that “[o]fficial
notice may be taken of certain facts, but not legal conclusions.” Id. The
Appellant’s argument is persuasive.
The relevant portion of the Examiner’s rejection provides:
Sumitomo does not expressly teach a frame part that is extruded
or that the extrusion direction being parallel to an axis of the
frame part resulting in the cavities extending in an extrusion
direction of the frame. The [E]xaminer takes official notice that
manufacture of heat exchangers and frames for heat exchangers
by extrusion is obvious as it is a well-known technique in the
art. As shown by Toh, Sheppard, and Erb which all show frame
parts made by extrusion (see respective sections: Col. 2, In 56-
65;Para. 0050 & 0065;Para. 0072), the manufacture of end
pieces/frame parts by extrusion is well known thus the claim
limitation of extruding the frame part including the direction of
extrusion (with the openings) are obvious methods of
manufacturing with well-known motivations for use such as
reduction of weight and use of well-known manufacturing
methods for consistency and ease of manufacturing.
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Non-Final Act. 9–10 (emphasis added).
“[A]n examiner may take official notice of facts not in the record or
rely on ‘common knowledge’ in making a rejection.” MPEP § 2144.03
(9th ed., rev. 10, June 2020) (emphasis added); see In re Zurko, 258 F.3d
1379, 1385–86 (Fed. Cir. 2001); In re Ahlert, 424 F.2d 1088, 1091–1092
(CCPA 1970). In this case, the Examiner is not taking official notice of a
fact; rather, the Examiner is taking official notice of a legal conclusion, i.e.,
obviousness. See Appeal Br. 28; see also Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966) (Obviousness is a question of law based on findings of
underlying facts).
Thus, we do not sustain the Examiner’s rejection of independent
claim 16 and claims 2–10, 13–15, 17, and 18, which depend therefrom.
Further, the Examiner fails to rely on Powers or Tyson in any manner that
would remedy the deficiency in the Examiner’s rejection as discussed above.

Rejection of claims 2–10 and 13–18 as unpatentable over Sumitomo
The Appellant correctly points out that the Examiner’s third ground of
rejection of independent claim 16 “is based on the observation that the
language in [c]laim 16 referring to an ‘extruded’ frame part represents a
product-by-process aspect of the invention.” Appeal Br. 37. The Appellant
argues that “[o]ne of the shortcomings in this position is that the Examiner
has not established that Sumitomo’s heat exchanger is ‘substantially
identical’ to the claimed heat exchanger.” Id.; see In re Thorpe, 777 F.2d
695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
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process.”). The Appellant points to an issue that we cannot resolve in favor
of the Examiner’s rejection.
We agree with the Appellant that the Examiner’s rejection is based on
the notion that Sumitomo teaches an end-piece having a frame part that is
substantially identical to the end-piece having a frame part of the claimed
invention. See Non-Final Act. 14–15. In this regard, the Examiner finds
that the claimed outer portion of the end piece’s frame part corresponds to
Sumitomo’s band-shaped thin sheet 10. Id. at 14. Sumitomo teaches that
“band-shaped thin plate (10) is wound once around the outer peripheries of a
pair of frames (4) and (4) holding the aggregate of heat transfer plates (2).
The starting end and the terminal end of the thin plate (10) are welded and
fixed as indicated by reference numeral (12).” Sumitomo Translation 2; see
Sumitomo Fig. 1. In other words, band-shaped thin plate 10 is positioned
around the entire assembly and is not an end piece of the assembly. Here,
we fail to understand how band-shaped thin sheet 10 corresponds to the
outer portion of the claimed frame part of the end piece. Therefore, we fail
to understand how the Examiner adequately supports the finding that
Sumitomo’s frame part is substantially identical to the claimed frame part.
Thus, we do not sustain the Examiner’s rejection of independent
claim 16 and claims 2–10, 13–15, 17, and 18, which depend therefrom.
Further, the Examiner fails to rely on Powers or Tyson in any manner that
would remedy the deficiency in the Examiner’s rejection as discussed above.

Appeal 2020-004266
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–10, 13–18 103(a) Sumitomo, Otahal 2–10,
13–18
11 103(a) Sumitomo, Otahal,
Powers
11
12 103(a) Sumitomo, Otahal,
Tyson
12
2–10, 13–18 103(a) Sumitomo, Official
Notice,
2–10,
13–18
11 103(a) Sumitomo, Official
Notice, Powers
11
12 103(a) Sumitomo, Official
Notice, Tyson
12
2–10, 13–18 103(a) Sumitomo 2–10,
13–18
11 103(a) Sumitomo, Powers 11
12 103(a) Sumitomo, Tyson 12
Overall
Outcome
2–18

REVERSED