Ex Parte Brehm et al

Patent Trial and Appeal Board

May 18, 2016

13525698 (P.T.A.B. May. 18, 2016)

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.
13/525,698 06/18/2012 Holger BREHM 1006/0241PUS1 7021
60601 7590 05/18/2016
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
BERNIER, LINDSEY A
ART UNIT PAPER NUMBER
1755
MAIL DATE DELIVERY MODE
05/18/2016 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 HOLGER BREHM, THOMAS HECKENBERGER,
THOMAS HIMMER, STÉPHANIE LARPENT,
JULIE PATERSON, and RUDOLF RIEDEL
____________________

Appeal 2015-000065
Application 13/525,698
Technology Center 1700
____________________

Before CHUNG K. PAK, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellants appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–19. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real party in interest is BEHR GMBH &
Co., KG. Appeal Br. 2.
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Application 13/525,698

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STATEMENT OF CASE
Appellants describe the present invention as heat exchanger that may
be used to covert motor vehicle heat to electrical energy in order to increase
system efficiency. Spec. ¶ 5. Claim 1, reproduced below, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
1. A heat exchanger for exchanging heat between two media
in a vehicle, the heat exchanger comprising:
at least one tube configured to guide a first medium
of a first temperature,
a thermoelectric material disposed between an inner
wall of the at least one tube and an outer wall of the at least
one tube or on an inner wall of the at least one tube; and
at least one guide sheet connectable to the at least
one tube for guiding a second medium of a second
temperature, the at least one guide sheet configured to
guide the second medium to the outer wall of the at least
one tube to enable the exchange of heat between the first
medium and the second medium,
wherein the inner wall of the at least one tube forms
a guide channel for the first medium, and
wherein the inner wall of the at least one tube has
protrusions that protrude into the guide channel.
Appeal Br.2 11 (Claims Appendix).
REJECTIONS
The Examiner rejected claims 1–19 under 35 U.S.C. § 103 as
unpatentable over the combination of U.S. Patent Application No.
2008/0028769 A1 to Goenka, published Feb. 7, 2008 (hereinafter,

2 In this decision, we refer to the Final Office Action appealed from, filed
September 6, 2013 (“Final Act.”), the Appeal Brief filed April 7, 2014
(“Appeal Br.”), the Examiner’s Answer filed July 29, 2014 (“Ans.”), and the
Reply Brief filed September 23, 2014 (“Reply Br.”).
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“Goenka”), and German Patent No. DE202004013882U1 to Autokühler,
published Jan. 12, 2006 (hereinafter, “Autokühler”3). Final Act 3.
ANALYSIS
The Examiner rejects all claims on appeal as obvious over Goenka
and Autokühler. Appellants do not separately argue claims 2–19. We
therefore limit our discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2013). Claims 2–18 stand or fall with claim 1.
We sustain the Examiner’s § 103 rejection based on the findings of
fact, conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. We provide additional
comments below for emphasis.
The Examiner explains that Goenka discloses a heat exchanger tube
having thermoelectric material disposed between inner and outer walls.
Final Act. 3–4. Goenka does not explicitly disclose the claimed guide sheet.
Id. at 4. Rather, Goenka’s Figure 1 depicts fins (22) that are orientated
parallel to the tube and promote flow of a second fluid parallel to the flow of
the first fluid within hollow 14. Goenka ¶¶ 18–19. Figure 3 depicts a
different embodiment where fins 86 are orientated perpendicularly to the
tube and promote flow of the second fluid perpendicular to the flow of the
first fluid within hollow 70. Id. at ¶¶ 23–25.
The two depicted embodiments of Goenka are consistent with its
teaching that numerous heat exchanger configurations could be compatible
with its design: “[T]ubes having other shapes and for use in other types of

3 The Examiner refers to Autoküehler, but the original German patent spells
the name as Autokühler.
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heat exchangers, such as cross flow heat exchangers, shell and tube heat
exchangers, or counter flow heat exchangers, for example, can be used as
desired without departing from the scope and spirit of the invention.” Id. at
¶ 23 (emphasis added). Goenka’s reference to a cross flow heat exchanger is
particularly important because, as discussed below, both the guide sheets of
claim 1 and the configuration of Autokühler result in cross-flow.
The Examiner explains that Autokühler teaches a heat exchanger with
baffles 63 connectible to tubes 62. Final Act. 4–5. The baffles provide a
flow direction 64 perpendicular to flow within tubes 62 (in other words,
cross-flow). Figure 19 of Autokühler is illustrative and is reproduced below:

Figure 19 of Autokühler depicts its heat exchanger with baffles 63, tubes, 62,
and arrow 64 indicating the cross-flow. Autokühler ¶ 63.
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The baffles of Figure 19 of Autokühler are equivalent to the guide
sheets of claim 1 and as described in the Specification. Figure 13 from the
above-identified application is illustrative and is reproduced below:

Figure 13 depicts two of the Specification’s different embodiments of guide
sheets. Spec. ¶ 89. The left-most guide sheet is adapted for rectangular
tubes, and the right-most guide sheet is adapted for round tubes. Id. As
apparent from the figures, the Autokühler baffles and Specification guide
sheets are both planar baffles or sheets with openings for tubes to pass
through them and orientated to promote cross-flow of the second fluid
perpendicular to the tubes.
We agree with the Examiner that it would have been obvious to
substitute the fins of Goenka with the guide sheets of Autokühler.
Appellants identify no distinction between Goenka and claim 1 other than
guide sheets. Autokühler establishes that cross-flow heat exchangers with
guide sheets were known in the art. The substitution could be made with
predictable success because Goenka depicts a cross-flow embodiment
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(Goenka, Fig. 3) and teaches that a cross-flow heat exchanger can be used
with its invention (id. at ¶ 23). Thus, claim 1 is obvious because it ‘“simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(citation omitted); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”).
Appellants argue that there would be no motivation to combine
Goenka and Autokühler because doing so would be contrary or redundant
with the fins of Goenka. Appeal Br. 8. Figure 3 of Goenka, however,
presents a cross-flow configuration very similar to that of Autokühler and
claim 1, and Goenka expressly teaches that other additional configurations
can be used as desired. Goenka ¶ 23. Thus, the combined references teach
the substitution.
Appellants also argue that the advantages of Autokühler lies in having
“scale-like elements” added to its flow passages. Appeal Br. 9. While we
agree that the “elements” are one teaching of Autokühler, they are not its
only teaching. Cf. In re Young, 927 F.2d 588 (Fed. Cir. 1991) (explaining
that reference patents are “relevant for all they contain”) (citation omitted).
Autokühler is best read as stating generally that its teachings improve heat
transfer performance, and Autokühler identifies its baffles (i.e., the guide
sheets) as “inventive.” Ans. 13; Autokühler ¶¶ 6, 63. A preponderance of
the evidence thus establishes Autokühler teaching that its baffle design is
advantageous. Autokühler’s explanation of its advantages would further
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motivate a person of skill in the art to substitute Autokühler’s baffles for
Goenka’s fins. Cf. KSR Int’l Co., 550 U.S. at 418.
Finally, Appellants argue a person of skill would not substitute
Autokühler’s baffles for Goenka’s fins because doing so would require
Goenka’s tubes to be “rigidly interconnected” rather than “independent
within the larger tube as shown in Fig. 2 of Goenka.” Reply Br. 4. Figure 2
is, however, just one embodiment of Goenka, and Appellants provide no
evidence that tube independence is essential to Goenka. Just to the contrary,
Figure 4 of Goenka, for example, depicts tubes rigidly interconnected. Thus,
we are not persuaded that this factor would weigh against the sound reasons
to combine Autokühler and Goenka explained above. We therefore sustain
the Examiner’s rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1–19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED