Ex Parte Finney et al

Patent Trial and Appeal Board

Jun 28, 2016

12832283 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/832,283 07/08/2010
26712 7590 06/30/2016
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
FIRST NAMED INVENTOR
M. Parker Finney
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.
021083.00084 4146
EXAMINER
IP,SIKYIN
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipdocketing@hodgsonruss.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte M. PARKER FINNEY, LARZ IGNBERG, ANDERS KAMP,
TIMOTHY L. GOEBEL, YING GONG, and EDWARD G. ROTTMANN 1
Appeal2015-000964
Application 12/832,283
Technology Center 1700
Before BEYERL YA. FRANKLIN, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained rejection of claims 8-10, 13-15, and 20-27. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify LUVATA ESPOO OY as the Real Party in Interest.
Appeal Brief filed May 12, 2014 ("App. Br."), 2.
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Application 12/832,283
Appellants' claimed invention is directed to air conditioning and
refrigeration (ACR) tubes for use in heating exchangers of an alloy
comprising copper, nickel, tin, and optionally phosphorus. Spec. Abstract.
Independent claims 8, 20, and 25 include limitations as to tube wall
thickness. Independent claim 26 includes limitations as to tube diameter.
Independent claim 8 is illustrative:
8. An ACR tube for use in a heat exchanger, wherein the
tube comprises a copper alloy consisting of:
a) nickel at from 0.3% to 0.7% by weight; and
b) tin at from 0.3% to 0.7% by weight; and
c) phosphorus at from 0.01 % to 0.07%,
wherein naturally-occurring impurities are a maximum of
0.6% by weight and the remainder of the alloy is copper and the
tube wall thickness is 0.004 inch to 0.01 inch.
App. Br. (Claims Appendix) 11.
THE REJECTIONS
The Examiner maintains the following rejections:
I. Claim 26 stands rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written
description requirement.
II. Claims 25 and 26 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite.
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Application 12/832,283
III. Claims 8, 10, 13-15, and 20-27 stand rejected under 35
U.S.C. § 103 as unpatentable over JP '3902 in view of
Otten3 or EP '065. 4
IV. Claims 13, 14, 22, and 23 stand rejected under 35 U.S.C.
§ 103 over JP '390 in view of Otten or EP '065 and
further in view of JP '843 5 or JP '754. 6
DISCUSSION7
Appellants proffer arguments as to the indefiniteness rejection and
obviousness rejections, but fail to do so for the written description rejection.
App. Br. 3-10.
Upon consideration of the evidence and opposing contentions of the
Appellants and the Examiner, we are unpersuaded of harmful error in the
Examiner's decision rejecting the claims as unpatentable.
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make
2 Publication JP 06-094390 published April 5, 1994, Abstract and machine
translation of record, which status is not contested.
3 Otten (US 2,804,284, issued August 27, 1957).
4 Hana et al. (EP 0 859 065 Al, published August 19, 1998).
5 Publication JP 04-354843 published December 9, 1992, machine
translation of record, which status is not contested.
6 Publication JP 10-130754 published May 19, 1998, machine translation of
record, which status is not contested.
7 We refer to the Final Office Action mailed October 10, 2013 ("Final
Act."), the Appeal Brief filed May 12, 2014, the Examiner's Answer mailed
August 12, 2014 ("Ans."), and the Reply Brief filed October 14, 2014
("Reply Br.").
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a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection). The
burden of showing an error is harmful also falls on Appellant. See Shinseki
v. Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that an error
is harmful normally falls upon the party attacking the agency's
determination."); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010).
Written Description
The Examiner finds the recited tube diameter of claim 26---"wherein
the tube diameter is at least 10%, 15%, or 20% less than 0.3 mm" (emphasis
added}--lacks written description support. Final Act. 2; Ans. 3.
Appellants fail to contest this ground of rejection. Generally, App.
Br.; Reply Br. Accordingly, we sustain the written description rejection of
claim 26 proforma.
Indefiniteness
The Examiner maintains claims 25 and 26 are indefinite because each
recites a broad range together with a narrower range or limitation such that
the resulting claim does not clearly set forth the metes and bounds of the
patent protection desired. Ans. 3--4. In particular, both claims 25 and 26 set
forth dimensions-tube wall thickness and tube diameter, respectively-that
are "at least 10%, 15%, or 20% less than 0.3 mm." We are of the opinion
the Examiner's rejection is well-founded.
Appellants argue the claims are not indefinite, emphasizing that the
boundaries of different embodiments are discernible and particular phrases
discussed in MPEP § 2173.05( c) are absent. App. Br. 4-5.
Having carefully considered Appellants' arguments, we find
Appellants have failed to squarely address the identified ambiguity leading
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to indefiniteness. The issue is not that one of ordinary skill in the art cannot
discern the boundaries between different embodiments, but rather that it is
unclear whether recitation of at least 15% or 20% less are limitations or not.
Section 112, second paragraph, requires that "[t]he specification ...
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
"As the statutory language of 'particular[ity]' and 'distinct[ness]' indicates,
claims are required to be cast in clear-as opposed to ambiguous, vague,
indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014).
Our reviewing court has held that when the USPTO has initially
issued a well-grounded rejection that identifies ways in which the language
in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly reject the
claim as failing to meet the statutory requirement that the claims be definite.
Id. at 1313-1314. The court explained a satisfactory response can take the
form of modification of the language identified as unclear, a separate
definition of the unclear language, or, in appropriate circumstances,
"persuasive explanation for the record of why the language at issue is not
actually unclear." Id. at 1311.
On the record before us, we do not find Appellants have met the
burden to resolve the ambiguity of the claims identified by the Examiner
and, accordingly, we affirm the rejection of claims 25 and 26 as indefinite.
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Obviousness
Rejection over JP '390 in view of Otten or EP '065; claims 8, 10, 13-
15, and 20-27
Appellants group claims subject to the obviousness rejections noting
that "claims 8, 10, 13-15, and 20-27 stand or fall together" and that "claims
25 and 26 stand or fall together." App. Br. 5. Therefore, we confine our
discussion to claims 8 and 25. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on JP '3 90 for its disclosure of copper alloy tubes
used for an air conditioning refrigerator, including the copper alloy's
composition of0.1to5wt.% of Ni, 0.01to2wt.% of Sn, 0.005 to 0.05wt%
of P, the residue of Cu and unavoidable impurities. Ans. 4, 6-7 (citing JP
'390 abstract, i-fi-f l-2, 6, 25 (Table 1 )). JP '390 further discloses the copper
alloy is rolled to 0.4 mm thick plate that is then welded into an ACR tube.
Ans. 7 (citing JP '390 i-fi-122-23).
The Examiner relies on Otten for its disclosure of heat exchanger
and/or tube wall thickness of 0.005 inch to 0.01 inch. Ans. 4 (citing Otten
col. 5, 11. 12-19). Otten further discloses that the tubes can be formed of
various metals, including stainless steel, aluminum, copper and copper
alloys. Ans. 4, 10-12; Otten col. 5, 11. 12-16, 55-58, col. 6, 11. 3-7.
The Examiner relies on EP '065 for its disclosure of a Ni-Sn-P-Cu
alloy sheet of 0.2 mm thickness and grain size of up to 50 micrometers for
workability. Ans. 4-5 (citing EP '065 5, 11. 3-6, 20-23).
The Examiner maintains that where the general conditions of a claim
are discovered in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art---citing In re Aller, 220 F .2d 454
(CCPA 1955}-and that discovering an optimum value of a result effective
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variable involves only routine skill in the art---citing In re Boesch, 617 F .2d
272 (CCPA 1980). Ans. 5.
The Examiner concludes de facto that one of ordinary skill in the art
at the time of the invention, informed by the cited prior art, would have been
led to the claimed ACR tube, including to optimum or workable ranges as to
grain size and tube wall thickness where grain size is a result effective
variable for improving workability and tube wall thickness is a result
effective variable as to weight of the heat exchanger where reduced weight
is desired. Ans. 5.
Appellants proffer four general arguments that the Examiner erred in
rejecting the claims as unpatentable for obviousness.
First, Appellants argue that the Examiner improperly relies on
hindsight because there is no rationale to combine JP '3 90 with Otten or
EP '065. App. Br. 5-6. Appellants' argument emphasizes JP '390 is not
concerned with the thickness of the tubes or the pressure they withstand, that
Otten fails to disclose the particular alloy set forth in the claims or the wall
thickness for tubes of the claimed alloy, and that EP '065 is not related to
heat exchanger tubes. App. Br. 5-6. Appellants further argue that selecting
an alloy of JP '390 and imparting to it features disclosed in Otten and EP
'065 is only possible using impermissible hindsight. App. Br. 6.
We find Appellants' arguments unpersuasive because they fail to
squarely address the Examiner's reasoning grounded on finding workable or
optimum ranges values for both the tube wall thickness and grain size where
JP '390 discloses heat transfer tubes of alloys meeting the limitations as to
alloy composition where the tubes are welded tubes formed from alloy
sheets (Ans. 6-7, 9-10; JP '390 i-fi-16, 25 (Table 1)) and, as to the tube wall
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thickness, Otten discloses using a thickness sufficient to withstand high
temperature and pressure, which for some materials can be on the order of
0.005 to 0.01 inches (Ans. 7-8, citing Otten, col. 5, 11. 12-16, col. 6, 11. 3-7)
and EP '065 discloses an alloy composition overlapping that of JP '390 and
that claimed that can be processed into sheets of 0.2 mm thickness (Ans. 6-
8, citing EP '065, 5, 11. 20-23 ), and, as to grain size, EP '065 explicitly
discloses grain size up to 50 micrometers for workability (Ans. 8, citing EP
'065, 5, 11. 3-6).
Appellants' arguments contending there is no rationale for the
combination in the cited prior art are further unpersuasive of error because
the rationale for combining or modifying the prior art "may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself." Dystar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006).
Being unpersuaded that the Examiner's determination is unsupported
by the applied prior art and/or are otherwise based on teachings that are
insufficient to support the conclusion of obviousness, we are not persuaded
the Examiner relied on impermissible hindsight. If the Examiner has
articulated a reason having rational underpinnings for making a proposed
modification or combination of prior art teachings, then that articulated
reasoning can demonstrate the combination is not based on hindsight. See In
re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (requiring "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness") (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)).
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Second, Appellants argue that EP '065 is non-analogous art because it
is neither from the same field of endeavor nor reasonably pertinent to the
problem addressed by the inventor. App. Br. 7. Appellants contend EP '065
is not within the same field of endeavor because it relates to copper alloys
for use in electrical connectors rather than heat exchanger tubes and is not
reasonably pertinent because the problem addressed is electrical
conductivity rather than thermal conductivity. App. Br. 7.
In the Reply Brief, Appellants contend the Examiner-in relying on
overlapping alloy composition of EP '065, JP '390, and that claimed and
that EP '065's alloy can be processed to a 0.2 mm thickness and have a grain
size of up to 50 micrometers for workability and solderability as required by
JP '390---fails to address the argument that EP '065 is non-analogous art.
Reply Br. 4 (citing Ans. 8, 10).
Appellants' argument is not persuasive of reversible error because the
cited teachings of EP '065 are reasonably pertinent to the instant invention
as they relate to the process of manufacturing items made of related,
overlapping alloy compositions to those set forth in the claims even if the
particular items formed differ in shape or---once manufactured-are used for
different purposes.
Third, Appellants argue that there is no reason to combine the
teachings of JP '390 with Otten or EP '065 where Appellants contend the
references have differing purposes and those purposes are not to solve "the
problem of providing heat exchanger tubes for a new cooling media." App.
Br. 7-8. Appellants' argument is grounded on the Examiner having failed to
identify a basis for the parameters for which it is routine to discover
workable ranges or to optimize. App. Br. 8.
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Appellants' argument is not persuasive of reversible error because it
fails, as explained above in our discussion of Appellants' first argument, to
address the Examiner's reasoning grounded on determining optimum or
workable ranges as to grain size and tube wall thickness where grain size is a
result effective variable for improving workability and tube wall thickness is
a result effective variable as to weight of the heat exchanger where reduced
weight is desired. Ans. 5. As to differences in purpose, Appellants'
argument is without persuasive merit because, as also explained above, the
rationale for combining or modifying the prior art "may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself." Dystar Textilfarben GmbH, 464 F.3d at
1361. It follows, on the record before us, that the Examiner's prima facie
case grounded on optimization of a result effective variable has not been
rebutted.
Fourth, Appellants argue the relied on combination of JP '390 and
Otten or EP '065 fails to teach or suggest the recited tube wall thickness or
burst pressure. App. Br. 8-9. Appellants contend that none of these
references teach a tube having both an alloy composition and a tube wall
thickness as set forth by the claims. App. Br. 9. Further, as to claim 25,
Appellants further argue that the limitation of having a lesser tube wall
thickness than 0.3 mm and having the same burst pressure as a tube with
tube wall thickness of 0.3 mm made of C122 is not taught or suggested by
the cited prior art. App. Br. 9.
Appellants' argument is unpersuasive of reversible error. The
rejection was not based on any reference disclosing a tube having both an
alloy composition and a tube wall thickness according to the claims, but
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instead on what one of ordinary skill in the art would have been led to by the
combined teachings of JP '390 and Otten or JP '390 and EP '065.
Appellants' argument ignores that "[a] person of ordinary skill is ... a
person of ordinary creativity, not an automaton[.]" KSR Int 'l. Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007); See also In re Keller, 642 F.2d 413, 425
( CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference ... Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.").
Further, the argument as to all the claims, including those as to claim 25,
fails to address that determining workable or optimal workable ranges as to
grain size and tube wall thickness would be routine.
As to tubes of lesser tube wall thickness having the same burst
thickness as a tube made of C122 (claim 25), we are unpersuaded of
reversible error in the Examiner's rejection grounded on JP '390's disclosure
of heat transfer tubes of alloys meeting the limitations as to alloy
composition and determining workable or optimal ranges as to tube wall
thickness. It follows a priori that workable or optimal tube wall thicknesses
of an alloy conferring improved burst resistance would be less than those of
an inferior alloy. Cf In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)
("[T]he statement that a prima facie obviousness rejection is not supported if
no reference shows or suggests the newly-discovered properties and results
of a claimed structure is not the law."); see also In re Papesch, 315 F.2d
381, 391(CCPA1963) ("From the standpoint of patent law, a compound
and all of its properties are inseparable; they are one and the same thing.").
Further, we find Appellants' contention that the Examiner has failed to give
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the limitation any consideration (App. Br. 9) without merit where the
Examiner notes Appellants' argument and finds "[A ]ppellants failed to
provide criticality and unexpected result [sic] of their claimed composition
or wall thickness (Ans. 13, citing In re Papesch, 315 F.2d at 391).
For the reasons above, we are unpersuaded of any harmful error in the
Examiner's obviousness rejection over JP '390 in view of Otten or EP '065.
It follows, accordingly, we affirm the obviousness rejection of claims 8, 10,
13-15, and 20-27.
Rejection over JP '390 in view of Otten or EP '065 and further in
view of JP '843 or JP '754--- claims 13, 14, 22, and 23
Appellants rely on their arguments as to the rejection over JP '390 in
view of Otten or EP '065, which are also unpersuasive of error as to this
ground of rejection. App. Br. 9-10. It follows, accordingly, we affirm the
obviousness rejection of claims 13, 14, 22, and 23.
CONCLUSION
The Examiner's decision rejecting claims 8, 10, 13-15, and 20-27 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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