Ex Parte Troutman

Patent Trial and Appeal Board

Jul 15, 2016

12750914 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121750,914 03/31/2010 Stephen Troutman
134318 7590 07119/2016
Baker Botts L.L.P./Lennox
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
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.
018635.0298 9666
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN TROUTMAN
Appeal2014-005325
Application 12/750,914
Technology Center 3700
Before LYNNE H. BROWNE, ERIC C. JESCHKE, and MARK A. GEIER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen Troutman (Appellant)1 seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1, 3, 4, 6-17, and 20.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Heatcraft Refrigeration Products LLC as the real
party in interest. Br. 2.
Appeal2014-005325
Application 12/750,914
BACKGROUND
The disclosed subject matter "relates to a microchannel coil manifold
system that permits the connection of multiple microchannel coils." Spec.
i-f 102. Claims 1, 12, and 17 are independent. Claim 1 is reproduced below,
with emphasis added:
1. An expandable microchannel coil system,
compnsmg:
a plurality of modular assembly inlet
manifold sections;
wherein the plurality of modular assembly
inlet manifold sections terminate in an inlet stub
tube;
a plurality of modular assembly outlet
manifold sections;
wherein the plurality of modular assembly
outlet manifold sections terminate in an outlet stub
tube;
a plurality of microchannel coils; and
a plurality of coil manifolds;
wherein one of the plurality of coil
manifolds is in communication with one of the
plurality of microchannel coils on a first side
thereof and in communication with one of the
plurality of modular assembly inlet manifold
sections and one of the plurality of modular
assembly outlet manifold sections on the first side.
2
Appeal2014-005325
Application 12/750,914
REJECTION2
Claims 1, 3, 4, 6-17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Merkys (US 2005/0161202 Al, published July 28, 2005),
Mitchell (US 2,191,146, issued Feb. 20, 1940), and Kaess (US 3,447,598,
issued June 3, 1969).
DISCUSSION
A. Independent Claim 1 (and Dependent
Claims 3, 4, and 6-11)
Independent claim 1 recites, in relevant part, "a plurality of modular
assembly inlet manifold sections" that "terminate in an inlet stub tube" and
"a plurality of modular assembly outlet manifold sections" that "terminate in
an outlet stub tube." Br. 9 (Claims App.) (emphasis added). As to the "stub
tube" limitations, the Examiner found that Merkys "does not disclose ...
assembly manifolds composed of sections with first and second stub tubes"
but found that iviitchell:
discloses an expandable coil manifold system compnsmg a
plurality of coils A-C with inlet coil manifolds 4 and outlet coil
manifolds 5 (Figure 3) in communication with a plurality of
modular assembly inlet manifold sections with a first stub tube
6 and end plug and a plurality of modular assembly outlet
2 The Examiner rejected claims 12-16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement and
rejected claims 1, 3, 4, 6-11, 17, and 20 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention. See Final Act. 2-3 (dated Mar. 28, 2013).
In an Advisory Action dated July 10, 2013, the Examiner implicitly
withdrew these rejections. See Resp. After Final Act. 7 (dated June 14,
2013) (discussing amendments to address these prior rejections).
3
Appeal2014-005325
Application 12/7 50,914
manifold sections with a first stub tube 7 and end plug for the
purpose of ease of assembly and design flexibility.
Final Act. 4. The Examiner provided the following annotated version of
Figure 1 of Mitchell:
Assernbtv outlet .,
marnifoki sections
P!ug
Id. at 5. Prior to annotation, Figure 1 depicted "a plan view of [an]
improved radiator, showing three heating units spaced apart within the
chamber provided by the casing of the machine." Mitchell, col. 2, 11. 3-6.
In the annotated version, the Examiner identified ( 1) certain structures as
"Assembly outlet manifold sections," (2) certain structures as "Assembly
inlet manifold sections," and (3) a structure as a "Plug." Final Act. 5. In the
Rejection, the Examiner stated that "to employ a stub tube in place of the
end plug of Mitchell requires only routine skill in the art, since a stub tube
with a cap and an end plug are functional equivalents." Id.
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Appeal2014-005325
Application 12/750,914
Appellant states that claim 1 "recites an expandable microchannel coil
system (300) including a number of modular assembly inlet manifold
sections (310) that terminate in an inlet stub tube (320, 330) and a number of
modular assembly outlet manifold sections (340) that terminate in an outlet
stub tube (350, 360)" and argues that "the references do not show the use of
such a stub tube." Br. 6; see id. ("Mitchel[l] does not show a stub tube.");
see also Spec. i-fi-f 135, 137 (discussing stub tubes 320, 330, 340 and 350).
According to Appellant, "[t]o the extent that the bolt or the plug of
Mitchel[l] may be considered as such, [Appellant] asserts that the 'plug'
cannot be considered a 'tube' with any length." Br. 6.
The record here does not support the Examiner's findings and
conclusions regarding the "stub tube" limitations. As an initial matter, we
set forth our view of the findings and conclusions at issue. Although the
Examiner does, in the Rejection, state "a first stub tube 6 and end plug" and
"a first stub tube 7 and end plug" in reference to Mitchell (Final Act. 4;
Mitchell Fig. 1 ), the Examiner appears to find that Mitchell does not actually
disclose "stub tube[s]," but rather, determines that it would have been
obvious to replace the plug in Mitchell with a "stub tube" because, according
to the Examiner, "a stub tube with a cap and an end plug are functional
equivalents" (Final Act. 5). The Answer supports this view of the
Examiner's findings and conclusions. There, the Examiner states:
Regarding [A]ppellant's remarks with respect to claim 1,
[A ]ppellant' s sole argument is that the end plug of Mitchell ...
cannot be read as a "stub tube." In response, the Examiner
believes the end plug of Mitchell and the stub tube as recited in
[A]ppellant's claim [1] ... are functionally equivalent and
obvious structural alternates of one another as follows.
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Appeal2014-005325
Application 12/750,914
Ans. 5. Thus, we determine that the Examiner does not find that the prior art
discloses structure satisfying the "stub tube" limitations, but rather,
concludes that it would have been obvious to one of ordinary skill in the art
to have replaced the plugs in Mitchell (see Final Act. 5) with the recited
"stub tube[ s ]" because those structures are (1) functional equivalents and (2)
obvious structural alternates.
As to the functional equivalents rationale, that the prior art may
disclose structure that performs the same or a similar function as the recited
structure does not necessarily demonstrate that the prior art satisfies a
structural limitation, such as the "stub tube" limitations. See In re Ruskin,
347 F.2d 843, 847 (CCPA 1965) (reversing an anticipation rejection based
on an error "in finding merely functionally equivalent structure to anticipate
the specific structure claimed"); see also In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) ("A patent applicant is free to recite features of an
apparatus either structurally or functionally."). Further, the record does not
support the "obvious structural alternates" rationale because the Examiner
has not shown that the recited "stub tube[s]" are "known in the field." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("[W]hen a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.").
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 3, 4, and 6-11, which depend from claim 1.
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Appeal2014-005325
Application 12/750,914
B. Independent Claims 12 and 17
(and Dependent Claims 13-16 and 20)
Independent claim 12 recites, in relevant part, "removing a first stub
tube of the first modular assembly inlet manifold section and a second stub
tube of the first modular assembly outlet manifold section." Br. 11 (Claims
App.). Independent claim 17 recites, in relevant part, "a plurality of modular
assembly inlet manifold sections" that "terminate in an inlet stub tube" and
"a plurality of modular assembly outlet manifold sections" that "terminate in
an outlet stub tube." Id. at 12. To address these limitations, the Examiner
relies on the same deficient findings and conclusions discussed above with
regard to claim 1 (see supra§ A). See Final Act. 4--5, 6; Ans. 5-7, 8. Thus,
for the same reasons discussed above, we also do not sustain the rejection of
independent claim 12 (and claims 13-16, which depend therefrom) and
independent claim 17 (and claim 20, which depends therefrom).
DECISION
We REVERSE the decision to reject claims 1, 3, 4, 6-17, and 20.
REVERSED
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