Hanon Systems

Patent Trials and Appeals Board

Jun 28, 2021

2020006038 (P.T.A.B. Jun. 28, 2021)

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.
15/190,527 06/23/2016 Leo Somhorst H-IP16030037US1
(205358)
5272
58637 7590 06/28/2021
Shumaker, Loop & Kendrick, LLP
1000 Jackson Street
Toledo, OH 43604-5573
EXAMINER
ARANT, HARRY E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/28/2021 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):
cgolupski@shumaker.com
dmiller@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEO SOMHORST, SEOK JONG YOO, STEPHEN JOYCE, and
KAMIL STACH
Appeal 2020-006038
Application 15/190,527
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision, set forth in the Non-Final Office Action issued
September 19, 2019 (hereinafter “Non-Final Action” or “Non-Final Act.”),
to reject claims 1–5, 7–10, 12, 14, 15, and 21–23.2 We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hanon Systems.
Appeal Br. 3.
2 Claims 16–20 have been withdrawn from consideration. Non-Final Act. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a heat exchanger for a motor
vehicle, and more particularly, to a core and seal for a heat exchanger.”
Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A heat exchanger for a motor vehicle comprising:
a core having a plurality of plates adjacently stacked,
each of the plates having a flange formed at a first end thereof
and a recess formed in the flange, wherein the recesses of the
plates cooperate with each other to form a continuous first
groove along a first side of the core, wherein the flange includes
a pair of tabs integrally formed with the flange, and wherein the
pair of tabs converge towards each other and continuously
extend from an outer wall of the flange inwardly into the recess;
and
a seal having a rail, wherein the first groove is configured
to receive the rail of the seal therein.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Brost US 2005/0082049 A1 Apr. 21, 2005
Mathur US 7,004,237 B2 Feb. 28, 2006
Gluck US 2015/0068717 A1 Mar. 12, 2015
Eilemann US 9,175,596 B2 Nov. 3, 2015
REJECTIONS
Claims 1, 2, and 21–23 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Gluck.
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Gluck and Eilemann.
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Claims 4, 5, and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gluck and Mathur.
Claims 8–10, 14, and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Mathur and Gluck.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Mathur, Gluck, and Brost.
OPINION
Anticipation—Gluck (Claims 1, 2, and 21–23)
In rejecting independent claim 1 on Gluck’s heat exchanger, the
Examiner reads the claimed “pair of tabs” on the inwardly extending
portions of elastic sealing lip 4 that engage strip 20 of housing 2.
See Non-Final Action 3 (providing an annotated version of Gluck’s
Figure 10 identifying the structure on which the Examiner reads the claimed
“tabs,” “recess,” and “flange”).
Appellant argues that Gluck’s “elastic sealing lip 4 is separate from
the flange and is not integrally formed with the flange as recited in [c]laim
1.” Appeal Br. 13. Appellant points out that, in the invention disclosed in
the present application, “the pair of tabs 38 is substantially planar and
continuously formed with the outer wall 32 of the flange 30.” Id. at 14
(citing Spec. ¶ 34; Figs. 7–10). Appellant additionally submits that the
further recitation in claim 1 that the “pair of tabs converge towards each
other and continuously extend from an outer wall of the flange inwardly
into the recess” reinforces “the integral, continuous, cohesive [nature] of the
flanges with respect to the pair of tabs.” Id. at 13–14. Appellant contends
that the tabs of Gluck’s elastic sealing lip 4 “do not ‘continuously extend
from an outer wall of the flange” because “[t]here is clearly a non-
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continuous interruption between the equated flange of Gluck and the elastic
seal 4 of Gluck as the flange and feature 4 are separate and distinct non-
integrally formed features.” Id. at 14.
The Examiner insists that because Appellant’s Specification does not
provide “a clear and intentional use of a special definition for the”
terminology “integrally formed,” this terminology may be construed in
accordance with the dictionary definition of “‘integral’ as ‘composed of
parts that together constitute a whole.’” Ans. 15. According to the
Examiner, “since the flange and elastic lip 4 of Gluck are directly attached
and thus constitute a whole they are considered integrally formed.” Id.
Appellant disputes the Examiner’s characterization of Appellant’s
argument as asserting a special definition of “integrally formed.” Reply
Br. 2–3 (urging that legal precedent demonstrates that “formed or cast as one
piece,” “formed as a unit,” and “formed with material common to the rest of
the unit” are ordinary and customary definitions of “integrally formed”).
Appellant submits that, additionally, Appellant’s asserted definitions of
“integrally formed” “are consistent with what a person of ordinary skill in
the art would refer to as the ordinary and customary definition in view of the
[S]pecification and drawings” of the present application. Id. at 3.
The Federal Circuit has described the correct inquiry for determining
the broadest reasonable construction as follows:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
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specification, i.e., an interpretation that is “consistent with the
specification.”
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citation
omitted) (holding that the Board’s construction of the claim term “body” as
including components consistently identified and described in the
appellant’s patent application specification separately from the “body” was
“unreasonable” because it gave “the term ‘body’ . . . a strained breadth in the
face of the otherwise different description in the specification”).
Appellant’s Specification describes “a pair of converging tabs 38
extending into the recess 34 from the opposing terminal portions of the outer
wall 32 of the flange 30,” wherein “[t]he tabs 38 are substantially planar and
are continuously formed with the outer wall 32 of the flange 30.” Spec.
¶ 34. Further, Figures 7–10 depict tabs 38 formed as one monolithic piece
with outer wall 32 of flange 30. Consistent with this description and
depiction of tabs 38 and outer wall 32 of flange 30, a person having ordinary
skill in the art would interpret the claim terminology “the flange includes a
pair of tabs integrally formed with the flange, and wherein the pair of
tabs . . . continuously extend from an outer wall of the flange” to mean that
the tabs and the flange are formed together as one monolithic piece.
Gluck’s elastic sealing lip 4 is positioned in a space between
projections of plates 11 to seal the space between strip 20 of housing 2 and
plates 11. See Gluck ¶¶ 41–42; Fig. 10. Gluck does not specify that elastic
sealing lip 4 is actually attached to plates 11. Elastic sealing lip 4 is a
distinct element that is not part of the flange of the plate or formed together
as one monolithic piece with the flange. Thus, the tabs of sealing lip 4 are
not “integrally formed with the flange, and . . . continuously extend[ing]
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from an outer wall of the flange” as recited in claim 1, as this terminology is
properly construed in light of the underlying disclosure in the present
application.
The Examiner’s finding that Gluck anticipates the subject matter of
claim 1 is predicated on an improper construction of “the flange includes a
pair of tabs integrally formed with the flange, and wherein the pair of
tabs . . . continuously extend from an outer wall of the flange” in claim 1.
Accordingly, we do not sustain the rejection of claim 1, or of claims 2 and
21–23, which depend from claim 1, as anticipated by Gluck.
Obviousness—Gluck in view of Eilemann or Mathur (Claims 3–5 and 7)
The Examiner’s additional findings and reasoning in rejecting claims
3–5 and 7, which depend from claim 1, under 35 U.S.C. § 103, do not make
up for the aforementioned deficiency in the anticipation rejection of claim 1.
See Non-Final Act. 5–9. Thus, we do not sustain the rejection of claim 3 as
unpatentable over Gluck in view of Eilemann or the rejection of claims 4, 5,
and 7 as unpatentable over Gluck in view of Mathur.
Obviousness—Mathur and Gluck (Claims 8–10, 14, and 15)
The Examiner finds that Mathur discloses a core for a heat exchanger
comprising a plurality of stacked plates each formed of a pair of opposing
panels having planar interior and exterior lands as recited in claim 8, but that
Mathur lacks recesses formed in the flanges of the panels that cooperate to
form a continuous first groove and a pair of tabs extending from an outer
wall of the flanges inwardly into the recesses and converging toward one
another, as also recited in claim 8. Non-Final Act. 9–10. The Examiner
finds that Gluck discloses a heat exchanger having recesses formed in panels
that cooperate to form a continuous groove along a first side of the core, and
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wherein a pair of tabs converge toward each other and extend from an outer
wall of a flange inwardly toward the recess. Non-Final Act. 10.
The Examiner’s rejection states that it would have been obvious “for
Mathur to provide the rectangular plate and seal configuration of Mathur
[sic] in order to allow for a stronger seal between the housing and core and
thus improving the reliability of the system.” Non-Final Act. 10; see also
Ans. 11 (repeating this obviousness determination in re-stating the
rejection).
Appellant argues, persuasively, that the rejection fails to state how, if
at all, Gluck is combined with Mathur to arrive at the claimed invention, and
that it is unclear how a flange, recess, tabs, and groove as recited in claim 8
could be combined with Mathur to arrive at the claimed invention. Appeal
Br. 15. Appellant also asserts that the Examiner’s articulated reason for the
combination consists of “conclusory statements” and “lacks any rational
underpinning.” Id.
In response to Appellant’s arguments, the Examiner presents altered
reasoning in an attempt to support the conclusion of obviousness.
Ans. 16–17. In particular, the Examiner states:
Mathur teaches heat exchange plates 38 having flanges (shown
in fig 9), each pair of which are referred to as cassettes, which
have a specific joining configuration relied upon in the Office
Action. Similarly, Gluck teaches pairs of plates which are
joined together at their flanges, it would be obvious to a person
of ordinary skill that the flange configuration of Mathur could
be implemented into Gluck to provide a strong connection
between adjacent plates. It would be equally obvious that the
recess, tabs, and groove of Gluck could be implemented into
the flange of Mathur in order to ensure that fluid does not flow
around the heat exchange plates but rather through them.
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Id.
Appellant contends, and we agree, that the Examiner’s new rationale
lacks sufficient explanation as to how the features of Mathur and Gluck
would be combined to arrive at the claimed invention. Reply Br. 5. In
particular, given the differences in the plate configurations of Mathur and
Gluck, it is not apparent how the elastic seal lip of Gluck, which is designed
to be positioned in the space between plate projections of Gluck’s plates, as
shown in Figure 10 of Gluck, would be incorporated into the plate
configuration of Mathur. Similarly, it is not apparent how Mathur’s flange
arrangement, formed from abutting interior and exterior lands of adjacent
plates, would be implemented in the projection portion of Gluck’s plates to
cooperate with elastic sealing lip 4 of Gluck to arrive at the invention recited
in claim 8.
For the above reasons, the Examiner fails to provide sufficient
reasoning with rational underpinnings to support the conclusion that the
combined teachings of Mathur and Gluck render obvious the subject matter
of claim 8. Accordingly, we do not sustain the rejection of claim 8, or of
claims 9, 10, 14, and 15, which depend from claim 8, as unpatentable over
Mathur and Gluck.
Obviousness—Mathur, Gluck, and Brost (Claim 12)
The Examiner’s additional findings and reasoning in rejecting claim
12, which depends from claim 8, do not cure the deficiency in the rejection
of claim 8. See Non-Final Act. 14–15. Accordingly, we do not sustain the
rejection of claim 12 as unpatentable over Mathur, Gluck, and Brost.
CONCLUSION
The Examiner’s rejections are REVERSED.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 21–23 102(a)(1) Gluck 1, 2, 21–23
3 103 Gluck, Eilemann 3
4, 5, 7 103 Gluck, Mathur 4, 5, 7
8–10, 14, 15 103 Mathur, Gluck 8–10, 14,
15
12 103 Mathur, Gluck,
Brost
12
Overall
Outcome
1–5, 7–10,
12, 14, 15,
21–23

REVERSED