Grist, Matthew et al.

Patent Trials and Appeals Board

Feb 4, 2020

14372098 - (D) (P.T.A.B. Feb. 4, 2020)

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.
14/372,098 07/14/2014 Matthew Grist BARKER-003PUS 7584
22494 7590 02/04/2020
DALY, CROWLEY, MOFFORD & DURKEE, LLP
SUITE 201B
ONE UNIVERSITY AVENUE
WESTWOOD, MA 02090
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW GRIST and DAVID PERKINS
____________

Appeal 2019-003469
Application 14/372,098
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4, 6–13, 17, 18, and 29–32.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as R.B. Radley &
Company Limited. Appeal Br. 2.
2 Claims 23–28 are withdrawn, and claims 5, 14–16, and 19–22 are
cancelled. Appeal Br. 17–22 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 30, 31, and 32 are independent. Claim 1, reproduced below,
is illustrative of the subject matter on appeal.
1. An air-cooled laboratory gas condenser for condensing
gasses and vapours, comprising:
an inner tube having an elongate length and a bore
extending therethrough between a first end region and a second
end region of the inner tube;
an outer tube having a bore therethrough and two ends,
the inner tube passing through the bore of the outer tube; and
a seal at each end of the outer tube, sealing the outer tube
to the inner tube at the first and second end regions so as to
define an annular elongate sealed space between the inner tube
and the outer tube extending along the elongate length of the
inner tube between the seals, wherein the sealed space is at least
partly filled or is adapted to be at least partly filled with a liquid
such that the liquid is in contact with both the inner tube and the
outer tube, wherein the outer tube is made from a metal material
and comprises a plurality of internal fins extending into the
sealed space between the inner tube and the outer tube and a
plurality of external fins extending outwardly from an outer
surface of the outer tube and wherein the inner tube is made
from glass.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kendall US 1,936,166 Nov. 21, 1933
Iida US 3,967,591 July 6, 1976
Matsuzaki US 4,194,560 Mar. 25, 1980
Dankowski US 4,345,644 Aug. 24, 1982
Kleisle US 4,740,981 Apr. 26, 1988
Mayo US 4,770,746 Sept. 13, 1988
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Allgäuer US 4,778,002 Oct. 18, 1988
Nitta US 5,735,342 Apr. 7, 1998
Lin US 7,487,824 B2 Feb. 10, 2009
Steadman GB 606284 Aug. 11, 1948

THE REJECTIONS3
I. Claims 1, 2, 6–8, 10, 13, 17, 29, and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Steadman, Iida, Kleisle, and Lin. Final
Act. 3–8.
II. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steadman, Iida, Kleisle, Lin, and Matsuzaki. Id. at
8–9.
III. Claims 9 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Steadman, Iida, Kleisle, Lin, and Nitta. Id. at 9–12.
IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Steadman, Iida, Kleisle, Lin, Allgäuer, and Dankowski. Id. at
13–14.
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Steadman, Iida, Kleisle, Lin, and Mayo. Id. at 14.
VI. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Steadman, Iida, Kleisle, Lin, Matsuzaki, and Kendall. Id. at 15–
16.

3 The Examiner withdrew a rejection of claim 31 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 3; see also Final Act. 3.
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VII. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Steadman, Iida, Kleisle, Lin, Kendall, Nitta, Allgäuer, and
Dankowski. Id. at 16–21.
OPINION
Rejection I
In contesting the rejection of claims 1, 2, 6–8, 10, 13, 17, 29, and 31,
Appellant presents arguments for independent claim 1 (see Appeal Br. 10–
13), and relies on the same arguments for independent claim 31 and
dependent claims 2, 6–8, 10, 13, 17, and 29 (see id. at 13). We select claim
1 as representative, and claims 2, 6–8, 10, 13, 17, 29, and 31 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Steadman teaches most of the limitations
recited in claim 1, including, in relevant part, a “sealed space between the
inner and outer tubes . . . at least partially filled with a fluid such that the
fluid is necessarily in contact with both the inner and outer tubes (Page 1,
lines 73–85).” Final Act. 4. The Examiner finds that Steadman does not
teach that the sealed space contains a liquid. Id. However, the Examiner
finds that Iida teaches a heat exchanger having “a gap between the inner and
outer tubular members (Figure 3: Region accommodating element ‘7’) [that]
is adapted to contain a liquid in contact with the inner tube and the outer
tube (Col. 3, lines 9–24, col. 4, lines 1–14, and Figure 3).” Id. at 5. The
Examiner determines that it would have been obvious to modify Steadman
to include a liquid in the sealed space, as taught by Iida, in order “to improve
heat transfer between first and second fluids via providing an intermediate
heat exchange liquid having good thermal conductivity.” Id.
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The Examiner also finds that Steadman does not teach “the outer tube
as comprising a metal material.” Final Act. 5. However, the Examiner finds
that Lin teaches an “outer tube [that] comprises metal material (Col. 3, lines
28–41), thereby imparting the outer tube with good thermal conductivity.”
Id. The Examiner determines that it would have been obvious to modify
Steadman to have a metal outer tube, as taught by Lin, in order “to improve
heat dissipation capacity of the outer tube by defining the outer tube of
thermally conductive metals.” Id.
The Examiner further finds that Steadman does not teach “the inner
tube as comprising a glass material.” Final Act. 5. However, the Examiner
finds that Kleisle teaches an “inner tube [that] comprises glass (Col. 5, lines
30–35), thereby defining a non-contaminating material.” Id. at 6; see also
id. (finding that Kleisle “expressly teaches combining a glass inner tube with
a metal outer tube (Col. 1, line 66 to col. 2, line 6, see also col. 6, lines 52–
64)”). The Examiner determines that it would have been obvious to modify
Steadman to have a glass inner tube, as taught by Kleisle, in order “to
prevent contamination of a medium passing within the inner tube by
constructing the inner tube using a non-reactive material.” Id.
Appellant argues that the Examiner’s rejection is in error because the
cited references are non-analogous art. Appeal Br. 10–13. For the reasons
that follow, we are unpersuaded by Appellant’s argument.
The established precedent of our reviewing court sets up a two-fold
test for determining whether art is analogous: “(1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
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the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Appellant argues that the “field of endeavor is providing an improved
air-cooled laboratory gas condenser” (Appeal Br. 11), and “[n]one of the
cited references is related to condensing gasses and vapours in an air-cooled
laboratory gas condenser” (id. at 12). In particular, Appellant asserts that
Steadman is directed to “a vehicle heater adapted to abstract
heat from an engine exhaust system.” See Steadman, pg. 1, 1.
14. . . .
[I]ida is directed to a “steam generator for a fast breeder
reactor.” See [I]ida, Abstract. . . .
Kleisle is directed to a “temperature controller unit for
use in a gas laser resonator.” See Kleisle, Abstract. . . .
Lastly, Lin is directed to a cooling device for an electric
component. See Lin, col. 1, ll. 5–8.
Id. at 11–12. Appellant maintains “[t]he condenser in the present application
is a reflux condenser which is used for making chemicals in a lab. The
condenser is not a general heat exchanger.” Id. at 12. This argument is
unavailing.
The “field of endeavor” prong of the analogous art test asks if the
structure and function of the prior art is such that it would be considered by a
person of ordinary skill in the art because of the similarity to the structure
and function of the claimed invention as disclosed in the application. Bigio,
381 F.3d at 1325–27. Regarding structure, the Examiner explains that “the
instant invention as well as each and every one of the cited references are
directed to the same type of heat exchanger (i.e. tube-in-tube heat
exchangers) that include an inner tube disposed within an outer tube, thereby
defining a space therebetween.” Ans. 8; see also id. at 6–8 (the Examiner
explaining the structural similarities between the claimed invention and the
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cited references). Regarding function, the Examiner explains that
“condensing a gas to a liquid necessitates the exchange of heat from one
medium to another medium.” Id. at 11; see also Spec. 1, ll. 1, 5–6 (titling
the invention as “laboratory condensers with passive heat exchange”
(capitalization omitted) and describing that condensing a gas to a liquid
involves “reducing the temperature of the gas below its boiling point”). In
this regard, Appellant does not contest the Examiner’s position. Given the
similarity in the structure and function of Appellant’s disclosed invention
and the cited references (i.e., each involving a tube-in-tube heat exchanger
structure that functions to transfer heat from one medium to another), we are
not persuaded by Appellant’s contention that the cited references and the
claimed invention are in different fields of endeavor. Although we
acknowledge that none of the cited references are explicitly described as a
condenser, we are not persuaded that such a distinction overcomes the
similarity of structure and function described above, especially where the
reference to “condenser” appears only in the preamble of the claims. See
Ans. 8–9. Consequently, Appellant does not apprise us of error in the
Examiner’s conclusion that Steadman, Iida, Kleisle, and Lin are analogous
art by virtue of satisfying the first prong of the analogous art test.
The references also satisfy the second prong of the analogous art test
because the references are reasonably pertinent to a problem faced by
Appellant. “A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
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Appellant argues that the problem with which the inventors were
concerned was “exchanging heat and condensing gasses and vapours in an
improved air-cooled laboratory gas condenser.” Appeal Br. 12 (emphasis
added). Appellant asserts that “the problems faced by the cited references
are a vehicle heater, a ste[a]m generator, a gas laser resonator, and an
electronic component.” Id. According to Appellant, “the Examiner failed to
show that the cited references . . . are reasonably pertinent to the entire
problem faced by the inventor.” Id. at 12–13. In response, the Examiner
takes the position that “the cited art in this case is indeed reasonably
pertinent to appellant’s problem of ‘condensing gasses and vapors’ since
condensing a gas to a liquid necessitates the exchange of heat from one
medium to another medium.” Ans. 10–11. The Examiner also explains that
any heat exchange structures used in applications involving
condensing a gas to a liquid would be instantly recognizable by
one having ordinary skill in the art as used in other heat
exchange applications such as those in which liquid is
vaporized to a gas, or applications involving only gas-gas heat
exchange, liquid-liquid heat exchange, or combinations thereof.
Id. at 11. In this regard, Appellant does not specifically address or
persuasively refute the Examiner’s position.
Although the cited references do not specifically disclose condensing
gasses and vapors, Appellant’s Specification describes that condensing
requires “reducing the temperature of the gas below its boiling point.”
Spec. 1, ll. 5–6. Appellant’s Specification also describes that,
by providing a liquid-filled sealed space, heat transfer from the
inner tube to the outer tube can be improved without the need
for directly mounting the outer tube on the inner tube; heat from
vapours passing through the bore of the inner tube can then be
removed through the inner tube, transferred to the outer tube
then radiated away.
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Id. at 2, ll. 23–27. In other words, the problem of condensing gas or vapor in
a condenser directly involves heat exchange to reduce the temperature of the
gas or vapor. Given that Steadman, Iida, Kleisle, and Lin involve heat
exchanger subject matter, these references logically would have commended
themselves to the inventor’s attention in considering Appellant’s asserted
problem of exchanging heat and condensing gas and vapor in an air-cooled
laboratory gas condenser. Clay, 966 F.2d at 659. Consequently, Appellant
does not apprise us of error in the Examiner’s conclusion that Steadman,
Iida, Kleisle, and Lin are analogous art by virtue of satisfying the second
prong of the analogous art test.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s conclusion of obviousness with respect to claim 1.
Accordingly, we sustain the rejection of claim 1, and claims 2, 6–8, 10, 13,
17, 29, and 31 falling therewith, under 35 U.S.C. § 103(a) as unpatentable
over Steadman, Iida, Kleisle, and Lin.

Rejections II–VII
In contesting the rejections of claims 3, 4, 9, 11, 12, 18, 30, and 32,
Appellant relies on the arguments presented for patentability of independent
claim 1. Appeal Br. 13. For the reasons discussed above, Appellant’s
arguments do not apprise us of error in the rejection of claim 1, and likewise
do not apprise us of error with respect to the rejections of claims 3, 4, 9, 11,
12, 18, 30, and 32. Accordingly, we sustain the rejections of claims 3, 4, 9,
11, 12, 18, 30, and 32 under 35 U.S.C. § 103(a).

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CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § References Affirmed Reversed
1, 2, 6–8,
10, 13, 17,
29, 31
103(a) Steadman, Iida, Kleisle,
Lin
1, 2, 6–8, 10,
13, 17, 29, 31

3, 4 103(a) Steadman, Iida, Kleisle,
Lin, Matsuzaki
3, 4
9, 30 103(a) Steadman, Iida, Kleisle,
Lin, Nitta
9, 30
11 103(a) Steadman, Iida, Kleisle,
Lin, Allgäuer,
Dankowski
11
12 103(a) Steadman, Iida, Kleisle,
Lin, Mayo
12
18 103(a) Steadman, Iida, Kleisle,
Lin, Matsuzaki, Kendall
18
32 103(a) Steadman, Iida, Kleisle,
Lin, Kendall, Nitta,
Allgäuer, Dankowski
32
Overall Outcome 1–4, 6–13, 17,
18, 29–32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED