Ex Parte Taras et alDownload PDFPatent Trial and Appeal BoardNov 29, 201712921414 (P.T.A.B. Nov. 29, 2017) Copy Citation 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. 12/921,414 09/08/2010 Michael F. Taras PA0007006US;60246-656PUS1 2679 26096 7590 12/01/2017 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER ARANT, HARRY E ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL F. TARAS and ALEXANDER LIFSON Appeal 2016-002366 Application 12/921,414 Technology Center 3700 Before STEFAN STAICOVICI, BRANDON J. WARNER, and ANTHONY KNIGHT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael F. Taras and Alexander Lifson (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Sept. 12, 2014, hereinafter “Final Act.”) rejecting claims 1—11. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants’ Appeal Brief (filed May 12, 2015, hereafter “Appeal Br.”) identifies Carrier Corporation as the real party in interest. Appeal Br. 1. Appeal 2016-002366 Application 12/921,414 INVENTION Appellants’ invention relates to “heat exchangers of refrigerant systems.” Spec. 1,1. 9. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A microchannel heat exchanger comprising: a plurality of heat transfer microchannel tubes; a manifold for communicating refrigerant into said plurality of heat transfer tubes, and a distributor insert connected to a source of refrigerant and having a plurality of orifices in an outer periphery of said distributor insert and dividing elements on an outer wall of said distributor insert such that a plurality of distribution chambers are defined and associated with said plurality of heat transfer tubes, wherein said dividing elements are flat plates which have a hole configured to receive said distributor insert. REJECTIONS I. The Examiner rejected claims 1—11 under 35 U.S.C. § 112, second paragraph, as being indefinite. II. The Examiner rejected claims 1, 2, 9, and 10 under 35 U.S.C. § 102(b) as being anticipated by Niimura (embodiment of Figure 1) (JP 09-166368 (A), published June 24, 1997).2 III. The Examiner rejected claims 1, 3—7, and 11 under 35 U.S.C. § 102(b) as being anticipated by Niimura (embodiment of Figure 5). 2 We derive our understanding of this reference from the English language machine translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. 2 Appeal 2016-002366 Application 12/921,414 IV. The Examiner rejected claims 1, 2, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over Niimura (embodiment of Figure 1) and Lifson (WO 2006/083441 A2, published Aug. 10, 2006). V. The Examiner rejected claims 1, 3—7, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Niimura (embodiment of Figure 5) and Lifson. VI. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Niimura (embodiment of Figure 5), Lifson, and Granetzke (US 4,960,169, issued Oct. 2, 1990). ANALYSIS Rejection I The Examiner determines that the term “microchannel” in independent claim 1 is indefinite because it is a relative term, i.e., a word of degree, and neither the claim nor Appellants’ Specification provides a standard for measuring that degree. Final Act. 3. According to the Examiner, the term “microchannel” is rendered indefinite because “[t]he size of the heat exchanger tubes” is not defined. Id. In response, Appellants argue that “microchannel tubes are known” and “[a] worker ... in this art understands what is meant by ‘microchannel tubes.’” Appeal Br. 3. Appellants point to Lifson as a prior art reference that discloses microchannel tubes. Reply Brief 1 (dated Dec. 28, 2015, hereinafter “Reply Br.”). 3 Appeal 2016-002366 Application 12/921,414 The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether those skilled in the art would understand what is claimed when the claim is read in light of the Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In this case, Appellants’ Specification does not assign or suggest a particular definition to the claim term “microchannel” and, therefore, it is appropriate to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary and customary meaning of the term “micro” is “very small.” Merriam Webster’s Collegiate Dictionary (10th ed. 2005). Such an interpretation is consistent with Lifson’s disclosure, which describes “microchannels” as miniaturized channels. Lifson, para. 6. As such, in light of the ordinary and customary definition of the term “micro” and Lifson’s disclosure, the term “microchannel” means a “very small” channel. However, Lifson also describes “minichannels” in the same manner. Id. As such, in a first instance, we note that it is not clear from Lifson’s disclosure what specifically would differentiate “microchannels” from “minichannels.” Although we appreciate Appellants’ position that “microchannel tubes are known,” nonetheless, “[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Haliburton Energy Services, Inc. v. M-ILLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (emphasis added). While patentees are allowed to claim their 4 Appeal 2016-002366 Application 12/921,414 inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. Id. at 1253. Here, Appellants have not identified, nor could we find, a description in the Specification that clearly sets forth the metes and bounds of the term “microchannel,” as called for by independent claim 1. “Prior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (internal citation omitted). In the present case, for example, Lifson describes both “microchannels” and “minichannels” as miniaturized (very small) channels. See Lifson, para. 6. In another example, a flow channel classification for describing heat exchanger sizes classifies “micro-scale” spans as 1—100 pm (micro heat exchangers), “meso-scale” spans as 100 pm—1 mm (meso heat exchangers), and “macro-scale” spans as 1—6 mm for compact heat exchangers, and above 6 mm for conventional heat exchangers. See S.S. Mehendale et al., Meso- and Micro-Scale Frontiers of Compact Heat Exchangers, in Applied Optical Measurements 139 (Markus Lehner & Dieter Mewes eds.) (1999) (hereinafter “Mehendale”). In other words, in light of Mehendale, micro heat exchangers have channels, i.e., “microchannels,” with dimensions (diameter or width) in the range of 1 to 100 pm. However, in yet another example, a “microchannel heat exchanger” is described as having tubes ranging in width or diameter between 0.5 mm (500 pm) to about 3 mm (3000 pm). See Breiding et al. (US 2008/0078198 5 Appeal 2016-002366 Application 12/921,414 Al, publ. Apr. 3, 2008, hereinafter “Breiding”), para. 25. Hence, Breiding’s “microchannels” in the 500—3000 pm range fall outside the micro heat exchanger class of Mehendale, and, thus, when comparing the scales of Mehendale and Breiding, a person of ordinary skill in the art would not know what constitutes a “microchannel.” Moreover, Mehendale expresses a similar view in stating that “[t]here is no unique hydraulic diameter separating ‘microchannels’ from the conventional scale, and,. . . a precise terminology for describing heat exchanger sizes does not exist.” Mehendale, p. 139. Lastly, we note that Appellants’ statement that “[a] worker in . . . [the] art understands . . . [this] term” is purely conclusory because Appellants have not set forth with specificity any reasoning or factual findings to establish a standard for determining what constitutes a “microchannel.” Appeal Br. 3; see also Reply Br. 1 (“Again, a worker of ordinary skill in the art is aware of what the term means”). In conclusion, for the foregoing reasons, we agree with the Examiner that the term “microchannel” is indefinite. See Final Act. 3. Therefore, we sustain the rejection under 35U.S.C. § 112, second paragraph, of claims 1— 11 as being indefinite. Rejections II—VI As we agree with the Examiner that claims 1—11 are indefinite, it follows that the prior art rejections of claims 1—11 must fall because they are necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962). It should be 6 Appeal 2016-002366 Application 12/921,414 understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. SUMMARY The Examiner’s decision to reject claims 1—11 under 35U.S.C. § 112, second paragraph, as being indefinite, is affirmed. The Examiner’s decision to reject claims 1—11 under 35 U.S.C. §§ 102(b) and 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation