Luvata Espoo Oy

Patent Trials and Appeals Board

Oct 13, 2021

2020004914 (P.T.A.B. Oct. 13, 2021)

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.
15/248,399 08/26/2016 M. Parker Finney 021083.00147 2880
26712 7590 10/13/2021
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
HEVEY, JOHN A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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):
ipdocketing@hodgsonruss.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte M. PARKER FINNEY, LARZ IGNBERG,
CLAES ANDERS KAMF, TIMOTHY L. GOEBEL,
YING GONG, and EDWARD G. ROTTMANN
____________

Appeal 2020-004914
Application 15/248,399
Technology Center 1700
____________

Before JAMES C. HOUSEL, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 4–8, and 11–16.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Virtus Precision Tube, LLC as the real party in interest.
Appeal Brief filed December 26, 2019 (“Appeal Br.”), at 2.
2 Final Office Action entered February 25, 2019 (“Final Act.”), at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a copper alloy for use in a heat exchanger
(independent claim 1) and an ACR tube for use in a heat exchanger
(independent claim 8). Appeal Br. 2. Claim 1 illustrates the subject matter
on appeal, and reads as follows:
1. A copper alloy for use in a heat exchanger, comprising:
a) nickel at 0.5% by weight; and
b) tin at 0.5% by weight,
wherein the remainder of the alloy is copper and impurities.

Appeal Br. 14 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered April 16, 2020 (“Ans.”):
I. claims 1, 4, 5, 8, 11, 12, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Ozaki;3
II. Claims 6, 7, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Ozaki in view of Sugawara;4
III. Claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a) as
unpatentable over Sugawara; and
IV. Claims 1, 4–8, and 11–14 under 35 U.S.C. § 103(a) as
unpatentable over Oishi.5

3 JP 06-094390 A (published April 5, 1994) (as translated).
4 JP 3243479 B2 (issued January 7, 2002) (as translated).
5 JP 10-130754 A (published May 19, 1998) (as translated).
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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a) for reasons set forth in
the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv) (2018); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claims 1 and 8
only, to which we accordingly limit our discussion. Appeal Br. 3–13; 37
C.F.R. § 41.37(c)(1)(iv).
Appellant does not directly challenge the Examiner’s finding that the
primary references applied in the three separate rejections of clams 1 and 8
each disclose a copper alloy containing nickel and tin in amounts
encompassing 0.5% by weight, as recited in claims 1 and 8. Compare Final
Act. 2–5, with Appeal Br. 3–13. Rather, Appellant argues that the
Declaration of co-inventor Edward Rottmann filed February 26, 2018
“connects [a] commercially successful product, UNILLOY® ACR tubes, to
the claimed alloy and claimed ACR tubes made from the claimed alloy,” and
establishes a nexus between the commercial success of UNILLOY® ACR
tubes and the nickel and tin content “of the claimed alloy and claimed ACR
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tubes.” Appeal Br. 4, 8 (citing Rottmann Dec. ¶¶ 6–17). Appellant argues
that “[t]he commercial success is shown, inter alia, by significant sales in a
relevant market—the claimed ACR tubes account for 18% of the total U.S.
market for enhanced ACR tubes.” Appeal Br. 5 (citing Rottmann Dec.
¶ 13).
Appellant also argues that the “Rottmann Declaration states [that] the
claimed copper alloy provides ACR tubes with increased strength and this
strength is the nexus to the commercial success, . . . based on customer
discussions [indicating] that adoption of the claimed ACR tubes is due to
increased strength of a given tube weight/diameter compared to copper
tubes.” Appeal Br. 5 (citing Rottmann Dec. ¶¶ 6–17). Appellant argues that
“[t]he instant specification establishes that an alloy composition comprising
copper, zinc, and tin in the claimed amounts provides ACR tubes with
increased strength relative to standard copper ACR tubes.” Appeal Br. 5
(citing Spec. 7, l. 30–8, l. 22; Fig. 2).
Appellant further argues that the Rottmann Declaration states that
“sales of the UNILLOY® ACR tubes resulted from existing customers
converting from standard copper ACR tube products to claimed ACR tubes,”
and such customers were “willing to pay a higher price per pound for
claimed ACR tubes.” Appeal Br. 6 (citing Rottmann Dec. ¶ 14). Appellant
argues that the sales did “not result from increased marketing or
advertising.” Appeal Br. 6 (citing Rottmann Dec. ¶ 15).
Appellant, however, does not provide sufficient evidence to establish
that sales of UNILLOY® ACR tubes resulted from features of the copper
alloy of claim 1 and the ACR tube of claim 8, or to establish that the copper
alloy of claim 1 and ACR tube of claim 8 were actually commercially
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successful, for reasons that follow.
Commercial success “is relevant in the obviousness context only if
there is proof that the sales were a direct result of the unique characteristics
of the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter. . . . In other
words, a nexus is required between the sales and the merits of the claimed
invention.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citing Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985)).
We point out initially that neither Appellant nor the Declarant
specifies the composition of the alloy used to produce UNILLOY® ACR
tubes, contrary to Appellant’s argument that “the Rottmann Declaration
details the composition of the commercial alloy (the alloy used to make
UNILLOY® ACR tubes) stated to have commercial success.” Appeal Br.
12; see also Reply Br. 2–3, 5. Rather, the Declarant repeatedly refers to “the
claimed alloy” and “ACR tubes made from the claimed alloy,” without
indicating the actual composition of “the claimed alloy,” or identifying a
particular claim that recites “the claimed alloy” or “ACR tubes made from
the claimed alloy.” Rottmann Dec. ¶¶ 7, 9–14, 16, 17. Absent objective
evidence specifying the composition of the alloy used to produce
UNILLOY® ACR tubes, it is not possible to determine with certainty
whether the alloy falls within the scope of claim 1, or whether UNILLOY®
ACR tubes fall within the scope of claim 8. The only evidence on the record
before us indicating that this is the case are the statements provided in the
Rottmann Declaration, which are not corroborated by objective evidence, as
discussed more fully below.
As to the required nexus between sales of UNILLOY® ACR tubes and
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the merits of the alloy of claim 1 and the ACR tube of claim 8, although the
Rottmann Declaration indicates that “[t]he claimed copper alloy provides
ACR tubes having increased strength compared to pure copper ACR tubes”
(¶ 6), and Appellant argues that such increased strength “is the nexus to the
commercial success” (Appeal Br. 5), at no point does the Declarant indicate
that the asserted increased strength is due to the presence of nickel and tin in
the alloy used to produce UNILLOY® tubes in the amounts recited in claims
1 and 8. Therefore, based on the information provided in the Declaration, it
is impossible to determine whether the asserted increased strength of “the
claimed copper alloy” and “ACR tubes made from the claimed alloy” is due
to features of the alloy of claim 1 and the ACR tube of claim 8.
Nonetheless, as discussed above, Appellant argues that experiments
described in the Specification demonstrate that an alloy including copper,
nickel, and tin “in the claimed amounts provides ACR tubes with increased
strength relative to standard copper ACR tubes.” Appeal Br. 5. All of the
tested alloys, however, included phosphorus, which could have contributed
to or affected the tensile strength of the tested alloys. Spec. ¶¶ 39–40, Table
1. Appellant counters that “no reasonable conclusion as to the effect of
phosphorus on alloy strength can be drawn based on the data in Table I—let
alone that phosphorus is solely responsible for the increased strength of the
claimed alloys” (Appeal Br. 8). On the record before us, however,
Appellant does not provide any evidence establishing that the asserted
increased strength of UNILLOY® ACR tubes is due to the presence of nickel
and tin in the amounts recited in claims 1 and 8 in the alloy used to produce
the tubes. Appellant further argues that “[e]ven if phosphorus is present at a
claimed amount in a UNILLOY® ACR tube, this does not diminish or
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obviate the established nexus between the commercial success of the
UNILLOY® ACR tubes and the claimed nickel and tin content of the
claimed alloy.” Appeal Br. 8. As discussed above, however, the Rottmann
Declaration at no point indicates that the increased strength of UNILLOY®
ACR tubes is due to the presence of nickel and tin in the amounts recited in
claims 1 and 8 in the alloy used to produce the UNILLOY® ACR tubes.
As to Appellant’s argument (discussed above) that the increased
strength imparted by the claimed copper alloy to ACR tubes “is the nexus to
the commercial success” because customers adopted ACR tubes made from
the claimed alloy “due to increased strength of a given tube weight/diameter
compared to copper tubes,” the Rottmann Declaration paints a more
complete picture of reasons for sales of UNILLOY® ACR tubes.
More specifically, the Declaration states that “sales of the claimed
ACR tubes resulted from existing customers converting to the claimed ACR
tubes from LTNA’s[6] standard copper ACR tube products.” Rottmann Dec.
¶ 14. The Declaration states that “[b]ased on our discussions with our
customers, adoption of the claimed ACR tubes” was due to “increased
strength for a given tube weight/diameter compared to copper tube.”
Rottmann Dec. ¶ 16. The Declaration further explains that “[b]ased on the
increased strength of the claimed ACR tubes our customers have been
willing to pay a higher price per pound, while realizing a decreased overall
cost per foot, for the claimed ACR tube compared to standard copper ACR
tube.” Rottmann Dec. ¶ 17 (emphasis added). The Declaration goes on to
state that “the commercial success of the claimed ACR tubes is attributable

6 Luvata Tubes North America, Mr. Rottman’s employer. Rottmann Dec.
¶ 1.
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to the increased strength of the claimed ACR tubes compared to standard
copper ACR tube, which results in increased economic performance (e.g.
use of a thinner walled tube with equal burst pressure and resulting
decreased cost per foot).” Rottmann Dec. ¶ 17 (emphasis added).
The Rottmann Declaration thus indicates that LTNA’s existing
customers switched from standard copper ACR tubes to UNILLOY® ACR
tubes due to the economic advantage of decreased cost per foot resulting
from increased strength, but the Declaration does not indicate how many
existing customers switched.7
Furthermore, existing customers could have switched from standard
copper ACR tubes to UNILLOY® ACR tubes, for example, due to lower cost
coupled with further economic efficiencies gained from continuing to do
business with a supplier with which the customers had a pre-existing
relationship, or the customers could have switched due to pre-existing
contractual obligations or even because of customer loyalty. Applied
Materials, 692 F.3d at 1299–1300 (“There must be ‘proof that the sales were
a direct result of the unique characteristics of the claimed invention—as
opposed to other economic and commercial factors unrelated to the quality
of the patented subject matter.’”) (quoting Huang, 100 F.3d at 140 ); see
also Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294,
1304 (Fed. Cir. 2010) (“The commercial success of a product is relevant to
the non-obviousness of a claim only insofar as the success of the product is
due to the claimed invention.”).

7 We note that the Declaration discusses only the activity of existing
customers and provides no information about non-existing customers
switching from standard ACR tubes to UNILLOY® ACR tubes.
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As discussed above, Appellant also argues that the UNILLOY® ACR
tubes’ commercial success is based on “significant sales in a relevant
market.” Appeal Br. 5. And the Rottmann Declaration indicates that “the
claimed ACR tubes account for 18% of the [total] U.S. market for enhanced
ACR tubes.” Rottmann Dec. ¶ 13 (emphasis added).
Neither Appellant nor the Declarant, however, provide any
information as to how the U.S. market for “enhanced” ACR tubes differs
from the market for “standard” ACR tubes. Nor do Appellant or the
Declarant indicate the portion of the ACR tube market as a whole occupied
by the “enhanced” ACR market. Such information would provide necessary
context for determining whether UNILLOY® ACR tubes were commercially
successful relative to all competing products. Applied Materials, 692 F.3d at
1300 (“An important component of the commercial success inquiry in the
present case is determining whether [Appellant] had a significant market
share relative to all competing pads [products] based on the merits of the
claimed invention, which [Appellant] did not show.”)
Furthermore, neither Appellant nor the Declarant provide any actual
sales data for UNILLOY® ACR tubes, which would be highly probative in
assessing the commercial success of the tubes. Applied Materials, 692 F.3d
at 1300 (“[j]ust as the number of units sold without
evidence of the market share is only weak evidence of commercial success,
. . . so too is an assertion of market share lacking in sales data.”).
Appellant argues that “the Rottmann Declaration is not based solely
on Mr. Rottmann’s opinion.” Appeal Br. 10. Appellant argues that Mr.
Rottmann declares “that based on customer discussions, adoption of the
claimed ACR tubes is due to increased strength of a given tube
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weight/diameter compared to copper tubes,” and “also declares that
customers have been willing to pay a higher price per pound for claimed
ACR tubes.” Appeal Br. 10 (citing Rottmann Dec. ¶¶ 16, 17). Appellant
argues that, therefore, “the Rottmann Declaration provides factually-based
assertions based on discussions with customers and factual evidence as a
basis customer adoption of claimed ACR tubes.” Appeal Br. 10.
Although the statements in the Rottmann Declaration are said to be
based on customer discussions and customer behavior, neither the Declarant
nor Appellant provides any actual objective evidence corroborating the
statements in the Declaration. And because Mr. Rottmann is named as an
inventor of the subject matter claimed in the present application, the
opinions Mr. Rottmann provides in the Declaration are inherently self-
interested. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose
underlying facts or data “is entitled to little or no weight”); Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board
consistently did was accord little weight to broad conclusory statements that
it determined were unsupported by corroborating references. It is within the
discretion of the trier of fact to give each item of evidence such weight as it
feels appropriate”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368
(Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations”); In re Altenpohl, 500 F.2d 1151,
1158 (CCPA 1974) (lack of factual support rendered an affidavit of little
probative value in overcoming obviousness rejection).
Therefore, considering the totality of the evidence on the record
before us, Appellant does not provide sufficient evidence to meet
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Appellant’s burden of establishing that UNILLOY® ACR tubes were
actually commercially successful, and establishing that the asserted sales of
UNILLOY® ACR tubes were a direct result of the unique characteristics of
the copper alloy of claim 1 and the ACR tube of claim 8, rather than a result
of other factors. We, accordingly, sustain the Examiner’s rejections of
claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a).

DECISION SUMMARY

Claim(s)
Rejected

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 8, 11,
12, 15, 16
103(a) Ozaki 1, 4, 5, 8,
11, 12, 15,
16

6, 7, 13, 14 103(a) Ozaki, Sugawara 6, 7, 13, 14
1, 4–8, 11–
16
103(a) Sugawara 1, 4–8, 11–
16

1, 4–8, 11–
14
103(a) Oishi 1, 4–8, 11–
14

Overall
Outcome
1, 4–8, 11–
16

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

AFFIRMED