MAHLE International GmbH

Patent Trials and Appeals Board

Feb 1, 2022

2021004649 (P.T.A.B. Feb. 1, 2022)

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. 15/894,179 02/12/2018 Thierry Berger 91856-013 (P702E17044US) 2939 168384 7590 02/01/2022 Dickinson Wright PLLC - Ann Arbor 350 S. Main Street Suite 300 Ann Arbor, MI 48104 EXAMINER SCHERMERHORN, JON ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): DWPatents@dickinson-wright.com tgarrett@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THIERRY BERGER and GARY SCOTT VREELAND Appeal 2021-004649 Application 15/894,179 Technology Center 3700 Before ANNETTE R. REIMERS, JAMES A. WORTH, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, 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 to reject claims 9, 11, 12, and 17-19. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Mahle International GmbH as the real party in interest. See Appeal Br. 2. Appeal 2021-004649 Application 15/894,179 2 CLAIMED SUBJECT MATTER The application is titled “Thermal Component, Method for Producing the Same, and Heat Exchanger.” Spec. 1. Claim 9 is the sole independent claim pending. See Appeal Br. 3-6 (filed February 17, 2021, hereinafter “Claims App.”). We reproduce claim 9, below, with emphasis added to a particular limitation addressed in our decision: 1. A thermal component, comprising a pipe comprising a fluid channel and a swirler, the fluid channel of the pipe including an inner profile corresponding to an outer profile of the swirler, the swirler being disposed in the fluid channel, wherein the inner profile is formed by a sliding plate, wherein the wall of the pipe has a longitudinal gap, through which the sliding plate extends into the pipe. Claims App. 4. (emphasis added, reference numerals omitted). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Shinmura US 5,174,373 Dec. 29, 1992 Kato US 5,868,198 Feb. 9, 1999 REJECTION The Examiner rejects claims 9, 11, 12, and 17-19 as unpatentable under 35 U.S.C. § 103 over Kato in view of Shinmura. Non-Final Act. 3. I. Examiner’s Rejection In rejecting independent claim 9, along with its dependent claims, the Examiner finds that Kato discloses a “thermal component,” citing in part Kato’s Figure 3. Non-Final Act. 3; see also id. at 4 (addressing dependent claims 11, 12, and 17-19). We reproduce Kato’s Figure 3, below: Appeal 2021-004649 Application 15/894,179 3 Figure 3 “is a cross-sectional view of the extended portion of the header pipe according to” Kato’s invention. Kato, 3:1-2. In particular, Figure 3 depicts concave beads 13 projecting towards the inside of header pipe 3, spaced equally to those of tube insertion holes 9. Id. at 4:12-18. Figure 3 further Appeal 2021-004649 Application 15/894,179 4 depicts side plate insertion hole 10 located between tube insertion holes. Id. at 4:19-20. In referencing Kato’s Figure 3, the Examiner finds that “Kato discloses a thermal component . . . comprising a fluid channel (Fig. 3; inside of pipe 3) and a ‘swirler’ (at 14), the fluid channel of the pipe including an inner profile . . . corresponding to an outer profile of the swirler, the swirler being disposed in the fluid channel.” Non-Final Act. 3. The Examiner further references Kato’s Figure 5, which we also reproduce, below: Appeal 2021-004649 Application 15/894,179 5 Figure 5 “is a perspective view of the header pipe according to” Kato’s invention. Kato, 3:5-6. In particular, Figure 5 is a perspective view depicting header pipe 3 in cylindrical form and made from a flat sheet of material. Id. at 5:11-13. Reference numeral 15 denotes a butt joint seam of the longitudinal edges of the material. Id. at 5:14-15. Figure 5 further depicts tube insertion holes 9, plate insertion hole 10, beads 13, and burrings 14. See id. at 5:4-5, 5:8-31 (referencing related Figures 4 and 6). In referencing Figure 5, the Examiner finds that “Kato discloses that the pipe has a longitudinal gap (Fig 5; 15) but does not disclose that the pipe has a plate.” Non-Final Act. 3. To address the “plate,” the Examiner relies on Shinmura, citing Shinmura’s Figure 6(c), a copy of which we reproduce, below: Appeal 2021-004649 Application 15/894,179 6 Figure 6(c) depicts a cross-sectional view of a header pipe made in accordance with an embodiment of Shinmura’s invention. Shinmura, 2:66- 68. In particular, Figure 6(c) depicts header pipe 11 bent in an annular formation to form a cylindrical pipe with a dividing wall 111, the ends of which are welded to the contacting surface of the pipe. See id. at 4:8-15. The Examiner finds that It would have been obvious to one of ordinary skill in the art to modify the thermal component of Kato with the teachings of Shinmura in order to balance heat exchange between windward and leeward sides of heat exchange tubes thereby balancing pressure loss and improving efficiency of the system. Shinmura does not explicitly disclose that the plate extends through the longitudinal gap since the plate is integrally formed with the outer pipe portion. However, Shinmura does disclose multiple embodiments in which the plate can be made integrally/monolithically with the pipe or as a separate piece (e.g. Figs. 6a and 6b) and it would have been obvious to one of ordinary skill to make the plate of the embodiment in Fig. 6c as a separate piece extending through the gap since it has been held that the use of a one piece construction versus a multi- piece construction is merely a matter of obvious engineering choice. Non-Final Act. 3-4. In the Answer, the Examiner further cites to MPEP § 2144.04 and Larson, explaining that “the various teachings of Shinmura are sufficient to establish that the use of a multi piece construction instead of the one piece construction disclosed in Shinmura is not an unobvious/patentable difference to one of ordinary skill in the art.” Ans. 7; see also In re Larson, 340 F.2d 965, 968 (CCPA 1965). Appeal 2021-004649 Application 15/894,179 7 II. Appellant’s Argument Appellant argues that the Examiner erred in relying on Larson, and that Larson stands for the proposition that “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” Appeal Br. 7 (quoting Larson, 340 F.2d at 968); see also Reply Br. 2 (“The Examiner has not provided a reason to apply such a reverse application of the case law”). Appellant submits that the Examiner’s proposed modification is based on impermissible hindsight. See Appeal Br. 8. III. Analysis We agree with Appellant. The Examiner’s reliance on Larson is misplaced, as Larson is inapposite to the proposed modification. In particular, Larson does not support the Examiner’s reasoning to replace a one-piece construction with a multi-piece construction as merely a matter of obvious engineering choice. See Non-Final Act. 4; see also Ans. 7. Larson concerned a claim to a fluid transporting vehicle that was rejected as obvious over a combination of prior art references, most notably, Tuttle. Larson, 340 F.2d 967. Larson’s claim differed from Tuttle’s disclosure in reciting a brake drum integral with a clamping means, whereas the reference’s brake disc and clamp comprised several parts rigidly secured together as a single unit. See id. The court affirmed the rejection holding that “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” Id. at 968-69. Notably, that court did not hold that transforming a one-piece Appeal 2021-004649 Application 15/894,179 8 construction to be a multi-piece construction would have been an obvious engineering design choice. See id. Here, Shinmura’s pipe is formed from a single sheet of material, the ends of which are welded onto itself. See Shinmura, 4:10-15; see also id. at Fig. 6(c). The use of a single-piece sheet of material reduces the number of welds (i.e., two welds) needed to make Shinmura’s divided header pipe. See id. at 4:10-15. The Examiner’s proposed modification, on the other hand, involves separating the pieces and complicating the structure, while providing no perceived benefit. See Non-Final Act. 4. Although the MPEP explains that separating two parts may have been obvious, the MPEP provides that there must be a desirable reason to do so. See MPEP § 2144.V.C (“The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is ‘press fitted’ and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’” (quoting In re Dulberg, 289 F.2d 522, 523 (CCPA 1961)) (emphasis added)). In the present case, the Examiner provided no reason, other than “engineering design choice,” as to why it would be desirable to separate Shinmura’s integrally-formed divider plate 111 from header pipe 11, thereby converting Shinmura’s one-piece construct into a two-piece construct. See Final Act 4; see also Ans. 7. We do not find the proposed modification as a simple matter of “engineering design choice.” Shinmura’s relevant embodiment (Fig. 6(c)) teaches a header pipe with an integrally-formed divider wall, in which its dividing wall 111 is bent Appeal 2021-004649 Application 15/894,179 9 from a single sheet of header pipe material, with its two ends welded onto itself to form the two-chamber pipe. See Shinmura, 4:8-15; see also id. at Fig. 6(c). The design is simple. The Examiner’s proposed modification, on the other hand, of forming a “gap” within the pipe wall, for the purpose of inserting a separate “sliding plate,” needlessly complicates Shinmura’s construction. See Non-Final Act. 3-4. The rejection fails to appreciate that the proposed modification of separating Shinmura’s integrally-formed dividing wall 111 from its header pipe sheet would yield a design that is more complicated, as it would require more parts and more welds, without providing any perceived benefit. See Dulberg, 289 F.2d at 523 (holding that it would have been obvious to separate two parts “if it were considered desirable for any reason”); see also MPEP § 2144.04.V.C (explaining the same). Absent any reason, we find that the proposed modification is based on impermissible hindsight, and that a skilled artisan would not have modified the prior art as the Examiner has done. Accordingly, we reverse the rejection of independent claim 9, and its dependent claims 11, 12, and 17-19, which inherit the same rejection infirmity. See Non-Final Act. 4. IV. Conclusion We reverse the rejection of claims 9, 11, 12, and 17-19. Appeal 2021-004649 Application 15/894,179 10 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9, 11, 12, 17-19 103 Kato, Shinmura 9, 11, 12, 17-19 REVERSED