14230798 - (D) (P.T.A.B. Oct. 30, 2020)

HAMILTON SUNDSTRAND CORPORATION

Patent Trials and Appeals BoardOct 30, 2020

14230798 - (D) (P.T.A.B. Oct. 30, 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. 14/230,798 03/31/2014 Anthony DeLugan 74532US01 (U310479US) 9269 87521 7590 10/30/2020 Cantor Colburn LLP - Hamilton Sundstrand 20 Church Street, 22nd Floor Hartford, CT 06103 EXAMINER ARANT, HARRY E ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 10/30/2020 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 following e-mail address(es): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY DELUGAN and DIANA SHIROMA Appeal 2019-005982 Application 14/230,798 Technology Center 3700 Before DANIEL S. SONG, STEFAN STAICOVICI, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9–15. See Final Act. 1 (indicating that claims 9–15 stand rejected); see also Appeal Br. 3 n.1 (appealing the rejected claims). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a new ground of rejection. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hamilton Sundstrand Corporation. Appeal Br. 2. Appeal 2019-005982 Application 14/230,798 2 CLAIMED SUBJECT MATTER The “invention relates, generally, to environmental-control systems . . . for an aircraft and, more specifically, to an air-conditioning system.” Spec. ¶ 1 (Background of Invention). Claim 9 is the sole independent claim. Appeal Br. 15–17 (Claims App.). We reproduce claim 9, below, with emphases added to two limitations addressed in this decision: 9. A heat exchanger, which is a dual air heat exchanger for an aircraft, comprising: a front side and a top side, the f[r]ont surface facing a first direction and being a ram air inlet for receiving ram air flowing in the first direction, the top surface being an outlet of a primary heat exchanger disposed within the heat exchanger, wherein the top surface faces a second direction that is perpendicular to the first direction, an outlet header disposed against the top surface of the heat exchanger and covering a portion of the top surface of the heat exchanger, the outlet header receiving air from the outlet of the primary heat exchanger, outlet header including: a unitary body including a front side disposed proximate the front side of the heat exchanger, an opposing rear side disposed distal the front side of the heat exchanger, a first side wall and an opposing second side wall, wherein a bottom of the unitary body is rectangular and forms an exterior boarder of a first opening for the outlet header, the first opening facing the outlet of the primary heat exchanger, wherein a first corner of the outlet header that is proximate the front side of the heat exchanger is disposed at a cold-cold corner of the heat exchanger, and wherein the exterior boarder of the outlet header is at least partially flanged to for connecting with the top surface of the heat exchanger, and Appeal 2019-005982 Application 14/230,798 3 the unitary body having three openings, wherein the three openings are mutually perpendicular and progressively smaller, including the first opening, a second opening that is smaller than the first opening, and a third opening that is smaller than the second opening, wherein the second opening and the third opening are circular, the second opening being an orifice of a primary conduit extending in the first direction from the rear wall of the unitary body, wherein the first opening directs cooled air from the primary hot circuit within the heat exchanger through the second opening to exterior components of an air-conditioning system, and the third opening being an orifice of a first leg of an L-tube extending into the first side wall of the unitary body proximate the cold-cold corner of the heat exchanger, wherein a second leg of the L-tube extends downwardly toward the bottom of the unitary body to capture cool air from the cold-cold corner and to direct the cool air to out of the primary heat exchanger through a flow-tap-off duct fluidly connected to the first leg of the L-tube. Appeal Br. 15–16 (Claims App., emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Shoemaker US 2,686,685 Aug. 17, 1954 Ridgway US 3,681,200 Aug. 1, 1972 Meagher US 3,909,045 Sept. 30, 1975 Chigira US 5,209,290 May 11, 1993 Lamich US 2002/0138981 A1 Oct. 3, 2002 Kouno US 2014/0305158 A1 Oct. 16, 2014 Appeal 2019-005982 Application 14/230,798 4 REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 9–15 112(b) Indefinite 9–11, 15 103 Ridgway, Lamich, Kouno, Chigira 12, 13 103 Ridgway, Lamich, Kouno, Chigira, Shoemaker 14 103 Ridgway, Lamich, Kouno, Chigira, Meagher Final Act. 4–16. OPINION I. Claims 5 and 8 The Examiner indicates that claims 5 and 8 have been canceled. See Final Act. 1 (Disposition of Claims). Appellant, on the other hand, indicates that these claims remain pending. See, e.g., Appeal Br. 2 (treating claims 5 and 8 as still pending); see also id. at 15 (Claims App.); see also id. at 3 n.1 (“Claims 5 and 8 are not expressly rejected in the Application. However, Appellant will account for these claims in this document if they stand rejected”). Upon reviewing the prosecution record, including Appellant’s amendment dated April 11, 2018, and for the purpose of this appeal, we understand that claims 5 and 8 have not been cancelled. As such, we treat these claims as pending. II. Rejection of Claims 9–15 as Indefinite The Examiner rejects claims 9–15 as indefinite. Final Act. 3–4. In particular, the Examiner rejects independent claim 9 as indefinite for reciting Appeal 2019-005982 Application 14/230,798 5 two terms that lack antecedent basis, and rejects claims 10–15 based on their dependency to claim 9. See id. at 4. Appellant does not contest the rejection. See generally Appeal Br. In the absence of any argument, we summarily affirm the indefiniteness rejection of claims 9–15. III. Rejection of Claims 5 and 8 as Indefinite Claims 5 and 8 depend from claim 9 and inherit the indefiniteness infirmity discussed above. See Appeal Br. 4, 5 (Claims App.). Although Appellant treats these claims as rejected (see id. at 3 n.1), Appellant does not present any argument contesting the indefiniteness rejection (see generally id.). For the same reason that we affirm the indefiniteness rejection of claims 9–15, we enter a new ground of rejection under 37 C.F.R. § 41.50(b) and reject claims 5 and 8 as being indefinite under 35 U.S.C. § 112(b). IV. Prior Art Rejection of Claims 9–15 In rejecting independent claim 9, the Examiner relies on Ridgway for disclosing a heat exchanger comprising the majority of the claimed elements, and submits an annotated version of Ridgway’s Figure 1 to illustrate these findings. Final Act. 5–7. We reproduce Ridgway’s Figure 1, below: Appeal 2019-005982 Application 14/230,798 6 Figure 1 depicts a shell-and-tube fermentor. Ridgway, 2:41–42. The fermentor comprises cylindrical shell 11 having a lower liquid inlet line 12 and upper liquid outlet line 13 to accommodate the flow of coolant through Appeal 2019-005982 Application 14/230,798 7 the shell. Id. at 2:46–50. Circular tube-sheet plates 14, 15 are provided to receive ends of cylindrical tubes 16, 16a that extend through the length of shell 11. Id. at 2:50–55. The bottom end of shell 11 is sealed to a hemispherical bottom section 17, fitted with fermentation broth outlet line 18 and air inlet line 19. Id. at 2:61–63. Air inlet line 19 comprises air spargers 20, 20a that direct air flow upwardly to aerate the fermented broth and to urge the flow of broth upward in tubes 16 and downward in tubes 16a, as shown by the arrows. Id. at 2:63–70. The Examiner submits an annotated version of Ridgway’s Figure 1 to show how Ridgway’s fermentor satisfies the majority of the limitations of claim 9 (Final Act. 5–7), a copy of which we reproduce, below: Appeal 2019-005982 Application 14/230,798 8 Id. at 7. The Examiner finds that Ridgway’s Figure 1 discloses, inter alia, “outlet header” 21, 22, 23 disposed against the top side of a heat exchanger and capable of receiving air from the outlet of the heat exchanger. Id. at 5. In referencing the annotated Figure, the Examiner further finds that Ridgway’s “outlet header” includes: a unitary body including a front side disposed proximate the front side of the heat exchanger . . . , an opposing rear side disposed distal the front side of the heat exchanger . . . , a first side wall and an opposing second side wall (between the front side and rear side), wherein a bottom of the unitary body forms Appeal 2019-005982 Application 14/230,798 9 an exterior boarder of a first opening for the outlet header . . . , the first opening facing the outlet of the primary heat exchanger, wherein a first corner of the outlet header that is proximate the front side of the heat exchanger is disposed at a cold-cold corner of the heat exchanger. Id. (emphasis added). The Examiner acknowledges, however, that “Ridgway does not explicitly disclose wherein the unitary body is rectangular and wherein the exterior boarder of the outer header is at least partially flanged for connecting with the top side of the heat exchanger.” Id. at 8 (emphasis added). To address this limitation, the Examiner relies on Lamich and submits an annotated version of Lamich’s Figure 2, which we reproduce, below: Appeal 2019-005982 Application 14/230,798 10 Figure 2 depicts a section view of a heat exchanger. Lamich ¶¶ 15, 16. In proposing to modify Ridgway based on Lamich’s teachings, the Examiner reasons that [F]langes are old and well known in the art of heat exchanger in order to improve manufacturing cost. For Example, Lamich discloses an outlet header for a heat exchanger wherein an outlet header flange (see annotated fig 2 [above]) connects the outlet header to a heat exchanger. It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention for Ridgway to provide the flange in Appeal 2019-005982 Application 14/230,798 11 order to seal the outlet header to the heat exchanger in order to reduce manufacturing complexity by allowing the heat exchanger and outlet header to be manufactured separately. This would result in the second leg being directed through the flange. Final Act. 8 (emphasis added). In contesting the rejection, Appellant argues, inter alia, that Ridgway’s outlet header is not rectangular and has no “cold-cold corner” as recited in claim 9. See Appeal Br. 11–12. In the Answer, the Examiner points to paragraph 26 of the Specification as providing a lexicographic definition of “cold-cold corner.” See Ans. 17. The Examiner’s definition of “cold-cold corner” references Figure 2 of the Specification, which we reproduce, below: Appeal 2019-005982 Application 14/230,798 12 Figure 2 of the Specification depicts a perspective bottom view of an outlet header. Spec. ¶ 12. The Specification provides the following definition of “cold-cold corner”: [T]he cold-cold corner is defined by a volume of an interior of the primary heat exchanger 12 that is located most closely to the cool-air source/ram air 38 upon entrance of the ram air 38 into the primary heat exchanger 12 and opposite a source of hot-air flow upon entrance of the bleed air 40 into the primary heat exchanger 12. Spec. ¶ 26 (emphasis added); see also id. at Fig. 1 (showing the interrelationship of primary heat exchanger 12 and outlet header 20). In the Appeal 2019-005982 Application 14/230,798 13 Answer, the Examiner further explains, “it would [not be] unreasonable to replace coolant liquid of Ridgway with a cooled air flow, which would inherently exchange heat with the air introduced via spargers 20 to some degree.” Ans. 16. For at least two reasons, we do not sustain the Examiner’s rejection. First, claim 9 explicitly requires the outlet header to include a unitary body with a rectangular bottom. See Appeal Br. 16 (Claims App.) (“outlet header including: a unitary body . . . wherein a bottom of the unitary body is rectangular”). Although the Examiner acknowledges that Ridgway does not disclose an “outlet header” with a rectangular bottom (see Final Act. 8), the Examiner does not provide sufficient reasoning for modifying Ridgway’s hemispherical “outlet header” to include a rectangular bottom (see id.). The proposed modification would presumably change the shape of Ridgway’s fermentor from being cylindrical to having a rectangular cross section. Additionally, the Examiner’s reason for modifying Ridgway’s hemispherical “outlet header,” based on Lamich’s teachings, is to “reduce manufacturing complexity by allowing the heat exchanger and outlet header to be manufactured separately” (Final Act. 8), yet we do not see how this reasoning pertains to an outlet header with a rectangular bottom. In other words, we are not persuaded that replacing Ridgway’s hemispherical outlet header with one that has a rectangular bottom would reduce manufacturing complexity. Nothing in the record supports such a reasoning for the modification. Second, the Examiner points to the upper-right corner of Ridgway’s “heat exchanger” as being the location of the “cold-cold corner.” See Final Act. 7 (submitting Ridgway’s annotated Figure 2, reproduced supra). This Appeal 2019-005982 Application 14/230,798 14 “cold-cold” location, however, is near the effluent of Ridgway’s coolant loop, namely, outlet line 13. Even if we assume arguendo that “it would [not be] unreasonable to replace coolant liquid of Ridgway with a cooled air flow” (Ans. 16), the cooled air exiting outlet line 13 would be at a higher temperature than the temperature of the air entering inlet line 12. See Ridgway, Fig. 2; see also id. at 2:48–50. As a result, the Examiner’s “cold- cold corner” is at best a “cold-hot corner” and does not satisfy the claim limitation, under the Examiner’s own definition of the term. See Ans. 17 (citing Spec. ¶ 26). Namely, the Specification defines “cold-cold corner” in relevant part as being “located most closely to the cool-air source/ram air 38 upon entrance of the ram air 38 into the primary heat exchanger 12.” Spec. ¶ 26. As the Examiner’s “cold-cold corner” is located near outlet line 13, rather than inlet line 12, we do not agree with the Examiner’s position that Ridgway satisfies the claimed limitation. For the above two reasons, we do not sustain the Examiner’s prior art rejection of claim 9, or of claims 10–15, which stand rejected based on the same flawed analysis. See Final Act. 12–16. CONCLUSION We affirm the Examiner’s rejection of claims 9–15 as being indefinite. We enter a new ground of rejection of claims 5 and 8 as being indefinite. We reverse the Examiner’s rejection of claims 9–15 based on the prior art. Appeal 2019-005982 Application 14/230,798 15 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed New Ground 9–15 112(b) Indefinite 9–15 5, 8 112(b) Indefinite 5, 8 9–11, 15 103(a) Ridgway, Lamich, Kouno, Chigira 9–11, 15 12, 13 103(a) Ridgway, Lamich, Kouno, Chigira, Shoemaker 12, 13 14 103(a) Ridgway, Lamich, Kouno, Chigira, Meagher 14 Overall Outcome 9–15 5, 8 TIME PERIOD FOR RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2019-005982 Application 14/230,798 16 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b)