Ex parte BROCK

Board of Patent Appeals and Interferences

May 7, 1998

08094461 (B.P.A.I. May. 7, 1998)

Application for patent filed July 20, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte J. DON BROCK
____________
Appeal No. 97-2642
Application No. 08/094,4611
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, 10 through 25 and 30 through
Appeal No. 97-2642
Application No. 08/094,461
37. Claim 9 has been allowed. Claims 26 through 29 have been
canceled.
We AFFIRM-IN-PART.
Appeal No. 97-2642 Page 3
Application No. 08/094,461
BACKGROUND
The appellant's invention relates to a screed heating
system and a method of employing exhaust heat for heating a
screed. An understanding of the invention can be derived from
a reading of exemplary claims 1 and 14, which appear in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Jeppson 4,319,856 Mar. 16,
1982
McConnell 4,593,753 June
10, 1986
McEachern, Jr. 4,777,796 Oct.
18, 1988
Raymond 5,259,693 Nov. 9,
1993
(filed Mar. 6,
1992)
Claims 1, 2, 4 through 7, 10 through 16, 18, 19, 20, 22,
23, 24 and 30 through 34 stand rejected under 35 U.S.C. § 103
as being unpatentable over Raymond in view of Jeppson and
McEachern.
Appeal No. 97-2642 Page 4
Application No. 08/094,461
Claims 3, 8, 16 through 19, 21, 25 and 35 through 37
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Raymond in view of Jeppson, McEachern and McConnell.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the § 103
rejections, we make reference to the examiner's answer (Paper
No. 18, mailed November 15, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 17, filed September 12, 1996) and reply brief
(Paper No. 19, filed January 17, 1997) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-2642 Page 5
Application No. 08/094,461
The appellant argues (brief, pp. 22-25 and 43-44 and2
reply brief, p. 4) that McEachern and McConnell represent
non-analogous art.
As a preliminary matter, we have determined that both
McEachern and McConnell are analogous art. The test for non-2
analogous art is first whether the art is within the field of
the inventor's endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved.
In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979). A reference is reasonably pertinent if, even though it
may be in a different field of endeavor, it logically would
have commended itself to an inventor's attention in
considering his problem because of the matter with which it
deals. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061
(Fed. Cir. 1992). In the present instance, we are informed by
the appellant's originally filed specification (p. 2) that the
invention is particularly directed to overcoming the drawbacks
of the prior art, most notably the large pressure drops needed
to provide the necessary heating to the oil. Both McEachern
and McConnell teach heating a liquid without utilizing a large
pressure drop and thus fall into the latter category of the
Appeal No. 97-2642 Page 6
Application No. 08/094,461
Wood test, and logically would have commended itself to an
artisan's attention in considering the appellant's problem.
Thus, we conclude that McEachern and McConnell are analogous
art.
Claims 1, 2, 4-7, 10-16, 18, 19, 20, 22, 23, 24 and 30-34
Claims 1, 2, 4 through 7, 10 through 16, 18, 19, 20, 22,
23, 24 and 30 through 34 were rejected under 35 U.S.C. § 103
as being unpatentable over Raymond in view of Jeppson and
McEachern.
Independent claims 1, 2, 5, 6, 18, 20 and 23 recite
apparatus comprising, inter alia, an exhaust system of a
paving machine, a screed of the paving machine, and a heat
exchange system for transferring heat from the exhaust system
to the screed via a heat exchange liquid. Independent claims
14, 15, 19 and 31 recite a method of heating a screed, inter
alia, transferring heat from an exhaust system of a paving
machine to a heat exchange liquid, and transferring heat from
the heat exchange liquid to the screed of the paving machine.
Appeal No. 97-2642 Page 7
Application No. 08/094,461
Raymond discloses a method and apparatus for heating a
screed. The general layout of an asphalt paving machine with
a floating main screed equipped with adjustable screed
extenders which is towed by a tractor is shown in Figure 4.
As shown in Figures 2 and 3, the main screed unit of Raymond
has a sole plate 16 and a pair of side-by-side frame sections
10, 11 each comprising an outer generally triangular side
plate 12, an inner gusset plate 13, a deck plate 14, and a
front moldboard 15. As shown in Figures 1 and 2, the screed
unit is towed from a tractor by a pair of laterally spaced
drag arms 29 of general L-shape which are pivotally connected
to the tractor adjacent their forward ends and are pivotally
connected to the screed unit by pins 30 extending through the
side plates 12 and a pair of upstanding lever arms 31 which
are welded at their lower ends to the deck plates 14. Jack
screws 32 with universals 32a and operating handles 32b
connect the upper ends of the lever arms 31 to the drag arms
29 so that the lever arms can be pulled forwardly or pushed
rearwardly relative to the drag arms 29 to thereby adjust the
plane of the sole plate 16 relative to the ground surface to
vary the vertical attack angle of the screed. Raymond
Appeal No. 97-2642 Page 8
Application No. 08/094,461
provides adjustment for raising or lowering the center of the
sole plate 16 relative to the lateral sides so that the sole
plate can be dished upwardly to conform with a crown in the
road, or can be dished downwardly to provide a valley to serve
as drain area for a parking lot. As shown in Figures 3 and 5,
the sole plate 16 of the main screed is provided with two sets
of heat exchange tubes 46, one for each half, covered with
insulating blankets 47. The tubes 46 are rectangular in
cross-section so as to rest flat against the upper face of the
sole plate. The heat exchange tubes on each half of the sole
plate 16 form a respective serpentine path having straight
parallel sections 46a extending lengthwise of the screed which
are joined by curved end sections 46b. As shown in Figure 6,
each sole plate extension screed 16a is provided with loops of
tubing 46c, 46d interconnected by a flexible hose 46e which
loops horizontally around the hinge assembly of the extension
screeds. As shown in Figure 7, one of the loops 46c, 46d is
connected by a flexible supply hose 48 to one end of the heat
exchange tubing on the adjoining half of the main screed, and
the other end is connected by a flexible return hose 49 to a
reservoir 50. As shown in Figure 7, the tractor for an
Appeal No. 97-2642 Page 9
Application No. 08/094,461
asphalt paver normally has a hydraulic pump 52 for power
take-off which is usually driven off the tractor engine and is
supplied with oil from a reservoir 53 on the tractor. The
output from the pump 52 is connected by a hose 54 to a
selector unit 55 shown schematically in Figure 8 which
alternately connects with a heat system port 58a or a vibrator
system port 58b. The port 58a is connected to a shuttle valve
62 and a solenoid operated valve 64 arranged in parallel for
controlling supply to a heat system supply line 66. The heat
system supply line 66 connects to a hydraulic motor 76 which
drives a high pressure hydraulic pump 78 taking suction from
an oil reservoir 50. Output from the pump 78 flows through a
primary flow restrictor 82 which functions to heat the oil
responsive to a pressure drop across the restrictor. Most of
the heated oil from the restrictor 82 returns directly to the
reservoir 50 and the balance is divided into two like circuits
at needle valves 84, 85 leading by flexible hoses 86, 87 to
input ends of the heat exchange tubes on the two halves of the
sole plate 16 of the main screed. The hot oil continues from
the main screed to the heat exchange tubes on the screed
extenders 16a by flexible hoses 48 and then returns to the oil
Appeal No. 97-2642 Page 10
Application No. 08/094,461
reservoir 50. Raymond teaches that only about three quarts of
oil is required in the reservoir 50 and that the reservoir
should also contain an air space which may, for example be
equivalent in volume to about one-third of that occupied by
the oil.
Jeppson discloses a paving machine. As shown in Figure
17, hot exhaust gas from an engine flows to gas manifold
chamber 262 which includes a final slot 269 which directs the
exhaust gas to a linear nozzle 271 which applies a stream of
the hot exhaust gas along the upper surface of screed member
246. Maintaining the screed member 246 at a high temperature
in this manner improves the action of the screed in that
pavement constituents including asphalt do not tend to adhere
to a metallic surface which is heated to a temperature
sufficient to cause asphalt to act more or less in the manner
of a lubricant.
McEachern discloses a heat recovery muffler system.
McEachern teaches that internal combustion engines have many
applications and that most commonly a muffler system is
Appeal No. 97-2642 Page 11
Application No. 08/094,461
connected to the exhaust port of the engine and that heat
energy is lost to the atmosphere through escaping hot exhaust
gases. McEachern also teaches that it is desirable to recover
and utilize this heat energy that would otherwise be lost to
the atmosphere. To overcome this disadvantage, McEachern
discloses a heat recovery muffler system that efficiently
recovers the heat contained in the hot exhaust gases.
McEachern teaches that hot exhaust is led from the engine
exhaust manifold directly to the exhaust inlet 14 by
appropriate pipe means (not shown), and is introduced to the
interior 28 of the vessel 12. The hot exhaust stream flows up
through the interior 28 according to the sinuous path defined
by the alternating baffle plates 20 and the spaces 24, 25
until it eventually escapes through exhaust outlet 16 to the
atmosphere. Throughout the interior 28 and particularly at
each space 24 and along each baffle plate 20, the hot exhaust
stream encounters water or fluid 34 supplied via pump 40 and
conduit means 43. The fluid 34 absorbs and stores the heat of
the exhaust gases. Thus, the gases escape to the atmosphere
at a reduced temperature having been stripped of their heat
energy by transfer to the fluid 34. The heat energy stored in
Appeal No. 97-2642 Page 12
Application No. 08/094,461
The test for obviousness is what the combined teachings3
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
the fluid 34 is transferred to a second fluid 56 by means of a
conventional counter-current heat exchanger 11, 60 either
within the vessel 12 (Figure 1) or external to the vessel 12
(Figure 2). The quantity of heat transferred depends in part
on the surface area and conductivity of the coiled tube 50, 62
and on the temperature gradient between the fluid 34 and the
second fluid 56. The surface area of the tube is maximized by
coiling it and it is made of a material suitable for
efficiently conducting heat from one side of the tube wall to
the other. In both the internal and external embodiments, a
pump 69 forces the second fluid 56 carrying the heat energy
from the outlet 54, 68 to a location where it can be utilized
(e.g., to passenger compartment heater 70).
In applying the test for obviousness, we reach the3
conclusion that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to either
Appeal No. 97-2642 Page 13
Application No. 08/094,461
(1) replace Raymond's oil heating system (i.e., the pressure
drop across the restrictor 82) with a heating system utilizing
exhaust gases, or (2) supplement Raymond's oil heating system
(i.e., the pressure drop across the restrictor 82) with a
preliminary heating system utilizing exhaust gases, as
suggested and taught by the heat recovery muffler system of
McEachern for the advantage of recovering and utilizing the
exhaust heat energy that would otherwise be lost to the
atmosphere especially in view of Jeppson's teaching of
utilizing hot exhaust gas to heat a screed.
We have, of course, considered all of the appellant's
arguments. However, we are not persuaded that the examiner
erred in rejecting the appealed claims.
On pages 25-29 of the brief and pages 5-6 of the reply
brief, the appellant specifically calls to our attention the
issuance of U.S. Patent No. 5,308,190, for the purpose of
showing the nonobviousness of the claimed invention. We
recognize the issuance of U.S. Patent No. 5,308,190 with
claims identical to appealed claims 20 through 25 and 30
Appeal No. 97-2642 Page 14
Application No. 08/094,461
Appealed claims 20 through 25 and 30 through 32 were4
copied from U.S. Patent No. 5,308,190 for purposes of having
an interference declared (37 CFR § 1.607).
through 32 , however, the appellant has not cited any4
authority which holds that the issuance of a patent has any
significant precedential value. In evaluating patentability
under 35 U.S.C., each application must be evaluated on the
record developed in the Patent and Trademark Office (PTO).
See In re Gyurik, 596 F. 2d 1012, 1018 n.15, 201 USPQ 552, 558
n.15 (CCPA 1979) and In re Phillips, 315 F. 2d 943, 137 USPQ
369 (CCPA 1963). To the extent any error may have been made
in the rejection or issuance of claims in a particular
application, the PTO and its examiners are not bound to repeat
that error in subsequent applications. Accord, In re
Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1849 (Fed.
Cir. 1994) ("The fact that the PTO may have failed to adhere
to a statutory mandate over an extended period of time does
not justify its continuing to do so."); In re Cooper, 254 F.2d
611, 617, 117 USPQ 396, 401 (CCPA), cert. denied, 358 U.S.
840, 119 USPQ 501 (1958) (decision in a trademark application
in accordance with law is not governed by possibly erroneous
Appeal No. 97-2642 Page 15
Application No. 08/094,461
Raymond is prior art to this application under 35 U.S.C. 5
§ 102(e) since the filing date of Raymond is prior the filing
date of this application. However, since Raymond is not "by
another," it is not prior art under 35 U.S.C. § 102(e) to U.S.
Patent No. 5,308,190.
past decisions of the Patent Office); In re Zahn, 617 F.2d
261, 267, 204 USPQ 988, 995 (CCPA 1980) ("[W]e are not saying
the issuance of one patent is a precedent of much moment.");
Ex parte Tayama, 24 USPQ2d 1614, 1618 (Bd. Pat. App. & Int.
1992) (prior issuance of patents for designs referred to as
icons has no significant precedential value in evaluating
compliance with 35 U.S.C. § 171). Furthermore, the issues of
patentability under 35 U.S.C. § 103 raised in this application
could not have been raised in determining patentability under
35 U.S.C. § 103 in U.S. Patent No. 5,308,190 since the Raymond
patent applied to reject the claims under appeal in this
application is not prior art to U.S. Patent No. 5,308,190.5
On pages 21-22 of the brief, the appellant argues that
Raymond teaches away from the claimed invention. We do not
agree. Raymond does not teach away from the use of exhaust
gases to heat his oil. While Raymond does disclose that his
Appeal No. 97-2642 Page 16
Application No. 08/094,461
invention utilizes a pressure drop across the restrictor 82
to heat the oil, this teaching of a preferred embodiment
does not constitute a teaching away. See In re Susi, 440 F.2d
442, 169 USPQ 423 (CCPA 1971) and In re Dunn, 349 F.2d 433,
146 USPQ 479 (CCPA 1965).
On pages 13-21 of the brief and pages 3-4 of the reply
brief, the appellant argues that there is no suggestion in any
of the cited references that an exhaust heater could be used
to heat a screed passively and indirectly. We do not agree.
Initially we note that while there must be some teaching,
reason, suggestion, or motivation to combine existing elements
to produce the claimed device, it is not necessary that the
cited references or prior art specifically suggest making the
combination (see B.F. Goodrich Co. v. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed. Cir.
1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)) as the appellants would apparently have
us believe. Rather, as stated previously in footnote 3, the
test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in
Appeal No. 97-2642 Page 17
Application No. 08/094,461
the art. Moreover, all that a reference discloses must be
evaluated for what it would have fairly taught one of ordinary
skill in the art (see In re Boe, 355 F.2d 961, 964, 148 USPQ
507, 510 (CCPA 1966)) and in evaluating such references it is
proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom (see In
re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)).
After considering the collective teachings of the applied
prior art, we agree with the examiner that it would have been
obvious to one of ordinary skill in the art at the time of the
appellant's invention to augment or replace Raymond's oil
heating system (i.e., the pressure drop across the restrictor
82) with a heating system utilizing exhaust gases as suggested
and taught by McEachern for the advantage of recovering and
utilizing the exhaust heat energy of Raymond's internal
combustion engine that would otherwise be lost to the
atmosphere especially in view of Jeppson's teaching of
utilizing hot exhaust gas to heat a screed.
Appeal No. 97-2642 Page 18
Application No. 08/094,461
In proceedings before the PTO, claims in an application6
are to be given their broadest reasonable interpretation
consistent with the specification, and that claim language
should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Moreover, limitations are not to be read into the claims from
the specification. In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
On pages 30-31, 34 and 40-41 of the brief and pages 6 and
8 of the reply brief, the appellant argues that the system of
Raymond is not a "closed loop." Claims 4, 13 and 32 recite
that the liquid circulates in a "closed loop." In our view,
the broadest reasonable interpretation of the term "closed6
loop" as used herein is that a flow path recirculates the
liquid and the flow path is not constantly exposed to the
atmosphere. The flow path of oil in Raymond is a closed loop.
Contrary to the appellant's argument, the mere fact that
Raymond's loop includes the reservoir 50 does not by
definition make the loop open. Raymond's reservoir 50 must be
closed (i.e., not constantly exposed to the atmosphere) since
he teaches that the reservoir 50 contains an air space. The
flow path of the second fluid 56 in McEachern is a closed
loop. It is our opinion that the modified flow path suggested
Appeal No. 97-2642 Page 19
Application No. 08/094,461
by the prior art as combined above would have been in a closed
loop.
On page 31 of the brief and page 6-7 of the reply brief,
the appellant argues that the claim 5 limitation of heating
the oil to a temperature between 250°F and 300°F is not
suggested by the applied prior art. We do not agree. Raymond
clearly teaches (column 1, lines 45-48) that an oil
temperature of about 275°F is needed to establish the desired
screed temperature of about 200°F. It is our opinion that the
combined teachings of the applied prior art as combined above
would have heated the oil to a temperature of about 275°F
especially since the heat exchange units on the screed would
not have been altered by the combined teachings of the applied
prior art.
On page 32 of the brief and page 7 of the reply brief,
the appellant argues that the return line recited in claim 10
is not suggested by the applied prior art. We do not agree.
As set forth above, it is our opinion that the combined
teachings of the applied prior art would have suggested
Appeal No. 97-2642 Page 20
Application No. 08/094,461
replacing Raymond's oil heating system (i.e., the pressure
drop across the restrictor 82) with a heating system utilizing
exhaust gases. The resulting structure would have the oil
returned in a return line from the second heat exchanger
(i.e., Raymond's heat exchanger tubes 46) to the first heat
exchanger (i.e., McEachern's heat exchanger 11) and the oil
fed in a feed line from the first heat exchanger (i.e.,
McEachern's heat exchanger 11) to the second heat exchanger
(i.e., Raymond's heat exchanger tubes 46).
On page 33 of the brief, the appellant argues that the
flexible portions of the feed and return lines recited in
claim 11 is not suggested by the applied prior art. We do not
agree. Raymond teaches that flexible hoses 86, 87 transmit
the oil to the heat exchange tubes 46 and that flexible hose
49 returns the oil. It is our opinion that the combined
teachings of the applied prior art as combined above would
have suggested portions of the feed and return lines leading
from the paving machine to the floating screed be flexible as
suggested and taught by Raymond's hoses 49, 86 and 87.
Appeal No. 97-2642 Page 21
Application No. 08/094,461
Claim 20 recites circulating means which as disclosed in7
the specification is a low-pressure pump.
On pages 34-35 and 37 of the brief and page 8 of the
reply brief, the appellant argues that the low-pressure pump
recited in claims 13 and 20 is not suggested by the applied7
prior art since the pump 78 of Raymond is a high-pressure
pump. We do not agree. In our view, the claimed a low-
pressure pump reads on the pump 69 of McEachern since (1) the
appellant's disclosure does not specify the pressure at which
their low-pressure pump 32 operates, (2) the pump 69 of
McEachern would appear to operate at a pressure much lower
than Raymond's pump 78, and (3) the pump 69 of McEachern would
need to operate only at a pressure sufficient to assure
circulation of the fluid through the system. Thus, it is our
opinion that the combined teachings of the applied prior art
as combined above would have included a low-pressure pump as
suggested and taught by McEachern.
For the reasons set forth above, we sustain the
examiner's rejection of claims 1, 2, 4 through 7, 10, 11, 13
Appeal No. 97-2642 Page 22
Application No. 08/094,461
through 16, 18, 19, 20, 22, 23, 24 and 30 through 32 under 35
U.S.C. § 103.
On pages 33-34 and 42 of the brief, the appellant argues
that the plurality of flexible hoses bridging a flexible
portion of the screed recited in claims 12 and 34 is not
suggested by the applied prior art. We agree. The examiner's
conclusion of obviousness (answer, pp. 7, 16 and 19) has no
factual support. On page 41 of the brief, the appellant
argues that the single serpentine heat exchanger having a
plurality of rigid channels mounted on opposed sides of the
screed recited in claim 33 is not suggested by the applied
prior art. We agree. The examiner's conclusion of
obviousness (answer, p. 19) has no factual support.
The conclusion that the claimed subject matter is obvious
must be supported by evidence, as shown by some objective
teaching in the prior art or by knowledge generally available
to one of ordinary skill in the art that would have led that
individual to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d
Appeal No. 97-2642 Page 23
Application No. 08/094,461
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Since the
subject matter of claims 12, 33 and 34 would not have been
obvious under 35 U.S.C. § 103 based on the applied prior art,
we reverse the examiner's rejection of claims 12, 33 and 34.
Claims 3, 8, 16-19, 21, 25 and 35-37
Claims 3, 8, 16 through 19, 21, 25 and 35 through 37 were
rejected under 35 U.S.C. § 103 as being unpatentable over
Raymond in view of Jeppson and McEachern as applied to claims
1, 2, 4 through 7, 10 through 16, 18, 19, 20, 22, 23, 24 and
30 through 34 above, and further in view of McConnell.
McConnell discloses a heat exchanger system for utilizing
the exhaust gases of an internal combustion engine to heat
liquid. McConnell teaches that his system is not limited in
its application to hot water type cleaning systems since the
energy obtained by way of heated liquid may be utilized in
many other applications (column 1, lines 12-15 and column 4,
lines 35-39). As shown in Figure 1, an internal combustion
engine exhaust manifold 10 has exhaust pipes 11 and 12
extending therefrom and connecting to a main heat exchanger
Appeal No. 97-2642 Page 24
Application No. 08/094,461
13. The engine 29 has two exhaust ports which correspond with
the respective exhaust pipes 11 and 12 such that exhaust gases
discharged from the engine pass immediately into the pipes 11
and 12 and thereafter to the main heat exchanger 13. The heat
exchanger 13 consists essentially of a pair of concentric
copper tubes 14 and 15, respectively, which extend between
opposed end plates 16 and 17. An annular water jacket is
provided in the gap between the inner tube 15 and the outer
tube 14. The exhaust pipes 11 and 12 are connected to the
heat exchanger 13 in a manner whereby exhaust gases from the
engine pass into the bore of the inner tube 15. A secondary
exhaust pipe 21 is connected to the heat exchanger 13 and
provides an outlet for exhaust gases entering the bore of
inner tube 15 via the exhaust pipes 11 and 12. The secondary
exhaust pipe 21 carries the exhaust gases to an exhaust system
appropriate to the particular engine where such exhaust gases
are dissipated. A hot water circuit consisting essentially of
a copper tube 23 provides a serial circuit via auxiliary heat
exchangers in the form of coils formed in the copper tube 23
around the exhaust pipes 11 and 12 and the secondary exhaust
pipe 21. The serial circuit includes a pump 24 and a holding
Appeal No. 97-2642 Page 25
Application No. 08/094,461
tank 25. The holding tank 25 stores hot water produced by the
system which is returned to the tank 25 from the heat
exchanger 13 via a hose
connected to a copper tube 26 which is an extension of the
copper tube 23 on the primary or input side of the heat
exchanger 13. The pump 24 draws water from the bottom of the
holding tank 25 and pumps the water through the copper tube 23
in its path around the various exhaust pipes. After passing
around the exhaust pipes in contact therewith the copper tube
23 is connected via a hose to an inlet 27 in the outer tube 14
of the heat exchanger 13, adjacent one end thereof. Water in
the copper tube 23 therefore enters the water jacket 20 and is
able to pass along
the length of the heat exchanger 13 to an outlet 28 at the
opposite end of the heat exchanger 13. Once passing out of
the heat exchanger 13 the water returns to the holding tank 25
from which it may be drawn on to the remainder of the system
(not shown) or recirculated by the pump 24 to be further
heated.
Appeal No. 97-2642 Page 26
Application No. 08/094,461
We agree with the appellant (brief, pp. 44-47, 49 and 50)
that the details of the booster heater recited in dependent
claims 3, 17, 36 and 37 and independent claim 8 are not taught
or suggested by the applied prior art. Specifically, the
applied prior art does not suggest or teach a fuel-fired
booster heater (claims 3 and 8), a third heat exchanger which
receives heat from a burner (claim 17), or a fuel-fired burner
(claims 36 and 37). Since the subject matter of claims 3, 8,
17, 36 and 37 would not have been obvious under 35 U.S.C. §
103 based on the applied prior art, we reverse the examiner's
rejection of claims 3, 8, 17, 36 and 37.
With regard to claims 16, 18 and 19, we have affirmed the
rejection of these claims above based on the combined
teachings of Raymond, Jeppson and McEachern. The additional
teachings of McConnell are merely surplusage and does not
alter our view that the combined teachings of the applied
prior art would have suggested the claim subject matter of
claims 16, 18 and 19. In that regard, it is our view that
when Raymond's oil heating system (i.e., the pressure drop
across the restrictor 82) has been augmented with a heating
Appeal No. 97-2642 Page 27
Application No. 08/094,461
system utilizing exhaust gases as suggested and taught by
McEachern interposed upstream of Raymond's restrictor 82, the
claimed additional heating of claim 16 and the booster heater
of claims 18 and 19 read on the heating that would take place
by the pressure drop across Raymond's restrictor 82.
Accordingly, the examiner's rejection of claims 16, 18 and 19
under 35 U.S.C. § 103 based on the combined teachings of
Raymond, Jeppson, McEachern and McConnell is affirmed.
With regard to claims 21, 25 and 35, we agree with the
examiner (answer, p. 9) that it would have been obvious to one
of ordinary skill in the art at the time the invention was
made to further modify Raymond's system by transferring heat
to the oil from the engine's exhaust by coiling the oil pipe
around an exhaust pipe as suggested and taught by McConnell.
We do not agree with the appellant's argument that
McConnell is non-analogous art for the reasons set forth
above. The only other argument (brief, p. 49, reply brief,
pp. 12-13) raised is that the single serpentine heat exchanger
recited in claim 35 is not suggested by the applied prior art.
Appeal No. 97-2642 Page 28
Application No. 08/094,461
We note that we have reversed the examiner's rejection8
of claim 33 above which recites that the single serpentine
heat exchanger has a plurality of rigid channels mounted on
opposed sides of the screed. Claim 35 does not recite this
same limitation.
We do not agree. The single serpentine heat exchanger recited
in claim 35 does not define over the two serpentine heat
exchangers on the opposed sides of the screed taught by
Raymond. Thus, the claimed single serpentine heat exchanger8
reads on one of the two serpentine heat exchangers taught by
Raymond.
For the above reasons, the examiner's rejection of claims
21, 25 and 35 under 35 U.S.C. § 103 based on the combined
teachings of Raymond, Jeppson, McEachern and McConnell is
affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 8, 10 through 25 and 30 through 37 under 35
U.S.C.
Appeal No. 97-2642 Page 29
Application No. 08/094,461
§ 103 is affirmed with respect to claims 1, 2, 4 through 7,
10, 11, 13 through 16, 18 through 25, 30 through 32 and 35,
but is reversed with respect to claims 3, 8, 12, 17, 33, 34,
36 and 37.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2642 Page 30
Application No. 08/094,461
ANDREW J. NILLES
NILLES & NILLES
777 EAST WISCONSIN AVENUE
SUITE 2000
MILWAUKEE, WI 53202
APPEAL NO. 97-2642 - JUDGE
NASE
APPLICATION NO. 08/094,461
APJ NASE
APJ McQUADE
APJ FRANKFORT
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 01 May 98
FINAL TYPED: