Luvata Espoo OyDownload PDFPatent Trials and Appeals BoardOct 13, 20212020004914 (P.T.A.B. Oct. 13, 2021) Copy Citation 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. 15/248,399 08/26/2016 M. Parker Finney 021083.00147 2880 26712 7590 10/13/2021 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER HEVEY, JOHN A ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 10/13/2021 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): ipdocketing@hodgsonruss.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte M. PARKER FINNEY, LARZ IGNBERG, CLAES ANDERS KAMF, TIMOTHY L. GOEBEL, YING GONG, and EDWARD G. ROTTMANN ____________ Appeal 2020-004914 Application 15/248,399 Technology Center 1700 ____________ Before JAMES C. HOUSEL, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 4–8, and 11–16.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Virtus Precision Tube, LLC as the real party in interest. Appeal Brief filed December 26, 2019 (“Appeal Br.”), at 2. 2 Final Office Action entered February 25, 2019 (“Final Act.”), at 1. Appeal 2020-004914 Application 15/248,399 2 CLAIMED SUBJECT MATTER Appellant claims a copper alloy for use in a heat exchanger (independent claim 1) and an ACR tube for use in a heat exchanger (independent claim 8). Appeal Br. 2. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A copper alloy for use in a heat exchanger, comprising: a) nickel at 0.5% by weight; and b) tin at 0.5% by weight, wherein the remainder of the alloy is copper and impurities. Appeal Br. 14 (Claims Appendix). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered April 16, 2020 (“Ans.”): I. claims 1, 4, 5, 8, 11, 12, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Ozaki;3 II. Claims 6, 7, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Ozaki in view of Sugawara;4 III. Claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a) as unpatentable over Sugawara; and IV. Claims 1, 4–8, and 11–14 under 35 U.S.C. § 103(a) as unpatentable over Oishi.5 3 JP 06-094390 A (published April 5, 1994) (as translated). 4 JP 3243479 B2 (issued January 7, 2002) (as translated). 5 JP 10-130754 A (published May 19, 1998) (as translated). Appeal 2020-004914 Application 15/248,399 3 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we affirm the Examiner’s rejections of claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a) for reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv) (2018); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Appellant presents arguments directed to independent claims 1 and 8 only, to which we accordingly limit our discussion. Appeal Br. 3–13; 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not directly challenge the Examiner’s finding that the primary references applied in the three separate rejections of clams 1 and 8 each disclose a copper alloy containing nickel and tin in amounts encompassing 0.5% by weight, as recited in claims 1 and 8. Compare Final Act. 2–5, with Appeal Br. 3–13. Rather, Appellant argues that the Declaration of co-inventor Edward Rottmann filed February 26, 2018 “connects [a] commercially successful product, UNILLOY® ACR tubes, to the claimed alloy and claimed ACR tubes made from the claimed alloy,” and establishes a nexus between the commercial success of UNILLOY® ACR tubes and the nickel and tin content “of the claimed alloy and claimed ACR Appeal 2020-004914 Application 15/248,399 4 tubes.” Appeal Br. 4, 8 (citing Rottmann Dec. ¶¶ 6–17). Appellant argues that “[t]he commercial success is shown, inter alia, by significant sales in a relevant market—the claimed ACR tubes account for 18% of the total U.S. market for enhanced ACR tubes.” Appeal Br. 5 (citing Rottmann Dec. ¶ 13). Appellant also argues that the “Rottmann Declaration states [that] the claimed copper alloy provides ACR tubes with increased strength and this strength is the nexus to the commercial success, . . . based on customer discussions [indicating] that adoption of the claimed ACR tubes is due to increased strength of a given tube weight/diameter compared to copper tubes.” Appeal Br. 5 (citing Rottmann Dec. ¶¶ 6–17). Appellant argues that “[t]he instant specification establishes that an alloy composition comprising copper, zinc, and tin in the claimed amounts provides ACR tubes with increased strength relative to standard copper ACR tubes.” Appeal Br. 5 (citing Spec. 7, l. 30–8, l. 22; Fig. 2). Appellant further argues that the Rottmann Declaration states that “sales of the UNILLOY® ACR tubes resulted from existing customers converting from standard copper ACR tube products to claimed ACR tubes,” and such customers were “willing to pay a higher price per pound for claimed ACR tubes.” Appeal Br. 6 (citing Rottmann Dec. ¶ 14). Appellant argues that the sales did “not result from increased marketing or advertising.” Appeal Br. 6 (citing Rottmann Dec. ¶ 15). Appellant, however, does not provide sufficient evidence to establish that sales of UNILLOY® ACR tubes resulted from features of the copper alloy of claim 1 and the ACR tube of claim 8, or to establish that the copper alloy of claim 1 and ACR tube of claim 8 were actually commercially Appeal 2020-004914 Application 15/248,399 5 successful, for reasons that follow. Commercial success “is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. . . . In other words, a nexus is required between the sales and the merits of the claimed invention.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citing Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985)). We point out initially that neither Appellant nor the Declarant specifies the composition of the alloy used to produce UNILLOY® ACR tubes, contrary to Appellant’s argument that “the Rottmann Declaration details the composition of the commercial alloy (the alloy used to make UNILLOY® ACR tubes) stated to have commercial success.” Appeal Br. 12; see also Reply Br. 2–3, 5. Rather, the Declarant repeatedly refers to “the claimed alloy” and “ACR tubes made from the claimed alloy,” without indicating the actual composition of “the claimed alloy,” or identifying a particular claim that recites “the claimed alloy” or “ACR tubes made from the claimed alloy.” Rottmann Dec. ¶¶ 7, 9–14, 16, 17. Absent objective evidence specifying the composition of the alloy used to produce UNILLOY® ACR tubes, it is not possible to determine with certainty whether the alloy falls within the scope of claim 1, or whether UNILLOY® ACR tubes fall within the scope of claim 8. The only evidence on the record before us indicating that this is the case are the statements provided in the Rottmann Declaration, which are not corroborated by objective evidence, as discussed more fully below. As to the required nexus between sales of UNILLOY® ACR tubes and Appeal 2020-004914 Application 15/248,399 6 the merits of the alloy of claim 1 and the ACR tube of claim 8, although the Rottmann Declaration indicates that “[t]he claimed copper alloy provides ACR tubes having increased strength compared to pure copper ACR tubes” (¶ 6), and Appellant argues that such increased strength “is the nexus to the commercial success” (Appeal Br. 5), at no point does the Declarant indicate that the asserted increased strength is due to the presence of nickel and tin in the alloy used to produce UNILLOY® tubes in the amounts recited in claims 1 and 8. Therefore, based on the information provided in the Declaration, it is impossible to determine whether the asserted increased strength of “the claimed copper alloy” and “ACR tubes made from the claimed alloy” is due to features of the alloy of claim 1 and the ACR tube of claim 8. Nonetheless, as discussed above, Appellant argues that experiments described in the Specification demonstrate that an alloy including copper, nickel, and tin “in the claimed amounts provides ACR tubes with increased strength relative to standard copper ACR tubes.” Appeal Br. 5. All of the tested alloys, however, included phosphorus, which could have contributed to or affected the tensile strength of the tested alloys. Spec. ¶¶ 39–40, Table 1. Appellant counters that “no reasonable conclusion as to the effect of phosphorus on alloy strength can be drawn based on the data in Table I—let alone that phosphorus is solely responsible for the increased strength of the claimed alloys” (Appeal Br. 8). On the record before us, however, Appellant does not provide any evidence establishing that the asserted increased strength of UNILLOY® ACR tubes is due to the presence of nickel and tin in the amounts recited in claims 1 and 8 in the alloy used to produce the tubes. Appellant further argues that “[e]ven if phosphorus is present at a claimed amount in a UNILLOY® ACR tube, this does not diminish or Appeal 2020-004914 Application 15/248,399 7 obviate the established nexus between the commercial success of the UNILLOY® ACR tubes and the claimed nickel and tin content of the claimed alloy.” Appeal Br. 8. As discussed above, however, the Rottmann Declaration at no point indicates that the increased strength of UNILLOY® ACR tubes is due to the presence of nickel and tin in the amounts recited in claims 1 and 8 in the alloy used to produce the UNILLOY® ACR tubes. As to Appellant’s argument (discussed above) that the increased strength imparted by the claimed copper alloy to ACR tubes “is the nexus to the commercial success” because customers adopted ACR tubes made from the claimed alloy “due to increased strength of a given tube weight/diameter compared to copper tubes,” the Rottmann Declaration paints a more complete picture of reasons for sales of UNILLOY® ACR tubes. More specifically, the Declaration states that “sales of the claimed ACR tubes resulted from existing customers converting to the claimed ACR tubes from LTNA’s[6] standard copper ACR tube products.” Rottmann Dec. ¶ 14. The Declaration states that “[b]ased on our discussions with our customers, adoption of the claimed ACR tubes” was due to “increased strength for a given tube weight/diameter compared to copper tube.” Rottmann Dec. ¶ 16. The Declaration further explains that “[b]ased on the increased strength of the claimed ACR tubes our customers have been willing to pay a higher price per pound, while realizing a decreased overall cost per foot, for the claimed ACR tube compared to standard copper ACR tube.” Rottmann Dec. ¶ 17 (emphasis added). The Declaration goes on to state that “the commercial success of the claimed ACR tubes is attributable 6 Luvata Tubes North America, Mr. Rottman’s employer. Rottmann Dec. ¶ 1. Appeal 2020-004914 Application 15/248,399 8 to the increased strength of the claimed ACR tubes compared to standard copper ACR tube, which results in increased economic performance (e.g. use of a thinner walled tube with equal burst pressure and resulting decreased cost per foot).” Rottmann Dec. ¶ 17 (emphasis added). The Rottmann Declaration thus indicates that LTNA’s existing customers switched from standard copper ACR tubes to UNILLOY® ACR tubes due to the economic advantage of decreased cost per foot resulting from increased strength, but the Declaration does not indicate how many existing customers switched.7 Furthermore, existing customers could have switched from standard copper ACR tubes to UNILLOY® ACR tubes, for example, due to lower cost coupled with further economic efficiencies gained from continuing to do business with a supplier with which the customers had a pre-existing relationship, or the customers could have switched due to pre-existing contractual obligations or even because of customer loyalty. Applied Materials, 692 F.3d at 1299–1300 (“There must be ‘proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.’”) (quoting Huang, 100 F.3d at 140 ); see also Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010) (“The commercial success of a product is relevant to the non-obviousness of a claim only insofar as the success of the product is due to the claimed invention.”). 7 We note that the Declaration discusses only the activity of existing customers and provides no information about non-existing customers switching from standard ACR tubes to UNILLOY® ACR tubes. Appeal 2020-004914 Application 15/248,399 9 As discussed above, Appellant also argues that the UNILLOY® ACR tubes’ commercial success is based on “significant sales in a relevant market.” Appeal Br. 5. And the Rottmann Declaration indicates that “the claimed ACR tubes account for 18% of the [total] U.S. market for enhanced ACR tubes.” Rottmann Dec. ¶ 13 (emphasis added). Neither Appellant nor the Declarant, however, provide any information as to how the U.S. market for “enhanced” ACR tubes differs from the market for “standard” ACR tubes. Nor do Appellant or the Declarant indicate the portion of the ACR tube market as a whole occupied by the “enhanced” ACR market. Such information would provide necessary context for determining whether UNILLOY® ACR tubes were commercially successful relative to all competing products. Applied Materials, 692 F.3d at 1300 (“An important component of the commercial success inquiry in the present case is determining whether [Appellant] had a significant market share relative to all competing pads [products] based on the merits of the claimed invention, which [Appellant] did not show.”) Furthermore, neither Appellant nor the Declarant provide any actual sales data for UNILLOY® ACR tubes, which would be highly probative in assessing the commercial success of the tubes. Applied Materials, 692 F.3d at 1300 (“[j]ust as the number of units sold without evidence of the market share is only weak evidence of commercial success, . . . so too is an assertion of market share lacking in sales data.”). Appellant argues that “the Rottmann Declaration is not based solely on Mr. Rottmann’s opinion.” Appeal Br. 10. Appellant argues that Mr. Rottmann declares “that based on customer discussions, adoption of the claimed ACR tubes is due to increased strength of a given tube Appeal 2020-004914 Application 15/248,399 10 weight/diameter compared to copper tubes,” and “also declares that customers have been willing to pay a higher price per pound for claimed ACR tubes.” Appeal Br. 10 (citing Rottmann Dec. ¶¶ 16, 17). Appellant argues that, therefore, “the Rottmann Declaration provides factually-based assertions based on discussions with customers and factual evidence as a basis customer adoption of claimed ACR tubes.” Appeal Br. 10. Although the statements in the Rottmann Declaration are said to be based on customer discussions and customer behavior, neither the Declarant nor Appellant provides any actual objective evidence corroborating the statements in the Declaration. And because Mr. Rottmann is named as an inventor of the subject matter claimed in the present application, the opinions Mr. Rottmann provides in the Declaration are inherently self- interested. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”); In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of little probative value in overcoming obviousness rejection). Therefore, considering the totality of the evidence on the record before us, Appellant does not provide sufficient evidence to meet Appeal 2020-004914 Application 15/248,399 11 Appellant’s burden of establishing that UNILLOY® ACR tubes were actually commercially successful, and establishing that the asserted sales of UNILLOY® ACR tubes were a direct result of the unique characteristics of the copper alloy of claim 1 and the ACR tube of claim 8, rather than a result of other factors. We, accordingly, sustain the Examiner’s rejections of claims 1, 4–8, and 11–16 under 35 U.S.C. § 103(a). DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 8, 11, 12, 15, 16 103(a) Ozaki 1, 4, 5, 8, 11, 12, 15, 16 6, 7, 13, 14 103(a) Ozaki, Sugawara 6, 7, 13, 14 1, 4–8, 11– 16 103(a) Sugawara 1, 4–8, 11– 16 1, 4–8, 11– 14 103(a) Oishi 1, 4–8, 11– 14 Overall Outcome 1, 4–8, 11– 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation