11748597 (P.T.A.B. Apr. 18, 2014)

Ex Parte Vanderwees

Patent Trial and Appeal BoardApr 18, 2014

11748597 (P.T.A.B. Apr. 18, 2014)

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. 11/748,597 05/15/2007 Doug Vanderwees 39076-0830 6722 87855 7590 04/18/2014 Marshall & Melhorn, LLC Four SeaGate, 8th Floor Toledo, OH 43604 EXAMINER DUCKWORTH, BRADLEY ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 04/18/2014 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 DOUG VANDERWEES ________________ Appeal 2012-004143 Application 11/748,597 Technology Center 3600 ________________ Before: JOHN C. KERINS, MICHAEL L. HOELTER and JILL D. HILL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004143 Application 11/748,597 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-5 and 15-17. App. Br. 3. Claims 6-14 have been withdrawn. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to methods of fastening accessories, such as radiator fans, to radiators or other heat exchangers.” Spec. para. [0001]. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A mounting bracket for use in a stacked plate core device of the type having a plurality of tubes each defined by a plate pair including first and second plates having peripheral edge portions joined together and central planar portions spaced apart to define a fluid passage therebetween, the tubes being disposed in stacked relation to one another such that end surfaces of the joined peripheral edge portions define opposed faces of the core device, the mounting bracket comprising: a cap portion which, in use, is disposed against and brazed to a portion of one of the faces of the core device defined by end surfaces of a pair of adjacent tubes; and a filler portion extending from the cap portion and interleaved, in use, between the pair of adjacent tubes, the filler portion having faces abutting and brazed to respective peripheral edge portions of said adjacent tubes, said faces being substantially parallel and planar and facing in opposite directions. Appeal 2012-004143 Application 11/748,597 3 REFERENCES RELIED ON BY THE EXAMINER Martins US 6,032,727 Mar. 7, 2000 Miura US 2006/0037734 A1 Feb. 23, 2006 THE REJECTION ON APPEAL Claims 1-5 and 15-171 are rejected under 35 U.S.C. 103(a) as being unpatentable over Miura and Martins. Ans. 4, 5. ANALYSIS The rejection of claims 1-5 and 15-17 as being unpatentable over Miura and Martins The preamble to claim 1 recites a mounting bracket “for use in” a core device having tubes. The body of claim 1 includes limitations directed to a “cap portion” and a “filler portion,” both of which are recited in terms of being “in use” and their being “brazed to” the end or edge of “adjacent tubes.” The Examiner finds that the preamble provides details as to “the environment that the device is intended to be used” and that “the core device and associated parts thereof, are disclosed solely as part of an intended use statement.” Ans. 5-6. For example, the Examiner finds that “the claims are drawn to a bracket for use with a core device and that in use, is brazed to specific parts of the core device.” Ans. 6. Appellant disagrees with the Examiner’s finding that the preamble is merely “an intended use statement” (Ans. 6) and argues instead that the preamble is “necessary to give life, meaning, and vitality to” claim 1. App. Br. 8 referencing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1 Claim 17 is separately rejected as being unpatentable over Miura and Martins “as applied to claim 15 above.” Ans. 5. Appeal 2012-004143 Application 11/748,597 4 1305 (Fed. Cir. 1999); see also App. Br. 9-10 and Reply Br. 4-5. Pitney Bowes provides guidance that “[i]f . . . the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, 182 F.3d at 1305. Here, the body of claim 1 is directed to both the cap portion and the filler portion being brazed to certain locations (i.e. “end surfaces” or “edge portions,” respectively) of “adjacent tubes.” The referenced “tubes” and these recited locations are described and further defined in the preamble.2 Consequently, we agree with Appellant that Pitney Bowes is applicable here. App. Br. 8-9. The preamble of claim 1 is written so as to offer a “distinct definition of [] the claimed invention’s limitations” and further, this preamble provides more than merely stating “the purpose or intended use of the invention” in that the preamble also provides structural interrelationships between certain claim elements. See Pitney Bowes, 182 F.3d at 1305. Accordingly, the Examiner’s finding that the preamble to claim 1 is “an intended use statement” is not persuasive. Ans. 6. As noted supra, claim 1 includes the limitation that the claimed cap portion is brazed to “adjacent tubes.” In this regard, the Examiner finds that 2 The preamble to claim 1 discusses the core device “having a plurality of tubes each defined by a plate pair including first and second plates having peripheral edge portions joined together and central planar portions spaced apart to define a fluid passage therebetween, the tubes being disposed in stacked relation to one another such that end surfaces of the joined peripheral edge portions define opposed faces of the core device.” Appeal 2012-004143 Application 11/748,597 5 Miura’s corresponding cap portion 56 “is brazed to a radiator surface (26c) when in use.” Ans. 4. Appellant contends that Miura’s nut 50 (which encompasses cap portion 56) is “brazed to the tank member 25” and not to any tube as recited. Ans. 16-17. Paragraph [0036] of Miura is consistent with Appellant’s contention in stating that “[t]he right tank member 25 is composed of three wall portions 26a, 26b, 26c” and that “[t]he nut 50 for attaching an electric fan is brazed to the wall portion 26c.” See also Miura para. [0040]. The Examiner does not otherwise provide guidance as to where the claimed cap portion is brazed to the recited location of any “adjacent tubes.” Ans. 6. Accordingly, we reverse the Examiner’s rejection that claims 1-5 and 15-17 are obvious over Miura and Martins. DECISION The Examiner’s rejection of claims 1-5 and 15-17 as being unpatentable over Miura and Martins is reversed. REVERSED Klh