Ex Parte Scarcella et al

Patent Trial and Appeal Board

Aug 4, 2016

12445442 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/445,442 04/13/2009 Jason Scarcella
87059 7590 08/08/2016
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
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.
PA-0001247-US 7375
EXAMINER
BAUER, CASSEY D
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON SCARCELLA and
THOMAS A. ANDERSON
Appeal2014-004112
Application 12/445,442
Technology Center 3700
Before CHARLES N. GREENHUT, LISAM. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5 and 7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as a NEW GROUND OF
REJECTION.
Appeal2014-004112
Application 12/445,442
CLAIMED SUBJECT MATTER
The claims are directed to a refrigeration unit comprising a micro-
channel heat exchanger. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A transport refrigeration unit for use with a shipping container,
compnsmg:
a compressor;
a micro-channel heat exchanger condenser, wherein said
heat exchanger condenser comprises two manifolds, a plurality
of flat tubes, and a plurality of fins, wherein said manifolds, flat
tubes, and fins are aluminum, and have a coating comprising an
acrylic composition;
a thermostatic expansion valve;
an evaporator for cooling ambient air within the shipping
container; and
an enclosure for connection to the shipping container;
wherein said micro-channel heat exchanger condenser,
said evaporator, and said compressor are disposed within the
enclosure.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ohara
Sem
Daddis
us 4,830,101
US 6,708,507 Bl
US 2005/0241327 Al
REJECTION
May 16, 1989
Mar. 23, 2004
Nov. 3, 2005
Claims 1-5 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sem in view of Daddis and further in view of Ohara.
Final Act. 2.
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Application 12/445,442
Claims 1 and 7: Analogous art
OPINION
The Examiner cited the Daddis reference for teaching "micro-channel
heat exchanger condenser[ s]" and their associated structures for use in
refrigeration systems. Final Act. 3. Regarding independent claims 1 and 7,
the dispute centers on whether the cited secondary reference Daddis is
analogous art that can be properly considered for an obviousness analysis.
Based on the arguments submitted (App. Br. 3---6), Appellants did not make
any distinction between the scope of independent claims 1 and 7. However,
in regards to both independent claims, the Examiner does not articulate a
thorough analogous art analysis.
The determination of whether a reference is analogous is used to
define the scope and content of prior art properly considered in an
obviousness analysis. As Appellants and Examiner both correctly point out,
there are two considerations for whether art is analogous art to a claimed
invention: "( 1) the reference is from the same field of endeavor as the
claimed invention (even if it addresses a different problem); or (2) the
reference is reasonably pertinent to the problem faced by the inventor (even
if it is not in the same field of endeavor as the claimed invention)." See
MPEP § 2141.0l(a) (citing In re Bigio, 381F.3d1320, 1325 (Fed. Cir.
2004)).
Prong 1: Field of Endeavor
We first consider the field of endeavor prong of the analogous art
inquiry. Appellants would define the field of endeavor narrowly as
"transport refrigeration units for use with shipping containers." App. Br. 4.
Appellants state that Daddis is directed to a refrigerated vending machine
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Application 12/445,442
and, therefore, in a different field of endeavor. App. Br. 4. The Examiner
correctly finds that the Daddis structure and function (i.e., a refrigeration
system having a compressor, micro-channel heat exchanger, and condenser)
are the same as in Appellants' invention. See In re Bigio, 381 F.3d at 1326
("[T]he PTO must show adequate support for its findings on the scope of the
field of endeavor in the application's written description and claims,
including the structure and function of the invention.").
Moreover, Appellants' Specification does not support Appellants'
narrow statement of the field of invention. Spec. 1-2. The Specification
states that the invention "relates to the field of micro-channel heat exchanger
technology." Spec. 1. This statement is followed by a more specific
statement ("relates to a micro-channel heat exchanger for use in a container
refrigeration application"). These statements, read in conjunction,
demonstrate that the field of micro-channel heat exchanger technology,
generally, is relevant to the field of micro-channel heat exchangers for use in
a container refrigeration application. Thus, we are not apprised of any
reason to confine the relevant scope of prior art that should be considered in
an obviousness analysis based on the particular environment, shipping
containers, in which the refrigeration units will operate.
The Examiner further points out that the Daddis reference has the
same search field as Appellants' invention: Class 62. Ans. 8. The MPEP
provides: "While Patent Office classification of references and the cross-
references in the official search notes of the class definitions are some
evidence of 'nonanalogy' or 'analogy' respectively, the court has found 'the
similarities and differences in structure and function of the inventions to
carry far greater weight."' MPEP 2141.0l(a)(II) (citing In re Ellis, 476 F.2d
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Application 12/445,442
1370, 1372 (CCPA 1973)). Therefore, although this provides some evidence
of analogy, the search classes used by the Examiner are not dispositive of
whether art is analogous.
Furthermore, the originally filed claims broadly recite "[a]
refrigeration unit" and "[a] method of coating a micro-channel heat
exchanger." Spec. 7. The original claims do not mention a shipping
container or a transport refrigeration unit. Spec. 7. This is additional
evidence that, the scope of prior art that should be considered in an
obviousness analysis includes references related to micro-channel heat
exchanger technology. See In re Bigio, 381 F.3d at 1326 (It is appropriate to
consider the written description to determine the field of endeavor).
Lastly, although the preamble of claim 1 recites: "A transport
refrigeration unit for use with a shipping container" (App. Br. 3--4), the
entire body of the claim provides typical structure found in refrigeration
systems (i.e., compressor, condenser, etc.). The refrigeration functions of
these components are plain from their component names. Furthermore, the
fact that Daddis is directed to a refrigerated vending machine does not
render the reference outside the field of refrigeration systems. Both
Appellants' transport refrigeration unit and Daddis' refrigerated vending
machine have similar structure and function, and we are not apprised of error
in the Examiner's finding that the field of endeavor is, therefore,
"refrigeration systems." Ans. 8. Therefore, based on the first prong of the
analogous art inquiry, Daddis is analogous art.
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Prong 2: Problem to be Solved
We next consider the "reasonably pertinent" (i.e., problem to be
solved) prong of the analogous art inquiry. The Federal Circuit provided, in
In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), further instruction as to the
"reasonably pertinent" prong for determining whether a reference is
analogous art, namely, that an Examiner should consider the problem faced
by the inventor, as reflected either explicitly or implicitly in the
specification. Id. Furthermore, MPEP § 2141.01 (a)(II) provides: "[i]fthe
problem to be solved is viewed in a narrow or constrained way, and such a
view is not consistent with the specification, the scope of available prior art
may be inappropriately limited."
Appellants argue the problem faced by the inventors is narrowly
defined as: "includ[ing] the weight of the transport refrigeration units for use
with shipping containers and corrosion resistance of the condenser of a
transport refrigeration unit." App. Br. 6. Further, Appellants state that
Daddis is directed to the problems associated with "reducing accumulation
of dust, dirt, etc. on the condenser," without citing to specific sections of
Daddis. Id.
However, this narrow reading of the problems to be solved would
unnecessarily restrict the scope of prior art that should be considered in
judging obviousness. The Federal Circuit has similarly cautioned:
[a] reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
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Application 12/445,442
invention attempts to solve. If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that reference in
an obviousness rejection.
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Appellants' Specification advances three problems with the prior art
technology (i.e., round tube plate fin (RTPF) heat exchangers) that the
inventors solve with micro-channel heat exchangers:
[t]he large size and weight of the refrigeration unit, as a
result of the size and weight of the R TPF heat exchangers, has
limited the number of containers that can be placed on the ship,
rail, and/or over the road vehicle. Furthermore, RTPF heat
exchangers can be extremely expensive due to the high cost of
the copper materials. Still further, the volume of such R TPF
heat exchangers results in an increased need for costly and
environmentally hazardous refrigerants.
Spec. 2. First, regarding the large size of prior art heat exchangers: "[o]ne
advantage offered by the microchannel tube 111 over the conventional round
tubes in a condenser coil is that of obtaining more surface area per unit
volume. That is, generally, a plurality of small tubes will provide more
external surface area than a single large tube." Daddis i-f 29. Second,
regarding the expense of materials:
[ o ]ne disadvantage to the use of a greater number of smaller
tubes rather than fewer larger tubes is that it is generally more
expensive to implement. However, the techniques that have
been developed for manufacturing microchannel tubes with a
plurality of channels has evolved to the extent that they are now
economical as compared with the manufacturer and
implementation of round tubes in a heat exchanger coil.
Daddis i-f 30. Finally, regarding the volume of refrigerant and related
environmental concern: "a microchannel refrigerant tube is able to operate
with lower amounts of refrigerant when compared to traditional round tube
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Application 12/445,442
condensers, such that the additional tube surface that is required to make up
for using less fins does not significantly increase refrigerant charge
requirements." Daddis i-f 11. Thus, Daddis, which uses micro-channel heat
exchangers, albeit in a retail environment, discusses and is, therefore,
reasonably pertinent to all three of the problems identified in Appellants'
Specification.
Accordingly, we find that Daddis is analogous art under the second
prong of the analogous art inquiry as well.
Claim 7: Aluminum
Regarding the rejection of claim 7, it is noted that the Examiner
considered the recitation of "aluminum" refrigeration components (App. Br.
8-9) as an obvious design choice because: "it has been held to be within the
general skill of a worker in the art to select known material on the basis of
its suitability for the intended use." Ans. 3--4. Although this rationale was
not separately contested by the Appellants, it is noted that additional support
for this modification is provided within Obioha (US 6,245,854 B 1,
previously made of record as cited by Appellants on an IDS filed July 14,
2009). Obioha teaches that it is well-known to use aluminum refrigeration
components. Moreover, aluminum is commonly known and used in
refrigeration for its heat conductance characteristics. See, e.g., Obioha,
col. I, 11. 13-21: "heat exchanger ... fins are typically made of aluminum and
aluminum alloys due to the excellent heat conductance properties of
aluminum"). We, therefore, agree with the Examiner (Final Act. 3) that it
would have been obvious to use aluminum for this purpose.
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Application 12/445,442
Claim 4
The issue with regard to dependent claim 4 is whether the Examiner
provided a reason why the claimed twenty-degree heat exchanger mounting
angle would have been obvious. Appellants state that the Final Action
provided that the twenty-degree feature was "an obvious design choice."
App. Br. 4--5. The only arguments presented by Appellants are directed to
attacking this rationale. However, the Examiner does not rely on an obvious
design choice rationale in rejecting claim 4. Ans. 9-10. The Examiner
found that "the mounting angle of the heat exchanger is recognized as a
result effective variable." Ans. 5. Based on this finding, the Examiner
concluded that, because the heat exchanger could be mounted at several
locations within the enclosure provided in the Sem reference, one of
ordinary skill in the art would have discovered the optimum mounting angle
through routine experimentation in order to provide "the maximum amount
of air flow through the condenser ... so that the refrigerant condenses
properly." Ans. 9-10. Appellants did not challenge the Examiner's factual
findings (Ans. 4--5), reasoning, or conclusions. As the Examiner's position
stands uncontroverted, we are not apprised of any error in the Examiner's
rejection.
Claims 2, 3 and 5
With regard to dependent claims 2, 3, and 5, Appellants do not
separately contest the Examiner's rejections (Ans. 3--4), and, therefore, we
sustain the Examiner's rejection of these claims. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 12/445,442
New grounds
Lastly, as we have provided additional facts in support of the
Examiner's rejection of claims 1 and 7, pursuant to our authority under 37
C.F.R. § 41.50(b), we designate our affirmance of the Examiner's rejection
as including a new ground of rejection in order to ensure Appellants have a
fair opportunity to respond.
DECISION
The Examiner's rejection of claims 1-5 and 7 under 35 U.S.C. § 103
is affirmed. We designate this affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record.
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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)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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