Ex Parte Korth et al

Patent Trial and Appeal Board

May 25, 2018

12159272 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/159,272 09/25/2008
28289 7590 05/30/2018
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Jay S. Korth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4493-081885 5704
EXAMINER
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
05/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAYS. KORTH and GEOFF SMITH
Appeal2017-008834
Application 12/159,272
Technology Center 3700
Before STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5, 7-9, 11-25, 27-33, and 35-37. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appeal2017-008834
Application 12/159,272
CLAIMED SUBJECT MATTER
The claims are directed to a multi-fluid heat exchanger arrangement.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A multi-fluid heat exchanger joined by a common header
portion, said heat exchanger comprising:
(a) a pair of opposed headers, each of said headers
comprising a single plate and including a first set of openings
and a second set of openings designed according to a first
predetermined configuration and a second predetermined
configuration, wherein the first set of openings and the second
set of openings are positioned adjacent one another on the
single plate of each of the pair of opposed headers;
(b) a first tube core comprising a first set of tubes
arranged according to said first predetermined configuration of
said first set of openings, said first set of tubes having opposed
ends aligned and secured within said first set of openings in
said pair of opposed headers, wherein the first predetermined
configuration of the first tube core comprises an array having a
first predetermined spacing between the tubes;
( c) a second tube core comprising a second set of tubes
arranged according to said second predetermined configuration
of said second set of openings, said second set of tubes having
opposed ends aligned and secured within said second set of
openings in said pair of opposed headers, wherein the second
predetermined configuration of the second tube core comprises
an array having a second predetermined spacing between the
tubes; and
( d) a core divider positioned between said first tube core
and said second tube core, said core divider including a
reinforcement member positioned adjacent thereto, wherein the
core divider and the reinforcement member extend substantially
the entire length of the first and second tube cores,
wherein said first predetermined configuration of said
first set of openings and said first tube core has a different
arrangement from said second predetermined configuration of
said second set of openings and said second tube core and
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Application 12/159,272
wherein the first predetermined spacing is different than the
second predetermined spacing.
REJECTIONS
Claims 1-3, 5, 7, 8, 11, 12, 15-17, 19-24, 35, and 36 are rejected
under 35 U.S.C. § I03(a) as being unpatentable over Mano (US Pat. No.
6,883,600 B2; Apr. 26, 2005) and Panthofer (US Pat. No. 2,505,790; May 2,
1950).
Claims 2 and 16 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mano, Panthofer, and Young (US Pat. No. 3,857, 151;
Dec. 31, 1974).
Claims 4 and 18 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mano, Panthofer, and Abe (US Pat. Pub. No.
2011/0075370 Al; Mar. 31, 2011).
Claims 9 and 25 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mano, Panthofer, and Abu-Isa (US Pat. No. 4,559,688;
Dec. 24, 1985).
Claims 13 and 14 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Mano, Panthofer, and Wisniewski (US Pat. No. 7,143,822
B2; Dec. 5, 2006).
Claims 27-29, 31, 32, and 37 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Mano, Panthofer, and Wisniewski.
Claim 28 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Mano, Panthofer, 1 Wisniewski, and Young
1 Panthofer appears to have been inadvertently omitted from the rejection
statement.
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Application 12/159,272
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mano, Panthofer, 2 Wisniewski, and Abe.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mano, Panthofer, 3 Wisniewski, and Abu-Isa.
OPINION
Claim 1 - "wherein the first predetermined spacing is different than the
second predetermined spacing. "
The Examiner found, "Panthofer discloses in Figure 2, a heat
exchanger with first and second tube cores having different spacing." Final
Act. 3. The Examiner quotes from MPEP § 2125(I) asserting, "'[D]rawings
and pictures can anticipate claims if they clearly show the structure which is
claimed."' Ans. 4 ( citations in MPEP omitted). Appellants correctly point
out (Reply Br. 3) that, because the issue involved here relates to relative tube
spacings-a proportion-MPEP § 2125(II) and cases cited therein are more
instructive:
When the reference does not disclose that the drawings are to
scale and is silent as to dimensions, arguments based on
measurement of the drawing features are of little value. See
Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951,
956 ... (Fed. Cir. 2000) ( ... "[I]t is well established that patent
drawings do not define the precise proportions of the elements
and may not be relied on to show particular sizes if the
specification is completely silent on the issue.").
2 Panthofer appears to have been inadvertently omitted from the rejection
statement.
3 Panthofer appears to have been inadvertently omitted from the rejection
statement.
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Application 12/159,272
If Panthofer does show any difference in tube spacing between the
two heat exchanger sections 10, 21, it certainly does not do so "clearly" as
would be required even by the standard set forth by the Examiner. The
record before us lacks persuasive evidence to demonstrate varying tube
spacing in the manner recited in claim 1 was known or persuasive reasoning
to explain what would predictably be expected from making such a
modification to Mano. Absent such evidence or articulated reasoning we
cannot sustain the Examiner's rejection of claim 1, and the rejections of
those claims depending therefrom, based on the Mano-Panthofer
combination.
Claim 2 7 - "wherein the first predetermined depth and the second
predetermined depth is defined as the length of aiiflow through the first tube
core and the second tube core, and wherein said first predetermined depth of
said first tube core is different than said second predetermined depth of said
second set tube core. "
The Examiner found that "Wisniewski discloses in Figures 1 and 2, a
heat exchanger core (comprised of tubes 90) with tubes having one depth
(a3) along the airflow direction and another core (comprising tubes 70
and/or 80) with tubes having a different depth (al and a2; Col. 4:40-47)
along the airflow direction." Final Act. 13. Appellants correctly point out
that the cited portion of Wisniewski' s disclosure concerns variation in size
of the tubes themselves. Reply Br. 6. It is true that if the tube size is varied,
as Wisniewski discloses, and there is only a single row of tubes, the "core
depth," as that term is expressly defined in claim 27, would also necessarily
vary. However, first, there is no indication that Wisniewski's exchanger is
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limited to a single row. Second, and in any case, according to the
Examiner's rejection of claim 27 the Examiner proposed to include multiple
rows in Mano in view of Panthofer's teaching of doing so. Final Act. 14--15.
If there are multiple rows, varying the tube size for purposes of achieving a
particular hydraulic diameter as the Examiner suggests (Final Act. 15) does
not necessarily yield the claimed subject matter including the differing core
depths unless the row spacing is maintained constant. As there is no
persuasive evidence or technical reasoning supplied by the Examiner
regarding varying the tube size while also maintaining consistent row
spacing in both cores, the Examiner's proposed combination would not
necessarily yield the claimed subject matter. Accordingly, as the Examiner
has not demonstrated unpatentability of the precise subject matter claimed
the rejection of claim 27, and the rejections of those claims depending
therefrom, based on the Mano-Panthofer-Wisniewski combination, cannot
be sustained.
Claim 15
In addition to arguing limitations unique to claim 15 Appellants
contend that the arguments regarding Mano and Panthofer also apply. App.
Br. 24. However, it is not clear from the Examiner's rejection why
Panthofer was applied against claim 15. The only finding made by the
Examiner regarding Panthofer and claim 15 involved the "different spacing"
discussed above concerning claim 1. Final Act. 4. However, this limitation
is not present in claim 15. We, therefore, treat the Examiner's citation of
Panthofer with regard to claim 15 as extraneous and inadvertent and the
Appellants' arguments concerning Panthofer moot with respect to claim 15.
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Single plate
Appellants argue Panthofer fails to teach the single-plate aspects of
limitation (a). App. Br. 21. The Examiner correctly points out this
argument is inapposite because Mano's plate 41 "coupled with both tubes
( 11, 21 )" (Mano, col. 4, 11. 60-61) was relied on to satisfy this limitation.
Ans. 4.
Core divider
Appellants' argument concerning the core divider (App. Br. 21-22;
Reply Br. 4) does not direct our attention to any specific language of the
claim that is not satisfied by Mano's dummy tubes 35, regarded by the
Examiner as the recited "core divider." Appellants contend that "[ n Jo where
does Mano teach that these unused tubes provide core support and/ or that
these unused tubes can be positioned between a pair of cores having
different configurations." App. Br. 21. Claim 15 has neither a "support"
requirement, nor a "different configurations" requirement, recited in relation
to the core divider. Division can occur independent of, and therefore, does
not necessarily imply a requirement to provide, support. The fact that the
reinforcement member of claim 15 is further defined in claim 3 6 such that
the "reinforcement member comprises a plurality of dead tubes positioned
adjacent the core divider" does not negate the reasonableness of regarding
the centermost tube 35 and/or its surrounding fins as a "core divider"
according to claim 15. See App. Br. 21. Tubes 35 on each side of that
central tube structure, which are positioned closer to each header space 16,
26, satisfy the "dead tubes" language of the claim 36 "reinforcement
member." Claim 36, or a claim depending therefrom, would still allow for
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the addition of a limitation reciting, for example, "wherein [ said core
divider] comprises a ... dead tube[]." That being the case, claim 15 must be
broadly, but reasonably, construed to cover such a possibility.
First and second techniques
The following language of claim 15 amounts to a product-by-process
limitation because it defines the claimed subject matter by reciting the
process of manufacture as opposed to the resultant structure:
wherein said first set of tubes is secured to the first series of fins
of said first fin core arrangement according to a first technique
and said second set of tubes is secured to the second series of
fins of said second core arrangement according to a second
technique which is different from said first technique.
Appellants and the Examiner appear to agree that MPEP § 2113 and cases
cited therein are instructive. Final Act. 5; App. Br. 23. However,
Appellants misapply the legal standards discussed there. Appellants argue:
The [S]pecification of the present invention clearly states that
the use of different securing techniques enables one to optimize
the performance of the heat exchanger according to the
particular fluid being cooled in the individual units (see
paragraph [0032] of the [S]pecification). Thus, in accordance
with MPEP [§] 2113, Appellant[s] ha[ve] shown that using two
different securing techniques for the different headers results in
a materially different product, i.e., one in which the
performance thereof has been optimized.
App. Br. 23; Reply Br 5.
If claim 15 had specified, for example, that the first and second
techniques were the respective mechanical and brazing techniques discussed
in paragraphs 32-34 of the Specification, Appellants might have a valid
argument that these two different techniques, in particular, would result in
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two different structures because similar terms, like "welded" for example,
have been held to implicate the existence of a structural distinction in a final
product. See MPEP § 2113 (and cases cited therein). Here, however, claim
15 lacks any such specificity. It is not enough that techniques described only
in the Specification may create a structural distinction if those particular
techniques are not recited in the claim. In the product-by-process context,
the Specification may be used to ascertain the structural implications of a
technique expressly recited in a claim, but not to import a particular
technique appearing only in the Specification and having no express basis in
the claim. In re Prater, 415 F.2d 1393, 1395 (CCPA 1969) ("'[R]eading a
claim in the light of the specification,' to thereby interpret limitations
explicitly recited in the claim, is a quite different thing from 'reading
limitations of the specification into a claim,' to thereby narrow the scope of
the claim by implicitly adding disclosed limitations which have no express
basis in the claim.").
"[T]echnique" is a broad term that covers both techniques like those
described in Appellants' Specification and others. Some of the
manufacturing techniques covered by this term may result in structural
differences in the final product, while others will not. For example, a minor
difference in brazing temperature, a slight difference in the copper content of
the alloy, or a difference in the order, time, or speed of assembly of
mechanically joined components, are all differences in securing techniques
that reasonably fall within the claim language but are unlikely to result in
any discemable structural distinction with respect to the final product
claimed.
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As during prosecution claim terms must be afforded their broadest
reasonable construction, the Examiner correctly concluded that the generic
recitation of "a second technique which is different from said first
technique" must be construed to include at least some techniques which do
not, in fact, result in any structural differences between the final heat
exchanger product claimed and that of Mano. Final Act. 5. Appellants
present reasoning as to why the techniques described in the Specification
may result in a structural distinction in the final product, but present no
persuasive evidence that the mere recitation of "a second technique which is
different from said first technique" implicates any such structural distinction.
See MPEP § 2113 (II) ("Once the examiner provides a rationale tending to
show that the claimed product appears to be the same or similar to that of the
prior art, although produced by a different process, the burden shifts to
applicant to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.") (Citing
In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). We need not reach or rely
on the Examiner's alternate rationale (Final Act. 5) which is not fully
developed in the record before us.
For the foregoing reasons we sustain the Examiner's rejection of
claim 15 and the rejections of those claims depending therefrom and not
separately argued.
Claim 18 - "brass alloy containing a small percentage of iron"
With regard to claim 18 Appellants correctly point out that Abe's
(i-f 20) disclosure of "e.g., silver, copper, gold, aluminum, brass, iron, or
alloy thereof' does not necessarily teach "a brass alloy [with] a small
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percentage of iron" as recited in claim 18. The phrase "alloy thereof' does
not necessarily mean an alloy including combinations of listed materials
with each other or specify any relative proportions for such a combination.
The Examiner also has not articulated any particular reason or predictable
result associated with using a "high thermal conductivity" material in
rejecting claim 18. Final Act. 11; Ans. 8-9. Accordingly, the rejection of
claim 18 cannot be sustained on the basis set forth by the Examiner.
DECISION
The Examiner's rejections of claims 1-5, 7-9, 11-14, 18, 27-33, 35,
and 3 7 are reversed.
The Examiner's rejections of claims 15-17, 19-25, and 36 are
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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