Ex Parte Niske

Board of Patent Appeals and Interferences

Jul 18, 2011

10111597 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JORGEN NISKE
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Appeal 2010-003506
Application 10/111,597
Technology Center 3700
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Before LINDA E. HORNER, KEN B. BARRETT, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jorgen Niske (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3-14, and 16-22. Claims 2 and 15
have been canceled. We have jurisdiction under 35 U.S.C. § 6. We
REVERSE.
THE INVENTION
Appellant’s invention relates to a tube heat exchanger comprising a
number of heat transfer tubes that are secured in tube plates at both ends and
surrounded by a casing tube. Spec. 1, ll. 1-3. More particularly, the tube
heat exchanger includes an arrangement that applies an axial force F to at
least one end of the heat transfer tubes to keep the tubes separated from one
another and the inner wall of the casing tube. Spec. 2, l. 26 to 3, l. 3.
Claim 1 is representative of the claimed invention (emphasis added):
1. A tube heat exchanger comprising:
a number of heat transfer tubes surrounded by a casing
tube and in which the heat transfer tubes are secured in tube
plates at both of their ends, at least one of said tube plates being
movable in relation to said casing tube while said casing tube is
stationary; and
means for applying an axial tensile force F to said at
least one tube plate without being constrained by an expansion
joint, with said axial tensile force F being sufficient to keep said
heat transfer tubes taut and separated from each other without
application of an additional axial tensile force, wherein said
means comprises a spring battery.

THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Schmidt DE 31 43 088 May 11, 1983
Trepaud FR 2,580,762 Oct. 24, 1986
Danto-Rogeat FR 1,537,988 Aug. 30, 1968
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The following rejections are before us for review:
1. The Examiner has rejected claims 1, 5-14, and 16-21 under 35
U.S.C. § 103(a) as unpatentable over Schmidt.
2. The Examiner has rejected claims 3, 4, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Schimdt in view of Trepaud or Danto-Rogeat.
CONTENTIONS AND ISSUES
The Examiner rejected independent claims 1, 10, and 12, the sole
independent claims on appeal, based on Schmidt. The Examiner found that
Schmidt structurally met the claimed invention. Ans. 6, 8. However, the
Examiner did not give any patentable weight to functional limitations in
those claims. Ans. 4, 8. Appellant argues that the Examiner cannot ignore
functional limitations in independent claims 1, 10, and 12 just because the
limitations are not written in a means-plus-function format that satisfies the
requirements of 35 U.S.C. § 112, ¶ 6. App. Br. 7-8; Reply Br. 3-7.
The issue presented by this appeal is:
Did the Examiner err in failing to consider whether Schmidt discloses
a spring battery capable of applying an axial tensile force F to the at least
one tube plate sufficient to keep the heat transfer tubes taut and separated
from each other?
ANALYSIS
Independent claims 1, 10, and 12 each recite means for applying an
axial tensile force F to at least one tube plate.1 The Examiner determined
that these limitations did not invoke § 112, ¶ 6, because they also recite that

1 Claim 10 recites “means for exclusively applying an axial tensile force F to
the at least one movable tube plate.” Claim 12 recites “means for applying
an axial tensile force F to the at least one movable tube plate.”
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the “means comprises a spring battery.” Ans. 6-7. We agree. Although
each claim recites a means for performing a function, the further recitation
of structure sufficient to perform the function results in the claim not being
in the means-plus-function format to invoke § 112, ¶ 6. E.g., Rodime PLC v.
Seagate Tech. Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999). The Specification
discloses the spring battery as the structure that applies the axial tensile force
F to the tube plates. See Spec. 4, l. 24 to 5, l. 18; figs. 1 and 2.
The Examiner erred, however, in not giving this functional language
in claims 1, 10, and 12 any patentable weight. See Ans. 4, 8. As a result, the
Examiner did not make any finding as to whether Schmidt’s compression
springs are capable of applying an axial tensile force F to at least one tube
plate sufficient to keep the heat transfer tubes taut and separated from each
other. It is well-settled that a patent applicant may recite features of an
apparatus structurally or functionally. See In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (citation omitted) (once Examiner found that a prior
art reference inherently disclosed a claimed functional feature, applicant had
the burden of showing the reference did not disclose the feature inherently).
Therefore, there are insufficient findings to establish a prima facie case of
obviousness as to independent claims 1, 10, and 12 based on Schmidt.
Because the other claims on appeal depend from claims 1, 10, or 12, there
are likewise insufficient findings to support a conclusion that they are
unpatentable.
CONCLUSION
The Examiner erred in not considering whether Schmidt disclosed a
spring battery that was capable of applying an axial tensile force F to the at
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least one tube plate sufficient to keep the heat transfer tubes taut and
separated from each other, as recited in independent claims 1, 10, and 12.
SUMMARY
The rejection of claims 1, 3-14, and 16-22 is REVERSED.

REVERSED

mls