Lexia Kironn et al.

Patent Trials and Appeals Board

Jul 30, 2019

14615777 - (D) (P.T.A.B. Jul. 30, 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.
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15, and 18–20 have been withdrawn from consideration.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.”
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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

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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).
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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
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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.
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§ 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
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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)