Ex Parte Kang et al

Patent Trial and Appeal Board

Mar 21, 2017

12744730 (P.T.A.B. Mar. 21, 2017)

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.
12/744,730 05/26/2010 YoungMook Kang 022233-2039-00 4787
23409 7590 03/23/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
03/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNGMOOK KANG, YONGSOO KIM, and
FREDERICK URFER
Appeal 2015-003 8191
Application 12/744,7302
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—12 and 14—25. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Sept. 9, 2014) and Reply Brief (“Reply Br.,” filed Feb. 2, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed Apr. 11, 2014) and
Answer (“Ans.,” mailed Dec. 2, 2014).
2 According to Appellants, the real party in interest is Modine
Manufacturing Company (Appeal Br. 2).
Appeal 2015-003819
Application 12/744,730
Introduction
Appellants’ application relates to heat exchangers, and more
particularly, to the interface between collection tank parts (see Spec. 11).
Claims 1,16, and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A heat exchanger comprising:
a core including
a plurality of tubes having opposite ends, and
a plurality of fins extending between associated
ones of the plurality of tubes;
a tank including a tank wall at least partially defining a
cavity and having an end;
a header connectable with the tank to define a collection
tank assembly, the header including
a central portion defining a plurality of header
openings, each header opening being connectable to one
opposite end of an associated tube such that the tube is in fluid
communication with the collection tank assembly, and
a connecting portion extending away from the
central portion and connectable to the end of the tank wall such
that the tank and the header cooperate to define the collection
tank assembly, the connecting portion including a wall
extending at a non-parallel angle relative to the central portion;
and
a reinforcement member connectable to the header, the
reinforcement member including
an inner portion defining a plurality of member
openings, at least one of the plurality of tubes extending
through each member opening to connect with the header, and
an outer portion extending at a non-parallel angle
relative to the inner portion, the outer portion being
complementary to and connected to at least a portion of the wall
of the connecting portion of the header,
wherein each of the plurality of member openings is
larger than each of the plurality of header openings.
(Appeal Br., Claims App.)
2
Appeal 2015-003819
Application 12/744,730
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 23—25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written
description requirement.
II. Claims 1—5 and 15—19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chartet
(US 4,041,594, iss. Aug. 16, 1977) and Nguyen
(US 5,046,555, iss. Sept. 10, 1991).
III. Claims 6—12, 14, and 20—22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Chartet,
Nguyen, and Young (US 3,245,465, iss. Apr. 12, 1966).
ANALYSIS
Rejection I (Written Description)
Independent claim 23 and dependent claims 24 and 25
We are unpersuaded by Appellants’ argument that the original
Specification supports the following limitations of independent claim
23:
at least one of the plurality of tubes extending through
each first member opening to connect with the first header
without contacting the first member; . . .
at least one of the plurality of tubes extending through
each second member opening to connect with the header
without contacting the second member.
3
Appeal 2015-003819
Application 12/744,730
(Appeal Br. 8—9). In particular, Appellants argue that Figures 2, 3, and 5
and paragraph 32 of the Specification disclose that tubes 114 pass through
the openings 230 without contacting the reinforcement members 210, 214 to
connect to header 154 (id.). Paragraph 32 of the Specification states as
follows:
The reinforcement member 210 generally has opposed
longitudinal sides 218 connected by opposed lateral sides 222.
The reinforcement member 210 includes an inner portion 226
generally overlying at least a portion of the central portion 158
of the header 154. The inner portion 226 defines a number of
openings 230 such that the structure of the inner portion 226
does not interfere with engagement between the tubes 114 and
the openings 162 in the header 154. In the illustrated
construction, each opening 230 is slot-shaped and spans, in a
lateral direction, an opening 162 in two adjacent rows (e.g.,
174a, 1746), and the two associated tubes 114 would pass
through the opening 230 to the openings 162 to connect to the
header 154.
Although paragraph 32 of the Specification discloses that tubes 114 pass
through openings 230 in portion 226 of reinforcement member 210, and
discloses that portion 226 of reinforcement member 210 does not interfere
with engagement between tubes 114 and openings 162 of the header, this
does not reasonably convey that tubes 114 pass through openings 230
without contacting reinforcement members 210, 214, as asserted. Similarly,
Figures 2, 3, and 5 depict that tubes 114 pass through openings 230, but do
not reasonably convey that the tubes do so without contact. See In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (disclosure of the application
as originally filed must reasonably convey to the artisan that the inventor
had possession at that time of the later claimed subject matter).
4
Appeal 2015-003819
Application 12/744,730
Accordingly, we sustain the Examiner’s rejection under § 112, first
paragraph, of independent claim 23.
Claim 24 depends from independent claim 1, and claim 25 depends
from independent claim 16. Each of claims 24 and 25 recite an identical
“wherein” limitation, i.e., “wherein the length of each of the plurality of
member openings is greater than the length of each of the plurality of header
openings.” Appellants argue that the aforementioned portions of the
Specification adequately support the “wherein” limitation of dependent
claims 24 and 25 (see Appeal Br. 8—9). However, neither the text of the
Specification nor its Figures serve to reasonably convey the argued feature.
Rather, paragraph 32 simply describes openings 230 as slot-shaped. For all
these reasons, we sustain the Examiner’s rejection under § 112, first
paragraph, of dependent claims 24 and 25.
Rejection II (Obviousness)
Independent claim 1
Appellants argue that it would not have been obvious to modify the
header interface of Chartet to include the tapered openings of Nguyen, as
proposed by the Examiner (Appeal Br. 12—13). We are unpersuaded.
The Examiner concludes that it would have been obvious to modify
the header of Chartet with the tapered opening of Nguyen in order to
facilitate the reception of the tube into the header (see Final Act. 4).
Appellants argue that the proposed modification would result in a space
between the tubes and the header, and that Chartet teaches away from this
result (see Appeal Br. 13).
5
Appeal 2015-003819
Application 12/744,730
However, we do not agree that the proposed modification would result
in a space between the tube and the header. Although the Examiner
addresses, in the alternative, the possibility of including a space between the
tube and the header (Ans. 12), the modification of Chartet is based on
Nguyen, which tapers both the tube and the header opening, such that there
is no space between them. Indeed, Nguyen expressly discloses that:
The degree of taper of the inclined contact surface 50b is
congruent with the taper of the inclined surface 44b of the tube
end 44 so that the small oval end at the distal end of the tube
end 44 will be guided thereby until the surfaces 44b and 50b
mate as shown in FIG. 3.
(Nguyen, col. 5,11. 18—24 (emphasis omitted)). As such, the proposed
modification of Chartet would not have a space between the tube and the
header opening, and this is in keeping with what a person of ordinary skill in
the art would understand based on the teachings of Nguyen (see Ans. 12 (“It
is clear to one of ordinary skill in the art that both Chartet and Nguyen seek
to have a sealed joint contact between the tubes and header.”)).
Appellants secondarily argue that Chartet “teaches away” from such a
modification, or that the combination of Chartet and Nguyen would be
incompatible. Appellants assert:
Chartet specifically teaches that the layer plates 2i, 22, 23 are cut
such that tube passages 4 have a shape corresponding to that of
the tubes 1. See Col. 1, lines 60-67 and Col. 2, lines 4-14 and
lines 32-35. More specifically, the tube openings 4 in each of
the layer plates 2\, 22, 23 are specifically configured to engage
the tubes 1 to ensure that each layer plate 2\, 22, 23 coupled
(e.g., brazed) to the tubes 1. See Col. 1, Col. 2, lines 43-60.
(Appeal Br. 11; see also id. at 12). However, even if these passages in
Chartet were understood to teach away from a space between the tube and
6
Appeal 2015-003819
Application 12/744,730
header opening, we determine, as above, that the Examiner’s proposed
modification of Chartet would not result in a space between the tube and the
header opening, i.e., because both the tube and the header opening would be
tapered, as taught by Nguyen.
To the extent that Appellants argue that the Examiner’s combination
is based on hindsight (see Reply Br. 2—3), we agree with the Examiner that it
would have been obvious to a person of ordinary skill in the art to modify
Chartet with outwardly tapered header openings, as taught by Nguyen, for
the purpose of positively locating the tube within the header to facilitate
assembly as recognized by Nguyen (col. 5,11. 18—23) (see Final Act. 4).
Finally, Appellants argue that Chartet’s layer 22 is not a
“reinforcement member,” as recited in independent claim 1, because
Chartet’s layer 22 is not separate from layer 2 \ (the header) (Appeal Br. 11—
12). We are unpersuaded. There is nothing in the claim language which
requires the recited “reinforcement member” to be separate from the header,
nor is there such a definition in the Specification. As such, under the
broadest reasonable interpretation standard which governs this proceeding,
we agree with the Examiner that layer 22, as taught by Chartet, meets the
“reinforcement member” limitation of independent claim 1. Ans. 11.
For these reasons, we sustain the Examiner’s rejection under § 103(a)
of independent claim 1.
Independent claim 16
Appellants’ assertions with respect to independent claim 16, although
directed to different limitations, are premised on similar arguments as those
made with respect to independent claim 1 (Appeal Br. 14—16), and we find
them unpersuasive for similar reasons. Accordingly, we sustain the
7
Appeal 2015-003819
Application 12/744,730
Examiner’s rejection under § 103(a) of independent claim 16, for similar
reasons as for independent claim 1.
Dependent claims 2—5, 15, and 17—19
Claims 3 and 5 each depend ultimately from claim 1. Appellants’
assertions with respect to claims 3 and 5, although directed to different
limitations, are premised on similar arguments as those made with respect to
independent claim 1 (id. at 13—14), and we find them unpersuasive for
similar reasons. Accordingly, we sustain the Examiner’s rejection under
§ 103(a) of claims 3 and 5, for similar reasons as for independent claim 1.
Claims 17 and 19 each depend ultimately from claim 16. Appellants’
assertions with respect to claims 17 and 19, although directed to different
limitations, are premised on similar arguments as those made with respect to
independent claim 16 (id. at 14—16), and we find them unpersuasive for
similar reasons. Accordingly, we sustain the Examiner’s rejection under
§ 103(a) of claims 17 and 19, for similar reasons as for independent claim
16.
Appellants do not argue the patentability of claims 2, 4, 15, and 18
separately from that of claims 1 and 16, from which they each respectively
depend. We, therefore, sustain the Examiner’s rejection under § 103(a) of
claims 2, 4, 15, and 18, for similar reasons as for independent claims 1 and
16.3
3 Appellants argue the patentability of claim 24 in this section, but claim 24
has not been rejected under § 103(a) and is not under appeal; therefore we
disregard this argument.
8
Appeal 2015-003819
Application 12/744,730
Rejection III (Obviousness)
Dependent claims 7—12, 14, 21, and 22
Claims 7—12, 14, 21, and 22 stand rejected under § 103(a) over
Chartet and Nguyen, further in view of Young. Appellants argue for claims
7—12, 14, 21, and 22 that Young fails to remedy the argued deficiencies in
Chartet and Nguyen. Having found no deficiency therein, we sustain the
Examiner’s rejection under § 103(a) of claims 7—12, 14, 21, and 22, for
similar reasons as for independent claims 1 and 16, from which they each
respectively depend.
Dependent claims 6 and 20
Appellants’ assertions with respect to claims 6 and 20, although
directed to different limitations, are premised on similar arguments as those
made with respect to independent claims 1 and 16 (id. at 14, 16), and we
find them unpersuasive for similar reasons. Accordingly, we sustain the
Examiner’s rejection under § 103(a) of claims 6 and 20, for similar reasons
as for independent claims 1 and 16.
DECISION
The Examiner’s decision to reject claims 23—25 under § 112, first
paragraph, is affirmed.
The Examiner’s decision to reject claims 1—12 and 14—22 under § 103
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)(l)(iv).
AFFIRMED
9