Lexia Kironn et al.Download PDFPatent Trials and Appeals BoardJul 30, 201914615777 - (D) (P.T.A.B. Jul. 30, 2019) 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. 14/615,777 02/06/2015 LEXIA KIRONN 79753US01 (14-463) 1888 52237 7590 07/30/2019 Bachman & LaPointe, P.C. 900 Chapel St., Suite 1201 New Haven, CT 06510 EXAMINER FLANIGAN, ALLEN J ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 07/30/2019 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 LEXIA KIRONN, WENDELL V. TWELVES, JR., EVAN BUTCHER, and JOE OTT1 __________ Appeal 2019-001499 Application 14/615,777 Technology Center 3700 __________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–3, 9, 10, 16, and 17. Claims 4–8, 11– 15, and 18–20 have been withdrawn from consideration. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 41.50(b). 1 “The real party in interest in this appeal is United Technologies Corporation.” App. Br. 2. We refer to the appealing party as “Appellant.” Appeal 2019-001499 Application 14/615,777 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to heat exchangers and, more particularly, to an additively manufactured heat transfer tube that follows a non-linear path though a plurality of fins.” Spec. ¶ 1. Claims 1 and 10 are independent. Claim 10 is illustrative of the claims on appeal and is reproduced below. 10. A heat exchanger system, comprising: an additively manufactured plurality of fins arranged in to form flow passages for a first fluid along an air flow direction, the plurality of fins each have a leading edge and a trailing edge, the plurality of fins stacked to define a height direction, a direction parallel to the leading edge is defined as a row direction, and a direction perpendicular to the height direction and the row direction is defined as the air flow direction; and an additively manufactured heat transfer tube that extends through said plurality of additively manufactured fins transverse to the air flow direction, said additively manufactured heat transfer tube follows a non-linear path through said plurality of additively manufactured fins to communicate a second fluid and form a cross-flow heat exchanger. REFERENCES Griffin et al. US 4,474,001 Oct. 2, 1984 Waldman et al. US 2014/0360698 A1 Dec. 11, 2014 Appeal 2019-001499 Application 14/615,777 3 THE REJECTIONS ON APPEAL2 Claims 1–3, 9, and 10 are rejected under 35 U.S.C. § 102(a)(l) as anticipated by Waldman. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Waldman and Griffin. ANALYSIS Independent claim 10 recites similar limitations as those of independent claim 1, except that claim 10 recites “an additively manufactured plurality of fins” rather than “a plurality of fins,” as recited in claim 1. Appeal Br. 14–15 (Claims App.). Thus, with the exception of this claim language, the claim limitations referred to below are that of both claims 1 and 10. The Examiner relies on Figures 9 and 10 of Waldman as anticipating all the limitations of claim 10. See Final Act. 2, 3. We note, however, that the fins shown in Figures 9 and 10 of Waldman are annular shaped. Claim 10, on the other hand, recites a plurality of fins “each hav[ing] a leading edge” and “a direction parallel to the leading edge.” The Examiner does not make clear how an arcuate leading edge, as depicted by Waldman’s annular fin, can have “a direction parallel” thereto, or how one skilled in the art would understand what that direction is. See App. Br. 9–10; Reply Br. 1–2. Thus, the Examiner has not established by a preponderance of the evidence that Waldman anticipates claims 1–3, 9, and 10. 2 Because Appellant’s application was filed after September 16, 2012, the effective date of the amendments to 35 U.S.C. § 103 enacted by the Leahy- Smith America Invents Act (AIA), the AIA version of the statute applies. See AIA, Pub. L. No. 112–29, § 4(e), 125 Stat. 284, 297 (2011). Appeal 2019-001499 Application 14/615,777 4 However, upon further investigation of Waldman, we find that Figures 6A, 6B, 7, and 8 of Waldman disclose fins that have a straight or linear leading edge, and hence can have “a direction parallel to the leading edge” as recited. Paragraph 41 of Waldman (which addresses the heat exchanger depicted in Figs. 4A–4C) states, “[t]he integral heat transfer fins may be generally annular in shape . . . or may have other shapes.” Paragraph 47 of Waldman provides an indication of what these “other shapes” may be stating that “identical” heat exchanges depicted in Figures 6A, 6B, 7, and 8 have fins that “are substantially square or rectangular.” Paragraphs 48 and 49 of Waldman describe the heat exchangers depicted in Figures 9 and 10 (relied on by the Examiner) as also being “identical” to the heat exchanger depicted in Fig. 4 (with the exception of a curved tube). Based on such disclosures, we understand Waldman as teaching relative identity, or equivalence, between the variously disclosed heat exchangers, including their annular-shaped, square-shaped, or rectangular-shaped fins. The Supreme Court explains that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). We have also been instructed that an “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). Accordingly, we conclude that it would have been obvious to substitute the known equivalent of the square-shaped fins or the rectangular- shaped fins of Figures 6A, 6B, 7, and 8 of Waldman for the annular-shaped fins of Figures 9 and 10 of Waldman. This is because such a substitution is Appeal 2019-001499 Application 14/615,777 5 merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 50–51 (1966)). Appellant further argues that “the rings [of Waldman] are canted and otherwise biased around the tubes in a manner which does not provide fins transverse to the air flow direction as recited and claimed by Appellant.” App. Br. 10. This argument is unpersuasive. First, claim 10 recites a “tube that extends . . . transverse to the air flow direction,” not fins that extend transverse to the air flow direction.3 Second, whether the fins are canted (Waldman Figure 9) or not (Waldman Figure 10), Figure 10 of Waldman clearly shows arrows 1022, which identify “the cooling flow direction.” Waldman ¶ 49. Tubes 902 and 1002 in Figures 9 and 10, respectively, of Waldman extend “transverse to the air flow direction” as recited. Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection. We reject independent claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over Waldman. However, we leave the disposition of dependent claims 2, 3, 9, 16, and 17 for the Examiner’s further consideration in the event of further prosecution. Although the Board is authorized to reject claims under 37 C.F.R. 3 The Examiner states that disposing fins “‘transverse to the air flow direction’ as Appellants argue, would make the device inoperable.” Ans. 6. Appeal 2019-001499 Application 14/615,777 6 § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. DECISION For the above reasons, we REVERSE the decision of the Examiner to reject claims 1–3, 9, and 10 under 35 U.S.C. § 102(a)(1) as being anticipated by Waldman. Because the Examiner’s rejection of claims 16 and 17 under 35 U.S.C. § 103 as being unpatentable over Waldman and Griffin relies, in part, on the anticipation rejection of parent claim 10, we likewise REVERSE the Examiner’s rejection of these claims. However, we enter a NEW GROUND OF REJECTION of claims 1 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Waldman. As indicated above, although we decline to address dependent claims 2, 3, 9, 16 and 17 under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we leave the patentability determination of these claims to the Examiner. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 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 Appeal 2019-001499 Application 14/615,777 7 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 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 the Manual of Patent Examining Procedure § 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) Copy with citationCopy as parenthetical citation