Eva Wong et al.Download PDFPatent Trials and Appeals BoardAug 13, 201914615753 - (D) (P.T.A.B. Aug. 13, 2019) 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. 14/615,753 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. Appeal 2019-001026 Application 14/615,753 2 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 Appeal 2019-001026 Application 14/615,753 3 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). Appeal 2019-001026 Application 14/615,753 4 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 Appeal 2019-001026 Application 14/615,753 5 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. Appeal 2019-001026 Application 14/615,753 6 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 Copy with citationCopy as parenthetical citation