Ex Parte Brand et al

Board of Patent Appeals and Interferences

Mar 6, 2007

10295813 (B.P.A.I. Mar. 6, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARINE BRAND, ANDREAS KNOEPFLER,
ANDREAS BEUTLER and RONALD LUTZ
__________

Appeal 2006-1847
Application 10/295,813
Technology Center 3700
____________
Decided: March 6, 2007
____________

Before WILLIAM F. PATE III, TERRY J. OWENS, and
MURRIEL E. CRAWFORD, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

Appeal 2006-1847
Application 10/295,813

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claim 25 and the
examiner’s refusal to allow claims 1, 4-7, 9-13 and 20 as amended after final
rejection. These are all of the claims remaining in the application.
The claimed invention is directed to a heat exchanger tube with
integral outer fins and an integral interior structure made up of small
pyramids or frustums.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A heat exchanger tube comprising plain ends, at least one structured
area on the outside of the tube and inside of the tube, having the following
characteristics:
a) integral outer fins extending helically over the
outside of the tube;

b) integral inner fins extending axis-parallel or
helically at a helix angle α = 0 to 70°, measured against an
axis of the tube, with primary grooves on the inside of the
tube;

c) the inner fins being intersected by secondary grooves
extending at a helix angle β measured against the tube axis;

d) the secondary grooves extending with respect to the inner fins at
an angle of intersection in a range of 60° to 85°;

e) the depth T of the secondary grooves being at least
20% of a fin height H of the inner fins; and

f) the density of intersecting points of the primary and
secondary grooves being in a range of 90 to 250 intersecting
points/cm2.
2
Appeal 2006-1847
Application 10/295,813

The references of record relied upon by the examiner as evidence of
obviousness are:
Chiang 5,332,034 Jul. 26, 1994
Suzuki 5,992,513 Nov. 30, 1999
Bandai JP 57-26394 Feb. 12, 1982
Tsuzaki JP 62 255794 Nov. 07, 1987
Claims 1, 4-7, 9-13 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tsuzaki in view of Chiang and Suzuki.
Claim 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuzaki in view of Chiang and Suzuki and further in view
of Bandai.
ISSUES
Appellants argue that there is no motivation to combine the teachings
of Chiang and Suzuki with that of Tsuzaki. Appellants further argue that
none of the applied prior art teaches the density of intersecting points or
notches in a range of 90 to 250 intersecting points per square centimeter. On
the other hand, the Examiner argues that the particular parameters claimed in
the independent claims are result effective variables clearly recognized by
the prior art as subject to optimization. Therefore, according to the
Examiner, it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for these result effective
variables.
Accordingly, the sole issue for our decision is whether the Examiner
has established a prima facie case of obviousness of the claims on appeal.

3
Appeal 2006-1847
Application 10/295,813

FINDINGS OF FACT
We agree with Appellant that Suzuki discloses a heat transfer pipe
with integral outer fins and integral inner fins extending helically at a helix
angle measured against the tube axis with primary grooves on the inside of
the tube and secondary grooves at a second helically angle measured against
the tube axis as illustrated in Figure 1. Apparently, the primary and
secondary grooves have the same depth and result in a uniform structure as
shown in Figure 4. The secondary grooves extend in an opposite direction
compared to the primary grooves. Suzuki does not disclose the exact values
for the parameters claimed in the independent claims.
All of the references cited by the examiner evince a recognition in the
art that the inner structured area of a heat exchanger tube should beneficially
break up the boundary layers near the tube wall and provide greater surface
area for heat exchange contact. On the other hand, the structured area on the
inner wall of the tube must not result in an inordinate increase in the flow
resistance.
It is the examiner’s finding, discussed on pages 6 and 7 of the
Answer that the Chiang reference teaches that the helix angle α of the inner
fin, the angle γ of the secondary grooves with respect to the primary
grooves, and the depth of the secondary grooves are result effective
variables well known in this art for optimization of heat exchange in heat
exchanger tubes.
The examiner further finds that Suzuki discloses that the height of the
ribs or fins, the depth of the secondary grooves relative to the fin height and
the angle of secondary grooves are result effective variables. The examiner
4
Appeal 2006-1847
Application 10/295,813

therefore finds that every claimed range recited in claim 1 is found to be
known in the prior art to be result effective, and the characterization or the
optimization of these parameters is routine experimentation that would have
been obvious to one of ordinary skill at the time the invention was made.
The examiner further states that the fact that Chiang and Suzuki disclose
overlapping ranges for at least some of the parameters claimed further
buttresses his finding that the parameters are result effective variables.
Finally, Bandai is cited to show crossing or secondary grooves which
extend in the same direction as the primary grooves relative to the tube axis.
According to Bandai, this results in an improvement of the balance of the
condensing property and evaporation property of the heat exchange tube.
PRINCIPLES OF LAW
“A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art.” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329,
1334-35 (Fed. Cir. 2006) citing 35 U.S.C. § 103(a) (2000); Graham v. John
Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 467 (1966). “The ultimate
determination of whether an invention would have been obvious is a legal
conclusion based on underlying findings of fact.” Id. (citing In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999)).
In assessing whether subject matter would have been non-obvious
under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co. 383 U.S. at 17, 148 USPQ at 467. The Board
determines “‘the scope and content of the prior art,’” ascertains “‘the
5
Appeal 2006-1847
Application 10/295,813

differences between the prior art and the claims at issue,’” and resolves “‘the
level of ordinary skill in the pertinent art.’” Id. (citing Dann v. Johnston, 425
U.S. 219, 226, 189 USPQ 257, 261 (1976)) (quoting Graham, 383 U.S. at
17, 148 USPQ at 467). “Against this background, the Board determines
whether the subject matter would have been obvious to a person of ordinary
skill in the art at the time of the asserted invention.” Id. (citing Graham, 383
U.S. at 17, 148 USPQ 467). In making this determination, the Board can
assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unsolved needs, failure of others, etc.”
Id., 383 at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1455-56 (Fed. Cir. 1998). “We have explained that
to reject claims in an application under section 103, an examiner must show
an unrebutted prima facie case of obviousness. ‘On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.’” Id. (citing Rouffet, 149 F.3d at
1355, 47 USPQ2d at 1455).
Moreover, it is well settled that, generally speaking, it would have
been obvious for an artisan with ordinary skill to develop workable or
even optimum ranges for result-effective parameters. In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Woodruff, 919 F.2d
1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). The courts have
found exceptions to this rule in cases where the results of optimizing a
variable, which was known to be result effective, were unexpectedly
6
Appeal 2006-1847
Application 10/295,813

good. See In re Waymouth, 499 F.2d 1273, 182 USPQ 290 (CCPA
1974); and In re Saether, 492 F.2d 849, 181 USPQ 36 (CCPA 1974).
ANALYSIS
In our minds, this case turns upon the single evidentiary issue that the
Appellants have not challenged or rebutted the Examiner’s findings of fact
that the parameters listed in clauses b and d through f of claim 1 and the last
four clauses of claim 25 are result effective variables. The Examiner made
findings on pages 6 and 7 of the Answer that prima facie establish these
variables are recognized in the prior art as result effective. Evidently, the
Appellants concur with these findings. Certainly, the Appellants never
mention this issue or respond to the examiner’s findings on this issue in
either the Brief or Reply Br. Since the Examiner’s findings are unchallenged
in any respect, the burden shifts to the Appellants to provide evidence that
the exact values for the claimed parameters produce a result that is
unexpectedly good. Appellants have not provided such evidence in the
specification or in declarations furnished to the Examiner. Appellants have
not relied upon Figure 5 of their Drawings for such evidence for good
reason. There is simply not enough explanatory material in the specification
to know exactly what has been tested. Specifically, the “standard inner
structure” has not been specified.
We further concur with the Examiner that the ranges claimed for the
parameters in claim 1 and 25 are, for the most part, overlapped by the prior
art. There appears to be controversy with respect to whether the prior art
overlaps Appellants’ claimed range with respect to the number of notches
per square centimeter. Be that as it may, we agree with the Examiner that
7
Appeal 2006-1847
Application 10/295,813

any overlap of any of the claimed ranges is additional evidence of the result
effective nature of the variables specified in appellant’s independent claims,
and that one of ordinary skill would have found it obvious to optimize the
inner structure of the heat conduction pipe. In the event that the Examiner’s
latest calculations are also found to be in error, we merely point out that an
overlap of all ranges is not required under the Examiner’s premise that the
claimed parameters are result effective. See Woodruff, 919 F.2d at 1577, 16
USPQ2d at 1936 (Fed. Cir. 1990). In Woodruff, three of the four claimed
parameters were overlapped by the prior art, while one fell outside the range
of the prior art. Presumably that is the situation here.
CONCLUSION OF LAW
Given the unrebutted result effective variable findings with respect to
the parameters in the independent claims, it is our conclusion of law that the
subject matter of claims 1, 4, 6, 7, 9-13, 20 and 25 on appeal would have
been obvious from the applied prior art as mere optimizations of well
recognized result effective variables.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Although the Examiner refers to claim 5 at 13 in the Answer, the
Examiner fails to include a rejection of this claim which includes the prior
art teaching of Bandai in the collective teachings of the references.
Accordingly, we hereby enter a rejection under 35 U.S.C. § 103 of claim 5
as unpatentable over Tsuzaki in view of Chiang, Suzuki and Bandai.
8
Appeal 2006-1847
Application 10/295,813

Appellants are apprised of the two options under 37 C.F.R. § 41.50(b)
with respect to further action on this new ground:
37 CFR § 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record

ORDER
The rejections of claims 1, 4, 6, 7, 9-13, 20 and 25 are affirmed.
A new ground of rejection has been entered against claim 5 under
37 C.F.R. § 41.50(b).

9
Appeal 2006-1847
Application 10/295,813

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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).

vsh

FLYNN, THIEL, BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO MI 49008-1631
10