ABB Schweiz AG

Patent Trials and Appeals Board

Feb 10, 2022

2022000220 (P.T.A.B. Feb. 10, 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. 16/604,476 10/10/2019 Tor Laneryd 04190-P0406A 5139 137670 7590 02/10/2022 ABB - Whitmyer IP Group LLC 600 Summer Street Stamford, CT 06901 EXAMINER MATEY, MICHAEL A ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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): USPTO@dockettrak.com uspto@whipgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte TOR LANERYD, THOMAS GRADINGER, HEINZ LENDENMANN, THOMAS WAGNER, HUI HUANG, KIM MISSING, and MIKA NOROLAMPI ________________ Appeal 2022-000220 Application 16/604,476 Technology Center 2800 ________________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-8, 10, 12, 13, and 15.1 Appeal Br. 3-10. We have jurisdiction under 35 U.S.C. § 6(b). Oral Argument was held February 4, 2022. A transcript of the proceeding will be entered into the record in due course. We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ABB Schweiz AG. Appeal Brief 2, filed July 6, 2021 (“Appeal Br.”). Appeal 2022-000220 Application 16/604,476 2 CLAIMED SUBJECT MATTER Appellant describes the present claimed subject matter as relating to a heat exchanger for a subsea electronic system that includes a heat exchanging element located inside at least one pipe and establishing a heat transfer bond between the heat exchanging element and the pipe. Spec. Abstr. Independent claim 1, reproduced below, illustrates the subject matter of the appealed claims: 1. A heat exchanging arrangement for a subsea electronic system, the heat exchanging arrangement comprising: at least one pipe having an external surface; and at least one heat exchanging element arranged inside the at least one pipe and defining at least one internal passage for conducting a dielectric fluid through the at least one pipe; wherein the at least one heat exchanging element is arranged to press laterally outwards against an internal surface of the at least one pipe to establish a heat transfer bond between the at least one heat exchanging element and the at least one pipe. Appeal Br. 12 (Claims App.). STATEMENT OF THE REJECTIONS Claims 1-6, 8, 10, 12, 13, and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bjoerneklett (US 2017/0306706 A1; published Oct. 26, 2017) and Gradinger (US 2017/0112021 A1; published Apr. 20, 2017). Final Act. 2-6. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over Bjoerneklett, Gradinger, and Sumrall (US 2008/0223032 A1, published Sept. 18, 2008). Final Act. 6-7. Appeal 2022-000220 Application 16/604,476 3 DETERMINATIONS AND CONTENTIONS The Examiner finds that Bjoerneklett discloses every element of claim 1 with the exception of teaching that the claimed fluid is a dielectric fluid. Final Act. 3. The Examiner finds that Gradinger teaches a dielectric fluid and determines that it would have been obvious to include a dielectric fluid in Bjoerneklett’s heat exchanger “because it ensures effective cooling of the heat generating elements while also providing electrical insulation.” Id. In support of the rejection, the Examiner explains that the claimed heat exchanging element is being interpreted as reading on Bjoerneklett’s cooling device 10, and the claimed pipe is being interpreted as reading on Bjoerneklett’s protective cover 12. Final Act. 3; Ans. 4. The Examiner acknowledges that Bjoerneklett “does not explicitly disclose how the protection cover12 is coupled to the exchanging element 10, but merely discloses that the cooling device may be equipped with a protection cover around the perimeter of the cooler, with the protection cover arranged around the outer ends of the cooling fins.” Ans. 5. The Examiner reasons, “the tubular element 12 would have to press against the fins to form the channels [(14)] of the at least one pipe (12).” Final Act. 3 (citing Bjoerneklett ¶¶ 39-42; Fig. 6). The Examiner reiterates this position in the Examiner’s Answer and further reasons that the fins necessarily have to press against the cover “because the protection cover cannot float in the thin air without anything supporting.” Ans. 5. The Examiner subsequently acknowledges that the fins do not necessarily have to be pressing laterally outwards against the internal surface Appeal 2022-000220 Application 16/604,476 4 of the cover, but that one would have inferred that the cover is attached in the manner claimed: Examiner asserts that though there may be various ways to couple the protection cover onto the heat exchanging element via the fins, the disclosure is silent on how the protection cover is coupled, and one of ordinary skill in the art would have to infer based on figure 3, 5 & 6 that the protection cover is coupled to the fins via friction fit[,] which requires the heat exchanging element to press laterally outwards against an internal surface of the at least one pipe (element 12). Ans. 5. Appellant argues, inter alia, that Bjoerneklett fails to teach or suggest that the at least one heat exchanging element is arranged to press laterally outwards against an internal surface of the at least one pipe to establish a heat transfer bond between the at least one heat exchanging element and the at least one pipe. Appeal Br. 5. Appellant additionally argues that Figure 6 of Bjoerneklett “clearly shows that the outer ends of the cooling fins 11 are not in contact with the internal surface of the protection cover 12.” Id. at 6. STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS We agree with Appellant that the fins of Bjoerneklett do not necessarily have to be pressed against the protection cover. In fact, by depicting a gap being present (Bjoerneklett Figure 6), Bjoerneklett indicates Appeal 2022-000220 Application 16/604,476 5 that the two components most likely are not in contact, much less contacting in a press contact. For example, the protective cover alternatively could be attached to the support casing 13 instead of the cooling fins 11. Moreover, even if we were to assume arguendo that the protective cover is attached to the cooling fins, the cover potentially could be attached by welding or some alternative means that does not result in the cooling fins 11 pressing laterally outwards against an internal surface of the protective cover 12. For the foregoing reasons, the Examiner has not sufficiently demonstrated that the disputed limitation is inherently disclosed by Bjoerneklett.2 Accordingly, we reverse the obviousness rejection of independent claim 1. We, likewise, reverse the rejection of claims 2-6, 8, 10, 12, 13, and 15, which either depend from claim 1 or otherwise include the disputed limitation. With respect to the remaining rejection of dependent claim 7, the Examiner does not rely on the additionally recited reference, Sumrall, to cure the deficiency of the obviousness rejection explained above. Final Act. 6-7 (relying on Sumrall for teaching that the at least one pipe is made 2 We note that “[i]n relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). “[A]fter the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.’” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971)). See also MPEP §§ 2112 (IV), (V). Appeal 2022-000220 Application 16/604,476 6 of a material resistant to seawater corrosion). We, therefore, reverse the obviousness rejection for the reasons set forth above in relation to claim 1. DECISION SUMMARY In summary: REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8, 10, 12, 13, 15 103 Bjoerneklett, Gradinger 1-6, 8, 10, 12, 13, 15 7 103 Bjoerneklett, Gradinger, Sumrall 7 Overall Outcome 1-8, 10, 12, 13, 15