Ex Parte Auchter et al

Patent Trial and Appeal Board

Jan 20, 2015

11791991 (P.T.A.B. Jan. 20, 2015)

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.
11/791,991 06/26/2007 Holger Auchter 1006/0174PUS1 6797
60601 7590 01/21/2015
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
DUONG, THO V
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
01/21/2015 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 HOLGER AUCHTER, HANS-PETER HEUSS,
and BRUNO LOSCH
____________

Appeal 2013-000054
Application 11/791,991
Technology Center 3700
____________

Before: STEFAN STAICOVICI, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Holger Auchter et al.1 (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 7–9,
11–16, and 23 as unpatentable over Simpelaar (US 3,021,804, iss. Feb. 20,
1962) and Eto (US 5,605,191, iss. Feb. 25, 1997) and claims 10, 19, and 20
as unpatentable over Simpelaar, Eto, and Fuhrmann (US 5,092,397, iss. Mar.

1 According to Appellants, the real party in interest is Behr GmbH &
Co. KG. Appeal Br. 1.
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Application 11/791,991

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3, 1992).2 Claim 1–6, 17, 18, 21, and 22 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellants’ invention relates to a holding device or tube plates for
inserting a plurality of throughflow tubes of a heat exchanger. Spec. 1, ll.
14–18.
Claim 7 is illustrative of the claimed invention and reads as follows:
7. A holding device for throughflow tubes of a heat
exchanger having a plurality of openings which are suitable for
holding the throughflow tubes, with the openings being
arranged substantially in a predefined main plane of the holding
device and having a predefined circumference, wherein the
openings have, in at least one region of the circumference, a
protruding border which protrudes from the main plane and, in
at least one region of the circumference, a non-protruding
border that substantially does not protrude from the main plane,
the protruding border including a tear in a middle portion
thereof.

ANALYSIS
Independent claim 7 requires, inter alia, openings that have “a non-
protruding border that substantially does not protrude from the main plane.”
Appeal Br. 8, Claims App. Using different claim language, independent
claim 23 recites “openings . . . having a predefined circumference, wherein

2 We consider the Examiner’s reference to this patent as “Simpellar” as
a mere typographical error. See e.g. Final Act. 4.
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[] a second region of the circumference includes a border lying substantially
in the main plane.” Id. at 9–10.
The Examiner finds that although Simpelaar fails to disclose a heat
exchanger header plate 11 (holding device) having openings with a non-
protruding border in a central region, Eto discloses an end plate 12 (holding
device) including openings having non-protruding borders with a reduced
width in a central region 19. Final Act. 4 (citing Simpelaar, Figs. 1 and 8–
10; Eto, Figs. 1–5 and 10). The Examiner then concludes that it would have
been obvious for a person of ordinary skill in the art to modify Simpelaar’s
heat exchanger to include Eto’s teachings in order to form a two-pass heat
exchanger with a single header, which provides for reduced costs and
components; improves heat transfer efficiency because “the fluid would flow
in the tube longer;” and facilitates “a brazing material to flow into the gap
between the openings and the border to secure the tube to the holder by
brazing.” Id. at 4–5. According to the Examiner, the two-pass heat
exchanger of Simpelaar as modified by Eto employs a “U-shaped tube with
a tube holder that has a non-protruding central portion to accommodate the
separation of the two [phases].” Ans. 7–8.
Appellants argue that the Examiner’s proposed modification “would
change the principle of operation of the Simpelaar device,” thus rendering it
unsatisfactory for its intended purpose. Appeal Br. 5. Furthermore,
Appellants argue that the record fails to provide any evidence that the
Examiner’s modification provides for reduced costs and components, and
also facilitates flow of the brazing material when securing the holder and the
tubes in the heat exchanger of Simpelaar as modified by Eto. Id. at 6.
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Application 11/791,991

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At the outset, we note that unlike Eto’s fluid elements 2 that are U-
shaped by partitioning wall 2c (reduced width in the central region),
Simpelaar’s fluid conducting tubes 3 are not U-shaped and do not have a
reduced width in the central region. Compare Simpelaar, fig. 2 with Eto,
fig. 5. As such, the Examiner’s reasoning to combine the teachings of
Simpelaar and Eto, namely, to form a two-pass heat exchanger with a single
header and U-shaped fluid elements, not only requires modification of
Simpelaar’s openings 14 to include a non-protruding border in a central
region, but also requires modification of fluid conducting tubes 3 to be U-
shaped. Thus, although Eto discloses that it was known in the art to provide
U-shaped fluid elements 2 and an end plate 12 with openings 14 having a
non-protruding border in the central region 19, we find the Examiner’s
rejection insufficient to explain what would have prompted a person having
ordinary skill in the art to apply these features to Simpelaar’s heat exchanger
by modifying both header plate 11 and fluid conducting tubes 3.
Although we appreciate that the Examiner’s modification would result
in an improved heat exchanger, nonetheless, the Examiner has not provided
any findings that either Simpelaar or Eto recognized any problems regarding
cost and components with Simpelaar’s conventional heat exchanger.
Furthermore, we note that in contrast to the Examiner’s reasoning, the
improved brazing process in Eto results from enhanced flow of the brazing
material caused by first and second projections 20, 21 and not from the non-
protruding borders in the central region of openings 14. See Eto, col. 4, ll.
39–50 and figs. 6 and 7. As such, the Examiner’s conclusory statements
regarding purported shortcomings of Simpelaar’s conventional heat
exchanger do not point to any persuasive evidence or technical reasoning to
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Application 11/791,991

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support the conclusion of obviousness. Hence, absent hindsight, we fail to
see why a person having ordinary skill in the art would have modified
Simpelaar’s conventional heat exchanger in the manner claimed.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 7–9, 11–16, and 23 under 35 U.S.C. § 103(a) as unpatentable over
Simpelaar and Eto.
The Examiner’s use of the disclosure of Fuhrmann does not remedy
the deficiencies of Simpelaar and Eto as described supra. Hence, for the
same reasons, we likewise do not sustain the rejection of claims 10, 19, and
20 over the combined teachings of Simpelaar, Eto, and Fuhrmann.

SUMMARY
We REVERSE the Examiner’s decision to reject claims 7–16, 19, 20,
and 23.
REVERSED

rvb