Ex Parte Nelson et al

Patent Trial and Appeal Board

Dec 29, 2017

12317859 (P.T.A.B. Dec. 29, 2017)

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.
12/317,859 12/30/2008 N. D. Nelson 07E285 (RAYN01-70285) 6515
18510 7590 01/03/2018
Dnoket Plerk-Ravthenn/MWM
EXAMINER
P.O.Drawer 800889
Dallas, TX 75380
RUSSELL, DEVON L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte N. D. NELSON, VINCENT J. MILANO,
GREGORY G. BENINATI, CAMERON B. GODDARD,
MATTHEW D. THOREN, and EDWARD I. HOLMES
Appeal 2016-004822
Application 12/317,859
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-004822
Application 12/317,859
STATEMENT OF THE CASE
This is a response to Appellants’ Request for Rehearing (“Request” or
“Req.”) of the Board’s Decision of August 25, 2017 (“Decision” or “Dec.”).
Requests for Rehearing are limited to matters overlooked or misapprehended
by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. For
the reasons set forth below, we deny the request.
OPINION
Claims 2 and 16—Indefinite Under
pre-AIA 35 U.S.C. § 112, second paragraph
In the Decision we entered a new ground of rejection of claims 2 and
16 as indefinite under pre-AIA 35 U.S.C. § 112, second paragraph. Dec. 3—
5. Claim 2 depends from claim 1 and additionally recites “wherein a cell
size for the aluminum foam wick is selected based upon a desired capillary
action.” App. Br. A2 (Claims App’x). Claim 16 also depends from claim 1
and additionally recites “wherein the aluminum foam wick is formed to give
the central cavity region the desired size and shape.” Id. at A4. We
determined, for claim 2, that:
Neither the claim nor Specification provides an objective way to
determine from the cell size of a particular aluminum foam wick
whether that cell size was selected based on a desired capillary
action, or for some other reason, such as cost savings or ease of
manufacture. Thus, the only way to know if a specific heat
exchanger infringes claim 2 is to determine the designer’s
subjective reason for selecting the particular cell size of the wick.
Dec. 4. We reached a similar conclusion for claim 16. Id. at 4—5.
Appellants seek rehearing of this rejection. According to Appellants,
it is incorrect that claims 2 and 16 require “insight into the motivation of
[the] designer” because “[sjimilar language has been found amenable to
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Application 12/317,859
construction, with no suggestion that the reductio ad absurdum argument
that designer motivation is somehow implicated.” Req. 3, 3 n.l (citing In re
Gerson, 98 F.3d 1356, 1996 WL 508821 at *1, *4 (Fed. Cir. 1996)).
Appellants also assert that “[t]he language from claims 2 and 16 merely
requires correspondence, respectively, of ‘a cell size for the aluminum foam
wick’ to ‘a desired capillary action,’ and of ‘the [form of the] aluminum
foam wick ... to ... the desired size and shape [of the central cavity
region].”’ Id.
We are not persuaded that we overlooked or misapprehended any
matter in rejecting claims 2 and 16 as indefinite. First, we do not agree that
the language at issue in Gerson is similar to the language at issue in claims 2
and 16. Gerson concerned the patentability of process claims, and the
language that Appellants direct our attention to—“selecting one of the
coding modes as a function, at least in part, of periodicity of an input speech
signal”—is a step in a claimed process. Gerson, 1996 WL 508821, at *1.
Process claims are practiced when each step in the process is performed, and
performance of the steps may be done by a person. Lucent Techs, v.
Gateway, Inc., 580 F.3d 1301, 1317 (Fed.Cir.2009). Here, however, claims
2 and 16 are apparatus claims, and apparatus claims are infringed only when
the apparatus itself embodies the claim. See Cross Medical Products, Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311—1312 (Fed. Cir. 2005)
(“To infringe an apparatus claim, the device must meet all of the structural
limitations.” (internal citations omitted)). Appellants do not explain in their
request for rehearing how one would be able to determine whether a
particular heat exchanger infringes claim 2 or 16 based only on the heat
exchanger’s structure. Instead, Appellants assert that the disputed claim
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Application 12/317,859
language “merely requires correspondence” between wick cell size and
“desired” capillary action for claim 2, and “the [form of the] aluminum foam
wick ... to ... the desired size and shape [of the central cavity region]” for
claim 16. However, Appellants’ proposed construction departs from the
actual language of these claims. Further, Appellants do not explain where
evidence of this “correspondence” may be found. Appellants do little more
than repeat the claim language, and shed little, if any, light on our
fundamental concern that one cannot determine from a particular wick cell
size in a heat exchanger whether the heat exchanger infringes claim 2
because one cannot determine from a particular aluminum wick whether its
cell size was “selected based upon a desired capillary action,” or not. To the
extent that Appellants contend that claim 2 calls for a cell size that
inherently exhibits a particular capillary action, we disagree, because that is
not what claim 2 recites. The same analysis can be applied with respect to
claim 16 as well. Appellants bear the burden of precise claim drafting under
§112, second paragraph, and during prosecution is the appropriate time to
resolve ambiguities. In re Morris, 127 F. 3d 1048, 1056 (Fed. Cir. 1997); In
re Packard, 751 F.3d 1307, (Fed. Cir. 2014).
For the above reasons, we deny Appellants’ request for rehearing of
this rejection.
Claims 1—3, 6, 9, 10, 12, and 16—Unpatentable over Jin-Cherng and Meng
Appellants also seek rehearing of our affirmance of the Examiner’s
rejection of claims 1—3, 6, 9, 10, 12, and 16 as unpatentable over Jin-Cherng
and Meng. First, Appellants take issue with our ship-in-the-bottle analogy
(Dec. 6), asserting that it is unsupported by record evidence. Req. 4. In
doing so, Appellants apparently read the analogy out of context. As stated in
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Application 12/317,859
the Decision, we were addressing Appellants’ challenge to the Examiner’s
reason to combine Jin-Chemg Figure 1—which illustrates a heat exchanger
comprising a wick with the shape recited in claim 1—with Jin-Chemg
Figure 4—which illustrates a heat exchanger comprising a vapor chamber
formed from two opposed plates, as recited in claim 1. Dec. 5—6. The
Examiner stated that it would have been obvious to form the heat exchanger
of Figure 1 with the two-plate constmction of Figure 4 “in order to allow
easy access to the interior cavities for wick installation before sealing.” Id.
at 5 (quoting Final Act. 2—3); see also Ans. 2—3. We agreed, reasoning that
gaining access to the inside cavity of a heat exchanger “would be facilitated
by assembling the cavity from two pieces (the cavity being accessed before
assembling the two pieces),” in much the same way as “it would be easier to
put a ship in a bottle if the bottle could first be separated into two pieces and
later reassembled.” Id. at 6. The analogy was provided to illustrate the
unremarkable notion that it is generally easier to insert something into a
larger opening than a smaller—or no—opening.1 It was not a separate
finding requiring evidentiary support, but rather an analogy meant to
illustrate the soundness of the Examiner’s articulated reasoning for
combining the references. As such, we need not cite evidence “that it
would, in fact, ‘be easier to put a ship in a bottle if the bottle could first be
separated into two pieces and later reassembled.’” Req. 4 (quoting Dec. 6).
See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328—29 (Fed.
Cir. 2009) (holding that an examiner's reasoning “may include recourse to
1 The distinction illustrated in the analogy is actually less striking than the
distinction between the Figure 1 and Figure 4 embodiments, as the single­
piece case shown in Figure 1 has no opening at all.
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Application 12/317,859
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion”). Accordingly, our use of this analogy without additional
evidentiary support does not constitute a matter misapprehended or
overlooked by the Board.
We have considered Appellants’ remaining arguments in support of
the Request, but find them unpersuasive. First, Appellants take issue with
our reliance on Meng. Req. 5—7. In the Decision we agreed with the
Examiner that Meng supports the stated reason to combine, because Meng
teaches that aluminum foam wicks may indeed be formed separately from
the casing and later inserted into the casing. Dec. 6 (citing Meng 118).
Appellants assert that Meng’s aluminum-foam wick differs structurally from
the claimed aluminum-foam wick and “is thus unrelated to the claimed
structure, leaving a missing link in the Decision’s reasoning.” Req. 7. But
Meng is not relied upon for the claimed wick structure; that teaching is
found in Jin-Chemg Figure 1. Final Act. 2—3. In other words, Jin-Chemg
Figure 1 provides the purported “missing link.” Appellants also criticize the
Decision because it is “explicitly speculative” in that it states that installing a
pre-manufactured wick into a heat-exchanger cavity “would likely be”
facilitated by the casing being made from two pieces that are separate prior
to installation. Req. 7 (citing Dec. 6). But “[ojbviousness does not require
absolute predictability of success.” In re O'Farrell, 853 F.2d 894, 903 (Fed.
Cir. 1988). Instead, “all that is required is a reasonable expectation of
success.” Id. at 904 (internal citations omitted). Appellants’ remaining
argument amounts to an expression of disagreement with the Decision. Reg.
7—8. Merely expressing disagreement with a decision, however, is not
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appropriate in a request for rehearing. See 37 C.F.R. § 41.52(a)(1) (limiting
requests for rehearing to “points believed to have been misapprehended or
overlooked by the Board”).
DECISION
For the above reasons, Appellants’ request for rehearing is denied.
DENIED
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