Ford Global Technologies, LLC

Patent Trials and Appeals Board

Jan 27, 2021

2020003045 (P.T.A.B. Jan. 27, 2021)

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.
14/087,268 11/22/2013 Giriraj Srinivasan 83400536;67186-051PUS1 1119
46442 7590 01/27/2021
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ALVARE, PAUL
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIRIRAJ SRINIVASAN,
NEIL ROBERT BURROWS, and JAMES McMANAMAN
____________

Appeal 2020-003045
Application 14/087,2681
Technology Center 3700
____________

Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Final Office Action dated June 3, 2019, and as
further explained in the Advisory Action dated August 19, 2019, rejecting
claims 1, 2, 6–9, 19, and 23–35. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 The Patent Trial and Appeal Board rendered a prior decision on
appeal in this application on June 28, 2018 (in Appeal No. 2017-003466).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC as
the real party in interest. Appeal Br. 1.
Appeal 2020-003045
Application 14/087,268
2
BACKGROUND
The disclosed subject matter “relates to a coupling in a vehicle and,
more particularly, to a coupling to connect a fluid supply and a cold plate of
an electric vehicle battery pack.” Spec. ¶ 1. Claims 1, 27, and 31 are
independent. Claim 1 is reproduced below:
1. A coupling for an electric vehicle battery pack,
comprising:
an attachment member configured to connect to an
extension so that a fluid can communicate directly from the
attachment member into the extension, the extension secured to
a cold plate;
a fluid inlet extending from the attachment member; and
a fluid outlet extending from the attachment member,
wherein the fluid inlet and the fluid outlet interface with a
common surface of the attachment member,
wherein the common surface is aligned along a first plane,
and the attachment member interfaces with the extension of the
cold plate at an interfacing surface that is aligned along a second
plane containing a line that is transverse to the first plane.

REFERENCES
The Examiner relies on the following references:
Name Reference Date
Shimoya US 5,632,161 Issued May 27, 1997
Ezaki Japanese Publication No. 2005-291441
A (and machine translation)
Published October
20, 2005
Zahn3 WO 2012/019719 A1 Published Feb. 16,
2012

3 As “Zahn,” the Examiner states to rely on “International Patent
Appeal 2020-003045
Application 14/087,268
3
REJECTIONS
1. Claim 23 stands rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2. Claims 23 and 26–35 stand rejected under 35 U.S.C. § 112(b)
as failing to particularly point out and distinctly claim the subject matter
regarded as the invention.
3. Claims 1, 2, 6–9, 19, and 23–26 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Ezaki and Zahn.
4. Claims 264 and 31–35 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shimoya and Zahn.
5. Claims 27–30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Zahn and Shimoya.

DISCUSSION
Rejections 1 and 2
First, the Examiner rejected claim 23 as failing to comply with the
written description requirement in 35 U.S.C. § 112(a). See Final Act. 2–3.
Second, the Examiner rejected claims 23 and 26–35 as failing to comply
with the definiteness requirement in 35 U.S.C. § 112(b). See Final Act. 3–5.
Appellant states that amendments filed after the Final Office Action
currently on appeal would have addressed these rejections, but

Document No. WO2012019719 wherein US PG Pub. 2013/0196207 is used
as an English language equivalent.” Final Act. 6.
4 Although the Examiner states that Shimoya and Zahn render obvious
dependent claim 26, we note that, in this rejection, the Examiner discussed
aspects of the three claims from which claim 26 depends: independent claim
1, dependent claim 6, and dependent claim 7. See Final Act. 16–20.
Appeal 2020-003045
Application 14/087,268
4
acknowledges that the Examiner did not enter the proposed amendments.
See Appeal Br. 15–16 (discussing a Response to Final after Decision on
Appeal, filed July 8, 2019). Appellant does not otherwise address these
rejections, which we, therefore, summarily sustain. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue—or, more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
Rejection 3
A. Independent Claim 1 (and Dependent
Claims 2, 6–9, 19, and 23–25)
For the claims in this group, Appellant argues the patentability of
independent claim 1 and does not separately argue claims 2, 6–9, 19, and
23–25, which depend from claim 1. See Appeal Br. 3–9. Thus, we address
claim 1, with claims 2, 6–9, 19, and 23–25 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
For claim 1, the Examiner relied on Ezaki for certain limitations but
stated that “Ezaki fails to disclose the line is transverse to the first plane”
from the final clause of claim 1. Final Act. 7. The Examiner found,
however, that Zahn discloses that claimed feature. Id. at 8. As the reasons
to modify Ezaki with the highlighted aspect of Zahn, the Examiner discussed
an “obvious to try” rationale, but also stated that
it would have been obvious to have modified the invention of
Ezaki by having the fluid inlet and the fluid outlet on a side
surface of a fluid connector that is transverse to the top surface
in order to align the fluid passages with fixed working medium
hoses or conform to the spatial requirements of the system where
the heat exchanger is to be deployed.
Appeal 2020-003045
Application 14/087,268
5
Final Act. 8–9.
As an initial matter, we agree with Appellant’s understanding of the
proposed modification as modifying Ezaki (see, e.g., Fig. 1 (showing the
first embodiment of piping flange 3)) “to have the piping 1 for supply and
the piping 2 for outflow on a side surface of the flange 3.”5 Appeal Br. 5.
The Examiner has clarified that, in the modified device, the location of bolts
4 and slots 3b on flange 3 in Ezaki would not change. See Final Act. 35–36.
Appellant presents three arguments addressing the Examiner’s stated
motivations to modify Ezaki based on Zahn. See Appeal Br. 5–9. First,
Appellant contends that the proposed modification would render Ezaki
unsatisfactory for its intended purpose. See id. at 5–6. According to
Appellant, “[t]he intended purpose of Ezaki is to address complications
associated with securing the flange 3 when the piping for supply 1, the
piping 2 for outflow, and the bolt 4 all extend through the same ‘top’ surface
of the flange 3.” Id. at 5 (discussing Ezaki ¶ 6); see also id. (“The slots 3b
allow the bolt 4 to be inserted without a hand entering between the piping 1
for supply and the piping 2 for outflow.”). Appellant argues that “[m]oving
the piping for supply 1 [and] the piping 2 for outflow to a side surface
renders the slots 3b unsatisfactory for their intended purpose” because, “[i]f
the piping for supply 1, the piping 2 for outflow, and the bolt 4 all do not all
extend through the same ‘top’ surface of the flange 3, the slots 3b are not
needed.” Id. at 5–6.
This argument does not apprise us of error. Where a proposed
modification would render the prior art invention being modified

5 In the embodiment shown in Figure 1 of Ezaki, the “side surface”
referenced by Appellant is on the top side of the view shown.
Appeal 2020-003045
Application 14/087,268
6
unsatisfactory for its intended purpose, the proposed modification may not
have been obvious. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
In Gordon, the Federal Circuit reversed an obviousness rejection because
modifying the prior art—by turning a filter upside down—would render it
incapable of filtering, and thus, inoperable for its intended purpose. Id. In
contrast, here, even after the modification of Ezaki based on Zahn (as
discussed above), the invention of Ezaki would continue to perform its
overall purpose of connecting two flanges—i.e., flanges 6 and 3 shown in
Figures 2 and 4. See Ezaki ¶ 1 (providing, in the “Field of the Invention”
section, that “[f]langes are combined in the present invention”); see also
Ans. 36 (“The intended purpose of Ezaki is to assemble multiple flanges
with reduced complexity, wherein the flange through which a bolt is
assembled has a small working area . . . .”).
Highlighting paragraph 5 of Ezaki, Appellant argues that the proposed
modification “renders at least the slots [3b in Ezaki] useless for their
intended purpose.” Appeal Br. 6. In this framework, the issue is not
whether certain features of the prior art are rendered “useless” by the
proposed modification, but whether the prior art system overall would be
rendered “inoperable for its intended purpose.” See Gordon, 733 F.2d at 902
(“Indeed, if the [prior art] apparatus were turned upside down, it would be
rendered inoperable for its intended purpose. The gasoline to be filtered
would be trapped in pocket 9, and the water [the prior art system] seeks to
separate would flow freely out of the outlet 5.”). Moreover, to the extent
relevant, the record supports the Examiner’s position that slots 3b in Ezaki
would continue to provide a benefit even in the modified device—e.g., an
improved ability to see the female threads in flange 6 for insertion of bolt 4.
See Ans. 37 (“Having to align the flanges without a slot requires visual
Appeal 2020-003045
Application 14/087,268
7
alignment of the bolt with the female threads, which may be difficult when
the heat exchanger is deployed in a small area.”).
Second, Appellant argues that the proposed modification would
change the principle of operation of Ezaki’s system. See Appeal Br. 7.
According to Appellant, in the proposed modification, “the basic principle
under which the Ezaki construction was designed to operate changes”
because, “[i]f the piping 1 for supply and the piping 2 for outflow are moved
from the ‘top’ surface to the side, there is no longer the clearance issue that
the disclosure of Ezaki is intended to address.” Id.
We are not apprised of error based on this argument. A proposed
modification that changes the “basic principles under which the [prior art]
was designed to operate” may not support a conclusion of obviousness. In
re Ratti, 270 F.2d 810, 813 (CCPA 1959). In this context, “a change in the
basic principles” refers to change that is fundamental in scope so as to relate
to scientific or technical principles under which the invention is designed to
operate. Id. (“This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
modified prior art] as well as a change in the basic principles under which
the [modified prior art] . . . was designed to operate.”). The record supports
the Examiner’s view that “moving of piping from one side of the flange to
another would not change Ezaki’s principle of operation” because, even in
the modified device, fluid would continue to flow through the piping to
allow the overall system to operate as designed. See Ans. 38–39; see also
Ezaki ¶ 12 (discussing the fluid flow path of the overall system).
Third, Appellant argues that the rejection “articulates no rationally-
based reason that would lead the skilled person to make the proposed
modification.” Appeal Br. 7. Appellant then asserts that the Examiner
Appeal 2020-003045
Application 14/087,268
8
failed to adequately address the findings necessary to support an “obvious to
try” rationale, as listed in MPEP § 2143.I.E. Id. at 7–9.
In the Answer, the Examiner restates reasoning from the Office
Action (block quoted on page 4 above), and states that that the proposed
modification “solv[es] the problem of aligning the inlet and outlet piping
with fixed hoses already deployed within the immediate environment of the
heat exchanger or having the hoses emanate from the heat exchanger from
such a direction where space is abundant.” Ans. 39.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Although Appellant contends that the Examiner has failed to
adequately support the “obvious to try” rationale, Appellant does not
adequately address the alternate reasoning provided by the Examiner. See
Final Act. 8–9; Ans. 39. We are persuaded that the proposed modification
would provide the flexibility to handle situations in which the fluid inlet and
outlet of the existing system are already configured to—or need to be
modified to—come in at a “side surface” of the fluid connector. See Final
Act. 9; Ans. 39. We determine that the Examiner’s alternate reasoning
supports a prima facie case of obviousness for claim 1. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). By not addressing the alternate
reasoning provided, Appellant has not shown error in the relevant findings
or the conclusion as to obviousness, which we determine to be supported by
rational underpinnings. See id. (discussing how, if an examiner presents a
prima facie case, “the burden of coming forward with evidence or argument
Appeal 2020-003045
Application 14/087,268
9
shifts to the applicant”). For the reasons above, we sustain the rejection of
independent claim 1. Claims 2, 6–9, 19, and 23–25 fall with claim 1.
B. Claim 26
Claim 26 recites: “The coupling of claim 7, wherein an entire
circumferential perimeter of the opening is provide by the fastener surface.”
Appeal Br. 18 (Claims App.). The Examiner identified an alleged “fastener
surface” in Figure 1a of Ezaki (Final Act. 11), and identified the recited
“opening” as that shown receiving bolt 4 (id. at 16). In the rejection based
on indefiniteness, the Examiner stated that “[f]or Examination purposes and
in accordance with the specification and drawings, ‘an entire circumferential
perimeter of the opening is provide by the fastener surface’ [in claim 26]
will be interpreted as – a circumferential perimeter of the opening is
provided by the fastener surface --.” Id at 4.
Appellant argues that flange 3 does not include a “fastener surface”
under the Examiner’s understanding of claim 26 because slots 3b “of Ezaki
open to a side of the flange 3.” Appeal Br. 9. The Examiner does not
address this argument. See Ans. 42. We agree with Appellant. As evident
from Figures 1b and 3 of Ezaki, the identified “fastener surface” (see Final
Act. 11) does not provide a “circumferential perimeter of the opening” as
required under the Examiner’s understanding (id. at 4 (emphasis added)).
Instead, for the reason identified by Appellant, slots 3b in Ezaki provide (if
anything) only a portion of a circumferential perimeter of the opening. See
Appeal Br. 26; Reply Br. 2 (“Providing a portion of a circumferential
perimeter is not a teaching of providing an ‘entire circumferential
perimeter.’”). Thus, we do not sustain this rejection of claim 26.
Appeal 2020-003045
Application 14/087,268
10
Rejection 4
A. Claim 26
In this rejection of claim 26, the Examiner relied on Shimoya for
certain limitations in independent claim 1, claim 6, claim 7 (from which
claim 26 depends), as well as the added limitation in claim 26, but stated that
“Shimoya fails to disclose the line is transverse to the first plane” from the
final clause of claim 1. Final Act. 17. The Examiner found, however, that
Zahn discloses that claimed feature. Id. As the reasons to modify Shimoya
with the highlighted aspect of Zahn, the Examiner discussed an “obvious to
try” rationale, but also stated that
it would have been obvious to have modified the invention of
Shimoya by having the fluid inlet and the fluid outlet on a side
surface of a fluid connector that is transverse to the top surface
in order to align the fluid passages with fixed working medium
hoses or conform to the spatial requirements of the system where
the heat exchanger is to be deployed.
Final Act. 17–18. As an initial matter, we note that this is the same
motivation statement provided in the alternate reasoning for modifying
Ezaki with the same feature of Zahn as to claim 1 in Rejection 3. Compare
id. at 18, with id. at 9.
Appellant makes two arguments regarding the motivations to combine
Shimoya and Zahn. First, Appellant argues that the “spatial requirements”
aspect of the alternate reasoning above “is circular and self-serving” in that
“[t]he rejection identifies no spatial requirement of a heat exchanger that
would necessitate such a repositioning of the fluid inlet 19 and the fluid
outlet 20.” Appeal Br. 9. According to Appellant, “[t]he reasoning thus
lacks a rational basis.” Id. The Examiner responds that “having the inlet
and outlet on a predetermined side would also allow for the heat exchanger
Appeal 2020-003045
Application 14/087,268
11
to be deployed in a confined space allowing the inlet and outlet to emanate
on a side of the heat exchanger that faces a less constricted area, which
would also be obvious to one of ordinary skill in the art.” Ans. 43.
We are not apprised of error based on this argument. Although
Appellant appears correct that the prior art does not expressly disclose the
existence of systems with a limited amount of space, we note that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418 (2007); see id. at 419 (“The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”);
Reply Br. 2 (arguing that “the rejection points to no factual basis in the prior
art indicating that, for example, the modification would help conform to
‘special spatial requirements’” (emphasis added)).
Second, Appellant argues that “the reasoning for the proposed
modification is based on the Appellant’s disclosure, and is not gleaned from
the prior art as is required.” Appeal Br. 9–10. According to Appellant, the
“spatial requirements” aspect of the alternate reasoning is “taken from the
Appellant’s disclosure,” which “for example, recites that ‘coupling is
relatively low-profile and can require less than half the packaging space of
prior art designs.’” Appeal Br. 10 (quoting Spec. ¶ 63).
We do not agree with Appellant that the “spatial requirements” aspect
of the alternate reasoning is taken from the Specification. As made clear
from the Examiner’s explanation (Ans. 43), the “spatial requirements”
referenced do not refer to the overall size of the coupling (as implied by
Appeal 2020-003045
Application 14/087,268
12
Appellant (Reply Br. 2–3)), but rather, that, in systems with a limited
amount of space in the vicinity of the surface opposite the “interfacing
surface” of the “coupling” (e.g., due to a wall), one of ordinary skill in the
art would have known to put the fluid inlet and outlet on a side surface of the
“coupling.” Moreover, for the reasons stated in the context of the prior
argument, the reasoning for the proposed modification need not be “gleaned
from the prior art” as asserted by Appellant. Appeal Br. 10. We determine
that the “spatial requirements” aspect provides an independent basis to view
the alternate reasoning as adequate to support the conclusion of obviousness.
Moreover, we note that Appellant does not challenge the Examiner’s
statement that one of ordinary skill in the art would have modified Shimoya
based on Zahn as proposed “in order to align the fluid passages with fixed
working medium hoses.” Final Act. 18. We view this aspect of the alternate
reasoning as also providing an independent basis to view the alternate
reasoning as adequate to support the conclusion of obviousness. For the
same reasons discussed above in the context of the third argument as to
claim 1 for Rejection 3, we are persuaded that the proposed modification
would provide the flexibility to handle situations in which the fluid inlet and
outlet of the existing system are already configured to—or need to be
modified to—come in at a “side surface” of the fluid connector. For these
reasons, we sustain this rejection of claim 26.
B. Claims 31 and 32
Appellant argues the patentability of independent claim 31 and does
not separately argue claim 32, which depends from claim 31. See Appeal
Br. 13–14. Thus, we address claim 31, with claim 32 standing or falling
with claim 31. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relied on
Shimoya for certain limitations, but stated that “Shimoya fails to disclose an
Appeal 2020-003045
Application 14/087,268
13
assembly for an electric vehicle battery pack and a cold plate that exchanges
thermal energy with an electric vehicle battery pack” as recited in the
preamble and first clause of claim 31. Final Act. 25–26. The Examiner
found, however, that Zahn “teaches an assembly (shown in figures 1-4) for
an electric vehicle (see Para. 1) battery pack and a cold plate that exchanges
thermal energy with an electric vehicle battery pack (see Para. 1
‘electrochemical energy stores’ and Para. 33, ‘battery’).” Id. at 26. The
Examiner also provided reasons to modify Shimoya with the relied-upon
aspects of Zahn. Id.
First, Appellant asserts that the Examiner “relies on an auxiliary heat
exchanger 8 [in Shimoya] having an endplate 12 as teaching a cold plate.”
Appeal Br. 13. According to Appellant, one of ordinary skill in the art
“would not modify the heat exchanger 8 to exchange thermal energy with an
electric vehicle battery pack at least because the evaporator 6 is intended to
take on heat from air, not a physical component.” Id. at 13–14.
We are not apprised of error based on this argument because
Appellant does not address the rejection as articulated by the Examiner.
Contrary to Appellant’s position, the Examiner does not rely on Shimoya to
satisfy the recited “cold plate that exchanges thermal energy with an electric
vehicle battery pack.” Instead, the Examiner makes clear that the proposed
modification is “provid[ing] the coupling of Shimoya with an assembly for
an electric vehicle battery pack and a cold plate that exchanges thermal
energy with an electric vehicle battery pack, as taught by Zahn.” Final Act.
26 (emphasis added).
Second, Appellant argues that “[t]he feature of ‘a cold plate that
exchanges thermal energy with an electric vehicle battery pack’ cannot be
dismissed as an intended use as the Examiner attempts.” Appeal Br. 14. As
Appeal 2020-003045
Application 14/087,268
14
discussed above, the Examiner identified Zahn for the identified limitation,
expressly stating that Zahn teaches “a cold plate that exchanges thermal
energy with an electric vehicle battery pack (see Para. 1 ‘electrochemical
energy stores’ and Para. 33, ‘battery’).” Final Act. 26. The aspects of Zahn
cited by the Examiner support that the identified “cold plate”—Zahn’s
conductive plate 1—can cool an electric vehicle battery pack. See Zahn ¶ 1
(“Thermally conductive plates are used in different technical application
areas for the transport of heat between heat sources and heat sinks, in
particular for the temperature control of technical components and in
particular for the cooling of electrochemical energy stores, e.g. in electric
vehicles.” (emphasis added)), ¶ 33 (“Moreover a method for the transport of
heat, for example for cooling or heating of a car battery, is provided in
which a thermally conductive plate 1 according to the invention is used.”).
Thus, the first clause of claim 31 was not “dismissed as an intended use.”
Appeal Br. 14. For these reasons, we sustain the rejection of claim 31.
Claim 32 falls with claim 31.
C. Claim 33
Claim 33 depends from claim 31 and adds that “the fluid inlet conduit
and the fluid outlet conduit turn within the coupling.” Appeal Br. 20
(Claims App.). For claim 33, the Examiner stated that “although Shimoya
discloses fluid conduits turning (see figure 5, wherein conduits (19 and 20)
turn as they extend form the piping block joint (50)), Shimoya fails to
disclose the fluid inlet conduit and the fluid outlet conduit turn within the
coupling.” Final Act. 27. The Examiner found, however, that Zahn
discloses that claimed feature. Id. As the reasons to modify Shimoya with
the highlighted aspect of Zahn, the Examiner discussed an “obvious to try”
rationale, but also stated that
Appeal 2020-003045
Application 14/087,268
15
it would have been obvious to have modified the invention of
Shimoya by having the fluid inlet conduit and the fluid outlet
conduit define a path containing a turn within the coupling in
order to align the fluid passages with fixed working medium
hoses or conform to the spatial requirements of the system where
the heat exchanger is to be deployed.
Final Act. 27–28. As an initial matter, we note that this is a similar
motivation statement provided in the alternate reasoning for modifying
Shimoya with the same feature of Zahn as to claim 26 in this same rejection
(which is, in turn, the same motivation statement provided in the alternate
reasoning for modifying Ezaki with the same feature of Zahn as to claim 1 in
Rejection 3). Compare id. at 28, with id. at 18, 9.
First, Appellant relies on the arguments as to independent claim 31.
See Appeal Br. 14. For the reasons above, we are not apprised of error
based on those arguments. Second, Appellant argues that the Examiner
“articulates no rationally-based reason that would lead the skilled person to
modify the joint 50 (the alleged coupling) to include such turns.” Appeal Br.
14. Appellant then asserts that the Examiner failed “to meet the burdens
required to support the . . . conclusion that the modifications to Shimoya
would be obvious to try.” Id.
Although Appellant contends that the Examiner has failed to
adequately support the “obvious to try” rationale, Appellant does not
adequately address the alternate reasoning provided by the Examiner (in the
block quote above). See Final Act. 28. We are persuaded that the proposed
modification would provide the flexibility to handle situations in which the
fluid inlet and outlet of the existing system are already configured to—or
need to be modified to—come in at a “side surface” of the fluid connector.
See id. We determine that the Examiner’s alternate reasoning supports a
Appeal 2020-003045
Application 14/087,268
16
prima facie case of obviousness for claim 33. See Oetiker, 977 F.2d at 1445.
By not addressing the alternate reasoning provided, Appellant has not shown
error in the relevant findings or the conclusion as to obviousness, which we
determine to be supported by rational underpinnings. See id. For these
reasons, we sustain the rejection of claim 33.
D. Claims 34 and 35
As with claim 33, for claims 34 and 35, the Examiner relied on
Shimoya for certain limitations, but stated that Shimoya lacks certain
claimed aspects. See Final Act. 28–32. The Examiner found, however, that
Zahn discloses those claimed features. Id. As the reasons to modify
Shimoya with the highlighted aspects of Zahn, the Examiner discussed an
“obvious to try” rationale, but again also stated that one of ordinary skill in
the art would have performed the proposed modifications “in order to align
the fluid passages with fixed working medium hoses or conform to the
spatial requirements of the system where the heat exchanger is to be
deployed.” Id. at 30 (claim 34), 32 (claim 35).
First, Appellant relies on the arguments as to independent claim 31.
See Appeal Br. 15. For the reasons above, we are not apprised of error
based on those arguments. Second, Appellant argues that the rejection of
claims 34 and 35 “rel[ies] on the obvious to try rational[e], which is
improper for the reasons mentioned above in response to the rejection of
claim 33.” Id.
Although Appellant contends that the Examiner has failed to
adequately support the “obvious to try” rationale, Appellant does not
adequately address the alternate reasoning provided by the Examiner. See
Final Act. 30, 32. We are persuaded that the proposed modification would
provide the flexibility to handle situations in which the fluid inlet and outlet
Appeal 2020-003045
Application 14/087,268
17
of the existing system are already configured to—or need to be modified
to—come in at a “side surface” of the fluid connector. See id. We
determine that the Examiner’s alternate reasoning supports a prima facie
case of obviousness for claim 34 and 35. See Oetiker, 977 F.2d at 1445. By
not addressing the alternate reasoning provided, Appellant has not shown
error in the relevant findings or the conclusion as to obviousness, which we
determine to be supported by rational underpinnings. See id. For the
reasons above, we sustain the rejection of claim 34 and 35.
Rejection 5
For independent claim 27, the Examiner relied on Zahn for certain
limitations but stated that “Zahn fails to disclose an extension affixed to a
cold plate” as required by the first clause of claim 27. Final Act. 20–21.
The Examiner found, however, that Shimoya discloses that claimed feature,
identifying block joint 13 as an “extension” and heat exchanger 8 as a “cold
plate.” Id. at 21 (discussing Shimoya Fig. 6). According to the Examiner, it
would have been obvious
to provide Zahn with securing an attachment member of a
coupling to an extension affixed to a cold plate, as taught by
Shimoya, . . . [1] to provide an alignment feature for accurately
connecting fluid lines to a heat exchanger therefore negating
degradation or failure of fluid joints through improper
installation or [2] to provide a removable fluid connection joint
that provides a durable and robust connection the insures a sealed
connection between the fluid source and the heat exchanger,
thereby negating leaking or unwanted removal of fluid from the
system.
Final Act. 21.
Appellant argues that the motivation to combine above does not
provide a “rationally based reason for making such a modification.” Appeal
Br. 11. We agree. As argued by Appellant, “[n]one of the alleged ‘benefits’
Appeal 2020-003045
Application 14/087,268
18
noted by the Examiner are shown as being linked in any way to the inclusion
of the block joint 13 (the alleged extension) in Shimoya” between
connection flange 401 in Zahn (the identified “attachment member”) and
conductive plate 1 (the identified “cold plate). Id.; see also Zahn Fig. 4.
More specifically, we agree with Appellant that the Examiner has not
adequately explained why adding block joint 13 in Shimoya to Zahn would
provide either (1) improved alignment for a more accurate connection or (2)
removability and thereby a more “durable and robust” connection. Appeal
Br. 11–12; Ans. 44–45 (essentially restating the same motivations). As to
the first motivation in the block quote above, we see no basis for the view
that connection flange 401 in Zahn would be more easily connected to
conductive plate 1 after adding block joint 13 of Shimoya. See Appeal Br.
11 (stating that the first motivation is “speculative”). As to the second
motivation, we are more persuaded by Appellant’s position that adding
block joint 13 in Shimoya would, if anything, increase the chances for
leakage in the relevant structures of Zahn. See id. at 12 (arguing that “the
inclusion of the block joint 13 would introduce more potential leak paths”).
For these reasons, we do not sustain the rejection of claim 27, or the
rejection of claims 28–30, which depend from claim 27.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 2, 6–9, 19, and 23–
35. More specifically, we (1) affirm the decision to reject claim 23 under
35 U.S.C. § 112(a), (2) affirm the decision to reject claims 23 and 26–35
under 35 U.S.C. § 112(b), (3) affirm the decision to reject claims 1, 2, 6–9,
19, 23–26, and 31–35 under 35 U.S.C. § 103, and (4) reverse the decision to
reject claims 27–30 under 35 U.S.C. § 103.
Appeal 2020-003045
Application 14/087,268
19
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23 112(a) Written Description 23
23, 26–35 112(b) Indefiniteness 23, 26–35
1, 2, 6–9,
19, 23–26
103 Ezaki, Zahn 1, 2, 6–9,
19, 23–25
26
26, 31–35 103 Shimoya, Zahn 26, 31–35
27–30 103 Zahn, Shimoya 27–30
Overall
Outcome
1, 2, 6–9,
19, 23–35

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED