Ex Parte Kohlgruber

Board of Patent Appeals and Interferences

Nov 24, 2009

10896241 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLEMENS KOHLGRÜBER
____________

Appeal 2008-001200
Application 10/896,241
Technology Center 3700
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Decided: November 24, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Klemens Kohlgrüber (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-36, all of the claims
currently pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). An oral hearing was conducted on November 4, 2009, with
William C. Gerstenzang, Esq., appearing on behalf of Appellant.
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an evaporator apparatus
and method for removing volatile substances from highly viscous media.
The evaporator apparatus includes a heat exchanger having heat exchange
tubes surrounded by a jacket, with the heat exchanger tubes having a
rectangular or elliptical cross-section over the greater part of their length.
(Appeal Br., Claims Appendix, Claim 1). Independent claim 1 is reproduced
below (paragraphing added), and is representative of the overall claimed
subject matter:
1. An evaporator apparatus (1) comprising

a heat exchanger (4), said heat exchanger being
comprised of a plurality of parallel heat exchanger
tubes (8) surrounded by a jacket (10),

each of said heat exchanger tubes having a first
end and a second end, the first ends of said heat
exchanger tubes being terminated at a first
perforated tray (3) and the second ends of said heat
exchanger tubes being terminated at a second
perforated tray (9),
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a feed chamber adjoining said first perforated tray
and a devolatilization chamber adjoining said
second perforated tray, said feed chamber having
an inlet, said devolatilization chamber having a
discharge and a vapor outlet and said jacket
having an inlet and an outlet for heat transfer
media,

wherein said heat exchanger tubes have a
rectangular or elliptical cross-section over the
greater part of their length.

THE REJECTIONS
The Examiner relies upon the following1 as evidence of
unpatentability:
Newman US 4,294,652 Oct. 13, 1981
Morris US 4,548,788 Oct. 22, 1985
Mattiussi US 5,084,134 Jan. 28, 1992
Steffens2 US Appl. No. 11/138,991 Dec. 1, 2005

The Examiner has rejected:
(i) claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Mattiussi;
(ii) claim 22 under 35 U.S.C. § 102(b) as being anticipated by
Newman;

1 The Examiner has also cited to several additional U.S. patents and one
European Patent Application as providing corroborating evidence for certain
alleged teachings of the references applied against the rejected claims. They
are not listed here, in that they are not germane to our decision.

2 This then-pending U.S. application was relied upon by the Examiner in a
provisional rejection based on nonstatutory obviousness-type double
patenting. The application has subsequently issued as U.S. Patent No.
7,757,660 B2, on August 18, 2009.
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(iii) claims 2-11, 13-15, 19-21 and 36 under 35 U.S.C. § 103(a) as
being unpatentable over Mattiussi;
(iv) claims 16-18 under 35 U.S.C. § 103(a) as being unpatentable over
Mattiussi in view of Morris;
(v) claims 23-35 under 35 U.S.C. § 103(a) as being unpatentable over
Newman; and
(vi) claims 1-36 under the nonstatutory ground of obviousness-type
double patenting over claims 1-9 of Steffens (provisional rejection).

ISSUES
The Examiner found that the Mattiussi and Newman patents
identically disclose the use of heat exchanger tubes that have a rectangular
or elliptical cross-section over the greater part of their length. Appellant
contends that the Examiner has failed to establish that either Mattiussi or
Newman discloses this claimed feature. The issue presented on appeal is
whether Appellant has carried the burden of demonstrating that the
Examiner erred in finding that Mattiussi and Newman disclose the cross-
sectional shape of the heat exchanger tubes as claimed.
The Examiner concluded that claims 1-36 in the present application
are unpatentable over claims 1-9 of the Steffens application, in that the
Steffens claimed invention is an obvious variation of the presently-claimed
invention, and in that the claimed cross-sectional shape of the heat
exchanger tubes is an “incidental feature”, thus making it obvious to modify
the Steffens application to operate with the same shape of heat exchanger
tubes. Appellant contends that claims 1-9 of Steffens do not disclose the
tube cross-sectional shape that is set forth in each of pending claims 1-36,
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and that the Examiner has not shown how or why that feature would have
been obvious in view of the Steffens claims. The issue joined here is
whether Appellant has established the Examiner erroneously concluded that
claims 1-36 herein would have been obvious in view of claims 1-9 of the
Steffens application.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The only reference to rectangular shapes appearing in Mattiussi
is to the shape of channels that pass a heat exchange fluid across the outer
surface of heat exchange tubes, and not to the cross-sectional shape of the
tubes themselves. (Mattiussi, col. 6, l. 51-col. 8, l. 31).
FF 2. Figures 3 and 6 in Mattiussi are perspective views of channel
structures, illustrating the openings into which the heat exchanger tubes will
be fitted. Figures 2 and 5 are plan views of the channel structures shown in
Figures 3 and 6, respectively. The plan views plainly show the tube
openings as being circular, to receive circular cross-section tubes therein.
(Mattiussi, Figs. 2-6; col. 6, ll. 15-24). The appearance of the openings as
being elliptical is an artifact of illustrating the circular openings in a
perspective view.
FF 3. Appellant’s Specification consistently addresses reshaping an
initially circular cross-section tube over a majority of its length, to achieve
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an elliptical or rectangular cross-sectional shape for improved heat exchange
characteristics. (Spec., passim).
FF 4. Figures 1, 4, and 7 of Mattiussi do not show the heat exchanger
tubes 13 in cross-section. (Mattiussi, Figs. 1, 4, 7). Figure 1 of Newman
does not show the heat exchanger tubes 40 in cross-section. (Newman, Fig.
1).
FF 5. It appears that the only possible way it could be asserted that
the tubes 13 in Figures 1, 4 and 7 of Mattiussi and tubes 40 in Figure 1 of
Newman can be construed as having a rectangular cross-section is to section
the tubes parallel to their longitudinal axes. Such a section does not result in
a rectangular cross-section, rather, it produces a cross-section of two parallel
lines.
FF 6. Claim 1 of the Steffens application, the only independent claim
therein, is directed to a distillative separation process employing at least two
different distillation columns. (Steffens, Claim 1).

PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
Anticipation under 35 U.S.C. § 102 requires that “each and every
element as set forth in the claim is found, either expressly or inherently

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described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
In interpreting claim language, we apply the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
The proper inquiry for obviousness-type double patenting is to
compare the claims of an application or patent with the claims of another
application or patent, to see whether the claims are patentably distinct.
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082 (Fed. Cir. 1985).
ANALYSIS
Claim 1--Anticipation by Mattiussi
Appellant assigns error to the Examiner’s finding that the Mattiussi
patent discloses heat exchanger tubes having a rectangular or vertical cross-
section over the greater part of their length. (Appeal Br. 4-7). The
Examiner, in the grounds of rejection, asserts that this claim limitation,
specifically heat exchanger tubes having a rectangular cross-section, is
disclosed in Mattiussi at column 6, line 51, to column 8, line 31. (Answer
4). The only reference to rectangular shapes appearing in the cited passage
in Mattiussi is to the shape of channels that pass a heat exchange fluid across
the outer surface of the heat exchange tubes, and not to the cross-sectional
shape of the tubes themselves. (FF 1). Appellant points this out in response
to the Examiner’s position. (Appeal Br. 4-6).
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The Examiner responds to Appellant’s contention that the cited
passage from Mattiussi nowhere discloses heat exchanger tubes having
rectangular cross-sections, further finding that:
[w]ith respect to the claimed rectangular
shape, Mattiushi [sic] expressly discloses the
claimed rectangular cross-section heat exchanger
tubes at column 6 line 40 and column 7 line 24,
wherein the disclosed rectangular channels are
integrally part of the disclosed heat exchanger
tubes since both the claimed invention and
disclosed teachings recite heat exchange tubes for
a fluid inlet and outlet. Channels and tubes are
patentably interchangeable because both allow
directed fluid flow in heat exchangers.
(Answer 7).
As best understood, these statements appear to contend that the cross-
flow channels employed in the Mattiussi apparatus, which do have
rectangular cross-sections are: (1) an integral part of the heat exchanger
tubes, and thus identically disclose the cross-sectional shape of the claimed
heat exchanger tubes; or (2) that the rectangular cross-section channels
themselves constitute heat exchanger tubes. Alternatively, in using the
expression, “patentably interchangeable”, the Examiner is possibly
contending that the terms channels and tubes themselves are interchangeable
or there is some obviousness aspect to using a rectangular cross-section for
either the channels or the tubes. None of these contentions appear to be
factually supportable by the Mattiussi reference, and indeed appear to be
quite contrary to the disclosure in Mattiussi.
The Examiner also points to Figures 1, 4, and 7 of Mattiussi, stating
that the tubes 13 illustrated therein are shown as having a rectangular cross-
sectional shape, and to Figures 3 and 6 as showing the tubes with an
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elliptical cross-section. (Answer 6). As to the latter contention, Appellant
correctly notes that Figures 3 and 6 are perspective views of channel
structures, illustrating the openings into which the heat exchanger tubes will
be fitted. Figures 2 and 5 are plan views of the channel structures shown in
Figures 3 and 6, respectively. Those plan views plainly show the tube
openings as being circular, to receive circular cross-section tubes therein.
The appearance of the openings as being elliptical is an artifact of
illustrating the circular openings in a perspective view. (FF 2).
The Examiner additionally contends that, even if the tubes have a
circular cross-section, the claim limitation calling for the tubes to have an
elliptical cross-section is met, in that a circle is an ellipse whose major and
minor axes are the same length. (Answer 6-7). While the Examiner is
charged with giving claims their broadest reasonable interpretation
consistent with the Specification, this finding is not consistent with the
Specification and how the term elliptical would be understood by persons of
ordinary skill in the art reading the Specification. The entirety of the
Specification addresses reshaping an initially circular cross-section tube over
a majority of its length, to achieve an elliptical or rectangular shape for
improved heat exchange characteristics. (FF 3). Reading the Specification
from the standpoint of a person of ordinary skill in the art, Appellant, in
using the term “elliptical”, clearly intended the term to exclude the special
case of a “circular ellipse”.
Figures 1, 4, and 7 do not show the heat exchanger tubes in cross-
section. (FF 4). It appears that the only possible way it could be asserted
that the tubes 13 in Figures 1, 4 and 7 can be construed as having a
rectangular cross-section is to section the tubes parallel to their longitudinal
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axes. (FF 5). However, such a section does not result in a rectangular cross-
section, rather, it produces a cross-section of two parallel lines. Moreover,
persons of ordinary skill in the art would recognize from the Specification
that the claimed cross-sectional shape of the tubes is taken transversely to
the longitudinal axis of the tubes. (FF 3).
Accordingly, Appellant has demonstrated that the Examiner erred in
finding that Figures 1, 4 and 7 of Mattiussi disclose heat exchanger tubes
having the claimed rectangular or elliptical cross-section over a greater part
of their length. The rejection of claim 1 as anticipated by Mattiussi will not
be sustained.
Claim 22--Anticipation by Newman
Claim 22 is directed to a method for removing volatile components
from polymer solutions or polymer melts involving devolatization of the
solution or melt in an evaporator apparatus having heat exchanger tubes, the
ends of which are round, and, over the greater part of their length, have a
rectangular or elliptical cross-section. (Appeal Br., Claims Appendix, Claim
22). The Examiner asserts that the Newman patent discloses such a process
being performed by an apparatus having heat exchanger tubes having the
claimed construction. Specifically, the Examiner contends that tubes 40
illustrated in Figure 1 of Newman have the claimed cross-sectional shape.
(Answer 7-8).
As was the case above in considering Figures 1, 4 and 7 of Mattiussi,
it appears that the only possible way it could be asserted that the tubes 40 in
Figure 1 of Newman have a rectangular cross-section is to section the tubes
parallel to their longitudinal axes. (FF 5). However, such a section does not
result in a rectangular cross-section, rather, it produces a cross-section of
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two parallel lines. Moreover, persons of ordinary skill in the art would
recognize from the Specification that the claimed cross-sectional shape of
the tubes is taken transversely to the longitudinal axis of the tubes.
Accordingly, Appellant has demonstrated that the Examiner erred in
finding that Figure 1 of Newman discloses heat exchanger tubes having the
claimed rectangular or elliptical cross-section over a greater part of their
length. The rejection of claim 22 as anticipated by Newman will not be
sustained.
Claims 2-11, 13-15, 19-21 and 36--Obviousness--Mattiussi
The rejection of these claims as being obvious in view of Mattiussi is
predicated on the erroneous finding, discussed above, that Mattiussi
discloses an apparatus having heat exchanger tubes that have a rectangular
or elliptical cross-section over the greater part of their length. No assertion
is made that this claim feature, though not disclosed, would have been
obvious in view of Mattiussi. The rejection will not be sustained.
Claims 16-18--Obviousness--Mattiussi in view of Morris
The rejection of these claims as being obvious in view of Mattiussi
and Morris is predicated on the erroneous finding, discussed above, that
Mattiussi discloses an apparatus having heat exchanger tubes that have a
rectangular or elliptical cross-section over the greater part of their length.
No assertion is made that this claim feature, though not disclosed, would
have been obvious in view of Mattiussi in combination with Morris. The
rejection will not be sustained.
Claims 23-35--Obviousness--Newman
The rejection of these claims as being obvious in view of Newman is
predicated on the erroneous finding, discussed above with respect to the
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anticipation rejection of claim 22, that Newman discloses an apparatus
having heat exchanger tubes that have a rectangular or elliptical cross-
section over the greater part of their length. No assertion is made that this
claim feature, though not disclosed, would have been obvious in view of
Newman. The rejection will not be sustained.
Claims 1-36--Obviousness-type Double Patenting--claims 1-9 of Steffens
The Examiner states that, “[i]t would have been obvious to one skilled
in the art to modify the copending application with the currently claimed
heat exchanger tubes having a rectangular or elliptical cross-section, since
both claimed inventions have the same means or way, with the same
function, and having the same result, regardless of heat exchanger tubes
having a rectangular or elliptical cross-section.” (Answer 9). We find no
support for this contention. Claim 1 of the cited Steffens copending
application, the only independent claim therein, is directed to a distillative
separation process employing at least two different distillation columns. (FF
6). That claim does not recite or appear to have anything to do with a heat
exchanger and heat exchange tubes. Conversely, the claims of the instant
application have nothing to do with an apparatus or method employing
distillation.
To the extent that the Examiner may have been relying on the
disclosure of the copending application, we still fail to see any relationship
between the process disclosed there, and the invention claimed here. In any
event, a rejection made under the doctrine of obviousness-type double
patenting must relate to the alleged obviousness of the claims of the
application under examination in view of the claims of the other application
or patent.
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Appellant has demonstrated that the Examiner erred in rejecting
claims 1-36 under the doctrine of obviousness-type double patenting, and the
rejection will not be sustained.

CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims 1
and 22 under 35 U.S.C. § 102(b); in rejecting claims 2-11, 13-21, and 23-36
under 35 U.S.C. § 103(a); and in rejecting claims 1-36 under the judicially
established, non-statutory, doctrine of obviousness-type double patenting.

DECISION
The decision of the Examiner to reject claims 1-36 is reversed.

REVERSED

Klh

GERSTENZANG, WILLIAM C.
NORRIS MCLAUGHLIN & MARCUS, PA
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