Ex Parte Fries et al

Patent Trial and Appeal Board

Aug 11, 2017

13565308 (P.T.A.B. Aug. 11, 2017)

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.
13/565,308 08/02/2012 Benedikt FRIES 07780009US 5093
62008 7590 08/15/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
HIDALGO-HERNANDEZ, RUTH G
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENEDIKT FRIES, AXEL DIPL-LUG LOFFLER, and
CHRISTOPHER REINKE
Appeal 2015-008156
Application 13/565,3081
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 31—50. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, “[t]he real party in interest is the assignee of
the inventors, Audi AG.” Appeal Br. 2.
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Application 13/565,308
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 31 and 41 are the independent claims on appeal. Claim 31,
reproduced below, is illustrative of the subject matter on appeal.
31. A method of forming a heat exchanger for a motor vehicle
comprising:
forming a body of porous material providing a first
passageway therethrough for and in heat transfer relation with a
first medium; and
forming at least a second passageway through said body
of porous material for a second medium, coated with a material
having heat transfer properties relative to said second medium
and said body of porous material.
Rejections
Claims 35, 41, and 45 stand rejected under (pre-AIA) 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
Claims 31—33, 35—43, and 45—50 stand rejected under (pre-AIA) 35
U.S.C. § 103(a) as unpatentable over Klett et al. (US 6,673,328 Bl, issued
Jan. 6, 2004; hereinafter “Klett”) and Wu (US 2007/0218284 Al, published
Sept. 20, 2007).2
2 Although the Examiner sets forth separate statements for the rejection of
claims 31—33 and 35—40 (Final Act. 3) and claims 41 43 and 45—50 (Final
Act. 5), we consolidate the statements into a single ground of rejection
because each statement is based upon the same prior art references.
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Application 13/565,308
Claims 34 and 44 stand rejected under (pre-AIA) 35 U.S.C. § 103(a)
as unpatentable over Klett, Wu, and Dupree et al. (US 7,287,522 B2, issued
Oct. 30, 2007; hereinafter “Dupree”).3
ANALYSIS
Written Description
Claims 35 and 45
On June 10, 2014, the Applicants (i.e., Appellants) filed a set of new
claims by Amendment, including claims 35 and 45. Amendment 2—3 (filed
June 10, 2014). Claims 35 and 45 recited, “wherein said coating is partially
infused into the interstice of said body of porous material.” Amendment 2, 3
(filed June 10, 2014) (emphasis added).
On July 3, 2014, the Examiner rejected claims 35 and 45 as failing to
comply with the written description requirement. See Non-Final Act. 2. The
above-recited limitation of claims 35 and 45 was at issue; particularly, the
word “partially” in the phrase “partially infused.” See Non-Final Act. 3.
The reason for the Examiner’s rejection was that there is “[n]o support for a
coating partially infused into the interstices of the body of porous material
can be found in the [Specification.” Non-Final Act. 3.
On October 13, 2014, the Applicants filed an Amendment that
removed the word “partially” in the phrase “partially infused” in claims 35
3 The Examiner’s rejects claim 44 under § 103(a) as unpatentable over Klett,
Wu, and Dupree. Final Act. 6. However, the Examiner fails to include a
statement that clearly indicates the ground of rejection, which we understand
to be a minor oversight. Additionally, we consolidate the rejection of claims
34 and 44 into a single ground of rejection because the rejection of these
claims is based upon the same prior art references. See Final Act. 4—5, 6.
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and 45. Amendment 2, 3 (filed Oct. 13, 2014). Accordingly, claims 35
and 45 recited, “wherein said coating is infused into the interstices of said
body of porous material.”4 Amendment 2, 3 (filed Oct. 13, 2014). There
has been no amendment to claims 35 and 45 since. See Appeal Br., Claims
App.
On November 17, 2014, the Examiner mailed a Final Office Action.
In the Final Office Action, the Examiner did not acknowledge that claims 35
and 45 lacked the word “partially.” The Examiner has maintained the
rejection of claims 35 and 45 for substantially the same reasons as those
presented in the Non-Final Office Action mailed on July 3, 2014. See Final
Act. 3; Ans. 3,7. In light of the foregoing, we determine that the
Examiner’s rejection is moot because claims 35 and 45 no longer recite the
word “partially.”
Thus, we do not sustain the Examiner’s rejection of claims 35 and 45
under (pre-AIA) 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Claim 41
The Examiner finds that “a coating disposed about the periphery of
said second passageway,” as recited in claim 41, fails to comply with the
written description requirement. Final Act. 2—3. The Examiner bases the
rejection on a finding that the Specification only describes, “one surface of
4 Claims 35 and 45 removed the word “partially” without using the proper
claim identifier (i.e., currently amended) or striking-through the text of the
word. Amendment 2, 3 (filed Oct. 13, 2014); see MPEP 37 C.F.R.
§ 1.121(c)(2).
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the first guide section and/or of the second guide section is coated at least in
certain sections with a material.” Final Act. 2—3 (citing Spec. 3); Ans. 7.
The Appellants contend that the above-recited limitation of claim 41
has support in the Specification. Appeal Br. 5 (citing Spec. 3:11—20, 5:25—
26, 6:1—5, 7:23—28, 8:1). The Appellants’ contention is persuasive. The
Specification describes, among other things, an optional copper coating for
second guide section 12b’s channels 16 (Spec. 7:23—24; Figs. 1, 2), which
fully sets forth “a coating disposed about the periphery of said second
passageway,” as recited in claim 41. See Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). As such, we find the written
description “reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date” (Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc)).
Thus, we do not sustain the Examiner’s rejection of independent
claim 41 under (pre-AIA) 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Obviousness
Claims 31—33, 35—43, and 45—50
The Appellants argue, “there are no reasonably construed teachings of
Wu to motivate any reconstruction of Klett et al to arrive at Appellants’
claimed structure.” Appeal Br. 5. The Appellants support this argument by
pointing out that “Wu teaches nothing more than a heat dissipater for an
electronic device consisting of a graphite body provided with a metal coating
for preventing the dispersion of graphite particles and looking ‘nice.’”
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Appeal Br. 6 (citing Wu, para. 6); see Reply Br. 2. The Appellants also
support the argument by asserting that Wu’s teachings “do[] not provide for
the transfer of heat from a first medium to a second medium transcending a
porous body but simply an arrangement for dissipating heat.” Appeal Br. 5—
6 (citing Wu, para. 6); see Reply Br. 2. The Appellants’ argument is not
persuasive.
At the outset, we note that independent claim 31 requires, among
other things, a coating including a “material having heat transfer properties
relative to said second medium and said body of porous material.” Appeal
Br., Claims App. The Examiner explains, Wu is relied upon specifically for
the teaching that a “metal coating enhances the heat dissipation power of the
graphite body.” Ans. 8 (emphasis added); see Final Act. 4. Indeed, Wu
describes a metal coating — formed of copper or aluminum — that covers
heat dissipation surface 13 of graphite body 1 by electroplating; and
describes that the metal coating enhances the heat dissipation power of the
graphite body. Wu, para. 12.
The Examiner relies on this teaching of Wu to modify the heat
exchanger (i.e., radiator) of Klett’s motor vehicle, which includes
passageways for two mediums, i.e., air and fluid. Final Act. 3^4; Klett,
Figs. 19-20. Indeed, Klett describes, in column 16, lines 14—25, with
emphasis omitted:
FIG. 19 shows the carbon foam 118 of this invention in the
form of a block 51 to be used as an automobile radiator generally
50. Hot engine cooling fluid is introduced into intake manifold
52 connected to pipes 54 which pass through the foam block 51
to the output manifold 56. As seen in FIG. 20 foam block 51 is
supported in an automobile as indicated at 58 having the usual
frame 53 and wheels 55. Hot fluid is conveyed by output conduit
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57 from engine 59 to intake manifold 52. Cooled fluid returns to
engine 59 by intake conduit 60 from output manifold 56. As the
automobile 58 is moving down the road, air is forced through the
foam block 51 and removes the heat to the environment.
The Examiner concludes:
[i]t would have been obvious to one of ordinary skill in the
art... to coat[] the passageways and the porous material of Klett
by deposition of metal (Cu, Al) via electroplating as taught by
Wu instead of inserting pipes therethrough in order to improve
the heat dissipation and contact between the graphite and
passageway piping and protect the porous material body.
Final Act. 4, 6. We determine that the Examiner’s rejection articulates
reasoning with rational underpinning. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) (cited with approval in KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
As to the Appellants’ assertion, that Wu’s teachings “do[] not provide
for the transfer of heat from a first medium to a second medium transcending
a porous body but simply an arrangement for dissipating heat” (Appeal
Br. 5), such is not required for Examiner’s rejection to be reasonable.
Moreover, we determine that the modification of Klett’s radiator in view of
Wu teaching of a metal coating results in the subject matter of independent
claim 31 being obvious. See Final Act. 3^4 (citing Klett, Figs. 19-20;
col. 16,11. 14—25).
As to the Appellants’ point, that Wu’s main object is “to provide a
graphite product which prevents dispersion of graphite powder dust, thereby
providing a nice outer looking,” (Appeal Br. 6 (citing Wu, para. 6)) we agree
that the foregoing is Wu’s main object. However, Wu also teaches
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providing a metal coating to a body for enhancing heat dissipation power.
Wu, para. 12. And, the Appellants’ point does not explain error in the
Examiner’s use of this teaching to articulate reasoning with some rational
underpinning for the conclusion of obviousness. See also Final Act. 4;
Ans. 7—8.
We have considered the remaining assertions advanced by the
Appellants in the Appeal Brief and the Reply Brief, and have determined
that they are unpersuasive of Examiner error. Thus, we sustain the
Examiner’s rejection of claim 31 and 41, and dependent claims 32, 33, 35—
40, 42, 43, and 45—50, as unpatentable over Klett and Wu.
Claims 34 and 44
Claims 34 and 44 add the following limitation to independent
claims 31 and 41, respectively, “wherein a surface of said body of porous
material admitting said first medium is provided with a ribbed
configuration.” Appeal Br., Claims App.
The Examiner finds “Dupree . . . disclose the use of a carbon foam
block heat exchanger (abstract) with an undulating cross section of
alternating ribs (170) and channels (172) on the entire outer surface of the
carbon block (Fig. 4).” Final Act. 4—5, 6. The Examiner concludes “[i]t
would have been obvious to one of ordinary skill in the art... to provide a
ribbed cross sectional configuration on the outer surface of the graphite
radiator block of Klett in view of Wu, as taught by Dupree, in order to
increase turbulence and surface area.” Final Act. 5, 6.
The Appellants contend that ribs 170 of Dupree’s foam block 150 do
not admit a medium, rather Dupree’s medium flows along a passageway 184
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between foam block 150 and encompassing tube 156. See Appeal Br. 6. In
response, the Examiner finds that carbon foam block 150, including,
including ridges 170 and 172, “is permeable to air and therefore the air does
penetrate the foam up to the boundary [(wall)] 186 of its flow path.” Ans. 9;
Dupree, Fig. 4, col. 6,11. 64—66. The Appellants fail to explain persuasively,
using evidence or technical reasoning, how the Examiner’s finding is in
error.
Thus, we sustain the Examiner’s rejection of claims 34 and 44 as
unpatentable over Klett, Wu, and Dupree.
DECISION
We REVERSE the Examiner’s decision rejecting claims 35,41,
and 45 under (pre-AIA) 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
We AFFIRM the Examiner’s decision rejecting claims 31—50 under
(pre-AIA) 35 U.S.C. § 103(a).
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
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