Ex Parte Gage et al

Patent Trials and Appeals Board

Jan 3, 2019

13857245 - (D) (P.T.A.B. Jan. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/857,245 04/05/2013
26096 7590 01/07/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
MarcE. Gage
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.
70980US02;
67010-472PUS 1
1024
EXAMINER
RUPPERT, ERIC S
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/07/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC E. GAGE, JEFFREY A. SCARCELLA,
KURT L. STEPHENS, and MATTHEW PATTERSON
Appeal2018-002760 1
Application 13/857 ,245 2
Technology Center 3700
Before HUBERT C. LORIN, DAVID M. KOHUT, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 6-8, 10-13, 15, 17, and 20-26, which are all
the pending claims in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed June
26, 2017) and Reply Brief ("Reply Br.," filed January 17, 2018), the
Examiner's Answer ("Ans.," mailed November 17, 2017), and Final Office
Action ("Final Act.," mailed January 20, 2017).
2 Appellants identify Hamilton Sundstrand Corporation as the real party in
interest. (App. Br. 1.)
Appeal2018-002760
Application 13/857,245
THE INVENTION
"This application relates to corrosion protection of heat exchangers."
Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A heat exchanger comprising:
a heat exchanger wall bounding a passage; and
a coating lining the heat exchanger wall, the coating
having a thickness that varies according to location on the heat
exchanger wall,
wherein the heat exchanger wall has an edge and a
location spaced from the edge,
the coating is thicker at the edge than at the location
spaced from the edge, wherein the coating has a maximum
thickness of T 1 and a minimum thickness of T2 such that a
ratio of Tl/T2 (Tl divided by T2) is equal to or greater than 2,
and
the edge is a leading edge with respect to the passage
being arranged to receive a flow of a fluid.
(App. Br. 10 (Claims Appendix).)
THE REJECTIONS
The following rejections are before us for review:
I. Claims 1, 6-8, 10-13, 15, and 20-26 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Shimajiri et al. (JP 02-170998)
("Shimajiri").
II. Claims 2-3 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Shimajiri and Kojima et al. (JP 04-099894)
("Kojima").
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Application 13/857,245
ANALYSIS
Rejection I
Independent claim 1
The Examiner finds that Shimajiri discloses every limitation of claim
1 except "Shimajiri does not explicitly teach wherein the coating has a
maximum thickness of T 1 and a minimum thickness of T2 such that a ratio
of Tl/T2 [(Tl divided by T2)] is equal to or greater than 2." (Final Act. 3.)
In particular, the Examiner finds that zinc coating layer ( 6) disclosed in
Shimajiri meets the claimed "coating lining the heat exchanger wall." (Id. at
2.) According to the Examiner, it would have been obvious to one having
ordinary skill in the art at the time the invention was made to provide a
coating having the claimed thickness ratio because "the claimed values and
ranges fall within those taught by Shimajiri ... and Shimajiri provides the
motivation to optimize these variables, in order to maintain the anti-
corrosive effects of the coating" (Id. at 3).
Appellants argue "prior to alleging that it would be obvious to
optimize a parameter, the Examiner must first show that the parameter to be
optimized is recognized as a result-effective variable" (App. Br. 4) (citing In
re Antoine, 559 F.2d 618, 620 (CCPA 1977)). According to Appellants,
"Shimajiri is silent as to a ratio between a maximum thickness and a
minimum thickness" (id. at 5) and, therefore, the Examiner has not
established that the ratio was recognized as a result-effective variable in the
cited prior art (id. at 5---6).
Responding to Appellants' argument in the Answer, the Examiner
states "[w]hile Shimajiri does not use the term 'ratio' verbatim, Shimajiri
teaches the central part is thinner ('coating' - 6; Fig. 2) than the edge
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Application 13/857,245
locations, and thus, as a ratio is the quantitative relation between two
amounts, teaches a ratio between the two variables at issue." (Ans. 10.)
According to the Examiner, "the two variables at issue are optimized within
the disclosed range in order to maintain the anticorrosive effects of the
coating, and thus one having ordinary skill in the art would recognize this as
motivation to optimize said result effective variables, rendering the claimed
limitation obvious." (Id.)
We are not persuaded of error in the Examiner's rejection. Contrary
to Appellants' argument, there is sufficient evidence that the claimed
thickness ratio was known to be a result-effective variable - rendering its
optimization within the ordinary skill in the art. Cf In re Applied Materials,
Inc., 692 F.3d 1289 (Fed. Cir. 2012) (collecting cases).
As shown in Figure 2, Shimajiri discloses a zinc coating layer 6
having a variable thickness that is thicker at the edge parts 2a than at the
center part 2b. Shimajiri discloses that "the present invention forms a zinc
coating layer whose thickness is non-uniform on the surface of heat
exchanger components" (Shimajiri 8), 3 and "the present invention can
impart better corrosion resistance to heat exchangers" (id. at 9). Shimajiri
additionally provides nine working examples or experiments performed with
different variables. (Id. at 9-12.) As shown in Table 1 of Shimajiri (id. at
11 ), the experimental variables include different thicknesses of zinc coating
layer 6 (column (n)). The thickness of the zinc coating layer was measured
for each of the working examples at edge part (q) and center part (r). For
example, working example #4 has edge thickness of 4.0 µm and center
3 Citations to Shimajiri are to the human translation provided with the Final
Office Action mailed January 20, 2017.
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Appeal2018-002760
Application 13/857,245
thickness of 1.0 µm, and thus a ratio of 4. Working example #9 has edge
thickness of 6.0 µm and center thickness of 1.0 µm, and thus a ratio of 6.
For each working example, Shimajiri discloses that tests were performed to
determine corrosion resistance, including a "combined cyclic corrosion test."
(Id.) The results of the testing are shown in Table 2 of Shimajiri, which
contains the number of cycles until a fin fell and the time at which a hole
was formed in the tube. (Id. at 12.) Based on the experimental results in
Table 2, Shimajiri concludes "compared with the heat exchanger (No. 10) on
which was formed a zinc coating layer whose thickness was uniform, the
present invention can cause heat exchangers to last longer before fins fall
and to possess excellent corrosion resistance." (Id.)
In light of the above disclosure, we find that Shimajiri discloses that
the relative thicknesses of the edge and center parts affects the corrosion
resistance properties, and further indicates that one of ordinary skill can alter
the relative thicknesses (in addition to the other variables shown in Table 1)
to achieve the desired corrosion resistance properties. Therefore, we find
that Shimajiri provides sufficient evidence that a person of ordinary skill in
the art would have recognized that changing the ratio of edge to center
thickness would affect corrosion resistance.
In view of the forgoing, we are not apprised of reversible error.
Accordingly, we sustain the rejection of independent claim 1 and its
dependent claims 6-8, 10-13, and 23, which are not separately argued.
Independent claims 15 and 20
Appellants argue that "[i]t is unclear whether the Examiner is
applying the same rejection to claims 15 and 20" and "[t]o the extent this is
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Application 13/857,245
the case, the rejections are improper and should be reversed for the reasons
set forth above with regard to claim 1." (App. Br. 6.)
Section 132 sets forth a general notice requirement whereby an
applicant must be notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). We find the Examiner provided adequate explanation to
meet the notice requirement (see Final Act. 5---6, 8-9; see also Ans. 10-11).
See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection."). It is
clear that the reasons for the rejection of the argued "ratio" limitation in
claims 15 and 20 is the same as for claim 1. Indeed, Appellants seek to
counter the rejection of claims 15 and 20 "for the reasons set forth above
with regard to claim 1."
In view of the forgoing, we are not apprised of reversible error.
Accordingly, we sustain the rejection of independent claims 15 and 20, and
dependent claims 21 and 22, which are not separately argued.
Dependent claims 24-26
Appellants argue that "Shimajiri does not disclose a coating as
claimed that is applied to fins." (App. Br. 7.) According to Appellants,
"Shimajiri's coating that the Examiner alleges to have the claimed features
and thicknesses is applied to Shimajiri's tubes (2), not its fins (3)." (Id. at
8.)
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Responding to Appellants' argument in the Answer, the Examiner
takes the position that "while Fig. 2 shows the coating applied to a plate, it is
made clear the invention is additionally applied to the fins ('fins' - 3; Fig. 1)
of the heat exchanger (see also 'fin' - Page 1)." (Ans. 10.)
A rejection based on§ 103(a) clearly must rest on a factual basis. As
the Court in KSR made clear, "[r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
Examiner has the initial duty of supplying the factual basis for the rejection
and may not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in its factual basis. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention."); see also InTouch Techs., Inc. v. VGO Commc 'ns, Inc., 751 F.3d
1327, 1352 (Fed. Cir. 2014).
We have reviewed the disclosure of Shimajiri, including Figure 2
cited by the Examiner (Ans. 10). However, it is not clear from Figure 2 that
fins 3 have a variable-thickness coating applied to them; zinc coating layer 6
is only applied to tube 2. Although Shimajiri discloses that the invention
applies to "heat exchanger components" generally (Shimajiri 1 ), the
Examiner does not direct our attention to any specific disclosure in Shimajiri
of applying such a variable-thickness coating to fins 3. Nor has the
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Application 13/857,245
Examiner provided any articulated reasoning for modifying Shimajiri to
apply such a coating to fins 3 ( e.g., in addition to tube 2). And to the extent
the Examiner proposes to modify Shimaj iri, there is no technical reasoning
as to how the proposed modification would be achieved to provide any
particular improvement.
Accordingly, we do not sustain the Examiner's rejection of dependent
claims 24--26 as unpatentable over Shimajiri.
Rejection II
Dependent claims 2, 3, and 17
Appellants do not separately argue the rejection of dependent claims
2, 3, and 17 as unpatentable over Shimajiri and Kojima. As such, we sustain
the rejection of claims 2, 3, and 17 for the same reasons set forth above with
respect to independent claims 1 and 15.
DECISION
The Examiner's decision to reject claims 1-3, 6-8, 10-13, 15, 17, and
20-23 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 24--26 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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