Bruno Michel et al.

Patent Trials and Appeals Board

Sep 27, 2019

13975869 - (D) (P.T.A.B. Sep. 27, 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.
13/975,869 08/26/2013 Bruno Michel CH920100077US2
(30113Z)
8894
48233 7590 09/27/2019
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRUNO MICHEL and PATRICK RUCH
____________________

Appeal 2019-000820
Application 13/975,869
Technology Center 3700
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and LEE L. STEPINA,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Office Action (“Final Act.”) rejecting claims 1–5 and 7–14 in the
present Application. We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We REVERSE.

1 The Appellant is International Business Machines Corporation, which is
identified as the real party in interest. Appeal Brief (“Br.”) 4.
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Application 13/975,869
2
The claimed invention is directed to a method of making integrated
adsorption and heat exchanger devices for solid sorption refrigeration
systems. Abstract. Representative independent claim 1, which is the only
independent claim on appeal, reads as follows:
1. A method for making an integrated adsorption and heat
exchanger device for a solid sorption refrigeration system, the
method comprising:
forming in a first surface portion of a monolithic solid
material an integrated microporous adsorption structure having
average pore sizes of <2 nm, which is pervious to an adsorbate
of said system, the microporous adsorption structure providing
an adsorption function, and
forming in a second opposite surface portion of the same
monolithic solid material an integrated heat exchanger
structure, which is impervious to said adsorbate, for heat
exchange with the microporous adsorption structure in
operation of said system.
Br. 11 (Claims App.) (emphasis added).

REJECTIONS
The Examiner rejects various claims on appeal under 35 U.S.C.
§ 103(a) (pre-AIA) as follows:
1. Claims 1, 2, 4, 7, 11, 13, and 14 as unpatentable over
Tonkovich (US 2009/0326279 A1, pub. Dec. 31, 2009) in view of Drost (US
6,126,723, issued Oct. 3, 2000). Final Act. 2.
2. Claim 3 as unpatentable over Tonkovich in view of Drost and
Chan (US 2005/0145837 A1, pub. July 7, 2005). Final Act. 7.
3. Claims 5, 8–10, and 12 as unpatentable over Tonkovich in view
of Drost and Burkay (US 2003/0015316 A1, pub. Jan. 23, 2003). Final Act.
9.
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ANALYSIS
The Examiner rejects independent claim 1 as unpatentable over
Tonkovich in view of Drost, finding that Tonkovich discloses a method for
making a heat sink system as substantially claimed, including “forming on a
first surface portion of a monolithic solid material (310) an integrated
microporous adsorption structure (400) having average pore sizes of less
than 2 nm,” and “forming in a second opposite surface portion of the same
monolithic solid material (310) an integrated heat exchanger structure
(330).” Final Act. 2–3 (emphasis added, citations omitted). The Examiner
concedes that Tonkovich “fails to disclose forming the microporous
adsorption structure in a first surface of the monolithic solid material.”
Final Act. 3 (emphasis added). The Examiner finds that Drost discloses a
method of making a microchannel thermal machine including “forming in a
first surface of a monolithic solid material an integrated microporous
adsorption structure (100) by processing a portion of the monolithic solid
material to render that portion microporous.” Final Act. 3 (emphasis added)
(citing Drost, col. 12, ll. 51–55, Fig. 1b). Based on these findings, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to have “improve[d] the method of making a heat sink system of
Tonkovich by micromachining a solid non porous material as taught by
Drost in order to provide precise control of the pore size throughout the solid
material,” and that the claim merely uses a known technique to improve
similar devices in the same way. Final Act. 3 (citing Drost, col. 12, ll. 55–
58).
The Appellant correctly points out that “Tonkovich teaches a porous
support structure 400 and a separate heat transfer wall 330 of the
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microchannel 310 which is a layered or laminate structure and not
integrated.” Br. 5 (citing Tonkovich ¶¶ 203, 271, Figs. 5, 5a–5d). The
Appellant also points out that in rejecting the claim, the Examiner found that
Tonkovich discloses “forming on a first surface portion of a monolithic solid
material an integrated microporous adsorption structure” and conceded that
Tonkovich fails to disclose “forming the microporous adsorption structure in
a first surface of the monolithic solid material.” Br. 6. Indeed, the
Appellant’s characterization of the Examiner’s rejection appears to be
correct. See Final Act. 2–3; see also Ans. 14 (acknowledging that
Tonkovich discloses “attaching, mounting or depositing a previously
fabricated microporous adsorption structure to a solid metal structured wall
which is different than forming an integrated microporous structure in the
solid metal structured wall.”).
The Appellant also correctly points out that “Drost teaches a porous
‘contactor’ 100 which is a separate stand-alone structure . . . having pores
‘extending through the thickness’.” Br. 6 (citing Drost, col. 12, ll. 38–50,
Abstract, Fig. 1A). Based thereon, the Appellant argues that Drost is
“duplicative of Tonkovich in that it teaches a standalone porous structure
(contactor 100) that is ‘used in combination with heat exchangers’.” Br. 6–7
(citing Drost, col. 9, ll. 46–48, col. 18, ll. 1–7, Fig. 5). The Appellant argues
that even if the references are combined, there is “no teaching or suggestion
of a method for making an integrated adsorption and heat exchanger device
from a single integrated solid material.” Br. 7. Accordingly, the Appellant
argues that the rejection
fails to adequately make a prima facie case of obviousness and
appears to have not made provided any teaching in Tonkovich
or Drost of a method that involves forming in first and opposite
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surfaces of a single monolithic solid material a respective
adsorption and a heat exchange structure.
Br. 9.
We are persuaded that the rejection is inadequate for the reasons
argued by the Appellant, and address the Examiner’s responses below.
The Examiner responds that because claim 1 uses the transitional term
“comprising,” Tonkovich’s wall 330 and at least one porous support 400
satisfies the language of the claim. Ans. 6. However, claim 1 also explicitly
recites forming a microporous adsorption structure in a first surface of the
monolithic solid material, and forming an integrated heat exchanger
structure in a second opposite surface of the same monolithic solid material.
Thus, the Examiner’s explanation based on the transitional term
“comprising” as allowing for additional components to the heat exchange
structure (i.e., wall 300) is inapposite.
The Examiner also responds that
Appellant’s arguments are drawn to structural elements of an
apparatus; however, Appellant’s claims are drawn to a method of
making the apparatus. The apparatus (integrated adsorption and heat
exchanger device) is individually taught by both Tonkovich and Drost
(Tonkovich, porous support (400) on structured wall (330) and Drost
porous contactor (100)); and, the method of making the apparatus is
rendered obvious in view of a proposed combination of Tonkovich
and Drost.
Ans. 10.
However, the fact that a method claim recites structure does not mean
such structure can be ignored. In re Dillon, 919 F.2d 688, 695 (Fed. Cir.
1990) (en banc) (“[M]aterials used in a claimed process as well as the result
obtained therefrom, must be considered along with the specific nature of the
process, and the fact that new or old, obvious or nonobvious, materials are
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used or result from the process are only factors to be considered, rather than
conclusive indicators of the obviousness or nonobviousness of a claimed
process. When any applicant properly presents and argues suitable method
claims, they should be examined in light of all these relevant factors.”). The
rejection applied does not adequately consider and address the limitations
pertaining to the two opposite surfaces of the same monolithic solid
material.
The Examiner further responds in a Summary section of the Answer,
that it would have been obvious
to improve the method of making an integrated adsorption and
heat exchanger device of Tonkovich by directly
micromachining the solid metal structured wall of Tonkovich as
taught by Drost in order to provide precise control of the pore
size throughout the solid material (Drost, Col 12, Lines 55-58)
and eliminate the processing step of attaching, mounting,
depositing or otherwise combining the Tonkovich previously
fabricated microporous support to the solid metal structured
wall and thereby improve the efficiency of the Tonkovich
fabrication process.
Ans. 15 (emphasis omitted).
Notwithstanding the fact that such analysis was not provided in the
Final Office Action, we find this belated analysis to be inadequate. First, the
cited portion of Drost does not suggest direct micromachining of
Tonkovich’s wall so that only a portion thereof is pervious to an adsorbate.
Instead, Drost discloses micromachining of through pores in providing a
porous contactor. Drost, col. 12, ll. 38–50, Abstract, Fig. 1A. As the
Appellant argues (Br. 6–7), both of the applied prior art disclose a separate
porous structure (Tonkovich: porous support structure 400; Drost: porous
contactor 100/200) which are used as a layer in a laminate device.
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Accordingly, the prior art suggests micromachining of a separate component
to provide a porous structure that is separate from the heat exchanging
structure in contrast with the language of claim 1. We agree with the
Appellant that based on the two references applied, these references
“provide a teaching away from the claimed processing steps applied to a
same integrated solid material (a solid monolithic material) . . . by requiring
a laminate structure or stack.” Br. 9 (emphasis omitted); see In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away
when a person of ordinary skill, upon reading the reference . . . would be led
in a direction divergent from the path that was taken by the applicant.”).
The Examiner’s response that Tonkovich discloses that “[t]he porous
support may comprise a single layered microgrooved support strip,” and
thus, suggests the construction claimed (Ans. 13 (quoting Tonkovich ¶ 130))
is unpersuasive because the porous support is nevertheless provided as a
separate structure, separate from the wall.
As to the Examiner’s belated assertion that the suggested construction
of Tonkovich in the manner suggested would eliminate the step of
“attaching, mounting, depositing or otherwise combining” the microporous
support to a wall, and “thereby improve the efficiency of the Tonkovich
fabrication process,” we find such reasoning to be speculative and based on
impermissible hindsight. It is not just the elimination of the attachment step
that must be considered, but the substituted step of providing microporous
surface only partially through the wall of Tonkovich that must be
considered. No evidence or developed reasoning has been provided by the
Examiner to establish that such substitution is attainable, and would
“improve the efficiency of the Tonkovich fabrication process” as asserted.
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In that regard, “factfinder should be aware . . . of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (Deficiencies in the factual
basis cannot be supplied by resorting to speculation, assumptions and
hindsight reconstruction).
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of independent claim 1. The Appellant’s arguments
regarding size of the pores, and the Examiner’s responses thereto (Br. 7;
Ans. 10–11), are moot. We, likewise, reverse Rejections 1–3 as to claims 2–
5 and 7–14 that ultimately depend from claim 1. See In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.”).

CONCLUSION
The Examiner’s rejections of clams 1–5 and 7–14 are REVERSED.

REVERSED