CHEN, Lee-Long et al.

Patent Trials and Appeals Board

Dec 22, 2020

2019002257 (P.T.A.B. Dec. 22, 2020)

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.
13/025,690 02/11/2011 Lee-Long CHEN 0941/2613PUS1 3215
60601 7590 12/22/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
WEILAND, HANS R.
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE-LONG CHEN, CHIEN-HSIUNG HUANG, YA-SEN TU, and
ZSE-HSIN WANG
Appeal 2019-002257
Application 13/025,690
Technology Center 3700
Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, and 6–11. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to the applicant as defined by 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Delta Electronics,
Incorporated. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a heat exchanger in which “[a]t least one air
opening of the heat exchange unit is formed from a sloped surface, enabling
the area of the air opening to exceed the cross-sectional area of heat
exchange of the heat exchange unit, and further enhancing heat exchange
efficiency.” Spec. Abstract, ¶¶ 2, 8. Claims 1, 2, 6, and 9 are independent.
Appeal Br. 16–18 (Claims App.). Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A heat exchange unit comprising:
a first vertical outer surface and a second vertical outer
surface, wherein the first vertical outer surface is parallel to the
second vertical outer surface;
a sloped outer surface, connecting the first vertical outer
surface to the second vertical outer surface;
a horizontal outer surface, connecting the first vertical
outer surface to the second vertical outer surface;
a first air opening and a second air opening, wherein the
first and second air openings form a first passage; and
a third air opening and a fourth air opening, wherein the
third and fourth air openings form a second passage,
wherein, the first and second passages are alternately
arranged and are separated from each other by at least one heat-
dissipation plate, and the first air opening is disposed on the first
vertical outer surface, and the second air opening is disposed on
the first vertical outer surface,
wherein, the third air opening is disposed on the sloped
outer surface, and the fourth air opening is disposed on the
horizontal outer surface,
wherein a first fan is directly attached to the first vertical
outer surface corresponding to the first air openings.

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REFERENCES
Name Reference Date
Perhold US 2006/0144070 A1 July 6, 2006
Steneby US 7,013,950 B2 Mar. 21, 2006
REJECTION
Claims Rejected 35 U.S.C. § Reference(s)/Basis
4 112, ¶ 2 Indefiniteness
1, 2, 6–11 103(a) Perhold, Steneby
OPINION
Indefiniteness
The Examiner rejected claim 4 as indefinite because it depends from a
canceled claim. Final Act. 3. The Examiner found it to be “impossible to
determine what limitations are meant to be included in claim 4” and that
“[a]s written Claim 4 is incomplete [because] it fails to include any
limitations from the referenced canceled claim.” Id. Appellant does not
present any arguments contesting this rejection. See Appeal Br. 7–15. Thus,
Appellant has waived any argument of error, and we summarily sustain the
indefiniteness rejection of claim 4. See In re Berger, 279 F.3d 975, 984–85
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection
under 35 U.S.C. § 112, when the applicant failed to contest the rejection on
appeal).
Obviousness
Appellant makes a single challenge to the Examiner’s obviousness
determination of claims 1, 2, and 6–11 in view of Perthold and Steneby,
which focuses exclusively on a limitation found in the independent claims.
Appellant contends that a rational underpinning is lacking for the reasons
provided by the Examiner to establish why, at the time of invention, a skilled
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artisan would have found it obvious to modify the heat exchanger of
Perthold in the manner recited by independent claims 1, 2, 6, and 9––i.e., to
have “a sloped outer surface, connecting the first vertical outer surface to the
second vertical outer surface.” Appeal Br. 7–14. In particular, Appellant
contends that the Examiner’s obviousness determination is deficient because
the Examiner failed to make a factual finding with evidentiary support that a
skilled artisan would have recognized “a desirability . . . to obtain a good
shape so that [a] duct may be connected [at] different angles” to the heat
exchanger device of Perthold. Id. at 10. For the following reason, we find
Appellant has identified a deficiency with the Examiner’s obviousness
rejection, which is dispositive.
Independent claims 1, 2, 6, and 9 recite, inter alia, a heat exchange
unit or device that has “a sloped outer surface, connecting the first vertical
outer surface to the second vertical outer surface” (hereinafter “the slope
limitation”). Appeal Br. 16–18 (Claim App.). Except for the slope
limitation, the Examiner finds Perthold discloses the recited limitations of
claims 1, 2, 6, and 9. Final Act. 4–12. Although finding the outer surface
(42) in Perthold shows an outer surface that connects the first and second
vertical outer surfaces, the Examiner acknowledges that this outer surface
(42) is not sloped. Id. at 4–9, 11.
Nevertheless, the Examiner finds “Steneby teaches . . . a heat
exchanger core (22) where the inlet and outlet openings (at angle cut edges
71 and 7[0]) may be angled relative to one another or provided at a slope.”
Id at 5, 7, 9, 11 (citing Steneby, 8:41–49, Figs. 11–13). The Examiner finds
that Steneby discloses that a sloped outer surface “would allow for obtaining
a good shape so that a duct (at the inlet or outlet of the heat exchanger) may
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be connected at different angles.” Ans. 11–12. The Examiner determines
that Steneby thus shows “[i]t would have been obvious to one having
ordinary skill in the art at the time of invention to have modified the outer
surface (42) [of Perthold] to be angled or sloped relative to the vertical wall
containing the inlet for the heat exchanger” because it “would allow for a
shape to be chosen that would allow for airflow connections to be at
different angles as taught by Steneby.” Final Act. 5, 7, 9, 12.
Alternatively, the Examiner concludes that “[i]t would have been
obvious to one having ordinary skill in the art at the time the invention was
made to have provided a sloped outer surface, since it has been held that
changes in shape, absent persuasive evidence that the particular
configuration is significant, involves only routine skill in the art.” Id. at 5–6,
7, 9, 12 (citing MPEP § 2144.04 IV(B)).
When evaluating claims for obviousness, “the prior art as a whole
must be considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986);
see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(explaining that a reference “must be read, not in isolation, but for what it
fairly teaches . . . as a whole”). In other words, when considering the
evidence from Perthold and Steneby that was cited by the Examiner, we
must consider it in view of what the references teach as a whole. This is so
particularly when considering the reasoning provided by the Examiner to
show that a skilled artisan would have known to modify the device of
Perthold in the manner claimed.
When Perthold and Steneby are considered for what they fairly teach
as a whole, the Examiner’s reasoning falls because there is nothing in the
record to suggest that a skilled artisan would have recognized that the outer
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surface (42) in Perthold may serve as an “airflow connection.” The
Examiner makes clear that Steneby is not being relied upon for anything
structural, but only to show why a skilled artisan at the time of the invention
would have been motivated to modify Perthold in the manner claimed. Ans.
11. Specifically, the Examiner states that because “Steneby states that the
angled surface can accommodate the inlet and outlet ducts,” it “teaches why
it is desirable to have angled or sloped ends in order to accommodate
ducts/fluid connections to and from a heat exchanger.” Id. In context,
however, Steneby provides this teaching in the context of describing a
counter current-type heat exchanger that transfers heat from the ingoing and
outgoing airflows, which is part of a ventilation facility that consists of
large, centrally positioned and centrally controlled, assemblies with large
energy demands, and with an extensive system of ducts for ingoing and
outgoing air. Steneby, 1:3–14.
Perthold’s disclosure, on the other hand, relates to “a flat refrigerating
unit for use as a heat exchanger for cooling air from (for example) a device
cabinet, a server cabinet or a circuit cabinet, in which heat-generating
equipment is installed, the heat of which is to be removed from the
essentially closed housing array, in order to prevent the internal temperature
of these cabinet arrays from exceeding a predetermined maximum value.”
Perthold, ¶ 1. Given the limited available space of the cabinets within which
the flat refrigerating units of Perthold are designed, it is unclear whether a
skilled artisan would have recognized a need for ducts in such an
environment or, more specifically, a need for the outer surface (42) of the
refrigeration unit to connect to a duct. Notably, the Examiner has offered no
evidence or technical reasoning that shows ducts were known to be used
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with the kind of heat exchangers Perthold discloses, nor have we found any
suggestion in Perthold to support such a contention. As a result, the
motivation that the Examiner relies upon to determine the obviousness of
independent claims 1, 2, 6, and 9 has no rational underpinning.
Further, we determine that the Examiner has not made the requisite
findings to establish that a sloped orientation of the outer surface (42) of the
heat exchanger in Perthold would have been an obvious design choice. A
so-called “design choice” rationale, such as the Examiner relies upon, has
been deemed appropriate where one prior art element or property is
proposed to be substituted for another that achieves the same purpose. See
ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016)
(“The prior art consistently locates the two sensors at issue in the shredder’s
feed, and no party disputes that an ordinary artisan would have found this
the obvious location for the combination of sensors. The ordinary artisan
would then be left with two design choices.”); Ex parte Maeda, Appeal
2010-009814, 2012 WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative).
Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal
had simply made an obvious design choice. However, the different
structures of Gal and Matsumura achieve different purposes.”). Given the
differences between Perthold and Steneby, it is not clear how the choice of
angling the inlets and outlets in the design of Steneby’s device shows the
suitability of changing the orientation of the outer surface (42) of the heat
exchanger in Perthold.
Because we are not persuaded that one of ordinary skill in the art
would have had reason to modify Perthold in view of Steneby in the manner
claimed, as the Examiner proposes, we do not sustain the Examiner’s
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rejection of independent claims 1, 2, 6, and 9, and their dependent claims 7,
8, 10, and 11.
CONCLUSION
The Examiner’s indefiniteness rejection of claim 4 is affirmed and the
obviousness rejection of claims 1, 2, and 6–11 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4 112 Indefiniteness 4
1, 2, 6–11 103 Perthold, Steneby 1, 2, 6–11

TIME PERIOD FOR 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 IN PART