Ex Parte Johnston et al

Patent Trial and Appeal Board

Jun 3, 2013

11018719 (P.T.A.B. Jun. 3, 2013)

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.
11/018,719 12/21/2004 Stephen Wayne Johnston TS1450 (US) 2230
23632 7590 06/03/2013
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
ROSATI, BRANDON MICHAEL
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
06/03/2013 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 STEPHEN WAYNE JOHNSTON and
DOMINICUS FREDERICUS MULDER
____________________

Appeal 2011-004380
Application 11/018,719
Technology Center 3700
____________________

Before: JAMES P. CALVE, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004380
Application 11/018,719
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 6-
9 and 11-19.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to a support for a tube bundle. Claim 6
reproduced below is independent, and is illustrative of the claimed subject
matter:
6. A heat exchanger comprising a bundle of tubes supported by
a plurality of support elements transverse to and spaced apart
along the direction of the tubes to be supported, wherein at least
one support element of the plurality of support elements is a
segmental baffle support element comprising a circular plate
from which a segment has been cut off and having openings for
accommodating and supporting tubes of the bundle of tubes,
and wherein at least one support element of the plurality of
support elements is an expanded metal support element
comprising a structure of strands and bonds, forming interstices
through which tubes of the bundle of tubes pass and are
supported by said structure of strands and bonds.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Small US 4,398,595 Aug. 16, 1983
Mulder
Masaaki
US 2003/0173066 A1
JP 5296680
Sep. 18, 2003
Nov. 9, 1993

1 Claim 10 was previously canceled.
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REJECTIONS
The Examiner made the following rejections:
Claims 6, 9 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Small and Mulder. Ans. 4.
Claims 7, 8, 11-13 and 15-19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Small, Mulder and Masaaki. Ans. 6.

ANALYSIS
Obviousness Rejections
Claims 6, 9 and 14, Small and Mulder
Claim 6 is independent, and claims 9 and 14 depend therefrom.
Appellants argue the claims together. App. Br. 4-6. We select claim 6 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 6 is directed to a heat exchanger having at least one segmented
baffle support element and at least one expanded metal support element
having strands and bonds that form interstices through which tubes pass and
are supported by the strand and bond structure.
The Examiner found that Small discloses a heat exchanger having a
bundle of tubes (100), support elements spaced throughout the bundle, and at
least one of the support elements is a segmental baffle support element (i.e.,
plate baffle 93) that is a circular plate having a cut off segment with
openings for the tube, and a second support element (110). Ans. 4, citing
Small, col. 8, ll. 56-68. The Examiner acknowledged that Small does not
disclose that the second support element is an expanded metal support
element, and relied on the disclosure of Mulder in Figures 1 and 2
concerning a heat exchanger with a tube bundle supported by transverse
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Application 11/018,719
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supports (21, 22, 23, 24, and 25), which are made of expanded metal. Id.,
citing Mulder, Abstract, paras. [0019]-[0021]. Based on these findings, the
Examiner reasoned that it would have been obvious
to modify the [heat exchanger] of Small with the expanded
metal support of Mulder because utilizing expanded metal
instead of the alternate support structure as disclosed in Small is
an obvious variant and one of ordinary skill would be capable
to use either, since both support the tube bundle in the same
manner.
Ans 4-5.
Appellants argue that Small expressly teaches that rod baffles 108,
110 are each a “non-supportive vortex generator rod baffle” and not an
expanded metal second support element. App. Br. 4-5, citing Small, col. 8,
ll. 64-68, col. 4, ll. 46-51, figs. 24-26; Reply Br. 2-3. In support of this
argument, Appellants contend that the supportive vortex generator rod
baffles of Small “do not touch or support the tubes.” App. Br. 5. This
argument is not persuasive because the disclosure of Small expressly
teaches that the rods 108, 110 forming the second support element “are non-
supportive (but can be supportive).” Ans. 8-9; see also Small, col. 13, ll. 11-
12, figs. 24-26. Small also discloses the use of supportive rod baffles 56 that
touch or “provide radial support for tubes 44, restraining them from
movement in any direction perpendicular to their longitudinal axes as well as
generating vortex streets.” See Small, col. 4, ll. 46-62, figs. 2-9.
Further, Appellants argue that Mulder and Masaaki likewise do not
teach a second support element. This argument is not persuasive since the
Examiner’s finding did not rely on either Mulder or Masaaki to teach the
limitation of a second support element. See, e.g., Ans. 4, 8-9.
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Appellants also argue that it would not be obvious “to substitute the
expanded metal support element of Mulder (which have low resistance to
fluid flow), for the non-supportive vortex generator rod baffles 108 and 110”
since such a substitution “would destroy the essence of the invention in
Small which is based on the use of vortex generator rod baffles to create
high turbulence vortex sheets to dramatically improve the heat transfer
coefficient of the tube bundle.” App. Br. 6. The Examiner countered that
Mulder and Small are analogous art in the same field of endeavor. Ans. 9.
Appellants’ argument based on Smalls’ purported purpose is not persuasive
since it is not necessary for the prior art to serve the same purpose as that
disclosed in Appellants’ Specification in order to support the conclusion that
the claimed subject matter would have been obvious.2 Appellants do not
point to any feature of the second support element of claim 6 that is
structurally distinguishable from Small, or that the Small second support
element structure is not capable of performing the function of supporting the
tubes.
Appellants’ arguments do not persuade or apprise us of error in the
Examiner's findings that Small discloses a heat exchanger having a bundle
of tubes, at least one support element that is a segmental baffle support
element and a second support element, and reliance on Mulder to disclose an
expanded metal support element. The Examiner’s reason to combine the
teachings of Small and Mulder is expressly articulated and is supported by
rational underpinning. As such, we sustain the rejection of claim 6, and
claims 9 and 14 which depend therefrom, under 35 U.S.C. § 103(a).

2 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). See also In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-421 (2007) (“A reference may be read for
all that it teaches, including uses beyond its primary purpose.”).
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Claims 7, 8, 11-13, and 15-19, Small, Mulder and Masaaki
Appellants argue claims 7, 8, 11-13, 15-17 and 19 together, and we
select claim 7 as representative. We separately consider claim 18, which
was separately argued.
Claims 7, 8, 11-13, 15-17, and 19
The Examiner repeated the findings associated with claim 6, further
noting that Small and Mulder do not disclose that the second support
element is a combined support element having an expanded metal support
plate spanning the window formed between the baffle and inside diameter of
a shell of the heat exchanger, and relied on Masaaki to teach this limitation.
Ans. 6, citing Masaaki, fig. 4. The Examiner reasoned that it would be
obvious to modify Small and Maasaki with the expanded metal supports of
Mulder, “because utilizing expanded metal instead of the lattice structure
disclosed in Masaaki is an obvious variant and one of ordinary skill would
be capable to use either, since both support the tube bundle in the same
manner.” Ans. 6.
Appellants reiterate the same arguments presented for the rejection of
claim 6. Appellants challenge the articulated reason provided by the
Examiner to substitute the expanded metal support element of Mulder with
the teachings of Small regarding a heat exchanger, “because to do so would
destroy the essence of the invention in Small which is based on the use of
vortex generator rod baffles to create high turbulence vortex sheets which
dramatically improves the heat transfer coefficient of the tube bundle.” App.
Br. 7. Appellant’s argument is not persuasive for the reasons discussed
supra in connection with claim 6.
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While Appellants admit that Masaaki teaches a combined support
plate having a segmented baffle and lattice support structure formed from
multiple thin sheets, Appellants contend that Masaaki does not cure the
deficiencies of Small and Mulder, since Masaaki does not disclose the
vortex generator rod baffles of Small or expanded metal support elements of
Mulder. App. Br. 7-8. We note that Appellants do not dispute the
Examiner’s finding that Masaaki teaches a combined support element having
a segmental baffle support element and a lattice support. Appellants’
contention that Masaaki does not disclose the vortex generator rod baffles of
Small or expanded metal support elements of Mulder is not persuasive, since
Appellants are improperly attempting to bodily incorporate selected features
of each reference in a manner inconsistent with the findings of the Examiner
and to attack the references individually where the Examiner has relied on
the combined teachings of the references.3
Finally, Appellants dispute the articulated reason provided by the
Examiner to combine the references, alleging that the use of a combined
support plate would not necessarily reduce the number of parts needed for
the device, since it is specified in claim 7 that the combined support plate is
prepared from a second segmented support and a second expanded metal
support. The Examiner reasonably found that the use of a combined plate in

3 “[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.” In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).

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the heat exchanger of Small potentially reduces parts, since one of skill in
the art would recognize that the various plating options of Small, Mulder and
Masaaki are well known and perform the same function. The Examiner’s
reason to combine the teachings of Small and Mulder with the combined
plate of Masaaki is expressly articulated and is supported by rational
underpinnings, which is what is required in making a rejection based on
obviousness.
Appellants have not identified any error in the Examiner’s
determination that the prior art would have rendered it obvious to construct a
system that has the structure recited in claim 7. Appellants’ arguments do
not apprise us of error in the Examiner’s conclusion of obviousness.4
Therefore, for these reasons and those discussed supra with respect to
claim 6, we likewise sustain the rejection of claims 7, 8, 11-13, 15-17 and 19
under 35 U.S.C. §103(a).

NEW GROUND OF REJECTION
Claim 18

4 See, e.g., In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof”); In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997) (affirming rejection of appellant’s claim
directed to a dispensing top for dispensing popcorn based on factual finding
that the prior art structure would be capable of dispensing popcorn); In re
Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (noting that the fact that
appellants may have a different purpose for combining prior art elements
does not negate the existence of a prima facie case of obviousness of the
combination of elements based on the purpose disclosed in the references).

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Appellants separately argue that the rejection of claim 18 is erroneous
since the combined teachings of Small, Mulder and Masaaki do not disclose
that the windows “are increased in size compared to conventional segmental
supports.” App. Br. 9-10. For the following reasons, we reject claim 18
under 35 U.S.C. § 112, second paragraph, as being indefinite and
denominate the rejection as a NEW GROUND OF REJECTION.
In considering Appellants’ argument concerning patentability of claim
18, we look to the Specification in order to interpret the meaning of the
limitation in claim 18 that “the size of said window is increased compared to
a segmental support baffle element that is not combined with an expanded
metal support element that spans the window that is formed between the
segmental baffle support element and an inside diameter of the shell of the
heat exchanger.” The Background section of the Specification describes a
“[c]onventional segmental baffle” as “a circular metal plate from which a
circle segment (‘window’) is cut off.” See Spec. 2, ll. 7-16. In addition, the
Background describes a “baffle cut” as “the percentage of the circle diameter
which has been cut off to form the segmental baffle” and that the “maximum
baffle cut that is normally adopted is 45%.” Id. at 2, ll. 26-35. The Detailed
Description of the Invention states that “(s)ince the expanded metal also
imposes some small flow restriction, it may be desirable to slightly increase
the size of the window compared to a conventional segmental support
baffle.” Id. at 6, ll. 23-26.
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). Merely that a
claim is broad does not mean that it is indefinite. See In re Johnson, 558
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F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA
1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970). However, if a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring an applicant to more precisely define the metes and
bounds of the invention by holding the claim unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite. Ex parte Miyazaki, 89 USPQ2d
1207, 1211-12 (BPAI 2008) (precedential). Moreover, “[t]he scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a
particular individual purportedly practicing the invention.” Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005).
Based on the plain language of claim 18, it is unclear as to the basis
used to define the increase in window size. For example, whether the
increase in size is measured relative to a single window or multiple
windows, whether the increase in size is measured relative to the total area
of the segmental baffle plate, or whether the increase in size applies only to a
combined segmental support baffle and expanded metal support element.
Thus, claim 18 can be amenable to two or more plausible claim
constructions, the meaning of which depends on the unrestrained, subjective
opinion of a person practicing the invention.
Accordingly, we enter a NEW GROUND OF REJECTION of claim
18 under 35 U.S.C § 112, second paragraph, as being indefinite, pursuant to
our authority under 37 C.F.R. § 41.50(b).
Because we have entered a new ground of rejection of claim 18 as
being indefinite, we pro forma reverse the prior art rejection of claim 18
because such determinations are based on a speculative assumption as to the
meaning of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970);
In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (determinations as to
Appeal 2011-004380
Application 11/018,719
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obviousness cannot be made for indefinite claims). It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter, and does not reflect on the adequacy of the
prior art evidence applied in support of the rejection.

DECISION
The rejection of claims 6-9, 11-17 and 19 under 35 U.S.C. § 103(a) is
affirmed.
The rejection of claim 18 under 35 U.S.C. § 103(a) is reversed.
As provided supra, we enter a NEW GROUND OF REJECTION of
claim 18 under 35 U.S.C. § 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner….
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record….
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)(2009).
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AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)

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