Ex Parte Korth et alDownload PDFPatent Trial and Appeal BoardMay 25, 201812159272 (P.T.A.B. May. 25, 2018) Copy Citation 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 2 Appeal2017-008834 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. 3 Appeal2017-008834 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. 4 Appeal2017-008834 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 5 Appeal2017-008834 Application 12/159,272 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. 6 Appeal2017-008834 Application 12/159,272 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 7 Appeal2017-008834 Application 12/159,272 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 8 Appeal2017-008834 Application 12/159,272 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. 9 Appeal2017-008834 Application 12/159,272 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 10 Appeal2017-008834 Application 12/159,272 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 11 Copy with citationCopy as parenthetical citation