Ex Parte Nilsson et alDownload PDFPatent Trials and Appeals BoardMay 17, 201913699259 - (D) (P.T.A.B. May. 17, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/699,259 11/20/2012 21839 7590 05/21/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Mats Nilsson 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. 0076580-000008 1423 EXAMINER ALVARE,PAUL ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 05/21/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATS NILSSON, MARIBEL NILSSON, and JESPER BERGH 1 Appeal2018-008894 Application 13/699,259 Technology Center 3700 Before CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mats Nilsson, Maribel Nilsson, and Jesper Bergh ("Appellants") appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-21. Appeal Br. 4. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). SUMMARY OF THE DECISION We AFFIRM. 1 According to Appellants, the real party in interest is Alfa Laval Corporate AB. Appeal Br. 2. Appeal2018-008894 Application 13/699,259 CLAIMED SUBJECT MATTER Appellants' invention relates to heat exchangers with purportedly improved corrosion resistance. Spec. 1 (Field of the Invention). Claims 1 and 6 are independent. Appeal Br. (Appendix A, 1-5). Claim 1 is illustrative and reproduced below, with emphasis added to a limitation discussed in this Decision. 1. A permanently joined plate package for a plate heat exchanger made of stainless steel, copper or carbon steel in which joints exist between adjacent plates, wherein at least all surfaces in contact with media of at least one of the flow sides of the plate package have an alloy bonded coating of a tantalum containing compound, all of said surfaces which have the alloy bonded coating of the tantalum containing compound including the joints between plates of the plate package, and the alloy bonded coating is applied after the plate package has been permanently joined, the tantalum containing compound being alloy bonded to the stainless steel, copper or carbon steel forming the plate package. Id. at 1 (emphasis added). THE REJECTIONS The Examiner rejected: (a) Claims 1-13 and 16-21 under 35 U.S.C. § I03(a) as unpatentable over Nippon (JP H2-85694, published Mar. 27, 1990)2 and Gillesberg (WO 2009/065410 Al, published May 28, 2009). Final Act. 2. 2 Citations to Nippon will be to its English-language translation. 2 Appeal2018-008894 Application 13/699,259 (b) Claims 14 and 15 under 35 U.SC. § 103(a) as unpatentable over Nippon, Gillesberg, and Riley (WO 2009/156717 A2, published Dec. 30, 2009). Final Act. 7-8. (c) Claims 14 and 15 under 35 U.SC. § 103(a) as unpatentable over Nippon, Gillesberg, and Persson (WO 96/06705, Mar. 7, 1996). Final Act. 9. ANALYSIS I. Claims 1-13 and 16-21 Reiected as Unpatentable Over Nippon and Gilles berg A. Examiner's Rejection The Examiner relies on Nippon for disclosing, inter alia, a plate heat exchanger made from stainless steel, in which the surfaces of the heat exchanger include an alloy-bonded coating. Final Act. 2-3 ( citing Nippon, pp. 3--4). The Examiner acknowledges, however, that "Nippon fails to teach an alloy bonded coating of a tantalum containing compound." Id. at 3 ( emphasis added). To satisfy the missing tantalum limitation, the Examiner relies on Gillesberg. Id. In particular, the Examiner cites to Gillesberg's teaching of a corrosion-resistant coating consisting of "at least 80% by weight tantalum" for stainless steel objects. See id. (citing Gillesberg: p. 11, 11. 13-15; p. 7, 11. 10-15; p. 6, 11. 23-24). In combining Nippon with Gillesberg, the Examiner reasons that one of skill in the art would have "provide[ d] Nippon a tantalum coating, as taught by Gillesberg, the motivation being that tantalum is known to have exceptional corrosion resistance properties and would provide a ductile coating for movement of the heat exchanger components without degradation of said components." Id. 3 Appeal2018-008894 Application 13/699,259 B. Analysis In contesting this rejection, Appellants present the same arguments for claims 1--4, 6-8, and 16-21 and present additional arguments for: (1) claims 5 and 9-11 ; and (2) claims 12 and 13. Appeal Br. 6-1 7. We address these arguments separately and as set forth in the Appeal Brief. 1. Claims 1-4, 6-8, and 16-21 Appellants argue that a person of ordinary skill in the art would not have combined Nippon with Gillesberg, as the Examiner proposes. See Appeal Br. 9 ("The obviousness rejection ... is not supported by appropriate findings of fact."). In particular, Appellants argue that a person of ordinary skill would "not have found it obvious to eliminate [Nippon's layer to] instead apply a different coating (tantalum) for a completely different purpose." Id. at 9-10. Appellants assert that doing so "would negate the very reason for the invention/disclosure in Nippon." Id. at 10. Appellants contend that the Examiner's modification "would result in doing away with [Nippon's layer] that provides a stainless steel heat exchanger with significantly improved thermal conductivity" and that the "Examiner has not established that Nippon's stainless steel fin-type heat exchanger requires a corrosion resistant coating." Id. at 11. In support of their argument, Appellants submit the following thermal conductivity information for tantalum and materials presumably used in Nippon's coatings (id. (Appendix B)): 4 Appeal2018-008894 Application 13/699,259 Material Copper Silver Aluminum Molybdenum Tungsten Nickel Chromium Tantalum Stainless Steel Thermal Conductivity 223/213/204 235 118/124/144 81 94--100 52 52 31 7-26 Appellants' argument, however, does not apprise us of Examiner error. Central to Appellants' argument is the understanding that simply because the Examiner's modification may result in a heat exchanger with only slightly improved thermal conductivity, a person of ordinary skill in the art would not have made the modification, even if it resulted in a device with improved corrosion resistance. However, "[t]he fact that the motivating benefit comes at the expense of another benefit ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). In the present case, a skilled artisan would have weighed the benefits of using tantalum (including its increased corrosion resistance and increased thermal resistance-when compared to stainless steel) with that of other materials (such as copper, silver, nickel, or chromium), and would have ultimately decided to use tantalum if Nippon's heat exchanger was exposed to harsh chemicals requiring enhanced corrosion resistance. See Ans. 16-17 5 Appeal2018-008894 Application 13/699,259 ("Nippon clearly discloses that the plate heat exchanger is utilized in corrosive environments, wherein Nippon details the shortcomings of aluminum plate heat exchangers within acidic environments" ( citing Nippon, pp. 1, 2)). Furthermore, and as explained by the Examiner, Nippon's "coating is not being eliminated, only modified with a different material for increased corrosion resistance, which also contains increased thermal conductivity." Ans. 15. Indeed, as Appellants' own evidence supports (Appeal Br. (Appendix B)), the Examiner's proposed modification to use a tantalum coating (rather than additional stainless steel) would improve the thermal conductivity of the heat exchanger, as tantalum has a thermal conductivity (31) greater than stainless steel (7-26). Additionally, it is undisputed that the use of tantalum would have improved the heat exchanger's resistance to corrosion. See, e.g., Ans. 13-14 ("the ductile tantalum coating of Gilles berg offers improved corrosion resistance in harsh environments (such as the 'fuel cells' found within the Nippon reference) and negates corrosion of the heat exchanger components"); see also generally Appeal Br. (failing to dispute the corrosion resistance benefits of Gillesberg's tantalum coating). Finally, and in response to Appellants' argument that Nippon teaches away from the proposed combination, Appellants do not cite to any disclosure within Nippon that criticizes, discredits, or otherwise discourages using tantalum as a coating, such as the one taught by Gillesberg. See Appeal Br. 15; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one altemati ve does not constitute a teaching away from any of these alternatives because such 6 Appeal2018-008894 Application 13/699,259 disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). For the foregoing reasons, we affirm the rejection of claims 1--4, 6-8, and 16-21 as unpatentable over Nippon and Gillesberg. 2. Claims 5 and 9--11 Claims 5 and 9-11 each depends directly from independent claim 1 and further requires the tantalum coating to have "a thickness of about 1- 300 µm" (claim 5), "a thickness of about 1-125 µm" (claim 9), "a thickness of about 10--40 µm" ( claim 10), or "a thickness of about 15-25 µm" ( claim 11). Appeal Br. (Appendix A, 1-3). To satisfy these limitations, the Examiner relies on Gillesberg's disclosure that its coating layer has a thickness of between 5-200 µm, and reasons that it would have been obvious to provide a thin corrosion resistant layer, as taught in Gillesberg, "to provide a corrosion resistant surface that is 'sufficiently ductile' to withstand elastic deformations thereby increasing the useful life of the aforementioned coating." Final Act. 5-6 ( citations omitted). The Examiner further explains that "in the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists." Id. at 6 (citing MPEP § 2144.05). In contesting the rejection of these claims, Appellants argue that the Examiner has failed to "establish that an ordinary skilled artisan would apply Gillesberg' s tantalum coating ... [as] recited in Claims 5 and 9-11 for purposes of significantly improving the heat transfer characteristics." Appeal Br. 16. 7 Appeal2018-008894 Application 13/699,259 Appellants' argument is unavailing. Gillesberg discloses that "the coating layer (4) has a thickness within the interval 5 µm-200 µm." Gillesberg, 16 ( claim 5). This range overlaps each of the claimed ranges and the Examiner's reasoning that using the disclosed thickness would improve corrosion resistance is explicitly supported by Gillesberg. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) ("Where a claimed range overlaps a range disclosed in the prior art, there is a presumption of obviousness."). Accordingly, we also affirm the rejection of claims 5 and 9-11 as unpatentable over Nippon and Gillesberg. 3. Claims 12 and 13 Claims 12 and 13 depend directly from claim 1 and further recite, "wherein the tantalum containing compound is metal tantalum or tantalum oxide" and "wherein the tantalum containing compound is metal tantalum," respectively. Appeal Br. (Appendix A, 3). To meet these limitations, the Examiner cites to Gillesberg's disclosure that "wherein the corrosion resistant coating consists of at least 80% by weight of tantalum or preferably of a metal of the same group of metals as tantalum, like W, Nb, Mo, Ti, Hf." Final Act. 6-7 (citing Gillesberg, p. 11, 1. 14). In contesting the rejection of these claims, Appellants argue, "the record does not establish that a general disclosure of tantalum is a disclosure of metal tantalum or tantalum oxide." Appeal Br. 17. Appellants' argument is not persuasive. Gillesberg discloses that its tantalum is part of a "group of metals." Gillesberg, p. 11, 1. 14. This 8 Appeal2018-008894 Application 13/699,259 disclosure supports the Examiner's finding that Gillesberg's tantalum coating is metal tantalum, thereby meeting the claimed limitations. Accordingly, we also affirm the rejection of claims 12 and 13 as unpatentable over Nippon and Gillesberg. C. Summary Appellants' arguments do not apprise us of error. We adopt as our own the Examiner's findings and reasoning and affirm the rejection of claims 1-13 and 16-21 as unpatentable over Nippon and Gillesberg. II. Claims 14 and 15 Reiected as Unpatentable Over Nippon. Gillesberg. and Riley Claims 14 and 15 depend directly from claim 1 and the Examiner relies on Riley for satisfying the claims' additional limitations. See Final Act. 7-9 ( citations omitted). Appellants do not present separate arguments in response to this rejection. See generally Appeal Br. As such, Appellants do not apprise us of Examiner error and we affirm the rejection of claims 14 and 15 as unpatentable over Nippon, Gillesberg, and Riley. III. Claims 14 and 15 Reiected as Unpatentable Over Nippon. Gillesberg. and Persson Claims 14 and 15 depend directly from claim 1 and the Examiner relies on Persson for satisfying these additional limitations. See Final Act. 9-11 ( citations omitted). Appellants do not present separate arguments in response to this rejection. See generally Appeal Br. Accordingly, Appellants do not apprise 9 Appeal2018-008894 Application 13/699,259 us of Examiner error and we affirm the rejection of claims 14 and 15 as unpatentable over Nippon, Gillesberg, and Persson. SUMMARY We affirm the rejection of claims 1-13 and 16-21 under 35 U.S.C. § 103(a) as unpatentable over Nippon and Gillesberg. We affirm the rejection of claims 14 and 15 under 35 U.SC. § 103(a) as unpatentable over Nippon, Gillesberg, and Riley. We affirm the rejection of claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over Nippon, Gillesberg, and Persson. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation