Ex Parte Thybo et al

Patent Trial and Appeal Board

Aug 29, 2013

10531056 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CLAUS THYBO and CHRISTIAN BENDTSEN
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Appeal 2011-005802
Application 10/531,056
Technology Center 3700
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Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and
SCOTT A. DANIELS, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005802
Application 10/531,056
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 9-15. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 9, reproduced below, is illustrative of the claimed subject
matter.
9. A heat exchanger abnormality detection device for a
heat exchanger exchanging heat between a first fluid in a
conduit and a second fluid in a flow path the device comprising:
a first estimator estimating at least one parameter
representative of the temperature conditions of the heat
exchanger;
a first intermediate memory means storing the at least
one parameter representative of the temperature conditions of
the heat exchanger;
a temperature sensor measuring the second fluid inlet
temperature;
a second intermediate memory means storing the second
fluid inlet temperature;
a second estimator establishing a parameter indicative of
expected heat exchange between the heat exchanger and the
second fluid;
a third intermediate memory means storing the parameter
indicative of expected heat exchange;
a processor establishing an estimated second fluid outlet
temperature; and
a comparator comparing the estimated second fluid outlet
temperature, or a parameter established on basis thereof, with a
reference value;
wherein the estimated second fluid outlet temperature is
based on said at least one parameter representative of the
temperature conditions of the heat exchanger, said second fluid
inlet temperature, from the first and second intermediate
memory means, respectively, and the parameter indicative of
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expected heat exchange from the third intermediate memory
means.

References
The Examiner relies upon the following prior art references:
Vogel ‘528
Vogel ‘781
Dube
McIntosh
US 4,136,528
US 4,193,781
US 6,089,033
CA 2 344 908 A1
Jan. 30, 1979
Mar. 18, 1980
Jul. 18, 2000
Jan. 20, 2002

Rejections
I. Claims 9-15 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
II. Claims 9-12 and 15 are rejected under § 102(b) as anticipated by, or in
the alternative, under § 103(a) as unpatentable over, McIntosh.
III. Claims 13 and 14 are rejected under § 103(a) as unpatentable over
McIntosh and one of Vogel ‘528, Vogel ‘781, or Dube.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection I – Indefiniteness
The Examiner found that sole independent claim 9 invokes several
means-plus-function limitations that fail to have proper support as required
by 35 U.S.C. § 112, sixth paragraph. Ans. 4-9, 12-19. First, the Examiner
points to three “memory means” limitations which include the word
“means” and have no structure to rebut the presumption that means-plus
function is used. Ans. 13. Next, the Examiner points to a first and second
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Application 10/531,056
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“estimator,” a “processor,” and a “comparator,” and identifies these
limitations as nonce words indicating means plus function. Ans. 14. For all
of these limitations, the Examiner finds the Specification to lack
corresponding structure. Ans. 4-6, 16-19.
Appellants first argue that “Appellants deliberately have not used
means-plus-function claim recitations.” Br. 9. Appellants do not expound
on this assertion. The Examiner is correct that the “memory means”
limitations are rebuttably presumed to invoke § 112, sixth paragraph.
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
703 (Fed. Cir. 1998). No structure is subsequently recited to rebut this
presumption. Further, regarding the other limitations the Examiner found to
invoke § 112, sixth paragraph, while these limitations do not include the
word “means,” we agree with the Examiner that they are “nonce” words,
“essentially… devoid of anything that can be construed as structure.” Ans.
14 (“‘nonce’ words … that are not recognized as the name of structure”);
Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir.
2012). Accordingly, Appellants’ bald assertion is unpersuasive in view of
the Examiner’s findings and analysis.
Appellants next argue that the claim limitations are described in the
Specification, as set forth in the “Summary of Claimed Subject Matter”
section of the Brief. Br. 10 (referring to Br. 6-7). The Examiner adequately
rebuts Appellants’ arguments regarding these limitations on pages 15-19.
We make a few additional comments to explain further why Appellants’
arguments are not persuasive.
Regarding the “memory means” limitations, the citations provided to
page 5 merely recite the claim language, not any particular structure. The
citation to page 10 appears to be in error, as no memory is discussed here.
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Means-plus-function claims require a clear link between the means and the
structure corresponding to the claimed function. See, e.g., Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir.
2002) (“In order to qualify as corresponding, the structure must not only
perform the claimed function, but the specification must clearly associate the
structure with performance of the function.”). We find no such clear link
here.
With respect to the other limitations the Examiner found to invoke
§ 112, sixth paragraph, we likewise do not find clearly linked supporting
structure. Appellants point to the equations and the mathematical discourse
beginning at page 9 of the Specification. Br. 6-7. However, Appellants only
point to the first of several equations that make it “possible to estimate an air
outlet temperature.” Spec. 11, para. [0043]. Appellants do not explain why
some of these equations are the “first estimator” and others are not.
Accordingly, we find no clear link between the equations in the
Specification and the claimed “first estimator.”
With respect to the “second estimator,” Appellants point to portions of
pages 3, 5, and 9 of the Specification, but we find no clear link here to the
“second estimator.” Pages 3 and 5 are merely regurgitations of claim
language, and the cited portion of page 9 does not discuss a parameter
indicative of expected heat exchange, let alone a clearly linked structure or
algorithm for doing so. The claimed “processor” is discussed at page 14,
lines 3-7, as cited (Br. 7), but all that is said is that using “values from a
chart or table … simplifies calculation with the aid of a processor.” Spec, p.
14, para. [0050]. There is no cogent discussion of estimating an outlet
temperature. We have reviewed the remaining limitations and find no
clearly linked structure, and Appellants have set forth no cogent arguments
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to the contrary. Accordingly, the recited limitations fail to meet the
requirements of 35 U.S.C. § 112, sixth paragraph.
Appellants lastly argue that one of ordinary skill would read the
recited limitations and infer a computer processor and associated computer
memory. Br. 10-11. No such computer is discussed in the Specification,
and the § 112, sixth paragraph requirements are based on disclosure, not
inference.
In view of the above, we sustain the Examiner’s indefiniteness
rejection of claims 9-15. Because the claims are indefinite, we cannot
address the prior art rejections at this time. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).

DECISION
We AFFIRM the Examiner’s decision regarding claims 9-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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