Ex Parte Heine

Patent Trial and Appeal Board

Dec 26, 2017

13649650 (P.T.A.B. Dec. 26, 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.
13/649,650 10/11/2012 Reinhard HEINE 1006/0258PUS1 1433
60601 7590 12/26/2017
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
12/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte REINHARD HEINE
____________

Appeal 2017-002525
Application 13/649,650
Technology Center 3700
____________

Before JOHN C. KERINS, KEN B. BARRETT, and WILLIAM A. CAPP,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 5–9, and 11–13 as unpatentable under 35 U.S.C.
§ 103(a) over Heine ’817 (US 5,657,817, iss. Aug. 19, 1997), Heine ’500
(US 6,158,500, iss. Dec. 12, 2000), and Stoynoff (US 2003/0075307 Al,
pub. Apr. 24, 2003); and claims 2 and 3 over Heine ’817, Heine ’500,
Stoynoff, and Gazda (US 4,152,533, iss. May 1, 1979). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention relates to a mechanical means for connecting
two automotive coolers to each other. Spec. ¶¶ 3–7. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A cooling device for a vehicle, the cooling device
comprising:
a first air cooler having a first element of a sliding seat
tenon-and-mortise joint and a first element of a latching joint;
and
a second air cooler having a second element of the sliding
seat tenon-and-mortise joint and a second element of the
latching joint, the elements of the latching joint and the
elements of the sliding seat tenon-and-mortise joint being
configured such that a connection between the two air coolers is
established by the latching joint and the sliding seat tenon-and-
mortise joint,
wherein the first element of the latching joint includes a
latching hook and a guide projection, and
wherein the second element of the latching joint includes a
first receptacle to receive the latching hook and a recess that
forms a second receptacle to receive the guide projection.
OPINION
Unpatentability of Claims 1, 5–9, and 11–13
Over Heine ’817, Heine ’500, and Stoynoff
Claim 1 is the only independent claim which we select as
representative since Appellant argues claims 1, 5–9, and 11–13 as a group.
Appeal Br. 8–13; See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Heine ’817 discloses the invention of claim 1
except for: (1) a guide projection received within a recess; and (2) a second
air cooler explicitly comprising an air cooler. Final Action 3–5. The
Examiner relies on Heine ’500 for the guide projection received within a
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recess. Id. at 4. The Examiner relies on Stoynoff for the second air cooler.
Id. at 5. 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 modify
Heine ’817 with a guide projection received within a recess as taught by
Heine ’500. Id. at 4. According to the Examiner, a person of ordinary skill
in the art would have done this to facilitate connection of a latching joint.
Id. The Examiner further concludes that it would have been obvious to
combine two air coolers. Id. at 5. According to the Examiner, a person of
ordinary skill in the art would have done this to increase cooling efficiency.
Id.
Appellant does not dispute the Examiner’s findings of fact with
respect to the tenon-and-mortise joint elements and, instead, focuses
attention on the latching elements with guide projection and recess.
Appellant argues that the Examiner’s proposed modification of Heine ’817
is “arbitrary.” Appeal Br. 9. Essentially, Appellant’s challenge the
sufficiency of the Examiner’s reasoning for combining the two references.
Id. at 9–10.
In response, the Examiner explains that a guide projection received
within a recess as taught by Heine ’500 would facilitate connecting
complementary elements of a latching joint. Ans. 3. The Examiner
reiterates that such would have been obvious to one having ordinary skill in
the art at the time the invention was made. Id. The Examiner’s position on
this issue is more persuasive.
Next, Appellant argues that a person of ordinary skill in the art would
not provide a recess for a guide projection in rib 28 of Heine ’817 as such
would interfere with any contact resistance to ensure that hook 21 locks in
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place. Appeal Br. 10–13. Appellant supports this argument by including
Figures 10 and 10a of Heine ’817 in the Appeal Brief and taking the position
that the illustrated apparatus is sufficient and that the Examiner’s proposed
modification is unnecessary. Id. at 12 (“the alleged modification would
provide a feature that is already provided by . . . Heine ’817”).
In response, the Examiner takes the position that Appellant’s
argument about contact resistance is not supported by the evidentiary record
and, in any event, Appellant has not claimed any contact surfaces. Ans. 5.
There is no evidence whatsoever that Heine ’817 would suffer a
loss of contact resistance between elements 24 and 25 when
modified to include the guide projection (16) and
complimentary recess (21) as taught by Heine '500, especially
since Heine '500 discloses that the guide projection (16) and
corresponding recess (21) are part of a latching joint having
hard stops (e.g. 18, 22 of Heine '500) that restrict positioning of
the first element of the latching joint relative the second
element of the latching joint . . .
Id. We find the Examiner’s position on this issue persuasive. Figure 9 of
Heine ’500 shows a guiding projection (element 15, 16) received in support
recess 21. Heine ’500, Fig. 9. Support recess is disposed on fastening lug
(element 20) which lug also has two detent recesses for receiving detent
hooks (element 17). The detent hooks, in turn, are disposed on the same
structure as the guiding projection. Id.
We view Appellant’s argument as directed at potential problems that
might be encountered in bodily incorporating the guiding projection and
lug/recess of Heine ’500 into the latch mechanism of Heine ’817. However,
such entails improper obviousness analysis. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference....” In re Keller, 642 F.2d 413,
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425 (CCPA 1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
The obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc). Together, the two Heine references
disclose a complete teaching of a hook latching mechanism with a guidance
projection and mating receptacle. In our view, the combination is no more
than the predictable use of prior art elements according to their established
functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(predictable use of prior art elements). Thus, the combination is merely a
predictable variation of the prior art. Id. Based on the record before us, we
are persuaded that no more than ordinary skill is required to effect the
combination. Id.
Finally, Appellant’s argument that Heine ’817 is sufficient by itself
and, therefore needs no modification, is unpersuasive. The fact that the prior
art may already perform adequately does not preclude a skilled artisan from
seeking to improve upon it. See Dystar Textilfarben GmBH & Co, v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (the desire to enhance
commercial opportunities by improving a product or process is universal—
and even common-sensical).
We sustain the Examiner’s unpatentability rejection of claims 1, 5–9,
and 11–13.
Unpatentability of Claims 2 and 3
Over Heine ’817, Heine ’500, Stoynoff, and Gazda
Claims 2 and 3 depend, directly or indirectly, from claim 1. Claims
App. Appellant does not argue for the separate patentability of claims 2
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and 3 apart from arguments presented with respect to claim 1 which we have
previously considered. We sustain the rejection of claims 2 and 3. See 37
C.F.R. § 41.37(c)(iv) (failure to separately argue claims).
DECISION
The decision of the Examiner to reject claims 1–3, 5–9, and 11–13 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)(1)(iv).
AFFIRMED