Ex Parte Haydock

Patent Trial and Appeal Board

Aug 25, 2017

13247382 (P.T.A.B. Aug. 25, 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.
13/247,382 09/28/2011 Paul M. Haydock PA-0015660-US-AA 2135
87059 7590 08/29/2017
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
PEREIRO, JORGE ANDRES
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL M. HAYDOCK
Appeal 2016-000496
Application 13/247,382
Technology Center 3700
Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000496
Application 13/247,382
CLAIMED SUBJECT MATTER
The claims are directed to a furnace heat exchanger. Claims 1 and 8
are independent. Claim 1, reproduced below with paragraphs and
indentation added for clarity, is illustrative of the claimed subject matter:
1. A primary heat exchanger for a furnace comprising
one or more passes and having
a heat exchanger height wherein a ratio of heat exchanger
efficiency to heat exchanger height is in the range of about 7.0
points per inch to about 8.1 points per inch.
The prior art relied upon by the Examiner in rejecting the claims on
REJECTIONS1
Claims 1,3,4, 7, 8, 10, 11, 14, and 15 are rejected under 35 U.S.C.
§103 (a) as being unpatentable over Manohar.
Claims 2 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Manohar and Dempsey.
1 If prosecution continues, the Examiner may want to consider whether the
Specification provides an enabling disclosure of the claimed invention.
“Section 112 requires that the patent specification enable those skilled in the
art to make and use the full scope of the claimed invention without undue
experimentation. . . . [S]ee also In re Goodman, 11 F.3d 1046, 1050 (Fed.
Cir. 1993) (‘[T]he specification must teach those of skill in the art how to
make and how to use the invention as broadly as it is claimed.’).” Invitrogen
Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070—71 (Fed. Cir. 2005)
(internal quotes omitted).
REFERENCES
appeal is:
Dempsey
Manohar
Haydock
US 4,896,411 Jan. 30, 1990
US 8,646,442 B2 Feb. 11,2014
US 2011/0174301 A1 July 21, 2011
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Appeal 2016-000496
Application 13/247,382
Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Manohar and Haydock.
OPINION
Claims 1 and 8 are independent. Appellant argues the rejections of
claims 1—15 together. We select independent claim 1 as representative. See
37C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Manohar teaches all of the features of claim
1, except it “does not state that a ratio of heat exchanger efficiency to heat
exchanger height is in the range of about 7.0 points per inch to about 8.1
points per inch.” Final Act. 4. However, the Examiner finds that Manohar
teaches an embodiment with “a heat exchanger height of about 8.5 inches”
with “a heat exchanger efficiency of at least 70%” which results in “a ratio
of about 8.2% points per inch.” Id. at 5; see also id. at 2 (“Manohar
discloses that while the dimensions of the heat exchanger are not limited to
any particular value . . . [, i]n some embodiments the height 390 of the heat
exchanger 300 is about [] 8.5 inches.”). The Examiner therefore determines
that this teaches the claimed ratio or renders it obvious. Id. The Examiner
further determines that the ratio is obvious because “any number of []
combinations of heat exchanger efficiency ratings (e.g., in the range of 70%
to 80%) and height dimensions falling within the stated, or reasonably
implied, limits disclosed by Manohar . . . would meet the claimed
limitations.” Id. at 3.
Appellant argues that “[ajpplying the dimension and stated efficiency
of Manohar results in a ratio of greater than 8.2 points per inch, clearly
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Appeal 2016-000496
Application 13/247,382
outside of the claimed range” of “about 7.0 points per inch to about 8.1
points per inch.” Br. 4.
Appellant’s argument is that the specific example cited by the
Examiner does not teach a ratio of “about 7.0 points per inch to about 8.1
points per inch.” However, the argument does not show that the range of
ratios would not have been obvious. As noted by the Examiner, Manohar
teaches that the height is not limited to 8.5 inches. Final Act. 2 (citing
Manohar col. 4:25—35). In particular, Manohar teaches “scaling the height”
to the desired size and that “various dimensions of the heat exchanger 300
are compatible with industry-standard furnace cabinet dimensions”.
Manohar, col. 4:56, 29-31. In addition to teaching an embodiment with a
heat exchanger height of 8.5 inches, other embodiments have a height of 8.4
inches and 9.1 inches. Id. at col. 11:29—36. Thus, the “height dimensions2
falling within the stated, or reasonably implied, limits disclosed by
Manohar” (Final Act. 3) and the disclosed heat exchanger efficiency ratings
render obvious the ratio of “about 7.0 points per inch to about 8.1 points per
inch.”
Appellant also argues that “construction [of Appellant’s heat
exchanger and furnace] requires more than ordinary skill in the art.” Br. 5.
Appellant highlights “features such as those shown in the third pass 24c of
Appellant’s FIG. 2” as features that “must be carefully constructed.” Id. at
4. Thus, Appellant disagrees with “the Examiner[‘s] assertion] that such a
ratio would be discovery of an optimum or workable range involving only
routine skill in the art.” Id.
2 For example, a height of 8.6 inches with a heat exchanger efficiency rating
of 70% results in a ratio of about 8.1 points per inch.
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Appeal 2016-000496
Application 13/247,382
However, the “features . . . shown in the third pass 24c of Appellant’s
FIG. 2” are not required by claim 1. Appellant’s statement is merely
attorney argument, with no supporting evidence to show that the
construction requires more than ordinary skill in the art. See In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence.”). Thus, we are not informed of error in the
Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1—15 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
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