Ex parte SORENSEN

Board of Patent Appeals and Interferences

Jul 17, 1998

08418875 (B.P.A.I. Jul. 17, 1998)

Application for patent filed April 7, 1995. According to1
appellant, the application is a continuation of Application
08/150,286, filed November 10, 1993, now abandoned, which is a
continuation of Application 07/884,003, filed May 18, 1992, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JENS S. SORENSEN
________________
Appeal No. 96-2649
Application 08/418,8751
________________
ON BRIEF
________________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
20 and 22 through 28, all of the claims pending in the
Appeal No. 96-2649
Application 08/418,875
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application.
The invention relates to “a method of manufacturing a fluid
conduit such as an integrated or integral manifold, for example
for use in a heat exchanger, comprising a hollow body having on
the exterior thereof a plurality of integral, longitudinally
spaced hollow risers” (specification, page 1). Claim 1 is
illustrative and reads as follows:
1. A method of manufacturing a tubular member having
integral exterior protrusions, said method comprising:
providing a hollow element having therein an axially
extending interior defined by a surrounding wall having a
thickness varying circumferentially;
positioning said hollow element within a die having therein
lateral voids; and
subjecting said hollow element at said interior thereof to
deformation pressure by sequentially forcing a member through
said interior of said hollow element and thereby causing a non-
elastic forced flow of material of a thicker portion of said wall
in an axial direction and then in lateral directions outwardly
into said voids in said die, thus forming said hollow element
into a tubular member having on the exterior thereof a plurality
of solid protrusions that are spaced axially of said tubular
member and that are not continuous circumferentially of said
tubular member.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Portal et al. (Portal) 3,436,948 Apr. 8, 1969
Clausen 4,663,812 May 12, 1987
Appeal No. 96-2649
Application 08/418,875
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The appealed claims stand rejected as follows:
a) claims 1, 13, 14, 16, 17, 22 and 23 under 35 U.S.C.
§ 102(b) as being anticipated by Portal;
b) claims 2 through 12, 15, 18 through 20 and 28 under 35
U.S.C. § 103 as being unpatentable over Portal; and
c) claims 24 through 27 under 35 U.S.C. § 103 as being
unpatentable over Portal in view of Clausen.
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 27 and 29) and to the examiner’s final rejection and
answer (Paper Nos. 24 and 28) for the respective positions of the
appellant and the examiner with regard to the merits of these
rejections.
Portal, the examiner’s primary reference, pertains to the
production of a heat-transfer tube having longitudinal groups of
fins which are inclined to the axis of the tube. The fins in
each group are inclined in a direction opposite to those in the
two adjacent groups to form a “herringbone” fin pattern (see
column 1, lines 31 through 44). By way of background, Portal
explains that
[t]he fabrication of tubes provided with fins
which are inclined to the axis and especially of tubes
with “herringbone” fins gives rise to difficulties.
The machining of fins of this type by means of the
usual methods which call for the use of machine tools
Appeal No. 96-2649
Application 08/418,875
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is often difficult. It has already been proposed to
form tubes of this type by drawing an expander plug
through a tubular workpiece so as to force the metal of
the tube wall into grooves formed in an external
tubular die. Unfortunately, the rubbing friction of
the expander plug against the internal surface of the
tubular workpiece draws the metal and results in
deformation of the fibers which is detrimental to the
resistance of the fins when these latter are subjected
to the action of a flow of gas at high temperature
[column 1, lines 45 through 57].
To solve the foregoing problems, Portal proposes
a method of fabrication of tubes having a smooth
internal surface and an external surface which is
provided with fins inclined to the axis of the tube,
said method consisting in placing a tubular workpiece
within a die which is made up of a series of finned
elements each designed to reproduce an angular sector
of said fins, in then exerting a substantially radial
stress on said workpiece in a zone of application which
is displaced axially from one end to the other of said
workpiece so as to cause a predetermined thickness of
said workpiece to creep into the die while at the same
time limiting the pressure of air which is enclosed
between said die and the fins progressively as said
fins penetrate within said die [column 2, lines 1
through 14].
The step of exerting a substantially radial stress on the
workpiece to force metal into the fin-forming cavities of the die
is performed by a frusto-conical expander head 24 having recesses
in which are fitted balls 26. A drive mechanism imparts to the
expander head a swash-plate motion having an axial translational
component and a rotational component (see column 3, lines 37
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Application 08/418,875
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through 46). As described by Portal,
[p]rogressively as the head 24 penetrates within the
workpiece, the balls 26 expand the metal of which said
workpiece is formed and cause the said metal to creep
into the grooves of the [die] shells 4. If special
precautions were not taken, the rubbing contact of the
head would tend to draw the metal of the internal
portion of the workpiece in the longitudinal direction.
This would be the case if the frusto-conical head were
to bear directly against the workpiece and if said head
were endowed solely with a movement of translation.
. . .
In accordance with the present invention, the head
is fitted with rolling members consisting in the form
of embodiment shown of balls 26 which reduce the
rubbing friction of the tube and virtually transform
the action of the head into a radial stress within the
workpiece. The swash-plate motion of the head which
imposes on the rolling members an oblique movement
relatively to the axis limits to an even greater extent
the longitudinal effort which is exerted on the
internal portion of the workpiece [column 4, lines 3
through 29].
We shall not sustain the standing 35 U.S.C. § 102(b)
rejection of independent claim 1, or of claims 13, 14, 16, 17, 22
and 23 which depend therefrom, as being anticipated by Portal.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Claim 1 recites a method of manufacturing a tubular member
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Application 08/418,875
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having integral exterior protrusions comprising, inter alia, the
step of subjecting a hollow element to deformation pressure by
sequentially forcing a member through its interior and thereby
causing a non-elastic forced flow of material “in an axial
direction and then in lateral directions” outwardly into voids in
a die. The appellant’s contention that the method disclosed by
Portal fails to meet this limitation (see pages 12 through 15 in
the main brief and pages 3 through 5 in the reply brief) is well
taken. Portal’s description of this method makes no mention of a
forced flow of material in an axial direction. Indeed, it is
clearly Portal’s intention to eliminate such axial flow. In this
light, the examiner’s finding that Portal’s step of “forcing the
material outwardly into the fin grooves of the die would
necessarily require axial flow of the material in the wall zone
between the fin grooves” (final rejection, page 2) is unduly
speculative. Under principles of inherency, when a reference is
silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily present
in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991). As the court stated in In re Oelrich, 666 F.2d 578,
Appeal No. 96-2649
Application 08/418,875
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581, 212 USPQ 323, 326 (CCPA 1981)(quoting Hansgirg v. Kemmer,
102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.]
If, however, the disclosure is sufficient to show that
the natural result flowing from the operation as taught
would result in the performance of the questioned
function, it seems to be well settled that the
disclosure should be regarded as sufficient.
In the present case, Portal’s disclosure falls far short of
providing the factual basis required to support the examiner’s
finding that the method described therein necessarily involves an
axial flow of material. While the flow of material in the Portal
method would likely have an axial component, this is not
sufficient to meet the claim 1 limitation requiring flow “in an
axial direction and then in lateral directions.”
We shall not sustain the standing 35 U.S.C. § 103 rejections
of dependent claims 2 through 12, 15 and 18 as being unpatentable
over Portal or the standing 35 U.S.C. § 103 rejections of
dependent claims 24 through 27 as being unpatentable over Portal
in view of Clausen. These rejections must fall because they are
predicated on the examiner’s faulty determination that Portal’s
method meets the foregoing limitation in parent claim 1 requiring
a forced flow of material in an axial direction.
Appeal No. 96-2649
Application 08/418,875
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We shall sustain, however, the standing 35 U.S.C. § 103
rejection of claims 19, 20 and 28, which depend from claim 1, as
being unpatentable over Portal. These claims further define the
deformation member recited in claim 1 as being a mandrel having
certain characteristics. According to the examiner,
Portal et al. discloses a mandrel having rotary
elements which are actuated in a helical motion, and
advises that such actuation produces a superior product
than prior mandrels which merely comprise an expander
plug with axial actuation which undesirably draws the
material axially. See column 1, lines 49 to 58.
However, to employ an expander plug with axial
actuation, as required by Claims 19, 20 and 28, in the
manner stated by Portal et al. to be known, rather than
the rotary expander suggested by Portal et al. is
considered to be an obvious exercise of mechanical
design [final rejection, page 3].
The appellant does not dispute that this proposed
modification would meet the mandrel limitations in claims 19, 20
and 28. Instead, the appellant essentially argues that Portal
teaches away from such a modification (see pages 21 through 24 in
the main brief and pages 9 through 11 in the reply brief). This
line of argument is not persuasive. All of the disclosures in a
reference must be evaluated for what they fairly teach one of
ordinary skill in the art, even when these teachings are phrased
in terms of a non-preferred embodiment or as being unsatisfactory
for the intended purpose. In re Boe, 355 F.2d 961, 965, 148 USPQ
Appeal No. 96-2649
Application 08/418,875
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507, 510 (CCPA 1966). Although Portal teaches that the rotatable
expander plug or mandrel disclosed therein produces a product
which is superior to that produced by the non-rotating expander
plug or mandrel discussed in the background portion of the
disclosure, it would have been obvious to one of ordinary skill
in the art at the time the invention was made to utilize the non-
rotatable expander plug in the Portal method to produce a lower
grade product.
The foregoing modification of the Portal method also would
meet all of the limitations in parent claim 1. It goes without
saying that the rubbing friction and longitudinal movement of the
non-rotatable expander plug or mandrel would result in non-
elastic forced flow of the tubular workpiece material “in an
axial direction and then in lateral directions” as recited in
claim 1. Also, and notwithstanding the appellant’s arguments to
the contrary (see pages 10 through 12 in the main brief and pages
1 through 3 in the reply brief), Figure 1 of the Portal reference
clearly shows that fins 2 constitute “a plurality of solid
protrusions that are spaced axially of said tubular member and
that are not continuous circumferentially of said tubular member”
as recited in claim 1.
Appeal No. 96-2649
Application 08/418,875
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The following rejections are entered pursuant to 37 CFR
§ 1.196(b).
Claims 1 through 3, 5, 6, 8 through 11, 13, 14, 16 through
18, 22 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Portal applied as discussed above in connection
with the examiner’s rejection of claims 19, 20 and 28.
As indicated above, the modified Portal method would meet
all of the limitations in independent claim 1. In addition, and
notwithstanding the appellant’s arguments to the contrary (see
pages 15 and 16 in the main brief and pages 5 and 6 in the reply
brief), Portal’s Figure 1 clearly shows that the solid
protrusions or fins 2 are arranged in plural axial rows spaced
circumferentially, thereby meeting the limitations in dependent
claims 22 and 23. Furthermore, and again notwithstanding the
appellant’s arguments to the contrary (see pages 16 through 18 in
the main brief and pages 5 and 6 in the reply brief), it would
have been obvious to one of ordinary skill in the art as a simple
matter of common sense to use a hollow element having a circular
outer configuration in transverse cross section as recited in
claims 3 and 11 in the modified Portal method to form a heat
exchange tube having a conventional circular configuration.
Finally, the appellant does not dispute that Portal teaches or
Appeal No. 96-2649
Application 08/418,875
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would have suggested a method meeting the limitations in
dependent claims 2, 5, 6, 8 through 10, 13, 14 and 16 through 18.
Claims 24 through 27 are rejected under 35 U.S.C. § 103 as
being unpatentable over Portal, applied as discussed above in
connection with the examiner’s rejection of claims 19, 20 and 28,
and further in view of Clausen.
Clausen discloses a method of manufacturing a heat exchange
manifold “comprising a hollow body having a plurality of hollow
risers for connection to heat exchanger tubes” (column 1, lines 7
through 9). As summarized by Clausen, the method includes
providing [a] hollow shape with a plurality of
individual risers each having a substantially solid
[cylindrical] cross-section. Subsequently, the risers
are re-shaped by means of a reverse impact extrusion
process into hollow [cylindrical] risers. Finally, by
perforating the wall of the hollow shape under the
hollow risers, apertures are provided constituting
inlets connecting the cavity of the hollow shape with
the individual hollow risers” (Abstract).
The starting hollow shape with the plurality of solid cylindrical
risers is produced by an extrusion or drawing step followed by a
cold forming pressing step (see column 3, lines 5 through 20).
It would have been obvious to one of ordinary skill in the
art to further modify the Portal method by configuring the die to
form a plurality of individual risers each having a substantially
solid cylindrical cross-section and by adding a reverse impact
Appeal No. 96-2649
Application 08/418,875
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extrusion hollowing step and a cutting step in order to form a
heat exchange manifold of the sort disclosed by Clausen without
the necessity of Clausen’s cold forming pressing step. Thus, the
appellant’s contention that this proposed combination of
references is based on impermissible hindsight (see pages 24
through 26 in the main brief and pages 11 and 12 in the reply
brief) is not convincing.
As a final matter, we would note that the arguments in the
main and reply briefs that the applied prior art would not have
suggested the subject matter recited in claims 4, 7, 12 and 15
are persuasive.
In summary:
a) the decision of the examiner to reject claims 1 through
20 and 22 through 28 is affirmed with respect to claims 19, 20
and 28, and reversed with respect to claims 1 through 18 and 22
through 27; and
b) new rejections of claims 1 through 3, 5, 6, 8 through 11,
13, 14, 16 through 18, and 22 through 27 are entered pursuant to
37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains new grounds of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
Appeal No. 96-2649
Application 08/418,875
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final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to a new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
Appeal No. 96-2649
Application 08/418,875
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affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for reconsideration
thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-2649
Application 08/418,875
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