13231556 (P.T.A.B. Jul. 18, 2017)

Ex Parte Kohl et al

Patent Trial and Appeal BoardJul 18, 2017

13231556 (P.T.A.B. Jul. 18, 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. 13/231,556 09/13/2011 Michael Kohl 1006/0205PUS1 8824 60601 7590 07/18/2017 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 FAIRFAX, VA 22033 EXAMINER SINGH, AMIT K ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 07/18/2017 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 KOHL, THOMAS SPRANGER, KARL-GERD KRUMBACH, and THIERRY CLAUSS ____________ Appeal 2016-0050731 Application 13/231,5562 Technology Center 3700 ____________ Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1–35, 37, 39, and 40. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed June 15, 2015) and Reply Brief (“Reply Br.,” filed Dec. 31, 2015), and the Examiner’s Answer (“Ans.,” mailed Nov. 4, 2015) and Final Office Action (“Final Act.,” mailed Dec. 31, 2014). 2 According to Appellants, the real parties in interest are “BEHR GMBH & CO. KG” and “BEHR FRANCE ROUFFACH SAS.” Appeal Br. 2. Appeal 2016-005073 Application 13/231,556 2 BACKGROUND The Specification “relates to a heat exchanger and to a motor vehicle HVAC system.” Spec. ¶ 3. CLAIMS Claims 1–35, 37, 39, and 40 are on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A heat exchanger comprising: at least one electrical resistance heating element; at least two conductors electrically connected to the at least one electrical resistance heating element to conduct electric current through the at least one electrical resistance heating element and thereby heat the electrical resistance heating element; at least two heat-conducting elements that transfer heat from the at least one electrical resistance heating element; at least one electrical insulating element that insulates electrically the at least two conductors and the at least one electrical resistance heating element; at least one tube having a tube opening; at least one cavity bounded by the at least one tube, the at least two conductors, the at least one electrical insulating element, and the at least one electrical resistance heating element are arranged within the at least one cavity; and an adapter plate having at least one opening that corresponds to the tube opening of the at least one tube, wherein the at least one tube is connected fluid-tight to the adapter plate, wherein the adapter plate is connected fluid-tight to at least one of an electronics housing or an HVAC housing, and Appeal 2016-005073 Application 13/231,556 3 wherein the at least two heat conducting elements are attached to opposing outer surfaces of the at least one tube, such that the at least one tube is positioned between the at least two heat conducting elements. Appeal Br. 13. REJECTIONS 1. The Examiner rejects claims 1–8, 10–35, 37, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over Beetz3 in view of Testa4 and Fang.5 2. The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as unpatentable over Beetz in view of Testa, Fang,6 and Clade.7 DISCUSSION With respect to claim 1, the Examiner initially finds that Beetz discloses a device as claimed, except that Beetz does not disclose at least two heat conducting elements or the claimed arrangement of two heat conducting elements; a tube; and an adapter plate, as claimed. Final Act. 3– 4 (citing Beetz Fig. 2; col. 4, ll. 15–23, 51–55). The Examiner finds that Beetz discloses one heat conducting element and that duplication of this part would have been obvious. Id. The Examiner further finds that Testa teaches 3 Beetz et al., US 8,301,021 B2, iss. Oct. 30, 2012. 4 Testa, US 2009/0107974 Al, pub. Apr. 30, 2009. 5 Fang et al., US 7,881,594 B2, iss. Feb. 1, 2011. 6 Although the header for this rejection in the Final Action does not list Fang, the body of the rejection makes clear that the rejection is over Fang as well. See Final Act. 13–14. 7 Clade et al., US 2009/0020515 Al, pub. Jan. 22, 2009. Appeal 2016-005073 Application 13/231,556 4 a tube and adapter plate as claimed. Id. at 4 (citing Testa Fig. 3; ¶ 33). The Examiner also finds that Fang teaches at least two heating element that may “be arranged in any desirable order or configuration, including a concentric configuration,” and “that the heating element can be in any suitable shape that promotes consistent heating.” Id. at 5 (citing Fang Figs. 16A, 16B; col. 4, l. 65–col. 5, l. 6; col. 10, l. 50–col. 11, l. 26; col. 11, ll. 16–24). The Examiner concludes, inter alia, that it would have been obvious to modify Beetz to include “heating elements in the configuration taught by Fang, to provide a lower heat emission per element, lower manufacturing costs, improved [sic] efficiency, and longevity.” Final Act. 13 (citing Fang Abstract). Further, in the Answer, the Examiner indicates that Beetz is not relied upon as teaching a heat-conducting element. See Ans. 4–6, 16–17. Instead, the Examiner relies solely on Fang as teaching or suggesting at least two heat-conducting elements in the arrangement claimed. Id. at 16–17. In particular, the Examiner finds that Fang teaches two heating elements that can be arranged as desired and that such heating elements would inherently conduct heat. Id. We are persuaded of reversible error by Appellants’ argument that the Examiner has not provided an adequate reason with appropriate rational underpinning to support the conclusion of obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“‘[Rejections on obviousness 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.’” (Citation omitted.)). As discussed below, we agree with Appellants that the Examiner has not provided a rational reason Appeal 2016-005073 Application 13/231,556 5 why one of ordinary skill in the art would have been motivated to add the heating elements of Fang to the tube of the combined device of Beetz and Testa in the configuration claimed. See Reply Br. 6–7. Beetz is directed to “a heating device for fuel, in particular for diesel fuel” and “a motor vehicle equipped with such a heating device.” Beetz col. 1, ll. 11–16. Testa also discloses a heating system, which is designed to raise the temperature of an internal combustion engine. Testa, Abstract. In contrast, Fang is related “to microchip heaters for microfluidic and micromechanical applications” and discloses “[a]n integrated semiconductor heating assembly” in which heating elements are embedded in a semiconductor device. See Fang Fig. 1; col. 1, ll. 8–10, 61–62. In the rejection, the Examiner relies on Fang’s disclosure that heating elements can be provided in any desirable configuration and that the configuration taught by Fang provides lower heat emission per element, lowers manufacturing costs, improves efficiency, and improves longevity. Ans. 16–17. Fang does, in fact, disclose that the configuration of the heating elements may vary and that Fang’s device may provide these advantages. See Fang col. 10, l. 50– col. 11, l. 17; Abstract. However, we find that Fang’s disclosures in this regard are not sufficient to support the Examiner’s conclusion because they do not provide an adequate reason with the required rational underpinnings to add heating elements to a heating device for a motor vehicle. As discussed, Fang is concerned with microchip heaters for microfluidic and micromechanical applications. Without further explanation from the Examiner, we are not persuaded that one of ordinary skill in the art would have recognized that the advantages discussed in Fang for designing a microchip heater would apply to, or be realized by, modifications of the Appeal 2016-005073 Application 13/231,556 6 combined device of Beetz and Testa given the disparate applications of these references. For these reasons, we do not sustain the rejection of claim 1. For the same reasons, we also do not sustain the rejections of claims 2–35, 37, 39, and 40, all of which depend from claim 1. CONCLUSION We REVERSE the rejections of claims 1–35, 37, 39, and 40 for the reasons identified herein. REVERSED