CARRIER CORPORATIONDownload PDFPatent Trials and Appeals BoardJul 21, 20212021000223 (P.T.A.B. Jul. 21, 2021) Copy Citation 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. Appeal 2021-000223 Application 14/771,740 2 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. Appeal 2021-000223 Application 14/771,740 3 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 Appeal 2021-000223 Application 14/771,740 4 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). Appeal 2021-000223 Application 14/771,740 5 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 Appeal 2021-000223 Application 14/771,740 6 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 Appeal 2021-000223 Application 14/771,740 7 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 Appeal 2021-000223 Application 14/771,740 8 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). Appeal 2021-000223 Application 14/771,740 9 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. Appeal 2021-000223 Application 14/771,740 10 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 Appeal 2021-000223 Application 14/771,740 11 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). Appeal 2021-000223 Application 14/771,740 12 AFFIRMED Copy with citationCopy as parenthetical citation