Ex Parte Katou et al

Patent Trial and Appeal Board

Aug 15, 2016

13057408 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/057,408 02/03/2011 Isao Katou
22429 7590 08/17/2016
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5156-023 2623
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ISAO KATOU, NAOTAKA IWASA WA, and
HIROTAKA KADO
Appeal2014-008429
Application 13/057,408 1
Technology Center 3700
Before MICHAEL L. HOELTER, JASON W. MEL VIN, and
GORDON D. KINDER, Administrative Patent Judges.
MELVIN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a), from the Examiner's
rejection of claims 6-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Sanden Corporation as the real party in interest.
Appeal Br. 2.
Appeal2014-008429
Application 13/057,408
BACKGROUND
The claims are directed to a heat exchanger. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6. A heat exchanger comprising:
a plurality of heat transfer tubes spaced from one another in
a radial direction thereof and arranged vertically and
longitudinally;
a plurality of heat transfer fins spaced from one another and
disposed in an axial direction of the heat transfer tubes;
and
a carbon dioxide refrigerant provided for circulation through
the heat transfer tubes, wherein
each of the heat transfer tubes has
an inner diameter of 4 mm or more,
an outer diameter D in a range of 5 mm :S D :S 6 mm, and
a thickness tin a range of 0.05 x D :St :S 0.09 x D,
the heat transfer tubes are disposed at a vertical pitch L 1 in a
range of 3 x D :S Ll :S 4.2 x D, and
the heat transfer tubes are disposed at a longitudinal pitch L2
in a range of 2.6 x D :S L2 :S 3.64 x D.
Br. 19 (Claims App.).
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 6-9, 14-17, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mitsutaka (JP 2006-194476 A, iss. June 27,
2006). Non-Final Act. 2-5.
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Application 13/057,408
2. Claims 10-13 and 18-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mitsutaka and JP Pub. 1-159597 (JP App. 62-
316056, iss. June 22, 1989).2 Non-Final Act. 5-6.
DISCUSSION
Claim 6
The Examiner finds that Mitsutaka substantially teaches the
limitations of claim 6 but "lacks the heat transfer tubes are disposed
specifically at a vertical pitch Ll in a range of 3D :S Ll :S 4.2D, and the heat
transfer tubes are disposed at a longitudinal pitch L2 in a range of 2.6D :S L2
:S 3.64D." Non-Final Act. 3. Specifically, "the spacing of tubes is more
narrow in Mitsutaka" because it teaches Ll up to only 2.9D and L2 up to
only 2.03D. Id. As described below, the Examiner provides two reasons
that a person of skill in the art at the time of invention would have modified
the pitch-to-diameter ratios in Mitsutaka to arrive at the claimed ratios.
Decreasing pressure drop across the tube bank
The Examiner first reasons that:
It would have been obvious to a person having ordinary skill in
the art at the time of the invention to have modified Mitsutaka
to have a vertical pitch in the [claimed] range ... and a
longitudinal pitch in [the claimed] range ... in order to
decrease the pressure drop of the secondary fluid through the
heat exchanger.
2 The Examiner refers to this reference as '" 566" although that appears to be
erroneous. The Examiner also uses the designation "1-159 597" for the
reference; the reference numbered 1-159597 is Japanese Patent Application
62-316056, not 62-3160566 as stated by the Examiner. Thus, we understand
the Examiner to use '566 in the rejection to refer to the application published
as 1-159597.
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Application 13/057,408
Id.
Appellants dispute this conclusion, arguing that "there is no evidence
in Mitsutaka that the Examiner's proposed modification regarding Ll/D
and/or L2/D would lead to a decrease of the pressure drop." Br. 7. The
Examiner, however, does not rely on Mitsutaka itself for the notion that
modifying the L/D (pitch-to-diameter) ratio would change the pressure drop.
As the Examiner explains, the rejection "relies on the known principal that
decreasing the restriction within a flow path also decreases the pressure drop
or resistance to flow there through." Ans. 6. We agree with the Examiner
that it is well within common knowledge to a person of ordinary skill in the
art that decreasing restriction decreases pressure drop. The Examiner further
supports the rationale for modifying Mitsutaka by pointing to Beale (Steven
Beale, Tube banks, crossjlow over, in INTERNATIONAL ENCYCLOPEDIA OF
HEAT AND MASS TRANSFER (National Research Council Canada 1997)).
Non-Final Act. 7-8; Ans. 7-8. We further agree with the Examiner that
Beale supports that a person of skill would understand the pitch-to-diameter
ratios of heat exchanger tube arrays as parameters important to the flow of
fluids across such arrays and that increasing L/D will reduce the pressure
drop of flow across an array. See Beale 1 (equations 1 and 2, defining ratios
for vertical and longitudinal pitch-to-diameter ratios), 3 (describing the
overall pressure loss coefficient, "often expressed in terms of an Euler
number, Eu"), 5 (equations 7 and 8, in conjunction with tables 1 and 2,
indicating that increasing the pitch-to-diameter ratios results in a decreasing
Euler number). Thus, the Examiner has provided "articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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Application 13/057,408
Appellants also argue that modifying Mitsutaka as the Examiner
proposes-to achieve the claimed pitch-to-diameter ratios-would result in
the outer diameter of the tubes dropping below the threshold described by
Mitsutaka, therefore rendering Mitsutaka unsuitable for its intended purpose.
Br. 9, 10-11. This argument does not convince us that the Examiner erred.
As the Examiner explains, the ratio may be affected by varying either the
spacing of the tubes or their diameter. Ans. 6-7. Thus, a skilled practitioner
could have achieved the claimed pitch-to-diameter ratios by simply spacing
the tubes of Mitsutaka apart without changing the diameter of the tubes.
Moreover, such a practitioner would have found it obvious to change tube
spacing rather than diameter because the diameter of the tubes affects the
flow within the tubes. See Br. 9 (noting that both the present Specification
and Mitsutaka teach the importance of maintaining a specific range for tube
diameter). Thus, in order to independently adjust the pressure drop across a
tube bank, it was logical for a person of skill to change the tube spacing
rather than tube diameter.
Relatedly, Appellants argue that reducing the tube diameter would
increase, not decrease, the pressure drop. Br. 9. The Examiner points out,
and we agree, that Appellants conflate the two flows in the heat exchanger-
the Examiner relied on reduced flow of the air transverse to the tubes, while
Appellants focus on the carbon-dioxide refrigerant within the tubes. See
Ans. 7. Thus, Appellants' arguments regarding the effect of modifying
Mitsutaka' s pitch-to-diameter ratios do not apprise us of error in the
rejection.
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Application 13/057,408
Optimization of the pitch-to-diameter ratios
Regarding the difference between Mitsutaka' s pitch-to-diameter ratios
and the claimed ratios, the Examiner also reasons that "it is not considered
inventive to discover the optimum or workable ranges through routine
experimentation." Non-Final Act. 4 (citing MPEP § 2144.05(II)(A)). The
Examiner points out that the claimed ranges are very close to the ranges
taught in Mitsutaka. Non-Final Act. 8; see Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (holding that the claimed
quantities were "so close that prima facie one skilled in the art would have
expected them to have the same properties"); In re Aller, 220 F.2d 454
(CCP A 1955) (concluding it would have been obvious as a matter of
optimization to reach claimed ranges for temperature and acid concentration
outside of what had been taught by the prior art).
Appellants assert that the Examiner fails to show that the pitch-to-
diameter ratios are result-effective variables subject to optimization, and that
the claimed ratios produce unexpected results. Br. 12-14 (citing In re
Antonie, 559 F.2d 618 (CCPA 1977)). In response, the Examiner states that
Mitsutaka "recognizes diameter to pitch ratios as results effective variables
to be optimized." Ans. 8 (citing Mitsutaka ,-i,-i 41--42). The Examiner also
points to Beale as supporting that the pitch-to-diameter ratios "are well
known to be considerations in determining a heat exchanger's performance."
Ans. 8 (citing Beale, equations 1 and 2). We read Mitsutaka to teach
adjusting the pitch and diameter of the tubes together, such that the pitch-to-
diameter ratios would not necessarily change. See Mitsutaka ,-i 41--42
("[T]he row pitch Pl and the step pitch P2 are reduced with the outer
diameter Do."). Thus, we agree with Appellants that Mitsutaka does not
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Application 13/057,408
teach the claimed ratios as result-effective ratios. We read Beale, however,
to support the Examiner's finding. As discussed above, Beale teaches the
pitch-to-diameter ratios (vertical and longitudinal, as claimed) of a heat
exchanger as parameters important to performance. See Beale 1-5.
Although Beale teaches that other parameters also affect the performance of
heat exchangers, that does not take away from its identification of the pitch-
to-diameter ratios as significant. Accordingly, we agree with the Examiner
that Beale provides evidence that a person of skill would have understood
the pitch-to-diameter ratios as result-effective variables.
Further, although Appellants argue that none of the prior art
specifically teaches the significance of the pitch-to-diameter ratios to "heat
exchange capability per unit weight" (Br. 12-13), we agree with the
Examiner that the argument does not overcome the rejection. See Ans. 8-9.
While Appellants may have explained their motivation to achieve the
claimed pitch-to-diameter ratios, they offer nothing beyond bare assertions
that the allegedly improved capability was a "new and unexpected result."
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that even
common sense cannot support the conclusion that a result was unexpected).
Thus, Appellants' arguments regarding the Examiner's reliance on
optimization of a result-effective variable do not apprise us of error.
***
In light of the two foregoing rationales for modifying Mitsutaka's
pitch-to-diameter ratios, we sustain the rejection of claim 6. For
independent claim 22, Appellants rely on the same arguments made for
claim 6. Br. 14. Thus, we sustain the rejection of claim 22. Although
Appellants do not specifically discuss claims 8, 14, or 16, they are included
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in the heading of Appellants' brief and we understand Appellant to rely on
the same arguments made for claim 6. See Br. 6. Thus, we also sustain the
rejection of those claims. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants also argue that the rejection of claims 10-13 and 18-21
was improper for the same reasons argued for claim 6. Br. 17. Of that
group, we discuss those that depend from claim 7 below, along with claim 7.
The others-claims 10, 12, 18, and 20-stand or fall with claim 6, and we
therefore also sustain the rejection of claims 10, 12, 18, and 20.
Claim 7
Claim 7, which depends from claim 6, limits the number of
longitudinal rows, N, to "a range of 2 :SN :S 8," and limits the spacing of the
fins on the heat transfer tubes such that "a value of Pp/N is in a range of 0.5
mm :S Fp/N :S 0.9 mm," where Pp represents the pitch of the fins. Br. 19
(Claims App.).
Appellants argue that the Examiner has not shown a basis on which to
conclude that "Mitsutaka discloses that the fin pitch is based on the number
of rows of tubes and provides upper and lower limits for the fin spacing
based on optimization." Br. 15. We agree. The Examiner reasons that "[a]
known fin width also yields the fin pitch when the heat exchanger is of a
known size," but we do not understand such a relationship to be self-evident.
Ans. 9. Although the Examiner cites paragraphs 48 and 49 of Mitsutaka, we
do not agree that the translation supports such a finding. Paragraph 49
discusses the "width T of the fin" but does not clarify further. Nor do we
agree that Mitsutaka teaches a dependency of the fin pitch on the number of
rows of tubes. See Mitsutaka ,-i,-i 48--49.
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Accordingly, we do not sustain the Examiner's rejection of claim 7.
Because claims 9, 11, 13, 15, 1 7, 19, and 21 each depend, directly or
indirectly, from claim 7, we also do not sustain the Examiner's rejections of
those claims.
DECISION
For the above reasons, the Examiner's rejection of claims 6-22 is
affirmed-in-part. We affirm the rejections of claims 6, 10, 12, 18, and 20.
We reverse the rejections of claims 7, 9, 11, 13, 15, 17, 19, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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