Ex Parte Zess et al

Patent Trial and Appeal Board

Sep 13, 2017

12349794 (P.T.A.B. Sep. 13, 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.
12/349,794 01/07/2009 James Allen Zess 57069-76383 5705
21888 7590 09/15/2017
THOMPSON OORT TRN T T P
EXAMINER
ONE US BANK PLAZA LEO, LEONARD R
SUITE 3500
ST LOUIS, MO 63101 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ALLEN ZESS and
ANDREW SCHLOTE
Appeal 2016-001512
Application 12/349,794
Technology Center 3700
Before, MICHAEL L. HOELTER, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 9—12 and 16. Br. 1. Claims 1—8, 13—15, and 17—25 have
been canceled. See Claims Appx. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM, and we designate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “pertains to heat exchangers. More
particularly, the present invention pertains to heat exchangers that are ideally
suited for transferring heat between two gaseous fluids.” Spec. 14. Claim 9
Appeal 2016-001512
Application 12/349,794
is the sole independent claim, is illustrative of the claims on appeal, and is
reproduced below (the disputed claim language being highlighted):
9. A heat exchanger that extends at least partially around
and along a central axis, the central axis defining axial and
radial directions, the heat exchanger at least partially encircling
an interior fluid containing region and being at least partially
encircled by an exterior fluid containing region, the heat
exchanger comprising a plurality of arcuate fluid passageways
alternating in the axial direction with a plurality of arcuate fluid
cavities, each of the arcuate fluid passageways extending
radially entirely through the heat exchanger in a manner fluidly
connecting the interior and exterior fluid containing regions, the
heat exchanger also comprising first and second axially
extending fluid passageways that traverse each of the arcuate
fluid passageways and are in fluid communication with each of
the arcuate fluid cavities in a manner connecting the arcuate
fluid cavities in parallel, the first axially extending fluid
passageway being a first radial distance from the central axis
and the second axially extending fluid passageway being a
second radial distance from the central axis, the second radial
distance being greater than the first radial distance, each of the
arcuate fluid passageways being formed by a first laminate
member, the first laminate members being substantially
identical to each other, each of the arcuate fluid cavities being
formed by a second laminate member, the second laminate
members being substantially identical to each other, the first
and second laminate members being joined in an alternating
manner forming an axially oriented stack of the first and second
laminate members, each of the first laminate members
comprising a bottom surface, a top surface, at least two
passthrough passageways, and at least one recess, the recess of
each of the plurality first laminate members extending down
into such first laminate member from the top surface and
extending from an edge of such first laminate member to an
opposite edge of such first laminate member, each of the pass­
through passageways extending through such first laminate
member from the top surface to the bottom surface of such first
laminate member, each of the second laminate members
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Application 12/349,794
comprising a bottom surface, a top surface, at least two
openings, and at least one recess, the recess of each of the
second laminate members extending down into such second
laminate member from the top surface of such second laminate
member, each of the openings of each of the second laminate
members extending from the bottom surface and opening into
the recess of such second laminate member in a manner such
that said recess operatively joins said openings, each of the
pass-through passageways of each of the first laminate
members operatively connecting at least one of the openings of
an adjacent one of the second laminate members to at least one
of the openings of another adjacent one of the second laminate
members, the first and second laminate members each having a
plurality of protrusions that extend vertically through the recess
and to the top surface of such laminate member, the protrusions
of each of the first laminate members being axially aligned with
the protrusions of each of the second laminate members, the
protrusions of each of the first laminate members being bonded
to the bottom surface of the respective second laminate member
directly above said first laminate member, the protrusions of
each of the second laminate members being bonded to the
bottom surface of the respective laminate member directly
above said second laminate member.
REFERENCES RELIED ON BY THE EXAMINER
Dalzell
Stein
Kretzinger
Voss
US 2,281,754
US 3,831,674
US 4,993,223
US 6,832,647 B2
May 5, 1942
Aug. 27, 1974
Feb. 19, 1991
Dec. 21,2004
THE REJECTIONS ON APPEAL
Claims 9—11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stein, Kretzinger, and Dalzell.
Claims 12 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stein, Kretzinger, Dalzell, and Voss.
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Application 12/349,794
ANALYSIS
The rejection of claims 9—11
as unpatentable over Stein, Kretzinger, and Dalzell
Appellants address claims 9—11 together. Br. 5—9. We select
independent claim 9 for review with dependent claims 10 and 11 standing or
falling with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants note, “[cjlaim 9 requires, among other things, the
protrusions of each of the first laminate members to be axially aligned with
the protrusions of each of the second laminate members.” Br. 5—6. “Stein,
Kretzinger, and Dalzell fail to disclose or suggest such a requirement” and
“[accordingly, the obviousness rejections directed to claims 9-11 should be
reversed.” Br. 6.
The Examiner acknowledges that the primary reference to Stein “does
not disclose” this limitation, nor does the Examiner rely on the secondary
reference to Kretzinger for such teaching. Final Act. 3^4; see also Ans. 8.
Instead, the Examiner relies on the teachings of the tertiary reference to
Dalzell for disclosing laminate members “having a plurality of protrusions
12 being axially aligned (Figure 2, i.e., overlapping).” Final Act. 4; see also
Ans. 7, 8. Accordingly, Appellants’ discussion of the primary and
secondary references to Stein and Kretzinger (respectively) as lacking this
limitation is not persuasive of Examiner error.1 See Br. 6—7.
1 Regarding the primary reference to Stein, Appellants contend that because
the corrugations/protrusions of the respective plates “are intentionally
misaligned axially” and “are ‘out of phase’” with each other, Stein
“expressly teaches away from” this limitation. Br. 6. In Stein, the different
plates (and their respective corrugations) are disclosed and discussed as
being in an ordered orientation with respect to each other (i.e., not randomly
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Application 12/349,794
Regarding Dalzell, Appellants state that “[cjontrary to the Examiner’s
assertion, the protuberances are not axially aligned” and that in Dalzell, “the
protuberances of the first plate will not register with the protuberances of the
second plate.” Br. 7 (citations omitted). Indeed, Dalzell’s round
protuberances 12 are illustrated as all extending in the same direction from
their base plate with the protuberances of adjacent plates being offset
therefrom. See Dalzell Figs. 2, 3. Thus, Appellants are correct that in
Dalzell, the apexes of the protuberances of immediately adjacent plates are
not axially in-line with each other because “the protuberances of adjacent
plates are misaligned.” Br. 7. Accordingly, as per Appellants, “Dalzell fails
to suggest axially aligning protrusions of adjacent laminate members as
required by claim 9.” Br. 7.
To reach this conclusion, Appellants state, “[a] person of ordinary
skill in the art analyzing claim 9 would give the words ‘axially aligned’ their
plain meaning.” Br. 7—8. As such, “the words ‘axially aligned’ require the
protrusions of each of the first and second laminate members to be aligned
such that a line passing through a central portion of a protrusion on the first
laminate member and a central portion of a corresponding protrusion on the
second laminate member would be generally parallel to the central axis of
the heat exchanger.” Br. 8. Appellants contend that such definition “is
consistent with how one of ordinary skill in the art would construe the claim
language because the axial alignment of the protrusions is what permits the
laminate members to be diffusion bonded to each other.'1'’ Br. 8 (referencing
interconnected). Stein 4:22—24; Fig. 4. Appellants do not explain how
Stein’s ordered arrangement “teaches away” from being aligned with each
other. See also Ans. 8
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Spec. 134) (emphasis added). However, Appellants’ justification for this
definition is lacking because it is not explained how bonding is not possible
should the protrusions be misaligned (as in Dalzell) yet still form abutting
plates.
Further, the paragraph in Appellants’ Specification relied upon for
such justification states, “[t]he diamond shaped protrusions transfer the axial
compressive load generated during the diffusion bonding process from each
laminate member to the next.” Spec. 134. Appellants do not explain how
misaligned protrusions are unable to transfer the axial compressive load
generated during the bonding process from one plate to the other.2
Accordingly, Appellants’ justification for adopting the proffered definition is
not convincing.
To ascertain the “plain meaning” one skilled in the art would give
“axially aligned” (as stated by Appellants, (Br. 7—8)), we consult a general
dictionary for assistance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010). Addressing the term “aligned,” one dictionary
defines this term as “to be in or come into precise adjustment or correct
2 Appellants explain, “[i]f the protrusions of the first and second laminate
members were staggered from one laminate to the next, compressive load
could not be carried effectively by the protrusions.” Br. 8. Appellants seem
to acknowledge that such compressive loading could be carried by staggered
protrusions, just not “carried effectively.” Appellants continue, “[tjhis
would prevent the protrusions from diffusion bonding the laminate member
above said protrusions.” Br. 8. However, even should a staggered
arrangement not effectively carry the compressive load, Appellants do not
make clear how such a staggered, but abutting, arrangement “would prevent
the protrusions from diffusion bonding” as stated.
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Application 12/349,794
relative position.”3 Another defines “aligned” as “[p]ut (things) into correct
or appropriate relative positions” and “[l]ie in a straight line, or in correct
relative positions.”4 As can be seen, each definition requires organizing into
a correct or appropriate relative position. Thus, Appellants’ proffered
definition requiring a linear alignment is narrower than this “plain meaning,”
and the Examiner’s definition of simply “overlapping” (Final Act. 4; Ans. 7,
8) is too broad. We instead adopt the “plain meaning” of “aligned” as set
forth by these dictionaries.5
The plates of Dalzell are illustrated and discussed as being arranged in
a specific order, i.e., “staggered” “with the bosses in each transverse row
disposed opposite the spaces between the bosses in the next row.” Dalzell
3:8—31 discussing Figs. 2, 3. This is indicative of locating the various rows
into a correct or appropriate relative position. We thus agree with the
Examiner that Dalzell teaches “protrusions 12 being axially aligned” (Final
Act. 4; Ans. 7), but we reach this conclusion based on reasons and analysis
(i.e., the definition of “aligned”) not relied on by the Examiner. As such, we
designate our action regarding these claims as a new ground of rejection to
afford Appellants a full and fair opportunity to react to the thrust of the
rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the
ultimate criterion of whether a rejection is considered ‘new’ in a decision by
the board is whether appellants have had [a] fair opportunity to react to the
thrust of the rejection.”). Accordingly, we affirm the Examiner’s rejection
3 See https://www.merriam-webster.com/dictionary/aligned (last visited
September 8, 2017).
4See https://en.oxforddictionaries.com/defmition/align (last visited
September 8, 2017)
5 There appears to be no dispute regarding the term “axially.”
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Application 12/349,794
of claims 9-11, and we designate this affirmance as a NEW GROUND of
rejection.
The rejection of claims 12 and 16
as unpatentable over Stein, Kretzinger, Dalzell, and Voss
Appellants argue claims 12 and 16 together. Br. 9. We select claim
12 for review. Appellants rely on the same argument above, i.e., “the
protrusions of each of the first laminate members be axially aligned with the
protrusions of each of the second laminate members.” Br. 9. Appellants’
argument is not persuasive for the reasons indicated above but, consistent
with the above, the rejection of claim 12 (and that of claim 16) is designated
as a NEW GROUND of rejection to afford Appellants a full and fair
opportunity to react to the thrust of the rejection.
DECISION
We AFFIRM the Examiner’s decision to reject claims 9—12 and 16
under 35 U.S.C. § 103(a), however, as indicated supra, we designate our
decision as a NEW GROUND because the Board relies on reasons different
from and/or additional to those stated by the Examiner and also to provide
Appellants a fair opportunity to respond.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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Application 12/349,794
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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