Ex Parte Sispera et al

Patent Trial and Appeal Board

Sep 26, 2018

13951870 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/951,870 07/26/2013
58637 7590 09/28/2018
Shumaker, Loop & Kendrick, LLP
1000 Jackson Street
Toledo, OH 43604-5573
FIRST NAMED INVENTOR
Petr Sispera
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.
H-IP13038344US1
(205249)
CONFIRMATION NO.
7298
EXAMINER
HINCAPIE SERNA, GUSTAVO A
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
c golupski@ slk-law. com
tlopez@slk-law.com
dmiller@slk-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETR SISPERA, ANDREAS CAPELLE,
PETER DIEHL, STOJAN CUCUZ,
BERND HOMEYER, and PETR STEPKA 1
Appeal2018-002898
Application 13/951,870
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Petr Sispera et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 2, 5-7, 9-17, and 20-23. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Hanon Systems as the real party in interest.
Appeal2018-002898
Application 13/951,870
CLAIMED SUBJECT MATTER
Appellants' invention relates to a heat exchanger for exhaust gas
cooling in motor vehicles. Spec. para. 2.
Claims 1 and 20 are independent. Claim 1 is illustrative and is
reproduced below:
1. A heat exchanger for cooling an exhaust gas comprising:
a housing having a housing wall coupled to an outlet tube
bottom and an inlet tube bottom, the housing forming a flow
chamber for a coolant and delimiting a flow thereof, wherein the
housing further includes a coolant inlet and a coolant outlet;
a plurality of heat exchange tubes disposed within the
housing and configured for conveying a flow of the exhaust gas
therethrough, wherein each of the plurality of heat exchange
tubes includes an inlet and an outlet, the plurality of heat
exchange tubes having a plurality of deflection zones and a
plurality of rectilinear sections, each of the plurality of rectilinear
sections disposed adjacent and in fluid communication with at
least one deflection zone, wherein the plurality of deflection
zones cooperates with the plurality of rectilinear sections to
cause each of the heat exchange tubes to have an S-shape, the
plurality of deflection zones deflecting the flow of the exhaust
gas through the plurality of heat exchange tubes and the flow of
the coolant within the flow chamber;
a plurality of bypass tubes disposed within the housing and
configured to convey at least a portion of the flow of the exhaust
gas therethrough; and
at least two coolant flow directing means configured to
divide the flow chamber for the coolant into at least three ducts
to deflect the flow of the coolant, wherein each of the at least two
coolant flow directing means is disposed between two adjacent
rectilinear sections of each of the plurality of heat exchange
tubes, wherein the inlet of each of the plurality of heat exchange
tubes is disposed adjacent the coolant inlet and the outlet of each
of the plurality of heat exchange tubes is disposed adjacent the
coolant outlet and the plurality of bypass tubes.
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Appeal2018-002898
Application 13/951,870
THE REJECTIONS
The Examiner has rejected:
(i) Claims 1, 2, 5-7, 9, 12, 15-17, and 20-23 under 35 U.S.C.
§ I03(a) as being unpatentable over Dogan (US 2009/0032212 Al,
published Feb. 5, 2009) in view of Johnson (US 99,573, issued Feb. 8,
1870); and
(ii) Claims 10, 11, 13, and 14 under 35 U.S.C. § I03(a) as being
unpatentable over Dogan in view of Johnson and Capelle (US 2009/0013676
Al, published Jan. 15, 2009).
ANALYSIS
Claims 1, 2, 5-7, 9, 12, 15-17, and 20-23--0bviousness--Dogan/Johnson
The Examiner finds that Dogan and Johnson disclose or suggest most
of the limitations of claims 1 and 20. See Non-Final Act. 2-5, 7. In
particular, the Examiner finds that Dogan discloses a heat exchanger
comprising a housing (housing body 10), the housing having a housing wall
(wall 5), and a bypass tube (bypass duct 40) disposed in the housing. Id. at
2-3; see also Ans. 2. The Examiner determines that it would have been
obvious as a matter of design choice to modify the heat exchanger of Dogan
to have a plurality of bypass tubes because the number of bypass tubes does
not change its function. Non-Final Act. 3; see also Ans. 3.
Appellants argue, inter alia, that Dogan does not disclose a plurality
of bypass tubes disposed within a housing, as claimed. Appeal Br. 9-10.
Appellants contend that Dogan teaches away from the modification
proposed by the Examiner, which provides this limitation. Reply Br. 2
( citing Dogan para. 6).
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Appeal2018-002898
Application 13/951,870
Dogan discloses a housing body 10 that includes first and second heat
exchanger chambers 20, 30, and an integral bypass duct 40 separated from
chambers 20, 30 by partition 13. See Dogan Fig. 2. Dogan discloses that
providing this integral bypass duct allows for a simple and cost-saving
structure that can be produced in a single production step, as compared to
using a bypass pipe or a bundle of bypass pipes in a housing, which
construction is complex and increases cost expenditures in production.
Dogan para. 6.
The Examiner's finding that Dogan's bypass duct 40 constitutes a
bypass tube is beyond a broadest reasonable interpretation of the term
"tube." An ordinary artisan, as evidenced by the distinction between the two
terms highlighted in Dogan, as noted above, would recognize that the duct
40, formed by the outer walls of housing body 10 and partition 13 is not a
tube. Thus, the Examiner's conclusion that it would have been obvious to
provide a plurality of bypass tubes is premised on an overly broad
interpretation of "tube" in the heat exchanger context.
Further, even if it were the Examiner's position that it would have
been obvious to replace bypass duct 40 of Dogan with a plurality of bypass
tubes, that conclusion is belied by the teachings of Dogan. Such a
proposed modification would fly directly in the face of a stated object of the
Dogan contribution to the art, and is directly contrary to the direction taken
in the Dogan disclosure, which purposely provides the duct in question in
lieu of a bundle of tubes. As such, Dogan is correctly characterized as
teaching away from the proposed modification and the claimed invention.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (reference teaches
away from a combination when it criticizes, discredits, or otherwise
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Appeal2018-002898
Application 13/951,870
discourages the proposed modification); In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
The Examiner thus has not established a prima facie case of
obviousness. The rejection of claims 1 and 20, and claims 2, 5-7, 9, 12,
15-17, and 21-23 depending therefrom, is not sustained.
Claims 10, 11, 13 and 14--0bviousness--Dogan/Johnson/Capelle
Capelle is not relied on by the Examiner to cure the deficiency noted
above with respect to the proposed combination of Dogan and Johnson. See
Final Act. 8. The rejection of claims 10, 11, 13, and 14 is not sustained.
DECISION
The rejections of claims 1, 2, 5-7, 9-17, and 20-23 are reversed.
REVERSED
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