Ex Parte Nelson et alDownload PDFPatent Trial and Appeal BoardDec 29, 201712317859 (P.T.A.B. Dec. 29, 2017) 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. 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 2 Appeal 2016-004822 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 3 Appeal 2016-004822 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 4 Appeal 2016-004822 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. 5 Appeal 2016-004822 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 6 Appeal 2016-004822 Application 12/317,859 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 7 Copy with citationCopy as parenthetical citation