Ex Parte Eller et al

Patent Trial and Appeal Board

May 2, 2018

13708457 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/708,457 12/07/2012
27820 7590 05/04/2018
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Michael R. ELLER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1402-036 7019
EXAMINER
RUPPERT, ERIC S
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. ELLER, SCOTT M. MAURER, and
NICHOLAS J. NAGURNY 1
Appeal2017-003136
Application 13/708,457
Technology Center 3700
Before STEVEN D. A. McCARTHY, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge OSINSKI.
Opinion Concurring filed by Administrative Patent Judge McCARTHY.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
1 Lockheed Martin Corporation ("Appellant") is the Applicant as provided
in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br.
1.
Appeal2017-003136
Application 13/708,457
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4--11, and 20-25, which are all of the pending
claims. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A desalination vapor-fin heat exchanger condenser
compnsmg:
a shell forming:
a seawater inlet configured to receive seawater;
a seawater outlet configured to convey the seawater;
a moist air inlet;
a moist air outlet; and
a condensate outlet;
a plurality of aluminum extruded tubes having respective
exterior surfaces, the plurality of aluminum extruded tubes
fluidically coupled to the seawater inlet and the seawater outlet
configured to transport the seawater from the seawater inlet to
the seawater outlet;
graphite foam comprising graphitic ligaments bonded to
the respective exterior surfaces of the plurality of aluminum
extruded tubes, the graphite foam in fluidic communication with
the moist air inlet and the moist air outlet and configured to
condense water from the moist air inlet and pass the water to the
condensate outlet; and
a plurality of machined channels formed in the graphite
foam, the plurality of machined channels extending from a first
2 Claims 2, 3, and 12-19 are cancelled. Response to Non-Final Office
Action (Dec. 11, 2015).
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Application 13/708,457
end of the graphite foam to a second end of the graphite foam,
each machined channel comprising:
a machined planar bottom surface; and
two machined planar side surfaces.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Geiringer
Burne
O'Neal
Heikkila
Margiott
Hendricks
Dupree
Zuili
Madex
us 3,489,654
us 3,595,310
us 5,046,331
US 2002/0121359 Al
US 6,537,351 B2
US 2004/0194944 Al
US 2007/0228113 Al
US 7,762,101 Bl
DE 102 21 138 Al
THE REJECTIONS
Jan. 13, 1970
July27, 1971
Sept. 10, 1991
Sept. 5, 2002
Mar. 25, 2003
Oct. 7, 2004
Oct. 4, 2007
July 27, 2010
May 2, 2004
I. Claims 4 and 5 stand rejected under 35 U.S.C. § 112, fourth
paragraph as failing to further limit the apparatus of claim 1. Final
Act. 2.
II. Claims 1, 6-10, 24, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Margiott, Hendricks, and O'Neal. Id. at 2-7.
III. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Margiott, Hendricks, O'Neal, and Geiringer. Id.
at 7-8.
IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Margiott, Hendricks, 0 'Neal, and Zuili. Id. at 8-9.
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Application 13/708,457
V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Margiott, Hendricks, O'Neal, Madex, and Heikkila. Id. at 9-
10.
VI. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Margiott, Hendricks, O'Neal, and Burne. Id. at
10-11.
VII. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Margiott, Hendricks, O'Neal, and Dupree. Id. at 11.
OPINION
Rejection I
Claim 4 recites "[t]he desalination vapor-fin heat exchanger condenser
of claim 1 used for flash evaporation in a multi-stage flash evaporation
system." Appeal Br. 14 (Claims App.). Claim 5 recites "[t ]he desalination
vapor-fin heat exchanger condenser of claim 4 used to enhance distillation in
a multi-effect distillation evaporation system." Id.
The Examiner determines that these dependent claims merely provide
a "method of using the apparatus of claim 1" and "fail[] to further limit the
apparatus of claim 1 in any way." Final Act. 2. Appellant responds that
"claim 4 further limits the claimed subject matter to use in a 'multi-stage
flash evaporation system"' and that "claim 5 further limits the claimed
subject matter to its use to 'enhance distillation in a multi-effect distillation
evaporation system."' Appeal Br. 6 (emphasis omitted).
We find Appellant's argument unconvincing. The statements of
intended use in claims 4 and 5 do not further limit the structure of the
claimed "desalination vapor-fin heat exchanger condenser," but merely
specify how the claimed condenser is used. Claims 4 and 5 do not positively
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Application 13/708,457
claim the identified systems or any of their components. Moreover, we are
not persuaded that use of the condenser for either flash evaporation in a
multi-stage flash evaporation system (claim 4) or for enhancing distillation
in a multi-effect distillation evaporation system (claim 5) affects how the
apparatus of claim 1 is configured. "An intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates." Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). As such, claims 4 and 5 do not further limit the claim from
which they depend, and we sustain the rejection of claims 4 and 5 under 3 5
U.S.C. § 112, fourth paragraph.
Rejection II
Claims 1, 6---8, and 10
The Examiner relies on Margiott for many of the limitations of
independent claim 1, including, inter alia, "graphite foam comprising
graphitic ligaments bonded to the respective exterior surfaces of the plurality
of ... extruded tubes," as claimed. Final Act. 3. In particular, the Examiner
points to Margiott's teaching of an "open cell foam component includ[ing] a
monolithic lattice" and having "a plurality of coolant passage tubes
embedded inside of the foam." Margiott 1:7-16; see also id. at 1:51---60
("The foam includes a plurality of interconnected open cells or pores which
are contained in a lattice. . . . [T]ubes may be embedded in the foam
monolith.").
The Examiner acknowledges that "Margiott does not teach ... a
plurality of machined channels are formed in the graphite foam, the plurality
of machined channels extending from a first end ... to a second end ... ;
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Application 13/708,457
each machined channel comprising[:] a machined planar bottom surface; and
two machined planar side surfaces." Final Act. 3. 3 The Examiner finds that
Hendricks teaches ... a plurality of machined channels (see
channels between "carbon nanotube structure" - 126; Fig. 5 &
"path through channel" -figure below) are formed in the graphite
foam, the plurality of machined channels extending from a first
end of the graphite foam to a second end of the graphite foam
(see top and bottom ends of structure" - 126; Fig. 5), each
machined channel comprising: a machined planar bottom surface
(see bottom of "path through channel"-figure below); and two
machined planar side surfaces (see sides of "path through
channel"-figure below).
Id. at 3--4. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art "to have used a heat exchanger as taught by
Margiott to include the ... channels of Hendricks[] in order to ... increase
the heat-transfer characteristics of the carbonaceous structure." Id. at 4
(citing Hendricks i-f 52). The Examiner also finds that "the product taught by
Margiott as modified is the same as or makes the product claimed obvious,
meeting the limitation of the claim" and "[t]he fact that the channels and
surfaces are 'machined' does not change the end product of providing
channels in the graphite foam." Id. at 5.
Appellant argues that "[a] 'machined' channel has a specific structure
that is different from a channel that is not machined," and in particular, "a
3 The Examiner also finds that Margiott does not teach that (i) its tubes are
aluminum and (ii) its heat exchanger is housed within a shell. Final Act. 3,
5. The Examiner finds that Hendricks teaches aluminum tubes (id. at 3
(citing Hendricks i-f 34)) and that O'Neal teaches a heat exchanger housed
within a shell (id. at 5 (citing O'Neal 2:50-60) and concludes that it would
have been obvious to modify Margiott in accordance with these teachings
(id. at 3, 5). Appellant does not challenge these particular findings or
conclusions.
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Application 13/708,457
'machined channel' is a channel that has a specific structure as a result of
being turned, shaped, planed, or milled by machine operated tools." Appeal
Br. 8-9. Appellant has not asserted what type of specific structure is
achieved as a result of machining, let alone that whatever process is used in
Hendricks to create the pathways (through which external medium 19, 119
flows) cannot achieve such specific structure. We do not see where
Appellant's Specification provides guidance regarding the specific structure
achieved by machining, and accordingly, the scope of the description is so
broad as to extend to any finish that may be achieved as a result of being
turned, shaped, planed, or milled by machine operated tools. The Examiner
has made a finding that the pathways of Hendricks are the same as machined
channels. Final Act. 5. Appellant has not adequately explained how the
pathways of Hendricks lack a finish that may be achieved as a result of
being turned, shaped, planed, or milled by machine operated tools. See In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) ("Where a product-by-process
claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.").
Appellant also argues that "it would be impracticable, if not
impossible, to form machined channels in the carbon nanotubes disclosed in
Hendricks at all." Appeal Br. 9. "The patentability of a product does not
depend on its method of production. If the product in the product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process." In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (citations
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omitted). Consequently, the relevant inquiry is not whether the pathways of
Hendricks are, or can be, formed by machining, but rather whether the
pathways of Hendricks, however they are formed, are the same as or render
obvious the claimed product. As described above, Appellant has not
persuaded us that there is an unobvious difference between the claimed
channels and the pathways of Hendricks.
Appellant additionally argues that "the carbon nanotubes of Hendricks
are not equivalent to or interchangeable with the graphite foam of Margiott"
and there is no indication that the carbon nanotube structure of Hendricks
"can constitute a foam at all, let alone a graphite foam." Appeal Br. 9, 10.
Appellant's implication is that Margiott' s graphite foam is not "combinable"
with the carbon nanotubes of Hendricks. Id. at 9 (emphasis omitted); see
also id. at 10 ("[B]ecause the carbon nanotubes of Hendricks are not suitable
for combination with the graphite foam of Margiott, a person of ordinary
skill in the art would not have a reason to combine Hendricks with Margiott
in the manner suggested by the Final Office Action."). Simply that there are
differences between two references is insufficient to make a prima face case
of obviousness impossible. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed.
Cir. 1992). That is, simply because Hendricks lacks a graphite foam does
not prevent Hendricks from leading one of ordinary skill in the art to provide
the pathways/channels of Hendricks in the graphite foam of Margiott. The
Examiner finds that the combination teaches the claimed elements and
concludes that one of ordinary skill in the art would be led to include the
pathways/channels of Hendricks in the graphite foam of Margiott "to
increase the heat-transfer characteristics of the carbonaceous structure ... by
providing channels." Final Act. 4 (citing Hendricks i-f 52). Appellant does
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not specifically address the Examiner's articulated reasoning or adequately
explain why the reasoning is in error.
Appellant further argues that "there is no indication in Hendricks or
anywhere else that the carbon nanotubes of Hendricks could be safely used
for desalinization purposes." Appeal Br. 10. Appellant's argument is not
persuasive of error in that the Examiner's rejection is not predicated on
bodily incorporation of the carbon nanotubes of Hendricks into the
condenser assembly of Margiott, but merely on the inclusion of channels in
the graphite foam of Margiott.
Appellant also argues that "both Margiott and Hendricks fail to teach
or suggest that either of the graphite foam or carbon nanotubes comprise
'graphitic ligaments,' as recited in Appellant's claim 1." Appeal Br. 10
(emphasis omitted). The Examiner takes the position that "a 'lattice'
structure of 'graphite' (see Col. 1., lines 50-60) as explicitly disclosed by
Margiott meets the claim limitation of' graphitic ligaments,' given the plain
meaning of the phrase and being consistent with the [S]pecification of the
instant application." Ans. 15. Appellant has not responded with sufficient
particularity to the Examiner's specific findings regarding Margiott' s
disclosure of graphitic ligaments (Final Act. 3; Ans. 15) so as to persuade us
of error in the Examiner's finding.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of independent claim 1 is rendered
obvious by Margiott, Hendricks, and O'Neal. We sustain the rejection of
claim 1, and claims 6-8 and 10 for which Appellant relies on the same
arguments and reasoning as independent claim 1 (Appeal Br. 11 ), under 35
U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal.
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Claims 9, 24, and 25
Although Appellant purports to present "additional reason[s]" why
claims 9, 24, and 25 "are independently allowable" (Appeal Br. 11 ),
Appellant's arguments essentially boil down to challenging whether the
references teach "machined channels" (id.). For the same reasons described
above, we do not find that the Examiner erred in concluding that the subject
matter of claims 9, 24, and 25 is rendered obvious by Margiott, Hendricks,
and O'Neal. We sustain the rejection of claims 9, 24, and 25 under 35
U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal.
Rejections III-VII
In contesting the rejections of claims 4, 5, 11, and 20-23, Appellant
relies on the same arguments and reasoning we found unpersuasive in
connection with independent claim 1. See Appeal Br. 11-13. Accordingly,
we also sustain the rejections, under 35 U.S.C. § 103(a), of: claims 4 and 5
as unpatentable over Margiott, Hendricks, O'Neal, and Geiringer; claim 11
as unpatentable over Margiott, Hendricks, O'Neal, and Zuili; claim 20 as
unpatentable over Margiott, Hendricks, O'Neal, Madex, and Heikkila;
claims 21 and 22 as unpatentable over Margiott, Hendricks, O'Neal, and
Burne; and claim 23 as unpatentable over Margiott, Hendricks, 0 'Neal, and
Dupree.
DECISION
The Examiner's decision to reject claims 4 and 5 under 35 U.S.C.
§ 112, fourth paragraph is affirmed.
The Examiner's decision to reject claims 1, 6-10, 24, and 25 under 35
U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal is
affirmed.
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The Examiner's decision to reject claims 4 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Geiringer is
affirmed.
The Examiner's decision to reject claim 11 under 35 U.S.C. § 103(a)
as unpatentable over Margiott, Hendricks, 0 'Neal, and Zuili is affirmed.
The Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a)
as unpatentable over Margiott, Hendricks, 0 'Neal, Madex, and Heikkila is
affirmed.
The Examiner's decision to reject claims 21 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Burne is
affirmed.
The Examiner's decision to reject claim 23 under 35 U.S.C. § 103(a)
as unpatentable over Margiott, Hendricks, 0 'Neal, and Dupree 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
11
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. ELLER, SCOTT M. MAURER, and
NICHOLAS J. NAGURNY
Appeal2017-003136
Application 13/708,457
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge, concurring.
I respectfully disagree with my colleagues' decision sustaining the
2 rejection of claim 4 under pre-AIA 35 U.S.C. § 112, fourth paragraph, as
3 being in improper dependent form. Claim 1, as reproduced in my
4 colleagues' opinion, recites a "desalination vapor-fin heat exchanger
5 condenser." For example, claim 1 is sufficiently broad to encompass a
6 desalination vapor-fin heat exchanger as a separate article of manufacture.
7 Dependent claim 4 recites "[t]he desalination vapor-fin heat exchanger
8 condenser of claim 1 used for flash evaporation in a multi-stage flash
9 evaporation system." Claim 4 is limited to a combination that includes both
10 the desalination vapor-fin heat exchanger of claim 1 and other structural
11 components sufficient to comprise a multi-stage flash evaporation system.
12 A mere statement of an intended use or purpose of a claimed
13 apparatus, appearing, for example, in the preamble of a claim, fails to further
Appeal2017-003136
Application 13/708,457
limit the claim where any apparatus meeting the structural limitations of the
2 claim will satisfy the recited use or purpose, that is, where the use or purpose
3 fails to exclude any structure otherwise meeting the structural limitations.
4 That is not the case here. Claim 1 is sufficiently broad to cover any
5 desalination vapor-fin heat exchanger condenser, alone or as part of an
6 evaporation system. Claim 4 is limited to a desalination vapor-fin heat
7 exchanger condenser that used in (that is, that is part of) a multi-stage flash
8 evaporation system. Hence, claim 4 is in proper dependent form because it
9 further limits claim 1. (See Appeal Brief, dated Oct. 11, 2016, at 6).
10 My view is supported by the Examiner's decision rejecting claim 1
11 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combined
12 teachings of Margiott, Hendricks and O'Neal; but rejecting claims 4 and 5
13 under§ 103(a) as being unpatentable only over the combined teachings of
14 Margiott, Hendricks, O'Neal and Geiringer. If the Examiner is correct that
15 claim 4 fails to further limit the scope of claim 1, it is unclear why the
16 Examiner requires the teachings of an additional reference to prove that
17 claim 4 would have been obvious.
18 Because I agree with my colleagues that the subject matter of claim 4
19 would have been obvious from the combined teachings of Margiott,
20 Hendricks, O'Neal and Geiringer, I concur in the rejection of those claims
21 under§ 103(a). On this basis, I concur in the result reached by my
22 colleagues.
2