Ex Parte Johns et al

Patent Trial and Appeal Board

Oct 15, 2014

12133746 (P.T.A.B. Oct. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLIFFORD L. JOHNS, AUGUST M. DATTILO III,
MUNAF NAJMUDDIN CHASMAWALA, and MANFRED SCHMIDT
____________

Appeal 2013-002376
Application 12/133,746
Technology Center 1700
____________

Before PETER F. KRATZ, CHRISTOPHER M. KAISER, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–4, 6–9, and 17–24. We have jurisdiction under
35 U.S.C. § 6.

1 According to Appellants, the Real Party in Interest is Extundo
Incorporated. App. Br. 2.
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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below (bold added for emphasis):
1. A method of cleaning tubes, comprising the steps of:
inserting a plurality of swabs into a fixture having a
plurality of holes and aligning the holes of the fixture with a
respective plurality of tubes; then
applying pressurized gas behind one of the swabs to blow
the swab through the respective tube; and
sensing the back pressure in the tube while blowing the
swab through the tube, noting from a decrease in pressure that
the swab has passed completely through the tube.
App. Br. 19.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hurst US 3,631,555 Jan. 4, 1972
Norgaard US 5,621,998 Apr. 22, 1997
Johns US 2004/0173008 A1 Sept. 9, 2004
Jemne WO 2005/007308 A1 Jan. 27, 2005
Conco Systems, Inc.,
http://www.concosystems.com/tubecleaningsystem.php (last visited on
September 7, 2010) (hereinafter “Conco”).

THE REJECTIONS
1. Claims 1, 6, 17, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hurst in view of Norgaard and Conco.
2. Claims 2–4, 8, 9, 18–20, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hurst in view of Norgaard and Conco,
as applied to claims 1 and 17, and further in view of Johns.
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3. Claims 7 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hurst in view of Norgaard and Conco, as applied to
claims 1 and 17, and further in view of Jemne.

ANALYSIS
Appellants claim a method for cleaning tubes, which is useful for
cleaning the tubes of a heat exchanger. Spec. 1. The Examiner concludes
that the method of Appellants’ claim 1 would have been obvious in view of
Hurst, which teaches a pellet gun for cleaning the tubes of a heat exchanger,
Norgaard, which teaches a speed loader for rapidly loading cartridges into
the chambers of a revolver cylinder, and Conco, which teaches measuring
back pressure when cleaning the tubes of a heat exchanger. Ans. 1–3;2 Final
Action 1–2. According to the Examiner, “[i]t would have been obvious . . .
to modify the method of cleaning tubes with swabs, taught by HURST, to
include the step of inserting objects into a fixture having holes and aligning
the holes with tubes, as taught by NORGAARD.” Ans. 2. As articulated by
the Examiner, a reason or motivation for combining these teachings would
have been “to enhance efficiency of cleaning and reduce the amount of time
in which the heat exchanger would be offline by preparing a plurality of
swabs for propulsion through the tubes.” Id.
Appellants challenge the reason or motivation articulated by the
Examiner, arguing: “Since Hurst already provides a rapid way to load the
gun by using a magazine, there would be no reason for a person of ordinary
skill in the art to modify Hurst to use a fixture with a plurality of holes to

2 Every page of the Examiner’s Answer bears the same page number 1, but
we refer to the pages consecutively beginning with the first full page of text.
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increase the loading speed.” App. Br. 1112. Appellants further argue that
efficiency would not be improved by the Examiner’s proposed combination,
reasoning that “even if there were a way to use a fixture like the speed loader
of Norgaard to load the gun of Hurst with swabs, it would slow down the
loading process as compared with using the automated magazine that
already is in Hurst.” Id. at 12. We agree with Appellants that the
Examiner’s articulated reason or motivation for modifying and combining
the prior art teachings is not sufficient to support prima facie obviousness
under the facts of this case.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki,
745 F.2d 1468, 147172 (Fed. Cir. 1984). As part of meeting this initial
burden, the Examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art.” 35 U.S.C. § 103(a); Graham v. John
Deere Co., 383 U.S. 1, 14 (1966). To support the legal conclusion of
obviousness, “there must be some articulated reasoning with some rational
underpinning” for combining elements in the manner claimed. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
We agree with Appellants that the Examiner’s articulation of a reason
or motivation does not make sense in the context of Hurst and Norgaard.
The pellet gun disclosed in Hurst is intended to “reduce the time, effort and
expense required to clean the interior of tubes mounted in the tube sheets of
heat exchangers.” Hurst, 1:2830. To achieve that goal, Hurst discloses
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that pellets are fed from a magazine into the bore of the pellet gun. Hurst,
Abstract, 1:36–48, 2:19–23, Fig. (showing pellets 16 and magazine 44). A
workman aligns the bore of the gun with the end of a tube to be cleaned and
then depresses a trigger, which causes a pellet to drop from the magazine
into the gun bore. Id. at 4:23–43. The workman then depresses another
trigger to cause propellant fluid and the pellet to be propelled through the
bore of the gun and into the tube to be cleaned. Id. at 4:44–52.
Norgaard is concerned with minimizing the time spent reloading a
revolver during shooting competitions. Norgard, 1:17–32. The revolver has
a cylinder with five or six chambers, each of which receives a cartridge. Id.
at 1:7–8. To facilitate the loading of cartridges into the chambers of the
cylinder, Norgaard discloses a speed loader comprising a sheet of resilient
material having a plurality of bores for holding five or six cartridges. Id. at
2:23–31, Figs. 1, 2. The user positions the speed loader over the cylinder of
the revolver, inserts the cartridges into the chambers, and then peels away
the speed loader. Id. at 2:58–3:2, Fig. 3.
In view of the teachings of Hurst and Norgaard, we do not agree with
the Examiner’s rationale that combining the teachings of these references
would improve the efficiency of cleaning the tubes of a heat exchanger or
reduce the amount of time during which the heat exchanger would be taken
offline for cleaning. Although the Examiner states that this objective would
be accomplished by preparing a plurality of swabs for propulsion through
the tubes as suggested by Norgaard (Ans. 2, 6), Hurst already teaches
preparing a plurality of swabs for propulsion through the tubes by teaching
that the pellets are held together in a magazine. Hurst, Abstract, 1:36–48,
2:19–23, Fig. (showing pellets 16 and magazine 44). The Examiner does not
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convincingly explain how substituting Norgaard’s step of pre-loading
cartridges in a speed loader for Hurst’s step of pre-loading pellets in a
magazine would speed up the process or reduce the amount of time when a
heat exchanger is taken off line for cleaning.
The Examiner asserts:
NORGAARD teaches a method of preloading objects into a
fixture and then quickly loading the objects from the fixture
into a set of tubes. By modifying the cleaning method of
HURST with object loading steps taught by NORGAARD, the
swabs could be placed into the fixture prior to taking the heat
exchanger offline, thus reducing the downtime of the heat
exchanger.
Ans. 6–7. The Examiner’s reasoning overlooks Hurst’s teaching that the
pellets are pre-loaded in a magazine and are ready for use before the heat
exchanger is taken offline. See, e.g., Hurst, Abstract, Fig. Modifying the
cleaning method of Hurst with the loading steps taught by Norgaard, as
proposed by the Examiner, would not be more efficient. If Norgaard’s
object loading steps were used to load the chambers of a gun, as taught by
Norgaard, for cleaning heat exchanger tubes as taught by Hurst, then this
would require performing multiple additional loading steps while the heat
exchanger is offline, since a gun cylinder has a limited number of chambers.
Norgaard, 1:7–8. Similarly, if Norgaard’s object loading steps were used to
load swabs into the tubes of a heat exchanger, then this would require an
additional pre-loading step that would need to be performed while the heat
exchanger is offline. In either case, the Examiner’s proposed modification
would add steps, slow down the cleaning process, and increase the time
during which the heat exchanger is offline.
Thus, the Examiner has not established, by evidence or sound
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technical reasoning, a sufficient factual basis that could reasonably support
the conclusion that a skilled artisan would have had reason to modify the
cleaning method of Hurst with the object loading steps taught by Norgaard.
Because the Examiner’s rejection is not supported by an adequate reason to
combine the steps in the manner claimed by Appellants, we do not sustain
the rejection of claim 1. The rejections of dependent claims 2–4, 6–9, and
17–24 suffer from the same infirmity, which is not remedied by either of the
two additional references (Johns or Jemne) cited by the Examiner in support
of the second and third grounds of rejection. Accordingly, we do not sustain
the rejections of those claims.

CONCLUSION OF LAW AND DECISION
Because each of the Examiner’s rejections of claims 1–4, 6, 9, and
17–24 fails to provide an adequate reason to combine the teachings of Hurst
and Norgaard, and because each of the Examiner’s rejections relies on this
combination of references, we reverse the Examiner’s decision rejecting
claims 1–4, 6, 9, and 17–24.

REVERSED

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