Ex Parte Alphs

Patent Trial and Appeal Board

Dec 27, 2017

13362831 (P.T.A.B. Dec. 27, 2017)

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.
13/362,831 01/31/2012 Kevin Alphs 022229-2279-US00 2509
23409 7590 12/29/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
HEYAMOTO, AARON H
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN ALPHS
Appeal 2016-007812
Application 13/362,831
Technology Center 3700
Before MICHELLE R. OSINSKI, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Alphs (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s Final Rejection of claims 1—11.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Modine Manufacturing
Company. Appeal Br. 2.
2 Claims 12—23 are withdrawn from consideration. Response to Restriction
Requirement (Sept. 18, 2014).
Appeal 2016-007812
Application 13/362,831
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal is reproduced below
and is representative of the claimed subject matter on appeal.
1, A furnace configured to heat a flow of air and discharge the
heated flow of air into a conditioned space, the furnace
comprising:
an air duct including an air inlet and an air outlet, the air
duct defining an air flow path from the air inlet to the air outlet,
the air duct configured to direct the flow of air along the air flow
path from the air inlet to the air outlet;
a heater configured to heat a fluid and discharge a heated
fluid flow;
a first heat exchanger at least partially positioned in the air
duct and in fluid communication with the heater to receive the
heated fluid flow; and
a second heat exchanger at least partially positioned in the
air duet and in fluid communication with the first heat exchanger
so that the heated fluid flow flows through the second heat
exchanger after flowing through the first heat exchanger,
wherein the first heat exchanger and the second heat
exchanger are arranged in the air duct so that the flow' of air
travels through the first heat exchanger to transfer heat between
the heated fluid flow and the flow of air, and then through the
second heat exchanger after the first heat exchanger to transfer
heat between the heated fluid flow' and the flow of air.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Elliott
Slaby
Krupp
Khan
Halgash
Tsunekawa
US 2,721,033
US 2007/0272228
US 2008/0184991
US 2008/0314375
US 2010/0122806
US 2011/0297139
Oct. 18, 1955
A1 Nov. 29, 2007
A1 Aug. 7, 2008
A1 Dec. 25, 2008
A1 May 20, 2010
A1 Dec. 8, 2011
2
Appeal 2016-007812
Application 13/362,831
THE REJECTIONS3
I. Claims 1—5, 7, 8, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Halgash. Final Act. 3^4.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Halgash and Khan. Id. at 5.
III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Halgash and Slaby. Id. at 5—6.
IV. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Halgash and Krupp. Id. at 6.
V. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Halgash and Tsunekawa. Id.
VI. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Halgash and Elliott. Id.
OPINION
Rejection I
Claims 1, 3—5, 7, 8, and 11
The Examiner finds that Halgash discloses all of the limitations of
independent claim 1, including, inter alia, first and second heat exchangers
at least partially positioned in an air duct such that both (i) a heated fluid
discharged from a heater “flows through the second heat exchanger after
flowing through the first heat exchanger;” and (ii) a flow of air being heated
3 The rejections of (i) claims 2—5 and 11 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject which the applicant regards as the invention
(Final Act. 2—3) and (ii) claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Halgash and Official Notice (id. at 5) have been
withdrawn (Ans. 2).
3
Appeal 2016-007812
Application 13/362,831
by a furnace “travels through the first heat exchanger . . . and then through
the second heat exchanger after the first heat exchanger.” Final Act. 3^4
(emphasis added). The Examiner acknowledges that Figure 3 of Halgash
shows first and second heat exchangers that are positioned so that the flow
of air being heated by the furnace travels through the second heat exchanger
before the first heat exchanger, rather than through the second heat
exchanger after the first heat exchanger as required by claim 1. Final Act. 4;
Halgash, Fig. 3. The Examiner, however, states that “a flow direction
opposite that of (110) [in Figure 3 of Halgash] is assumed.” Final Act. 4.
The Examiner’s basis for relying on a flow direction opposite that of flow
direction 110 illustrated in Figure 3 of Halgash is the following statement in
paragraph 43 of Halgash:
[W]hen apparatus 100, HVAC unit 250, or HVAC system 270,
for example, is in operation, the second fluid (e.g., indoor air
210) flows in a predominant flow direction 110 past first-stage
tubes 131 [of first heat-exchanger stage 121] and past second-
stage tubes 1[3]2, [of second heat-exchanger stage 122] for
example. In this embodiment, the predominant flow direction
110 is upwards (up). In other embodiments, however, the
predominant flow direction (e.g., 110) may be in another
direction, such as downwards, horizontal, or at an angle, as
examples.
Halgash 143. The Examiner asserts that “Halgash discloses that any
direction of the air traveling is acceptable, whether it’s along arrow (110) or
opposing it.” Final Act. 4.
Appellant argues that the Examiner’s interpretation of the relevant
statement in paragraph 43 of Halgash as supporting “simply reversing the
flow direction of arrow 110, while the heat exchangers within Halgash
remain in the position shown in Fig. 3 ... is an incorrect interpretation of
4
Appeal 2016-007812
Application 13/362,831
Halgash.” Appeal Br. 10 (citing Declaration Under 37 C.F.R. 1.132 of Jill
M. Szczech (hereinafter “Szczech Decl.”) 19). Rather, Appellant argues
that the relevant statement in paragraph 43 of Halgash merely supports that
the orientation of the furnace may be varied, depending upon the
requirements of the installation, so that the air flow direction is downwards,
horizontal, or at an angle. Id. According to Appellant, “[o]ne of ordinary
skill in the art would . . . understand that the flow direction through the
furnace elements does not change, but the overall orientation of the furnace
unit changes to accommodate different space requirements” and that “[t]he
Examiner’s interpretation is inconsistent with the understanding of one of
ordinary skill in the art.” Id. at 11.
In our view, Appellant does not persuasively explain why the relevant
statement in paragraph 43 is ambiguous, let alone why it must mean that the
overall orientation of the furnace is varied while flow direction through the
furnace elements does not change. First, looking at the language of the
relevant statement itself, it states that the second fluid (e.g., indoor air 210)
flows past first-stage tubes and second-stage tubes in a predominant flow
direction that is upwards “[i]n the embodiment illustrated.” Halgash 143.
We note specifically that the flow direction is described relative to the first-
stage tubes and second-stage tubes, rather than relative to any particular
furnace orientation when installed. Accordingly, we view the next statement
in paragraph 43 relating to “other embodiments” to mean that the flow
direction relative to the first-stage tubes and second-stage tubes can be
downwards, horizontal, or at an angle, rather than meaning that the flow
direction can be downwards, horizontal, or at an angle relative to a
corresponding installation orientation of the furnace itself. Consistent with
5
Appeal 2016-007812
Application 13/362,831
that understanding, Halgash describes that Figure 2 shows “one example of a
location [of fan 255] within HVAC unit 250,” but that “[i]n other
embodiments, fan 255 may be located below heat exchanger 100 and may
blow indoor air 210 upwards (e.g., in direction 110 shown in FIGS 1 and 3)
through heat exchanger 100.” Halgash 138. This implies that in the
embodiment illustrated in Figure 2 in which fan 255 is located above heat
exchanger 100, it blows indoor air 210 downwards. In addition, paragraph
43 does not mention the possibility of rearranging the orientation of the
furnace, only changing the direction of airflow.
In support of Appellant’s position, Appellant argues that the
Examiner’s interpretation of the relevant statement in paragraph 43 of
Halgash “is nonsensical when applied to the other listed alternatives of
‘horizontaF and ‘at an angle’” because “[t]here is no way that the furnace of
Halgash could be operated so that only the air flow direction 110 were to be
directed horizontally or at an angle, while the furnace components
themselves continue to be oriented as shown in Fig. 3.” App. Br. 11. The
Examiner responds that “Halgash plainly states that air could be moved
across the heat exchanger in any direction, and the device appears to be
operational in these alternative configurations.” Ans. 3.
We agree with the Examiner. We do not view the relevant statement
in paragraph 43 to be nonsensical under the Examiner’s interpretation.
Rather, it appears that fan 255 may be configured to blow indoor air in any
direction through the heat exchangers with the device remaining operational.
Even if efficiency of the furnace (and of the third heat exchanger stage, in
particular) may be impacted by flows in other directions, reduced efficiency
does not render operation impossible, and thus, does not render the
6
Appeal 2016-007812
Application 13/362,831
Examiner’s interpretation nonsensical as alleged by Appellant. Further,
when considering how closely the first and second heat exchanger stages are
packed; that additional stages (e.g., a third stage) may be “packed within the
available space” (Halgash | 57); and that the third heat exchanger may have
tubes and “omit fins” {id. 153), the impact that movement of air across the
heat exchanger in any direction may have on efficiency in Halgash can be
lessened.
In further support of Appellant’s position, Appellant argues that “[a]s
explained in Khan, ‘furnaces are generally manufactured so that each
furnace can be installed vertically or horizontally, in any one of four
configurations—upflow, downflow, horizontal right or horizontal left.’”
Appeal Br. 12 (quoting Khan | 5). Appellant maintains that “[tjherefore,
one of ordinary skill in the art would clearly understand that Halgash refers
to changing the overall orientation of the furnace, but not to changing the
flow direction with respect to the furnace itself.” Id. The Examiner
responds that “[tjhere are no conclusive statements within Halgash that
would leave one with an ordinary skill in the art to believe that the quoted
statement of Halgash comes with the condition of furnace orientation.” Ans.
2-3.
We agree with the Examiner. That furnaces are capable of being
installed in a plurality of configurations does not overcome the express
language in Halgash that describes the flow direction relative to the tubes of
the first and second heat-exchanger stages, rather than describing the flow
direction relative to a furnace installation position.
Appellant additionally argues that “[t]he critical element for achieving
the higher efficiency in Halgash is the counter-flow configuration.” Appeal
7
Appeal 2016-007812
Application 13/362,831
Br. 13 (citing Szczech Decl. | 8). The Examiner responds that “Halgash
does not mention the importance of. . . counter-flow arrangement” and that
“the few recitations of counter-flow within Halgash are simply referring to
known prior art.” Ans. 3.
We agree with the Examiner that Halgash does not explicitly limit its
design to a counter-flow configuration such that one of ordinary skill in the
art would not reasonably view the relevant statement in paragraph 43
regarding different predominant flow directions as disclosing co-current
flow. Rather, we agree with the Examiner that Halgash instead recognizes
“unconventional configurations [and] departures from typical multi-pass
counter-flow heat exchangers.” Id. (quoting Halgash | 56).
In sum, we are not persuaded by Appellant’s arguments that the
Examiner has failed to establish a finding supported by a preponderance of
the evidence that Halgash discloses first and second heat exchangers
positioned such that both (i) a heated fluid discharged from a heater flows
through a second heat exchanger after flowing through a first heat
exchanger; and (ii) a flow of air being heated by a furnace travels through
the first heat exchanger, and then through the second heat exchanger after
the first heat exchanger, as claimed.
Appellant also argues that “it would not have been obvious to modify
the furnace of Halgash as proposed by the Examiner.” Appeal Br. 13. This
argument is not persuasive because it does not address the rejection as
articulated by the Examiner, which is based on Halgash disclosing the
claimed invention, rather than on the Examiner modifying Halgash’s furnace
in order to arrive at the claimed invention. More particularly, Appellant
argues that “Halgash teaches away from the lower-efficiency co-current flow
8
Appeal 2016-007812
Application 13/362,831
of claim 1 ” because “Halgash teaches that increasing the efficiency of the
furnace by adding an additional heat exchanger is desirable” and that
“Halgash also discloses optimizing the tube angles with respect to the air
flow direction, which is very important for counter-flow.” Appeal Br. 13.
Appellant also argues that “[t]he heat exchanger of Halgash would be
destroyed for [its] intended purpose (i.e., increasing efficiency [without
substantially increasing size]) if modified to read on claim 1 (i.e., by
decreasing efficiency).” Id. at 14. Teaching away, however, is irrelevant to
an anticipation analysis. Celeritas Techs., Ltd. v. Rockwell Int 7 Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998); see also Seachange Int’l, Inc. v. C-Cor,
Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
Appellant also argues that Appellant “discovered that the decreased
efficiency [of co-current flow] was acceptable because [it] overcame the
challenges that the [Appellant] encountered when the unit is utilized at low
temperatures (i.e., below the freezing temperature for water).” Appeal Br.
13. Appellant argues that “[t]he re-design is counter-intuitive because the
heat exchanger is purposely made less efficient to overcome the problem of
water freezing in the heat exchanger.” Id.
Contrary to Appellant’s assertions, however, “arguments that the
alleged anticipatory prior art... is not recognized as solving the problem
solved by the claimed invention, is not ‘[germane]’ to a rejection under
section 102.” Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct.
1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)).
Moreover, “[w]here ... the result is a necessary consequence of what was
deliberately intended, it is of no import that the article’s authors did not
appreciate the results.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
9
Appeal 2016-007812
Application 13/362,831
1362, 1366 (Fed. Cir. 1999). See also In re Cruciferous Sprout Litig., 301
F.3d 1343, 1351 (Fed. Cir. 2002).
For the foregoing reasons, we do not find that the Examiner erred in
finding that Halgash discloses all of the limitations of independent claim 1,
and we sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Halgash. We also sustain the rejection of claims 2—5, 7, 8,
and 11, which depend therefrom, and for which Appellant relies on the same
arguments and reasoning. See Appeal Br. 14.
Rejections II and III
Appellant’s arguments in support of the patentability of dependent
claims 6, 9, and 10 relate to the perceived deficiencies in Halgash, as well as
the failure of Khan and/or Slaby to remedy these deficiencies. Appeal Br.
16. Because we have found no such deficiencies in Halgash, we sustain,
under 35 U.S.C. § 103(a), the rejections of: claim 6 as unpatentable over
Halgash and Khan; and claims 9 and 10 as unpatentable over Halgash and
Slaby.
Rejection IV—VI
Claim 2 recites “a majority of the flow of air entering the air inlet is
outdoor air from outside the conditioned space.” Appeal Br. 18 (Claims
App. ’x). The Examiner acknowledges that “Halgash may not explicitly
disclose wherein the majority of air flowing into it is from the outdoors.”
Final Act. 6. The Examiner finds that each of Krupp, Tsunekawa, and
Elliott teaches “an inlet. . . that takes in outside air.” Id. The Examiner
concludes that one of ordinary skill in the art would have found it obvious to
modify Halgash with the teachings of Krupp, Tsunekawa, and/or Elliott “in
order to increase efficiency” (id. (citing Krupp 116)), “to reduce drainage
10
Appeal 2016-007812
Application 13/362,831
problems,” and/or “to equalize the temperature . . . within a space to be
heated” (id.).
In addition to arguing that each of Krupp, Tsunekawa, and Elliott fail
to remedy the deficiencies of Halgash (Appeal Br. 15), Appellant argues that
each of these references teach a single heat exchanger that can heat outside
air and do not render it “obvious for a furnace with first and second heat
exchangers to utilize outside air” (id.). Appellant explains that “single-heat-
exchanger units utilize[] outside air without any concern for freezing of
condensate [as would be implicated in furnaces with first and second heat
exchangers] because the single-heat-exchanger units do not transfer enough
heat to condense the heated fluid.” Id. (citing Szczech Dec. 113).
Controlling case law requires that we look to whether the Examiner
has provided “some articulated reasoning with some rational underpinning to
support a legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)). Appellant’s argument does not specifically address
the Examiner’s articulated reasoning for utilizing outdoor air or persuasively
explain why the reasoning lacks rational underpinnings. As to the potential
disadvantage of freezing condensate identified by Appellant as possibly
discouraging an ordinary artisan from using outside air with Halgash’s
furnace, the Examiner responds, in part, that “freezing condensate would
only be a problem for a portion of the country.” Ans. 4. We agree with the
Examiner that the identified potential disadvantage in a portion of the
country does not persuasively explain why the Examiner’s stated reasoning
lacks rational underpinnings, considering that this potential disadvantage
would not be a problem in at least some other geographic regions.
11
Appeal 2016-007812
Application 13/362,831
For the foregoing reasons, we do not find that the Examiner erred in
concluding that Halgash and any of Krupp, Tsunekawa, and Elliott renders
obvious the subject matter of claim 2, and we sustain the rejection of claim 2
under 35 U.S.C. § 103(a) as obvious over Halgash and any of Krupp,
Tsunekawa, and Elliott.
DECISION
The Examiner’s decision to reject claims 1—11 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)(l)(iv).
AFFIRMED
12