Ex Parte STEURER et alDownload PDFPatent Trial and Appeal BoardAug 28, 201812789988 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/789,988 05/28/2010 60601 7590 08/28/2018 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Hans-Ulrich STEURER 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. 1006/0161 PUS 1 9675 EXAMINER ARANT, HARRY E ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 08/28/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-ULRICH STEURER, PETER GESKES, and CHRISTIAN SAUMWEBER Appeal 2018-001153 Application 12/789,988 Technology Center 3700 Before: STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hans-Ulrich Steurer et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision in to Final Office Action (dated Sept. 29, 2016, hereinafter "Final Act.") rejecting claims 1, 8-10, 15, 16, and 18- 221 under 35 U.S.C. § 103(a) as unpatentable over Drayer (US 4,679,410, iss. July 14, 1987) and Judge (US 6,557,371 Bl, iss. May 6, 2003). 2 We have jurisdiction under 35 U.S.C. § 6(b ). 1 Claims 2-7 and 11-14 are withdrawn from consideration. Br. 4. Claim 1 7 is canceled. See Appellants' Amendment 6 ( filed Mar. 31, 2016). 2 According to Appellants' Appeal Brief (filed Mar. 24, 2017, hereinafter "Br.") the real party in interest is Behr Gmbh & Co. Br. 2. Appeal 2018-001153 Application 12/789,988 We REVERSE. SUMMARY OF DECISION INVENTION Appellants' invention relates to a heat exchanger for an internal combustion engine. Spec. para. 3. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A heat exchanger for an internal combustion engine, the heat exchanger comprising: at least one collector box provided on an output side, the collector box having a bottom surface, an upper surface that opposes the bottom surface and side surfaces arranged perpendicular to the bottom surface and the upper surface; a plurality of substantially parallel tubes positioned outside of the collector box, the tubes each emptying directly into the collector box at one of the side surfaces of the collector box, such that an end of each tube opens into the collector box, wherein a gas flow flows from the tubes into the collector box and from the collector box into an outlet of the collector box; and a structure configured to interact with the gas flow is provided at at least one of the tubes or another one of the side surfaces of the collector box, the structure configured to transport a condensation to the outlet, wherein the outlet projects outward from the upper surface of the collector box, such that an extending direction of the outlet is perpendicular to an extending direction of the plurality of tubes, wherein a width of the outlet is greater than a width of the structure, wherein an upper end of the structure is positioned inside of the outlet, such that the condensation is transported into the outlet from the upper end of the structure, wherein the gas flow flows into the outlet directly from the collector box, such that the gas flow bypasses the structure, and 2 Appeal 2018-001153 Application 12/789,988 wherein the collector box is completely enclosed by the side surfaces, the upper surface and the bottom surface except for openings provided to accommodate the end of each tube that opens into the collector box at the one side surface and the outlet that projects from the upper surface of the collector box. ANALYSIS The Examiner finds that Drayer discloses most of the limitations of independent claim 1 including, inter alia, a collector box 34, 52 having an upper surface, a bottom surface, and side surfaces, a plurality of substantially parallel tubes 28, and a structure 70, 72, 74 for transporting condensation to an outlet. Final Act. 2-3 (citing Drayer, col. 3, 11. 35--41, Fig. 1); see also Examiner's Answer 10 (dated July 13, 2017, hereinafter "Ans."). The Examiner further relies on Judge as disclosing a collector box 16 that is completely enclosed by an upper surface, a bottom surface, and side surfaces, with the exception of openings that accommodate the end of each parallel tube 22 and an outlet. Final Act. 4--5 (citing Judge, Fig. 5). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to use "the collector box configuration of Judge in order to reduce the amount of material needed[ ed] for the heat exchanger and thus reduce the cost of manufacturing." Id. at 5. Appellants argue that "absent clear impermissible hindsight, there is no rational reason for one skilled in the art to modify Drayer in the manner suggested." Br. 14. According to Appellants, "it is unclear why one skilled in the art would be motivated to remove the portions of Drayer that function as the evaporator (i.e., the manifold 34) in view of the teachings of Judge that are [also] directed to an evaporator." Id. 3 Appeal 2018-001153 Application 12/789,988 We are persuaded by Appellants' arguments because the rationale provided by the Examiner, namely, "to reduce the amount of material need[ed] for the heat exchanger and thus reduce the cost of manufacturing," does not support the conclusion of obviousness as the Examiner has not shown the relevance of that rationale in the context of Drayer' s heat exchanger system. See Final Act. 5. The mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must explain the reasoning by which those findings support the Examiner's conclusion of obviousness. Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009). Here, we appreciate the Examiner's position that using Judge's collector box in the heat exchanger of Drayer results in reducing the amount of material for the heat exchanger of Drayer "by reducing the size of the shell of the evapolator (10)." Ans. 11. However, the Examiner does not explain adequately how the size ofDrayer's evapolator 10 is reduced when Drayer's collector box, i.e., manifold 34 and accumulator chamber 52, is replaced with Judge's collector box 16. In other words, the Examiner's rejection is insufficient to explain how using Judge's collector box 16 reduces the size ofDrayer's heat exchanger 10. For example, the Examiner does not explain how the dimensions of the shell of Drayer' s evapolator 10 change when using Judge's collector box 16 such that the size of the shell is reduced and, thus, the amount of material needed and manufacturing costs are reduced as well. Furthermore, the Examiner has not provided any findings that Drayer recognized any problems regarding the amount of material needed and the cost of the material to manufacture the shell of its heat exchanger so as to 4 Appeal 2018-001153 Application 12/789,988 reduce its size. Stated differently, the Examiner has not factually established that replacing Drayer's collector box, i.e., manifold 34 and accumulator chamber 52, with Judge's collector box 16, "reduce[s] the amount of material need[ ed] for the heat exchanger and ... reduce[ s] the cost of manufacturing." See Final Act. 3. Accordingly, for the foregoing reasons, the Examiner fails to articulate a sufficient reason, with rational underpinnings, why, in the absence of hindsight gleaned improperly from Appellants' underlying disclosure, a person having ordinary skill in the art would modify Drayer as proposed by the Examiner to arrive at the subject matter of independent claim 1. Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 8-10, 15, 16, and 18-22 as unpatentable over Drayer and Judge. DECISION The Examiner's decision to reject claims 1, 8-10, 15, 16, and 18-22 under 35 U.S.C. § 103(a) as unpatentable over Drayer and Judge is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation