Ex Parte Takada et al

Patent Trial and Appeal Board

Dec 8, 2016

12936806 (P.T.A.B. Dec. 8, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/936,806 10/07/2010 Masaru Takada 1032404-000290 6975
21839 7590 12/12/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/12/2016 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASARU TAKADA, SHIGEKI ONISHI, and HIDEMOTO ARAI
Appeal 2014-009226
Application 12/936,806
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masaru Takada et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-3 under 35 U.S.C.
§ 103(a) as unpatentable over Liu (US 2006/0130508 Al, published June 22,
2006, hereinafter “Liu”). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Mitsubishi Electric
Corporation. Appeal Br. 2.
Appeal 2014-009226
Application 12/936,806
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to a “heat exchange
ventilator.” Spec. para. I.2 Claims 1, 2, and 3 are independent. Claim 1
illustrative of the subject matter on appeal and is reproduced below.
1. A heat exchange ventilator comprising:
a supply air duct that takes in outdoor air and blows it out
indoors;
an exhaust air duct that takes in indoor air and blows it out
outdoors; and
a plurality of heat exchangers that exchange heat between
outdoor air flowing down through the supply air duct and indoor
air flowing down through the exhaust air duct, the heat
exchangers being arranged in series from an outdoor side to an
indoor side,
wherein a sensible heat exchange efficiency of a heat
exchanger arranged on a most outdoor side is higher than a
sensible heat exchange efficiency of a heat exchanger arranged
on an indoor side adjacent to the heat exchanger arranged on the
most outdoor side,
wherein the heat exchanger arranged on the most outdoor
side takes in the outdoor air from an inlet of the supply air duct
and a heat exchanger arranged on a most indoor side takes in the
indoor air from an inlet of the exhaust air duct, and the outdoor
air flows through the heat exchangers in order from the outdoor
side to the indoor side while the indoor air flows through the heat
exchangers in order from the indoor side to the outdoor side.
Independent claims 2 and 3 also each recite a heat exchange
ventilator, wherein the heat exchanger arranged on the most outdoor side
2 Citations to “Spec.” refer to the Substitute Specification, as filed on
October 7, 2010.
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Appeal 2014-009226
Application 12/936,806
takes in the outdoor air from an inlet of the supply air duct and a heat
exchanger arranged on a most indoor side takes in the indoor air from an
inlet of the exhaust air duct, and the outdoor air flows through the heat
exchangers in order from the outdoor side to the indoor side while the indoor
air flows through the heat exchangers in order from the indoor side to the
outdoor side. Claim 3, similar to claim 1, likewise recites that a sensible
heat exchange efficiency of the outdoor side heat exchanger is higher than a
sensible heat exchange efficiency of the indoor side heat exchanger. Claim
2 does not contain this sensible heat exchange efficiency limitation. Rather,
claim 2, and also claim 3, recites that a latent heat exchange efficiency of the
outdoor side heat exchanger is lower than a latent heat exchange efficiency
of the indoor side heat exchanger.
ANALYSIS
The Examiner found that Liu discloses a heat exchange ventilator
having a first heat exchanger 70 and a second heat exchanger 41 that are
arranged serially and exchange heat between indoor air and outdoor air.
Final Act. 2 (citing Liu, Fig. 4, para. 19). The Examiner found that Liu
suggests that V-shaped heat-pipe heat exchanger 70 could be placed on sides
AD of total heat exchanger 41, and that in such a configuration the first heat
exchanger 70 would be arranged on a most outdoor side and the second heat
exchanger 41 would be arranged on a most indoor side of the heat exchange
ventilator. Id. at 3 (citing Liu, para. 24). The Examiner further found that
first heat exchanger 70 only exchanges sensible heat and comprises copper
and second heat exchanger 41 exchanges both latent and sensible heat. Id. at
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Appeal 2014-009226
Application 12/936,806
2 (citing Liu, paras. 20, 22); see also Ans. 8 (Examiner finding that “Liu
recognizes that total heat exchangers are primarily geared toward latent heat
exchange as opposed to sensible heat exchange”) (citing Liu, para. 5).
Based on these findings, and the Examiner’s understanding of the purpose of
Liu, the Examiner found that Liu’s first heat exchanger 70 has a higher
sensible heat exchange efficiency than the second heat exchanger 41,
explaining:
Although Liu does not appear to explicitly disclose relative latent
and sensible heat exchange efficiencies of the first and second
heat exchangers, the reference recognizes that “total heat
exchangers (moisture heat exchangers)” (e.g. the second heat
exchanger) have limited sensible heat exchange potential as they
are primarily geared toward moisture exchange (Paragraph 5).
Liu compensates for this deficiency by incorporating a dedicated
sensible heat exchanger (e.g. the first heat exchanger) formed
from relatively high thermal conductivity materials. As a result,
it is understood from Liu that the first heat exchanger has high
sensible heat exchange efficiency and low latent heat exchange
efficiency, relative to the second heat exchanger.
Id. at 2-3 (citing Liu, para. 5).
Appellants argue that the Examiner erred in rejecting claims 1 and 3
because Liu does not disclose that a sensible heat exchange efficiency of an
outdoor side heat exchanger is higher than a sensible heat exchange
efficiency of an indoor side heat exchanger. Appeal Br. 7. In particular,
Appellants contend that “[i]t is not necessary, nor does Liu disclose, that the
relative sensible heat exchange efficiency of the first heat exchanger 70 be
greater than that of the second heat exchanger 41” in order to achieve Liu’s
goal “merely to increase the sensible heat exchange.” Id. at 8.
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Application 12/936,806
Liu discloses that “the exchange of heat and moisture between
different air flows [in a stationary-type total heat exchanger] is conducted
only in its total heat exchange member by resorting to the heat-conductivity
and moisture-permeability capabilities of the partition plates 2, which results
in a limited sensible heat exchange rate as the partition plates 2 typically
have its focus placed on the capability of moisture-permeability rather than
heat-conductivity.” Liu, para. 5. Liu describes that “[tjypically, partition
plates 2 are specially treated papers with the capability of heat conductivity
and moisture permeability, and may be made from a carbon-fiber based
material such as ceramic fibers, asbestos, [or] fiber glass impregnated with a
hydrophilic material.” Id., para. 4 (describing prior art total heat exchanger
of Fig. 7). Liu identified “there is a need for a total heat exchanger which
can improve the sensible heat exchange effect between different air flows
conducting heat exchange in the total heat exchanger.” Id., para. 6. Liu’s
total heat exchanger l(k includes a V-shaped heat-pipe heat exchanger 70
that covers two adjacent surfaces of total heat exchange member 41. Id.,
para. 22. In this embodiment, heat exchanger 70 allows for a sensible heat
exchange between the supplied air and the exhausted air, while total heat
exchange member 41 allows for a total heat exchange of heat and moisture
therebetween. Id. Liu discloses that the total heat exchange member may be
constructed according to the prior art, as shown in Figure 7, and that the heat
pipes and cooling fins of the heat-pipe heat exchanger are made from high
thermally conductive materials such as copper or aluminum. Id., paras. 18,
20. Thus, Liu’s total heat exchanger 10a increases the sensible heat
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Application 12/936,806
exchange efficiency between the supplied air and the exhausted air as
compared to a prior art total heat exchanger that lacks the heat-pipe heat
exchanger. Id., para. 22.
The express and inherent disclosures of a prior art reference may be
relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103. In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.”). “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where,
as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding it
insufficient for an appellant to merely assert that the prior art does not
inherently possess the characteristic relied on and challenge the PTO to
prove the contrary by experiment or otherwise, noting that“[t]he PTO is not
equipped to perform such tasks”). “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.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
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Application 12/936,806
For the reasons that follow, we find that the Examiner had a sound
basis for finding that the heat-pipe heat exchanger 70 of Liu has a higher
sensible heat exchange efficiency than the total heat exchanger 41. We
further find that Appellants have not met their burden to show that the heat-
pipe heat exchanger 70 of Liu fails to necessarily or inherently possess the
higher sensible heat exchange efficiency characteristics as claimed.
In particular, as noted by the Examiner, Liu’s heat-pipe heat
exchanger includes heat pipes and fins made of materials such as copper
having high thermal conductivity. Final Act. 2—3; Ans. 8. As discussed
supra, the partition plates of Liu’s total heat exchanger 41 are made of a
carbon-fiber-based material capable of heat conductivity and moisture
permeability. Further, Liu acknowledges that the total heat exchanger 41
has a limited sensible heat exchange rate because the partition plates are
focused on the moisture permeability characteristic of the material at the
expense of the heat conductivity. Liu, para. 5. Based on these disclosures in
Liu, we find that the Examiner had a sound basis for finding that Liu’s heat-
pipe heat exchanger 70, which exchanges only sensible heat, has a higher
sensible heat exchange efficiency and lower latent heat exchange efficiency
than Liu’s total heat exchanger 41. Ans. 9. Appellants’ argument (Appeal
Br. 8-9) that it is not necessary to achieve the goals of Liu to provide an
additional heat exchanger having a higher sensible heat exchange efficiency
than Liu’s total heat exchanger is unavailing. Appellants’ arguments fail to
address the specific materials disclosed in Liu for the heat-pipe heat
exchanger 70 and the total heat exchanger 41, and the relative sensible heat
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Application 12/936,806
exchange properties of these materials. Thus, Appellants have failed to
demonstrate error in the Examiner’s determination that, based on the specific
construction of the heat-pipe heat exchanger 70 disclosed in Liu, the first
heat exchanger (heat-pipe heat exchanger 70) would have a higher sensible
heat exchange efficiency than the second heat exchanger (total heat
exchanger 41).
Appellants further argue that the Examiner erred in rejecting claims 1,
2, and 3, because in the embodiment depicted in Figure 4 of Liu, “the
outdoor air and the indoor air flow through the plurality of heat exchangers
in the same order” and that “according to claim 1, the outdoor air and the
indoor air flow through the plurality of heat exchangers in opposing
directions.” Appeal Br. 10; see also Reply Br. 6. This argument, however,
does not address the Examiner’s rejection, which is based on a modification
to the embodiment of Figure 4 to place the heat-pipe heat exchanger 70 on
sides AD of total heat exchanger 41, as explicitly taught as an alternate
embodiment in Liu. Final Act. 3 (citing Liu, para. 24).
Appellants further argue that “[ejven if the heat exchangers were
rearranged as suggested by paragraph [0024], this would merely place the
heat exchanger 41 before the heat exchanger 70.” Appeal Br. 11—12.
Appellants also contend that in this modified embodiment of Liu, the heat
exchanger 70 “is now arranged on an indoor side and not on an outdoor
side.” Reply Br. 8. We disagree with these assertions. As explained by the
Examiner, in this modified embodiment of Figure 4, heat-pipe heat
exchanger 70 would be arranged on the most outdoor side and take in the
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Application 12/936,806
outdoor air from an inlet (outdoor air opening 65 a) of the supply air duct and
total heat exchanger 41 would be arranged on the most indoor side and take
in the indoor air from an inlet (indoor air opening 66a) of the exhaust air
duct, as called for in each of the claims. See Final Act. 4 (annotated Figure 4
of Liu showing outdoor and indoor air flows). Further, Liu describes that
total heat exchanger 41 defines a first air passage extending through surfaces
A and C and a second air passage extending through surfaces B and D. Liu,
para. 18. Thus, in this modified embodiment of Figure 4 of Liu, the outdoor
air flows through a first heat-pipe heat exchanger 70 (via side A) and would
exchange heat with the indoor air flow (via the portion of heat exchanger 70
on side D). This heat exchange occurs after the indoor air flow already has
exchanged heat with the outdoor air flow in total heat exchanger 41, similar
to the flow depicted in Appellants’ Figure 2. The outdoor air then flows
through total heat exchanger 41 and is output to the indoor side (via outlet
68). Conversely, the indoor air flows first through total heat exchanger 41
and then through heat-pipe heat exchanger 70 before being exhausted to the
outdoor side (via outlet 69). Thus, in Liu’s modified Figure 4 embodiment,
the outdoor air flows through heat exchanger 70 and then heat exchanger 41
in order from the outdoor side to the indoor side, and the indoor air flow
through heat exchanger 41 and then heat exchanger 70 in order form the
indoor side to the outdoor side, as called for in each of the claims.
For these reasons, Appellants have not demonstrated error in the
Examiner’s rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable
over Liu.
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DECISION
The decision of the Examiner to reject claims 1-3 is AFFIRMED.
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
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