GOTTERBARM, Achim et al.

Patent Trials and Appeals Board

Dec 23, 2019

15103193 - (D) (P.T.A.B. Dec. 23, 2019)

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.
15/103,193 06/09/2016 Achim GOTTERBARM 5200.P0110US 4390
23474 7590 12/23/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
HOPKINS, JENNA M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ACHIM GOTTERBARM, RONALD LUTZ, JEAN EL HAJAL,
and MANFRED KNAB

Appeal 2019-003628
Application 15/103,193
Technology Center 3700
____________

Before JENNIFER BAHR, EDWARD A. BROWN, and
WILLIAM CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Wieland-
Werke AG. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 1 illustrates the claimed
subject matter.
1. A metal heat exchanger tube, comprising integral
fins which are formed on the outside of the tube and have a fin
foot, fin flanks and a fin tip, wherein the fin foot protrudes
radially from the tube wall, and a channel in which spaced-apart
additional structures are arranged is formed between the fins,
said channel having a through flow cross-sectional area
perpendicular to the course of the channel, said additional
structures extending radially from the fin foot and transversely
with respect to the course of the channel from one fin foot to an
adjacent fin foot,
characterized
in that the additional structures divide the channel
between the fins into segments, and
in that the additional structures reduce the throughflow
cross-sectional area of the channel between two fins locally by
at least 60% and thereby at least limit a fluid flow along the
direction of the course of the channel during operation.

Appeal Br. (Claims App.).

REJECTIONS
1. Claims 1–6, 13, 15, and 16 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Lu (US 2007/0034361 A1, published Feb. 15,
2007). Final Act. 2.
2. Claims 7–11 are rejected under 35 U.S.C. § 103 as unpatentable
over Lu and Chiang (US 5,203,404, issued Apr. 20, 1993). Final Act. 12.
3. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over Lu and Cao (US 9,038,710 B2, issued May 26, 2015). Final Act. 16.
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4. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable
over Lu and Kastner (US 4,796,693, issued Jan. 10, 1989). Final Act. 17.

ANALYSIS
New Ground of Rejection
Independent claims 1 and 16 both recite “a channel in which spaced-
apart additional structures are arranged is formed between the fins,”
characterized “in that the additional structures reduce the throughflow cross-
sectional area of the channel between two fins locally by at least 60%.”
Appeal Br. 1 (Claims App.) (emphasis added). After considering the record
before us, we find the meaning of claims 1 and 16 unclear for the following
reasons.
First, it is unclear in relation to what “the additional structures reduce
the throughflow cross-sectional area of the channel between two fins locally
by at least 60%.” The words “reduce . . . locally by” necessarily require a
comparison between a first condition and a second condition. However,
claims 1 and 16 do not specify what other “throughflow cross-sectional area
of the channel” “the throughflow cross-sectional area of the channel between
two fins” is to be compared to.
Second, the meaning of the term “locally” as recited in this limitation
is insufficiently clear. For example, it is unclear if the inclusion of “locally”
means that, at some location along “the course of the channel” formed
between the fins, the corresponding throughflow cross-sectional area of the
channel is reduced by at least 60% as compared to the throughflow cross-
sectional area of the same channel at any other location of the channel
without the additional structures. As another example, it is unclear whether
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this comparison may be with respect to the maximum throughflow cross-
sectional area of the same channel.
In the Reply Brief, Appellant provides annotated versions of the
structures shown in Figures 1 and 5 of Lu, both depicting the “[t]hrough
flow cross sectional area at a location without lateral fins 4” and the
“[t]hrough flow cross sectional area at a location with lateral fins 4.” Reply
Br. 3 (emphasis added). Appellant states that Lu’s “lateral fins 4 reduce the
through flow cross-sectional area of the channel of Lu locally.” Id. at 4.
However, Appellant contends that “the reduction is significantly less than
60% as can be seen through a comparison of the areas with hatching.” Id.
Appellant appears to implicitly contend that the limitation “locally by at
least 60%” means relative to the “maximum through flow cross-sectional
area” along the course of the channel. Id. However, claims 1 and 16 do not
recite this specific relationship. Additionally, Appellant does not direct us
to, nor do we discern, any disclosure in Appellant’s application that clearly
supports this being the broadest reasonable construction for claims 1 and 16.
As another example, it is unclear whether the term “locally” recited in
claims 1 and 16 means that, at some location along “the course of the
channel” that is formed between the fins, the corresponding through flow
cross-sectional area of the channel is reduced by at least 60% in a “local
region” that includes the additional structures and the portion of the channel
defined between the fins by the additional structures, even if the through
flow cross-sectional area of the channel at that location is not reduced by at
least 60% as compared to the through flow cross-sectional area of the
channel at another location of the channel without the additional structures.
This situation can be visualized by referring to Appellant’s modified version
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of Figure 1 of Lu. See Reply Br. 3. This annotated figure shows that at a
generally middle region of the channel (in the vertical, radial direction of the
channel), the lateral fins significantly reduce the cross-sectional area by
forming a necked region of the channel. At the necked region, the lateral
dimension of the channel between the lateral fins is substantially reduced as
compared to the lateral dimension of the channel either above or below the
lateral fins. Appellant asserts that “[t]he reduction of the cross-sectional
area in Lu is in the order of 10% and certainly no more than 20%.” Reply
Br. 4. Even if this estimation may be reasonable, it, nonetheless, appears to
be premised on the term “locally” being construed to mean as compared to a
location along the course of the channel at which the depicted lateral fins are
not present. As discussed above, however, Appellant does not direct us to
any disclosure that clearly supports this construction for claims 1 and 16.
A claim is properly rejected as indefinite under 35 U.S.C. § 112(b), if,
after applying the broadest reasonable interpretation in light of the
specification, the metes and bounds of a claim are not clear because it
“contains words or phrases whose meaning is unclear.” See In re Packard,
751 F.3d 1307, 1310 (Fed. Cir. 2014). Here, claims 1 and 16 contain
language having an unclear meaning. Particularly, we find that the meaning
of the recitation ““the additional structures reduce the throughflow cross-
sectional area of the channel between two fins locally by at least 60%” is
subject to different plausible interpretations, and thus, is vague and
indefinite. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
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the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”). Thus, we conclude that claims 1 and 16 and their dependent
claims 2–15 fail to comply with the requirements of 35 U.S.C. § 112(b).
Therefore, pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of
rejection of claims 1–16 under 35 U.S.C. § 112(b).
Rejections 1–4
Because we have determined that claims 1–16 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. § 102(a)(1) or
103, because doing so would require speculation on our part as to the scope
of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011)
(holding that the Board erred in affirming an anticipation rejection of
indefinite claims); In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding
that the Board erred in affirming an obviousness rejection of indefinite
claims because the rejection was based on speculative assumptions as to the
meaning of the claims).2 Thus, we do not sustain the rejection of: claims
16, 13, 15, and 16 as anticipated by Lu; claims 7–11 as unpatentable over Lu
and Chiang; claim 12 as unpatentable over Lu and Cao; or claim 14 as
unpatentable over Lu and Kastner.3

2 Appellant’s position is that Lu does not disclose or suggest the limitation
“the additional structures reduce the throughflow cross-sectional area of the
channel between the two fins locally by at least 60%,” as recited in claims 1
and 16. Appeal Br. 3–6.
3 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the references applied in the rejections.
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DECISION SUMMARY

Claims
Rejected
35 U.S.C. §

Reference(s)/Basis Affirmed Reversed New
Ground
1–6, 13,
15, 16
102(a)(1) Lu 1–6, 13,
15, 16

7–11 103 Lu, Chiang 7–11
12 103 Lu, Cao 12
14 103 Lu, Kastner 14
1–16 112(b) 1–16
Overall
Outcome
1–16 1–16

FINALITY OF DECISION AND RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision,
[Appellant], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, [Appellant] may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.

Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)