Ex Parte Taras et al

Board of Patent Appeals and Interferences

Mar 29, 2010

10986680 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL F. TARAS, ALLEN C. KIRKWOOD, and
ROBERT A. CHOPKO
____________

Appeal 2009-006797
Application 10/986,680
Technology Center 3700
____________

Decided: March 30, 2010
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael F. Taras et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 3, 8, 11, 17, 19, 24, and 27 under 35
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U.S.C. § 102(b) as being anticipated by Yamauchi (GB 2 250 336 A,
published Jun. 3, 1992) and claims 12, 13, 28, and 29 as being unpatentable
over Yamauchi in view of Ayub (US 6,179,051 B1, issued Jan. 30, 2001).
Claims 2, 4-7, 9, 10, 15, 16, 18, 20-23, 25, 26, 31, and 32 are withdrawn
from consideration. Claims 14 and 30 are objected to. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to a structure to create a swirling motion of
two-phase refrigerant flow in the evaporator inlet manifold in order to obtain
and uniformly distribute a homogenous two-phase mixture among the
parallel channels within a parallel flow heat exchanger. Spec. 3, para.
[0008].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A swirl-inducing device for a heat exchanger of the type
having longitudinally extending inlet and outlet manifolds
fluidly interconnected by a plurality of parallel channels for
conducting the flow of refrigerant therebetween, comprising:
a spirally formed insert disposed in the flow path of the
refrigerant passing through the inlet manifold so as to induce a
swirl to the refrigerant flow which is outside of the insert and
within a common cavity of the manifold and thereby maintain a
substantially uniform distribution of refrigerant flowing from
said common cavity to any one of said plurality of parallel
channels.

Contentions
Appellants contend that Yamauchi fails to disclose that the spirally
formed insert is within a common cavity of a manifold as set forth in claims
1 and 17. App. Br. 6 and Reply 4-5. Appellants contend “common cavity”
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should be construed as shown in the figures when referencing numeral “16”,
and, if construed in this manner, cavity 16 is “common” to all parallel
channels of the heat exchanger. Reply Br. 5. Appellants contend this claim
construction is the only reasonable construction because of the functional
resultant language of “‘and thereby maintain a substantially uniform
distribution of refrigerant flowing from said common cavity to any one of
said plurality of parallel channels’ in claim [sic. claims] 1 and 17.” Reply
Br. 5. Appellants contend that Yamauchi’s return element 45 is not common
nor can it provide refrigerant flow to the parallel channels. Reply Br. 5.
According to Appellants, this is because the refrigerant flows from the return
element 45 into the individual flow paths 43 of the cylindrical part 44 and
from those individual flow paths to the inlet chambers 5 before passing into
the tube elements 7. Reply Br. 5. Concerning the rejection based upon
obviousness, Appellants contend that the rejection is improper because,
according to Appellants, Yamauchi and Ayub utilize different approaches to
distributing the refrigerant flow across the channels; it would be technically
infeasible to combine the teachings; and it would not be readily adaptable or
suggestive as proposed by the Examiner to combine the teachings. App. Br.
7-8 and Reply Br. 5-6.

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Issue
Based on Appellants’ contentions, have Appellants specifically
pointed out an error in the Examiner’s rejections concerning the lack of
novelty or want of nonobviousness?
Principles of Law
A determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, a question of law, followed by, in the
case of anticipation or obviousness, a comparison of the construed claim to
the prior art. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed.
Cir. 1998) (citations omitted).
Claims define the subject matter Appellants regard to be their
invention. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In addition,
claims are given the broadest reasonable construction consistent with the
specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The
Appellants have the burden to precisely define the invention, not the PTO.
Id. at 1056. Appellants always have the opportunity to amend the claims
during prosecution; a broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
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claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Analysis
While claims are interpreted in light of the Specification, particular
embodiments appearing in the Specification are not read into claim terms;
this includes figures as well. As such, construing “common cavity” to mean
what is shown in the figures imports the written description into the claim
and thus leads to a narrow construction instead of a broadest reasonable
construction in light of the Specification.
The Examiner’s claim construction, elaborated in the Supplemental
Answer, construes “common cavity” to be a cavity were all refrigerant
passes before being distributed into the plurality of parallel channels. This
construction is consistent with Appellants’ Specification as it would be
interpreted by a person of ordinary skill in the art. The Specification
discloses that openings connect an internal cavity and a plurality of channels
to permit refrigerant to pass into the channels and out to an outlet header or
manifold. See, e.g., Spec. 4-5, paras. [0023-0024]. Accordingly, the
Examiner’s claim construction appears to be a reasonable interpretation in
light of the Specification.
Figures 8 through 10 and page 5 describe Yamauchi’s fourth
embodiment. Inner pipe 42 contains a spiral channel 41 that swirls the
refrigerant flow (as shown by the lead lines in figure 9). The refrigerant
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flow exits pipe 42 and enters return element 45. Return element 45 transfers
the refrigerant into a plurality of flow paths 43, each with an opening 46.
The number of flow paths 43 equals the number of parallel channels 7
(tubes, Yamauchi’s nomenclature). Accordingly, the flow paths 43 each
carry refrigerant flow and the refrigerant flow exits a flow path 43 at
openings 46 to enter a chamber 5 and then into a parallel channel 7.
Yamauchi explicitly discloses that because the refrigerant is swirled out of
the inner pipe 42, the refrigerant is uniformly distributed to the flow paths 43
and flows out of holes 46 and into tubes 7 (channels, Appellants’
nomenclature). Yamauchi 5-6. If the refrigerant is uniformly distributed to
the flow paths, the refrigerant is uniformly distributed into tubes 7.
The claims set forth the spirally formed insert be disposed in the
refrigerant flow path passing through a manifold so as to induce a swirl to
the refrigerant flow which is outside the insert and within a common cavity
of the manifold in order to maintain a substantially uniform distribution of
refrigerant flow from the common cavity to any of the parallel channels.
Yamauchi’s pipe 42 with spiral channel 41 anticipates the claimed spirally
formed insert. The refrigerant flow passes through this insert, and thus the
insert is disposed in the refrigerant flow path. Since the insert is within
cylindrical part 44, the refrigerant is passing through a manifold that being
part 44. The spiral channel 41 ostensibly induces a swirl to the refrigerant
and Yamauchi explicitly discloses the refrigerant exits the pipe 42 in a swirl,
and is thus swirled outside the insert. The swirled refrigerant enters element
45, which the Examiner found to satisfy the common cavity because it is
common first to all flow paths 43, second to all chambers 5, and finally to all
channels 7. Additionally, element 45 is part of tube 44 and thus is within the
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manifold as would be understood by a person of ordinary skill in the art. As
Yamauchi explicitly discloses, the swirling of the refrigerant into the
element 45 permits the refrigerant to be uniformly distributed to the flow
paths 43. As such, it is axiomatic that the refrigerant would be uniformly
distributed into any one of the parallel channels 7 after exiting a flow path
43 via an opening 46. Thus, the refrigerant, upon leaving the common
cavity, element 45, is maintained substantially uniform in distribution to
ultimately flow uniformly into any one of the parallel channels 7. While the
refrigerant makes a few more twists and turns to reach the parallel channels
7 in Yamauchi than what Appellants disclose in their Specification, this does
not preclude Yamauchi from anticipating a claim with an opened-end
transitional phrase. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.).
In view of the foregoing, Yamauchi anticipates the contested
limitations, and Appellants have not demonstrated an error Examiner’s
rejection.
Appellants’ argument that Yamauchi and Ayub utilize different
approaches to distributing the refrigerant flow across the channels is
unconvincing because Appellants fail to provide adequate technical reasons
why a person having ordinary skill in the art would not have applied the
teachings of Ayub to Yamauchi. “A person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Appellants’ arguments that it would be technically
infeasible to combine the teachings and that it would not be readily
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adaptable or suggestive to combine the teachings as proposed by the
Examiner, are insufficient, because the Appellants fail to persuade that the
Examiner’s reasoning to combine lacks a rational underpinning.
In view of the foregoing, Appellants have not demonstrated that the
Examiner erred in concluding the claimed subject matter set forth in the
claims is obvious over the combined teachings of Yamauchi and Ayub.

CONCLUSIONS
Appellants’ contentions have not demonstrated error in the
Examiner’s rejections concerning lack of novelty and want of
nonobviousness.

DECISION
The Examiner’s decision to reject the claims as either anticipated with
Yamauchi or obvious over Yamauchi and Ayub 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)(1)(iv) (2007).

AFFIRMED

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