Ex Parte Haydock

Patent Trial and Appeal BoardAug 25, 2017

13247382 (P.T.A.B. Aug. 25, 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. 13/247,382 09/28/2011 Paul M. Haydock PA-0015660-US-AA 2135 87059 7590 08/29/2017 Cantor Colburn LLP - Carrier 20 Church Street, 22nd Floor Hartford, CT 06103 EXAMINER PEREIRO, JORGE ANDRES ART UNIT PAPER NUMBER 3743 NOTIFICATION DATE DELIVERY MODE 08/29/2017 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL M. HAYDOCK Appeal 2016-000496 Application 13/247,382 Technology Center 3700 Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-000496 Application 13/247,382 CLAIMED SUBJECT MATTER The claims are directed to a furnace heat exchanger. Claims 1 and 8 are independent. Claim 1, reproduced below with paragraphs and indentation added for clarity, is illustrative of the claimed subject matter: 1. A primary heat exchanger for a furnace comprising one or more passes and having a heat exchanger height wherein a ratio of heat exchanger efficiency to heat exchanger height is in the range of about 7.0 points per inch to about 8.1 points per inch. The prior art relied upon by the Examiner in rejecting the claims on REJECTIONS1 Claims 1,3,4, 7, 8, 10, 11, 14, and 15 are rejected under 35 U.S.C. §103 (a) as being unpatentable over Manohar. Claims 2 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Manohar and Dempsey. 1 If prosecution continues, the Examiner may want to consider whether the Specification provides an enabling disclosure of the claimed invention. “Section 112 requires that the patent specification enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. . . . [S]ee also In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (‘[T]he specification must teach those of skill in the art how to make and how to use the invention as broadly as it is claimed.’).” Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070—71 (Fed. Cir. 2005) (internal quotes omitted). REFERENCES appeal is: Dempsey Manohar Haydock US 4,896,411 Jan. 30, 1990 US 8,646,442 B2 Feb. 11,2014 US 2011/0174301 A1 July 21, 2011 2 Appeal 2016-000496 Application 13/247,382 Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Manohar and Haydock. OPINION Claims 1 and 8 are independent. Appellant argues the rejections of claims 1—15 together. We select independent claim 1 as representative. See 37C.F.R. §41.37(c)(l)(iv). The Examiner finds that Manohar teaches all of the features of claim 1, except it “does not state that a ratio of heat exchanger efficiency to heat exchanger height is in the range of about 7.0 points per inch to about 8.1 points per inch.” Final Act. 4. However, the Examiner finds that Manohar teaches an embodiment with “a heat exchanger height of about 8.5 inches” with “a heat exchanger efficiency of at least 70%” which results in “a ratio of about 8.2% points per inch.” Id. at 5; see also id. at 2 (“Manohar discloses that while the dimensions of the heat exchanger are not limited to any particular value . . . [, i]n some embodiments the height 390 of the heat exchanger 300 is about [] 8.5 inches.”). The Examiner therefore determines that this teaches the claimed ratio or renders it obvious. Id. The Examiner further determines that the ratio is obvious because “any number of [] combinations of heat exchanger efficiency ratings (e.g., in the range of 70% to 80%) and height dimensions falling within the stated, or reasonably implied, limits disclosed by Manohar . . . would meet the claimed limitations.” Id. at 3. Appellant argues that “[ajpplying the dimension and stated efficiency of Manohar results in a ratio of greater than 8.2 points per inch, clearly 3 Appeal 2016-000496 Application 13/247,382 outside of the claimed range” of “about 7.0 points per inch to about 8.1 points per inch.” Br. 4. Appellant’s argument is that the specific example cited by the Examiner does not teach a ratio of “about 7.0 points per inch to about 8.1 points per inch.” However, the argument does not show that the range of ratios would not have been obvious. As noted by the Examiner, Manohar teaches that the height is not limited to 8.5 inches. Final Act. 2 (citing Manohar col. 4:25—35). In particular, Manohar teaches “scaling the height” to the desired size and that “various dimensions of the heat exchanger 300 are compatible with industry-standard furnace cabinet dimensions”. Manohar, col. 4:56, 29-31. In addition to teaching an embodiment with a heat exchanger height of 8.5 inches, other embodiments have a height of 8.4 inches and 9.1 inches. Id. at col. 11:29—36. Thus, the “height dimensions2 falling within the stated, or reasonably implied, limits disclosed by Manohar” (Final Act. 3) and the disclosed heat exchanger efficiency ratings render obvious the ratio of “about 7.0 points per inch to about 8.1 points per inch.” Appellant also argues that “construction [of Appellant’s heat exchanger and furnace] requires more than ordinary skill in the art.” Br. 5. Appellant highlights “features such as those shown in the third pass 24c of Appellant’s FIG. 2” as features that “must be carefully constructed.” Id. at 4. Thus, Appellant disagrees with “the Examiner[‘s] assertion] that such a ratio would be discovery of an optimum or workable range involving only routine skill in the art.” Id. 2 For example, a height of 8.6 inches with a heat exchanger efficiency rating of 70% results in a ratio of about 8.1 points per inch. 4 Appeal 2016-000496 Application 13/247,382 However, the “features . . . shown in the third pass 24c of Appellant’s FIG. 2” are not required by claim 1. Appellant’s statement is merely attorney argument, with no supporting evidence to show that the construction requires more than ordinary skill in the art. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Thus, we are not informed of error in the Examiner’s rejection. DECISION The Examiner’s rejection of claims 1—15 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 5