Ex Parte Cieslik et al

Patent Trial and Appeal Board

Mar 25, 2014

10534204 (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DETLEF CIESLIK and THORSTEN KUSNIK
____________________

Appeal 2011-009144
Application 10/534,204
Technology Center 3700
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Before: CHARLES N. GREENHUT, PATRICK R. SCANLON, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009144
Application 10/534,204
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16-19, 21, 23, 27-31, 33, 34,35, 37, and 38. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a heat exchanger for a refrigeration device.
Claim 16, reproduced below, is illustrative of the claimed subject matter:
16. A heat exchanger for a refrigeration device, comprising:
a base plate;
a tubular pipe for a coolant attached to said base plate;
a sleeve arranged on said base plate for receiving a
temperature sensor; and
said sleeve fixed on a surface of said base plate by at
least one brace which is connected to said sleeve and engages
on said tubular coolant pipe.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nam US 6,089,146 Jul. 18, 2000

REJECTIONS
Claims 16-19, 21, 27-31, 34, and 35 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Nam. Ans. 4.
Claims 23, 33, 37, and 38 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nam. Ans. 5.

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OPINION
Claims 16-19, 21, 27, 30, 31, and 34
The Examiner determined independent claims 16 and 30 are
anticipated by Nam. Ans. 4. The Examiner interpreted sensor housing 32 in
Figure 2A (or 42, 52, 62 in Figures 2B, 2C, and 3) as the “sleeve arranged
on said base plate for receiving a temperature sensor” of claims 16 and 30.
Ans. 4. Appellants argue Nam lacks a sleeve fixed on a surface of a base
plate, but rather discloses a three-sided rectangular shaped sensor housing
that surrounds only three sides of a temperature sensor. App. Br. 6.
Appellants’ Specification does not expressly define the term “sleeve”
as having more than three sides. Although the claims are interpreted in light
of the specification, limitations from the specification are not read into the
claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The structure pointed to
by Appellants in Figure 3 of the Specification, does not, without more,
clearly demonstrate an intent to limit the term “sleeve” in claims 16 and 30
to the specific structure depicted in Appellants’ figures. Appellants have
also not demonstrated that the ordinary meaning of “sleeve” is a structure
having more than three sides.1 We therefore agree with the Examiner that

1 See, e.g., “Sleeve” in THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (2007), retrieved from
http://search.credoreference.com/content/entry/hmdictenglang/sleeve/0
Appeal 2011-009144
Application 10/534,204
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the sensor housing of Nam constitutes a “sleeve” as required by claims 16
and 30.
Appellants further argue the Nam device relies on the inner liner of
the refrigerator to hold the fourth side of the temperature sensor. App. Br. 6.
However, there is no claim language, which precludes the use of additional
structure, such as the liner 14, to assist in securing the sensor. Thus, we
affirm the Examiner’s rejection of claims 16 and 30 under 35 U.S.C.
§ 102(b) as being anticipated by Nam.
The rejections of claims 17-19, 21, 27, 31, and 34 have not been
argued separately. App. Br. 6. Accordingly, we affirm the Examiner’s
rejections of claims 17-19, 21, 27, 31, and 34 as well. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claims 23, 33, 37, and 38
Appellants argue Nam does not teach (or suggest motivation for) two
braces which extend out from the same side of a sleeve in the same
direction, but rather the braces extend from opposing sides of a central
portion, as required by claims 23 and 33. App. Br. 7. The Examiner
determined it would have been obvious to one skilled in the art at the time of
the invention to modify the heat exchanger of Nam by rearranging the part
so as to have the at least two braces extending from the same side to “reduce
the amount of space being taken up thereby while still maintaining sufficient
fixing force to clamp the temperature sensor sleeve securely onto the tubular
cooling pipe.” Ans. 5.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
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rational underpinning to support the legal conclusion of obviousness.” 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). The Examiner has not
supported the obviousness determination with any factual evidence to
demonstrate that it was known and/or desirable to use multiple braces. Nor
has the Examiner explained how the amount of space being taken up would
be reduced or why one would be motivated to achieve that result. A
determination of obviousness must be supported by a fact-specific analysis
and not per se rules. In re Ochiai, 71 F. 3d 1565, 1571 (Fed. Cir. 1995).
Accordingly, the rejection of claims 23 and 33 (and depending claims 37 and
38) under 35 U.S.C. § 103(a) as unpatentable over Nam is reversed.
Claims 28, 29, and 35
The Examiner has interpreted the reactive plastic foam insulating
material of Nam as the “film of deformable material” of claims 28 and 35.
Ans. 4, citing Nam, col. 6, ll. 15-20. Appellants argue the insulating
material of Nam is thick and rigid and is not a film of deformable material as
required by claims 28 and 25. App. Br. 7-8. We agree with Appellants.
The term “film” is generally regarded as a thin layer on a substrate.2 This
understanding is consistent with Appellants’ usage in the Specification. See
Spec. 7:35-37, fig. 2. Nam discloses a layer of insulating material 12
significantly thicker than the inner box 14 and sensor housing 32 on which
the material is applied. Nam, figs. 1 and 2A-2C. The Examiner has not
presented any evidence or reasoning establishing why a person of ordinary
skill in the art would consider the relatively thick layer of Nam to be a

2 See, e.g., “Film” in THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (2007),, retrieved from
http://search.credoreference.com/content/entry/hmdictenglang/film/0
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“film.” Accordingly, the rejection of claims 28 and 35 (and depending claim
29) under 35 U.S.C. § 103(a) as unpatentable over Nam is reversed.

DECISION
The Examiner’s rejection of claims 16-19, 21, 27, 30, 31, and 34
under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 23, 33, 37, and 38 under 35 U.S.C.
§ 103(a) is reversed.
The Examiner’s rejection of claims 28, 29, and 35 under 35 U.S.C.
§ 102(b) is reversed.

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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