Ex Parte O et al

Board of Patent Appeals and Interferences

May 16, 2011

10449173 (B.P.A.I. May. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK S. O’NEILL, DENNIS P. HELD SR., and
THOMAS J. GODRY
____________

Appeal 2009-011607
Application 10/449,173
Technology Center 3700
____________

Before: JENNIFER D. BAHR, KEN B. BARRETT, and WILLIAM V.
SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011607
Application 10/449,173

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-4, 9-13, 16, and 22. The Examiner objects to
claims 5-8, 14, and 15 as being dependent from a rejected base claim but
allowable if rewritten in independent form. Claims 17 and 18 have been
canceled. Claims 19 and 20 have been withdrawn from consideration. The
Examiner has indicated that claim 21 contains allowable subject matter. We
have jurisdiction over this appeal under 35 U.S.C. § 6.
The Invention
Claim 1, reproduced below with added emphasis, is representative of
the claimed invention:
1. A heat exchanger comprising:
a plurality of metal walls, each metal wall comprising two
sides, a boiling side with a porous, enhanced boiling layer comprising
brazed, thermally conductive particles integrally bonded together and
metallurgically bonded to the boiling side and a cooling side, said
boiling side of said plurality of metal walls defining a boiling passage
and said cooling side of said plurality of metal walls defining a
cooling passage and each of said plurality of metal walls further
including a bonding surface;
a spacer member for spacing metal walls from each other;
a layer of metal between said bonding surfaces of said metal
walls and said spacer member in said heat exchanger, said layer of
metal having a melting temperature that is less than a melting
temperature of said enhanced boiling layer;
a boiling inlet for delivering liquid to said boiling passage;
a cooling inlet for delivering fluid to said cooling passage;
a boiling outlet for recovering vapor from said boiling passage;
and
a cooling outlet for recovering fluid from said cooling passage.

Appeal 2009-011607
Application 10/449,173

3
The Rejections
The Examiner made the following rejections under 35 U.S.C. § 103(a):
I. Claim 1 is rejected as unpatentable over Beduz (US 5,014,773, iss. May
14, 1991), Bennett (US 4,653,572, iss. Mar. 31, 1987), and Stancliffe
(US 5,183,106, iss. Feb. 2, 1993).
II. Claims 2-4, 9-13, 16, and 22 are rejected as unpatentable over Beduz,
Bennett, Stancliffe, and Shattes (US 4,846,267, iss. Jul. 11, 1989).

SUMMARY OF DECISION
We AFFIRM.

OPINION
The Examiner concluded that the subject matter of claim 1 is obvious
in view of the combined teachings of Beduz, Bennett, and Stancliffe. Ans.
3-5. Appellants argue the Examiner erred with respect to particular findings
in each reference:
Beduz
Claim 1 requires an enhanced boiling layer integrally bonded together
and metallurgically bonded to the boiling side of a heat exchanger wall. The
Examiner found that Beduz describes an enhanced boiling layer (porous
metallic coating) as required by claim 1, applied using flame spraying or
plasma spraying techniques. Ans. 3-4. The Examiner notes that Beduz is
silent as to whether the flame and/or plasma spraying techniques result in a
metallurgical bond. Ans. 4. Consequently, the Examiner found that Bennett
expressly describes an enhanced boiling layer having a metallurgical bond to
the heat exchanger. Id.
Appeal 2009-011607
Application 10/449,173

4
Appellants first argue that Beduz does not inherently disclose
“metallurgical bonding.” Appeal Br. 7-8. The Examiner does not rely on an
inherency theory to teach the metallurgical bonding limitation of claim 11.
Ans. 4, 9. Instead, the Examiner relies on the teachings of Bennett, which
we address in a later section. Accordingly, Appellants’ inherency arguments
do not persuade us that the Examiner erred in rejecting claim 1.
Appellants next argue that Beduz does not “recognize that the porous
metal coating [in Beduz] can lose its porosity upon brazing to fabricate the
entire heat exchanger assembly.” Appeal Br. 8-10. Appellants essentially
argue that the porous coating in Beduz does not survive into the final
product. Thus, the first issue raised by Appellants is whether Beduz fails to
disclose the claimed enhanced boiling layer because the layer is
subsequently destroyed upon assembly.
When the reference relied on expressly anticipates or makes obvious
all of the elements of the claimed invention, the reference is presumed to be
operable. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Once such a
reference is found, the burden is on applicant to provide facts rebutting the
presumption of operability. Id. In order to demonstrate that a reference is
not operable, the test is whether the reference provides an enabling
disclosure of the particular subject matter at issue. Elan Pharm., Inc. v.
Mayo Found. for Med. Educ. and Rsrch, 346 F.3d 1051, 1054 (Fed. Cir.
2003) (The disclosure in an assertedly anticipating reference must provide
an enabling disclosure of the desired subject matter; mere naming or

1 Appellants have nevertheless provided evidence that the flame spraying
technique described in Beduz will, in fact, result in at least some
metallurgical bonds. Appeal Br. 8, citing to H.S. Ingham and A.P. Shepard,
1 METCO FLAME SPRAY HANDBOOK, A-36 (1969).
Appeal 2009-011607
Application 10/449,173

5
description of the subject matter is insufficient, if it cannot be produced
without undue experimentation).
Beduz is presumed to enable one of ordinary skill in the art to make
the described boiler (heat exchanger) with a porous metal coating. See, e.g.,
Beduz, col. 2, ll. 61-68, claims 2-3 (describing a boiler, not an intermediate
product, having a porous metallic coating for nucleation sites). Appellants
discuss the disclosure in Beduz of two sample porous metal coatings made
from a “proprietary mixture,” Metco 601 NS (see Beduz, col. 5, ll. 38-44),
and argue that the melting temperature of Aluminum Alloy 4047 in Metco
601 NS is lower than the melting temperature of a 4004/4104 brazing alloy
(O’Neill Decl., para. 6). Appeal Br. 9-10. Appellants conclude that because
the alloy in the porous coating melts at a lower temperature than the brazing
alloy, the brazing step will melt the porous coating. Id.
We find that Beduz does not specify any particular brazing alloy for
the heat exchanger, let alone a 4004/4104 brazing alloy. Appellants have
not established that the brazing alloy in Beduz must be 4004/4104. We also
find that Beduz does not specify that Metco 601 NS is the only material used
to create the porous metallic coating. See claim 3, col. 3, ll. 4-5 (the porous
coating is selected from aluminum, copper, and their alloys). The Metco
material discussed by Appellants is merely a sample material. See col. 5, ll.
38-44 (the “second and third [porous coating] samples tested” are Metco 601
NS). Thus, Appellants’ arguments for non-operability only consider a
portion of the disclosure in Beduz. A reference is not limited to its preferred
embodiment. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Appellants
have not presented any other persuasive arguments or evidence tending to
show that it would require undue experimentation by one of ordinary skill in
Appeal 2009-011607
Application 10/449,173

6
the art to make a heat exchanger having a porous metal surface as described
in Beduz.
In light of the above, Appellants’ arguments regarding non-operability
are based upon speculative assumptions involving a particular embodiment
in the disclosure of Beduz. Considering the totality of the evidence,
including the O’Neill Declaration, Appellants have not rebutted the
presumption of operability.

Bennett
Claim 1 requires a porous metal layer metallurgically bonded to the
heat exchanger wall. The Examiner found that Beduz teaches a porous
metal layer attached to a heat exchanger wall via flame and plasma spraying,
but that Beduz does not explicitly teach a metallurgical bond. Ans. 4. The
Examiner found that Bennett teaches a porous metal layer metallurgically
bonded to a heat exchanger wall. Id. The Examiner concluded that it would
have been obvious to metallurgically bond the porous metal layer of Beduz
to the heat exchanger wall, as taught in Bennett, to “enhance[e] the heat
transfer coefficients of the heat transfer surface.” Id.
Appellants raise a second issue of whether Bennett is enabling to
teach a porous metal layer metallurigically bonded to the heat exchanger
surface. Appeal Br. 10-13. As pointed out by the Examiner, Bennett
teaches, in the background section, a porous metal layer metallurgically
bonded to the inner surface of a heat exchanger tube to enhance the heat
transfer coefficient. Ans. 4; Bennett, col. 2, ll. 23-29. Further, Bennett’s
invention utilizes a porous metal enhanced boiling layer. See col. 5, ll. 1-8,
claim 7.
Appeal 2009-011607
Application 10/449,173

7
Appellants argue that Bennett’s lack of explanation as to how to
metallurgically bond the porous layer to the heat exchanger, by itself,
renders Bennett unavailable as prior art. Appeal Br. 10-13. However, it is
well established that a reference need not describe every detail to make the
invention operate. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (“The person of ordinary skill in the art is a hypothetical person who
is presumed to know the relevant prior art.”); Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“a patent need not
teach, and preferably omits, what is well known in the art.”) (citing
Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick, 730 F.2d 1452,
1463 (Fed. Cir. 1984)). Given that Bennett discusses metallurgical bonding
in the background section then discusses and claims a heat exchanger that
utilizes metallurgical bonding of a porous layer, the presumption is that one
of ordinary skill in the art would know how to make such a metallurgical
bond. See Sasse, 629 F.2d at 681. Appellants have not provided any
persuasive evidence or further explanation as to why one of ordinary skill in
the art would not be able to make a porous layer as described in Bennett
without undue experimentation. See Elan Pharm., 346 F.3d at 1054. Thus,
Appellants have not met their burden of establishing that Bennett does not
enable one of ordinary skill in the art to make a porous metal layer in a heat
exchanger. Consequently, based on the record before us, we are not
persuaded that Bennett is non-enabling prior art for teaching a
metallurgically bonded porous layer.
Appellants also argue that the porous coating of the heat exchanger in
Beduz, even if metallurgically bonded as taught in Bennett, would still melt
upon the brazing process. Appeal Br. 12-13. However, as we discuss above
Appeal 2009-011607
Application 10/449,173

8
in the Beduz section, Appellants’ argument and supporting declaration
makes speculative assumptions as to the materials and processes used in one
particular embodiment in Beduz. In addition, even if the metallurigally
bonded porous coating melted during the brazing process, Appellants have
not established that such melting would destroy sufficient porosity of that
coating such as to no longer satisfy the limitations of claim 1.

Stancliffe
Claim 1 requires a layer of metal (e.g., a brazing material) having a
lower melting temperature than the melting temperature of the enhanced
boiling layer (porous metal layer). The Examiner found that Beduz does not
describe a brazing material (layer of metal) having a melting temperature
less than the enhanced boiling coating. Ans. 4. However, the Examiner
found that Stancliffe teaches a braze material with a lower melting
temperature than a heat exchanger’s components. Id. The Examiner
concluded that it would have been obvious to use a braze material with a
lower melting temperature than the heat exchanger components in Beduz for
the purpose of not melting the heat exchanger components during the
brazing process. Ans. 4-5.
Appellants argue that Stancliffe only teaches a braze material with a
melting point lower than a metal wall, not an enhanced boiling layer as
required by claim 1. Appeal Br. 14-15. Thus, Appellants raise a third issue
of whether the Examiner erred in concluding that the combined teachings of
Beduz, Bennett, and Stancliffe render obvious a heat exchanger having a
braze material with a melting point lower than an enhanced boiling layer.
Appeal Br. 13-15.
Appeal 2009-011607
Application 10/449,173

9
The Examiner’s application of Stancliffe’s teaching is that when
brazing Beduz’s heat exchanger, one should use a brazing material with a
lower melting point than the object being brazed (i.e., the wall and the
porous metal coating bonded to the wall). Ans. 4, 12. As the Examiner
explains, applying this teaching to Beduz’s heat exchanger will prevent
“melting [of] the heat exchanger components” during brazing. Id.
Appellants would limit Stancliffe’s teaching to only using a brazing material
with a melting point less than the wall of the heat exchanger, not the wall
and the porous metal layer metallurgically bonded to the wall. However,
“[t]he use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968). Appellants
limit one of ordinary skill in the art to literal incorporation of the exact
teachings in Stancliffe to use a lower melting point brazing material than the
wall. One of ordinary skill is not compelled to blindly follow the teaching of
one prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”).
The porous metal coating of the heat exchanger in Beduz is
metallurgically bonded to the wall, as taught by Bennett. Thus, heating the
wall would in turn heat the coating. The Examiner’s reason for using a
lower temperature brazing material than the wall (and the bonded coating) is
backed up by the teaching in Stancliffe to use a braze material with a
Appeal 2009-011607
Application 10/449,173

10
melting point less than the object being brazed. See Ans. 4; Stancliffe, col.
3, ll. 5-7. Thus, the Examiner’s conclusion that it would have been obvious
to use a brazing material (layer of metal) with a melting point lower than the
heat exchanger components (walls and bonded porous coating) to prevent
damage to the components appears to be nothing more than common sense.
See Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (“[W]hile an analysis of obviousness always depends on evidence …
it also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference.”).
Accordingly, we are not persuaded that the Examiner erred in
concluding that the combined teachings of Beduz, Bennett, and Stancliffe
render obvious a heat exchanger having a braze material with a melting
point lower than an enhanced boiling layer.

Conclusion
In light of the above discussion, we are not persuaded that the
Examiner erred in concluding that the combined teachings of Beduz,
Bennett, and Stancliffe render obvious a heat exchanger as recited in claim
1. Appellants separately argue claims 2-4, 9-13, 16, and 22, rejected as
unpatentable over Beduz, Bennett, Stancliffe, and Shattes, but rely on
arguments similar to those addressed above with respect to claim 1. Appeal
Br. 15-17. Therefore, Appellants’ arguments with respect to claims 2-4, 9-
13, 16, and 22 are likewise unpersuasive.

Appeal 2009-011607
Application 10/449,173

11
DECISION
We affirm the Examiner’s decision regarding claims 1-4, 9-13, 16,
and 22. No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

hh