Ex Parte Mulder

Board of Patent Appeals and Interferences

Apr 5, 2011

10358942 (B.P.A.I. Apr. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/358,942 02/05/2003 Dominicus Fredericus Mulder TS-1059 USA 7604
23632 7590 04/06/2011
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
DUONG, THO V
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
04/06/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DOMINICUS FREDERICUS MULDER
____________________

Appeal 2009-008722
Application 10/358,942
Technology Center 3700
____________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dominicus Fredericus Mulder (Appellant) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1-8, 10-12 and 14. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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THE INVENTION
Appellant’s claimed invention is directed to a support for a plurality
of tubes in a cylindrical vessel, in particular, a heat exchanger (Spec. 1: para.
[0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A tube bundle comprising:
- a plurality of parallel tubes; and,
- axially spaced apart transverse supports for supporting
the parallel tubes in a cylindrical vessel,
wherein the transverse supports comprise a sheet of expanded
metal wherein the sheet metal comprises a structure of cross
laths with interstices; and,
wherein the transverse supports are discrete from one another
and do not form part of the walls of the parallel tubes.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1-8, 10-12 and 14 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1-5, 10-12 and 14 are rejected under 35 U.S.C. § 102(b) as
being anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
being unpatentable over Long (US 3,409,075, issued Nov. 5, 1968).
3. Claims 11, 4, 7, 8, 10-12 and 14 are rejected under 35 U.S.C. § 102(b)
as being anticipated by, or in the alternative, under 35 U.S.C. § 103(a)

1 The rejection of claim 2 over Koji has been withdrawn by the Examiner
(Ans. 3).
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as being unpatentable over Koji2 (JP 57-202497 A, published Dec. 11,
1982).

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that the invention called for in independent claim 1 does not comply with the
written description requirement of 35 U.S.C. § 112, first paragraph (App. Br.
4); (2) whether the Examiner erred in finding that Long describes
“transverse supports for supporting the parallel tubes,” as called for in
independent claim 1 (Reply Br. 3); and (3) whether the Examiner erred in
finding that Koji describes transverse supports comprising a sheet of
expanded metal, as called for in independent claim 1 (App. Br. 10).

ANALYSIS
Rejection of claims 1-8, 10-12 and 14 under 35 U.S.C. § 112, first
paragraph
Claim 1 calls for, inter alia, “wherein the transverse supports are
discrete from one another.”
The Examiner found (1) that the language “wherein the transverse
supports are discrete from one another” is not positively supported by the
original disclosure (Ans. 4), (2) that the word “‘discrete’ is not defined or
discussed in the specification” (id.), (3) that the word “‘discrete’ is defined
as consisting of distinct or unconnected elements” (id.), and (4) that “the

2 Both the Appellant (App. Br. Evidence Appendix) and the Examiner have
provided translations of Koji (communication dated Mar. 18, 2009). As the
Examiner’s translation appears to be of the whole document, we will rely on
the translation provided by the Examiner in our analysis.
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transverse support structures (21, 23 . . . 25) [are] connected to each other by
tubes (1,5,9)” (Ans. 8) (emphasis bolded).
Appellant contends that the claimed phrase “wherein the transverse
supports are discrete from one another” has support in the original
disclosure, and thus claim 1 complies with the written description
requirement of 35 U.S.C. § 112, first paragraph (App. Br. 4).
[T]he test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys
to those skilled in the art that the inventor had
possession of the claimed subject matter as of the
filing date. . . . [T]he test requires an objective
inquiry into the four corners of the specification
from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification
must describe an invention understandable to that
skilled artisan and show that the inventor actually
invented the invention claimed. This inquiry . . . is
a question of fact.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). See also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991).
“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.” Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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Appellant’s Specification describes (1) that “[t]ube bundle . . .
comprises a plurality of parallel tubes 1, 2, 3, 4, 5, 6, 7, 8, and 9 and axially
spaced transverse supports 21, 22, 23, 24 and 25 to support the intermediate
parts of the tubes in a cylindrical vessel having [a] cylindrical shell 30”
(Spec. 5: para. [0019]), and (2) that “[o]ptionally, the expanded metal sheets
of the transverse supports can be secured to a support ring 27 (Fig. 1) having
an outer diameter that is slightly less than the inner diameter of the
cylindrical shell 30” (Spec. 6: para. [0022]).
We agree with the Examiner that Appellant’s Specification does not
provide a definition for the word “discrete.” The Examiner has proffered a
dictionary definition of the word “discrete” as “consisting of distinct or
unconnected elements” (Ans. 4). We will use the Examiner’s definition in
our analysis.
We find that a person having ordinary skill in the art would
understand that the phrase “distinct or unconnected elements” means that the
elements are separate and independently identifiable elements.
Appellant’s Figure 1 shows the supports 21-25 as being separate and
independently identifiable elements.
We find that Appellant’s supports 21-25 are described in the
Specification and shown in the Drawings as elements that are different from
the tubes 1-9, support ring 27 and the shell 30. Thus, Appellant’s supports
21-25 are separate and independently identifiable elements from the tubes 1-
9, support ring 27 and the shell 30.
We find that since the supports 21-25 are separate and independently
identifiable elements, the supports 21-25 are distinct, and, thus, discrete
from one another.
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Thus, we conclude that the claimed phrase “wherein the transverse
supports are discrete from one another” has support in the original
disclosure.
Accordingly, we conclude that independent claim 1 complies with the
written description requirement of 35 U.S.C. § 112, first paragraph.
The Examiner has also objected to the Specification as failing to
provide proper antecedent basis for the claimed subject matter (Final
Rejection 3). To the extent that this objection turns on the same issues as the
written description rejection of the claims, the Examiner can take
appropriate action with respect to the objection to the Specification
commensurate with our decision.
We reverse the rejection of claims 1-8, 10-12 and 14 under 35 U.S.C.
§ 112, first paragraph.
Rejection of claims 1-5, 10-12 and 14 under 35 U.S.C. § 102(b), or in the
alternative, under 35 U.S.C. § 103(a) over Long
Claim 1 calls for, inter alia, “axially spaced apart transverse supports
for supporting the parallel tubes in a cylindrical vessel.”
The Examiner found that Long describes “transverse supports (27) for
supporting the tubes in a cylindrical vessel (35)” (Ans. 5) (emphasis bolded).
In support thereof, the Examiner annotates Long’s Figure 4 and denotes it as
Figure A (Ans. 7). In the Examiner’s annotated Figure A, the Examiner
proffers that Long describes supports 27 and a plurality of parallel tubes,
wherein the supports 27 are shown as being located above the plurality of
parallel tubes.
Appellant contends that Long’s supports 27 are not transverse
supports, as required by independent claim 1 (Reply Br. 3).
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As proffered by the Examiner in the annotated Figure A, since Long’s
supports 273 are located above the plurality of parallel tubes4, we find that
Long’s supports 27 are, at best, axial, not transverse to the parallel tubes, and
support the tubes axially, rather than transversely. Thus, we find that Long’s
supports 27 are not transverse supports for the parallel tubes.
Therefore, we find that Long does not describe transverse supports for
supporting the parallel tubes in a cylindrical vessel, as called for in
independent claim 1.
As to the alternative rejection under 35 U.S.C. § 103(a), the Examiner
has not proposed a modification, much less an articulation of any reasoning
supporting a conclusion of obviousness of a modification (Ans. 5), that
would remedy the deficiency in Long as to independent claim 1 noted supra.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2-5, 10-12 and 14.

Rejection of claims 1, 4, 7, 8, 10-12 and 14 under 35 U.S.C. § 102(b), or in
the alternative, under 35 U.S.C. § 103(a) over Koji
Claim 1 calls for, inter alia, “wherein the transverse supports
comprise a sheet of expanded metal.”
The Examiner found that Koji describes “(figures 1-6) a plurality of
transverse supports (9, 17), wherein the transverse supports (9, 17)
comprises a sheet of expanded metal (17)” (Ans. 12) (emphasis bolded).

3 Element 27 in Long is described as matrix sheets shown as metal screens
(col. 5, ll. 43-46).
4 In Long, the parallel tubes are described as circular fluid passes 30-32 (col.
5, ll. 37-39).
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Appellant contends that Koji does not describe that the lattice shaped
baffle 17 is made from a sheet of expanded metal, as called for in
independent claim 1 (App. Br. 10).
Appellant’s Specification describes that “[a] sheet of expanded metal
is made from sheet metal that is slit and stretched into a structure of cross
laths and interstices” (Spec. 4: para. [0010]).
We find that Koji does not describe that baffles 9, 17 are made of
metal, let alone expanded metal.
Thus, we find that Koji does not describe transverse supports
comprising a sheet of expanded metal, as called for in independent claim 1.
As to the alternative rejection under 35 U.S.C. § 103(a), the Examiner
has not proposed a modification, much less an articulation of any reasoning
supporting a conclusion of obviousness of a modification (Ans. 7), that
would remedy the deficiency in Koji as to independent claim 1 noted supra.
We reverse the rejection of independent claim 1 and dependent claims
4, 7, 8, 10-12 and 14.

CONCLUSIONS
The Examiner has erred in finding that the invention called for in
independent claim 1 does not comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
The Examiner has erred in finding that Long describes “transverse
supports for supporting the parallel tubes,” as called for in independent
claim 1.
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The Examiner has erred in finding that Koji describes transverse
supports comprising a sheet of expanded metal, as called for in independent
claim 1.

DECISION
The decision of the Examiner to reject claims 1-8, 10-12 and 14 is
reversed.

REVERSED

mls