Ex Parte Beutler et al

Patent Trial and Appeal Board

May 28, 2013

11702288 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREAS BEUTLER, JEAN EL HAJAL,
MARKUS REVERMANN, and ANDREAS SCHWITALLA
____________________

Appeal 2011-003832
Application 11/702,288
Technology Center 3700
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Before: JAMES P. CALVE, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/702,288

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4-6 and 13-17. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a structured heat exchanger tube and
method for the production thereof. Claim 13, reproduced below, is
illustrative of the claimed subject matter:
13. A heat exchanger, comprising:
a tube comprising an inner surface, the inner
surface defining therein primary grooves,
secondary grooves, and tertiary grooves, the
secondary grooves having a pitch and the tertiary
grooves having a pitch, the pitch of the secondary
grooves being smaller than the pitch of the tertiary
grooves,
wherein the secondary grooves cross the
primary grooves, and the tertiary grooves cross the
secondary grooves, creating an internal helical rib
structure on the inner surface of the tube.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brand US 2003/0094272 A1 May 22, 2003
Rago US 6,675,881 B1 Jan. 13, 2004

1 Claims 2-3 and 7 were previously cancelled, and claims 8-12 were
withdrawn and are not on appeal.
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REJECTIONS
The Examiner made the following rejections:
Claims 13 and 17 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Rago. Ans. 3.
Claims 1 and 4-6 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Rago and Brand. Ans. 5.
Claim 14 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Rago. Ans. 4.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rago and Brand. Ans. 4.

ANALYSIS
ANTICIPATION REJECTION
Appellants argue claims 13 and 17 together. App. Br. 9-10. We
select claim 13 as representative and claim 17 will stand or fall with claim
13. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Rago discloses a heat exchanger having a
tube (70) with an inner surface (71) defining primary grooves (66),
secondary grooves (68) and tertiary grooves (64), the secondary grooves
(68) having a pitch smaller than the pitch of the tertiary grooves (64), the
secondary grooves (68) cross the primary grooves (66) and the tertiary
grooves (64) cross the secondary grooves (68) to create an internal helical rib
structure on the inner surface of the tube. Ans. 3-4, citing Rago, fig. 4c.
Appellants argue that Rago does not disclose a heat exchanger with a
combination of three grooves and instead discloses a heat exchanger with
helical slots “which do not necessarily result in a helical rib structure.” App.
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Br. 10. As correctly noted by the Examiner, Figs. 4a and 4b of Rago show
helical ribs (fins 72) formed by an intermediate portion located between
adjacent helical grooves. Ans. 9. Appellants’ argument do not persuade us
of error in the Examiner's findings that Rago discloses a heat exchanger
having a primary groove, a secondary groove and a tertiary groove, the
secondary groove pitch is smaller than the tertiary groove pitch and the
tertiary groove crosses the secondary groove to create an internal helical rib
structure, as recited in claim 13. As such, we sustain the rejection of claims
13 and 17 under 35 U.S.C. §102(b).

OBVIOUSNESS REJECTIONS
Claims 1 and 4-6, Rago and Brand
Claim 1
Claim 1 is independent, and claims 4-6 depend from claim 1. Claim 1
describes a heat exchanger tube having primary grooves that form integral
internal ribs, secondary grooves having a pitch and that cross the integral
internal ribs, and tertiary grooves having a pitch greater than the secondary
groove pitch and that cross both the integral internal ribs and secondary
grooves to form singly-notched internal ribs within a helix-shaped
superlattice structure.
In addition to the findings discussed supra with respect to claim 13,
the Examiner acknowledged that Rago does not disclose that the pattern of
grooves produces singly-notched internal ribs, and relied on Brand to
disclose “proportioning grooves on the inner surface of a heat transfer tube
to produce singly-notched ribs.” Ans. 5-6, citing Rago, fig. 4c. The
Examiner reasoned that it would have been obvious to use the “singly-
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notched internal ribs in the heat exchange tube of Rago, the motivation being
to adjust the heat transfer.” Ans. 6.
Appellants argue that the teachings of Rago and Brand individually or
in combination do not disclose a heat exchanger “with structures on both the
outside and inside surfaces, with an inner structure of three groups of
grooves resulting in integral ribs with a helix-shaped superlattice structure.”
App. Br. 7 According to Appellants, the helix-shaped super lattice structure
results in the “formation of additional eddies in the fluid flow to increase
heat exchange without significant increase in flow resistance.” App. Br. 7.
Appellants’ argument is in the nature of arguing each reference
individually, rather than addressing the proposed modification to the Rago
heat exchanger tube as a result of the combination of the teachings of Rago
and Brand. Appellants do not apprise us of error in the Examiner’s finding
that Rago teaches a heat exchanger tube with an inner surface defining
primary grooves, secondary grooves and tertiary grooves to create an
internal helical rib structure on the inner surface of the tube and that Brand
teaches that the grooves are arranged to form singly-notched ribs. Further,
Appellants’ argument regarding the formation of additional eddies in the
fluid flow is not persuasive since that particular limitation is not recited in
claim 1 and thus, for that reason, does not demonstrate error in the
Examiner’s rejection of claim 1. 2
Appellants also argue that one of skill in the art would not have
“looked to the teachings of Rago for inspiration in developing a heat
exchanger” as set forth in claim 1, since the heat exchanger tube of Rago

2 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not
appearing in the claims cannot be relied upon for patentability).

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contains a filter, while claim 1 describes a free-flow tube heat exchanger.
App. Br. 7, citing Rago, fig. 2a. As the Examiner correctly noted, however,
the limitation of a “free-flow tube heat exchanger” is not recited in claim 1.
Again, Appellants argument is not commensurate with the scope of claim 1,
and thus, for that reason, does not demonstrate error in the Examiner’s
rejection of claim 1.3
Appellants further argue that one of skill in the art would not have
combined Rago and Brand since the Rago heat exchange system contains
grooves which guide the entire fluid flow within the heat exchanger tube,
whereas the Brand freeflow system discloses that the fluid may flow outside
the grooves. App. Br. 8. The Examiner found that Rago teaches that the
shape of the grooves can be varied and both heat exchange systems are in
the same field of endeavor, which is a heat exchanger tube having grooves
formed thereon to improve heat transfer capacity. Ans. 6, 8. It is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellants’ specification in order to support the conclusion that the claimed
subject matter would have been obvious.4 The Examiner’s reason to
combine the teachings of Brand with Rago to adjust the heat transfer of the

3 The use of “comprising” in claim 1 means that Rago may include other,
unrecited elements such as a filter and still fall within the scope of claim 1.
See In re Skvorecz, 580 F.3d 1262, 1267-68 (Fed. Cir. 2009); In re Crish,
393 F.3d 1253, 1257 (Fed. Cir. 2004).
4 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference may be
read for all that it teaches, including uses beyond its primary purpose.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-421 (2007).

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tube as desired is expressly articulated and is supported by rational
underpinnings.5 For these reasons, the rejection of claim 1 is sustained.
Claim 4
Claim 4 depends from claim 1 and further recites that the opening
angle of the secondary groove is different than the opening angle of the
tertiary groove. Appellants contend that “Rago says nothing about
differences in opening angles, nor does Rago specifically address differences
between the secondary groove and the tertiary groove.” App. Br. 9. In
response, the Examiner pointed to the teachings of Rago that the shape of
the grooves can be varied, and reasoned that it would be obvious to “vary the
shapes of the secondary and tertiary grooves of Rago, including providing
grooves with different opening angles, the motivation being to vary the heat
transfer.” Ans. 6, citing Rago, col. 5, ll. 11-13. We agree with the
Examiner’s finding that Rago teaches that the shape of the grooves can be
varied. Appellants do not point to any recitation in claim 4 that defines the
“opening angle” in a manner which distinguishes the arrangement of
primary, secondary and tertiary grooves as recited in claim 4 from the
teachings of Rago. In particular, Rago states that the:
spacing between adjacent slots and the intersection angles
between intersecting slots in all embodiments disclosed herein,
can be modified in order to vary the number and the specific
shape of the pedestal fins created. In this manner, a plurality of
pedestal fins having different cross-sectional areas, and being
non-uniformly spaced, can be easily created on the inner
surface of the heat exchanger pipe by varying the number,
spacing, shape, and intersection angles of the slots as desired.

5 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
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Rago, col. 5, ll. 4-13. A reference does not have to satisfy an ipsissimis
verbis test to disclose a claimed feature. Since Appellants do not apprise us
of error in the Examiner’s finding and stated conclusion of obviousness
which is supported by a rational underpinning, we sustain the rejection of
claim 4.
Claims 5 and 6
Appellants argue claims 5 and 6 together, and claim 6 depends from
claim 5. We select claim 5 as representative, and claim 6 stands or falls with
claim 6. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 5 depends from claim 1 and further recites the limitation that
the "secondary grooves have a notch depth, and the tertiary grooves have a
notch depth, the notch depth of the secondary grooves being different from
the notch depth of the tertiary grooves.” The Examiner admitted that Rago
does not disclose that the secondary grooves and tertiary grooves have a
different notch depth, and pointed to the teachings of Brand to show grooves
with different notch depths (i.e. 21 and 22 of Fig. 4). Ans. 6, citing Brand,
fig. 4. The Examiner reasoned that it would be obvious to use the different
notch depths taught by Brand for the secondary and tertiary grooves taught
by Rago in order to vary the heat transfer. Ans. 7.
Appellants argue that Brand discloses a heat exchanger with two
grooves and not three, so it would not be obvious to “have differing notch
depths of tertiary grooves versus secondary grooves.” App. Br. 9. While
Appellants admit that Rago teaches that the shapes of the grooves can be
varied, Appellants contend that Rago does not “specifically state or compare
the shapes of the secondary grooves with tertiary grooves, nor does Rago
disclose that notch depths may vary.” Id.
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Appellants’ argument does not apprise or persuade us of error in the
Examiner’s findings or conclusion of obviousness, which is supported by a
rational underpinning. The Examiner correctly found that Rago discloses a
heat exchange tube with primary, secondary, and tertiary grooves, the shape
of which can be varied, and Figure 4 of Brand shows that the notch depth of
different groove sets may be different, i.e. one set of grooves has a smaller
notch depth than another set of grooves. Ans. 5-6, 9, citing Brand Fig. 4.
As such, the rejection of claims 5 and 6 is sustained.
Claim 14, Rago
Claim 14 depends from claim 13 and further describes that the
secondary grooves and tertiary grooves have different opening angles. The
Examiner found that Rago teaches that the shape of the grooves can be
varied and that it would be obvious to “vary the shapes of the secondary and
tertiary grooves of Rago including providing the grooves with different
opening angles, the motivation being to vary the heat transfer.” Ans. 4,
citing Rago, col. 5. ll. 11-13.
Appellants relied on the arguments made with respect to claim 13
regarding the teachings of Rago. App. Br. 10. Appellants further argue that
“one of ordinary skill in the art would not have used the teachings of the
Rago '881 patent--which is directed to a heat exchanger tube system having
a fuel filter therein--for development of a free-flow heat exchanger such as
that of Claim 13.” Id. Appellants do not apprise us of error in the
Examiner’s findings and further do not persuasively explain why the
Examiner’s articulated reason is ineffective to support the conclusion of
obviousness, which the Examiner has supported by a rational underpinning.
Therefore, we sustain the rejection of claim 14 under 35 U.S.C. §103(a).
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Claims 15, 16, Rago, Brand
Claim 15 depends from claim 13. Appellants argue claims 15 and 16
together, and claim 16 depends from claim 15. We select claim 15 as
representative, and claim 16 stands or falls with claim 15.
The limitations of claim 15 are similar to those of claim 5. The
Examiner repeated the findings discussed supra with respect to claim 5
concerning the use of Brand to show grooves with different notch depths
(i.e. 21 and 22 of Fig. 4). Ans. 4-5, citing Brand, fig. 4. Appellants again
argue (see App. Br. 11)
a. That Rago and Brand are not combinable since Rago discloses a
fuel filter inside the tube and Brand discloses a free flow tube
system.
b. Neither Rago nor Brand teach a heat exchanger with three grooves,
the pitch of the secondary groove being different from the tertiary
groove and an internal helical structure, resulting in the formation
of additional eddies in the fluid flow to improve heat transfer.
Appellants also argue that the claimed structure yields unexpected
results as shown graphically in Figure 5 of the present application. App. Br.
11-12. However, the Examiner determined that Rago discloses all of the
claimed structure and Appellants’ recognition of new advantages in the prior
art structure does not cause the prior art structure to be patentable. Ans. 9.
Appellants’ comparison of the claimed structure to only a singly notched
internal structure of the prior art (see Spec. 22, ll. 5-11) does not compare
the claimed structure to the closest prior art or establish the non-obviousness
of the claimed structure over the combined teachings of Rago and Brand.
Appellants’ arguments do not apprise or persuade us of error in the
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Examiner’s findings or conclusion of obviousness, which is supported by a
rational underpinning, for the reasons provided supra. As such, we sustain
the rejection of claims 15 and 16.

DECISION
The rejection of claims 13 and 17 under 35 U.S.C. §102(b) is
affirmed.
The rejection of claims 1, 4-6, 14-16 under 35 U.S.C. §103(a) is
affirmed.
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) (2009).

AFFIRMED

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