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Patent Trials and Appeals Board

Nov 29, 2019

13934362 - (D) (P.T.A.B. Nov. 29, 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.
13/934,362 07/03/2013 Debabrata Pal 1510801.199US1[73049US1] 6316
61654 7590 11/29/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBABRATA PAL
Appeal 2019-003016
Application 13/934,362
Technology Center 3700
BEFORE WILLIAM A. CAPP, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
GUIJT, 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 to reject claims 1–4, 8, 9, 11, 12, 14, 16, 17, 22, and 23.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM–IN–PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Hamilton
Sundstrand Corporation. Br. 2.
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Application 13/934,362

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CLAIMED SUBJECT MATTER
The claims are directed to heat exchangers. Spec. 1:4. Claim 1, the
sole independent on appeal and reproduced below, is illustrative of the
claimed subject matter:
1. A heat exchanger comprising:
a pair of opposed, spaced apart heat exchanger plates
defining a heat exchanger volume therebetween having an inlet
and opposed outlet; and
a plurality of heat exchanger ribs within the heat
exchanger volume, each rib defining a rib body spanning the heat
exchanger volume, each rib body including a plurality of slits
therethrough to define a flow path through the heat exchanger
ribs from the inlet to the outlet of the heat exchanger volume,
wherein the slits in each rib define a rectangular array of slits and
wherein the rectangular array includes twelve substantially
rectangular slits longitudinally aligned in a four by three array
four slits wide along a direction defined by long sides of the
substantially rectangular slits.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Minakami US 5,381,859 Jan. 17, 1995
Otey US 2006/0237166 A1 Oct. 26, 2006
Nicolai US 7,614,247 B2 Nov. 10, 2009

REJECTIONS
I. Claims 1–4, 8, 9, 22, and 23 stand rejected under 35 U.S.C. § 103
as unpatentable over Minakami and Otey.
II. Claims 11, 12, 14, 16, and 17 stand rejected under 35 U.S.C. § 103
as unpatentable over Nicolai, Otey, and Minakami.

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OPINION
Rejection I
Independent claim 1 and dependent claims 4, 8, 9, 22, and 23
Regarding independent claim 1, the Examiner finds that Otey
discloses spaced apart plates defining a volume, as well as ribs (i.e., fin
members 40) within the volume, each rib having an array of perforations of
varying shapes, including a rectangular shape. Final Act. 2 (citing Otey,
Figs. 1, 3). The Examiner finds that Minakami discloses an array of spaced
apart heat exchanger plate-like members with openings through which fluid
flows, and also that “the number of rows of slits may be changed, and their
orientation rotated 90 degrees if desired, to form a ‘three dimensional matrix
of pin fins’ and corresponding rectangular slits.’” Id. at 2–3 (Minakami,
Figs. 2C, 17).
The Examiner reasons that “if additional rows of slits were added to
[Figure 17 of Minakami] . . . , and the slits were rotated 90 degrees,” as
suggested by Minakami, “the slit array would ‘include twelve substantially
rectangular silts longitudinally aligned in a [four] by three array, four slits
wide along a direction defined by the long sides of the substantially
rectangular slits,’” as claimed. Id. at 2–3 (Minakami, Figs. 2C, 17). The
Examiner also reasons that Appellant admits “the non-criticality of the
claimed 4 by 3 array of slits.” Ans. 7; see, e.g., Spec. 8 (disclosing that
although Figure 2 depicts a rectangular array including twelve rectangular
slits 110 longitudinally aligned in a four by three array, four slits wide along
the direction defined by the long sides of the slits 110, “[i]t is also
contemplated that any other suitable array can be used, for example the heat
exchanger 200 shown in Fig. 5 has slits in a three by three array.”).
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Appellant argues that “the Examiner has not provided reasoning for a
prima facie case of obviousness,” because the Examiner fails to explain why
a person of ordinary skill in the art would modify: (i) Minakami’s fin
element 12, 12d “to have three rows of slits 16”; (ii) Minakami’s fin
element 12, 12d such that slits 16 are rotated 90 degrees with respect to the
orientation shown in Figs. 2c or 17”; (iii) to “duplicate the fin element”
(citing Minakami 9:67–10:8); and (iv) Otey’s heat exchanger “to include the
modified fin elements 12 or 12d of Minakami, duplicated as proposed by the
[Examiner].” Br. 6–8.
We are not persuaded by Appellant’s argument. As relied on by the
Examiner supra, Minakami expressly discloses that “each fin element 12d
ha[s] two or more rows of slits 16,” such that Minakami discloses (and no
modification is required to result in) a heat sink element with three rows of
slits. See, e.g., Minakami 9:66–67 (with reference to Figure 17, “heat sink
element 12d having two or more than two rows of slits 16 may be
alternatively formed”). Further, Figure 1A of Minakami teaches that there
may be any number of columns of rectangular slits, for example, disclosing
that “each [heat sink fin element] being realized by forming a number of slits
through a thermally conductive plate.” Minakami 2:21–23, Fig. 1A. We
agree with the Examiner that the Specification itself discloses that the
specific row by column array of slits is not critical, as evidenced supra.
In addition, as also relied on by the Examiner supra, Minakami
teaches a heat sink fin element having horizontally oriented rectangular slits,
as claimed, in addition to the vertically oriented, rectangular slits depicted in
Figures 1A and 17 of Minakami, by disclosing that “heat sink fin element 12
ha[s] a row of slits rotated by 90º relative to those of the adjacent heat sink
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fin elements.” Minakami 9:68–10:2. Although Appellant correctly points
out supra that with respect to Minakami’s horizontally oriented rectangular
slits (i.e., vertically oriented rectangular slits rotated 90º), Minakami teaches
positioning such a heat sink fin element having horizontally oriented,
rectangular slits between heat sink fin elements having vertically oriented,
rectangular slits (i.e., unaligned, staggered), such that a modification of
Minakami’s embodiment is necessary to repeat (or duplicate) only heat sink
fin elements having horizontally oriented, rectangular slits within a single
array, such that the slits are aligned and unstaggered, we determine that such
a modification entails only ordinary skill in the art because arrays of
identical heat sink fin elements with aligned (i.e., un-staggered) perforations
are generally known in the art of heat exchanger designs. See, e.g., Otey ¶ 9
(disclosing that it is well known in the field of heat exchangers to align
perforation of adjacent plates: “[t]he stack of plates includes at least one
group of plates having one or more perforated plates sandwiched between a
pair of primary separator plates,” wherein “[e]ach perforated plate has
perforations arranged in rows across the plate in a first direction”); cf. id. ¶
10 (disclosing that it is also well known in the field of heat exchangers to
stagger perforations of adjacent plates). KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton”). This reasoning is further supported
by the prior art’s recognition that it is known that “[an] alternating
configuration of the fin members causes the fluid to turbulently flow through
the heat exchanger,” if such turbulence is desirable; in other words, based on
application, a non-alternating configuration may be preferred. Otey ¶ 15.
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a
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given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine”).
Finally, we determine that the Examiner’s implied modification of
Otey’s heat exchanger 10 to include elements (or fin members) having the
claimed configuration, as expressly disclosed or suggested by Minakami, is
supported by the rational underpinning discussed supra. In other words,
where “a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Appellant also argues that the prior art relied on by the Examiner fails
to expressly disclose an array of twelve, longitudinally aligned, rectangular
slits in a four by three array that is four slits wide along a direction defined
by long sides of the rectangular slits. Br. 6–7. However, as discussed
supra, this configuration is a predictable combination of known design
elements as evidenced by the prior art.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present arguments for the patentability of
claims 4, 8, 9, 22, and 23 apart from the arguments presented for claim 1
supra. Therefore, for essentially the same reasons as stated supra, we also
sustain the Examiner’s rejection of claims 4, 8, 9, 22, and 23. Br. 6–10.
Dependent claims 2 and 3
Claim 2, which depends from independent claim 1, recites, in relevant
part, “wherein each rib includes a plurality of additive manufacturing layers
aligned with a flow direction defined through the slits thereof,” and claim 3,
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which also depends from claim 1, recites, in relevant part, “wherein each rib
includes a plurality of ultrasonic additive manufacturing layers aligned with
a flow direction defined through the slits thereof.” Br. 12 (Claims App.).
The Examiner finds that
the “additive manufacturing” language . . . fails to distinguish
patentably over the prior art, [s]ince there would appear to be no
structural distinction between a heat exchanger in which the ribs
formed with slits were fabricated by known additive methods
such as electroformation, lithography, etc. vs. any other known
manufacture technique involving subtractive methods (etching
or punching as discussed in Minakami . . . , for example).

Final Act. 4. The Examiner determines that Appellant has failed to
present sufficient evidence that additive manufacturing results in
structural layers within the ribs. Ans. 7 (finding that the recitation of
“additive manufacturing” is “product by process language”).
Appellant argues correctly that claims 2 and 3 require structure,
namely, layers, to be included in each rib, and that the Examiner has neither
identified such structure in the prior art nor provided any reasoning for
concluding that it would have been obvious to have ribs including layers, as
claimed. Br. 8. The PTO bears the initial burden of showing a prima facie
case of obviousness. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014);
see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). In other words, we agree with Appellant that
claims 2 and 3 require each rib to include the structure of layers, which are
aligned as claimed, regardless of by which method the layers are formed.

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Accordingly, we cannot sustain the Examiner’s rejection of claims 2
and 3.
Rejection II
Dependent claims 11, 12, 14, and 17
Appellant chose not to present arguments for the patentability of
claims 11, 12, 14, and 17 apart from the arguments presented for claim 1
supra.Br. 6–10
Accordingly, we sustain the Examiner’s rejection of claims 11, 12, 14,
and 17.
Dependent claim 16
Claim 16, which depends from claim 11 and also incorporates the
limitations of independent claim 1, recites, in relevant part, “wherein each
rib includes a plurality of ultrasonic additive manufacturing layers aligned
with a flow direction defined through the slits thereof.” Br. 15 (Claims
App.). For the same reasons stated supra with respect to claims 2 and 3, we
cannot sustain the Examiner’s rejection of claim 16.

CONCLUSION

The Examiner’s rejections of claims 1–4, 8, 9, 11, 12, 14, 16, 17, 22,
and 23 under 35 U.S.C. § 103 are AFFIRMED.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8, 9,
22, 23
103 Minakami, Otey 1, 4, 8, 9,
22, 23
2, 3
11, 12, 14,
16, 17
103 Nicolai, Otey,
Minakami
11, 12, 14,
17
16
Overall
Outcome
1, 4, 8, 9,
11, 12, 14,
17, 22, 23
2, 3, 16

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART