Eva Wong et al.

Patent Trials and Appeals Board

Aug 13, 2019

14615753 - (D) (P.T.A.B. Aug. 13, 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.
14/615,753 02/06/2015 Eva Wong 78387US01 (14-462) 2046
52237 7590 08/13/2019
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
08/13/2019 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 EVA WONG and JOHN H. WHITON

____________

Appeal 2019-001026
Application 14/615,753
Technology Center 3700
____________

Before DANIEL S. SONG, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Eva Wong and John H. Whiton (hereinafter collectively “Appellant”)1
seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection
of claims 1, 4, 11, 13, and 16 as unpatentable under 35 U.S.C. § 103 over
Kang (US 2005/0098309 Al, pub. May 12, 2005) and Slaughter
(US 2008/0149313 Al, pub. June 26, 2008). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 United Technologies Corporation is 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, is illustrative of the subject matter on appeal.
1. A curved heat exchanger system, comprising:
a plurality of additively manufactured heat transfer surfaces
in a plurality of sectors within a single curved flow passage of
said heat exchanger,
a first of said plurality of sectors including a first subset of
said plurality of additively manufactured heat transfer surfaces
having a characteristic different than a characteristic of a
second subset of said plurality of additively manufactured heat
transfer surfaces in a second of said plurality of sectors.
OPINION
Appellants argue claims 1, 4, 11, 13, and 16 as a group. Appeal
Br. 9–15. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Kang discloses a heat exchanger substantially
as claimed except for additive manufacturing, for which the Examiner relies
on Slaughter. Final Action 3 (cross-referencing Sept. 6, 2017 Office
Action). 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 use
Slaughter’s additive manufacturing techniques. Sept. 6, Office Action at 5.
According to the Examiner, a person of ordinary skill in the art would have
done this to reduce cost and improve manufacturing efficiency. Id.
Appellant states that the “primary issue” on appeal is the “disparate
nature” of the cited references. Appeal Br. 9. This argument is not
persuasive. Kang is directed to a recuperator heat exchanger for gas turbine
engines. Kang, ¶¶ 4, 14–20. Slaughter uses additive manufacturing
techniques to make a heat exchanger. Slaughter ¶¶ 2–7. There is simply no
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basis to support Appellant’s characterization that these two references are
“disparate.”
Appellant argues that Kang and Slaughter have different purposes.
Appeal Br. 9–10. According to Appellant, Kang’s purpose is to assemble
individual core segments “in a proper manner,” while the purpose of
Slaughter is to “avoid having separate pieces.” Id. Here, Appellant confuses
the concept of a feature or aspect of an invention with the “purpose” of an
invention. We do not agree with Appellant’s characterization of the
“purpose” of each invention. The “purpose” of both Kang and Slaughter is
to provide heat exchangers for gas turbine engines. The references merely
disclose different manufacturing methods to make a heat exchanger.2
However, even if we accepted Appellant’s “purpose” based argument
(we do not), such would not result in patentability of the invention. It is well
settled that it is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants’ Specification in order to support the conclusion

2 Claim 1 recites a plurality of “additively manufactured heat transfer
surfaces.” Claims App. Appellant provides no evidence nor persuasive
technical reasoning that heat transfer surfaces made by additive
manufacturing processes are structurally distinct from that of other
manufacturing methods. See generally Appeal Br. In determining the
patentability of a product-by-process claim, the focus is on the product and
not the process of making it. Amgen Inc. v. F. Hoffman–La Roche Ltd., 580
F.3d 1340, 1369 (Fed. Cir. 2009). “That is because of the long-standing rule
that an old product is not patentable even if it is made by a new process.”
Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir.
2012), quoting Amgen, supra. Thus, the patentability of a product does not
depend on its method of production. If the product in a product-by-process
claim is obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
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that the claimed subject matter would have been obvious. In re Lintner, 458
F.2d 1013, 1016 (CCPA 1972). This follows from the principle that “[a]
reference may be read for all that it teaches, including uses beyond its
primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012),
citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–421 (2007). Thus,
regardless of the purported “purpose” of each reference, it was well within
the province of the Examiner to apply them in combination in the instant
rejection.
Appellant argues that modifying Kang by the teachings of Slaughter
would render Kang unsatisfactory for its intended purpose. Appeal Br. 10.
This abbreviated, conclusory argument by Appellant is not supported by any
evidence or persuasive technical reasoning. Id. Kang’s purpose is to
provide heat exchanger functionality in a gas turbine engine. Kang ¶¶ 4, 13.
Nothing in the prior art suggests that the proposed modification would have
resulted in an inoperable device that is incapable of functioning as a heat
exchanger. See In re Urbanski, 809 F.3d 1237, 1241–44 (Fed. Cir. 2016)
(affirming Examiner/PTAB determination of obviousness over argument
that proposed modification would render prior art reference unsatisfactory
for its intended purpose). The proposed modification still functions as a heat
exchanger. Ans. 2–3. Thus, Kang’s intended purpose of exchanging heat in
a gas turbine engine, is maintained.
Next, Appellant argues that Kang fails to disclose sectors having
“different characteristics” within a “layer.” Appeal Br. 10. In response, the
Examiner points out that claim 1 does not recite the term “layer.” Ans. 5.
We have reviewed Figure 2–4 of Kang, as well the accompanying
descriptive teaching in paragraphs 58–62 of Kang’s Specification. Figure 3
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depicts a plan view of the air side of heat exchanger foils 40, 42. Kang,
Fig. 3, ¶ 61. Heat exchanger foil 40 is divided into first and second manifold
zones 70 and 72 separated by primary surface zone 74. Id. at ¶ 62. In our
view, Kang’s “zones” correspond to the “sectors” recited in claim 1. Claims
App. This brings us to the question of whether the various heat transfer
surfaces in Kang’s zones/sectors exhibit different “characteristics” from one
another. We agree with the Examiner that they do. Ans. 2. For example
and without limitation, Kang discloses that:
The heat exchanger foil shown is a sheet 40 or 42 of fin fold
material having first and second manifold zones 70, 72
separated by a primary surface zone 74. The primary surface
zone 74 includes a central portion 84 made of generally uniform
foil corrugations 79 of a full height, and a first transition
zone 86 is located between the central portion 84 and the first
manifold zone 70. The first transition zone 86 is made of foil
corrugations 79 of heights less than a full height. The foil
corrugations 79 of the first transition zone 86 continuously
increase in height.
Kang, ¶ 62. Appellant’s Specification acknowledges that “height” is a
“characteristic” of a heat transfer surface. Spec. ¶¶ 4–5. The Examiner’s
finding that Kang discloses sectors with different heat transfer surface
characteristics is supported by a preponderance of the evidence.3
Finally, Appellant argues that the teachings of Kang and Slaughter
would not have been combined, because no “benefit” is derived from the
combination. Appeal Br. 10, Reply Br. 1–2. The Examiner finds that the

3 In addition, the Examiner finds, and Appellant does not dispute, that Kang
discloses zones of heat transfer surfaces with varying aspect ratios. Ans. 6
citing Kang ¶¶ 65, 66, 70–72. Appellant’s Specification discloses “aspect
ratio” as a characteristic as well. Spec. ¶ 7.
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proposed combination would reduce cost and improve manufacturing
efficiency. Ans. 3. Appellant presents neither evidence nor persuasive
technical reasoning to rebut the Examiner’s position regarding a cost and
efficiency benefit to be derived from the proposed combination. See Dystar
Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006) (explaining that an implicit motivation to combine exists when
the improvement is technology-independent and the combination of
references results in a product that is cheaper or more efficient).
In view of the foregoing, we determine that the Examiner’s findings
of fact are supported by a preponderance of the evidence and that the
Examiner’s legal conclusion of unpatentability is well-founded. We sustain
the Examiner’s unpatentability rejection of claims 1, 4, 11, 13, and 16.
DECISION
The decision of the Examiner to reject claims 1, 4, 11, 13, and 16 is
affirmed.
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).
AFFIRMED