Ex Parte Kehoe

Patent Trial and Appeal Board

Nov 20, 2014

11850930 (P.T.A.B. Nov. 20, 2014)

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.
11/850,930 09/06/2007 Michael P. Kehoe 8371
68874 7590 11/21/2014
MICHAEL P. KEHOE
RR # 1 BOX 55 RIVER RD.
FALLS, PA 18615
EXAMINER
MURPHY, KEVIN F
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
11/21/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL P. KEHOE
____________
Appeal 2012-010795
Application 11/850,930
Technology Center 3700
____________

Before STEFAN STAICOVICI, THOMAS F. SMEGAL and
TIMOTHY J. GOODSON, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael P. Kehoe (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1−10, 14, 18, 22, 26 and 30.
Claims 11−13, 15−17, 19−21, 23−25, 27−29, and 31−33 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claims 1 and 6, which are reproduced below.
1. A viscosity reducing apparatus, mounted on a vehicle,
comprising:
a container having a cylindrical body with first and
second flat circular plates, a first side with an outlet and an inlet
connected to a hollow center pipe's first end and a second side
having a spaced apart inlet opening and an outlet opening
which are parallel; and
said container containing coiled tubes,
a said hollow center pipe being open at a second end and
used as an inlet to convey the viscous product into said
container with said hollow center pipe being spaced within said
container and spaced apart from the second side wherein said
viscous product reverses direction of flow due to said second
end being opened and spaced apart within said container,
an outlet for the viscous product, and
an inlet and outlet for the coiled tubes, wherein a first
coiled tube which is connected to said inlet is wrapped around
the center pipe and consecutive coiled tubes are wrapped
around the coiled tube with a gap being left between said coiled
tubes for the viscous product to flow between the coiled tubes
wherein said outlet is connected to a second end of the coiled
tuber with said inlet and outlet extending from the openings of
the container with said inlet and outlet being parallel, wherein
all said inlets, outlets, and hollow center pipe are only mounted
on said circular flat plates.
Amendment filed June 16, 2011, page 31.

6. A system comprising:
a container containing coiled tubes,
an inlet and an outlet for the viscous product, and
an inlet and outlet for the coiled tubes, and

1 Had the pages been numbered, we find this claim to be presented on page 3
of the Amendment filed June 16, 2011.
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a heating source for the coiled tubes wherein said
container and said heating source are connected together.
Amendment filed June 16, 2011, page 52.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.

1. Claims 1−5, 10, 14, and 18 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject
matter which applicant regards as the invention. Answer
5−6.
2. Claims 1 and 3−5 are rejected under 35 U.S.C. § 103(a)
as unpatentable over McLaren and Dempsey (US
5,379,832, iss. Jan. 10, 1995). Id. at 8−12.
3. Claim 2 is rejected under 35 U.S.C. §103(a) as
unpatentable over McLaren and either Dempsey or
Hokanson (US 4,471,836, iss. Sept. 18, 1984). Id. at
12−13.
4. Claims 6, 7, 9, 22, and 26 are rejected under 35 U.S.C.
§ 102(b) as anticipated by McLaren (US 4,895,203, iss.
Jan. 23, 1990). Id. at 6−7.
5. Claims 6 and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by Orr (US 2006/0005954 A1, pub. Jan. 12,
2006). Id. at 7−8.

2 See footnote 1.
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6. Claims 6, 7, 9, 22, and 26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over McLaren and Dempsey. Id.
at 13−14.
7. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Orr and Moore (US 5,239,615, iss.
Aug. 24, 1993). Id. at 15.
8. Claims 8, 10, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McLaren and Moore or McLaren, Dempsey
and Moore. Id. at 15−16.
9. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over McLaren, Moore and Rundell or McLaren, Dempsey,
Moore and Rundell (US 4,140,150, iss. Feb. 20, 1979). Id. at
16−17.
10. Claim 30 is rejected under 35 U.S.C. §103(a) as unpatentable
over McLaren and Rundell or McLaren, Dempsey and Rundell.
Id. at 17−18.

ANALYSIS
Indefiniteness rejection claims 1−5, 10, 14, and 18.
The Examiner finds, inter alia, that from reading claim 1 it is unclear
“how many inlets and outlets are being claimed.” Id. at 5. The Examiner
also finds claim 2 unclear for similar reasons, as more fully set forth at pages
5−6 of the Answer. Furthermore, the Examiner finds that there is
insufficient antecedent basis in claims 10, 14 and 18 for the limitation “said
vehicle.” Id.
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Appellant argues that the rejection “under 35 U.S.C. 112 second
paragraph…[is] moot because the claims have been amended because the
Applicant considered what the examiner had said in the Final Office action.”
Br. 153. However, the Amendment after the Final Office Action that was
submitted on October 4, 2011, was not entered by the Examiner. See
Answer at page 34. Thus, we agree with the Examiner that “because these
amendments have not been entered, these arguments [by Appellant] are
moot.” Answer 18. . See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir.
2002) (holding that the Board did not err in sustaining a rejection under 35
U.S.C. § 112, second paragraph, when the applicant failed to contest the
rejection on appeal).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–5, 10, 14 and 18 under 35 U.S.C. § 112, second paragraph.

Obviousness of claims 1–5 over McLaren and Dempsey
Appellant states, inter alia, that claims 1−5 “stand or fall together.”
Br. 15. We select claim 1 to represent this group and the remaining claims
stand or fall with claim 1. 37 C.F. R. § 41.37 (c)(1)(vii)(2011).
We have considered Appellants’ arguments and do not find them
persuasive of error in the Examiner’s rejection of claim 1 as being obvious
over McLaren and Dempsey.

3Appellant did not provide page numbers on the Appeal Brief. However, for
ease of referring to Appellant’s arguments, we have assigned page numbers
1 through 38 to the Appeal Brief.

4In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection of
the pending claims that we review. See In re Webb, 916 F.2d 1553, 1556
(Fed. Cir. 1990).
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The Examiner finds at pages 8 and 9 of the Answer, that Dempsey
discloses the heat exchanger recited by claim 1, but does not disclose that it
is mounted on a vehicle, and that “McLaren teaches a heat exchanger
mounted on a vehicle (abstract).” Accordingly, the Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to provide the heat exchanger of Dempsey on the
vehicle of McLaren for the purpose of utilizing the heat exchanger in a well-
known application requiring heating of a process fluid on a vehicle as taught
by McLaren.”
Appellant argues that claim 1 is patentable because “[n]one of the
reference[s] have a hollow center pipe being open at first and second end
inside the container body with coiled tubes wrapped around it contained in
the cavity of the containers cylindrical body as recited below and support
within the drawings see fig. 5.” Br. 5. However, the Examiner correctly
finds that “Dempsey discloses a hollow center pipe 440 (Figures 23 and 24
especially) being open at a second end (bottom end of 440 [)]…with coiled
tubes 448, 450 wrapped around it contained in the cavity of a container's
cylindrical body 404.” Answer 18.
Appellant also contends that Figure 24 of Dempsey “has the tube
contained in [the] body which means the viscous fluid cannot touch the
coils” Br. 8. However the Examiner appropriately points out that Figure 24
of Dempsey “discloses this feature [i.e., viscous fluid touching the coils] via
opening 454.” Answer 18−19. See also Dempsey, col. 14, ll. 27−32.
Appellant also argues that claim 1 “shows the inlets and outlets
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within 90 degree in a quadrant of four and this is not shown by [Dempsey]”
Br. 8. However, because the Amendment dated October 4, 2011 was not
entered, this argument is not commensurate with the scope of claim 1.
In view of the above, we sustain the rejection of independent claim 1,
and claims 2–5 falling with claim 1, as unpatentable under 35 U.S.C.
§ 103(a) over McLaren and Dempsey.

Obviousness of claim 2 over McLaren and Hokanson.
Because we have affirmed the rejection of claim 2 under 35 U.S.C.
§ 103(a) as unpatentable over McLaren and Dempsey as discussed supra, we
find it unnecessary to reach a decision about the cumulative rejection of
claim 2 under 35 U.S.C. § 103(a) as unpatentable over McLaren and
Hokanson. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of
a claim on any of the grounds specified constitutes a general affirmance of
the decision of the examiner on that claim . . . .”).

Anticipation of claims 6, 7, 9, 22 and 26 by McLaren.
Appellant argues claims 6, 7, 9, 22 and 26 as a group. See Br. 11, 15.
We select claim 6 as the representative claim for this group and the
remaining claims stand or fall with claim 6. See 37 C.F.R. §
41.37(c)(1)(vii)(2011).
While not distinguishing claim 6 from McLaren, Appellant states that
“claim 6 has been amended to recite claim 1 plus a heater limitation” and
contends that claim 6 “should be patent[able for] the same reason [as
asserted] for claim 1.” Br. 11. We previously noted that Appellant argued
that claim 1 was patentable because “[n]one of the reference[s] have a
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hollow center pipe being open at first and second end inside the container
body with coiled tubes wrapped around it contained in the cavity of the
containers cylindrical body as recited below and support within the drawings
see fig. 5.” Id. at 5. However, because the Amendment dated October 4,
2011 was not entered, Appellant’s argument is not commensurate with the
scope of claim 6, which does not require a “hollow center pipe,” but merely
recites a container with coiled tubes and a heating source. See page 5 of the
Amendment filed June 16, 2011For the foregoing reasons, we sustain the
rejection of independent claim 6, and claims 7, 9, 22 and 26 falling with
claim 6, as anticipated by McLaren.

Anticipation of claims 6 and 7 by Orr.
The rejection of claims 6 and 7 under 35 U.S.C. §102(b) is pending.
See Ans. 7–8. The Appeal Brief does not contain any arguments contesting
or mentioning this pending rejection. Accordingly, the rejection of claims 6
and 7 as anticipated by Orr is summarily affirmed

Obviousness of claims 6, 7, 9, 22, and 26 over McLaren and
Dempsey.
Because we have affirmed the rejections of claims 6, 7, 9, 22, and 26
under 35 U.S.C. § 102(b) as anticipated by McLaren as discussed supra, we
find it unnecessary to reach a decision about the cumulative rejections under
35 U.S.C. § 103 of claims 6, 7, 9, 22, and 26 as unpatentable over McLaren
and Dempsey. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
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obviousness.); See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection
of a claim on any of the grounds specified constitutes a general affirmance
of the decision of the examiner on that claim . . . .”). We thus likewise
sustain the rejection of claims 6, 7, 9, 22, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over McLaren and Dempsey.
Rejections 7−11.
Appellant makes no argument in response to any of the above-
identified rejections under 35 U.S.C. §103(a) other than stating that
the rejections “are moot because the claims under Appeal have been
amended because the Applicant considered what the examiner had said in
the Final Office action.” Br. 15. However, as pointed out previously, the
Amendment after the Final Office Action that was submitted on October 4,
2011, was not entered by the Examiner.
Accordingly, the rejections of claims 8 and 9 over Orr and Moore, ,
claims 8, 10 and 14 over McLaren and Moore or McLaren, Dempsey and
Moore, claim 18 over McLaren, Moore, and Rundell or McLaren,
Dempsey, Moore and Rundell, and claim 30 over McLaren and Rundell or
McLaren, Dempsey and Rundell are summarily affirmed.
DECISION
We AFFIRM the Examiner’s rejections.
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

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