John T. Schmitz et al.

Patent Trials and Appeals Board

Sep 23, 2019

14615732 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/615,732 02/06/2015 John T. Schmitz 77270US01 (14-426) 1730
52237 7590 09/23/2019
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
09/23/2019 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 JOHN T. SCHMITZ, NEAL R. HERRING, JOHN H. WHITON,
JOSEPH TURNEY, BRIAN ST. ROCK, and MICHAEL K. IKEDA
____________

Appeal 2018-006890
Application 14/615,732
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4, 5, 7, 8, 10–17, and 21–27.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

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 United Technologies
Corporation. Appeal Br. 2.
2 Claims 2, 3, 6, and 9 are cancelled, and claims 18–20 are withdrawn. See
Claims Amendment (Nov. 20, 2017) (hereinafter “Amendment”). The after-
final amendment dated February 12, 2018 was not entered by the Examiner.
See Advisory Act. (Apr. 9, 2018).
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We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 22 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A ducted heat exchanger system, comprising:
a heat exchanger core with an inlet face opposite an exit
face;
an additively manufactured inlet header upstream of, and
in fluid communication with, said heat exchanger core such that
an airflow that enters said core is generally perpendicular to a
front face over the entirety of said front face, said additively
manufactured inlet header in communication with an inlet duct;
and
an additively manufactured exit header downstream of,
and in fluid communication with, said heat exchanger core, said
additively manufactured exit header in communication with an
exit duct, the additively manufactured inlet header and the
additively manufactured exit header in fluid communication
with the same air stream.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Marco US 3,364,548 Jan. 23, 1968
Briscoe US 4,079,888 Mar. 21, 1978
Griffin US 4,474,001 Oct. 2, 1984
Tsujita US 2003/0111209 A1 June 19, 2003
Smith US 2010/0199955 A1 Aug. 12, 2010
Deivasigamani US 2014/0326197 A1 Nov. 6, 2014

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REJECTIONS
I. Claims 5, 7, 12, 13, and 15 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement.3 Final Act. 2.
II. Claims 1, 11, and 12 stand rejected under 35 U.S.C. § 112(b) as
indefinite.4 Id. at 2–3.
III. Claims 21, 23, and 25 stand rejected under 35 U.S.C. § 112(d) as
being of improper dependent form.5 Id. at 3–4.
IV. Claims 1, 4, 9, 11, 21–23, 25, and 27 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Marco, or, in the alternative, under
35 U.S.C. § 103 as unpatentable over Marco. Id. at 4–5.
V. Claims 1, 4, 9, 11, 21–23, 25, and 27 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Marco and Briscoe. Id. at 5.
VI. Claims 5, 7, 8, 12, 13, 15, and 17 stand rejected under 35 U.S.C. § 103
as unpatentable over Marco and Smith. Id. at 6.
VII. Claims 5, 7, 8, 12, 13, 15, and 17 stand rejected under 35 U.S.C. § 103
as unpatentable over Marco, Briscoe, and Smith. Id.
VIII. Claims 10 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marco, Smith, and Deivasigamani. Id.

3 The Examiner omits dependent claims 8 and 16, but these claims
presumably inherit any deficiencies in claims 7 and 15 from which they
depend, and thus logically should also be included in this rejection.
4 The Examiner omits dependent claims 4, 5, 7, 8, 10, 13–17, and 21, but
these claims presumably inherit any deficiencies in claims 1 and 11 from
which they depend, and thus logically should also be included in this
rejection.
5 The Examiner omits dependent claims 24 and 26, but these claims
presumably inherit any deficiencies in claims 23 and 25 from which they
depend, and thus logically should also be included in this rejection.
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IX. Claims 10 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marco, Smith, Briscoe, and Deivasigamani. Id.
X. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Marco, Smith, and Tsujita. Id.
XI. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Marco, Smith, Briscoe, and Tsujita. Id. at 7.
XII. Claims 24 and 26 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marco and Griffin. Id.
XIII. Claims 24 and 26 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marco, Briscoe, and Griffin. Id.

OPINION
Rejection I–III
Appellant does not present any arguments contesting the Examiner’s
rejections under 35 U.S.C. §§ 112(a), 112(b), and 112(d) (Final Act. 2–4) in
the Appeal Brief. See Appeal Br. 11–17 (presenting argument only as to the
rejections under 35 U.S.C. §§ 102(a)(1) and 103). In the Reply Brief,
Appellant presents arguments contesting the 35 U.S.C. § 112 rejections for
the first time. Reply Br. 1–5. The rules applicable to present appeal
provide:
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
37 C.F.R. §41.41(b)(2).
The arguments contesting the rejections under 35 U.S.C. § 112 raised
for the first time in the Reply Brief were not responsive to an argument
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raised in the Examiner’s Answer. As to Appellant’s explanation for the
failure to present arguments in the Appeal Brief contesting these rejections,
Appellant asserts only that it “mistakenly understood entry of the
amendment after final to have obviated the 35 USC 112 rejections.” Reply
Br. 1.6 This does not constitute a showing of good cause for the Board to
consider these new arguments presented for the first time in the Reply Brief.
Accordingly, we summarily sustain Rejections I–III. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary
affirmance without consideration of the substantive merits is appropriate
where an appellant does not contest a ground of rejection); see also
37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken from
the rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office.”).
Rejection IV
Claims 1, 4, 9, 11, and 21
With respect to claims 1, 4, 9, 11, and 21, Appellant references certain
limitations recited in independent claim 1, but otherwise presents arguments
without regard to any particular claim. See Appeal Br. 11–12. We select
claim 1 as the representative claim, and claims 4, 9, 11, and 21 stand or fall
therewith. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that “Marco disclose[s] a copper heat exchanger
provided with headers that are formed using electroforming, and thus

6 The Examiner denied entry of the after final amendment dated February 2,
2018. See Advisory Act. (April 9, 2018).
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anticipates the . . . claims.” Non-Final Act. 47; see also id. (explaining that
“additive manufacturing is understood to encompass any manufacturing
process which combines or adds material(s) to make objects from three
dimensional models (either physical or mathematical models), often but not
necessarily layer upon layer, including electroforming”). The Examiner also
finds that “Marco clearly shows circular elements (e.g. 13, 14, 15) that are
readable on the claimed ‘ducts.’” Final Act. 5.
Appellant argues that “Marco simply does not disclose a ducted heat
exchanger system in smooth communication with the same airstream as
recited in Appellant’s claims.” Appeal Br. 11. Appellant asserts that “[t]he
entrances and exits of Marco are in each corner. This fundamental
difference alone renders all of the rejections in which Marco is a primary
reference improper and ineffective.” Id. at 12; see also Reply Br. 6
(asserting that “Marco provides visibly circular intakes and exhausts in the
corner thereof, which simply could not be utilized within a duct airstream”).
We are not persuaded by these arguments because they are not
commensurate with the scope of claim 1. As stated by our reviewing court
in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the
game is the claim.” It is well established that limitations not appearing in
the claim cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). The claim does not recite that the heat exchanger
system is “in smooth communication with the same air stream,” and does not
preclude inlets and exits at the corners of the heat exchanger. Moreover,

7 The rejection presented in the Final Action refers back to the Non-Final
Action dated May 2, 2017. See Final Act. 4 (“Please see the comments
made with regard to the above rejection in the previous Office action.”).
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Appellant does not offer any evidence or persuasive technical reasoning to
explain why inlets and exits at the corners of the heat exchanger would
render Marco “improper and ineffective” as a reference.
In the Reply Brief, Appellant presents a new argument that was not
raised in the Appeal Brief. See Reply Br. 5. Appellant argues “that the
Examiner’s interpretation of [Marco’s] ‘electroforming’ as additively
manufacturing is simply improper. One of ordinary skill in the art would
never consider electroforming to be accomplished by additive
manufacturing.” Id. This argument is not responsive to an argument raised
in the Answer, and Appellant has not shown good cause why this argument
could not have been raised earlier and should be considered now.8
Accordingly, this argument is not timely, and we do not consider it. See
37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”)
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that Marco anticipates the subject matter of claim 1.
Having determined that the rejection is sustainable on the basis of
anticipation by Marco, we need not consider in depth the Examiner’s
alternative basis (obviousness) for the rejection. It is well settled that
“anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d

8 The Examiner’s interpretation that Marco’s electroformed headers read on
the claimed “additively manufactured” headers was first presented in the
Non-Final Action. See Non-Final Act. 4; see also Final Act. 4 (the
Examiner referring back to the Non-Final Action).
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1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears Roebuck & Co., 722
F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982). Accordingly, we sustain the rejection of claim 1, and of
claims 2–4, 9, 11, and 21 falling therewith, under 35 U.S.C. § 102(a)(1) as
anticipated by Marco, or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Marco.
Claims 22 and 23
Appellant argues that claim 22 recites “the inlet duct to receive an air
stream, and an exit duct to expel the airstream” and “claim 23 further
elaborates that the air stream is a free stream airflow[,] which necessarily
requires a through flow of air which is neither disclosed nor suggested by the
corner inlet exit arrangement of Marco.” Appeal Br. 15. Appellant asserts
that “Marco simply does not receive a flow which could under any
reasonable interpretation be considered a free stream airflow. In fact, at
least one fluid of Marco is a liquid.” Id. at 15–16. This argument is
unpersuasive.
The Examiner responds in the Answer by taking the position that the
disputed limitation amounts to a recitation of intended use. See Ans. 12
(explaining that Appellant’s remarks for claim 23 are directed to intended
use recitations and do not point out how the claim is structurally distinct
from Marco). In this regard, Appellant does not specifically address or
persuasively refute the Examiner’s position. Moreover, although Appellant
is correct that Marco discloses a heat exchanger embodiment in which one
of the fluids is a liquid,9 Appellant does not offer any evidence or persuasive

9 Marco discloses a second heat exchanger embodiment that exchanges heat
between a flowing gas and a flowing liquid. Marco, col. 5, ll. 22–24.
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technical rationale to explain why this would preclude Marco’s heat
exchanger from being able to receive a free stream airflow.
For the foregoing reasons, Appellant does not apprise us of error with
respect to Rejection IV of claims 22 and 23, which we sustain.
Claim 25
In contesting the rejection of claim 25, Appellant asserts:
A bypass stream airflow is the airflow that flows through a fan
nacelle of a turbofan engine. Again, Appellant specifically
identifies such an airflow to put the additively manufactured
inlet header and exit header in context of the duct to thereby
define around a conventional heat exchanger such as Marco.
Appeal Br. 16. Appellant does not specifically address or identify any flaw
in the Examiner’s position that the disputed limitation amounts to a
recitation of intended use. See Ans. 12 (explaining that Appellant’s remarks
for claim 25 are directed to intended use recitations and do not point out how
the claim is structurally distinct from Marco).
For the foregoing reasons, Appellant does not apprise us of error with
respect to Rejection IV of claim 25, which we sustain.
Claim 27
Although Appellant addresses claim 27 under a separate heading,
Appellant merely characterizes the elements of this claim without setting
forth any particular argument contesting the Examiner’s findings relative to
the presence of these elements in the disclosure of Marco. See Appeal Br.
16–17; Ans. 13 (Examiner finding that “‘brick-shaped’ would presumably
encompass any parallelepiped shaped core, including that of Marco”). As
such, Appellant does not apprise us of error with respect to Rejection IV of
claim 27, which we sustain.
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Rejection V
In contesting Rejection V, Appellant relies on the arguments
presented against Marco that we found unpersuasive in connection with
Rejection IV. See Appeal Br. 14 (“Appellant respectfully traverses these
rejections for at least the reasons discussed above with regard to Marco.”).
Accordingly, for the same reasons discussed above in connection with
Rejection IV, we also sustain Rejection V.
Rejections VI and VII
In contesting Rejections VI and VII of claims 5, 7, 8, 12, 13, 15, and
17, which depend from one of independent claims 1 and 11, Appellant
initially relies on the arguments presented against Marco in connection with
Rejection IV. See id. For the same reasons discussed above, Appellant’s
arguments do not apprise us of error in Rejection IV, and likewise do not
apprise us of error with respect to Rejections VI and VII.
Additionally, with respect to claim 12, Appellant references certain
limitations recited in the claim and asserts “that the specificity claimed by
Appellant is simply not disclosed nor suggested by the proposed
combinations.” Id. at 15. We are not persuaded by this argument because it
is not responsive to the Examiner’s findings and reasoning set forth in the
rejections.
With respect to claim 12, the Examiner finds that “[i]t is well known
in the art that the geometry/shape of manifolds (inlet and/or outlet) affects
the evenness of flow distribution, and that headers can be shaped to improve
this aspect of heat exchange (see Smith).” Non-Final Act. 5; see also Final
Act. 6 (referring to the rejection in the Non-Final Action). The Examiner
determines that it would have been obvious “to do the same in the headers of
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Marco.” Non-Final Act. 5. The Examiner also finds, “[r]egarding claim 12,
such tapered manifolds inherently occupy less volume than parallelepiped
shaped manifold tanks.” Id. In this regard, other than the bald assertion that
the features of claim 12 are “simply not disclosed nor suggested by the
proposed combinations” (Appeal Br. 15), Appellant does not specifically
address the Examiner’s findings and reasoning articulated in the rejections,
nor offer any evidence or persuasive technical reasoning that identifies an
error in the Examiner’s position.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claims 5, 7, 8, 12, 13,
15, and 17 in Rejections VI and VII. Accordingly, we sustain Rejections VI
and VII.
Rejections VIII–XI
In contesting Rejections VIII–XI, Appellant relies on the arguments
presented against Marco that we found unpersuasive in connection with
Rejection IV. Id. at 14. Accordingly, for the same reasons discussed above
in connection with Rejection IV, we also sustain Rejections VIII–XI.
Rejections XII and XIII
The Examiner finds that Griffin teaches that it is known to locate heat
exchangers within a fan or core nacelle. Final Act. 7. The Examiner
determines:
As Marco indicate[s] that their heat exchanger is suitable for
exchanging heat between “fluids”, which the fluids in Griffin
. . . certainly are, and since Griffin . . . places no limitation on
the configuration or structural design of heat exchangers 46, 48
located in fan or core nacelles (they are merely schematically
represented as boxes), it would have been obvious to one of
ordinary skill in the art to use any known heat exchanger
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design, including that disclosed in Marco, as the heat exchanger
(46 or 48) in the turbine engine of Griffin.
Id.
Appellant initially relies on the arguments presented against Marco in
connection with Rejection IV. Appeal Br. 14. For the same reasons
discussed above, Appellant’s arguments do not apprise us of error in the
rejection of claim 22, and likewise do not apprise us of error with respect to
the rejections of claims 24 and 26. Appellant also argues that “Marco is
simply not applicable to such an installation” and that location of the inlet
duct and exit duct within a core nacelle “is neither disclosed nor suggested
by the cited references.” Appeal Br. 16. These arguments are unconvincing
because they do not specifically address, much less contest, the Examiner’s
findings as to the disclosures of Marco and Griffin, nor persuasively refute
the Examiner’s reasoning articulated in support of the conclusions of
obviousness. Final Act. 7. Moreover, Appellant does not offer any evidence
to support the position that Marco’s heat exchanger would be “inapplicable”
to Griffin’s gas turbine engine fan nacelle. This unsupported assertion is
mere attorney argument, which cannot take the place of evidence in the
record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
For the foregoing reasons, Appellant does not apprise us of error in
Rejections XII and XIII of claims 24 and 26, which we sustain.

DECISION
The Examiner’s decision to reject claims 1, 4, 5, 7, 8, 10–17, and 21–
27 is AFFIRMED.

In summary:
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Claims Rejected Basis Affirmed Reversed
5, 7, 12, 13, and
15
§ 112(a) 5, 7, 12, 13, and
15

1, 11, and 12 § 112(b) 1, 11, and 12
21, 23, and 25 § 112(d) 21, 23, and 25
1, 4, 9, 11, 21–23,
25, and 27
§ 102(a)(1) or
§103 Marco
1, 4, 9, 11, 21–23,
25, and 27

1, 4, 9, 11, 21–23,
25, and 27
§ 103 Marco and
Briscoe
1, 4, 9, 11, 21–23,
25, and 27

5, 7, 8, 12, 13, 15,
and 17
§ 103 Marco and
Smith
5, 7, 8, 12, 13, 15,
and 17

5, 7, 8, 12, 13, 15,
and 17
§ 103 Marco,
Briscoe, and Smith
5, 7, 8, 12, 13, 15,
and 17

10 and 14 § 103 Marco,
Smith, and
Deivasigamani
10 and 14
10 and 14 § 103 Marco,
Smith, Briscoe,
and Deivasigamani
10 and 14
16 § 103 Marco,
Smith, and Tsujita
16
16 § 103 Marco,
Smith, Briscoe,
and Tsujita
16
24 and 26 § 103 Marco and
Griffin
24 and 26
24 and 26 § 103 Marco,
Briscoe, and
Griffin
24 and 26
Overall Outcome

1, 4, 5, 7, 8, 10–
17, and 21–27

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)(1)(iv).
AFFIRMED