Ex Parte Bariar

Patent Trial and Appeal Board

Dec 31, 2018

14104773 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/104,773 12/12/2013 Bhaskar Bariar
21888 7590 01/03/2019
THOMPSON COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
973165-125779 7477
EXAMINER
CLASS-QUINONES, JOSE 0
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHASKAR BARIAR 1
Appeal 2017-011407
Application 14/104, 773
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject under 35 U.S.C. § 112 (b) claims 1-9 and 11-15 as
indefinite and to reject under 35 U.S.C. § 103: (1) claims 1, 2, 5-8, and 13-
1 Penn Aluminum International LLC, ("Appellant") is the applicant as
provided under 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Brief 2 ("Appeal Br."), filed May 2, 2017.
2 We note that the Examiner does not appear to provide a prior art rejection
for dependent claim 9. See Final Office Action 4--15 ("Final Act."), dated
Sept. 15, 2016. Thus, our review of claim 9 is limited to the Examiner's
indefiniteness rejection of that claim. See id. at 3--4.
Appeal 2017-011407
Application 14/104, 773
15 as unpatentable over Nakamura (US 2006/0096314 Al, published May
11, 2006), Brown (US 2,483,454, issued Oct. 4, 1949) and Kim (US
2011/0168369 Al, published July 14, 2011); and (2) claims 3, 4, 11, and 12
as unpatentable over Nakamura, Brown, Kim, and Lord (US 4,118,944,
issued Oct. 10, 1978). Claims 10 and 16-20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "concentric tube heat
exchangers." Spec. ,r 5, Figs. 1, 2, 5. Claims 1 and 7 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A heat exchanger comprising:
an outer tube having an annular wall, ribs, and a transverse
cross-section, the transverse cross-section of the outer tube
having a centroid, the outer tube extending along a longitudinal
path, the ribs extending toward the centroid from the annular wall
of the outer tube, some of the ribs being inclined clockwise as
they extend inward from the outer wall toward the centroid and
some other of the ribs being inclined counter-clockwise as they
extend inward from the outer wall toward the centroid; and
an inner tube having an annular wall, the outer tube
encircling the inner tube, the annular wall of the inner tube
having an outer surface, the outer surface being in contact with
at least some of the ribs of the outer tube, the inner tube
encircling an inner fluid passageway that extends along the
longitudinal path, the outer tube and the inner tube collectively
defining a plurality of outer fluid passageways bound by the
annular walls of the outer and inner tubes and the ribs of the outer
tube, the outer fluid passageways extending along the
longitudinal path.
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Application 14/104, 773
ANALYSIS
Indefiniteness
Claims 1-9 and 11-15
The Examiner determines that the terms "clockwise" and "counter-
clockwise" of claims 1 and 7 are indefinite "because the [S]pecification does
not clearly redefine the terms." Final Act. 3--4. In particular, the Examiner
takes the position:
While [Appellant's] disclosed Figure 2 shows fins 24 with
different inclination orientation it is unclear how the orientations
can be referred to as clockwise or counter-clockwise inclinations,
especially since the ordinary meaning of the terms clockwise and
counter-clockwise refer to rotational directions relative to a
center point and not to inclination directions. To this point where
[Appellant] acts as his or her own lexicographer to specifically
define a term of a claim contrary to its ordinary meaning, the
written description must clearly redefine the claim term and set
forth the uncommon definition so as to put one reasonably skilled
in the art on notice that the applicant intended to so redefine that
claim term.
Id. at 3 ( emphasis added).
Appellant's Specification describes "[a]s shown in Figure 2, some of
the ribs 24 are skewed such that they extend clockwise as they extend
toward the centroid of the outer tube 14 and some other of the ribs
extending counter-clockwise as they extend toward the centroid." Spec.
if 22, Fig. 2.
Upon review of Appellant's disclosure and Figures, we agree with
Appellant that a skilled artisan would understand the terms "clockwise" and
"counter-clockwise" as they relate to the ribs. See Appeal Br. 4--5; see also
3
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Application 14/104, 773
Reply Br. 2-3. 3 Thus, we agree with Appellant that the terms "clockwise"
and "counter-clockwise" are clear and definite based on a plain reading of
the claims and when read in light of the Specification. See Appeal Br. 4--5;
see also Reply Br. 2-3.
Assuming arguendo that the Examiner intended to make a written
description rejection as opposed to an indefiniteness rejection, Appellant's
Specification further describes that "[ t ]he skewed nature of the ribs 24
provides the ribs with greater surface area than they would otherwise have"
and by skewing some of the ribs 24 clockwise and some other of the ribs
counter-clockwise, as opposed to all ribs 24 being in the same direction,
"the ribs are less likely to collapse against annular wall 22 of the outer tube
14 when the inner tube 12 and the outer tube rotate relative to each other."
Spec. ,r 22, Fig. 2. We agree with Appellant that a skilled artisan "would
readily understand with reasonable certainty the terminology used in the
claims in view of the drawings and the written description." See Appeal
Br. 5.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 1-9 and 11-15 as indefinite.
Obviousness over Nakamura, Brown, and Kim
Claims 1, 2, 5---8, and 13-15
Appellant does not offer arguments in favor of independent claim 7 or
dependent claims 2, 5, 6, 8, and 13-15 separate from those presented for
independent claim 1. See Appeal Br. 5-7. We select claim 1 as the
3 Reply Brief ("Reply Br."), filed Sept. 11, 2017.
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Application 14/104, 773
representative claim, and claims 2, 5-8, and 13-15 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
Appellant contends "[ t ]here is no description in Nakamura of forming
ribs on the outer tube that contact the inner tube and no description of the
manner in which any such the ribs are oriented" and "[ t Jo the extent
Nakamura shows a way in which to support the inner tube within the outer
tube, the structures extend from the inner tube as opposed to the outer tube,
and they are straight or helical, and not inclined clockwise and
counterclockwise as set forth in the claims." Appeal Br. 6; see also Reply
Br. 3. Appellant also contends the pins of Kim "do not form a plurality of
separate fluid channels between the inner and outer tubes" and a skilled
artisan "would not consider a pin to be a rib as claimed. The [S]pecification,
including Figure 2, describes the geometry of the ribs including that the ribs
'extend along the longitudinal path of the heat exchanger."' Reply Br. 5; see
also Appeal Br. 7.
Appellant's arguments are not directed to the rejection as set forth by
the Examiner and are against Nakamura and Kim individually, where the
rejection is based on the combined teachings of Nakamura, Brown, and Kim.
The Examiner clarifies in the Answer that: ( 1) Brown, not Nakamura,
is relied upon for teaching that it is "old and well-known for a heat
exchanger tube (10) to have ribs (14) extending toward the centroid from an
annular wall of the tube for the purpose of increasing the surface area of the
tube resulting in an increase in the rate of heat transfer of the tube" (Ans. 6
(citing Brown, 4: 11-15));4 (2) Nakamura is relied upon for the "concentric
tubes arrangement" (Id.); (3) Kim "was solely relied upon for the teaching of
4 Examiner's Answer ("Ans."), dated July 12, 2017.
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Application 14/104, 773
having ribs (400) of an outer tube (IOOD) in contact with an outer surface of
an inner tube (200D)" (Id. at 8); and (4) Nakamura as modified by Brown
teaches "having the ribs forming a plurality of separate fluid channels
between the inner and outer tubes" (Id.).
In response to Appellant's argument about the pins of Kim, the
Examiner states that "the term 'rib' is broad and does not imply any specific
shape" and "absent a further limitation in the claim of what the term 'rib'
encompasses, a skilled artisan would readily understand that both 'a pin' and
'a fin' can be considered as 'ribs' in as much both are capable of being used
as supporting structure." Id. at 8-9.
Under the broadest reasonable interpretation, the Examiner's findings
are sound and based on rational underpinnings. Claim 1 recites nothing
about "the geometry of the ribs including that the ribs 'extend along the
longitudinal path of the heat exchanger."' See Appeal Br. 9, Claims App.;
see also Reply Br. 5; In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability). In addition, given that the Examiner relies on the teachings of
Kim merely for disclosing ribs of an outer tube in contact with an outer
surface of an inner tube, it would appear the Examiner would rely on the
combined teachings of Nakamura and Brown for any "geometry of the ribs."
See Final Act. 4---6; see also Ans. 6-8.
Appellant contends "[ t ]here is no teaching or suggestion in Brown to
form the fins in a skewed manner so as to support an inner tube and prevent
the fins from collapsing against the annular wall of the outer tube when the
inner tube is rotated relative to the outer tube." Appeal Br. 7; see also Reply
Br. 4--5.
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As an initial matter, claim 1 recites nothing about the ribs being
formed in a skewed manner "so as to support an inner tube and prevent the
fins from collapsing against the annular wall of the outer tube when the inner
tube is rotated relative to the outer tube." See Appeal Br. 9, Claims App.;
see also id. at 7; Reply Br. 4--5; In re Self, 671 F.2d at 1348. In addition, it
is well established that the reason to modify the reference may often prompt
a person of ordinary skill in the art to do what the inventor has done, but for
a different purpose or to solve a different problem. It is not necessary that
the prior art suggests the combination to achieve the same advantage or
result discovered by an applicant. In re Kahn, 441 F.3d 977, 987-88 (Fed.
Cir. 2006); see also Ans. 7.
Here, the Examiner reasons:
[A] skilled artisan would realize that in order to incorporate
Brown's fins in Nakamura's outer tube, the fins would also need
to be skewed in the same way intended by Brown for the same
purpose of avoiding contact of the fins with the arc welding
conductor that would have [been] used to weld the fins inside
Nakamura's outer tube ... and ... adding fins inside the outer
tube of Nakamura's heat exchanger would increase the surface
area of the tube resulting in an increase in the rate of heat transfer
of the tube.
Ans. 7; see also id. at 6; Final Act. 4--6.
The Examiner's findings are sound and supported by a preponderance of the
evidence, and the Examiner's conclusions therefrom are based on rational
underpinnings. Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
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To the extent Appellant is arguing the references must be capable of
bodily incorporation in order to combine their teachings, 5 the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413,425 (CCPA 1981). "Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." Id.
In this case, the Examiner provides reasons with rational
underpinnings to combine Nakamura, Brown, and Kim. See Final Act. 4--8;
see also Ans. 5-9. That Nakamura, Brown, and Kim may teach additional
structure does not prevent the Examiner in this case from relying on each
reference for limited purposes. Appellant does not provide persuasive
evidence or argument apprising us of error in the Examiner's proposed
reasoning for the combined teachings of Nakamura, Brown, and Kim. In
addition, Appellant does not identify record evidence supporting the
contention that "[ o ]ne would not look to add the fins of Brown to the
structure of Nakamura because the combination would collapse the thin fins
and be unable to provide support for the tubes." See Reply Br. 4; see also
Appeal Br. 7; Ans. 7-8. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.").
We further are not persuaded that the Examiner engages in
impermissible hindsight in combining Nakamura, Brown, and Kim. See
5 See e.g., Reply Br. 4 ("To arrive at the modification suggested by the
[E]xaminer, one would have to disregard the radially outward projecting
structures of Nakamura which support the outer tube, and instead redesign the
outer tube of Nakamura using a design suggested by Brown to support the
inner tube.").
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Application 14/104, 773
Appeal Br. 7; see also Reply Br. 5. The Examiner cites specific teachings in
the references themselves, not Appellant's disclosure, in support of the
Examiner's articulated reasoning for combining the references as proposed
in the rejection. See Final Act. 4--8; see also Ans. 5-9.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Nakamura, Brown, and Kim. Accordingly, we sustain the Examiner's
rejection of claim 1. We further sustain the rejection of claims 2, 5-8, and
13-15, which falls with claim 1.
Obviousness over Nakamura, Brown, Kim, and Lord
Claim 3, 4, 11, and 12
Appellant argues dependent claims 3, 4, 11, and 12 together. See
Appeal Br. 8. We select claim 3 as the representative claim, and claims 4,
11, and 12 stand or fall with claim 3. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant contends ( 1) "Lord has no teaching of an outer tube
encircling an inner tube as required by the claims" (Appeal Br. 8); and (2)
Lord does not disclose "an inner tube in contact with ribs of an outer tube"
(Reply Br. 6).
Appellant's arguments are not directed to the rejection as set forth by
the Examiner. Again, Appellant's arguments are against Lord individually,
where the rejection is based on the combined teachings of Nakamura,
Brown, Kim, and Lord.
The Examiner clarifies in the Answer that Lord "was merely relied
upon for the teaching of having an inner tube comprising ribs extending
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Application 14/104, 773
toward the centroid of the inner tube and having said ribs spiraling about the
longitudinal path." Ans. 9. The Examiner relies on the teachings of
Nakamura for disclosing "an outer tube encircling an inner tube" and on the
teachings of Kim for disclosing "an inner tube in contact with ribs of an
outer tube." See Final Act. 5---6, 10-11; see also Ans. 6-8. Appellant does
not provide persuasive evidence or argument apprising us of error in the
Examiner's proposed reasoning for the combined teachings of Nakamura,
Brown, Kim, and Lord.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting dependent claim 3 as unpatentable over
Nakamura, Brown, Kim, and Lord. Accordingly, we sustain the Examiner's
rejection of claim 3. We further sustain the rejection of claims 4, 11, and 12,
which falls with claim 3.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-9 and
11-15 as indefinite.
We AFFIRM the decision of the Examiner to reject claims 1, 2, 5-8,
and 13-15 as unpatentable over Nakamura, Brown, and Kim.
We AFFIRM the decision of the Examiner to reject claims 3, 4, 11,
and 12 as unpatentable over Nakamura, Brown, Kim, and Lord.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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