Ex Parte Harbeck et al

Patent Trial and Appeal Board

Jun 27, 2013

10864156 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG HARBECK, INGO RIEHL, and KARL WEISS
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Appeal 2011-006803
Application 10/864,156
Technology Center 3700
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Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Wolfgang Harbeck et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s rejection of claims 1-50 under 35 U.S.C. § 103(a) as
unpatentable over Wunning (US 5,833,450; iss. Nov. 10, 1998) and
Monteagle (US 770,599; iss. Sept. 20, 1904). App. Br. 8. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
Claims 1, 13, 25, 26, 39, and 50 are the independent claims on appeal.
Claim 1 is representative of the claimed subject matter and reads:
1. A recuperator burner comprising:
a burner head;
a burner tube having a first and a second
end, said first end being supported by said burner
head;
a burner chamber provided at said second
end of said burner tube;
an exhaust gas guide tube coaxially
enclosing said burner tube from the outside and
being supported by said burner head; and
a cast ceramic recuperator supported at one
end thereof by said burner head and being located
between said burner tube and said exhaust gas
guide tube;
an outer gap defined between said exhaust
gas guide tube and said recuperator;
an inner gap defined between said
recuperator and said burner tube; and
a substantially unitary heat exchanger for
exchanging heat between an outer and an inner
surface of said recuperator, said exchanger having
a surface thereon including a plurality of undulated
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pleats extending along a tube section of said
recuperator along said outer surface thereof and
along said inner surface thereof and being spirally
wound about a longitudinal axis of said
recuperator, said inner and said outer surfaces
replicating a contour of each other;
wherein said undulated pleats have a smooth
curved-contour surface without angular projections
extending therefrom and extend peripherally
around the outer surface of said recuperator and
substantially simultaneously advance in an axial
direction;
wherein at least one of said outer and inner
gaps has a radial extension which corresponds to at
least a wall thickness of said recuperator
multiplied by 0.3.

ANALYSIS
Claims 1-12
Appellants argue claims 1-12 as a group. App. Br. 13-18. We select
claim 1 as being representative of the group, and claims 2-12 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(vii).
We have considered Appellants’ Briefs, and only those arguments set
forth therein will be considered. Arguments that Appellants could have
made, but chose not to make, in the Briefing will not be considered. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding claim 1, the Examiner found that Wunning discloses a
ceramic recuperator 8 made by slip casting and provided with a plurality of
undulated pleats (teeth 19). Ans. 4-5 (citing Wunning, fig. 3; see also
Wunning, col. 2, ll. 52-54; col. 3, ll. 18-25). The Examiner also found that
Monteagle teaches a heat exchange tube having a plurality of undulated
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pleats extending along a tube section and spirally wound about a
longitudinal axis, so as to increase its conductive capacity. Ans. 5. The
Examiner further found that Monteagle shows that the helically-extending,
concave grooves and bulges have a smooth, curved-contour surface without
angular projections extending therefrom, extend along a tube section, and
are spirally wound about a longitudinal axis. Id. (see also, Monteagle, p. 1,
ll. 34-43; fig. 1).
The Examiner concluded that, in view of Monteagle, it would have
been obvious to one of ordinary skill in the art to modify the undulated
pleats of Wunning’s slip-cast ceramic heat exchange tube to extend along a
tube section of the recuperator and be spirally wound about a longitudinal
axis, to provide a suitable heat transfer tube between two fluids (air and
exhaust flow). Id. at 6-7. The Examiner determined that the combination of
teachings would necessarily result in a ceramic slip-molded heat exchanger
having undulated pleats with the claimed features. Id. at 7.
Appellants contend that the Examiner acknowledged Wunning does
not teach either “(i) undulated pleats having a smooth curved-counter
surface without angular projections extending therefrom,” or “(ii) undulated
pleats spirally wound about a longitudinal axis of the recuperator.” App. Br.
11. However, in regard to feature (ii), the Examiner found that Wunning
discloses that “it is possible to arrange the teeth on a single- or multiple-
start helical line.” Ans. 5 (see also Wunning, col. 4, ll. 11-12). An
ordinary meaning of “helical” is: “of, relating to, or having the form of a
helix; broadly: SPIRAL.” Merriam-Webster’s Collegiate Dictionary (11th ed.
2003). In light of this ordinary meaning of “helical,” Appellants’ contention
that Wunning does not disclose undulated pleats that are “spirally wound”
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about a longitudinal axis of the recuperator is not persuasive. Furthermore,
as noted supra, the Examiner found that Monteagle teaches this feature.
As discussed further infra, Appellants have not apprised us of any
error in the Examiner’s conclusion that it would have been obvious in view
of Monteagle to modify Wunning’s recuperator to comprise “undulated
pleats hav[ing] a smooth curved-counter surface without angular projections
extending therefrom,” as claimed.
Appellants refer in the Briefs to the Declaration of Peter Wolowski
Under 37 C.F.R. § 1.132 (hereinafter, “Wolowski Declaration”) in regard to
their argument that the claimed recuperator burner would not have been
obvious over the combination of Wunning and Monteagle to a person of
ordinary skill in the art. App. Br. 11-13; see also Reply Br. 2-4. In
particular, Appellants contend that the Wolowski Declaration establishes
that one of ordinary skill in the art of industrial burners would not have even
considered the metallic tube of Monteagle. Id. Appellants also contend that
the Wolowski Declaration is the “only evidence” as to the level of ordinary
skill in the art of industrial burners, and as to what technology the skilled
practitioner would consider. App. Br. 11-12; Reply Br. 2. Appellants
contend that the evidence provided in the Wolowski Declaration is
dispositive. Id.
Appellants further contend that the Wolowski Declaration provides
abundant facts indicating that those of ordinary skill in the field of
recuperator burners would never consider metallic heat conducting tubes
when designing recuperator burner equipment, and thus would never
combine Monteagle with Wunning. App. Br. 12 (citing Wolowski Decl.,
paras. 11-12); Reply Br. 3. In this regard, Appellants refer to Mr.
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Wolowski’s statement that Monteagle relates to metallic heat conducting
tubes used in heat exchangers for fluids at temperatures up to 100°C,
whereas combustion occurs in recuperator burners at temperatures on the
order of 500°C to 1300°C. App. Br. 13; Wolowski Decl. para. 11. Mr.
Wolowski also states that he “would never contemplate the application of
such a metallic tube to a recuperator burner” (id.) and “[t]hat due to the
conflicting teachings of Wunning and Monteagle, I believe that no one in the
field of recuperator burners would find it useful to combine Wunning with
Monteagle in any fashion” (id. at para. 12).
We have considered the particular statements of Mr. Wolowski set
forth at paragraphs 11 and 12 in the Wolowski Declaration that Appellants
reference in their argument together with the evidence relied on by the
Examiner. See In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
First, we note that Appellants do not explicitly contend that Monteagle fails
to qualify as “analogous prior art” with respect to the claimed subject matter.
While the Examiner did not find that Monteagle discloses a ceramic
recuperator, or using the heat-conducting tube at temperatures on the order
of 500°C to 1300°C, the Examiner found that Monteagle, like Wunning,
relates to the problem of improving heat transfer between fluids located
inside and outside of heat-conducting conduits. See Monteagle, p. 1, ll. 9-
20; Wunning, col. 1, ll. 29-32. Both Wunning and Monteagle address this
problem by providing undulated pleats that extend along inner and outer
surfaces of a heat-conducting conduit. Appellants have not provided any
persuasive argument as to why one of ordinary skill in the art of recuperator
burners would not have considered Monteagle’s teachings directed to
improving heat transfer between fluids in a heat-conducting conduit.
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Second, the Examiner’s rejection does not “apply” Monteagle’s
metallic tube to Wunning’s recuperator burner in the sense that the Examiner
proposes forming Wunning’s recuperator from metal instead of from a
ceramic material by slip casting, as Wunning teaches. Rather, the Examiner
relied on Wunning’s teaching of a ceramic recuperator used for heat transfer
between two fluids (air and exhaust flow), and relied on Monteagle’s
teaching of an undulated pleat structure provided in a heat exchange tube for
heat transfer between two fluids. See Ans. 9. The Examiner explained that
Monteagle’s bulged or convex convolutions B provide improved heat
transfer through the walls of the heat-conducting tube between fluids inside
and outside of the tube. See Ans. 5, 9. The Examiner’s rejection modifies
the undulated pleats of Wunning’s ceramic recuperator in view of
Monteagle’s contoured wall structure to have the form of the claimed
undulated pleats. See Ans. 6-7, 9. In other words, the Examiner’s rejection
substitutes Wunning’s undulated pleat structure with Monteagle’s.
Third, Appellants contend that Monteagle discloses that the heat-
conducting tube is made of a ductile or formable material, whereas ceramic
materials are brittle and unsuitable for being formed into shape in the solid
state. App. Br. 18; Reply Br. 3-4. Appellants also contend that the copper
tube taught by Monteagle has a melting point below the combustion
temperatures within a recuperator, and that “common sense” dictates against
any rejection based on Monteagle. App. Br. 15. However, the Examiner’s
rejection does not modify Wunning to change the ceramic material to a
metallic material, or to change the process (i.e., slip-casting) used to make
the recuperator. Accordingly, Appellants’ contentions do not appear to
address the Examiner’s proposed combination, and thus, are not persuasive.
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In addition, Appellants have not presented persuasive argument or
evidence that the modification needed to effect the combination of teachings
would have been uniquely challenging for one of ordinary skill in the art.
Wunning provides evidence that one of ordinary skill in the art would have
known how to make a ceramic recuperator having undulated pleats by slip-
casting. Appellants have not provided persuasive argument or evidence that
one of ordinary skill in the art “could not have applied the teachings of
Monteagle to recuperator burners” (App. Br. 15) (emphasis added), or would
have been unable to apply Monteagle’s teachings regarding undulated pleat
shape to form “undulated pleats [that] have a smooth curved-contour surface
without angular projections extending therefrom” using Wunning’s slip-
casting process.
Fourth, Appellants contend that the KSR guidelines compel a finding
that Monteagle is inapplicable to cast ceramic recuperators, and that none of
the KSR rationales apply in this case. App. Br. 14-18. We disagree. As
discussed supra, the Examiner’s rejection substitutes Monteagle’s known
undulated pleat structure for Wunning’s known undulated pleat structure.
Appellants contend that “[e]ven if this rationale is applicable here, there can
be no ‘predictable results’ coming from something that has never before
been tried or even contemplated.” Id. at 16. However, Appellants have not
provided any persuasive argument or evidence that the result of substituting
one undulated pleat structure for another in a known slip-casting process
used to make ceramic recuperators would not have been predictable to one
skilled in the art. For example, Appellants have not provided any persuasive
argument or evidence that one skilled in the art could not have applied
Wunning’s slip-casting process to form the claimed undulated pleat structure
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(e.g., would have lacked the necessary skill), or that the recuperator structure
resulting from the process still would not have the claimed undulated pleat
structure. Accordingly, Appellants’ contention that the KSR substitution
rationale does not apply in this case is not convincing.
Having considered all of the evidence presented by Appellants against
obviousness and weighing the evidence anew, we conclude that the evidence
for obviousness outweighs the evidence against it. See In re Fenton, 451
F.2d 640, 643 (CCPA 1971). Thus, we conclude that the subject matter of
claim 1 would have been obvious to one of ordinary skill in the art. We
sustain the Examiner’s rejection of claim 1 and its dependent claims 2-12.

Claims 13-24, 25, 26-38, 39-49, and 50
Appellants argue claims 13-24, claim 25, claims 26-28, claims 39-49,
and claim 50, as separate groups, and rely solely on the arguments presented
with respect to claim 1 for patentability for each group. App. Br. 18-19. As
we find no deficiency in the Examiner’s rejection of claim 1, we also sustain
the rejection of claims 13-50 for reasons similar to those for claim 1.

DECISION
The Examiner's decision rejecting claims 1-50 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)(1)(iv).

AFFIRMED
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