Ex Parte MIYAZAKI et alDownload PDFPatent Trial and Appeal BoardMay 1, 201813852144 (P.T.A.B. May. 1, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/852,144 03/28/2013 25191 7590 05/03/2018 BURR & BROWN, PLLC POBOX7068 SYRACUSE, NY 13261-7068 FIRST NAMED INVENTOR Makoto MIYAZAKI 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. 791_624 2154 EXAMINER LEO, LEONARD R ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 05/03/2018 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): tpreston@burrandbrown.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAKOTO MIYAZAKI and YOSHIO SUZUKI Appeal2017-007649 Application 13/852,144 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Makoto Miyazaki and Y oshio Suzuki (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants' invention relates to a heat exchanger element fixed to a heat exchanger. Spec. para. 1. Claims 1 and 18 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: Appeal2017-007649 Application 13/852,144 1. A heat exchanger element comprising: a cylindrical outer peripheral wall made of ceramic containing SiC as a main component, and partition walls which are made of ceramic containing SiC as a main component and separate and form a plurality of cells functioning as passages for a first fluid in a portion inside the outer peripheral wall; wherein the outer peripheral wall and the partition walls mediate heat exchange between the first fluid flowing through the portion inside the outer peripheral wall and the second fluid flowing through the portion outside the outer peripheral wall, the thickness T of the outer peripheral wall, an equivalent circle diameter D calculated from the area of the portion inside the outer peripheral wall in a cross section perpendicular to an axial direction of the outer peripheral wall, and thickness t of the partition walls satisfy the following formulae (1) to (3): Formula (1 ): 0.5 mm :S T :S 4.0 mm Formula (2): 15 mm :SD :S 120 mm Formula (3): 0.04 x T :St :S 0.6 mm, and a coefficient of thermal conductivity of the outer peripheral wall is 100 W Im· K or more. THE REJECTIONS The Examiner has rejected: (i) claims 1-3, 6, 17, 18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa (US 2002/0192426 Al, published Dec. 19, 2002) 1 in view of Takahashi (US 2010/0270011 Al, published Oct. 28, 2010); 1 Throughout the Final Action and the Answer, the Examiner mis-identified this reference as "Ishikawa" instead of "Ichikawa." 2 Appeal2017-007649 Application 13/852,144 (ii) claims 4, 7-9, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa in view of Takahashi and Otsuka (JP 2005- 308306 A, published Nov. 4, 2005) 2 ; (iii) claims 5, 10, 11, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa in view of Takahashi and Miyasaka (JP 62- 009183 Al, published Jan. 17, 1987) 3; and (iv) claims 12 and 14--16 under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa in view of Takahashi, Otsuka, and Miyasaka. A rejection of claim 18 under 35 U.S.C. § 112(b ), or pre-AIA § 112, second paragraph, as being indefinite, also appears at page 2 of the Final Action. An Advisory Action dated August 31, 2016, authorizes entry of an amendment to claim 18 that addresses the issues identified by the Examiner. 4 Although the Advisory Action does not explicitly indicate that the § 112 rejection was overcome, the Examiner did not reiterate the rejection in the Answer. See Ans. 2---6. Based on the entry of the amendments to claim 18 after final action, we assume that the indefiniteness rejection has been withdrawn. 2 A machine-generated English-language translation of the original Japanese publication is in the record of the application on appeal. 3 An English-language translation of the abstract of the original Japanese publication is in the record of the application on appeal. 4 Substantive amendments to claims 1 and 2 were also entered, but were deemed to not overcome the extant art rejections. 3 Appeal2017-007649 Application 13/852,144 ANALYSIS Claims 1-3, 6, 17, 18, and 20--0bviousness--Ichikawa/Takahashi Appellants do not argue claims 2, 3, 6, 17, 18, and 20 separately from claim 1. Appeal Br. 7-14; see also Reply Br. 1---6. We take claim 1 as representative of this group, and claims 2, 3, 6, 17, 18, and 20 stand or fall with claim 1. The Examiner finds that Ichikawa discloses most of the limitations of claim 1 including a heat exchanger element comprising an outer peripheral wall (outer wall 4) made of ceramic containing SiC and having a thickness of 0.1 mm to 0.9 mm, which overlaps the claimed range of being equal to or more than 0.5 mm and equal to or less than 4.0 mm. Final Act. 3 (citing Ichikawa, Fig. l(a); i-f 108); see also Ans. 7 (citing Ichikawa i-f 70). The Examiner acknowledges that Ichikawa does not disclose that the outer peripheral wall is made of a ceramic containing SiC having a coefficient of thermal conductivity of 100 W/mK or more. Final Act. 3. The Examiner finds that Takahashi discloses a heat exchanger element 1 including an outer peripheral wall made of a ceramic containing SiC as a main component with impregnated Si, having a coefficient of thermal conductivity of 100 W /mK or more to provide increased heat transfer. Id. (citing Takahashi, Fig. 8C; i-fi-1 87-88). The Examiner concludes that it would have been obvious to modify the outer peripheral wall of the heat exchanger element of Ichikawa to be made of a ceramic containing SiC having a coefficient of thermal conductivity of 100 W /mK or more to provide increased heat transfer, as taught by Takahashi. Id. Appellants contend that Ichikawa mentions only that its honeycomb structure could be used as a heat exchanger element, but does not disclose an 4 Appeal2017-007649 Application 13/852,144 actual embodiment in which the structure is used as a heat exchanger element. Appeal Br. 8. Appellants further argue that, were the honeycomb structure to be used as a heat exchanger element, there is no disclosure that the structure would be configured such that the outer peripheral wall and partition walls would mediate heat exchange between a first fluid flowing through a portion inside the outer peripheral wall and a second fluid flowing through a portion outside the outer peripheral wall, as required by claim 1. Appeal Br. 8; see also Reply Br. 1--4. Appellants argue that Ichikawa discloses many other uses for its structure, such as a catalyst carrier for an exhaust gas purification filter, or a catalytic converter container. Id. at 7-8 (citing Ichikawa Figs. 4, 18; i-fi-f l, 69, 109, 117); see also Reply Br. 2. As the Examiner explains, an ordinary artisan would understand that "the similar prior art ceramic honeycomb structure is capable of functioning as a heat exchanger," and that the device of Ichikawa is "structurally similar to the instant invention." Ans. 6. Further, the Examiner's position, with which we agree, is that there is no structural difference between the device of the combined teachings of Ichikawa and Takahashi and the device as claimed. Id. at 7. Appellants do not provide any persuasive argument or evidence to show that the structure of Ichikawa is not capable of mediating heat exchange between a first fluid flowing through a portion inside the outer peripheral wall and a second fluid flowing through a portion outside the outer peripheral wall. We note Appellants' reference to a catalytic converter container as shown in Figure 4 of Ichikawa, and the attendant argument that this embodiment is incapable of mitigating heat exchange between a first fluid 5 Appeal2017-007649 Application 13/852,144 flowing inside an outer peripheral wall and a second fluid flowing outside a peripheral wall. Appeal Br. 8. It appears that Appellants take this position because there is no enclosure for a second fluid to surround a peripheral wall of the catalytic converter container. Appellants additionally contend that other configurations disclosed in Takahashi do not mediate heat exchange the same way as the heat exchanger element of Appellants' disclosure. Appeal Br. 9. Appellants' position relative to these embodiments is unavailing, in that the honeycomb structure is not acting as a heat exchanger in those embodiments. Appellants fail to provide any persuasive argument or evidence to show that the structure as shown in Figure l(a) of Ichikawa is not capable of mediating heat exchange between a first fluid flowing through the portion inside the outer peripheral wall and a second fluid flowing through the portion outside the outer peripheral wall. Thus, Appellants do not apprise us of Examiner error. Appellants further argue that there is no reason for an ordinary artisan to look to the materials used in the outer peripheral wall of the heat exchanger element of Takahashi to modify the structure of Ichikawa. Appeal Br. 10. Appellants contend that Ichikawa is particularly directed to a structure formed of cordierite. Id. (citing Ichikawa i-fi-f 13, 16, 118). Appellants further argue that the Examiner is picking and choosing from the materials disclosed in Takahashi simply to meet the coefficient of thermal conductivity in Takahashi because Takahashi discloses that SiC, by itself, has a coefficient of thermal conductivity of only 20 W Im· K. Id. Appellants argue that there would have been no reason for an ordinary artisan to look to the materials used to form the heat exchanger element of Takahashi to 6 Appeal2017-007649 Application 13/852,144 modify the structure of Ichikawa to have SiC impregnated with metal Si 5 and the claimed coefficient of thermal conductivity. Id. These arguments are unpersuasive. As Appellants acknowledge, Ichikawa itself discloses that its structure can be formed of ceramic materials containing SiC. Id. at 9 (citing Ichikawa, i-fi-1 55, 108). Further, this argument does not address the rejection, as the Examiner does not rely on a disclosure of SiC by itself, but rather relies on Takahashi as teaching an outer peripheral wall made of a ceramic containing SiC impregnated with Si and having a coefficient of thermal conductivity of 100 W Im· K or more for providing increased heat transfer. See Final Act. 3; see also Ans. 8. Takahashi discloses: In order that the heat exchange element 1 of a ceramics heat exchanger 10 of the present invention may obtain high heat exchange rate, it is preferable to use a material containing silicon carbide having high thermal conductivity as the material for the segment. However, since high thermal conductivity cannot be obtained in the case of a porous body even by silicon carbide, it is more preferable to obtain a dense body structure by impregnating the segment as the heat exchange element 1 with silicon in the process of producing the segment. By the dense body structure, high thermal conductivity can be obtained. For example, in the case of porous body of silicon carbide, it is about 20 W/mK. However, by the dense body, it can be made about 150 WlmK. That is, though Si-impregnated SiC, ShN4, SiC, or the like may be employed as the ceramic material, it is particularly desirable to employ Si-impregnated SiC in order to obtain a dense body structure for obtaining high heat exchange rate . .... 5 We note that although claim 18 recites that the outer peripheral wall contains "SiC impregnated with metal Si as a main component," claim 1 only recites that the outer peripheral wall contains "SiC as a main component." Appeal Br. 15, 19 (Claims App' x.). 7 Appeal2017-007649 Application 13/852,144 Further, though SiC has the characteristics of high thermal conductivity and easy heat release, Si-impregnated SiC is formed densely with showing high thermal conductivity and heat resistance and shows sufficient strength as a heat transfer member. That is, the heat exchange element 1 of a Si-SiC based (Si-impregnated SiC) material shows high thermal conductivity as well as properties excellent in corrosion resistance against acid and alkali besides thermal resistance, thermal shock resistance, and oxidation resistance. Takahashi i-fi-1 87-88 (emphasis added). As evidenced in these passages, the material identified by the Examiner as having been obvious to use in Ichikawa is said by Takahashi to be "particularly desirable" for obtaining a high heat exchange rate, the very reason provided by the Examiner for the modification. Accordingly, Appellants' contention that there would have been no reason for an ordinary artisan to look to the materials used to form the heat exchanger element of Takahashi to modify the structure of Ichikawa to have SiC impregnated with metal Si and the claimed coefficient of thermal conductivity, is unpersuasive. Appellants contend that there is no reason for an ordinary artisan to modify the structure of Ichikawa to have an outer peripheral wall with a thickness as claimed. Id. at 10; see also Reply Br. 5. In support of this contention, Appellants argue that although Ichikawa discloses structures with an outer peripheral wall thickness varying between 0.1 mm to 0.9 mm, Ichikawa also discloses that an outer wall peripheral thickness of more than 0.4 mm does not result in an improvement of isostatic strength as compared to a structure having an outer peripheral wall thickness of less than 0.4 mm. Appeal Br. 11 (citing Ichikawa, Fig. 5; i-f 16); see also Reply Br. 4. Appellants point out that while Figure 5 shows increasing the outer peripheral wall thickness from 0.4 mm to 0.5 mm results in an increase in 8 Appeal2017-007649 Application 13/852,144 isostatic strength, the isostatic strength for the 0.5 mm outer wall peripheral thickness is less than the isostatic strength for an outer peripheral wall thickness of less than 0.4 mm. Appeal Br. 12. As such, Appellants contend that an ordinary artisan would have used an outer peripheral wall thickness of 0.2 mm to 0.4 mm, which provides the maximum isostatic strength, as opposed to a 0.5 mm outer peripheral wall thickness which only meets the minimum outer peripheral wall thickness as claimed. Id. at 12-13; see also Reply Br. 4--7. Appellants further argue that using a structure that has an outer peripheral wall thickness of 0.5 mm based on Figure 5 of Ichikawa would improperly ignore the disclosure of Ichikawa as a whole because Ichikawa is concerned with improving isostatic strength and thermal shock resistance. Appeal Br. 12 (citing Ichikawa i-fi-f 12, 14); see also Reply Br. 4. Appellants point out that Figure 6 of Ichikawa discloses that an outer peripheral wall thickness above 0.5 mm would result in a decrease in thermal shock resistance, and that even increasing the outer peripheral wall thickness above 0.1 mm would also decrease thermal shock resistance. Appeal Br. 13 (citing Ichikawa, Fig. 6; i120). These contentions are unpersuasive. First of all, no "modification" of Ichikawa is needed to reach the claimed range of wall thicknesses--there is overlap in the disclosed and claimed ranges. The Federal Circuit informs us that "[i]n cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness." See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). See also Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) ("where there is a range disclosed in the prior 9 Appeal2017-007649 Application 13/852,144 art, and the claimed invention falls within that range, there is a presumption of obviousness."). Here, Appellants acknowledge that Ichikawa discloses structures with an outer peripheral wall thickness varying in the range of 0.1 mm to 0.9 mm, which overlaps the range of outer peripheral wall thickness as claimed. See Appeal Br. 7 ("Ichikawa discloses a honeycomb structure ... , the thickness of the outer peripheral wall Ts is 2: 0.05 mm."). None of Appellants' arguments apprise us of Examiner error in rejecting claim 1. Accordingly, we sustain the rejection of claim 1, with claims 2, 3, 6, 17, 18, and 20 falling with claim 1. Claims 4, 7-9, and 19--0bviousness--Ichikawa/Takahashi/Otsuka Claims 5, 10, 11, and 13--0bviousness--Ichikawa/Takahashi/Miyasaka Claims 12 and 14-16--0bviousness--Ichikawa/Takahashi/Otsuka/Miyasaka Appellants do not provide any substantive arguments for claims 4, 5, 7-16, and 19, and rely on the arguments presented for claims 1 and 18. See Appeal Br. 7-14; Reply Br. 1---6. For the reasons discussed above with respect to claims 1 and 18, we are not apprised of error in these rejections. Accordingly, the rejections of claims 4, 5, 7-16, and 19 are sustained. DECISION The rejections of claims 1-20 are sustained. 10 Appeal2017-007649 Application 13/852,144 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation