Ex Parte Marr et al

Patent Trial and Appeal BoardSep 16, 2014

11028360 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte RONALD J. MARR and LARRY E. SHULTZ1 __________ Appeal 2012-012352 Application 11/028,360 Technology Center 3700 __________ Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a heat exchanger. The Examiner has rejected the claims for obviousness and for obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Claims 28–31 and 38–51 are on appeal (App. Br. 1).2 The claims subject to each rejection have not been argued separately and therefore stand 1 Appellants identify the real party in interest as Magnesita Refractories (App. Br. 1). Appeal 2012-012352 Application 11/028,360 2 or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 28 is representative and reads as follows: 28. A heat exchanger for use within a rotary kiln that includes a cylindrical steel shell with an internal refractory lining, said heat exchanger capable of being configured in a first, preformed configuration and a second, installed configuration, said heat exchanger, in the first configuration, comprises at least three loose, preformed refractory legs, each one of the legs comprising: a foot located at a foot end portion of the leg, an inner end located opposite the foot end portion, and an elongate, continuous body extending between the foot and the inner end, thereby forming a single-leg unit, and said heat exchanger, in the second configuration, is disposed in the kiln and comprises each one of the continuous, single-leg units oriented substantially radially from proximate the shell.3 Claims 28–31 and 38–40 stand rejected under 35 U.S.C. § 103(a) as obvious over Ransom, Jr. et al. (US 5,330,351, July 19, 1994) (Ans. 4). Claims 28–31 and 38–40 stand rejected under 35 U.S.C. § 103(a) as obvious over Vaughan, Jr. (US 3,227,430, Jan. 4, 1966) (Ans. 5). Claims 28–31 and 38–51 stand rejected under 35 U.S.C. § 103(a) as obvious over Andersen (US 3,036,822, May 29, 1962) (Ans. 5). 2 Claims 52–54 are also pending but have been withdrawn from consideration (App. Br. 1). In addition, claims 32–37 are pending but are not included among the list of claims that are rejected on any basis (Ans. 4– 7). (We note that claims 32–37 were included among the claims rejected under 35 U.S.C. § 112, second paragraph, in the January 6, 2011 Final Rejection. However, in the May 24, 2011 Advisory Action, the Examiner indicated that this rejection had been overcome (Advisory 2).) 3 We note that the Claims Appendix to the Appeal Brief contains errors in at least claim 28 (App. Br. 14). The claim presented herein, and on which we have based our decision, is the claim as amended in the Reply filed October 18, 2010. Appeal 2012-012352 Application 11/028,360 3 Claims 28–31 and 38–40 stand rejected under the judicially created doctrine of obviousness-type double patenting over claims 1–7 of U.S. Patent No. 6,672,256 B2 (Jan. 6, 2004) to Marr et al. (Ans. 6). I In rejecting representative claim 28 over Ransom, the Examiner finds that the “completed heat exchanger of Ransom anticipates, and therefore renders obvious the ‘second configuration’ of the heat exchanger” (Ans. 5). However, as amended, claim 28 is directed to a “heat exchanger capable of being configured in a first . . . configuration and a second . . . configuration.” Based on this amendment, we unanimously agree with Appellants that claim 28 requires structure that can be configured in both the first and second configurations (App. Br. 10). In response to Appellants’ argument, the Examiner finds that “Ransom clearly teaches that a first configuration has three loose performed refractory legs 38, 40, 42” (Ans. 9). However, we conclude that the Examiner has not adequately explained how Ransom teaches or suggests all of the features of the first configuration, namely that the legs form a single- leg unit. Conclusion We conclude that the Examiner has not set forth a prima facie case that Ransom suggests the heat exchanger of claim 28. We therefore reverse the obviousness rejection over Ransom of claim 28 and of claims 29–31 and 38–40, which depend directly or indirectly from claim 28. Appeal 2012-012352 Application 11/028,360 4 II In rejecting claim 28 over Vaughan, the Examiner finds that the “spokes of Vaughan anticipate, and therefore render obvious, the ‘first configuration’ of the heat exchanger” (Ans. 5). However, as discussed above, we agree with Appellants that claim 28 requires structure that can be configured in both the first and second configurations. In response to Appellants’ argument, the Examiner finds that the “second configuration is the completed heat exchanger as shown in Fig. 2 of Vaughan” (id. at 9). In the Reply Brief, Appellants refers us to the arguments raised in the prior appeal (Reply Br. 4). However, given the different way in which Vaughn is being used in the present appeal, we cannot agree that Appellants have adequately explained why the Examiner’s current position is in error. Conclusion The evidence supports the Examiner’s conclusion that Vaughn suggests the heat exchanger of representative claim 28. We therefore affirm the obviousness rejection over Vaughn. III In rejecting claim 28 over Andersen, the Examiner finds: Andersen teaches a heat exchanger for use within a rotary kiln that includes a cylindrical metallic shell 20 with an internal refractory lining 21, [t]he heat exchanger comprising at least three ceramic legs 23, each one of the legs comprising a foot located at a foot end portion of the leg, an inner end located opposite the foot end portion and an elongate, continuous body extending between the foot and the inner end (see Fig. 1). Each leg 23 may be made of a single piece of ceramic material (col. 2, ll. 4-5). . . . Therefore, the at least three legs of Appeal 2012-012352 Application 11/028,360 5 Andersen, prior to their insertion into the kiln, satisfy the requirements for the “first configuration” . . . . Andersen discloses a completed heat exchanger which is disposed in a rotary kiln, which comprises at least three legs 23 which radiate from the center of the kiln (Fig. 1). Upon completion of the heat exchanger, Andersen shows in Fig. 1 that the legs 23 are radially oriented from proximate the shell 20, and elongate metallic retainers 26 fits over the outer most part of the leg 23 for retaining the legs 23 relative to the shell 20. The completed heat exchanger of Andersen anticipates, and therefore renders obvious the “second configuration” of the heat exchanger . . . . (Ans. 5–6.) Analysis Appellants argue that “Andersen does not teach preforming of the legs outside the kiln” (App. Br. 11). However, the issue is not whether Andersen teaches or suggests a first, preformed configuration. Instead, the issue is whether Andersen teaches or suggests structure that is capable of being configured in a first, preformed configuration. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). As noted by the Examiner (Ans. 6), Andersen discloses that “[e]ach partition may be made of a single piece of ceramic material” (Andersen, col. 2, ll. 4–5). Andersen also discloses: The partitions meet at the kiln axis and extend radially therefrom and the connection between each partition and the shell includes a member extending through the shell and engaging the outer end of the partition. Outside the shell, the member is acted on by a spring which causes the member to Appeal 2012-012352 Application 11/028,360 6 exert a compressive force on the partition urging it toward the kiln axis. (Id. at col. 1, l. 70, to col. 2, l. 4.) In addition, Andersen discloses that the members are “subject to replacement” (id. at col. 2, ll. 15–16). In view of these disclosures, we agree with the Examiner that Andersen teaches or suggests a heat exchanger that is capable of being configured in a first, preformed configuration comprising at least three loose, preformed refractory legs (Ans. 6). We note Appellants’ argument that “Andersen is silent as to whether the ‘single piece of ceramic’ embodiment is preformed or formed in situ” (App. Br. 11). However, even if the partitions were formed in the kiln, the evidence, as discussed above, suggests that the partitions would be capable of being removed such that the heat exchanger would be capable of being configured in the first, preformed configuration. In addition, we understand Appellants’ argument that the term “‘preformed’ . . . means to be formed beforehand” (Reply Br. 5). However, in the context of a product claim, we do not interpret this term to require that the partitions be formed outside the kiln. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself;” “[t]he patentability of a product does not depend on its method of production;” and “[i]f the product in a 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”). Appeal 2012-012352 Application 11/028,360 7 Conclusion The evidence supports the Examiner’s conclusion that Andersen suggests the heat exchanger of representative claim 28. We therefore affirm the obviousness rejection over Andersen. IV With regard to the double patenting rejection, Appellants do not traverse the rejection and instead state that they plan “to submit a terminal disclaimer at the appropriate time” (App. Br. 12). We therefore summarily affirm the double patenting rejection. SUMMARY We reverse the obviousness rejection over Ransom. However, we affirm the obviousness rejections over Vaughn and over Anderson. We also summarily affirm the obviousness-type double patenting rejection. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc