Ex Parte Marr et al

Patent Trial and Appeal Board

Sep 16, 2014

11028360 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RONALD J. MARR and LARRY E. SHULTZ1
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Appeal 2012-012352
Application 11/028,360
Technology Center 3700
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Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a heat
exchanger. The Examiner has rejected the claims for obviousness and for
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Claims 28–31 and 38–51 are on appeal (App. Br. 1).2 The claims
subject to each rejection have not been argued separately and therefore stand

1 Appellants identify the real party in interest as Magnesita Refractories
(App. Br. 1).
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or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 28 is representative and
reads as follows:
28. A heat exchanger for use within a rotary kiln that includes a
cylindrical steel shell with an internal refractory lining, said heat exchanger
capable of being configured in a first, preformed configuration and a second,
installed configuration, said heat exchanger, in the first configuration,
comprises at least three loose, preformed refractory legs, each one of the
legs comprising:
a foot located at a foot end portion of the leg,
an inner end located opposite the foot end portion, and
an elongate, continuous body extending between the foot and the
inner end, thereby forming a single-leg unit, and
said heat exchanger, in the second configuration, is disposed in the
kiln and comprises each one of the continuous, single-leg units oriented
substantially radially from proximate the shell.3
Claims 28–31 and 38–40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ransom, Jr. et al. (US 5,330,351, July 19, 1994) (Ans. 4).
Claims 28–31 and 38–40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Vaughan, Jr. (US 3,227,430, Jan. 4, 1966) (Ans. 5).
Claims 28–31 and 38–51 stand rejected under 35 U.S.C. § 103(a) as
obvious over Andersen (US 3,036,822, May 29, 1962) (Ans. 5).

2 Claims 52–54 are also pending but have been withdrawn from
consideration (App. Br. 1). In addition, claims 32–37 are pending but are
not included among the list of claims that are rejected on any basis (Ans. 4–
7). (We note that claims 32–37 were included among the claims rejected
under 35 U.S.C. § 112, second paragraph, in the January 6, 2011 Final
Rejection. However, in the May 24, 2011 Advisory Action, the Examiner
indicated that this rejection had been overcome (Advisory 2).)
3 We note that the Claims Appendix to the Appeal Brief contains errors in at
least claim 28 (App. Br. 14). The claim presented herein, and on which we
have based our decision, is the claim as amended in the Reply filed
October 18, 2010.
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Claims 28–31 and 38–40 stand rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1–7 of U.S.
Patent No. 6,672,256 B2 (Jan. 6, 2004) to Marr et al. (Ans. 6).
I
In rejecting representative claim 28 over Ransom, the Examiner finds
that the “completed heat exchanger of Ransom anticipates, and therefore
renders obvious the ‘second configuration’ of the heat exchanger” (Ans. 5).
However, as amended, claim 28 is directed to a “heat exchanger capable of
being configured in a first . . . configuration and a second . . . configuration.”
Based on this amendment, we unanimously agree with Appellants that
claim 28 requires structure that can be configured in both the first and
second configurations (App. Br. 10).
In response to Appellants’ argument, the Examiner finds that
“Ransom clearly teaches that a first configuration has three loose performed
refractory legs 38, 40, 42” (Ans. 9). However, we conclude that the
Examiner has not adequately explained how Ransom teaches or suggests all
of the features of the first configuration, namely that the legs form a single-
leg unit.
Conclusion
We conclude that the Examiner has not set forth a prima facie case
that Ransom suggests the heat exchanger of claim 28. We therefore reverse
the obviousness rejection over Ransom of claim 28 and of claims 29–31 and
38–40, which depend directly or indirectly from claim 28.
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II
In rejecting claim 28 over Vaughan, the Examiner finds that the
“spokes of Vaughan anticipate, and therefore render obvious, the ‘first
configuration’ of the heat exchanger” (Ans. 5). However, as discussed
above, we agree with Appellants that claim 28 requires structure that can be
configured in both the first and second configurations.
In response to Appellants’ argument, the Examiner finds that the
“second configuration is the completed heat exchanger as shown in Fig. 2 of
Vaughan” (id. at 9). In the Reply Brief, Appellants refers us to the
arguments raised in the prior appeal (Reply Br. 4). However, given the
different way in which Vaughn is being used in the present appeal, we
cannot agree that Appellants have adequately explained why the Examiner’s
current position is in error.
Conclusion
The evidence supports the Examiner’s conclusion that Vaughn
suggests the heat exchanger of representative claim 28. We therefore affirm
the obviousness rejection over Vaughn.
III
In rejecting claim 28 over Andersen, the Examiner finds:
Andersen teaches a heat exchanger for use within a rotary
kiln that includes a cylindrical metallic shell 20 with an internal
refractory lining 21, [t]he heat exchanger comprising at least
three ceramic legs 23, each one of the legs comprising a foot
located at a foot end portion of the leg, an inner end located
opposite the foot end portion and an elongate, continuous body
extending between the foot and the inner end (see Fig. 1). Each
leg 23 may be made of a single piece of ceramic material
(col. 2, ll. 4-5). . . . Therefore, the at least three legs of
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Andersen, prior to their insertion into the kiln, satisfy the
requirements for the “first configuration” . . . .
Andersen discloses a completed heat exchanger which is
disposed in a rotary kiln, which comprises at least three legs 23
which radiate from the center of the kiln (Fig. 1). Upon
completion of the heat exchanger, Andersen shows in Fig. 1
that the legs 23 are radially oriented from proximate the
shell 20, and elongate metallic retainers 26 fits over the outer
most part of the leg 23 for retaining the legs 23 relative to the
shell 20. The completed heat exchanger of Andersen
anticipates, and therefore renders obvious the “second
configuration” of the heat exchanger . . . .
(Ans. 5–6.)
Analysis
Appellants argue that “Andersen does not teach preforming of the legs
outside the kiln” (App. Br. 11). However, the issue is not whether Andersen
teaches or suggests a first, preformed configuration. Instead, the issue is
whether Andersen teaches or suggests structure that is capable of being
configured in a first, preformed configuration. Claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997).
As noted by the Examiner (Ans. 6), Andersen discloses that “[e]ach
partition may be made of a single piece of ceramic material” (Andersen,
col. 2, ll. 4–5). Andersen also discloses:
The partitions meet at the kiln axis and extend radially
therefrom and the connection between each partition and the
shell includes a member extending through the shell and
engaging the outer end of the partition. Outside the shell, the
member is acted on by a spring which causes the member to
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exert a compressive force on the partition urging it toward the
kiln axis.
(Id. at col. 1, l. 70, to col. 2, l. 4.) In addition, Andersen discloses that the
members are “subject to replacement” (id. at col. 2, ll. 15–16). In view of
these disclosures, we agree with the Examiner that Andersen teaches or
suggests a heat exchanger that is capable of being configured in a first,
preformed configuration comprising at least three loose, preformed
refractory legs (Ans. 6).
We note Appellants’ argument that “Andersen is silent as to whether
the ‘single piece of ceramic’ embodiment is preformed or formed in situ”
(App. Br. 11). However, even if the partitions were formed in the kiln, the
evidence, as discussed above, suggests that the partitions would be capable
of being removed such that the heat exchanger would be capable of being
configured in the first, preformed configuration.
In addition, we understand Appellants’ argument that the term
“‘preformed’ . . . means to be formed beforehand” (Reply Br. 5). However,
in the context of a product claim, we do not interpret this term to require that
the partitions be formed outside the kiln. See In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985) (“even though product-by-process claims are limited by
and defined by the process, determination of patentability is based on the
product itself;” “[t]he patentability of a product does not depend on its
method of production;” and “[i]f the product in a product-by-process claim
is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process”).
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Conclusion
The evidence supports the Examiner’s conclusion that Andersen
suggests the heat exchanger of representative claim 28. We therefore affirm
the obviousness rejection over Andersen.
IV
With regard to the double patenting rejection, Appellants do not
traverse the rejection and instead state that they plan “to submit a terminal
disclaimer at the appropriate time” (App. Br. 12). We therefore summarily
affirm the double patenting rejection.
SUMMARY
We reverse the obviousness rejection over Ransom. However, we
affirm the obviousness rejections over Vaughn and over Anderson. We also
summarily affirm the obviousness-type double patenting rejection.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc