Ex Parte Falta et al

Board of Patent Appeals and Interferences

May 30, 2007

10186253 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
3
4
UNITED STATES PATENT AND TRADEMARK OFFICE 5
_____________ 6
7
BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
_____________ 10
11
Ex parte STEVEN R. FALTA, MOHINDER SINGH BHATTI, 12
SHRIKANT MUKUND JOSHI, and GARY SCOTT VREELAND 13
_____________ 14
15
Appeal No. 2006-1708 16
Application No. 10/186,253 17
Technology Center 3700 18
______________ 19
20
Decided: May 30, 2007 21
_______________ 22
23
Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and ANTON W. 24
FETTING, Administrative Patent Judges. 25
26
CRAWFORD, Administrative Patent Judge. 27
28
29
DECISION ON APPEAL 30
31
32
STATEMENT OF THE CASE 33
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection of 34
claims 1 and 2. Claims 3 and 4 have been withdrawn (Final Rejection 2; Br. 2). 35
We have jurisdiction under 35 U.S.C. § 6(b) (2002). 36
Appeal 2006-1708
Application 10/186,253

2

Appellants’ invention relates to an evaporator with air fin pattern that 1
provides an enhanced drainage of water condensate between the fin walls and out 2
of the evaporator, without degrading the performance of the evaporator 3
(Specification 4). 4
Claims 1 and 2 are the only independent claims and read as follows: 5
1. In an evaporator (10) having substantially parallel, substantially 6
vertically oriented refrigerant flow tubes (12), said tubes having 7
opposed pairs of surfaces (14) spaced apart by a distance c, between 8
which tube surfaces (14) corrugated air fins (16) are located, said fin 9
corrugations comprised of V-shaped fin walls (18) diverging from and 10
joined at integral sharp crests having a radius r and a fin pitch p, said fin 11
walls (18) also comprising louvers (22) having a length l, characterized 12
in that 13
said tube surface spacing c, crest interior radius r, fin pitch p, and 14
louver length 1 have the following relationships: 15
16
0 < r/c < 0.057 17
0.89 < l/c < 1.01 18
0.29 < p/c < 0.43. 19
20
2. In an evaporator (10) having substantially parallel, substantially 21
vertically oriented refrigerant flow tubes (12), said tubes having 22
opposed pairs of surfaces (14) spaced apart by a distance c, between 23
which tube surfaces (14) corrugated air fins (16) are located, said fin 24
corrugations comprised of V-shaped fin walls (18) diverging from and 25
joined at integral sharp crests having an interior radius r and a fin pitch 26
p, said fin walls (18) also comprising louvers (22) having a length 1, 27
characterized in that 28
29
0.25 mm < r < 0.58[1] mm 30
0.89 < l/c < 1.01 31

1 The claims list the range for r as 0.25 mm < r < 0.058 mm. This is not a valid
range of values. Appellants have defined the range for r as 0.25 mm to 0.58 mm
(Specification 13:24-29; Br. 12:18).
Appeal 2006-1708
Application 10/186,253

3

p >4r. 1
2
PRIOR ART 3
The prior art relied upon by the Examiner in rejecting the claims on appeal 4
is: 5
Beamer US. 5,787,972 Aug. 4, 1998 6
Haussmann US. 6,161,616 Dec. 19, 2000 7
Yamamoto US. 5,271,458 Dec. 21, 1993 8
9
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being 10
unpatentable over Beamer in view of Haussmann, and claim 2 under 35 U.S.C. § 11
102(b) as being anticipated by Yamamoto. 12
13
ISSUES 14
There are three issues on appeal. First, whether the Appellants have shown 15
that the Examiner has failed to provide adequate reason to combine the teachings 16
of Beamer and Haussmann. Second, if the Examiner has provided adequate reason 17
to combine the teachings of Beamer and Haussmann, whether the Appellants 18
established, by evidence, unexpected results, or commercial success. Lastly, 19
whether the Appellants have shown that the Examiner failed to prove that 20
Yamamoto discloses fin walls having a V-shape. 21
22
PRINCIPLES OF LAW 23
In establishing a case of obviousness, it can be important to identify a reason 24
that would have prompted a person of ordinary skill in the relevant art to combine 25
the elements of the prior art references in the way the claimed invention has. KSR 26
Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). 27
Appeal 2006-1708
Application 10/186,253

4

In evaluating prior art references, it is proper to take into account not only 1
the specific teachings of the references but also the inferences which one skilled in 2
the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 3
825, 826, 159 USPQ 342, 344 (CCPA 1968). 4
The reason or motivation to modify the reference may often suggest what 5
the inventor has done, but for a different purpose or to solve a different problem. It 6
is not necessary that the prior art suggest the combination to achieve the same 7
advantage or result discovered by applicant. See In re Kahn, 441 F.3d 977, 987, 78 8
USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of 9
the general problem confronting the inventor rather than the specific problem 10
solved by the invention). 11
Any need or problem known in the field of endeavor at the time of the 12
invention and addressed by the prior art can provide a reason for combining 13
elements in the manner claimed. KSR Int’l, 127 S.Ct. at 1742, 82 USPQ2d at 14
1397. 15
An appellant who is asserting unexpected results to support a contention of 16
nonobviousness bears the burden of proof of establishing the results are 17
unexpected. See In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 18
1972) and In re Freeman 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973). 19
When unexpected results are used as evidence of nonobviousness, the results must 20
be shown to be unexpected as compared with the closest prior art. In re Baxter 21
Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991), citing 22
In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). 23
An appellant who is asserting commercial success to support a contention of 24
nonobviousness bears the burden of proof of establishing a nexus between the 25
claimed invention and evidence of commercial success. 26
Appeal 2006-1708
Application 10/186,253

5

Objective evidence of nonobviousness including commercial success must 1
be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 792, 171 2
USPQ 294, 294 (CCPA 1971). In order to be commensurate in scope with the 3
claims, the commercial success must be due to claimed features, and not due to 4
unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F.Supp. 225, 229, 17 5
USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 959 F.2d 226, 228, 22 USPQ2d 1153, 6
1156 (Fed. Cir. 1992). 7
Our reviewing court has noted in the past that evidence related solely to the 8
number of units sold provides a very weak showing of commercial success, if any. 9
See In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); 10
Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888 11
(Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing 12
of commercial success because "[w]ithout further economic evidence 13
. . . it would be improper to infer that the reported sales represent a substantial 14
share of any definable market"); see also Baxter Travenol Labs., 952 F.2d at 392, 15
21 USPQ2d at 1285 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units 16
sold is insufficient to establish commercial success."); Kansas Jack, Inc. v. Kuhn, 17
719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir. 1983) (determination of 18
obviousness not erroneous where evidence of commercial success consisted solely 19
of number of units sold and where no evidence of nexus). 20
A nexus is required between the sales and the merits of the claimed 21
invention. In ex parte proceedings before the Patent and Trademark Office, an 22
applicant must show that the claimed features were responsible for the commercial 23
success of an article if the evidence of nonobviousness is to be accorded substantial 24
weight. Merely showing that there was commercial success of an article which 25
embodied the invention is not sufficient. See Ex parte Remark, 15 USPQ2d 1498, 26
Appeal 2006-1708
Application 10/186,253

6

1502-03 (Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von 1
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir.), 2
cert. denied, 488 U.S. 956 ( 1988). See also Pentec, Inc. v. Graphic Controls 3
Corp., 776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985) (commercial 4
success may have been attributable to extensive advertising and position as a 5
market leader before the introduction of the patented product); In re Fielder, 471 6
F.2d 640, 646, 176 USPQ 300, 305 (CCPA 1973) (success of invention could be 7
due to recent changes in related technology or consumer demand; here success of 8
claimed voting ballot could be due to the contemporary drive toward greater use of 9
automated data processing techniques). 10
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown 11
that each element of the claim is found, either expressly described or under 12
principles of inherency, in a single prior art reference. See Kalman v. Kimberly-13
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 14
465 U.S. 1026 (1984). 15
16
ANALYSIS 17
18
Rejection under 35 U.S.C. § 103(a) 19
20
The Appellants invented an evaporator having a series of parallel spaced, 21
vertically oriented, refrigerant flow tubes (12) (Specification 5:30), the tubes 22
having opposed surfaces (14) separated by a distance (c) (Specification 5:1-2). A 23
corrugated air fin (16) is located between the opposed surfaces (14) with the 24
corrugations comprising V-shaped fin walls (18) diverging from and joined at a 25
crest (20) having an interior radius (r) (Specification 6:1-6). Each fin wall 26
comprises a louver (22) having a length (l) (Specification 6:6-9). Adjacent crests 27
Appeal 2006-1708
Application 10/186,253

7

(20) are separated by a pitch (p) (Specification 6:13-16). The V-shaped 1
corrugation is determined by a series of defined ranges: 0 < r/c < 0.057, 0.89 < l/c 2
< 1.01, 0.29 < p/c < 0.43 (Specification 12:5-7), p > 4r (Specification 7:20-24, 8: 3
3-5 and 9:5-6; Br. (filed January 26, 2006) 14:1-2 and 18:9-18) and 0.25 mm < r < 4
0.058 mm (Specification 13:26-27). 5
6
We find that Beamer discloses a heat exchanger for maximizing fin 7
efficiency by balancing pressure drop and heat transfer efficiency (Beamer, col. 5, 8
l. 61 to col. 6, l. 39) having parallel spaced, vertically oriented, flow tubes 9
separated by a distance (Beamer, Fig. 4; Beamer Decl. ¶¶ 2-6 and Exhibit 1). 10
Beamer discloses a corrugated air fin (Beamer, Fig. 4) located between the flow 11
tubes with corrugations comprising V-shaped fin walls (28) diverging from and 12
joined at a crest (30) having an interior radius (Beamer, col. 2, ll. 35-37). Each fin 13
wall comprises a louver (34) having a length (Beamer Decl. ¶¶ 2-6 and Exhibit 1). 14
The V-shaped corrugation is disclosed as having values: r/c = 0.034, l/c = 0.89 and 15
p > 4r (Beamer, Fig. 4; Beamer Decl. ¶¶ 2-6 and Exhibit 1). 16
We find that Haussmann discloses optimizing crest pitch (T) and tube 17
spacing (LH) in heat exchangers in order to maximize airside heat transfer 18
efficiency (Haussmann, Fig. 4, 6, and 7; col. 5, l. 65-col. 6, l. 3; col. 7, ll. 1-26). 19
Figure 7 shows pitches (T) ranging from 2-4 mm for a tube spacing (LH) of 9 mm. 20
Haussmann teaches a value for T/LH (equal to p/c of the claimed invention) of 21
0.22 < T/LH < 0.44. 22
Appellants contend that the rejection under 35 U.S.C. § 103(a) is improper 23
because Beamer in view of Haussmann fail to provide some suggestion or 24
motivation to combine the reference teachings, fail to teach or suggest every 25
limitation of the claimed invention and lack a reasonable expectation of success. 26
Appeal 2006-1708
Application 10/186,253

8

Specifically, the Appellants admit Haussmann recognizes the potential advantage 1
of improved performance produced by optimizing certain dimensional ratios, 2
ranges and interrelationships of corrugated fins i.e., crest pitch and tube spacing 3
(Br. 9). However, the Appellants contend that the references do not suggest a 4
motivation for optimizing (Br. 9-10). 5
The Examiner contends the cited references are concerned with thermal 6
performance characteristics of the corrugated fins and provide a motivation that 7
would be recognized by one of ordinary skill in the art (Answer 15-16). 8
The Appellants admit Haussmann recognizes the potential advantage of 9
improved performance produced by optimizing certain dimensional ratios, ranges, 10
and interrelationships of corrugated fins. 11
Specifically, we find that Haussmann teaches optimizing crest pitch (T) and 12
tube spacing (LH) in heat exchangers in order to maximize airside heat transfer 13
efficiency. Haussmann’s reason for optimizing the dimensional ratios is for a 14
different purpose and to solve a different problem than that of the claimed 15
invention. Haussmann suggests optimizing the dimensional ratios to maximize the 16
heat transfer efficiency. It is not necessary that the prior art suggest the 17
combination to achieve the same advantage or result discovered by applicant. 18
Kahn, 441 F.3d at 987, 78 USPQ2d at 1336. It reasonably appears that 19
Haussmann’s disclosure of optimizing crest pitch (T) and tube spacing (LH) in 20
heat exchangers in order to maximize airside heat transfer efficiency would have 21
fairly suggested, to one of ordinary skill in art, using the fin dimensions in 22
Beamer’s heat exchange to obtain that benefit. 23
There is adequate motivation found in the references to optimize the 24
dimensional ratios of the fins in order to maximize airside heat transfer efficiency. 25
Appeal 2006-1708
Application 10/186,253

9

For the above reasons we are not convinced of reversible error in the Examiner's 1
rejection of claim 1. 2
3
Unexpected Results 4
The Appellants attest nonobviousness in the form of unexpected results in 5
the affidavit of Puneet Saxena. Saxena states that the elimination of metal 6
evaporator screens was a change made possible by the new fin design and is an 7
unexpected result of the fin design (Saxena Decl. ¶¶ 6-7). 8
The Examiner contends the stated unexpected results have not been 9
compared to the closest prior art (Answer 13). 10
In addition, the Appellants contend that the rejection under 35 U.S.C. § 11
103(a) is improper because the invention produced unexpected results that 12
contradict a reasonable expectation of success (Br. 10; Saxena Decl. ¶¶ 5-8). The 13
Examiner contends that the references had a different motivation for combining 14
and that there was a reasonable expectation of successfully optimizing thermal 15
performance (Answer 16). 16
Evidence showing unexpected results must be shown to be unexpected as 17
compared with in the closest prior art. In re Baxter, 952 F.2d. at 392; 21 USPQ2d 18
at 1285. The Appellants have made a comparison between Assignee’s previous 19
evaporator with U shaped fins and a metal screen, and the claimed evaporator with 20
V shaped fin without the metal screen. The Appellants have not made a 21
comparison between an evaporator with V shaped fins, such as is disclosed in 22
Beamer, and the claimed evaporator with V shaped fins. The Assignee’s previous 23
evaporator with U shaped fins is not the closest prior art and cannot be used to 24
establish unexpected results. 25
Appeal 2006-1708
Application 10/186,253

10

Commercial Success 1
The Appellants attest nonobviousness in the form of commercial success in 2
the Affidavit of Mohinder S. Bhatti. Mr. Bhatti states the disclosed design 3
achieved great commercial success in the form of sales in a relatively short time, 4
and that the success is directly attributable to the particular fin geometry (Bhatti 5
Decl. ¶ 19). Bhatti states the new fin design eliminated the need for a metal screen 6
that had previously been used to block water. Bhatti states that a presentation to 7
General Motors was made in May 2000 and that by October 2000, General Motors 8
went into production of the evaporator with the new fin design and that this rapid 9
implementation is telling proof of commercial success (Bhatti Decl. ¶ 22). In 10
addition, Bhatti attests that there was an addition of a new customer, Nummi and 11
that TRIPAC International Inc. wishes to license the technology for use in future 12
Australian (Bhatti Decl. ¶ 22). 13
We do not find that the Declaration persuasively establishes commercial 14
success of the claimed invention. In that regard, the Declaration provides no data 15
concerning whether the amount of sales of the evaporators with the claimed fin 16
design represents a substantial share in this market. On the basis of the limited 17
information provided by the Declarant, we conclude that the Appellants have failed 18
to persuasively establish commercial success. 19
Even assuming that the Appellants had sufficiently demonstrated 20
commercial success, that success is relevant in the obviousness context only if it is 21
established that the sales were a direct result of the unique characteristics of the 22
claimed invention, as opposed to other economic and commercial factors unrelated 23
to the quality of the claimed subject matter. See Cable Elec., 770 F.2d at 1027, 24
226 USPQ at 888. 25
Appeal 2006-1708
Application 10/186,253

11

The Declarations contain only assertions that the fin design claimed in the 1
subject application has achieved commercial success. This alone is insufficient to 2
establish the required nexus. Claims are not technical descriptions of the disclosed 3
inventions but are legal documents like the descriptions of lands by metes and 4
bounds in a deed which define the area conveyed but do not describe the land. 5
Because of this characteristic of claims, the commercial success of a machine 6
"claimed" may be due entirely to improvements or modifications made by others to 7
the invention disclosed in the application for patent. Such success is not pertinent 8
to the nonobviousness of the advantages inherent in what is specifically disclosed 9
in the application are not to be considered in determining nonobviousness. In re 10
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 625 n.5 11
(Fed. Cir. 1985). Furthermore, the Appellants have failed to submit any factual 12
evidence that would demonstrate the nexus between the sales and the claimed 13
invention-for example, an Affidavit from the purchaser explaining that the product 14
was purchased due to the claimed features. In the present case, the sales may have 15
been due to lower manufacturing costs, the market position of the Appellants or the 16
prior relations between the other companies. In sum, the Appellants simply have 17
not carried their burden to persuasively establish that a nexus existed between any 18
commercial success and the novel features claimed in the application. 19
20
Rejection under 35 U.S.C. § 102(b) 21
The third issue is whether Yamamoto discloses fin walls having a V-shape. 22
We find that Yamamoto discloses a heat exchanger having a series of parallel 23
spaced, vertically oriented, flow tubes (102) (Yamamoto, Fig. 6) having opposed 24
surfaces (102A) separated by a distance (Hf) (Hf is equal to c of the claimed 25
invention) ranging from 3 mm to 10 mm (Yamamoto, col. 4 ll. 12-15). A 26
Appeal 2006-1708
Application 10/186,253

12

corrugated air fin (101) is located between the opposed surfaces with the 1
corrugations comprising fin walls (111) diverging from and joined at a crest having 2
an interior radius ranging from 0.1 mm to 0.36 mm (Yamamoto, Fig. 10, col. 6, ll. 3
58-60, outer radius R minus t). Each fin wall comprises a louver (103) having a 4
length (L) (L is equal to l of the claimed invention) ranging from 2.28 mm to 9.9 5
mm (Yamamoto, Fig. 6, col. 4, ll. 12-15). Adjacent crests are separated by a pitch 6
(Yamamoto, col. 3, ll. 62-68) equal to 2.25 mm (Yamamoto, col. 7, ll. 6-7). Four 7
times the radius (4r) is equal to 1.28 mm. The corrugated fin has defined ranges: 8
0.1 mm < r < 0.36 mm, 0.76 < l/c < 0.99 and p > 4r (2.25 mm > 1.28 mm). 9
Appellants contend that the rejection under 35 U.S.C. § 102(b) is improper 10
because Yamamoto does not disclose or suggest all of the limitations recited in the 11
claims. More specifically, Appellants contend that Yamamoto fails to teach or 12
otherwise disclose V-shaped fin walls (Br. 14). The Examiner contends 13
Yamamoto discloses V-shaped fin walls according to the Appellants’ definition of 14
V-shaped (Answer 18). 15
The Appellants have clearly defined a V-shaped fin wall to be where the 16
pitch is more than four times the radius (p > 4r) and that a U-shaped fin wall is 17
where the pitch is equal to four times the radius (p = 4) (Specification 7:20-24, 18
8: 3-5, and 9:5-6; Br. 14:11-13 and 19:12-14). Yamamoto discloses a pitch value 19
of p = 2.25 mm and a radius value ranging from r = 0.1 mm to r = 0.36 mm. 20
Yamamoto satisfies the limitation of p > 4r for both the upper and lower value for r 21
(2.25 mm > 0.4 mm; 2.25 mm > 1.28 mm). Thus, we are not convinced of 22
reversible error in the Examiner’s rejection of claim 2 over Yamamoto. 23
Appeal 2006-1708
Application 10/186,253

13

CONCLUSION OF LAW 1
On the record before us, Appellants have not shown that the Examiner erred 2
in holding that Beamer as modified by Haussmann provides adequate reason to 3
combine the teachings of Beamer and Haussmann, fails to establish a reasonable 4
expectation of success, or fails to teach or suggest each and every claim limitation 5
of claim 1. The Appellants have also failed to set forth sufficient objective 6
evidence in order to rebut the Examiner’s case of obviousness. Finally, Appellants 7
have not shown that Yamamoto fails to anticipate a V-shaped fin wall as recited in 8
claim 2. 9
10
DECISION 11
The rejection under 35 U.S.C. § 103(a) of claim 1 as being unpatentable 12
over Beamer in view of Haussmann is affirmed. The rejection under 35 U.S.C. § 13
102(b) of claim 2 as being anticipated Yamamoto is affirmed. 14
No time period for taking any subsequent action in connection with this 15
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 16
AFFIRMED 17
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hh 23
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DELPHI TECHNOLOGIES, INC. 25
M/C 480-410-202 26
PO BOX 5052 27
TROY, MI 48007 28