Ex Parte Thevenon

Board of Patent Appeals and Interferences

Jan 31, 2011

10889412 (B.P.A.I. Jan. 31, 2011)

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.
10/889,412 07/12/2004 Richard Thevenon 44950-75465 5715
76799 7590 02/01/2011
PAMELA A. KACHUR
577 W Santee Drive
Greensburg, IN 47240
EXAMINER
GROSSO, HARRY A
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
02/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD THEVENON
____________________

Appeal 2009-009898
Application 10/889,412
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009898
Application 10/889,412
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
8 and 17-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a housing, in particular for a heat
exchanger, and the method of its production. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A housing for a heat exchanger in an exhaust system of a
motor vehicle, comprising a jacket having a single sheet with
two joining margins which are joined to one another along a
joining line, the jacket having two connecting openings formed
by recesses in the joining margins to receive connecting sleeves
of the heat exchanger to be housed by the jacket.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kidd
Halm
US 1,977,678
US 5,947,196
Oct. 23, 1934
Sep. 7, 1999

REJECTIONS
Claims 1, 2, 4-8, 17, 18 and 20-23 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Halm. Ans. 4.
Claims 3 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Halm and Kidd. Ans. 5.

Appeal 2009-009898
Application 10/889,412
3
OPINION
Appellant argues claims 1, 2 and 5-8 as a group. App. Br. 3-5. We
select claim 1 as the representative claim, and claims 2 and 5-8 will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
In rejecting independent claims 1 and 17, the Examiner reads Halm’s
manifold 11 as the claimed “jacket.” Ans. 4. Appellant contends this is not
reasonable because Halm’s manifold 11 is part of Halm’s heat exchanger 10,
itself. App. Br. 4. This argument is persuasive with respect to claim 17
which positively recites both a heat exchanger and jacket. With respect to
17, it is unreasonable to read Halm’s manifold as both of these claim
elements. Appellant’s argument is unpersuasive regarding claim 1 because
the housing described by claim 1 does not require a heat exchanger. When
given its broadest reasonable interpretation, the term “jacket” simply
requires a structure that can cover something else—a function Halm’s
manifold 11 can perform since it is a hollow tube.
The Examiner correctly identified the limitation of claim 1 requiring
that the “two connecting openings” be “formed by recesses in the joining
margins” as a product-by-process limitation and applied the appropriate
standard for determining patentability: in a claim drawn to an apparatus,
recitations of the process by which it was formed must result in a structural
difference to distinguish the claimed invention over the prior art. See Ans. 6;
In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (citations omitted). Since
Appellant only argues that there is a difference in the process of making the
claimed apparatus as compared to the prior art rather than a structural
difference in the apparatus itself (App. Br. 4), Appellant’s argument is
unpersuasive.
Appeal 2009-009898
Application 10/889,412
4
We adopt the Examiner’s remaining findings regarding the rejection
of claim 1 as our own. For these reasons the rejection of claim 1, along with
claims 2 and 5-8, is sustained. The rejection of claim 17 along with
dependent claims 18 and 20-23 is reversed. Since Kidd, as applied by the
Examiner, fails to overcome the deficiencies of Halm, the rejection of claim
19 must also be reversed.
Turning to claim 4, Appellant contends that the Examiner erred by
finding Halm discloses “different angular orientations when viewed along a
central line of the housing.” App. Br. 5. While caution must be exercised in
discerning features exclusively from drawings, Figures 2 and 3 of Halm do
in fact show a circumferential offset of holes 22. See Ans. 7. Appellant has
not established why this feature of Halm fails to meet the argued limitation.
Accordingly, the rejection of claim 4 is sustained.
Turning to the rejection of claim 3, Appellant contends that the
Examiner erred in concluding the claimed subject matter would have been
obvious to one of ordinary skill in the art because Halm teaches away from
welding, and, furthermore, welding would destroy an important function of
Halm. App. Br. 8-9. Appellant’s argument is premised upon Halm’s
teaching that “welding involves an additional step in the formation of the
header or manifold which adds to its expense.” This teaching would convey
to one of ordinary skill in the art that welding is not preferable when it is
desirable to minimize time or expense. It would not, as Appellant contends,
suggest to one of ordinary skill in the art that welding should never be used.
One of ordinary skill in the art would know how to determine whether the
advantages of including the step of welding outweigh the disadvantages in
each particular application. Thus, Appellant’s argument is unpersuasive and
the rejection of claim 3 is also sustained.
Appeal 2009-009898
Application 10/889,412
5

DECISION
For the above reasons, the Examiner’s rejections of claims 1-8 are
affirmed, and the Examiner’s rejections of claims 17-23 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

nlk

PAMELA A. KACHUR
577 W Santee Drive
Greensburg IN 47240