Gregory Gerald. Hughes et al.

Patent Trials and Appeals Board

Jan 2, 2020

14430787 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/430,787 03/24/2015 Gregory Gerald Hughes 022234-2293-US01 7768
99847 7590 01/02/2020
Modine Manufacturing Company
1500 Dekoven Ave.
Racine, WI 53403
EXAMINER
GREENE, MARK L
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
intellectualproperty@na.modine.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY GERALD HUGHES,
MICHAEL J. REINKE, and TONY ROUSSEAU

Appeal 2018-005984
Application 14/430,787
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, KEVIN W. CHERRY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Modine Manufacturing Company as
the real party in interest. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A heat exchanger to transfer heat between a first and a
second fluid, comprising;
first and second flat headers, each with at least one
opening and each arranged at opposing ends of the heat
exchanger;
a first flow conduit fluidly connecting the first and
second flat headers via the at least one opening of each of the
headers to allow for a flow of the first fluid through the heat
exchanger, the first flow conduit being bounded by a first wall
section extending between the first and second headers;
a second flow conduit to allow for a flow of the second
fluid through the heat exchanger, the second flow conduit being
bounded by a second wall section spaced apart from the first
wall section to define a gap therebetween; and
a thermally conductive structure arranged within the gap
and joined to the first and second wall sections to transfer heat
therebetween, wherein the thermally conductive structure is
isolated from the first fluid by the first wall section and from
the second fluid by the second wall section.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Donaldson US 4,002,201 Jan. 11, 1977
Higashiyama US 8,002,024 B2 Aug. 23, 2011
Yoshino et al.
(“Yoshino”)
JP 2011-132570 A July 7, 2011

REJECTIONS
I. Claims 1–7 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written-description requirement.
II. Claims 1–6, 14–16, and 18–20 are rejected under 35 U.S.C.
§ 102(b) (pre-AIA) as anticipated by Donaldson.
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III. Claims 7 and 17 are rejected under 35 U.S.C. § 103(a) (pre-
AIA) as unpatentable over Donaldson and Yoshino.
IV. Claims 8–13 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Donaldson and Higashiyama.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Written Description
According to the Examiner, the “flat headers” limitation of
independent claim 1 lacks written description support in the Specification,
because the Specification discloses only “headers formed from flat sheet
steel and not the headers themselves are flat.” Final Action 2 (emphasis
added). The Examiner further points out that “Fig. 3A shows the header 9 is
curved.” Id.
The Appellant contends that what the Examiner asserts to be a
“curved” header is actually a different structure (“manifold 4”). Appeal
Br. 6.
Figures 2 and 3A of the Specification display some curvature on the
sides of “header 9.” Figure 2 is reproduced below, with the addition of blue
shading to identify “header 9”:
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Figure 2 of the Appellant’s Specification shows a perspective view of a heat
exchanger. Spec. ¶ 17. Figure 3A of the Specification is reproduced below,
with the addition of blue shading to identify “header 9”:

Figure 3A shows a perspective view of a heat exchanger. Id. ¶ 18.
Notwithstanding the curvature on the sides of the Figures 2 and 3A,
Figure 3A, in particular, also indicates that “header 9” has a broad, generally
planar surface having “tube slots 14.” Id. ¶ 34, Fig. 3A (elements 9, 14).
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Furthermore, the presence of such displayed curvature does not undermine
the characterization of “header 9” as being “flat,” per claim 1. Notably, the
Specification describes “tube 10” as having “flat walls 16” (id. ¶ 26),
notwithstanding the presence of curved sides, as seen in Figure 6,
reproduced below:

Figure 6 is a perspective view of a tube for use in a disclosed heat
exchanger. Id. ¶ 21. According to the Specification:
An example of a single tube 10 as used in the exemplary
heat exchanger 1 is depicted in FIG. 6. As shown therein, the
tube 10 includes a pair of opposing broad and planar walls 16,
spaced apart and joined by a pair of short walls 18. The short
walls 18 are depicted as arcuate in profile, although in some
other embodiments the short walls can have a straight or other
non-arcuate profile. The tube 10 can be formed as a single
piece from sheet steel, such as by seam welding a round tube
from sheet steel and then flattening the tube to produce the pair
of broad and flat walls 16 and the pair of short walls 18.
Id. ¶ 26.
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In view of the foregoing, we are persuaded of error in the rejection of
independent claim 1, such that we do not sustain the rejection of claims 1–7
under 35 U.S.C. § 112(a).
Anticipation
A. Independent Claim 1 and Dependent Claims 3–7
The Appellant contends that the Examiner erred in rejecting
independent claim 1, because the cited Donaldson reference does not
disclose the claimed “flat headers.” Appeal Br. 9. According to the
Appellant:
The areas of the upper and lower end chamber housings 12 are
what create the inlet and outlet fluid manifolds, respectively.
One of ordinary skill in the art would understand Donaldson
simply does not include or otherwise disclose a pair of flat
headers. One of ordinary skill in the art understands that
headers are not simply walls. Rather, headers separate different
fluids, which create fluid flow paths.
Id.
The identified element 12 of Donaldson is shown in, in Figure 4
thereof, which is reproduced below, with element 12 shaded lavender:

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Figure 4 is a perspective view of several assembled components of a heat
exchanger. Donaldson col. 2, ll. 22–23. Element 12 is described in the
Donaldson reference as “upper and lower end chamber housings or
headers 12, 12 connected by a heat transfer core portion 13 which has a
suitable fluid dispersing configuration.” Id. col. 2, ll. 45–48 (emphasis
added).
As the Examiner explains (Answer 4–5) the identified elements of
Donaldson are not only named “headers” in the reference itself, but they
perform the same header function as the claimed “headers.” Although the
Appellant does not specifically contend that the Donaldson elements are not
“flat,” Donaldson’s “headers” possess broad outer surfaces that are fairly
called “flat.”
Accordingly, we sustain the rejection of independent claim 1 and
dependent claims 3–7 (which are not argued separately) under 35 U.S.C.
§ 102(b) (pre-AIA).
B. Dependent Claim 2
The Appellant advances a separate argument for dependent claim 2,
which recites:
2. The heat exchanger of claim 1, wherein the second
flow conduit is spaced away in a first flow conduit axial
direction from at least one of the first and second headers, the
second flow conduit being defined by a flow path for the
second fluid.
The Examiner regards each of the “first flow conduit” and the “second
flow conduit” (limitations recited in base claim 1) as being met by one of
Donaldson’s “heat transfer core portion[s] 13” that connect respective
“upper and lower end chamber housings or headers 12” identified in
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Donaldson at column 2, lines 45–47. See Final Action 5, 6 (citing
Donaldson col. 2).
Donaldson’s device employs an array of the Fig. 4 assemblages
(discussed above), arranged in opposing orientations, as shown in
Donaldson’s Fig. 1, below:

Figure 1 is a perspective view of a heat exchanger. Donaldson col 2, ll. 16–
17. As seen in Figure 1 of Donaldson, between opposing upper and lower
“housings or headers 12,” the passages (teaching, e.g., either a claimed “first
flow conduit” or a claimed “second flow conduit”) within “heat transfer core
portion 13,” all connect fluidly with Donaldson’s “housings or headers 12”
at the same upper and lower positions, assessed with respect to what claim 2
calls the “first flow conduit axial direction.” See id. col. 2, ll. 39–48.
According to the Examiner, Donaldson teaches that the claimed
“second flow conduit” is “spaced away” from one of the “headers” (in a
“first flow conduit axial direction”). Final Action 7. See also Answer 5–7.
According to the Examiner:
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The current claim does not recite the second flow conduit is
spaced away from an entire header, rather the claim merely
recites the second flow conduit is spaced away from the header
and can reasonably be interpreted to mean spaced away from a
portion of the header.
Answer 6 (emphasis added).
Yet, as the Appellant argues (see Appeal Br. 9), the Examiner’s
above-quoted interpretation on page 6 of the Answer (to the effect that “the
second flow conduit is spaced away from the header and can reasonably be
interpreted to mean spaced away from a portion of the header”) is not
consistent with the Specification. The Specification refers to such a
“spaced” arrangement of “flow paths for the second fluid” involving a “flow
path[ ]” that resides “a distance 15 away from the header 9” (Spec. ¶ 46,
Fig. 5). The Specification explains:
This minimizes the thermal gradient between the header 9
(which is exposed only to the first fluid in the manifold 4 or 5)
and the tube wall 16 in the heat transfer region, and provides a
length of the tube 10 wherein the differential thermal expansion
between, on the one hand, the header 9 and the ends of the
tubes 10, and on the other hand, the joined tubes 10 and plate
assemblies 11, can be compensated for without imposing severe
mechanical stresses on the tubes 10.
Id. ¶ 46. These features would not be achieved if only portions of the
elements identified were “spaced” from each other (the Examiner’s
position). Thus, as used in the Specification, the term “spaced” (in the
context of the elements at issue, here) involves a physical separation
between respective elements, in their entireties — not merely portions
thereof.
In view of the foregoing analysis, we do not sustain the rejection of
claim 2 under 35 U.S.C. § 102(b) (pre-AIA).
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C. Independent Claim 14 and
Dependent Claims 15, 16, and 18–20
Independent claim 14 also stands rejected as anticipated by
Donaldson. Claim 14 recites:
14. A heat exchanger to transfer heat between a first and
second fluid, comprising:
a first plurality of flow conduits to transport the first fluid
through the heat exchanger;
a second plurality of flow conduits interleaved with the
first plurality of flow conduits to transport the second fluid
through the heat exchanger; and
intermediate structures arranged in gaps between
adjacent ones of the first and second pluralities of flow conduits
to provide thermal and structural connections therebetween, the
intermediate structures each including at least one sacrificial
fatigue location,
wherein adjacent ones of the first and second pluralities
of flow conduits are entirely separated by the gaps.
Emphasis added.
Asserting error in the rejection of claim 14, the Appellant argues:
The Examiner contends the plates 11, 11a provide the first and
second pluralities of flow conduits, respectively. Donaldson
clearly does not provide a gap between the entirety of the “first
and second flow conduits”, as required by claim 14, at least
because the plates 11, 11a are connected to each other.
Appeal Br. 12.
In response, the Examiner states that the Appellant’s representation of
the analysis provided in the rejection, is mistaken:
In the interpretation taken by the Office, only the corrugated
portion indicated in Fig. A [corresponding to Donaldson Fig. 4]
above has been taken as the flow conduits (see also Fig. B of
Final rejection [corresponding to Donaldson’s Fig. 2]). The
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first and second flow conduits, as interpreted by the Office, are
entirely separated by the gaps (surrounding fins shown in
Fig. 2) and anticipate claim 14.
Answer 7.
Donaldson states that the “stacked plate heat exchanger 10 formed of
a plurality of identical plate sections 11, 11a.” Donaldson, col. 2, l. 43. In
addition, “[e]ach plate section 11 or 11a is formed from a pair of oppositely
disposed dished blanks 14, 14 of mirrored symmetry which are joined along
their peripheral edges 15 to form a hollow fluid conduit.” Id., col. 2, ll. 49–
52. With mirrored plate sections connected to each other, “a plurality of
tubes 25 . . . are formed by the opposing corrugations” of the plate sections
and core portions 13. Id. at col. 3, ll. 3–6. Between these sets of paired
plates, “fins 29” are disposed, “preferably run at right angles to the core
corrugations so as to provide straight through air passages from one vertical
edge 31 of the assembly to the opposite edge 32.” between “core
portions 13.” Id. at col. 3, ll. 15–22 (emphasis added). The “air passages”
are seen in Donaldson’s Fig. 1, which is reproduced above.
In view of the formation of such “straight through air passages,” thus
adequately disclosing the recited “gap” of claim 14, we are not persuaded of
error in the rejection.
Accordingly, we sustain the rejection of independent claim 14 and
dependent claims 15, 16, and 18–20, which are not argued separately,
under 35 U.S.C. § 102(b) (pre-AIA).
Obviousness
A. Dependent Claims 7 and 17
With regard to the obviousness rejections of dependent claims 7
and 17, the Appellant relies upon the arguments advanced, in regard to the
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anticipation rejection of respective base claims 1 and 14. See Appeal Br. 12.
Accordingly, we sustain the rejection of claims 7 and 17 under 35 U.S.C.
§ 103(a) (pre-AIA).
B. Independent Claim 8 and Dependent Claims 10–13 and 17
Independent claim 8 recites:
8. A heat exchanger comprising:
first and second headers arranged at opposing ends of the
heat exchanger;
a plurality of flat tubes extending between the first and
second headers, a first end of each one of the plurality of flat
tubes extending through one of a plurality of corresponding
tube slots provided in the first header, a second end of each one
of the plurality of flat tubes extending through one of a plurality
of corresponding tube slots provided in the second header;
a plurality of plate assemblies arranged between the first
and second opposing headers, the plurality of plate assemblies
being interleaved with the plurality of flat tubes; and
a plurality of thermally conductive structures arranged in
gaps defined between adjacent ones of the flat tubes and plate
assemblies, each one of the plurality of thermally conductive
structures joining opposing external surfaces of the flat tubes
and plate assemblies to transfer heat therebetween.
The Appellant argues that, in rejecting independent claim 8, the
Examiner improperly combines the Donaldson and Higashiyama references:
[T]he Examiner is drastically changing the functionality of
Donaldson, and likely making assembly and overall
construction of the heat exchanger more difficult and less
secure. The alternating plates 11, 11a of Donaldson have
complimentary shapes to fit around one another to make space
for the manifolds and so to be easily joined together. Forcing
the header design 5, 6 of Higashiyama into the plates 11, 11a of
Donaldson would be difficult as the geometry of the plates
would need to be substantially changed to now have a
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protruding tube part that must be somehow closed along a seam
that would be sealable within a tube slot. Further, assembly of
such tube/plate hybrid conduits with fins and other tubes and
the headers themselves would not be an easy task, certainly not
as easy as stacking the plates of Donaldson. A separate header
design is much easier for Higashiyama as it has elongated,
symmetrical tubes that have been simply extruded or welded to
make a flush seam for an easy and sealable insertion into a tube
slot of a header.
Appeal Br. 14.
Yet, the Appellant provides no support for these assertions of altered
functionality and difficulty of construction. Moreover, as the Examiner
points out, the Appellant’s contemplated bodily incorporation of one
reference into another is not the standard for obviousness. Answer 8. “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference”; “[r]ather,
the test is what the combined teaching of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981).
In view of these principles, and the foregoing analysis, we are not
persuaded of error in the rejection of claim 8, such that we sustain the
rejection of independent claim 8 and dependent claims 10–13 and 17, which
are not argued separately, under 35 U.S.C. § 103(a) (pre-AIA).
C. Dependent Claim 9
The Appellant separately argues the rejection of claim 9, which
recites:
9. The heat exchanger of claim 8, wherein the plurality
of plate assemblies is spaced away from at least one of the first
and second opposing headers.
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Emphasis added.
The Appellant argues that claim 9 is “allowable for similar reasons
stated above regarding claim 2.” Appeal Br. 14.
The Examiner likewise states: “Claim 9 is unpatentable for similar
reasons stated above regarding claim 2.” Answer 9.
The reasoning provided, above, analyzing the “spaced away”
limitation of claim 2, applies equally to the “spaced away” limitation of
claim 9 here, because the Examiner relies upon the same elements of
Donaldson to teach the limitations at issue. As in the case of claim 2, the
Appellant’s argument persuades us of error in the rejection of claim 9.
Accordingly, we do not sustain the rejection of claim 9 under 35 U.S.C.
§ 103(a) (pre-AIA).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 112(a) Written description 1–7
1–6, 14–16,
18–20
102(b) (pre-
AIA)
Donaldson 1, 3–6, 14–
16, 18–20
2
7, 17 103(a) (pre-
AIA)
Donaldson,
Yoshino
7, 17
8–13 103(a) (pre-
AIA)
Donaldson,
Higashiyama
8, 10–13 9
Overall Outcome 1, 3–8, 10–
20
2, 9

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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-IN-PART