Ex Parte Fijas et alDownload PDFPatent Trial and Appeal BoardJan 11, 201611722042 (P.T.A.B. Jan. 11, 2016) Copy Citation 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. 11/722,042 03/11/2008 David F. Fijas 24904.1 5702 1342 7590 01/11/2016 PHILLIPS LYTLE LLP One Canalside 125 Main Street BUFFALO, NY 14203 EXAMINER JONES, MELVIN ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 01/11/2016 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 DAVID F. FIJAS and TIMOTHY J. GALUS ____________ Appeal 2013-0105621,2 Application 11/722,042 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and AMEE E. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 6, 7, 9, 10, 14–24, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. According to Appellants, the invention relates to “a compressed air aftercooler including integral passive moisture separation means for 1 Our decision references Appellants’ Specification (“Spec.,” filed June 18, 2007), Appeal Brief (“Appeal Br.,” filed Apr. 15, 2013), and Reply Brief (“Reply Br.,” filed Sept. 5, 2013), as well as the Examiner’s Answer (“Answer,” mailed July 5, 2013). 2 “The real party in interest . . . is API Heat Transfer Inc.” Appeal Br. 1. Appeal 2013-010562 Application 11/722,042 2 removing entrained water from cooled compressed air before delivery for use.” Spec. 1, ll. 9–11. Claims 1, 14, 23, and 27 are the only independent claims on appeal. We reproduce below claim 27 as representative of the appealed claims. 27. An air cooled aftercooler, comprising: a) a housing containing a tube and header heat exchanger cooling hot compressed air during passage therethrough, said housing having an inlet intaking said hot compressed air, an exhaust plenum portion receiving cooled air having condensed moisture from said tube and header heat exchanger, said exhaust plenum portion positioned adjacent and external to said tube and header heat exchanger, and an exhaust plenum outlet exhausting said cooled air from said housing; b) wherein said tube and header heat exchanger has a bottom wall and said exhaust plenum portion has a bottom wall; and c) wherein said bottom wall of said exhaust plenum portion is positioned lower than said bottom wall of said tube and header heat exchanger, thereby forming a recessed trough collecting said condensed moisture from said cooled air; said recessed trough having a concave inner surface and comprising moisture separating material positioned within said trough, said moisture separating material reducing air flow in said recessed trough and said trough reducing reentrainment into said cooled air of said collected condensed moisture. Appeal Br., Claims App. Appeal 2013-010562 Application 11/722,042 3 REJECTIONS AND PRIOR ART3 The Examiner rejects claims 21, 22, and 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.4 The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as unpatentable over Mann (US 4,600,416, iss. July 15, 1986). The Examiner rejects claims 1, 6, 9, 10, 14–24 under 35 U.S.C. § 103(a) as unpatentable over Mann and Hynes (US 3,963,466, iss. June 15, 1976).5 The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as unpatentable over Mann, Hynes, and Wang (US 5,746,791, iss. May 5, 1998). See Answer 5–14. ANALYSIS Written Description Rejection The Examiner rejects claims 21, 22, and 27 as failing to comply with the written description requirement. See Answer 4–5. Whether a 3 The Examiner withdraws claim 23’s rejection under 35 U.S.C. § 112, second paragraph (see Answer 4), made in the Final Office Action dated October 16, 2012. 4 Although the rejection also refers to claim 26, the Examiner and Appellants indicate that the claim is canceled. See Appeal Br., Claims App., Answer 3. 5 Although the heading on page 7 of the Examiner’s Answer does not reference claim 16, claim 16 is rejected based on Mann and Hynes. See Answer 12. Further, although the rejection also refers to claims 25 and 26, the Examiner and Appellants indicate that these claims are canceled. See Appeal Br., Claims App., Answer 3. Appeal 2013-010562 Application 11/722,042 4 specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact. Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). While there is no in haec verba requirement, claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, an applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). In this case, Appellants seek to rely (see Appeal Br. 10–12) on such broad disclosures as “heat exchanger[s] [] known in the art, for example, a conventional bar-and-plate heat exchanger” (Spec. 3, ll. 24–25) to support the specific claim limitations of “a plate fin heat exchanger, a plate-and- frame heat exchanger or a hybrid plate heat exchanger” (id. at Claims App. (claims 21, 22)) and “a tube and header heat exchanger” (id. at Claims App. (claim 27)). We agree with the Examiner that the Specification does not support all of the limitations of claims 21, 22, and 27. See Answer 4–5, 14– 15. Appellants’ reference to heat exchangers known in the art, and a subsequent identification of known heat exchangers (see Appeal Br. 11), does not establish that Appellants possessed the invention recited in these Appeal 2013-010562 Application 11/722,042 5 claims at the time Appellants filed the application. We therefore sustain the rejection of claims 21, 22, and 27 under 35 U.S.C. § 112, first paragraph. Obviousness rejections Claim 27 Claim 27 requires a heat exchanger. See Appeal Br., Claims App. After reviewing the Examiner’s findings and conclusions (see, e.g., Answer 5–7, 15–19), and Appellants’ arguments (see, e.g., Appeal Br. 13–15; see also, e.g., Reply Br. 3–4), we agree with Appellants that the Examiner fails to establish that Mann discloses a heat exchanger. For example, we note that Mann’s “portions 48” on which the Examiner relies to disclose the heat exchanger (Ans. 5) is described in Mann as “a mass or pad 48 of wire mesh fibers of a type adapted to coalesce water or oil vapor passing therethrough into vapor droplets,” and does not state that any heat exchange occurs. Mann, col. 2, ll. 32–35. In response to Appellants’ arguments that pad 48 is not a heat exchanger, the Examiner essentially states that any device “that[,] based on the principles of thermodynamics[,] [allows] heat [to] travel[] from a hot body to a cool body towards an even temperature” meets the requirements of being a “heat exchanger.” Answer 18. We are unwilling to extend the definition of heat exchanger to the extent the Examiner does so. Thus, based on the foregoing, we do not sustain the rejection of claim 27. Claims 1, 6, 7, 9, 10, 14–24 Each of the remaining claims requires a heat exchanger. See Appeal Br., Claims App. Inasmuch as the Examiner’s rejections of these claims rely on Mann to disclose a heat exchanger, and we determine above that the Appeal 2013-010562 Application 11/722,042 6 Examiner fails to establish that Mann discloses a heat exchanger, we do not sustain the rejections of claims 1, 6, 7, 9, 10, and 14–24. Further, we note that because Mann does not disclose a heat exchanger, the Examiner’s purported rationales for replacing Mann’s pad 48 with Hynes’s heat exchanger lacks the requisite rational underpinnings required to support the rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). DECISION We AFFIRM the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, of claims 21, 22, and 27. We REVERSE the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 6, 7, 9, 10, 14–24, and 27. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART msc Copy with citationCopy as parenthetical citation