Ex Parte Neal et al

Patent Trial and Appeal BoardMar 30, 2018

14462171 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/462,171 08/18/2014 62254 7590 JOHN D. TITUS HARTMAN TITUS PLC 7114 E STETSON DR Suite 205 SCOTTSDALE, AZ 85251 04/02/2018 FIRST NAMED INVENTOR Eugene Neal 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. 1317.2002Cl 3401 EXAMINER CHANG,RICKKILTAE ART UNIT PAPER NUMBER 3726 MAILDATE DELIVERY MODE 04/02/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUGENE NEAL and KENNIETH NEAL Appeal2017-003668 Application 14/462, 171 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and ANTHONY KNIGHT, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eugene Neal and Kennieth Neal ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-9 and 11-13, which are all the pending claims, under 35 U.S.C. Â§ l 12(a) as failing to comply with the written description requirement. Appeal Br. 2; Final Act. 2. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2017-003668 Application 14/462, 171 CLAIMED SUBJECT MATTER Appellants' disclosed invention relates generally to automotive emissions devices and, more specifically, to a method of rebuilding salvaged exhaust gas recirculation coolers for subsequent use as replacement units having improved efficiency and durability over stock coolers. See Spec. i-f 2. Claim 1, reproduced below with emphasis added, is the sole independent claim appealed and is representative of the subject matter on appeal. 1. A method of refurbishing an exhaust gas recirculation (EGR) cooler, the EGR cooler having a housing with internal heat exchanger elements, an exhaust gas inlet fitting, an exhaust gas outlet fitting, a coolant inlet fitting and a coolant outlet fitting, the method comprising: (a) providing a salvaged EGR cooler; (b) cutting the exhaust gas inlet fitting and the exhaust gas outlet fitting from the housing; ( c) removing the internal heat exchanger elements from the housing; ( d) providing first and second tube sub-assemblies, the first and second tube sub-assemblies each comprising an end plate with a selected number of tubes rigidly attached thereto, each of the tubes having a fixed end and a free end, the end plate further comprising a selected number of bores; ( e) fabricating a tube assembly by inserting the free ends of the tubes of the first tube sub-assembly into the bores of the second tube sub-assembly and inserting the free ends of the tubes of the second tube sub-assembly into the bores of the first tube sub-assembly; ([)fusing the free ends of the tubes of the first tube sub- assembly to the bores of the second tube sub-assembly and fusing the free ends of the tubes of the second tube sub- assembly to the bores of the first tube sub-assembly; (g) inserting the tube assembly into the housing; 2 Appeal2017-003668 Application 14/462, 171 (h) fusing the end plates of the first and second tube sub- assemblies to the housing; and (i) fusing an inlet fitting and an outlet fitting to the housing, the inlet fitting and the housing cooperating to form an exhaust inlet chamber, the outlet fitting and the housing cooperating to form an exhaust outlet chamber, the exhaust inlet chamber being in fluid communication with the exhaust outlet chamber via the tubes of the first and second tube sub- assemb lies. ANALYSIS The Examiner found that the term "fusing," as presently recited in steps (f), (h), and (i) of the claimed method, lacks written description support. Final Act. 2. It is undisputed that Appellants' Specification discloses "welding" rather than "fusing," which is also the term that was previously recited in the claims. See Final Act. 2; Appeal Br. 4. Accordingly, the only issue before us is whether Appellants' disclosure of "welding" is sufficient to convey possession of "fusing," from the perspective of one having ordinary skill in the art. We agree with Appellants that such disclosure is sufficient. The fundamental factual inquiry for sufficient written description is whether Appellants' Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention as presently claimed. See Ariad Pharm., Inc., v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562---64 (Fed. Cir. 1991). Here, although we appreciate the Examiner's observation that Appellants' present claims now include a different term---one not expressly included in the Specification (see Final Act. 2), which was amended in a 3 Appeal2017-003668 Application 14/462, 171 stated attempt to broaden the scope of the claims (see Appeal Br. 4; Reply Br. 2}-we agree with Appellants that the Specification's disclosure of "welding" (e.g., fusion welding) provides adequate support for "fusing" sufficient to satisfy the written description requirement of 35 U.S.C. Â§ 112, first paragraph. Further, we agree with Appellants (see Reply Br. 1-2) that the Examiner's position that "fusing" "is a technique used to join pure metals, not alloys," which "requires work hardening to add strength," whereas "welding" is a technique for joining metal alloys (Ans. 3) is unsupported by any evidence in the record. Accordingly, we find that the disclosure of the present application reasonably conveys to those skilled in the art that Appellants had possession of the invention recited-namely, "fusing," as presently recited in steps (t), (h), and (i) of the claimed method. Consequently, we do not sustain the rejection of claims 1-9 and 11-13 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. We note for the record that, in reaching our decision, we do not adopt or endorse Appellants' proffered claim construction of "fusing" to expand the claim scope to "broadly cover all common methods of permanently attaching metal pieces together including fusion welding, soldering[,] and brazing." Reply Br. 2. There is no evidence in the record to support the position that "fusing" is a generic term so extensive as to encompass "all common methods of permanently attaching metal pieces together" (where such attaching or joining could alternatively be done via adhesives, bonding, permanent fasteners, shrink and/or press fitting, etc., without any "fusing" of the metal pieces at all). In particular, although we agree that soldering and brazing are known methods of attaching metal pieces together, these 4 Appeal2017-003668 Application 14/462, 171 methods (as opposed to fusing, welding, or fusion welding) are not commonly understood to involve any melting or "fusing" of the base metal pieces (rather, only the softer joining metal). DECISION We REVERSE the Examiner's decision rejecting claims 1-9 and 11-13 under 35 U.S.C. Â§ 112(a) as failing to comply with the written description requirement. REVERSED 5