CARRIER CORPORATION

Patent Trials and Appeals Board

Jul 21, 2021

2021000223 (P.T.A.B. Jul. 21, 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.
14/771,740 08/31/2015 Mark R. Jaworowski 65099US02 (U300187US2) 3696
87059 7590 07/21/2021
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK R. JAWOROWSKI, MARY TERESA LOMBARDO,
MICHAEL F. TARAS, MEL WOLDESEMAYAT,
STEPHANIE BEALING, and MATTHEW PATTERSON
____________

Appeal 2021-000223
Application 14/771,740
Technology Center 3700
____________

Before DANIEL S. SONG, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–7, 11, 12, and 27–29. 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 Carrier Corporation as the Applicant
and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to heat exchangers. Spec. 1. Claim 1,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A heat transfer system comprising
a heat transfer fluid circulation loop and
a heat exchanger comprising an aluminum alloy disposed in
the heat transfer fluid circulation loop,
wherein said heat exchanger has a top surface of a mixed-
metal oxide integrated with the aluminum alloy on at least a
portion of the heat exchanger,
said mixed metal oxide top surface derived from a
composition comprising a trivalent chromium salt and an alkali
metal hexafluorozirconate in an aqueous solution.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Hyogo US 6,113,667 Sept. 5, 2000
Matzdorf US 6,521,029 B1 Feb. 18, 2003
Osako EP 0 937 757 A1 Aug. 25, 1999
Minami WO 2005/078372 A1 Aug. 25, 2005
Taras WO 2012/018536 A2 Feb. 9, 2012
The following rejections are before us for review:
1. Claims 1 and 27–29 are rejected under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Osako.
2. Claims 2, 3, 7, and 11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Osako and Minami.
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3. Claims 2 and 4–6 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Osako and Hyogo.
4. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Osako and Taras.
5. Claims 1–3, 7, 11, and 27–29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Minami and Matzdorf.
6. Claims 1, 2, 4–6, and 27–29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hyogo and Matzdorf.
7. Claims 1, 12, and 27–29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Taras and Matzdorf.
OPINION
Anticipation of Claims 1 and 27–29
by Osako
Claim 1
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). The Examiner finds that Osako discloses all of the limitations of
claim 1. Final Act. 2. In particular, the Examiner finds that Osako discloses
a top surface of a mixed-metal oxide integrated with an aluminum alloy as
claimed. Id.
Appellant asserts that a skilled artisan would interpret the term
“mixed-metal oxide integrated with the aluminum alloy” in accordance with
an argument that we reproduce, in pertinent part, below:
Applicant submits that the skilled person that the skilled person
would interpret the term “mixed-metal oxide integrated with the
aluminum alloy” derived from an aqueous solution comprising
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trivalent chromium salt and alkali metal hexafluorozirconate to
mean, in view of the specification, a mixed metal oxide surface
of the aluminum alloy in which the chromium and zirconium
atoms are integrated into a metal oxide atomic structure that is
integrated with the atomic structure of the underlying aluminum
metal. This is achieved by a chemical conversion process in
which a metal oxide structure is chemically induced at the
surface of the underlying aluminum, and metals from the
trivalent chromium and zirconium salts are converted from their
salt form to be integrated into the metal oxide atomic lattice
structure. The mixed metal oxide is thus integrated into the
crystal atomic structure of the aluminum alloy, and such
permanent integration is distinguished from the adhesion
mechanisms by which an organic resin coating adheres to a
metal surface.
Appeal Br. 5 (emphasis added). Appellant argues that Osako coats an
aluminum heat exchanger with a hydrophilic polymer coating composition
that includes trivalent chromium and alkali metal hexafluorozirconate salts.
Id. at 6. Appellant further argues that Osako fails to disclose a mixed metal
oxide top surface as claimed. Id. In support of its position, Appellant
submits a declaration from Matthew Patterson that reports test results
accompanied by a conclusion that no mixed metal oxide could be detected at
the top surface of the test samples. Id., Patterson Decl.
In response, the Examiner observes that claim 1 uses a “comprising”
transition such that the claim does not preclude inclusion of Osako’s
polymer in its top surface. Ans. 10. The Examiner does not adopt
Appellant’s narrow construction of “mixed-metal oxide integrated with the
aluminum alloy” and states that the broadest reasonable construction of such
term is sufficiently broad to encompass surface coatings applied as in Osako.
Id. (citing In re Hotte, 475 F.2d 644, 647 (CCPA 1973).
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Osako is directed to a composition for coating aluminum and
aluminum alloy components. Osako ¶ 1. Among other things, it is used to
coat heat exchanger components. Id. Osako’s composition includes a
water-soluble trivalent chromium compound and hexafluorozirconic acid
and its salts. Id. ¶ 48. The composition is applied to the surface of an
aluminum alloy by immersion, roll coating, flow coating, and the like. Id.
¶ 65. After the water based composition is applied, the coating is subjected
to a drying process. Id. ¶ 66. After drying, the resulting coating thickness
ranges from 0.05 to 20 µm. Id. ¶ 67. Such coating is reported to be
effective in resisting corrosion. Id. ¶¶ 68–70.
Whether Osako anticipates claim 1 is largely a matter of claim
construction. During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). The PTO is required to consult the specification during
examination in order to determine the permissible scope of the claim. In re
Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Construing claims broadly
during prosecution is not unfair to the applicant, because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.
Am. Acad., 367 F.3d at 1364.
Turning to Appellant’s Specification, Appellant discloses a “top
surface” coat that is derived from a composition comprising trivalent
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chromium salt and an alkali metal hexafluorozirconate. Spec. ¶ 21.
Appellant acknowledges that such a composition is known in the prior art.
Id. The phrase “integrated with the aluminum alloy” appears one time in the
Detailed Description of the Invention section of the Specification. Id. ¶ 28.
Therein, the treatment composition is taught as being applied by “known”
coating techniques, such as dip coating, spray coating, brush coating, roll
coating, etc. Id. The coating composition contacts the aluminum alloy
component for about 10 minutes, after which it is dried by “any method”
known in the art. Id.
Although Appellant argues for a narrow construction of the term
“mixed-metal oxide integrated with the aluminum alloy” in the Appeal Brief
(page 5), Appellant does not direct us to any language in the Specification
that so limits the claim term. Under the circumstances, a broad, but
reasonable, construction is called for here. Applying such a broad, but
reasonable construction, the Examiner’s findings of fact are supported by a
preponderance of the evidence.
We have considered the Declaration of Mr. Patterson submitted by
Appellant, but determine that it does not change the result here. Mr.
Patterson is a named co-inventor. Patterson Decl. ¶ 1. “[A]n affidavit by an
applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.” In re McKenna, 203
F.2d 717, 720 (CCPA 1953). Mr. Patterson concludes that Osako does not
provide a “mixed-metal oxide” that is “integrated” with the aluminum alloy
substrate. Patterson Decl. ¶ 9. Mr. Patterson does not, however, provide an
operational definition of what it means to be so “integrated.” In the absence
of providing such a definition, we reasonably presume that Mr. Patterson
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uses the proposed definition set forth by Appellant, which we have
previously determined does not comport with the broadest reasonable
construction in light of the Specification. Appeal Br. 5. Given the similarity
in constituent elements of Osako’s coating composition compared to
Appellant’s coating, together with the similarity in coating application and
drying techniques used to create the finished coating, we are not persuaded
that there is a patentable distinction between the respective finished coatings
using the correct claim construction.
In view of the foregoing, we sustain the Examiner’s Section 102
anticipation rejection of claim 1.
Claims 27–29
Claims 27, 28, and 29 depend from claim 1. Claims App. They are
argued under a single heading with claim 1 and are not argued separately
under one or more separate subheadings. Appeal Br. 5–8. No explanation is
given for failing to comply with our rules regarding subheadings. See 37
C.F.R. § 41.37(c)(1)(iv) (“any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number”).
Even considering Appellant’s arguments, the Examiner finds,
correctly, that the limitations of claims 27, 28, and 29 are directed to the
concentrations of constituents in the aqueous composition that is applied to
the aluminum alloy surface. The Examiner treats such limitations as
product-by-process limitations and determines that the final structure of
Osaka satisfies the final structure required by the claims and, therefore, the
process limitations are not entitled to patentable weight. Final Act. 2; See In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (explaining that the
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patentability of a product does not depend on its method of production such
that 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 process). Thus, although a prior art
reference must disclose every claim limitation to anticipate, “it has long
been established that one cannot avoid anticipation by an earlier product
disclosure by claiming the product as produced by a particular process.”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed.
Cir. 2006). Appellant asserts, “it is believed that Osaka’s coating resin
solids (which would be expected to thicken the coating composition) are
expected to be present in amounts greater than the maximum upper limit for
thickener in claim 27.” Appeal Br. 8 (emphasis added). However,
Appellant does not provide any persuasive evidence supporting this
assertion, and thus, does not apprise us of Examiner error.
We sustain the Examiner’s Section 102 anticipation rejection of
claims 27–29.
Unpatentability of Claims 2–6 and 12
over Combinations Based on Osako
These claims depend, directly or indirectly, from claim 1. Claims
App. In traversing these grounds of rejection, Appellant relies solely on the
mixed metal oxide top surface coat argument that we fully considered and
found unpersuasive with respect to claim 1. Appeal Br. 8–9. We are,
therefore, not apprised of error. See 37 C.F.R. § 41.37(c)(iv) (requiring
Appellant to adduce arguments as to why the Examiner erred as to each
ground of rejection contested by Appellant).
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We sustain the Examiner’s Section 103 rejections of claims 2–6
and 12 over combinations based on Osako.
Unpatentability Claims 1–3, 7, 11, and 27–29
over Minami and Matzdorf
Appellant argues claims 1–3, 7, 11, and 27–29 as a group. Appeal
Br. 9. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Minami discloses the invention substantially
as claimed except for the top surface coating being comprised of a mixed-
metal oxide derived from a composition comprising a trivalent chromium
salt and an alkali metal hexafluorozirconate in an aqueous solution, for
which the Examiner relies on Matzdorf. Final Act. 5. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Minami by the teachings of
Matzdorf to achieve the claimed invention. Appeal Br. 5–6. According to
the Examiner, a person of ordinary skill in the art would have done this to
achieve a desired corrosion resistance. Id. at 6.
Appellant’s traverse consists of a single paragraph appearing on
page 9 of the Appeal Brief. Appeal Br. 9. In cursory and conclusory
fashion, Appellant challenges the Examiner’s findings regarding Matzdorf.
Id. Appellant argues that Matzdorf’s teaching is directed to a primer or
undercoat, not a top surface. Id.
In response, the Examiner states that Matzdorf teaches a mixed metal
oxide coating on an aluminum alloy and that the language of claim 1 does
not preclude the application of additional coatings over the mixed metal
oxide layer. Ans. 11.
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Matzdorf is directed to a coating process for providing corrosion
resistance to aluminum substrates. Matzdorf, Abstract. Matzdorf’s
composition comprises, among other things, a trivalent chromium compound
and alkali metal hexafluorozirconates. Id.
Appellant’s objection to Matzdorf is based on an overly narrow and
unrealistic interpretation of “top surface” in claim 1. Appellant and
Matzdorf both apply an anti-corrosion coating to the surface of an aluminum
alloy substrate. The coating is applied to the top surface of the heat
exchanger in a manner that it becomes “integrated” with the aluminum alloy.
Claims App. Thus, after application, the anti-corrosion coating forms, at
least for some period of time, a “top surface” of the heat exchanger.
Furthermore, a person of ordinary skill in the art would understand that
additional coatings, such as architectural coatings for aesthetic purposes,
could be applied over the mixed metal oxide coating without departing from
the spirit and scope of the claimed invention.
We sustain the Examiner’s Section 103 unpatentability rejection of
claims 1–3, 7, 11, and 27–29 over Minami and Matzdorf.
Unpatentability of Claims 1, 2, 4–6, and 27–29
over Hyogo and Matzdorf
In traversing this ground of rejection, Appellant relies solely on the
mixed metal oxide top surface coat argument regarding Matzdorf that we
fully considered and found unpersuasive with respect to the ground of
rejection over Minami and Matzdorf discussed above. Appeal Br. 9.
Essentially for the same reasons discussed above with respect to the
Minami and Matzdorf ground of rejection, we sustain the Examiner’s
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Section 103 rejections of claims 1, 2, 4–6, and 27–29 over Hyogo and
Matzdorf.
Unpatentability of Claims 1, 12, and 27–29
over Taras and Matzdorf
In traversing this ground of rejection, Appellant relies solely on the
mixed metal oxide top surface coat argument regarding Matzdorf that we
fully considered and found unpersuasive with respect to the ground of
rejection over Minami and Matzdorf discussed above. Appeal Br. 10.
Essentially for the same reasons discussed above with respect to the
Minami and Matzdorf ground of rejection, we sustain the Examiner’s
Section 103 rejections of claims 1, 12, and 27–29 over Taras and Matzdorf.

CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 27-29 102 Osako 1, 27-29
2, 3, 7, 11 103 Osako, Minami 2, 3, 7, 11
2, 4-6 103 Osako, Hyogo 2, 4-6
12 103 Osako, Taras 12
1-3, 7, 11, 27-29 103 Osako, Matzdorf 1-3, 7, 11, 27-
29

1, 2, 4-6, 27-29 103 Hyogo, Matzdorf 1, 2, 4-6, 27-29
1, 12, 27-29 103 Taras, Matzdorf 1, 12, 27-29
Overall
Outcome
1-7, 11, 12, 27-
29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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12
AFFIRMED