Ex Parte Ihle

Patent Trial and Appeal Board

Jun 24, 2013

11919917 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HANS IHLE
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Appeal 2011-005728
Application 11/919,917
Technology Center 3700
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Before: WILLIAM V. SAINDON, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005728
Application 11/919,917

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 14, 15, 19-24, and 26-32.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 14, 26, and 30 are independent. Claim 14, reproduced below,
is illustrative of the claimed subject matter:
14. A heat exchanger comprising:
a housing having an overall tubular
configuration, the housing having an exterior sheet
metal wall and one end that is open and an opposite end
that is open, the housing being operable to receive
therewithin a conduit having an uncoiled length
exceeding a length of the housing, a first heat-transfer
fluid being conducted through the conduit, and the
housing being operable to guide therethrough a second
heat transfer fluid such that a heat exchange operation
takes place between the second heat transfer fluid
guided through the housing and the conduit having
therein the first heat transfer fluid while the first heat
transfer fluid advances along the conduit in a direction
from the one end of the housing toward the opposite end
of the housing, and the housing having surface area
portions forming passages through which the second
heat transfer fluid can enter the housing, these surface
area portions of the housing being located in a region
more proximate to the one end of the housing than the
opposite end of the housing.

1 The rejection of claims 16-18, 25, and 29 as obvious and the rejection of
claim 26 as indefinite have been withdrawn by the Examiner. See Ans. 3,
10.
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REJECTIONS
1. Claim 29 is rejected under 35 U.S.C. § 112, second paragraph as
indefinite; and
2. Claims 14, 15, 19-24, 26-28 and 30-32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Smith (US 4,321,803; iss. Mar. 30,
1982).
OPINION
Indefiniteness
The Examiner finds that the phrase “in the immediate vicinity” of the
coil does not describe how close the claimed partition is to the coil. Ans. 3-
4. The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citation omitted).
Appellant contends that when considered in light of the disclosure, one
skilled in the art would understand the meaning of “immediate vicinity.”
App. Br. 11; Reply Br. 10. Appellant points to Figure 3 of the application
and the disclosure at page 5, lines 7-10 of the Specification as defining
“immediate vicinity.” App. Br. 11; Reply Br. 10.
Imprecise terms can be definite if they are defined properly in the
specification. See Seattle Box Co. v. Industrial Crating and Packing, Inc.,
731 F.2d 818, 826 (Fed. Cir. 1984). However, page 5, lines 7-10 of the
Specification simply states:
To prevent air inside the housing 2 from flowing back from the
downstream to the upstream side of the fan within the cross-
sectional area lying outside the coil, a partition 14 is provided
here that extends from the metal sheet 5 forming the external
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wall of the housing 2 at the 10 height of the fan wheel 10 to the
immediate vicinity of the coil.

This does not further define what constitutes the “immediate vicinity” in any
structural manner (i.e., distances between the partition and the coil).
Further, the functional language “to prevent air . . . from flowing back” also
does not provide further definition, as it is unclear how much the partition
prevents air flow (i.e., completely blocks, partially blocks, etc.). Any
partition located within the air flow path past the coil would prevent air from
flowing back to some extent. Therefore, the description in the Specification
explaining that the partition prevents air from flowing back does not provide
any guidance regarding the scope of “immediate vicinity.” Based on
Appellant’s explanation, we are not apprised of Examiner error and we
sustain the rejection of claim 29 as indefinite.

Obviousness
Claims 14, 26, and 30
Appellant argues claims 14, 26, and 30 as a group. See Ans. 11-17.
We select claim 14 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 26 and 30 stand or fall with claim 14. The Examiner finds that
Smith (embodiment in Figures 4 and 5) discloses each of the features of
claim 14 except the exterior sheet metal wall. Ans. 4-5. The Examiner finds
that another embodiment in Smith (embodiment in Figures 1 and 2)
discloses an exterior sheet metal wall and reasons that it would have been
obvious to make the exterior wall in the embodiment of Smith shown in
Figures 4 and 5 out of sheet metal “in order to make use of a readily
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available and inexpensive material that at least offers corrosion resistance
and the ability to be welded when constructing the heat exchanger.” Ans. 5.
Appellant contends that Smith fails to disclose a sheet metal housing
having surface area portions forming passages located in a region more
proximate to the one end of the housing than the opposite end of the housing
because the sheet metal housing in Figures 1 and 2 of Smith includes louvers
62 extending the entire height of the housing. App. Br. 14; Reply Br. 13.
This argument is unpersuasive because the Examiner only relies on the
embodiment shown in Figures 1 and 2 of Smith as generally disclosing a
sheet metal housing. See Ans. 5. The Examiner cites the embodiment
shown in Figures 4 and 5 of Smith as disclosing the surface area portions
forming passages in support structure 70. Ans. 4-5. Moreover, Appellant’s
argument is not commensurate with the scope of claim 14. The claim does
not require that all passages formed in the housing are closer to one end of
the housing than the opposite end of the housing, just that the housing
defines some passages that are closer to one end of the housing than the
opposite end of the housing.
Appellant argues that one skilled in the art would have no reason to
modify Smith (embodiment in Figures 4 and 5) because Smith is concerned
with providing unrestricted airflow over the coils. App. Br. 14-15; Reply
Br. 13-14. This argument is unpersuasive because the Examiner has simply
modified Smith (embodiment in Figures 4 and 5) to include a sheet metal
exterior wall on the support structure 70 and has not suggested modifying or
adding any restriction to the airflow in Smith. See Ans. 5. Appellant argues
that the support structure 70 is not part of the exterior wall of the condenser
(heat exchanger) in Smith, and is instead only a support on top of which the
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condenser is mounted. App. Br. 15; Reply Br. 15. The claims broadly recite
“housing.” Appellant has not persuasively explained why the support
structure 70 cannot reasonably be considered part of the housing.
Appellant further alleges that sheet metal would not be suitable for the
support structure 70 due to the weight of the components. Reply Br. 16-17.
Appellant does not substantiate this allegation with fact or technical
reasoning. In addition, the Examiner does not propose modifying the
support structure to be entirely formed from sheet metal and, instead, simply
proposes modifying the exterior wall of the support structure 70 in Smith to
include sheet metal, as shown in the Examiner’s annotated figure 5. Ans. 5,
11. In the Examiner’s annotated figure, the portions of the support structure
70 that would be formed of sheet metal in the proposed modifications to
Smith are shaded, and only include the exterior walls (as opposed to, e.g.,
the floor). See Ans. 12. Appellant offers no explanation as to why such a
modification is improper.
For these reasons, we are not apprised of Examiner error and we
sustain the rejection of claims 14, 26, and 30.

Claims 15, 21-24, 27, and 28
Claims 15 and 21-24 depend from claim 14 and claims 27 and 28
depend from claim 26. Appellant relies on the unpersuasive arguments
presented regarding claims 14, 26, and 30 for the patentability of claims 15,
21-24, 27, and 28. See App. Br. 15-18 and Reply Br. 17-23. Claims 15, 21-
24, 27, and 28 fall with claims 14 and 26.

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Claims 19 and 20
Claims 19 and 20 depend from claim 14 and further recite that the coil
length is “at least approximately the length of the housing.” The Examiner
finds that Smith discloses these features. Ans. 5-6, 9. Appellant argues that
the length of the coil 72 in Smith does not have a length approximately the
length of the housing because “the coil 72 clearly stops short of, and does
not extend into, the area of the support structure 70.” App. Br. 17; Reply Br.
18. Appellant appears to contend that claims 19 and 20 require the coil
lengths recited in claims 19 and 20 to be at least approximately the entire
length of the housing.
Initially, we note that the claims only require that the housing be
capable of accommodating a coil having “a coil length at least
approximately the length of the housing” (claim 19) or “conduit that is
meander shaped with the length of the meander-shaped portion of the
conduit corresponding approximately to the length of the housing” (claim
20). While claims 19 and 20 each refer to the length of the housing, this
simply refers back to a length of the housing recited in claim 14, which
merely refers to some length of the housing. The claims do not initially
recite the length of the housing (i.e., a specific property of the housing,
typically understood to be the length of the longest dimension).2,3 Thus,

2 The outcome of this appeal might be different if the claim recited “a
housing … the housing being operable to receive therewithin a conduit
having an uncoiled length exceeding the length of the housing.” All
structures have certain properties; there is no need to “introduce,” in terms of
antecedent basis, such properties. Indeed, by doing so, if the term describing
a particular property of the structure has multiple meanings (as here), such
an introduction may serve to broaden the scope of the claim.
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neither claim 19 nor claim 20 requires the housing to be capable of
accommodating a coil length at least approximately the entire length of the
longest dimension of the housing. Rather, the claims only require that the
housing is capable of accommodating a coil length that is at least
approximately a length of the housing. Appellant has not persuasively
explained why the housing in Smith is incapable of accommodating such
coils.
For these reasons, we are not apprised of Examiner error and we
sustain the rejection of claims 19 and 20.

Claim 31
Claim 31 depends from claim 30 and recites that “the coiled conduit
extends the length of the tubular housing.” The Examiner finds that Smith
(embodiment of Figures 4 and 5) discloses the claimed arrangement because
the claimed length does not require the entire length of the housing. Ans.
13-14.
Appellant again argues that the coiled conduit does not extend the
length of the tubular housing because “the coil 72 clearly stops short of, and
does not extend into, the area of the support structure 70.” App. Br. 17-18;
Reply Br. 18. Appellant argues that the Examiner has taken an unreasonably
broad reading of the phrase “length of the housing” that is inconsistent with
the Specification. Reply Br. 19. Appellant does not point to, and we do not

3 Compare “the distance from one end of an object to the other, normally the
longest dimension” with “the distance something extends.” Chambers 21st
Century Dictionary (2001) (retrieved from
http://www.credoreference.com/entry/chambdict/length) (last visited June
24, 2013).
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see, where “length of the housing” is specifically defined in the
Specification. See Reply Br. 20.
There does not appear to be any dispute regarding the meaning of the
term length. Instead, Appellant appears to require the length to be an entire
length when no such requirement exists in the claim. While claim 30 refers
to the length of the housing, this simply refers back to a length of the
housing recited in claim 30, which does not require the entire length of the
housing, for the reasons we explained above.
Appellant additionally argues that “the length of the housing” would
be meaningless under the Examiner’s interpretation. Reply Br. 20. We
disagree. While the phrase may be very broad under the Examiner’s
interpretation (i.e., simply some length), it still has some meaning.
Appellant further argues that the phrase “a length of the tubular
housing in a longitudinal direction from the one end to the opposite end” in
claim 30 requires the length to be defined from the one end to the opposite
end (i.e., the entire length). Reply Br. 21. We disagree. Instead, the phrase
simply requires that the length is defined in a longitudinal direction and that
the direction is defined from the one end to the opposite end.
For the reasons set forth above, Appellant’s arguments do not apprise
us of Examiner error and we sustain the rejection of claim 31.

Claim 32
Claim 32 depends from claim 30 and further recites that “the coiled
conduit extends into the interior of the tubular housing in the region of the
exterior sheet metal wall that is nearer the one end of the tubular housing
than the opposite end of the tubular housing.” The Examiner finds that
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Smith (embodiment of Figures 4 and 5) discloses this additional feature.
Ans. 8.
Appellant contends that Smith does not disclose this feature because
the coil does not extend into the support structure 70. App. Br. 18; Reply
Br. 22. Appellant explains that the claimed “region” must be defined in the
sheet metal housing and cannot extend into any indefinite space outside of
the sheet metal wall as the Examiner suggests. App. Br. 18; Reply Br. 23.
We agree.
Although the term “region” is broad, as the Examiner explains (see
Ans. 14-15), claim 30 recites “a region of the exterior sheet metal wall.”
The region may extend beyond the passages in the sheet metal wall, but is
defined only by the sheet metal wall. The Examiner does not appear to
propose modifying the additional portion of Smith above the support
structure 70 to include a sheet metal wall, or to extend the coil of Smith into
the sheet metal-covered support structure 70. See Ans. 5, 11-12. Thus, we
do not see where the Examiner’s proposed modifications to Smith discloses
that “the coiled conduit extends into the interior of the tubular housing in the
region of the exterior sheet metal wall” recited in claim 32.
For this reason, we reverse the rejection of claim 32.

DECISION
We AFFIRM the Examiner’s decision to reject claim 29 as indefinite
and claims 14, 15, 19-24, 26-28, 30, and 31 as obvious.
We REVERSE the Examiner’s decision to reject claim 32 as obvious.

Appeal 2011-005728
Application 11/919,917

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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-IN-PART

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