Ex Parte Watanabe et al

Patent Trial and Appeal Board

Sep 29, 2014

11662252 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOSHIAKI WATANABE and SHINICHI SAKAMOTO
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Appeal 2012-007363
Application 11/662,252
Technology Center 3700
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Before ANNETTE R. REIMERS, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Yoshiaki Watanabe and Shinichi Sakamoto (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a): (1) claim 1 as unpatentable over Yasumasa (JP 2000088378 A;
pub. Mar. 31, 2000)1 and Zornes (US 4,901,787; iss. Feb. 20, 1990); (2)
claims 2–5 as unpatentable over Yasumasa, Zornes, and Symko (US
2004/0000150 A1; pub. Jan. 1, 2004); and (3) claim 6 as unpatentable over

1 We derive our understanding of this reference from an English translation
by FLS, Inc., in January 2012, which is available in the electronic file
wrapper of the underlying application. All references to the text of
Yasumasa are to portions of the translation.
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Yasumasa, Zornes, and Swift (US 6,032,464; iss. Mar. 7, 2000). Further, in
the Examiner’s Answer, the Examiner presented a New Ground of Rejection
of claims 1–6 in view of the prior art as cited above “to provide evidence
that it is well known to provide straight channels in regenerators, as taught
by Yasumasa.” Ans. 4.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a thermoacoustic device
capable of cooling an object to be cooled or of heating an object to be heated
using a thermoacoustic effect, and more particularly, relates to a heat
exchanger and a thermoacoustic device using the same.” Spec. 1, para. 1;
figs. 1, 3. Claims 1, 2, and 6 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A heat exchanger comprising:
a high-temperature side heat exchanger;
a stack comprising:
a first stack constituent element on the high-
temperature side heat exchanger, the first stack
constituent element having a first communication path
with a first inner wall;
a second stack constituent element above the first
stack constituent element, the second stack constituent
element having a second communication path with a
second inner wall; and
a third stack constituent element above the second
stack constituent element, the third stack constituent
element having a third communication path with a third
inner wall, wherein the first inner wall, the second inner

2 We shall refer to this set of rejections with an *, e.g., Yasumasa and
Zornes*, to distinguish between the two sets of rejections.
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wall and the third inner wall extend as a single straight
channel; and
a low-temperature side heat exchanger provided on the
third stack constituent element, in which a temperature gradient
is generated in the first, second and third communication paths
by a temperature difference generated between the high-
temperature side heat exchanger and the low-temperature side
heat exchanger, and an acoustic wave is generated from the
stack,
wherein the first and the third stack constituent elements
have a low thermal conductivity, and the second stack
constituent element has a relatively high thermal conductivity.

ANALYSIS
Obviousness Rejection over Yasumasa and Zornes
Claim 1
Independent claim 1 calls for a heat exchanger spring plate including
a first stack constituent element, a second stack constituent element above
the first stack constituent element, and a third stack constituent element
above the second stack constituent element, wherein each of the first,
second, and third stack constituent elements have communication paths with
inner walls, and wherein the inner wall of the first stack constituent element,
the inner wall of the second stack constituent element, and the inner wall of
the third stack constituent element extend as a single straight channel.
Appeal Br. 16, Clms. App. The Examiner found that Yasumasa discloses
the limitations of claim 1 including a first stack constituent element having a
communication path with a first inner wall. See Ans. 6–7. The Examiner
found that Yasumasa fails to disclose
a second stack constituent element above the first
stack constituent element, the second stack
constituent element having a second
communication path with a second inner wall; a
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third stack constituent element above the second
stack constituent element, the third stack
constituent element having a third communication
path with a third inner wall, wherein the first inner
wall, second inner wall and the third inner wall
extend as a single straight channel[.]
Ans. 7. The Examiner turned to Zornes for disclosure of “a heat exchanger
stack to remove heat energy from a fluid passing therethrough (col. 3, lns.
36-54).” Id. The Examiner found that
FIGS. 6-8 of Zornes teach the stack having
alternating layers (35, 36) (col. 7, lns. 28-40) of
first, second and third stack constituent elements
each having communication paths and inner walls,
the second element above the first element and the
third above the second. Zornes implicitly teaches
the concept of the first inner wall, the second inner
wall and the third inner wall extend as a single
straight channel (col. 3, lns. 52-54; if passageways
do not alternate in size, the passageways will form
a single straight channel). Furthermore, Zornes
also teaches straight channels in regenerator stacks
(col. 2, lns. 65-57; passageways of constant cross-
section).
Id.; see also id. at 18–19. The Examiner concluded that
it would have been obvious to one of ordinary skill
in the art at the time of invention to provide the
stack arrangement of alternating thermally
conductive layers with the concept of a single
straight channel, as taught by Zornes, between the
high and low temperature side heat exchangers of
the Yasumasa invention, in order to
advantageously improve thermal efficiency of the
system.
Id. at 7–8.
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Appellants contend that
[i]f Zornes’ implicit teaching includes “the
first inner wall, the second inner wall and the third
inner wall extend as a single straight channel” as
interpreted by the Examiner, then, each of the
passages of Zornes does not have multiple
expansion chambers and does minimize the cross-
sectional area.
. . .
Furthermore, even if Zornes implies in col.
3, lines 52-54 that the passageways do not
alternate in size, it does not necessarily mean that
the passageways form a single straight channel. In
order to form a single straight channel from layers
with orifices in the same size, the orifices of layer
35, 36, 37 must be accurately positioned.
Otherwise, no single straight channel is formed.
Zornes does not teach so.
Appeal Br. 11. Appellants further contend that
[e]ven if the holes of the layers 35, 36 have
the same dimensions, the passageways formed by
the layers 35, 36 can provide the portions where
the gas working fluid can expand or compress,
unless the orifices 35a, 35b of all the layers are
exactly positioned such that the inner walls extend
straight. . . .
Where the orifices [30a, 30b] of all the
layers are not exactly aligned, as illustrated above,
the working fluid can expand or compress at the
interfaces of the layers 35, 36. The essence of
Zornes is in that “gas working fluid expands or
compresses through an orifice and connecting
passagesways ....” See col. 2, lines 65-67. While
the holes of the layers 35, 36 may have the same
dimensions, as argued by the Examiner, but if so,
the orifices [30a, 30b] of all the layers must not be
exactly aligned such that the inner walls extends
straight. . . .
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If the holes of the layers 35, 36 have the
same dimensions in Zornes, and if the orifices
[30a, 30b] of all the layers are aligned such that the
inner walls extend straight, the fluid in Zornes
cannot expand or compress through the orifice and
connecting passageways.
Reply Br. 8–9.
Appellants have the better position here. Zornes discloses that Figure
6 “is a partial view of a median section of the regenerator stack illustrating
the alternating size of the holes contained by each layer in the stack.”
Zornes, col. 6, ll. 20–22 (emphasis added); see also id. at Figs. 7, 8; Ans. 7.
Zornes further discloses that “[t]he passageways through the layers which
form the passageways 30 are alternated in diameter, as indicated by smaller
orifices [30a] and larger orifices [30b].” Zornes, col. 7, ll. 40-42 (emphasis
added); Figs. 6–8. We agree with Appellants that (1) “[o]ne skilled in the art
who reads col. 2, lines 65-67 of Zornes [would] understand that the ‘constant
cross section dimensions’ means the constant diameter among the orifices
30a, or among the orifices 30b in Fig. 6”; 3 and (2) “[n]othing in Zornes
teaches all of the orifices 30a and 30b through the layers 35, 36, 35, 36, 35
in Fig. 6 have [] constant cross dimensions.” Reply Br. 6. Further, although
we appreciate the Examiner’s position that “Zornes contemplates a situation
in which the holes do not alternate in size” and “if the hole size does not
alternate from layer to layer, the holes must be the same size” (see Ans. 18;
Zornes, col. 3, ll. 52–54), the Examiner has not persuasively established that
having the same size orifices (30a, 30b) from layer to layer (35, 36) in

3 Zornes discloses that “[a]s gas working fluid expands or compresses
through an orifice and connecting passageways of constant or varying cross
section dimensions.” Zornes, col. 2, ll. 65–67.
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Zornes necessarily means that the inner walls of the first, second, and third
stack constituent elements extend as a straight channel. See Ans. 7, 18–19;
Zornes, Fig. 6. It is possible, as proposed by Appellants, that having the
same size orifices (30a, 30b) from layer to layer (35, 36) in Zornes means
that the inner walls of the first, second, and third stack constituent elements
extend as a non-straight channel, such that the working fluid could expand or
compress through the orifices and connecting passageways. See Appeal Br.
11; Reply Br. 8–9; Zornes, Fig. 6. As such, based on the foregoing, the
Examiner has failed to establish by a preponderance of the evidence that the
combined teachings of Yasumasa and Zornes disclose the heat exchanger of
independent claim 1.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 as unpatentable over Yasumasa and Zornes cannot be
sustained.
Obviousness over Yasumasa, Zornes and either Symko or Swift
Claims 2–6
Similar to independent claim 1, each of independent claims 2 and 6
calls for the inner walls of the first, second, and third stack constituent
elements to extend as a single straight channel. See Appeal Br. 17–19,
Clms. App. Claims 3–5 depend directly from independent claims 1 or 2. Id.
at 18. The Examiner’s rejections of claims 2–6 as unpatentable over
Yasumasa, Zornes and either Symko or Swift (see Ans. 8–12) are based on
the same unsupported findings discussed above with respect to independent
claim 1. The addition of Symko or Swift does not remedy the deficiencies
of the combination of Yasumasa and Zornes. Accordingly, for similar
reasons as discussed above, we do not sustain the Examiner’s rejections of
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claims 2–6 as unpatentable over Yasumasa, Zornes and either Symko or
Swift.
Obviousness Rejection over Yasumasa and Zornes*
Claim 1
As discussed above, independent claim 1 calls for the inner walls of
the first, second, and third stack constituent elements to extend as a single
straight channel. Appeal Br. 16, Clms. App. The Examiner found that “it is
well known to provide straight channels in regenerators, as taught by
Yasumasa . . . . In particular, paragraph [0018] of Yasumasa discloses that
stack 21 forms multiple parallel passages.” Ans. 4; see also id. at 13, 23.
Appellants contend that
Yasumasa et al. merely teach that “[stack 21 forms] multiple
parallel passages that are parallel to the axis line of the straight
line tube section 11.” . . . However, Yasumasa does not teach
the stack made of multiple stack constituent elements form
inner walls extending a single straight channel.
Reply Br. 3–4; see also Yasumasa, p. 12, para. 18.
Appellants’ argument is persuasive. At the outset, we agree with
Appellants that Yasumasa is “silent about the configuration of the inner
walls when stacking multiple layers.” Id. at 3. We further agree with
Appellants that, similar to Yasumasa, “Zornes teaches each orifice 30a, 30b
forms multiple parallel passages that are parallel to the axis line.” Id. (citing
Fig. 6 of Zornes). As such, we also agree with Appellants that Yasumasa’s
mere disclosure of multiple parallel passages that are parallel to the axis line
does not necessarily mean that the inner walls of the first, second, and third
stack constituent elements of the passages (channels) of Yasumasa extend as
straight channels. See Reply Br. 3–4. In addition, Yasumasa discloses that
the stack 21 can be “made from honeycomb structure ceramics with
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numerous parallel passages.” Yasumasa, p. 13, para. 18; see also Ans. 23;
Reply 3–4. In a honeycomb structure, a number of passages (channels) in a
single layer of the honeycomb structure are parallel (i.e., next to each other),
however opposing layers (stacked layers) of the honeycomb structure fit
together in a staggered configuration. Thus, the inner walls of the stacked
layers (stack constituent elements) of the passages (channels) of the
honeycomb structure would most likely extend as non-straight channels.
The Examiner has not persuasively established that Yasumasa’s disclosure
of multiple (numerous) parallel passages (i.e., channels that are next to each
other) necessarily means that the inner walls of the stack constituent
elements of the passages (channels) of Yasumasa extend as straight
channels. As such, based on the foregoing, the Examiner has failed to
establish by a preponderance of the evidence that the combined teachings of
Yasumasa and Zornes disclose the heat exchanger of independent claim 1.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 as unpatentable over Yasumasa and Zornes* cannot be
sustained.
Obviousness over Yasumasa, Zornes and either Symko or Swift*
Claims 2–6
Similar to independent claim 1, each of independent claims 2 and 6
calls for the inner walls of the first, second, and third stack constituent
elements to extend as a single straight channel. See Appeal Br. 17–19,
Clms. App. Claims 3–5 depend directly from independent claims 1 or 2. Id.
at 18. The Examiner’s rejections of claims 2–6 as unpatentable over
Yasumasa, Zornes, and either Symko or Swift* (see Ans. 4, 8–12, 15, 16)
are based on the same unsupported findings discussed above with respect to
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independent claim 1. The addition of Symko or Swift does not remedy the
deficiencies of the combination of Yasumasa and Zornes. Accordingly, for
similar reasons as discussed above, we do not sustain the Examiner’s
rejections of claims 2–6 as unpatentable over Yasumasa, Zornes and either
Symko or Swift*.

DECISION
We REVERSE the decision of the Examiner to reject claims 1–6.

REVERSED

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