Caroline Schmid et al.

Patent Trials and Appeals Board

Oct 22, 2019

14039052 - (D) (P.T.A.B. Oct. 22, 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.
14/039,052 09/27/2013 Caroline SCHMID 888200-0150 6929
12919 7590 10/22/2019
Paul D. Strain
Strain & Strain PLLC
Strain & Strain, PLLC
1455 Pennsylvania Ave NW, Suite 400
Washington, DC 20004
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/22/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAROLINE SCHMID, MICHAEL MOSER,
NIKOLAUS DAUBITZER, HOLGER SCHROTH,
HEIKO NEFF, DOMINIQUE RAIBLE, ANTON KIERIG, and
THOMAS SCHIEHLEN
Appeal 2018-002595
Application 14/039,052
Technology Center 3700
BEFORE BRETT C. MARTIN, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Behr Gmbh & Co., Kg,
appeals from the Examiner’s decision to reject claims 1, 2, and 5–13. Non-
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 BEHR
GMBH & CO. KG Appeal Br. 1.
Appeal 2018-002595
Application 14/039,052
2
CLAIMED SUBJECT MATTER
The claims are directed to a heat exchanger. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A heat exchanger comprising:
a first collecting box,
a second collecting box,
an at least one tube arranged between the first collecting
box and the second collecting box,
a fluid inlet and a fluid outlet arranged on the first
collecting box and the second collecting box,
wherein the at least one tube comprises at least two ends,
wherein the first collecting box and the second collecting box
each comprises an opening surrounded by an opening edge,
wherein each opening edge comprises an edge contour
corresponding to an outer contour of the at least one tube,
wherein the at least two ends are each connected to the opening
of the first collecting box and the second collecting box such that
the at least one tube is in fluid communication with the first
collecting box and the second collecting box, wherein each
opening is designed such that an opening cross section narrows
toward an interior portion of the first collecting box or the second
collecting box, wherein, in an unassembled state, an inner
contour of the opening bounds an opening hole having a width
that is less than an outer width of the at least one tube, wherein,
in an assembled state, the at least tube presses against the inner
contour such that the opening hole width in the assembled state
is larger than the opening hole width in the unassembled state,
the inner contour deforms, the width of the opening hole matches
the outer width of the at least one tube, and the inner contour
applies a force to the at least one tube in a direction perpendicular
to a surface of the tube, wherein said force fixes the at least one
tube to the first collecting box, wherein the opening edge and the
at least one tube form a groove that encircles the flat tube,
wherein the groove contains an adhesive material.
Appeal Br. 22 (Claims App.).
Appeal 2018-002595
Application 14/039,052
3
REFERENCES
The prior art relied upon by the Examiner is:
Humpolik US 4,531,577 July 30, 1985
Simcox US 4,709,689 Dec. 1, 1987
Lesage US 5,205,354 Apr. 27, 1993
Van Dine US 6,230, 791 B1 May 15, 2001
Crook US 2002/0162648 A1 Nov. 7, 2002
Amano US 2007 /0240867 A1 Oct. 18, 2007

REJECTIONS
I. Claims 1, 2, 5, 7, 8, and 10 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Van Dine, Crook, and Humpolik. Non-Final
Act. 2.
II. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Van Dine, Crook, Humpolik, and Lesage. Non-Final Act. 8.
III. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Van Dine, Crook, Humpolik, and Amano. Non-Final Act. 9.
IV. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Van Dine, Crook, Humpolik, and Simcox. Non-Final Act.
10.
V. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Van Dine, Crook, Lesage, Humpolik, Amano, and Simcox. Non-Final
Act. 10.

OPINION
Rejection V (Claim 13)
Appellant first argues for the patentability of claim 13 (see Br. 14–21)
and then relies on the same arguments in support of the remaining claims
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Application 14/039,052
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(see id. at 21). Accordingly, our discussion begins with the rejection of
claim 13 (Rejection V).
The Examiner finds that Van Dine discloses many of the elements
recited in claim 13, but finds that “[Van Dine] is silent with respect to a
multi-part collecting box including a box opening.” Non-Final Act. 10–15.
The Examiner relies on the teachings of Lesage (specifically, multipart
structure 1, 28, 38, and 40 including box opening 14, 38, and 40) to remedy
this deficiency. Id. at 11–12 (citing Lesage, 5:9–15, Figs. 3, 5). The
Examiner reasons that it would have been obvious “to configure the
collecting box as disclosed by [Van Dine] in a multi-part form as taught by
Lesage to facilitate assembly of a heat exchanger by ensuring proper seating
of a plurality of tubes ends with at least one header tanks.” Id. at 12.
On pages 13–17 of the Brief, Appellant provides a table matching the
references cited by the Examiner in the rejection of claim 13 with various
claim elements, sets forth legal principles related to the law of obviousness,
and baldly asserts, without explanation, that the rejection of claim 13 relies
on impermissible hindsight. Such a conclusory assertion with no analysis to
the underlying challenge is insufficient to apprise us of Examiner error.
Appellant then argues, “the Examiner mixes [] references that disclose
metallic-only or plastics only heat exchangers without discussing the effect
that a materials change would have on the features disclosed in that
reference as a whole, or the intended purpose or application of the subject
matter of each reference.” Br. 17. In this regard, Appellant asserts that the
Examiner fails to explain how “the methods of creating a metal blank in
Lesage allowing for the feature selected by the Examiner could be adapted
for plastics, especially in view of Lesage relying on metal stamping and
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Application 14/039,052
5
forming, as well as other processes that do not translate to plastics.” Id.
(emphasis added).
As the Examiner correctly points out, Lesage is relied upon to teach a
multi-part structure for a collecting box, including a box opening closed by a
cover (whereas Van Dine already discloses a collecting box). Ans. 7–8.
Appellant’s assertion that the Examiner has not considered that Lesage
discloses a metal heat exchanger, and claim 13 requires plastic or fiber-
reinforced plastic collecting boxes, does not include any explanation as to
why the box opening and multi-part structure disclosed by Lesage would not
“translate to plastics.” Nor does Appellant explain persuasively why any of
the processes used to create a box opening and multi-part structure in the
heat exchanger disclosed by Lesage are necessary to the incorporation of a
box opening and multi-part structure in the heat exchanger of Van Dine as
proposed by the Examiner. In other words, the Examiner relies on the
disclosure of certain structure in Lesage, not any particular process of
making that structure, and Appellant has not pointed out any reason the
Examiner’s proposed modification to the heat exchanger of Van Dine would
require using the same processes Lesage uses.
The Examiner acknowledges that Van Dine does not teach the use of
adhesive, as recited in claim 13, and turns to Crook to teach this element,
reasoning that the use of an adhesive would improve heat exchanger leak
resistance. Non-Final Act. 12–13 (citing Crook ¶ 65, Fig. 1D).
Appellant argues that “in using the Application as a blueprint, the
Examiner failed to consider direct statements teaching away from making
the combination proposed by the Examiner, including [Van Dine’s] teaching
that, when using its latching or press-in embodiment, the adhesive is
Appeal 2018-002595
Application 14/039,052
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eliminated.” Br. 18. In support of this argument, Appellant quotes the
following language from Van Dine:
In the embodiment shown in FIG. 7, the end portions 34
of the cold plate 12 and the inner surfaces of the headers have no
ramp-like engaging portions but instead are held together by a
layer of an adhesive sealing material 46 coated on the end
surfaces 36 of the cold plate and the engaging surfaces of the
header. This arrangement also eliminates the necessity for
fasteners to attach the headers to the cold plate.
Van Dine, 3:45–51; see also Br. 18.
We do not agree that the language quoted by Appellant teaches away
from the use of adhesive. Indeed, the language quoted by Appellant appears
to tout the benefits of using an adhesive inasmuch as the need for fasteners is
eliminated.2
Appellant next asserts that various combinations of the references are
possible, and, therefore, the Examiner must have resorted to the use of
impermissible hindsight in proposing to combine the references in a way that
meets all the requirements of claim 13. Br. 18. Specifically, Appellant
states:
Lastly, the Examiner does not discuss why, when
combining the six references together, the person of ordinary
skill in the art would have selected each feature from the
reference suggested by the Examiner and not one of the other five
references. For example, why would one of ordinary skill in the
art have selected a method of attaching tubes to a collecting box
from a metal heat exchanger when there are two other references
in the combination relating to plastics showing very different
types of attachment? For that matter, within the two plastic

2 We note that Van Dine does not indicate that the use of adhesive in
combination with other fastening means is precluded. Rather, such a
combination is simply not required.
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references or the four metal references, why select one type over
the other?
Id.
Appellant’s argument does not specifically attack the rationales set
forth by the Examiner in addressing each of the cited references. Rather,
Appellant’s argument amounts to an implied assertion that only one
combination of the teachings of the cited references would have been
obvious to a person of ordinary skill in the art at the time the claimed
invention was made, or, that the existence of many possible combinations of
the teachings in the prior art is evidence of the non-obviousness of any
particular combination. Appellant provides no citation to any authority,
either statutory or in case law, for such a principle.
Appellant next repeats a large portion of the language of claim 13
(beginning with the words “wherein, in an unassembled state” and ending
with the words “said force fixes the at least one tube to the first collecting
box” hereinafter the “fixing limitations”) and asserts that neither of Van
Dine and Humpolik discloses the quoted claim limitations. Br. 18–19.
Specifically, Appellant asserts that Van Dine does not disclose applying a
perpendicular force via its disclosed structure as required by claim 13. Id. at
19.
This argument is unpersuasive because, as the Examiner reiterates in
the Answer, the rejection of claim 13 relies on Humpolik to teach this
limitation. Ans. 12 (citing Humpolik, 6:19–32, Fig. 10).
Appellant addresses the Examiner’s reliance on the teachings of
Humpolik by reproducing a copy of Figure 8 of Humpolik and asserting that
Humpolik’s “tube [9’] is not even inserted into the sheet (21), but rather, it is
the other way around, i.e.[,] the sheet is inserted into the tube.” Br. 19–20.
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Appellant’s argument on this point is unpersuasive because the
Examiner relies on the embodiment disclosed in Figure 10, not Figure 8, of
Humpolik. In Figure 10 of Humpolik, tube 9 is inserted into sheet 21. See
Humpolik, Fig. 10.
Appellant also asserts that the Examiner failed to give patentable
weight to the “fixing limitations” because the Examiner determined that
these were product-by-process features. Br. 20.
Although the Examiner stated that lines 15–23 of claim 13 recite
product-by-process features, the Examiner also addressed the structure
recited in this portion of the claim, finding that the proposed combination of
the teachings of Van Dine and Humpolik would include this structure. Non-
Final Act. 13–14. Aside from Appellant’s unpersuasive contention above,
based on a discussion of a Figure 8 of Humpolik instead of Figure 10,
Appellant does not attempt to identify any structure that is missing from the
proposed combination. See Br. 20–21. Accordingly, Appellant’s argument
on this point is unavailing.
We have considered all of Appellant’s arguments in support of the
patentability of claim 13, but find the Examiner has the better position.
Accordingly, we sustain the rejection of claim 13.
Rejections I–IV
Appellant relies on the arguments discussed above regarding Van
Dine and Humpolik in support of the patentability of claim 1 and claims 2
and 5–12 depending therefrom. See Br. 21. For the same reasons discussed
above regarding Rejection V, we sustain Rejections I–IV.
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CONCLUSION
Claims
Rejected
Basis Affirmed Reversed
1, 2, 5, 7, 8,
and 10
§ 103 1, 2, 5, 7,
8, and 10

6 § 103 6
9 § 103 9
11 and 12 § 103 11 and 12
13 § 103 13

FINALITY AND 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