Ex Parte Zhang et al

Patent Trial and Appeal Board

Mar 29, 2018

14318891 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/318,891 06/30/2014
53609 7590 04/02/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Jianmin Zhang
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.
601418 6906
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANMIN ZHANG and BRAD AARON KIPPEL 1
Appeal2017-007928
Application 14/318,891
Technology Center 3700
Before: DANIEL S. SONG, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner's decision
in the Final Action (hereinafter "Final Act." of claims 1, 3-16 and 18-22 in
the present application, claims 2 and 17 having been canceled (App. Br. 2).
We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as "Appellant" herein. The real party in interest is
General Electric Company (Appeal Brief (hereinafter "App. Br.") 2).
Appeal2017-007928
Application 14/318,891
The claimed invention is directed to an inlet heat exchanger
comprising a media pad (Abstract). Independent claim 1 reads as follows:
1. An inlet heat exchanger for cooling an inlet air flow in a
compressor of a gas turbine engine, comprising:
a media pad;
the media pad comprising a plurality of media sheets with
a substantially three-dimensional contoured shape made from
non-woven fibers, the plurality of media sheets comprising a first
edge surface, a second edge surface perpendicular to the first
edge surface, a third edge surface parallel to the first edge
surface, an upper surface extending between the first edge
surface and the third edge surface; and
a heat exchange medium;
the heat exchange medium flowing from a top to a bottom
of the media pad to exchange heat with the inlet air flow;
wherein the substantially three-dimensional contoured
shape comprises a substantially sinusoidal shape along the first
edge surface, the second edge surface, the third edge surface, the
upper swface, wherein the substantially sinusoidal shape is
formed at the upper surface by peaks and valleys extending
between the first edge surface and the third edge swf ace, the
peaks and valleys transverse to the first edge surface, the second
edge surface, and the third edge surface.
App. Br. 10 (Claims App'x, emphasis added).
Independent claim 15 is directed to a "method of cooling an inlet air
flow into a gas turbine engine," which utilizes a media pad having features
recited in claim 1, but does not recite peaks and valleys "transverse" to the
first, second, and third edge surfaces (App. Br. 11-12, Claims App'x).
Independent claim 16 is similar to claim 1, but also does not recite peaks and
valleys "transverse" to the first, second, and third edge surfaces (id. at 12,
Claims App'x).
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Application 14/318,891
REJECTIONS
The Examiner rejects the claims as follows:
1. Claims 1, 3-16, and 18-22 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
2. Claims 1, 5-14, 16 and 18-22 under 35 U.S.C. §102(a)(l) as
anticipated by Geiger et al. (US 2009/0294548 Al, pub. Dec. 3, 2009
(hereinafter "Geiger")).
3. Claims 3 and 4 under 35 U.S.C. § 103 as obvious over the
Geiger.
4. Claim 15 under 35 U.S.C. § 103 as obvious over Kippel et al.
(US 2012/0031596, pub. Feb. 9, 2012 ("hereinafter "Kippel")) in view
of Geiger.
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § § 41.37(c)(l)(iv).
Rejection 1
The Examiner rejects claims 1, 3-16, and 18-22 for failing to comply
with the written description requirement, finding that:
There is no basis for "the plurality of media sheets including a
first edge surface, a second edge surface ... a third edge surface,
and an upper surface" as recited in claims 1, 15 and 16. The
specific terms are not described in the specification, and not
disclosed in the drawings.
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Application 14/318,891
(Final Act. 3).
The Appellant submits annotated Figures 2, 4, and 6 of the disclosure,
and argues that these figures, together with paragraphs [0126]-[0130] of the
Specification provide adequate written description of the first, second, and
third edge surfaces, as well as the upper surface (App. Br. 5---6).
We generally agree with the Appellant. The description of the
claimed invention must convey with reasonably clarity to those skilled in the
art that the inventor was in possession of the invention now claimed. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). In
addition, "the description requirement does not demand any particular form
of disclosure, ... or that the specification recite the claimed invention in
haec verba." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010). In that regard, one can show "possession" of the invention
using not only words, but also figures. See Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
While the Examiner finds, "Figures 2-6 do not disclose 'edge
surfaces' of the media sheet 110" (Answer (hereinafter "Ans.") 8), it cannot
be reasonably disputed that the media sheets each have a thickness, and thus,
have peripheral edges shown most clearly by Figures 2, 4, and 5. Such
peripheral edges, by virtue of the thickness of the media sheets, necessarily
have corresponding peripheral surfaces. Moreover, the media sheet
disclosed includes a planar surface, which, in the orientations shown in
Figures 2 and 6, faces upwardly (Figs. 2, 6). Accordingly, we agree with the
Appellant that adequate disclosure of the recitations has been provided in the
disclosure with respect to the recited edge surfaces and the upper surface,
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and that the Examiner appears to improperly require verbatim usage of the
claim terms within the Specification (Reply Brief (hereinafter "Reply Br.")
2).
Therefore, we reverse Rejection 1.
Rejection 2
The Examiner rejects claims 1, 5-14, 16, and 18-22 as anticipated by
Geiger, finding:
Figure 3 [of Geiger] discloses a heat exchanger
comprising a media pad (Figure 2) comprising a plurality of
media sheets 31, 32, 33, etc. with a substantially three-
dimensional contoured shape made from non-woven fibers
(paragraphs 15-16); wherein each media sheet 31, 32, 33, etc.
(same as media sheet 1 in Figure 1) comprises a first edge surface
(left side), a second perpendicular edge surface (top side), a third
parallel edge surface (right side), and an upper surface extending
between the first and third edge surfaces, each of the edge
surfaces having a substantially sinusoidal shape there along, and
the upper surface having peaks (coinciding with lines C, C ') and
valleys (coinciding with lines B, B ') extending transverse to all
the edge surfaces.
(Final Act. 4 ).
The Appellant argues that Geiger lacks the limitation italicized in the
above reproduced claim 1, and explains that "[a Jn illustration of this
configuration is provided in Fig. 6" of the disclosure (App. Br. 6). The
Appellant points out that Figure 2 of Geiger "appears to illustrate a series of
parallel straight-line V-shapes 31 across its alleged upper surface, as
opposed to the claimed sinusoidal wave structure." (App. Br. 7, citing
Geiger i-f 59 ("The evaporation mats are juxtaposed in such a way that the V
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Application 14/318,891
shapes of the waves point upwards or downwards in an alternating way.");
see also Geiger Fig. 1 ).
The Examiner disagrees with the Appellant, explaining that "[t]he
claims do not recite features disclosed in [] Figure 6" of the disclosure, and
that "[a ]lthough the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims." (Final Act.
9). The Examiner further explains that the Appellant's argument is "not
commensurate in scope with the claim" because, while Figure 2 of Geiger
"discloses 'V-shapes' across the upper surface of media sheet 31," claim 1
does not recite that the substantially sinusoidal shape extends across the
upper surface, but instead, recites ''peaks and valleys extending between the
first edge surface and the third edge surface." (Ans. 8).
The Appellant argues that:
the Examiner has failed to address or consider the claimed
"substantially sinusoidal shape along ... the upper surface,"
where the claimed "peaks and valleys extend[] between the first
edge surface and the third edge surface," and are "transverse to
the first edge surface, the second edge surface, and the third edge
surface."
(Reply Br. 3).
We are unpersuaded by the Appellant's arguments, and agree with the
Examiner that the present language of claim 1 is anticipated by Geiger.
Firstly, we agree with the Examiner's finding that Geiger discloses a
substantially sinusoidal shape along the first, second, and third edge surfaces
(see Geiger, Figs. 1, 2). Secondly, it is clear that the entirety of upper
surface of Geiger's evaporation mat/textile fabric 1 is defined by the textile
fabric itself, which has a substantially sinusoidal shaped cross-section as
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evidenced by the illustrated views of the first, second, and third edges (id.).
Accordingly, in applying the broadest reasonable interpretation of claim 1,
Geiger discloses "a substantially sinusoidal shape along ... the upper
surface" that is "formed at the upper surface by peaks and valleys extending
between the first edge surface and the third edge surface" by the virtue of the
fact that the entire evaporation mat/textile fabric of Geiger, and thus, its
upper surface, is formed of material that has a substantially sinusoidal cross-
section (i.e., substantially sinusoidal shape).
Furthermore, as discussed relative to Rejection 1, Figures 2, 4, and 5
of the Appellant's disclosure show peripheral edges, and thus, by virtue of
the thickness of the media sheets, necessarily have peripheral surfaces.
Similarly, the textile fabric of Geiger also necessarily has peripheral surfaces
(i.e., first, second, and third edge surfaces) (see Geiger, Figs. 1, 2). These
peripheral surfaces are "transverse" to the general plane defined by the
textile fabric. Stated alternatively, the plane defined by the textile fabric,
and thus the peaks and valleys that form the textile fabric and its upper
surface, are "transverse to the first edge surface, the second edge surface,
and the third edge surface" as recited by claim 1 (id.). Contrary to the
Appellant's assertion, the Examiner's rejection and explanation as set forth
above does not overlook these limitations.
It is apparent from the Appellant's arguments focusing on the series of
parallel straight-line V-shapes formed by the construction of the textile
fabric of Geiger (App. Br. 7, citing Geiger i-f 59), that the Appellant is trying
to claim that the upper surface of its media pad is formed so that the peaks
and valleys form a substantially sinusoidal pattern on the entire surface of
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the media pad in a manner that would result in a series of parallel S-shaped
features being viewable when the media pad is viewed along a central axis
normal to the general plane defined by the media pad as shown in Figure 6.
However, we agree with the Examiner (Final Act. 9) that the present
language of claim 1 does not require such construction of the media pad, and
as the Examiner also explained, "limitations from the specification are not
read into the claims." (Id.). See In re Self, 671F.2d1344, 1348 (CCPA
1982) ("Many of appellant's arguments fail from the outset because, ... they
are not based on limitations appearing in the claims .... "); Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("a
particular embodiment appearing in the written description may not be read
into the claim when the claim language is broader than the embodiment.").
Therefore, in view of the above, we affirm the Examiner's rejection of
claim 1. We also note that independent claim 16 does not even recite the
language requiring the peaks and valleys be "transverse" to the edge
surfaces. The Appellant does not separately argue the various dependent
claims subject to this rejection. Accordingly, the Examiner's rejection of
claims 1, 5-14, 16, and 18-22 is affirmed.
Rejection 3
The Examiner rejects claims 3 and 4 as obvious over Geiger, finding
that, while Geiger does not disclose the specific pitch to amplitude ratios
claimed, it would have been obvious to one of ordinary skill in the art to
have employed the recited ratios "since it has been held that discovering an
optimum value of a result effective variable involves only routine skill in the
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art." (Final Act. 7; Ans. 10). The Appellant relies on the dependency of
claims 3 and 4 from claim 1, and does not present separate patentability
arguments these claims (App. Br. 8; Reply Br 4). Therefore, having found
no deficiency in the Examiner's rejection of claim 1, we likewise affirm
Rejection 3.
Rejection 4
The Examiner rejects claim 15 as obvious over Kippel in view of
Geiger, finding that Kippel discloses the recited method of cooling inlet air
flow, and relying on Geiger for disclosing the recited media pad (Final Act.
7-8). The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have employed the media pad of Geiger in
Kippel "for the purpose of maximizing the heat transfer capacity as
recognized by Geiger," and that use of Geiger's media pad is merely a
simple substitution of one known element for another (Final Act. 8).
The Appellant relies on arguments submitted with respect to claim 1
to assert that Geiger does not disclose the claimed media pad, and thus, a
prima facie case of obviousness has not been shown (App. Br. 8; Reply Br
4). Claim 15, however, does not recite the language requiring the peaks and
valleys to be "transverse" to the edge surfaces, and we nevertheless remain
unpersuaded the Examiner erred by finding Geiger discloses the recited
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media pad for the reasons discussed above. Accordingly, we likewise affirm
Rejection 4.
CONCLUSIONS
1. Rejection 1 is reversed.
2. Rejections 2--4 are affirmed.
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)(l )(iv).
AFFIRMED
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