Ex Parte Cieslik et al

Patent Trial and Appeal Board

Jun 18, 2013

11628727 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DETLEF CIESLIK,
THORSTEN KUSNIK, and BERTHOLD PFLOMM
____________

Appeal 2011-004205
Application 11/628,727
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
ADAM V. FLOYD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Detlef Cieslik et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 11-17 and 19-30. Appellants
cancelled claims 1-10 and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Claimed Subject Matter
The claimed subject matter relates to “a method for producing a heat
exchanger” and a heat exchanger for a refrigerator. Spec. 1, para. [001] and
Spec. 2, para. [005]. Claims 11 and 17 are the independent claims on
appeal. Claim 11, reproduced below, with emphasis added, is illustrative of
the appealed subject matter.
11. A method for producing a heat
exchanger comprising the acts of:
a) preparing a coolant pipe and a blank;
b) placing a bead of a plastic adhesive
having a profile matched to a profile of the coolant
pipe between the coolant pipe and the blank; and
c) compressing the bead between the coolant
pipe and the blank.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 11-14, 16, 17, 19, 21-23, and 29 are rejected under 35
U.S.C. § 102(b) as anticipated by Kafer (US 2,795,035, issued Jun. 11,
1957);
II. claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kafer;
III. claims 15 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kafer and Karlsson (US 2004/0112529 A1, published Jun.
17, 2004); and
IV. claims 26-28 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kafer and Jones (US 2002/0144808 A1, published Oct.
10, 2002).

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OPINION
Anticipation based on Kafer
Independent claim 11 and dependent claims 12-14, 16, and 29
Appellants argue claims 11-14, 16, and 29 as a group and we select
independent claim 11 as the representative claim. See App. Br. 5; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 12-14, 16, and 29 stand or fall
with claim 11.
The Examiner finds that Kafer discloses a method for producing a
heat exchanger including, inter alia, the step of placing a bead of adhesive
having a profile matched to a profile of the pipe 12 on the pipe 12 between
the pipe 12 and the blank 11. Ans. 3-4 (citing Kafer, col. 3, ll. 14-17). The
Examiner interprets “[t]he term ‘bead’ . . . to mean ‘a line of continuously
applied ductile material’ in accordance with definition 6 of The American
Heritage Dictionary, and is not considered to require that that line of
material have any particular cross section.” Ans. 4.
Appellants argue that “Kafer does not disclose placing a bead of
adhesive” as called for in claim 11, but rather “Kafer teaches placing a tape
of adhesive from a roll of taper along the tubing.” App. Br. 5 (citing Kafer,
col. 4, ll. 14-18). Indeed, Appellants state that the plain “meaning of the
word ‘tape’ is a layer or ribbon of material having a flat cross section,” and
“[t]his meaning is supported by Fig. 3 which shows film 13 having a flat
cross section prior to pressing tubing 12 onto sheet 11.” Id. Appellants
further argue that “[b]y placing a bead of adhesive on the coolant pipe (as
shown in Fig. 2 of the Application), the invention provides (prior to
pressing) more adhesive at the center of the coolant pipe than at the outer
portion of the width of the coolant pipe,” that “[t]his results in larger gussets
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10 for a given amount of adhesive (as compared to a tape of adhesive),” and
that “[l]arger gusset result in a stronger mechanical bond for given amount
of adhesive.” Id.
The Examiner responds that “the tape of Kafer is considered to be a
bead,” because “the term ‘bead’ is not considered to require any particular
shape or cross section.” Ans. 5.
The Specification does not assign or suggest a particular definition to
the claim term “bead” and therefore, we consult a general dictionary
definition for guidance in determining the ordinary and customary meaning
of the claim term “bead.” See Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010) (If the specification does not assign or suggest a
particular definition to a claim term, it is appropriate to consult a general
dictionary definition of the word for guidance in determining the ordinary
and customary meaning of the claim term as viewed by a person of ordinary
skill in the art). The ordinary and customary meaning of the word “bead” is
“[a] line of continuously applied ductile material, such as solder or caulking
compound.” THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE, Fourth Edition, © 2000, Houghton Mifflin Company, accessed
at http://www.thefreedictionary.com/bead (last visited: Jun. 6, 2013). Since
Kafer’s film 13 of synthetic resin adhesive satisfies the definition of “[a] line
of continuously applied ductile material, such as solder or caulking
compound,” we are not persuaded by Appellants’ argument that Kafer does
not disclose the step of “placing a bead of . . . adhesive . . . between the
coolant pipe and the blank” as recited in claim 11. As stated by the
Examiner, the claim term “bead” does not require any particular shape or
cross section as suggested by Appellants. See Ans. 5.
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Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and claims 12-14, 16, and 29 dependent upon and falling
therewith, under 35 U.S.C. § 102(b) as anticipated by Kafer.
Independent claim 17 and dependent claims 19 and 21-23
Independent claim 17 is directed to a heat exchanger for a refrigerator,
and calls for the coolant pipe to be in direct contact with the blank in
between the first strip of adhesive and the second strip of adhesive.
Appellants argue claims 17, 19, and 21-23 as a group and we select
independent claim 17 as the representative claim. See App. Br. 5-6; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 19 and 21-23 stand or fall with
claim 17.
The Examiner finds that Kafer discloses each and every element of
independent claim 17 in order to anticipate claim 17, including “the pipe
being in direct contact with the blank between the two strips (Fig. 5),
compression causing the pipe to come into direct contact with the bland (Fig.
5).” Ans. 3-4.
Appellants argue that “Kafer teaches providing adhesive between the
tubing and the sheet,” because “Kafer states that ‘the pressure and
deformation, at the curing temperature, causes a great portion, and in fact
substantially all, of the adhesive to squeeze out’ from between tubing 12 and
sheet 11,” and thus, “not all of the adhesive is squeezed out from between
the tubing and the sheet.” App. Br. 5-6 (citing Kafer, col. 4, ll. 1-5).
Appellants note that “[i]n the invention, the adhesive is expelled in the
lateral direction so that blank 1 and coolant pipe 2 come in direct contact in a
narrow strip-shaped contact zone 9,” and “[t]his direct contact provides
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better heat transfer and, as a result, better efficiency.” Ans. 6 (citing Spec. 4,
para. [018]).
The Examiner responds that “Fig. 5 of Kafer shows the pipe in direct
contact with the blank between the strips of adhesive and the statement that
‘substantially all’ of the adhesive is squeezed out also shows that the pipe is
in direct contact with the blank.” Ans. 6.
We are not persuaded by Appellants’ argument. Kafer appears to
disclose that at least in some locations along the length of the tubing 12, the
tubing 12 comes into direct contact with the flat or plane sheet of metal 11.
See e.g., Kafer, Fig. 5. Claim 17’s language of “the coolant pipe is in direct
contact with the blank in between the first strip and the second strip” only
requires that at some location Kafer’s coolant pipe (tubing 12) is in direct
contact with the blank (flat or plane sheet of metal 11). Since Kafer states
that substantially all of the adhesive is squeezed out and since Kafer’s Figure
5 appears to show direct contact between Kafer’s coolant pipe (tubing 12)
and blank (flat or plane sheet of metal 11), we are not persuaded that the
Examiner has failed to show, by a preponderance of the evidence, that Kafer
meets the language of claim 17.
Accordingly, we sustain the Examiner’s rejection of independent
claim 17, and claims 19 and 21-23 dependent upon and falling therewith,
under 35 U.S.C. § 102(b) as anticipated by Kafer.

Obviousness based on Kafer
Claim 24 depends from claim 17 and recites that “the first and second
strips are free from air inclusions. App. Br., Clms. App’x. Claim 25
depends from claim 11 and recites that “the adhesive is free from air
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inclusions after it is compressed between the coolant pipe and the blank.”
Id.
The Examiner finds that “Kafer, as discussed above, discloses the
claimed structure and method, but does not state that the bead or the strips
are free from air inclusions.” Ans. 4. The Examiner concludes that “it
would have been obvious to one of ordinary skill in the art to use an
adhesive that is free from air inclusions, the motivation being to obtain
improved adhesion between the parts of the device.” Id.
Appellants argue that “it would not have been obvious that the
absence of air inclusions provides improved adhesion.” App. Br. 6.
Appellants note that the Specification states “that the absence of air
inclusions provides reproducibility of the cooling performance of the heat
exchanger . . . , not improved adhesion.” App. Br. 6-7 (citing Spec. 4, para.
[020]).
The Examiner responds that “the [E]xaminer uses a different
motivation for using an adhesive without air inclusions,” but “making an
obvious modification for a different reason does not make the modification
non-obvious.” Ans. 6.
We note that in rejecting claims under 35 U.S.C. § 103(a), the
examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745
F.2d at 1472. Here, the Examiner has failed to meet the initial burden of
establishing a prima facie case of obviousness, because the Examiner has
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made no findings with respect to where or how the adhesive being free of air
inclusions is taught in the prior art. The Examiner’s explanation of the
rejection consists of nothing more than a conclusory statement that it would
have been obvious to use adhesive that is free of air inclusions to obtain
improved adhesion. Since the Examiner has not articulated a reason with a
rational underpinning as to why it would have been obvious to a person
having ordinary skill in the art to modify Kafer to use an adhesive free of air
inclusions (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”)), we do not sustain the Examiner’s rejection of claims 24 and
25 under 35 U.S.C. § 103(a) as unpatentable over Kafer.

Obviousness based on Kafer and Karlsson
Appellants argue claims 15 and 20 as a group and we select claim 15
as the representative claim. See App. Br. 7-9; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claim 20 stand or fall with claim 15.
Claim 15 depends from claim 11 and recites that “the adhesive is a
butyl rubber.” App. Br., Clms. App’x.
The Examiner finds that “Kafer, as discussed above, discloses the
claimed structure and method, with the exception of the adhesive being butyl
rubber,” but “Karlsson discloses that it is known to use butyl rubber as an
adhesive.” Ans. 4; see also Karlsson, p. 15, para. [0183]. The Examiner
concludes that “it would have been obvious in view of Karlsson et al[.] to
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use butyl rubber as the adhesive in Kafer, the motivation being to use an
adhesive which works well and is readily available.” Id.
Appellants first argue that “Karlsson is neither within the field of
App[ell]ants’ endeavor nor reasonably pertinent to the particular problem
with which the App[ell]ants were concerned and, as such, is non-analogous
art and therefore, unavailable for use in rejecting the claims.” App. Br. 8.
We disagree that Karlsson is non-analogous art. “The analogous-art test
requires that the Board show that a reference is either in the field of the
applicant's endeavor or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
With respect to the field of endeavor, Appellants argue that “[t]he
field of Appellants’ endeavor is the heat exchanger art,” and “[i]n stark
contrast, the field of endeavor of Karlsson is the microscale/macroscale
interface art” so that “[o]ne of ordinary skill in the art who is in the field of
the heat exchanger art would not have been familiar with, nor have looked to
Karlsson because Karlsson is directed to the completely different and
unrelated field of microscale/macroscale interfaces.” App. Br. 7. We are
not persuaded by Appellants’ argument, because Karlsson discloses that
“macroscale components can comprise . . . reactors, such as . . . heat
exchangers.” Karlsson, p. 12, para. [0153]. Since Karlsson depict using an
adhesive tape for sealing a pump head (macroscale component) to a
microfluidic chip (microscale component) and Karlsson discloses that a heat
exchanger is a macroscale component, we do not agree with Appellants that
Karlsson is not within Appellants’ field of endeavor of heat exchangers. Id.;
see also Karlsson, p. 2, para. [0027], and figs. 1A-1D.
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With respect to being reasonably related to the particular problem
with which Appellants were concerned, Appellants argue that “[a]s clearly
explained by the [S]pecification at, for example, paragraph 005, the
App[ell]ants were concerned with the problem of providing a method of
producing efficient and reproducible heat exchange between a pipe and a
supporting blank,” and “[i]n stark contrast, Karlsson is concerned with the
completely different and unrelated problem of providing integrated systems
comprising macroscale devices interfaced with microscale devices.” App.
Br. 7-8 (citing Karlsson, Abstr.). Appellants also argue that:
One of ordinary skill in the art who was concerned with the
problem of providing a method of producing efficient and
reproducible heat exchange between a pipe and a supporting
blank, as the App[ell]ants were concerned, would not have
referred to Karlsson because it is directed to the completely
different and unrelated problem of proving integrated systems
comprising macroscale devices interfaced with microscale
devices. Indeed, Karlsson has absolutely nothing to do with the
problem of providing a method of producing efficient and
reproducible heat exchange between a pipe and a supporting
blank.

App. Br. 8.
We note that references are selected as being reasonably pertinent to
the problem based on the judgment of a person having ordinary skill in the
art. Oetiker, 977 F.2d at 1447. (“[I]t is necessary to consider ‘the reality of
the circumstances,’--in other words, common sense--in deciding in which
fields a person of ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d
1032, 1036 (CCPA 1979))).” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir.
2006). See also In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (“A
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reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem.”)
We are not persuaded by Appellants’ arguments that Karlsson is not
reasonably pertinent to Appellants’ problem, because Appellants define their
problem too narrowly. The problem was not to provide a method of
producing efficient and reproducible heat exchange between a pipe and a
supporting blank as suggested by Appellants. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[T]he problem examined is not the specific problem
solved by the invention but the general problem that confronted the inventor
before the invention was made.”). The general problem faced by Appellants
before the invention was made was connecting two components using a
proper adhesive without impeding heat exchange. Appellants’ own
Specification defined the problem of securing the coolant pipe on the blank
using double-sided adhesive tape attached between the two (a known
technique), but in a manner wherein the adhesive tape does not impede heat
exchange between the coolant pipe and blank so as to not impair the
efficiency of the heat exchanger. See Spec. 1, para. [003]. Karlsson solves
the problem of interfacing a pump head (macroscale device) with a
microfluidic chip (microscale device) using an adhesive tape for sealing
while allowing the microfluidic chip to continue carrying out the exchange
of fluids and allowing the adhesive tape to conduct heat. See Karlson, p. 1,
para. [0004], p. 2, para. [0019], and p. 3, [0033]. Thus, Karlsson addresses
the problem Appellants sought to solve.
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Appellants next argue that the Examiner’s “citation of Karlsson is a
clear case of the use of impermissible hindsight reconstruction.” App. Br. 8.
More particularly, Appellants argue that “[r]ather than viewing the invention
as a whole as required, the claim was dissected to focus only upon using
butyl rubber as an adhesive and the Examiner resorted to the use of hindsight
in an attempt to locate anything that was related to using butyl rubber as an
adhesive.” App. Br. 9. We are not persuaded that the Examiner’s reliance
on Karlsson to teach butyl rubber adhesive for connecting a macroscale
device, such as a heat exchanger, to a microscale device constitutes the use
of impermissible hindsight, because the Examiner’s rejection articulates a
reason with a rational underpinning, i.e., “to use an adhesive which works
well and is readily available,” to support the legal conclusion of
obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
Accordingly, we sustain the Examiner’s rejection of claim 15, and
claim 20 which stands or falls therewith, under 35 U.S.C. § 103(a) as
unpatentable over Kafer and Karlsson.

Obviousness based on Kafer and Jones
Appellants argue claims 26-28 and 30 as a group and we select claim
26 as the representative claim. See App. Br. 10; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 27, 28, and 30 stand or fall with claim 26.
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Appellants acknowledge that claim 26 depends from claim 11, rely
upon the argument discussed supra with respect to claim 11 for claim 26,
and argue that “Jones does not remedy the deficiencies of Kafer discussed
above with regard to the rejection of claim 11.” App. Br. 9. As we found no
deficiencies in the Examiner’s rejection of claim 11 based upon Kafer for
the reasons discussed supra, we sustain the Examiner’s rejection of claim
26, and claims 27, 28, and 30 which stand or fall therewith, under 35
U.S.C. § 103(a) as unpatentable over Kafer and Jones.

DECISION
We reverse the Examiner’s decision to reject claims 24 and 25.
We affirm the Examiner’s decision to reject claims 11-17, 19-23, and
26-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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