Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Sep 23, 2020

2019006888 (P.T.A.B. Sep. 23, 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.
14/996,043 01/14/2016 Jesse Joseph Stieber 92458US01 (U310720US) 1566
87521 7590 09/23/2020
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
GREENE, MARK L
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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 JESSE JOSEPH STIEBER
Appeal 2019-006888
Application 14/996,043
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1 and 3–5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the “invention generally relate[s] to heat
exchangers.” Spec. ¶ 2. Independent claim 1 is the sole independent claim

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “HAMILTON SUNDSTRAND
CORPORATION” as the real party in interest. Appeal Br. 1.
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Application 14/996,043

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on appeal. Below, we reproduce claim 1 as representative of the appealed
claims.
1. A crossflow heat exchanger comprising:
an outer housing;
an inlet that receives a hot fluid to be cooled on a first
side of the outer housing;
a monolithic manifold includes a central receiving
reservoir that is coupled to the inlet and one or more outer
reservoirs, the hot fluid received at the inlet passes into the
central receiving reservoir;
an outlet on an opposite side of the outer housing
connected to the one or more outer reservoirs;
tubes disposed within the outer housing that connect the
central receiving reservoir and the one or more outer reservoirs;
end caps disposed at opposing ends of the monolithic
manifold; and
wherein the monolithic manifold includes a gap formed
between the central receiving reservoir and the one or more
outer reservoirs and the end caps establish the gap.2
REJECTION AND PRIOR ART
The Examiner rejects claims 1 and 3–5 under 35 U.S.C. § 103 as
unpatentable over Wilcox et al. (US 6,918,598 B2, issued July 19, 2005)
(“Wilcox”) and Hagnauer (US 3,734,176, issued May 22, 1973).
ANALYSIS
Briefly, we discuss portions of the application’s prosecution history,
to discern a proper understanding of claim 1’s last recitation. On June 15,
2018, Appellant filed a Request for Continued Examination, as a result of

2 As discussed in detail below, Appellant erroneously indicates, in the
Appeal Brief, that claim 1 recites that “the end caps define the gap.” See
Appeal Br., Claims App. (Claim 1) (emphasis added).
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which the Examiner entered Appellant’s Amendment filed on April 6, 2018.
By this Amendment, claim 1 recites, in relevant part, that “the monolithic
manifold includes a gap formed between the central receiving reservoir and
the one or more outer reservoirs and the end caps establish the gap,” as we
set forth above. Amendment (filed April 6, 2018), 2 (emphasis added).
After subsequent prosecution, on January 23, 2019, the Examiner issued a
Final Office Action. It was not until after the Final Office Action that
Appellant proposed to amend the above claim recitation to state that “the
monolithic manifold includes a gap formed between the central receiving
reservoir and the one or more outer reservoirs and the end caps define the
gap.”3 The Examiner denied entry of this amendment to claim 1, and
indicated that even “[f]or purposes of appeal, the proposed amendment . . .
will not be entered.” Advisory Action (mailed April 15, 2019), 1.
Accordingly, claim 1, as appealed, recites that the end caps establish, rather
than define, the gap formed between the central receiving reservoir and the
one or more outer reservoirs.
The Examiner relies on Wilcox’s Figure 1 to disclose end caps that
establish a gap between a central receiving reservoir and outer reservoirs.
Final Action 3, 5. Here, the Examiner adequately supports the finding that
Wilcox discloses the end caps establishing the gap, as claimed.
Nonetheless, in the Appeal Brief’s Claims Appendix, Appellant
erroneously states that the claim recites that “the monolithic manifold
includes a gap formed between the central receiving reservoir and the one or
more outer reservoirs and the end caps define the gap.” Appeal Br., Claims

3 Response to Final Office Action (filed Mar. 22, 2019), 2 (emphasis
added).
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App. Further, throughout the Appeal Brief, Appellant’s arguments are
directed to why, “in Wilcox . . . [n]one of these alleged gaps are defined by
the endcaps as required in the claim.” Appeal Br. 3 (emphasis added); see
also id. at 3–4. Nowhere in the Appeal Brief does Appellant argue that
Wilcox fails to disclose end caps that establish the gap, as claimed. Thus, in
the Appeal Brief, Appellant does not persuade us that the Examiner errs in
determining that Wilcox discloses ends caps that establish the gap between
the central receiving reservoir and the outer reservoirs. Consequently, we
cannot do anything other than sustain the rejection.
In the Reply Brief, Appellant addresses the actual claim language, and
argues that the Examiner’s construction of “establish,” relying on a
dictionary definition, is in error, and should be construed according to a
different dictionary definition. Reply Br. 1–3. As Appellant raises this
argument for the first time in the Reply Brief, the argument is untimely, and
Appellant waives the argument. See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner’s rejections, but were not.”). The Examiner
advances the construction of “establish” as “to bring into existence” in the
Final Action, and Appellant does not address this construction in the Appeal
Brief. See Final Action 3.
For the above reasons, we sustain the Examiner’s obviousness
rejection of independent claim 1 and its dependent claims 3–5.
CONCLUSION
We AFFIRM the Examiner’s obviousness rejection of all claims.
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In summary:
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 3–5 103 Wilcox, Hagnauer 1, 3–5
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