Ex Parte Elbourini

Board of Patent Appeals and Interferences

Aug 27, 2009

10927264 (B.P.A.I. Aug. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VALEO, INC.
____________________

Appeal 2009-005922
Application 10/927,264
Technology Center 3700
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Decided: August 27, 2009
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Valeo, Inc.
(Valeo), under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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References Relied on by the Examiner
Hiramatsu 4,332,293 Jun. 1, 1982
Fukuoka 5,564,497 Oct. 15, 1996
Dumetz 6,129,147 Oct. 10, 2000
Haussmann 6,161,616 Dec. 19, 2000
Hu 6,805,193 B2 Oct. 19, 2004

The Rejections on Appeal
The Examiner rejected claims 1-6, 8-11, and 15-20 under 35 U.S.C.
§ 103(a) as unpatentable over Haussmann and Fukuoka.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Haussmann, Fukuoka, and Dumetz.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Haussmann, Fukuoka, and Hiramatsu.
The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Haussmann, Fukuoka, Hiramatsu, and Hu.

The Invention
The invention relates to a cooling radiator for causing transfer of heat
within an engine. Claim 1 is reproduced below (Claims App’x 17:2-12):
1. A cooling radiator, comprising:

a plurality of flat tubes disposed in parallel with respect to a
direction of an air flow with at least one corrugated fin disposed
between and connected to each pair of flat tubes composing a core
portion;

the plurality of flat tubes each having a tube center located at a
center of a minor axis and a tube height across the minor axis ranging
from about 1.4 to 1.6 millimeters;

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the at least one corrugated fin having a thickness ranging from
about 0.03 to 0.12 millimeters, the at least one corrugated fin having a
plurality of fin portions; and

a tube wall thickness ranging from about 0.15 to 0.30
millimeters;

wherein the cooling radiator is configured to have an engine
coolant flowing therethrough.
B. ISSUE
Has Valeo shown that the Examiner erred in determining that a
cooling radiator with all the particular dimensions specified in the claims
would have been obvious over the applied prior art?
C. FINDINGS OF FACT
1. Fukuoka discloses a cooling radiator as a heat exchanger 2 for
circulating engine cooling water. (Fukuoka 5:46-51.)
2. The cooling radiator includes a plurality of flat tubes 2a
separated by corrugated fins 2b. (Id. at 2:5-12.)
3. In Fukuoka’s radiator, heat exchange occurs between engine
cooling water flowing in the tubes and air flowing through the fins. (Id. at
1:15-19.)
4. Fukuoka discloses that its invention seeks to improve heat
exchanger performance through the selection of specific dimensions for heat
exchanger components. (Id. at 3:36-52.)
5. In Fukuoka, the fins of the cooling radiator/heat exchanger have
a thickness in the range of 0.04 to 0.08 millimeters (mm). (Id. at 8:38-39.)
6. Fukuoka also discloses tube wall thicknesses in the range of 0.2
to 0.4 mm. (Id. at 8:37-38.)
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7. With respect to tube height, referenced as “b” in Fukuoka,
Fukuoka discloses a range of 0.5 to 1.7 mm (Id. at 6:12-21; Fig. 7) of which
0.6 to 1.2 mm is disclosed as optimum (Id. at 7:14-15).
8. Fukuoka discloses that “Hf” is the height of the fins in the
lateral direction, i.e. the width of the corrugated fins between adjacent tubes
2a, and is in the range of 3 to 6 mm. (Id. at 7:20-21.)
9. Haussmann discloses an evaporator that includes a series of flat
heat exchange tubes 2 which receive a refrigerant and are separated by a
plurality of zig zag fins 12. (Haussmann 3:27-38.)
10. In Haussmann’s evaporator, heat exchange occurs between
refrigerant flowing through the tubes and air flowing through the fins. (Id. at
6:47-62.)
D. PRINCIPLES OF LAW
Where the claimed ranges overlap the ranges disclosed in the prior art,
a prima facie case of obviousness exists. In re Peterson 315 F.3d 1325,
1329 (Fed. Cir. 2003).
The discovery of optimum values for variables recognized in the prior
art as result effective is ordinarily obvious. In re Boesch, 617 F.2d 272, 276
(CCPA 1980).
E. ANALYSIS
Claims 1 and 10 are independent claims. Claims 3-9 and 11-14 are
dependent, either directly or indirectly, on one of claims 1 and 10. Valeo
does not argue the patentability of claims 3-9 and 11-14 separately from the
patentability of claims 1 and 10. Claims 2 and 15-20 are argued separately.
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Claims 1 and 3-14
The Examiner rejected claims 1 and 10 as unpatentable over
Haussmann and Fukuoka. Each of claims 1 and 10 are drawn to a cooling
radiator. The cooling radiator of each of those claims includes an
arrangement of flat tubes separated by at least one corrugated fin. The
claims each require particular dimensions for the flat tubes and corrugated
fins.
Claim 1 requires (Claims App’x 17:6-10):
[T]he plurality of flat tubes each having . . . a tube height across
the minor axis ranging from about 1.4 to 1.6 millimeters;

the at least one corrugated fin having a thickness ranging from
about 0.03 to 0.12 millimeters . . . and

a tube wall thickness ranging from about 0.15 to 0.30
millimeters[.] . . .

(Emphasis added).

Claim 10 requires (Claims App’x 19:5-9):
[T]he plurality of flat tubes having a height across a minor axis
ranging from about 1.4 to 1.6 millimeters;

the at least one corrugated fin having a thickness ranging from
about 0.03 to 0.12 millimeters; . . .

a tube wall thickness of ranging from about 0.15 to 0.30
millimeters[.] . . .

(Emphasis added).
The dispute centers on whether the above-noted dimensions as
claimed are disclosed or would have been reasonably suggested by the prior
art. The Examiner presented alternative bases in accounting for those
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dimensions. The Examiner first set forth a rationale based on the teachings
of Haussmann and Fukuoka. In the alternative, the Examiner relied only on
Fukuoka in rejecting Valeo’s claims, even though the rejection is still
phrased as unpatentable over Haussmann and Fukuoka. (Ans. 7:12-15; 11:7-
22.)
Valeo’s arguments are directed to the Examiner’s first rationale, i.e.,
modifying Haussmann’s disclosed dimensions based on Fukuoka’s
teachings. Valeo contends that Haussmann and Fukuoka are directed to
“unrelated technologies” which precludes any combination of their
teachings. (App. Br. 8:16-29.) According to Valeo, Haussmann discloses
an evaporator which circulates a refrigerant while Fukuoka discloses a
radiator which circulates an engine coolant. Because of those differences,
Valeo argues that one with ordinary skill in the art would not have had any
motivation to implement any of the dimensions of Fukuoka’s radiator
components on Haussmann’s evaporator.
Valeo’s arguments overlook the Examiner’s alternative rationale
relying only on Fukuoka. Fukuoka discloses a cooling radiator as a heat
exchanger 2 for circulating engine cooling water. (Fukuoka 5:46-51.) The
cooling radiator includes a plurality of flat tubes 2a separated by corrugated
fins 2b. (Id. at 2:5-12.) In Fukuoka, the fins of the cooling radiator/heat
exchanger have a thickness in the range of 0.04 to 0.08 millimeters (mm).
(Id. 8:38-39.) That range is completely within Valeo’s claimed fin thickness
range of 0.03 to 0.12 mm and thus satisfies and meets the claim requirement.
Fukuoka also discloses tube wall thicknesses in the range of 0.2 to 0.4
mm. (Fukuoka at 8:37-38.) That range of tube wall thicknesses overlaps the
corresponding range of 0.15 to 0.30 mm required in Valeo’s claims. With
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respect to tube height, Fukuoka discloses a range of 0.5 to 1.7 mm (Id. at
6:12-21; Fig. 7) of which 0.6 to 1.2 mm is disclosed as optimum (Id. at 7:14-
15.) Valeo’s claims require a tube height of 1.4 to 1.6 mm, which overlaps
the larger range of 0.5 to 1.7 mm set forth in Fukuoka. Although some tube
heights falling within the range of 0.5 to 1.7 mm may be less than optimum,
Fukuoka discloses that all of those tube heights as shown in Figure 7, within
the range of 0.5 to 1.7 mm, are included in an embodiment of the cooling
radiator/heat exchanger according to Fukuoka’s invention. (Id. at 4:15-18.)
Where, as here, the claimed ranges overlap the ranges disclosed in the
prior art, a prima facie case of obviousness exists. In re Peterson 315 F.3d
at 1329. Also, the discovery of optimum values for variables recognized in
the prior art as result effective is ordinarily obvious. In re Boesch, 617 F.2d
at 276. In this case, as was recognized by the Examiner (Ans. 6:20-21; 7:12-
17), Fukuoka discloses that the tube height, fin thickness, and tube thickness
of a cooling radiator/heat exchanger may be varied to effect heat transfer
rate and impact heat exchanger performance. (Fukuoka 3:42-47; 8:35-38.)
Accordingly, those factors constitute art-recognized result effective
variables. The Examiner properly determined that selecting the claimed tube
height, fin thickness, and tube thickness dimensions for the corresponding
components of Fukuoka’s cooling radiator would have been prima facie
obvious to one with ordinary skill in the art. Valeo does not address or
explain why there is error in that determination.
While an appellant may attempt to overcome a prima facie case of
obviousness by showing evidence of unexpected results, In re Peterson 315
F.3d at 1330, Valeo has not done so here. Valeo does not direct us to
objective evidence, such as affidavit evidence or expert testimony, that
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establishes any unexpected results arising from the claimed dimensions of its
cooling radiator.
Given the above noted teachings of Fukuoka, Valeo has not shown
that the Examiner erred in rejecting claims 1 and 10 as obvious over
Haussmann and Fukuoka.
In any event, we also are not persuaded of any error in the Examiner’s
rationale in rejecting Valeo’s claims based on the combined teachings of
Haussmann and Fukuoka. Valeo contends that those two references are
from “unrelated technologies” (App. Br. 8:16-29) but has not submitted
objective evidence to demonstrate that evaporators and radiators are so
disparate in nature as to preclude the teachings of one from applying to the
other. Valeo’s contentions constitute mere arguments of counsel, which
cannot take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Both Haussmann and Fukuoka disclose similarly structured heat
exchangers that include flat tubes and corrugated fins. (Haussmann 3:27-38;
Fukuoka 2:5-12.) Both structures operate to transfer heat between a fluid
within the tubes and air flowing through the fins. (Haussmann 6:47-62;
Fukuoka 1:15-19.) On this record, we are not persuaded that a person of
ordinary skill in the art would not have readily recognized that the
dimensional features of Haussmann’s heat exchanger are relevant to
Fukuoka’s heat exchanger and vice versa.
For the foregoing reasons, we sustain the rejection of claims 1 and 10
over Haussmann and Fukuoka. Dependent claims 3-6, 8, 9, and 11 were
rejected over Haussmann and Fukuoka and dependent claims 7, 12, 13, and
14 were rejected over those references along with one of Dumetz,
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Hiramatsu, and Hu. The patentability of those dependent claims is not
separately argued apart from the patentability of independent claims 1 and
10. We also sustain the rejections of claims 3-9 and 11-14.
Claims 2 and 15-20
Claim 2 is dependent on claim 1. Claim 15 is independent. Claims
16-20 are argued collectively with claims 2 and 15. The Examiner rejected
claims 2 and 15-20 as unpatentable over Haussmann and Fukuoka. Each of
claims 2 and 15 includes the limitation that the plurality of flat tubes have a
tube spacing or tube pitch of about 7.5 to 8.5 millimeters. (Claims App’x
17:13-15 and 21:9-10.) Valeo contends that neither Haussmann nor
Fukuoka taken alone or in combination teach the tube spacing required by
claims 2 and 15. (App. Br. 13:21-24.)
The Examiner has set forth a reasonable explanation as to how
Haussmann accounts for the above-noted tube spacing requirement. (Ans.
pp. 14-15.) Valeo does not address that explanation, much less show how it
is in error.
Moreover, although Valeo asserts that Fukuoka alone does not
disclose the required spacing between the centers of adjacent flat tubes, it
does not explain why that is the case. Fukuoka discloses that pairs of flat
tubes 2a are separated by corrugated fins 2b. (Fukuoka 2:8-10; Fig. 3.)
Valeo’s claims call for a range of 7.5 to 8.5 mm for the spacing between the
tube centers. In Fukuoka, the spacing between the centers of an adjacent
pair of flat tubes 2a is equal to the width of the corrugated fins 2b that
separate the tubes plus the total width of a single tube 2a. The width of a
tube is equal to the inner space between the side walls of the tubes plus the
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thickness of each of the two side walls of a tube. All of those dimensions
are set forth in Fukuoka.
In particular, Fukuoka discloses that “Hf” is the height of the fins in
the lateral direction, i.e. the width of the corrugated fins between adjacent
tubes 2a, and is in the range of 3 to 6 mm. (Fukuoka 7:20-21.) The inner
space between the sidewalls of each tube 2a, i.e., the tube height “b” in
Fukuoka, is in the range of 0.5 to 1.7 mm. (Id. at 6:17-19.) The thickness of
each side wall of tube 2a is in the range of 0.2 to 0.4 mm. (Id. at 8:36-38.)
Thus, the range of total spacing between the tube centers of adjacent flat
tubes in Fukuoka is:
At its minimum: 3 mm + 0.5 mm + 0.2 mm + 0.2 mm = 3.9 mm.
At its maximum: 6 mm + 1.7 mm + 0.4 mm + 0.4 mm = 8.5 mm.
Fukuoka’s disclosed range of 3.9 mm to 8.5 mm overlaps the range of 7.5
mm to 8.5 mm required by Valeo’s claims 2 and 15. Given that overlap, one
with ordinary skill in the art would have recognized that a cooling radiator
having the tube spacing of Valeo’s claims 2 and 15 is prima facie obvious.
We sustain the rejection of claims 2 and 15-20 as unpatentable over
Haussmann and Fukuoka.
F. CONCLUSION
Valeo has not shown that the Examiner erred in determining that a
cooling radiator with all the particular dimensions specified in Valeo’s
claims would have been obvious over the applied prior art.
G. ORDER
The rejection of claims 1-6, 8-11, and 15-20 under 35 U.S.C. § 103(a)
as unpatentable over Haussmann and Fukuoka is affirmed.
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The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Haussmann, Fukuoka, and Dumetz is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Haussmann, Fukuoka, and Hiramatsu is affirmed.
The rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Haussmann, Fukuoka, Hiramatsu, and Hu is affirmed.

AFFIRMED
KMF

cc:

JULIA CHURCH DIERKER
DIERKER & ASSOCIATES, P.C.
3331 W. BIG BEAVER RD. SUITE 109
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