Ex Parte Bugler, et al

Patent Trial and Appeal Board

Apr 19, 2017

12838003 (P.T.A.B. Apr. 19, 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.
12/838,003 07/16/2010 Thomas William BUGLER, III 086469.22401 5357
25223 7590 04/21/2017
WHITEFORD, TAYLOR & PRESTON, LLP
ATTN: GREGORY M STONE
SEVEN SAINT PAUL STREET
BALTIMORE, MD 21202-1626
EXAMINER
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
patents @ wtplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WILLIAM BUGLER, III
and DAVEY JOE VADDER
Appeal 2017-000424
Application 12/838,003
Technology Center 3700
Before WILLIAM A. CAPP, JAMES J. MAYBERRY, and
SEAN P. O’HANLON, Administrative Patent Judges
CAPP, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 39-62. We have jurisdiction under 35 U.S.C. § 6(b).1
We AFFIRM.
1 The instant case came before the Board for regularly scheduled oral
hearing on April 12, 2017. At the commencement of the hearing, Counsel
for Appellants expressly waived the right to have proceedings taken down
by a Court Reporter.
Appeal 2017-000424
Application 12/838,003
THE INVENTION
Appellants’ invention relates to evaporative heat exchangers.
Spec. 11. Claim 39, reproduced below, is illustrative of the subject matter
on appeal.
39. An evaporative indirect heat exchanger comprising:
a plenum having a generally vertical axis,
a coil assembly,
a distributor for distributing an external heat exchange liquid onto a
coil assembly,
an air mover for causing air to flow in a direction through the
plenum, and
said coil assembly mounted within the plenum such that the
external heat exchange liquid flows externally through the coil
assembly in a generally downward vertical flow direction, and the air
flows externally through the coil assembly interacting with the external
heat exchange liquid to evaporate and cool the external heat exchange
liquid and internal process fluid within the coil assembly,
wherein the coil assembly comprises inlet and outlet manifolds and
a plurality of tubes connecting the manifolds, each tube comprising a
plurality of horizontally oriented segments arranged vertically relative
to one-another in a single vertical plane, wherein each segment has a
longitudinal axis and a generally elliptical cross-sectional shape having
a major axis and a minor axis where the average of the major axis
length and the minor axis length is a nominal tube outside diameter,
and where the major axis of each segment of a tube is aligned with the
single vertical plane,
wherein the tubes are arranged in the coil assembly in a staggered
arrangement of a first and second set of alternating tubes in which each
tube in said first set of tubes is fixed in the coil assembly at a first vertical
position, and each of said second set of alternating tubes is fixed in the
coil assembly at a second vertical position which is displaced from said
first vertical position,
wherein the tubes have external elliptical spiral fins on an outer
surface of the tubes, wherein the fins have:
a spacing of 1.5 to 3.5 fins per inch (2.54 cm) along the
longitudinal axis of the tubes,
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a height extending from the outer surface of the tubes a distance
of substantially 23.8% to substantially 36% of the nominal tube
outside diameter, and
a thickness of substantially 0.007 inch (0.018 cm) to substantially
0.020 inch (0.051 cm), wherein each of the tubes of said first or
second set of alternating tubes is horizontally spaced, center-to-
center, from an adjacent tube in a same set of alternating tubes by a
distance (DH) that is substantially 100% to substantially 131% of the
nominal tube outside diameter, and
wherein each of the tubes in said first set of tubes is vertically
displaced, center-to-center, relative to adjacent tubes in said second
set of tubes by a distance (DV) that is substantially 110% to
substantially 300% of the nominal tube outside diameter.
THE REJECTIONS
The Examiner relies on Admitted Prior Art (“APA”)2 and the
following references as evidence in support of the rejections:
Newlin US 2,532,239 Nov. 28, 1950
Mathews US 3,384,165 May 21, 1968
Joekel US 4,236,299 Dec. 2, 1980
Merrill US 4,755,331 July 5, 1988
Bradley US 5,799,725 Sept. 1, 1998
Bugler US 7,296,620 B2 Nov. 20, 2007
The following rejections are before us for review:
1. Claims 39-54 and 57—62 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Admitted Prior Art, Bugler, Mathews, and Bradley.
2. Claim 55 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Admitted Prior Art, Bugler, Mathews, Bradley, and
Newlin.
2 Admitted Prior Art is derived primarily from the preambles of the original
Jepson format claims filed with Appellants’ Specification. See, e.g.,
Spec. 37, 44 (claims 1 and 31); Final Action 2.
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3. Claim 56 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Admitted Prior Art, Bugler, Mathews, Bradley, and
Joekel.
4. Claims 39-54, 57, 58, and 60—62 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Merrill, Mathews, and Bradley.
5. Claim 55 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merrill, Mathews, Bradley, and Newlin.
6. Claim 56 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merrill, Mathews, Bradley, and Joekel.
7. Claim 59 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Merrill, Mathews, Bradley, and Bugler.
OPINION
Unpatentability over Combinations Based on Merrill
Appellants argue claims 39-54, 57, 58, and 60-62 as a group. Appeal
Br. 14—15. Furthermore, Appellants acknowledge that claims 55, 56, and 59
stand or fall with claim 39. Id. at 15. We select claim 39 as representative.
See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Merrill discloses the subject matter of
claim 39 except for elliptical, spiral fins and the specifically claimed
dimensions of fin height, fin thickness, tube diameter, and tube spacing.
Final Action 7—9. The Examiner relies on Mathews as teaching the use of
spiral fins on heat exchanger tubes sprayed with external liquid. Id. at 8.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to provide Merrill with
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spiral fins.3 Id. According to the Examiner, a person of ordinary skill in the
art would have done this to increase the heat transfer from the tubes. Id.
The Examiner further concludes that it would have been obvious to arrive at
the claimed dimensions for fin spacing, fin height, fin thickness, tube
diameter, and tube spacing. Id. at 8—9. According to the Examiner, such
dimensions involve result-effective variables, the optimization of which
requires only routine skill in the art. Id. at 9.
Appellants traverse the Examiner’s rejection by arguing that Mathews
teaches away from the fin spacing and fin height of the present invention.
Appeal Br. 14.4 This argument is not persuasive. A reference does not
teach away if it merely expresses a general preference for an alternative
invention, but does not “criticize, discredit, or otherwise discourage”
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellants do not direct us to any language in Mathews
that criticizes, discredits, or otherwise discourages investigation into the
claimed fin dimensions.
Next, Appellants contend that the Examiner errs in finding that
optimization of fin height and fin spacing requires only routine skill. Appeal
Br. 15. Appellants argue that Bradley does not disclose an evaporative heat
exchanger and, instead, discloses a dry heat exchange system having a
loosely packed tube bundle with plate finned (not spiral) elliptical tubes. Id.
3 The Examiner’s Final Rejection actually says “AAPA” instead of
Merrill. Final Action 8. However, we discern from the context that this is
an inadvertent typographical error and that the Examiner intended to refer
to “Merrill” instead of AAPA.
4 Appellants advance a similar argument regarding Mathews teaching
away against the AAPA grounds of rejection. Appeal Br. 6—7.
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at 7. Appellants contend that design considerations of dry heat exchange
systems are substantially different from the design considerations of
evaporative heat exchange systems. Id. at 7—8. Appellants also argue that
Bradley discloses only plate fins, that Bradley contains no disclosure
concerning the importance of fin height, and that fin height “makes no
sense” in the context of a plate fin device. Id. at 8. Appellants contend that
optimization requires existing devices with known values for various
variables. Id. at 10. Appellants also argue that Mathews’ fin spacing and fin
height are significantly different than in the claimed invention. Id. at 15.
In response, the Examiner points out that Mathews discloses the use
of spiral fins, thereby rendering moot Appellants’ argument regarding
Bradley’s use of plate fins. Ans. 10. The Examiner summarizes the
controversy in this case as a question that, once the physical device has been
assembled, does the amount of testing and manipulation required to optimize
the result-effective variables exceed the skill level of the ordinary artisan.
See id. at 4. The Examiner concludes that the required optimization involves
only routine skill. Id. at 7—10.
Furthermore, in response to Appellants’ contention regarding different
design considerations between dry and evaporative heat exchangers, the
Examiner explains that the specific consideration raised by Bradley that
motivates the optimization of the parameters at issue is pressure drop across
the heat exchanger. Id. at 7—8 (citing Bradley, 2:60—62).
While various other aspects of evaporative and dry heat
exchangers differ, the desire to balance pressure drop vs. active
surface area is a consistent consideration between the two.
While the optimization determinations for these variables will
differ between the devices, one of ordinary skill is certainly
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capable of performing the prototyping to determine how to
optimize these variables in either case.
Id. at 8. The Examiner further explains that:
The assertions that fin spacing or fin height are not adequately
addressed with specificity by Bradley are not convincing.
Bradley is concerned with balancing the cross-section of the fin
which impedes airflow (this cross-section is formed by all of
the fin height, thickness, and spacing).
Id.
It is well settled that “[WJhere the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Applied Materials, Inc.,
692 F.3d 1289, 1295 (Fed. Cir. 2012) (quoting In reAller, 220 F.2d 454,
456 (CCPA 1955). “This rule is limited to cases in which the optimized
variable is a ‘result-effective variable.’” Id. (citing In re Antonie, 559 F.2d
618, 620 (CCPA 1977)).
In the instant case, the Examiner’s findings that fin spacing, fin
height, fin thickness, tube diameter, and tube spacing are all result-effective
variables are well supported by the record. Final Action 5 (citing Bradley,
2:35-3:10, 9:45-55).
The Bradley reference (US 5,799, 725). . . acknowledges
that the cross-sectional area presented by a fin (which results
from its height, thickness, and spacing) is a balance between
increased surface area for heat transfer and increased air
resistance (Col. 2:35-47). The Bradley reference also explains
that tube arrangement and spacing is a similar tradeoff
(Col. 3:1-6). It even explains that these two concepts are inter­
related and have to be balanced against each other (Col. 2:64-
67). As Bradley summarizes: "The number of compromises
and tradeoffs in finned coil design are numerous. All are aimed
at maximizing the efficiency of the external heat transfer,
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minimizing air flow resistance, and minimizing material costs."
(Col. 3:7-10).
Ans. 4. “A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” Applied
Materials, 692 F.3d at 1297. The Examiner’s findings with respect to result-
effective variables is supported by a preponderance of the evidence.
The fact that Appellants’ claims recite specific dimensions for each of
the result-effective variables, without more, is insufficient to establish the
non-obviousness of the claimed subject matter.
[A] claim to a product does not become nonobvious simply
because the patent specification provides a more comprehensive
explication of the known relationships between the variables
and the affected properties.
Id.
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. See, e.g., Gardner v. TEC Sys., Inc.,
725 F.2d 1338 (Fed.Cir.), cert, denied, 469 U.S. 830 (1984); In
re Boesch, 617 F.2d 272 (CCPA 1980); In re Ornitz, 351
F.2d 1013 ([CCPA] 1965); In reAller, 220 F.2d 454 ([CCPA]
1955). These cases have consistently held that in such a
situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. Gardner, 725
F.2d at 1349 (obviousness determination affirmed because
dimensional limitations in claims did not specify a device
which performed and operated differently from the prior art);
Boesch, 617 F.2d at 276; Ornitz, 351 F.2d at 1016-17; Aller,
220 F.2d at 456.
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
It is, furthermore, well settled that principles of obviousness and
routine optimization may be applied in circumstances where there is an
interaction of a plurality of result-effective variables. “The mere fact that
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multiple result-effective variables were combined does not necessarily
render their combination beyond the capability of a person having ordinary
skill in the art.” Applied Materials, 692 F.3d at 1298. While evidence that
variables interact in an unpredictable or unexpected way could render the
combination nonobvious, here Appellants provide no persuasive evidence
that tends to show anything unpredictable or unexpected in the interaction of
the variables. Id.
Finally, Appellants argue that fin height is “critical.” Appeal Br. 12.
Appellants direct our attention to the Vadder Declaration and argue that Mr.
Vadder’s testimony and test results establish that, using Bradley’s invention,
finned tubes perform no better than bare tubes in an evaporative setting. Id.
(citing Vadder Dec. 110).5 Appellants contend that spiral fin heights in the
claimed ranged “unexpectedly performs significantly and substantially
better"1 than a bare elliptical tube, or a plate finned elliptical tube. Id.
at 13-14.
In response, the Examiner points out that Mathews is relied on as
teaching the use of spiral fins in an evaporative heat exchanger setting.
Ans. 10. Thus, according to the Examiner, Appellants’ test results
comparing their spiral fins to Bradley’s plate fins are not relevant to the
claims or the application of the prior art to the claimed subject matter. Id.
Appellants’ argument and evidence concerning the criticality of the
fin height is not persuasive.
The outcome of optimizing a result-effective variable may still
be patentable if the claimed ranges are “critical” and “produce a
new and unexpected result which is different in kind and not
merely in degree from the results of the prior art.” Aller, 220
5 Declaration of Davey Joe Vadder, filed July 16, 2010.
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F.2d at 456; see Antonie, 559 F.2d at 620. Similarly, a prima
facie case of obviousness established by the overlap of prior art
values with the claimed range can be rebutted by evidence that
the claimed range is “critical” because it “achieves unexpected
results.” [citation omitted]
Applied Materials, 692 F.3d at 1297. In the instant case, Appellants’
evidence is insufficient to persuade us that the results achieved by selecting
a fin height in the claimed range were “unexpected” or are otherwise
different in kind rather than merely in degree from the evaporative heat
exchanger spiral fins of Mathews. Woodruff, 919 F.2d at 1578.
In view of the foregoing discussion, we determine 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.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims
39-62 over combinations based on Merrill.
Unpatentability of Claims 39—62
over Combinations Based on Admitted Prior Art
Appellants argue claims 39—54 and 57—62 as a group. Appeal Br. A—
14. In addition, Appellants acknowledge that claims 55 and 56 stand or fall
with claim 39. Id. at 14. We select claim 39 as representative.
Under this ground of rejection, Appellants raise essentially the same
arguments concerning the optimization of result-effective variables that we
considered and found unpersuasive with respect to the grounds of rejection
under Merrill, discussed above, and which we find equally unpersuasive
here.
Appellants also argue that Mathews and Bradley teach away from the
claimed subject matter. Appeal Br. 6—8. As with the ground of rejection
under Merrill discussed above, Appellants do not direct us to any language
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in Mathews that criticizes, discredits, or otherwise discourages investigation
into the claimed fin dimensions. Id. at 6—7. Similarly, Appellants do not
direct us to any language in Bradley that criticizes, discredits, or otherwise
discourages investigation into evaporative cooling systems. Id. at 7—8. We
reject Appellants’ teaching away arguments for essentially the same reasons
expressed above under the Merrill grounds. Fulton, 391 F.3d at 1201.
In this ground, the Examiner finds that the subject matter recited in
the preamble of Appellants’ original Jepson format claims constitutes
admitted prior art. Final Action 2—3. For example, the preamble of
Appellants’ original claim 1 recites as follows:
1. In an evaporative heat exchanger comprising a plenum
having a generally vertical longitudinal axis, a distributor for
distributing an external heat exchange liquid into the plenum,
an air mover for causing air to flow in a direction through the
plenum in a direction generally countercurrent to, generally
parallel to, or generally across the longitudinal axis of the
plenum, and a coil assembly having a major plane and being
mounted within the plenum such that the major plane is
generally normal to the longitudinal axis of the plenum and
such that the external heat exchange liquid flows externally
through the coil assembly in a generally vertical flow direction,
wherein the coil assembly comprises inlet and outlet manifolds
and a plurality of tubes connecting the manifolds, the tubes
extending in a direction generally horizontally and having a
longitudinal axis and a generally elliptical cross-sectional shape
having a major axis and a minor axis where the average of the
major axis length and the minor axis length is a nominal tube
outside diameter, the tubes being arranged in the coil assembly
such that adjacent tubes are generally vertically spaced from
each other within planes generally parallel to the major plane,
the adjacent tubes in the planes generally parallel to the major
plane being staggered and spaced with respect to each other
generally vertically to form a plurality of staggered generally
horizontal levels in which every other tube is aligned in
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the same generally horizontal level generally parallel to the
major plane, and wherein the tubes are spaced from each other
generally horizontally and generally normal to the longitudinal
axis of the tube, the improvement comprising ....
Spec. 37.
Appellants argue that the Admitted Prior Art should not be applied
against their invention because it represents “Appellants’ Own Work.”
Appeal Br. 4 (citing Appellants’ February 18, 2015 Amendment).
Appellants contend that the subject matter recited in the preambles of the
original Jepson claims “has at all times been owned Evapco, Inc., the
Appellant and owner of the present invention.” Id. at 5. Appellants rely on
Reading & Bates Constr. Co. v. Baker Energy Res. Corp., 748 F.2d 645, 650
(Fed. Cir. 1984), for the proposition that where the preamble of a Jepson
claim describes Appellants’ own work, such may not be used against the
claims. Appeal Br. 5.
In response, the Examiner points out that Appellants’ “own work”
argument is merely attorney argument that is unsupported by evidence.
Ans. 5. The Examiner further points out that evidence in the record
demonstrates that much of the preamble has previously been admitted by the
inventor to be prior art in different applications. Id. (citing US 7,296,620 B2
to Bugler III, Figs. 1 and 3a labeled as prior art).6
Section 2129 of Manual of Patent Examining Procedure provides, in
pertinent part, as follows:
III. JEPSON CLAIMS
Drafting a claim in Jepson format (i.e., the format described in
37 CFR § 1.75(e); see MPEP § 608.01(m) is taken as an
6 Thomas William Bugler, III, is named as a co-inventor in the application
currently under appeal as well as in US 7,296,620.
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implied admission that the subject matter of the preamble is the
prior art work of another. In re Font, 675 F.2d 297, 301.
MPEP § 2129 III. This section also indicates that there are situations where
the implication may be overcome.
We are not persuaded that Appellants have overcome the implied
admission. As correctly pointed out by the Examiner, much of the subject
matter recited in original claim 1 is disclosed in Bugler. Bugler issued on
November 20, 2007, on an application that was filed on March 31, 2006.
See Bugler. Thus, Bugler is statutory prior art to Appellants’ instant
application under pre-AIA 35 U.S.C. § 102(a) and (b). Appellants’ reliance
on Reading is misplaced, as Reading specifically contemplates that there
may be a “statutory basis” for citing an inventor’s own work as prior art.
See Reading, 748 F.2d at 651. We have reviewed Bugler and compared it
with the subject matter recited in preamble to Appellants’ original Jepson
claim 1 and note considerable, if not complete, overlap between the two. To
the extent that there may be one or more features that are unique to the
Jepson preamble, Appellants make no effort to parse the recitals in the
preamble to original claim 1 to identify subject matter that is not previously
disclosed in Bugler.7 Thus, we reject Appellants’ contention that the Jepson
preamble does not quality as admitted prior art.
In view of the foregoing discussion, we determine that the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
7 Furthermore, our determination that the preamble does not represent
Appellants’ “own work” is buttressed by our previous determination that the
combination of Merrill and Mathews discloses the subject matter of
claim 39, except for the specifically recited values of result-effective
variables.
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the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 39-62 over combinations based on APA.
DECISION
The decision of the Examiner to reject claims 39—62 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
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