Ex Parte Yuschak et al

Patent Trial and Appeal Board

Jan 23, 2018

13039303 (P.T.A.B. Jan. 23, 2018)

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.
13/039,303 03/02/2011 Thomas Yuschak 09063 1614
34833 7590
FRANK ROSENBERG
5737 Kanan Road, No. 190
Agoura Hills, CA 91301
01/25/2018 EXAMINER
HOANG, MICHAEL G
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
FRANKROSENBERG@ att.NET
correspondence@frpatents.com
US PTO @ DOCKETTRAK.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS YUSCHAK and
ANNA LEE TONKOVICH1
Appeal 2016-001610
Application 13/039,303
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 14—19 and 24—30. Appeal Br. 2. Claims 1—13 and
20—23 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was conducted via telephone on January 10, 2018,
with Mr. Frank Rosenberg, Esq., arguing on behalf of Appellants.
We AFFIRM-IN-PART.
1 Velocys Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal 2016-001610
Application 13/039,303
CLAIMED SUBJECT MATTER
Claim 14, the sole independent claim, is reproduced below.
14. MicroChannel apparatus, comprising:
a core block comprising sheets of metal bonded together; plural
microchannels disposed within the core block; the plural
microchannels comprising plural apertures on one side of the core
block; a solid-walled enclosure that encloses the plural apertures
within a single, contiguous space; wherein the solid-walled enclosure
comprises a solid, continuous wall that is welded on one side to the
core block by a weld material; wherein the continuous wall has an
aspect ratio of at least 10:1 of height to thickness where height is the
direction that the wall projects from said one side of the core block,
and thickness is perpendicular to height.
Appeal Br. 16 (Claims Appendix, page i).
REJECTIONS
Claims 17 and 18 are rejected under 35U.S.C. § 112, second
paragraph, as being indefinite.
Claims 14—19, 26, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonnet (US 2004/0222200 Al, pub. Nov. 11, 2004) and
Mathias (US 7,014,835 B2, iss. Mar. 21, 2006).
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonnet, Mathias, and Offer (US 5,714,735, iss. Feb. 3,
1998).
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bonnet, Mathias, and Rose (US 2010/0224609 Al, pub. Sept. 9, 2010).
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bonnet, Mathias, and Kato (US 2006/0090887 Al, pub. May 4, 2006).
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bonnet, Mathias, and Wang (US 2007/0284095 Al, pub. Dec. 13, 2007).
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Appeal 2016-001610
Application 13/039,303
Claims 14—16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mathias.
Claims 17—19, 26, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mathias and Bonnet.
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mathias, Bonnet, and Offer.
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathias, Bonnet, and Rose.
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathias, Bonnet, and Kato.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mathias, Bonnet, and Wang.
ANALYSIS
Claims 17 and 18
Rejected as Being Indefinite
The Examiner determines that the limitation “sealed by a metal piece
that is welded onto a side of the solid-walled enclosure that is not the side of
the solid-walled enclosure that is welded to the core block” is a negative
limitation that renders claims 17 and 18 indefinite because it does not point
out the particular side that the solid-walled enclosure is welded to the metal
piece. Final Act. 3. The Examiner also finds that this limitation defines the
invention in terms of what it is not, rather than what it is. Ans. 3.
Appellants argue that a negative limitation is not indefinite per se, and
the plain meaning of the claims is clear in that the side for sealing is a side of
the solid-walled enclosure other than the side of the solid-walled enclosure
that is welded to the core block. Appeal Br. 5.
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Appeal 2016-001610
Application 13/039,303
We agree with Appellants that a negative limitation is not inherently
indefinite. However, the way in which the second seal is recited here makes
it unclear what is being claimed. This is so because continuous, solid-walled
enclosure 21 is welded on one side to a core block by a weld material 23.
Spec. 5:10—12. Figure 2 is reproduced below to illustrate this configuration.
Figure 2 is a perspective view of core block 17 with solid-walled
enclosure 21 attached at one end via weld 23 to core block 17 to enclose
plural apertures 19 and contiguous space 22 (above left), and a side view of
core block 17 with a conduit 27 connected to an opposite end of solid-walled
enclosure 21 by a weld 25 (above right). Spec. 5:6—25, 4:16—17.
Confusion results because solid-walled enclosure 21 has two sides.
An outer side is welded to core block 17 via weld material 23 in Figure 2.
An inner side faces apertures 19 and space 22. Thus, the same outer side is
connected to core block 17 via weld 23 and to conduit 27 via weld 25.
In contrast, one end/portion of enclosure 21 is connected to core block
17 via weld material 23. Another end/portion is connected to conduit 27 via
weld 25. Id. at 5:9-20. If Appellants want to claim this arrangement, using
the term “side” to do so is confusing in light of the Specification and needs
to be clarified. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009).
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Appeal 2016-001610
Application 13/039,303
Inventors must “claim their invention in ‘full, clear, concise, and exact
terms.’” One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1062
(Fed. Cir. 2017) (quoting 35 U.S.C. § 112). A “claim is indefinite when it
contains words or phrases whose meaning is unclear.” Ex Parte McAward,
No. 2015-006416, 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). Thus, “claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms.” Id. (quoting Packard, 751 F.3d at 1313)).
Thus, we sustain the rejection of claims 17 and 18 as being indefinite.
Claims 14—19, 26, and 28
Rejected Over Bonnet and Mathias
Appellants argue claims 14 and 16—19 together and claims 15, 26, and
28 separately. Appeal Br. 6—10. We select claim 14 as representative, with
claims 16—19 standing or falling with claim 14. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 14 and 16—19
The Examiner finds that Bonnet discloses a microchannel apparatus as
recited in claim 14 including solid-walled enclosure (container 1) enclosing
an aperture of the core block (heat exchanger 2) but does not disclose an
aspect ratio of 10:1 of height to thickness for continuous wall 1. Final Act.
4. The Examiner also finds that Bonnet discloses container 1 as a structure
that is used to collect and distribute fluids to brazed matrix 2 heat exchanger
10 so a skilled artisan would have recognized an aspect ratio of 10:1 would
be beneficial and obvious to achieve through routine optimization based on
the teachings of Bonnet, e.g., because a greater height value provides a
larger volume in container 1 to hold fluid that is collected and transferred to
heat exchanger 10. Id. (citing Bonnet | 57, Fig. 3); see Ans. 6 (same).
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Appeal 2016-001610
Application 13/039,303
Appellants argue that Bonnet does not disclose an enclosure as a solid,
continuous wall that is welded on one side to a core block by weld material.
Appeal Br. 7—8. This argument is not persuasive in view Bonnet’s teaching
of intermediate workpiece 1 as a fluid collecting and distributing container
that is welded to brazed matrix 2 of a heat exchanger by welded joint 4 as
the Examiner finds. Bonnet ff 41, 57, 58; Final Act. 4; Ans. 5—6. Bonnet
teaches that workpiece 1 collects and distributes fluids in heat exchanger 10.
Bonnet H 41, 57, 58, Fig. 1. Thus, workpiece 1 is a solid, continuous wall.
Appellants argue that neither Bonnet nor Mathias discloses a solid,
continuous wall with an aspect ratio of at least 10:1 of height to thickness.
Appeal Br. 8. Appellants argue that this feature allows the connection to be
opened to access the core block without damaging the core block. Id. at 9;
see Spec. 6:19-7:2. This argument is not persuasive because Bonnet teaches
structures/containers 1 welded to heat exchanger 10 with an aspect ratio that
would have been obvious to optimize through routine experimentation to
achieve the claimed aspect ratio of at least 10:1. Ans. 6. The Examiner’s
determination is supported by express teachings of Bonnet to use structure 1
as an intermediate workpiece to connect header 21 to brazed matrix 2 heat
exchanger 10 to collect and distribute fluids in heat exchanger 10 from fluid
header 21. Bonnet ff 57, 58, 66. Making structure/container 1 longer with
an aspect ratio of at least 10:1 would allow fluid header 21 to be connected
to structure 1 via weld 20 without impairing weld 4 to butter layers 5, 6, 7 at
brazed matrix 2. See id. ff 42—50, 60-66. A greater aspect ratio thus spaces
weld 20 further from weld 4 at brazed matrix 2 so heat from weld 21 will not
impair existing weld 4. Indeed, Figure 1 of Bonnet illustrates intermediate
container 1 with a greater aspect ratio than in Figure 3. Id. ff 57—66.
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Appeal 2016-001610
Application 13/039,303
A skilled artisan could determine that any additional cost in making
structure 1 longer would be offset by avoiding the need to connect fluid
header 21 directly to heat exchanger 10, which could contaminate the weld
with impurities. Id. at || 7—13, 46-48. The longer aspect ratio also prevents
heat from weld 20 damaging brazed matrix 2 or weld 4 at brazed matrix, as
discussed above. Thus, we sustain the rejection of claims 14 and 16—19.
Claim 15
The Examiner finds that Bonnet teaches an enclosure open to an
atmosphere, as recited in claim 15, to receive fluid for heat exchange. Final
Act. 5 (citing Bonnet || 57, 66); Ans. 7. Appellants argue that Bonnet’s
manifold lacks a solid enclosure that is open to the atmosphere and container
1 is not open to atmosphere if this feature is a manifold. Appeal Br. 10.
The Examiner has not established that Bonnet discloses that enclosure
1 is open to an atmosphere as claimed. Ans. 7; Final Act. 5. Enclosure 1 is
a fluid distributing container that connects fluid heat exchanger 10 to fluid
header 21 to distribute fluids in exchanger 10. Bonnet H 41, 57, 66. Bonnet
does not teach container 1 being open to the atmosphere to provide this fluid
connection, and the Examiner has not provided a basis for finding that this
feature is inherent. Thus, we do not sustain the rejection of claim 15.
Claim 26
The Examiner finds that Bonnet’s manifold 21 is sealed to a side of
enclosure (container 1) at welded joint 20 in Figure 3 that is opposite the
side of container 1 that is welded to core block (brazed matrix 2) at welded
joint 4 as recited in claim 26. Final Act. 6, see id. at 14; Ans. 7. Appellants’
argument that nothing in Bonnet or Mathias suggests this feature does not
apprise us of error in those findings of the Examiner. See Appeal Br. 10.
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Appeal 2016-001610
Application 13/039,303
The Examiner’s findings are supported by a preponderance of
evidence because Bonnet seals a manifold (fluid header 21) to a part of
solid-walled enclosure (structure or container 1 in Figure 3) at weld 20 that
is opposite to the part of container 1 that is welded to core block (brazed
matrix 2 heat exchanger 10) at welded joint 4 as shown in Figure 3 of
Bonnet. Indeed, Figure 3 of Bonnet teaches an arrangement corresponding
very closely to an embodiment that Appellants illustrate for claim 26 in their
Figure 2, reproduced above. Thus, we sustain the rejection of claim 26.
Claim 28
The Examiner finds that Figures 1 and 3 of Bonnet illustrate a unitary,
solid metal ring enclosure as recited in claim 28. Final Act. 7. This finding
is supported by a preponderance of evidence in that Bonnet discloses that
structure 1 is a container used to collect and distribute fluids in exchanger 10
and is illustrated in Figures 1 and 3 as a unitary, solid metal piece/ring that
conveys fluids from fluid header 21 to heat exchanger 10. Bonnet H 41,
57—58, 66. Figure 3’s cut away view does not detract from the teachings
that container 1 is an intermediate piece that connects fluid header 21 to heat
exchanger 10. Id. 1 66, Fig. 3. Appellants’ argument does not persuade us
that container 1, which is disclosed as a circular conduit for conveying fluid,
is not a “ring.” A prior art reference does not have to provide an ipsissimis
verbis disclosure of a feature. Thus, we sustain the rejection of claim 28.
Claims 24 and 25
Rejected Over Bonnet, Mathias, and Offer
Claims 24 and 25 require the side of the enclosure that connects to a
conduit to have a different composition and morphology than the weld
material that connects the other side of the enclosure to the core block.
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Appeal 2016-001610
Application 13/039,303
The Examiner relies on Offer to teach different filler materials in a
welding application and reasons that it would have been obvious to make the
connection to the conduit of Bonnet with a different composition than the
weld material that connects the structure to the core block by using different
metals/alloys depending on a desired application such as the strength,
longevity, and reactive properties of the welded bond. Final Act. 8; Ans. 9.
Appellants argue that Offer merely teaches using a mixture of alloys
in a weld and there is no motivation to combine Offer’s teachings with those
of Bonnet absent hindsight. Appeal Br. 11. This argument is not persuasive.
We agree with the Examiner that Figure 3 of Bonnet shows that the solid-
walled enclosure (intermediate workpiece/container 1) connects to stainless
steel header 21 at welded joint 21 with a different morphology than the weld
material (welded joint 4, buttering layers 5, 6, 7). Ans. 5. We also agree it
would have been obvious to make welded joint 21 of different materials and
morphology than welded joint 4 to satisfy the different requirements of the
connection of intermediate workpiece/container 1 to fluid header 21 than to
brazed matrix 2 of heat exchanger 10. Ans. 9. In this regard, Bonnet also
teaches the use of different compositions of weld material to avoid problems
of the prior art where phosphorous moves from brazed copper matrix into
welded joint 4 and makes these welded zones brittle and subject to leaks.
Bonnet || 7—35, 42-44, 60-66. Like Offer, Bonnet thus teaches the use of
different welding compositions to improve welds so a skilled artisan would
have been motivated to make the composition and morphology of weld joint
20 between stainless steel fluid header 21 and copper workpiece 1 different
that the weld between copper workpiece 1 and brazed copper matrix 2.
Thus, we sustain the rejection of claims 24 and 25.
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Appeal 2016-001610
Application 13/039,303
Claims 27, 29, and 30
Rejected Over Bonnet, Mathias, and Rose/Kato/Wang
Appellants argue that claims 27, 29, and 30 are patentable for the
same reasons as claim 14 from which they depend. See Appeal Br. 12. This
argument is not persuasive in view of our decision to sustain the rejection of
claim 14. Thus, we also sustain the rejections of claims 27, 29, and 30.
Claims 14—16
Rejected Over Mathias
The Examiner finds that Mathias discloses a microchannel apparatus
as recited in independent claim 14 except for the claimed aspect ratio. The
Examiner determines it would have been obvious to make the continuous
wall with an aspect ratio of at least 10:1 of height to thickness to make the
passage large enough to transfer fluids and as a discovery of an optimum
value of a result effective variable. Final Act. 10—11.
Appellants argue that claim 14 is patentable over Mathias for the same
reasons as claim 14 rejected over Bonnet and Mathias. Appeal Br. 12. In
this case, we agree with Appellants because the Examiner has not relied on
Bonnet’s teachings to use a variable-length intermediate workpiece 1 as a
solid-walled enclosure that is connected to a brazed matrix/heat exchanger.
We agree with the Examiner that Mathias has solid-walled structures
that enclose apertures of microchannels in Figures 8 and 9. Mathias, 18:40—
19:45. However, making these enclosures “large enough to transfer fluids
through the solid-walled enclosure” (Final Act. 11) does not render obvious
the claimed aspect ratio of 10:1. Nor does Mathias teach that the aspect ratio
of the solid-walled enclosure is a result effective variable as Bonnet does.
Thus, we do not sustain the rejection of claim 14 or its dependent
claims 15 and 16.
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Appeal 2016-001610
Application 13/039,303
Claims 17—19 and 24—30
Rejected Over Mathias and Bonnet/Offer/Rose/Kato/Wang
The Examiner relies on Bonnet, Offer, Rose, Kato, and Wang to teach
features of claims 17—19 and 24—30 that Mathias lacks rather than overcome
any deficiencies of Mathias discussed above as to claim 14 from which these
claims depend. The Examiner relies on Bonnet to teach features of claims
17—19 and 26 (Final Act. 11—14) and not to teach or suggest an aspect ratio
of at least 10:1 for modifying Mathias’s device. Thus, we do not sustain the
rejections of claims 17—19 and 24—30.
DECISION
We affirm the rejection of claims 17 and 18 for indefmiteness.
We affirm the rejections of claims 14, 16—19, and 24—30 under
35 U.S.C. § 103(a) as unpatentable over Bonnet and Mathias alone or in
combination with Rose, Kato, and Wang, and we reverse the rejection of
claim 15.
We reverse the rejections of claims 14—19 and 24—30 under 35 U.S.C.
§ 103(a) as unpatentable over Mathias alone or in combination with Bonnet,
Offer, Rose, Kato, and Wang.
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-IN-PART
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