Ex Parte Vartiainen

Patent Trial and Appeal Board

Feb 26, 2014

11496425 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SAMI VARTIAINEN
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Appeal 2012-003410
Application 11/496,425
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
THOMAS F. SMEGAL, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
DE ʼ065 (DE 87 02 065 U1, published May 21, 1987) and Seifert (DE 33 05
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126 A1, published Aug. 16, 1984).1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a cooling solution of an
instrument cabinet that ensures that sufficient cooling is achieved under all
conditions for electric components to be installed into the instrument
cabinet.” Spec. 1, para. [0001], ll. 7-9. Claim 1, reproduced below, with
emphasis added, is representative of the appealed subject matter.
1. An instrument cabinet comprising:
a wall structure with vertical studs,
a cooling element with a flow channel that comprises a
group of substantially parallel channels for feeding cooling
liquid in the vertical direction from bottom to top through the
cooling element that is arranged upright and at least partly in
the space between the vertical studs,
at least one wall that separates the cooling element from
a space containing electric components of the instrument
cabinet, and between the wall and the wall structure of the
instrument cabinet, there is a first part of the flow channel, in
which air flowing through the flow channel is directed in the
longitudinal direction of the cooling element from top to

1 This is the sole ground of rejection that Appellant sets forth in the
“Grounds of Rejection to be Reviewed on Appeal” section of the Appeal
Brief. App. Br. 3. The Examiner acknowledges that “[t]he [A]ppellant’s
statement of the grounds of rejection to be reviewed on appeal is correct.”
Ans. 3. Therefore, the Examiner’s references to Imral (US 4,236,381, issued
Dec. 2, 1980) and Gupte (US 6,688,137 B1, issued Feb. 10, 2004) as being
prior art of record in the application underlying this appeal, and the
Examiner’s conclusions of obviousness with respect to DE ʼ065 in
combination with Imral and Gupte do not constitute rejections to be
reviewed on appeal. See Ans. 7.
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bottom, which is an opposite flow direction to the flow
direction of the cooling liquid through the cooling element, and
the space containing electric components forms a second part of
the flow channel that is connected to the first part of the flow
channel through openings at different heights, and
a fan for cooling the electric components to be installed
in the instrument cabinet with airflow produced by the fan,
wherein the fan is located below the space containing the
electric components, and draws air from the first part of the
flow channel and to discharge air to the second part of the flow
channel, and is aligned in such a manner that the airflow
produced by the fan is directed directly upwards to
the space containing the electric components.

OPINION
The Examiner finds that DE ʼ065 substantially discloses the subject
matter of claim 1 including, inter alia, a cooling element (heat exchanger 6)
which is at least partly in the space between the vertical studs, and which has
a flow channel. Ans. 4. However, the Examiner also finds that DE ʼ065
fails to disclose that the flow channel “comprises a group of substantially
parallel channels for feeding cooling fluid liquid in the vertical direction
from bottom to top through the cooling element,” as recited in claim 1. Ans.
5. To cure the deficiency of DE ʼ065, the Examiner turns to Seifert for its
disclosure of a cooling element (evaporator 2) having a flow channel that is
comprised of substantially parallel flow channels (see dot and dashed lines
having upwardly and downwardly directed arrows to the right and left,
respectively, of evaporator 2 as shown in Figure 1), wherein the flow
channels are capable of performing the recited intended use of feeding
cooling liquid in the vertical direction from bottom to top through the
cooling element. Ans. 5-7. The Examiner concludes that it would have
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been obvious to one of ordinary skill in the art to either (1) modify the flow
channel of the cooling element (heat exchanger 6) of DE ʼ065 to comprise a
group of substantially parallel channels for feeding cooling liquid in the
vertical direction as taught by Seifert or (2) to substitute evaporator 2 of
Seifert for the heat exchanger 6 of DE ʼ065 “in order to facilitate an increase
in heat exchanging and cooling efficiency of the system.” Ans. 5, 6.
Appellant argues that the Examiner has failed to provide a reason “as
to why the proposed replacement would in fact facilitate an increase in heat
exchanging and cooling efficiency of the system” and therefore, “the
motivation provided for the combination of DE ʼ065 and Seifert is derived
from hindsight, as there is no teaching or suggestion in DE ʼ065 or Seifert,
or any other explanation, with respect to the facilitation of increased heat
exchanging and cooling efficiency.” App. Br. 9.
The Examiner responds that “the general concept of choosing one
cooling element over others, and installing same within enclosure in one
orientation or another, falls within the realm of common knowledge as an
obvious mechanical expedient and design choice.” Ans. 8.
DE ʼ065 discloses a vertically arranged cooling shaft 4 having a heat
exchanger 6 on the right hand side of frame 10 of housing 16. DE ʼ065, p. 1,
ll. 40-42, and Fig.2 The heat exchanger has cooling liquid flowing from
inflow 7 at the bottom of shaft 4 to outflow 8 at the top of shaft 4 through
horizontally arranged parallel channels. Id. Cooling air streams 12 and 11
go into and come out of, respectively, the cooling shaft 4 and traverse the
parallel channels in order for the air stream to be cooled by the cooling

2 All references to DE ʼ065 are to the English machine translation in the
Evidence Appendix of the Appeal Brief filed Jun. 29, 2011.
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liquid before it is sent back through the slots or bays 1, 2, 3 of housing 16.
DE ʼ065, p. 1, ll. 37-39, and Fig.
Seifert’s evaporator 2 similarly has cooling liquid flowing along the
outer periphery thereof which contacts the air from cabinet 25, sent through
duct 9 and fan 7 into evaporator 2, to cool the air prior to sending the air
back through duct 10 and into cabinet 25. Seifert, p. 1, ll. 28-29.3
Thus, both DE ʼ065 and Seifert teach the use of liquid coolant to be in
contact with air to cool electronic components in a cabinet. The Examiner
has not pointed to anything in either DE ʼ065 or Seifert, and has not
otherwise persuasively explained, how either modifying the cooling element
(heat exchanger 6) of DE ʼ065 by the teachings of Seifert or substituting the
cooling element (heat exchanger of DE ʼ065 with the cooling element
(evaporator 2) of Seifert would result in an increase in heat exchanging and
cooling efficiency. In other words, the Examiner’s legal conclusion of
obviousness has not been supported by a factual basis since the Examiner
has not shown why modifying DE ʼ065 by the teachings of Seifert would
facilitate an increase in heat exchanging and cooling efficiency of the
system. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection
based on section 103 clearly must rest on a factual basis, and these facts
must be interpreted without hindsight reconstruction of the invention from
the prior art.”).
Thus, we are persuaded by Appellant’s hindsight argument, because
the Examiner’s reason for modifying DE ʼ065 by the teachings of Seifert,
i.e., “to facilitate an increase in heat exchanging and cooling efficiency of

3 All references to Seifert are to the English machine translation in the
Evidence Appendix of the Appeal Brief filed Jun. 29, 2011.
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Application 11/496,425

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the system,” lacks a rational underpinning. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claim 2 which depends therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over DE ʼ065 and Seifert.

DECISION
We reverse the Examiner’s decision to reject claims 1 and 2.

REVERSED

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