Ex Parte Zimmer et al

Patent Trial and Appeal Board

Dec 7, 2016

12834547 (P.T.A.B. Dec. 7, 2016)

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.
P070075 (1718.105) 8698
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
12/834,547 07/12/2010
134338 7590 12/08/2016
Bell Nunnally & Martin LLP
3232 McKinney Avenue, Suite 1400
Dallas, TX 75204
Donald N. Zimmer
12/08/2016 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 DONALD N. ZIMMER, FLOYD E. CHERINGTON, and
RANDY D. SMITH
Appeal 2015-001186
Application 12/834,547
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Donald N. Zimmer et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Lennox Industries, Inc.
Br. 3.
Appeal 2015-001186
Application 12/834,547
SUMMARY OF INVENTION
Appellants’ claimed invention “is directed ... to a heat exchanger
assembly.” Spec. 11.2 Claim 1, reproduced below from page 13 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. A furnace heat exchanger assembly, comprising:
a first heat exchanger half including a first half of an
exhaust channel and an inner joint flange half at an end thereof;
and
a second heat exchanger half including a second half of
said exhaust channel and an outer joint flange half at an end
thereof having first and second capturing tabs, said first and
second heat exchanger halves being coupled together such that
said first and second capturing tabs substantially and
concentrically overlap said inner joint flange half to form a joint
flange.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Hoeffken US 4,649,894 Mar. 17, 1987
Waterman US 5,439,050 Aug. 8, 1995
Lengauer US 2003/0102115 A1 June 5, 2003
Zia US 7,096,933 B1 Aug. 29, 2006
2 We note that page 1 of the Specification contains two paragraphs
designated as paragraph number one. It is the second of such paragraphs to
which reference here is made.
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Application 12/834,547
REJECTIONS
Claims 1—4 and 15—18 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Zia and Waterman.3
Claims 5 and 19 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Zia, Waterman, and Lengauer.
Claims 6—11, 13, 14, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Zia, Waterman, and Hoeffken.
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Zia, Hoeffken, Waterman, and Lengauer.
ANALYSIS
Rejection Based on Zia and Waterman
Claims 1—4
The Examiner finds that Zia discloses a furnace heat exchanger
assembly substantially as claimed in independent claim 1, including, inter
alia, a first heat exchanger half and a second heat exchanger half having first
and second capturing tabs. Final Act. 2 (citing Zia, Figs. 3A, 4A). The
Examiner relies on Figure 3 A of Zia as disclosing a first capturing tab at the
upper end of the heat exchanger panel and a second capturing tab at the
lower end thereof. Ans. 8—9 (presenting an annotated copy of Zia’s Figure
3 A). The Examiner finds that Zia fails to disclose the “first and second heat
exchanger halves being coupled together such that said first and second
capturing tabs substantially and concentrically overlap said inner joint flange
3 Although the heading of this rejection does not include claims 4 and 18, we
find that this omission is a mere typographical error because the body of the
rejection addresses these claims.
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Application 12/834,547
half to form a joint flange,” but finds that Waterman discloses this feature.
Final Act. 2—3. The Examiner reasons that it would have been obvious to a
skilled artisan to modify Zia’s furnace heat exchanger in view of Waterman
“to provide a tighter more leak-proof closure for optimal heat exchanging
and to prevent combustion gas [from] leaking into the building.” Id. at 3.
Appellants traverse, arguing that “Zia fails to teach or suggest... the
first and second capturing tabs according to the present disclosure and that
the first and second heat exchanger tabs are coupled together such that said
first and second capturing tabs [of said second heat exchanger half]
substantially and concentrically overlap said inner joint flange half.” Br. 6
(brackets in original). We are not persuaded by these arguments.
Although the Examiner references Zia’s Figures 3A and 4A as
disclosing capturing tabs, the tabs are more clearly illustrated in Figure 5 as
top edge tab 41 and bottom edge tab 42, both being a part of clamshell side
38. Thus, Zia discloses first and second capturing tabs on the second heat
exchanger half, and Appellants’ arguments to the contrary are unpersuasive.
Appellants’ arguments regarding Zia’s failure to disclose “substantially and
concentrically overlap [ing tabs on] said inner joint flange half’ are
misplaced and unpersuasive because the Examiner relies on Waterman to
teach this claimed arrangement. See Final Act. 3.
Appellants also note that Waterman discloses forming its heat
exchanger from one continuous piece of metal with the two half sections
turned into face-to-face alignment about a bend line with the peripheral
edges “rolled together to form a joint 45,” and argue that, therefore,
Waterman “does not teach or suggest said first and second capturing tabs of
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Application 12/834,547
said second heat exchanger half’ or “substantial and concentric overlap of
the ends of one half section over the ends of the other half section.” Br. 6—7.
These arguments are unpersuasive because, as noted by the Examiner,
“[o]nly the teaching of the joint 45 was used in the rejection.” Ans. 11. In
other words, the Examiner’s rejection replaces each of Zia’s crimped top and
bottom edge tabs with Waterman’s rolled joint 45. Appellants’ arguments
fail to apprise us of error.
Finally, Appellants argue that “Waterman as applied . . . provides no
teaching or suggestion of a tighter, more leak-proof closure than is provided
by Zia” and that the rationale set forth by the Examiner for combining the
references “is not a rational underpinning given the relied upon teachings of
Waterman.” Br. 7—8. The Examiner answers:
Waterman’s joint has more overlap between the two heat
exchanger ends. Having more overlap provides more surface
area for a sealant, adhesive, and/or weld applied at the joint.
Waterman’s joint is also rolled up (unlike Zia’s). Having the
joint rolled up reduces the probability that the two halves
disengage even if a joint adhesive breaks. Moreover,
Waterman specifically states that this design provides a tight
and leakproof joint. [Waterman 4:15—19.] Zia makes no
mention of the joint being of a special design that is leakproof.
Ans. 11. Waterman discloses that “[t]he contacting peripheral edges of the
two sheet metal half-sections are rolled together to form a joint 45 which is
then closed by crimping to provide a tight, leakproof closure along the
contact edges.” Waterman 4:15—19.
The Examiner has the better position here, and we find that the
Examiner has satisfied the burden of showing “some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Appeal 2015-001186
Application 12/834,547
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Moreover,
Appellants’ argument is at odds with the Court’s explicit guidance in KSR
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”). KSR,
550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 50—51 (1966)).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as being unpatentable over Zia and Waterman.
Appellants do not make any other substantive argument regarding the
rejection of dependent claims 2-4. See Br. 8. Therefore, we likewise
sustain the rejection of dependent claims 2—A.
Claims 15—18
Independent claim 15 recites a method of forming a furnace heat
exchanger assembly, and requires providing and joining first and second
heat exchanger halves substantially as required by claim 1. Br. 15—16
(Claims App.). The Examiner rejects claim 15 and Appellants present
arguments substantially as set forth above with respect to claim 1. See Final
Act. 3—A\ see also Br. 9—12.
Accordingly, for the same reasons as set forth above with respect to
claim 1, we sustain the rejection of claim 15 as being unpatentable over Zia
and Waterman. Appellants do not make any other substantive argument
regarding the rejection of dependent claims 16—18. See Br. 12. Therefore,
we likewise sustain the rejection of dependent claims 16—18.
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Rejection Based on Zia, Waterman, and Lengauer
Appellants have not addressed the obviousness rejection of claims 5
and 19 over Zia, Waterman, and Lengauer. See Br. 4—12. Accordingly,
Appellants have waived any argument of error, and we summarily sustain
the rejection of these claims. See Hyatt v, Dndas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) (explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
Rejection Based on Zia, Waterman, and Hoeffken
Claims 6 and 7
Claims 6 and 7 depend from claim 1. Br. 13—14 (Claims App.).
Appellants rely only on the arguments discussed above regarding claim 1.
Id. at 8. Therefore, we sustain the rejection of dependent claims 6 and 7 for
the same reasons as presented above with respect to claim 1.
Claims 8—11, 13, and 14
Independent claim 8 recites a furnace comprising a heat exchanger
substantially as required by claim 1. Br. 14 (Claims App.). The Examiner
makes similar findings and reasoning regarding Zia and Waterman as with
claim 1, and Appellants expressly rely on arguments advanced with respect
to claim 1. See Final Act. 6; see also Br. 8—9.
Accordingly, for the same reasons as set forth above with respect to
claim 1, we sustain the rejection of claim 8 as being unpatentable over Zia,
Waterman, and Hoeffken. Appellants do not make any other substantive
argument regarding the rejection of dependent claims 9—11, 13, and 14. See
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id. at 9. Therefore, we likewise sustain the rejection of dependent claims 9—
11, 13, and 14.
Claim 20
Claim 20 depends from claim 15. Br. 16 (Claims App.). Appellants
rely only on the arguments discussed above regarding claim 15. Id. at 12.
Therefore, we sustain the rejection of dependent claim 20 for the same
reasons as presented above with respect to claim 15.
Rejection Based on Zia, Waterman, Hoeffken, and Lengauer
Appellants have not addressed the obviousness rejection of claim 12
over Zia, Waterman, Hoeffken, and Lengauer. See Br. 4—12. Accordingly,
Appellants have waived any argument of error, and we summarily sustain
the rejection of this claim.
DECISION
The Examiner’s decision to reject claims 1—20 is affirmed.
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
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