Ex Parte ELLER et alDownload PDFPatent Trial and Appeal BoardMay 2, 201813708457 (P.T.A.B. May. 2, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/708,457 12/07/2012 27820 7590 05/04/2018 WITHROW & TERRANOVA, P.L.L.C. 106 Pinedale Springs Way Cary, NC 27511 FIRST NAMED INVENTOR Michael R. ELLER 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1402-036 7019 EXAMINER RUPPERT, ERIC S ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 05/04/2018 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): patents@wt-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL R. ELLER, SCOTT M. MAURER, and NICHOLAS J. NAGURNY 1 Appeal2017-003136 Application 13/708,457 Technology Center 3700 Before STEVEN D. A. McCARTHY, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge OSINSKI. Opinion Concurring filed by Administrative Patent Judge McCARTHY. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL 1 Lockheed Martin Corporation ("Appellant") is the Applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 1. Appeal2017-003136 Application 13/708,457 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 4--11, and 20-25, which are all of the pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 1. A desalination vapor-fin heat exchanger condenser compnsmg: a shell forming: a seawater inlet configured to receive seawater; a seawater outlet configured to convey the seawater; a moist air inlet; a moist air outlet; and a condensate outlet; a plurality of aluminum extruded tubes having respective exterior surfaces, the plurality of aluminum extruded tubes fluidically coupled to the seawater inlet and the seawater outlet configured to transport the seawater from the seawater inlet to the seawater outlet; graphite foam comprising graphitic ligaments bonded to the respective exterior surfaces of the plurality of aluminum extruded tubes, the graphite foam in fluidic communication with the moist air inlet and the moist air outlet and configured to condense water from the moist air inlet and pass the water to the condensate outlet; and a plurality of machined channels formed in the graphite foam, the plurality of machined channels extending from a first 2 Claims 2, 3, and 12-19 are cancelled. Response to Non-Final Office Action (Dec. 11, 2015). 2 Appeal2017-003136 Application 13/708,457 end of the graphite foam to a second end of the graphite foam, each machined channel comprising: a machined planar bottom surface; and two machined planar side surfaces. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Geiringer Burne O'Neal Heikkila Margiott Hendricks Dupree Zuili Madex us 3,489,654 us 3,595,310 us 5,046,331 US 2002/0121359 Al US 6,537,351 B2 US 2004/0194944 Al US 2007/0228113 Al US 7,762,101 Bl DE 102 21 138 Al THE REJECTIONS Jan. 13, 1970 July27, 1971 Sept. 10, 1991 Sept. 5, 2002 Mar. 25, 2003 Oct. 7, 2004 Oct. 4, 2007 July 27, 2010 May 2, 2004 I. Claims 4 and 5 stand rejected under 35 U.S.C. § 112, fourth paragraph as failing to further limit the apparatus of claim 1. Final Act. 2. II. Claims 1, 6-10, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal. Id. at 2-7. III. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Geiringer. Id. at 7-8. IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, 0 'Neal, and Zuili. Id. at 8-9. 3 Appeal2017-003136 Application 13/708,457 V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, Madex, and Heikkila. Id. at 9- 10. VI. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Burne. Id. at 10-11. VII. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Dupree. Id. at 11. OPINION Rejection I Claim 4 recites "[t]he desalination vapor-fin heat exchanger condenser of claim 1 used for flash evaporation in a multi-stage flash evaporation system." Appeal Br. 14 (Claims App.). Claim 5 recites "[t ]he desalination vapor-fin heat exchanger condenser of claim 4 used to enhance distillation in a multi-effect distillation evaporation system." Id. The Examiner determines that these dependent claims merely provide a "method of using the apparatus of claim 1" and "fail[] to further limit the apparatus of claim 1 in any way." Final Act. 2. Appellant responds that "claim 4 further limits the claimed subject matter to use in a 'multi-stage flash evaporation system"' and that "claim 5 further limits the claimed subject matter to its use to 'enhance distillation in a multi-effect distillation evaporation system."' Appeal Br. 6 (emphasis omitted). We find Appellant's argument unconvincing. The statements of intended use in claims 4 and 5 do not further limit the structure of the claimed "desalination vapor-fin heat exchanger condenser," but merely specify how the claimed condenser is used. Claims 4 and 5 do not positively 4 Appeal2017-003136 Application 13/708,457 claim the identified systems or any of their components. Moreover, we are not persuaded that use of the condenser for either flash evaporation in a multi-stage flash evaporation system (claim 4) or for enhancing distillation in a multi-effect distillation evaporation system (claim 5) affects how the apparatus of claim 1 is configured. "An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). As such, claims 4 and 5 do not further limit the claim from which they depend, and we sustain the rejection of claims 4 and 5 under 3 5 U.S.C. § 112, fourth paragraph. Rejection II Claims 1, 6---8, and 10 The Examiner relies on Margiott for many of the limitations of independent claim 1, including, inter alia, "graphite foam comprising graphitic ligaments bonded to the respective exterior surfaces of the plurality of ... extruded tubes," as claimed. Final Act. 3. In particular, the Examiner points to Margiott's teaching of an "open cell foam component includ[ing] a monolithic lattice" and having "a plurality of coolant passage tubes embedded inside of the foam." Margiott 1:7-16; see also id. at 1:51---60 ("The foam includes a plurality of interconnected open cells or pores which are contained in a lattice. . . . [T]ubes may be embedded in the foam monolith."). The Examiner acknowledges that "Margiott does not teach ... a plurality of machined channels are formed in the graphite foam, the plurality of machined channels extending from a first end ... to a second end ... ; 5 Appeal2017-003136 Application 13/708,457 each machined channel comprising[:] a machined planar bottom surface; and two machined planar side surfaces." Final Act. 3. 3 The Examiner finds that Hendricks teaches ... a plurality of machined channels (see channels between "carbon nanotube structure" - 126; Fig. 5 & "path through channel" -figure below) are formed in the graphite foam, the plurality of machined channels extending from a first end of the graphite foam to a second end of the graphite foam (see top and bottom ends of structure" - 126; Fig. 5), each machined channel comprising: a machined planar bottom surface (see bottom of "path through channel"-figure below); and two machined planar side surfaces (see sides of "path through channel"-figure below). Id. at 3--4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to have used a heat exchanger as taught by Margiott to include the ... channels of Hendricks[] in order to ... increase the heat-transfer characteristics of the carbonaceous structure." Id. at 4 (citing Hendricks i-f 52). The Examiner also finds that "the product taught by Margiott as modified is the same as or makes the product claimed obvious, meeting the limitation of the claim" and "[t]he fact that the channels and surfaces are 'machined' does not change the end product of providing channels in the graphite foam." Id. at 5. Appellant argues that "[a] 'machined' channel has a specific structure that is different from a channel that is not machined," and in particular, "a 3 The Examiner also finds that Margiott does not teach that (i) its tubes are aluminum and (ii) its heat exchanger is housed within a shell. Final Act. 3, 5. The Examiner finds that Hendricks teaches aluminum tubes (id. at 3 (citing Hendricks i-f 34)) and that O'Neal teaches a heat exchanger housed within a shell (id. at 5 (citing O'Neal 2:50-60) and concludes that it would have been obvious to modify Margiott in accordance with these teachings (id. at 3, 5). Appellant does not challenge these particular findings or conclusions. 6 Appeal2017-003136 Application 13/708,457 'machined channel' is a channel that has a specific structure as a result of being turned, shaped, planed, or milled by machine operated tools." Appeal Br. 8-9. Appellant has not asserted what type of specific structure is achieved as a result of machining, let alone that whatever process is used in Hendricks to create the pathways (through which external medium 19, 119 flows) cannot achieve such specific structure. We do not see where Appellant's Specification provides guidance regarding the specific structure achieved by machining, and accordingly, the scope of the description is so broad as to extend to any finish that may be achieved as a result of being turned, shaped, planed, or milled by machine operated tools. The Examiner has made a finding that the pathways of Hendricks are the same as machined channels. Final Act. 5. Appellant has not adequately explained how the pathways of Hendricks lack a finish that may be achieved as a result of being turned, shaped, planed, or milled by machine operated tools. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) ("Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product."). Appellant also argues that "it would be impracticable, if not impossible, to form machined channels in the carbon nanotubes disclosed in Hendricks at all." Appeal Br. 9. "The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (citations 7 Appeal2017-003136 Application 13/708,457 omitted). Consequently, the relevant inquiry is not whether the pathways of Hendricks are, or can be, formed by machining, but rather whether the pathways of Hendricks, however they are formed, are the same as or render obvious the claimed product. As described above, Appellant has not persuaded us that there is an unobvious difference between the claimed channels and the pathways of Hendricks. Appellant additionally argues that "the carbon nanotubes of Hendricks are not equivalent to or interchangeable with the graphite foam of Margiott" and there is no indication that the carbon nanotube structure of Hendricks "can constitute a foam at all, let alone a graphite foam." Appeal Br. 9, 10. Appellant's implication is that Margiott' s graphite foam is not "combinable" with the carbon nanotubes of Hendricks. Id. at 9 (emphasis omitted); see also id. at 10 ("[B]ecause the carbon nanotubes of Hendricks are not suitable for combination with the graphite foam of Margiott, a person of ordinary skill in the art would not have a reason to combine Hendricks with Margiott in the manner suggested by the Final Office Action."). Simply that there are differences between two references is insufficient to make a prima face case of obviousness impossible. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). That is, simply because Hendricks lacks a graphite foam does not prevent Hendricks from leading one of ordinary skill in the art to provide the pathways/channels of Hendricks in the graphite foam of Margiott. The Examiner finds that the combination teaches the claimed elements and concludes that one of ordinary skill in the art would be led to include the pathways/channels of Hendricks in the graphite foam of Margiott "to increase the heat-transfer characteristics of the carbonaceous structure ... by providing channels." Final Act. 4 (citing Hendricks i-f 52). Appellant does 8 Appeal2017-003136 Application 13/708,457 not specifically address the Examiner's articulated reasoning or adequately explain why the reasoning is in error. Appellant further argues that "there is no indication in Hendricks or anywhere else that the carbon nanotubes of Hendricks could be safely used for desalinization purposes." Appeal Br. 10. Appellant's argument is not persuasive of error in that the Examiner's rejection is not predicated on bodily incorporation of the carbon nanotubes of Hendricks into the condenser assembly of Margiott, but merely on the inclusion of channels in the graphite foam of Margiott. Appellant also argues that "both Margiott and Hendricks fail to teach or suggest that either of the graphite foam or carbon nanotubes comprise 'graphitic ligaments,' as recited in Appellant's claim 1." Appeal Br. 10 (emphasis omitted). The Examiner takes the position that "a 'lattice' structure of 'graphite' (see Col. 1., lines 50-60) as explicitly disclosed by Margiott meets the claim limitation of' graphitic ligaments,' given the plain meaning of the phrase and being consistent with the [S]pecification of the instant application." Ans. 15. Appellant has not responded with sufficient particularity to the Examiner's specific findings regarding Margiott' s disclosure of graphitic ligaments (Final Act. 3; Ans. 15) so as to persuade us of error in the Examiner's finding. For the foregoing reasons, we do not find that the Examiner erred in concluding that the subject matter of independent claim 1 is rendered obvious by Margiott, Hendricks, and O'Neal. We sustain the rejection of claim 1, and claims 6-8 and 10 for which Appellant relies on the same arguments and reasoning as independent claim 1 (Appeal Br. 11 ), under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal. 9 Appeal2017-003136 Application 13/708,457 Claims 9, 24, and 25 Although Appellant purports to present "additional reason[s]" why claims 9, 24, and 25 "are independently allowable" (Appeal Br. 11 ), Appellant's arguments essentially boil down to challenging whether the references teach "machined channels" (id.). For the same reasons described above, we do not find that the Examiner erred in concluding that the subject matter of claims 9, 24, and 25 is rendered obvious by Margiott, Hendricks, and O'Neal. We sustain the rejection of claims 9, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal. Rejections III-VII In contesting the rejections of claims 4, 5, 11, and 20-23, Appellant relies on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. See Appeal Br. 11-13. Accordingly, we also sustain the rejections, under 35 U.S.C. § 103(a), of: claims 4 and 5 as unpatentable over Margiott, Hendricks, O'Neal, and Geiringer; claim 11 as unpatentable over Margiott, Hendricks, O'Neal, and Zuili; claim 20 as unpatentable over Margiott, Hendricks, O'Neal, Madex, and Heikkila; claims 21 and 22 as unpatentable over Margiott, Hendricks, O'Neal, and Burne; and claim 23 as unpatentable over Margiott, Hendricks, 0 'Neal, and Dupree. DECISION The Examiner's decision to reject claims 4 and 5 under 35 U.S.C. § 112, fourth paragraph is affirmed. The Examiner's decision to reject claims 1, 6-10, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, and O'Neal is affirmed. 10 Appeal2017-003136 Application 13/708,457 The Examiner's decision to reject claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Geiringer is affirmed. The Examiner's decision to reject claim 11 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, 0 'Neal, and Zuili is affirmed. The Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, 0 'Neal, Madex, and Heikkila is affirmed. The Examiner's decision to reject claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, O'Neal, and Burne is affirmed. The Examiner's decision to reject claim 23 under 35 U.S.C. § 103(a) as unpatentable over Margiott, Hendricks, 0 'Neal, and Dupree is affirmed. 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)(l )(iv). AFFIRMED 11 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL R. ELLER, SCOTT M. MAURER, and NICHOLAS J. NAGURNY Appeal2017-003136 Application 13/708,457 Technology Center 3700 Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. McCARTHY, Administrative Patent Judge, concurring. I respectfully disagree with my colleagues' decision sustaining the 2 rejection of claim 4 under pre-AIA 35 U.S.C. § 112, fourth paragraph, as 3 being in improper dependent form. Claim 1, as reproduced in my 4 colleagues' opinion, recites a "desalination vapor-fin heat exchanger 5 condenser." For example, claim 1 is sufficiently broad to encompass a 6 desalination vapor-fin heat exchanger as a separate article of manufacture. 7 Dependent claim 4 recites "[t]he desalination vapor-fin heat exchanger 8 condenser of claim 1 used for flash evaporation in a multi-stage flash 9 evaporation system." Claim 4 is limited to a combination that includes both 10 the desalination vapor-fin heat exchanger of claim 1 and other structural 11 components sufficient to comprise a multi-stage flash evaporation system. 12 A mere statement of an intended use or purpose of a claimed 13 apparatus, appearing, for example, in the preamble of a claim, fails to further Appeal2017-003136 Application 13/708,457 limit the claim where any apparatus meeting the structural limitations of the 2 claim will satisfy the recited use or purpose, that is, where the use or purpose 3 fails to exclude any structure otherwise meeting the structural limitations. 4 That is not the case here. Claim 1 is sufficiently broad to cover any 5 desalination vapor-fin heat exchanger condenser, alone or as part of an 6 evaporation system. Claim 4 is limited to a desalination vapor-fin heat 7 exchanger condenser that used in (that is, that is part of) a multi-stage flash 8 evaporation system. Hence, claim 4 is in proper dependent form because it 9 further limits claim 1. (See Appeal Brief, dated Oct. 11, 2016, at 6). 10 My view is supported by the Examiner's decision rejecting claim 1 11 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combined 12 teachings of Margiott, Hendricks and O'Neal; but rejecting claims 4 and 5 13 under§ 103(a) as being unpatentable only over the combined teachings of 14 Margiott, Hendricks, O'Neal and Geiringer. If the Examiner is correct that 15 claim 4 fails to further limit the scope of claim 1, it is unclear why the 16 Examiner requires the teachings of an additional reference to prove that 17 claim 4 would have been obvious. 18 Because I agree with my colleagues that the subject matter of claim 4 19 would have been obvious from the combined teachings of Margiott, 20 Hendricks, O'Neal and Geiringer, I concur in the rejection of those claims 21 under§ 103(a). On this basis, I concur in the result reached by my 22 colleagues. 2 Copy with citationCopy as parenthetical citation