Ruoshuang Huang et al.

Patent Trials and Appeals Board

Aug 20, 2020

2019001364 (P.T.A.B. Aug. 20, 2020)

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.
14/394,060 10/10/2014 Ruoshuang Huang 61413US02 (U300113US2) 1067
87059 7590 08/20/2020
Cantor Colburn LLP - Carrier
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
WEILAND, HANS R.
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUOSHUANG HUANG and MARY TERESA LOMBARDO

Appeal 2019-001364
Application 14/394,060
Technology Center 3700
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Carrier
Corporation. Appeal Br. 4.
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BACKGROUND
The Specification discloses that “[t]he subject matter disclosed herein
generally relates to heat exchangers and, more particularly, to heat
exchangers having alloy tubes and aluminum collar-style fins tubes.”
Spec. ¶ 1.

ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A heat exchanger, comprising:
a tube comprising a first aluminum alloy;
a plurality of fins in thermally conductive contact with
the exterior of said tube, said fins formed from a second
aluminum alloy comprising a base alloy selected from the
group consisting of AA1100, AA8006, and AA8011 and zinc or
magnesium, said second aluminum alloy having an
electrochemical solution potential at least 10 mV more negative
than the electrochemical solution potential of said first
aluminum alloy.

Appeal Br. 18.
REJECTIONS2
1. The Examiner rejects claims 1, 4–10, 12, 13, 15, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Minami3 in view of
Grunenwald4 and ASM.5

2 The Examiner has withdrawn the rejections under 35 U.S.C. § 112. See
Ans. 6.
3 Minami et al., US 2008/0041571 A1, pub. Feb. 21, 2008.
4 Grunenwald et al., US 2008/0190403 A1, pub. Aug. 14, 2008.
5 ASM International, (8xxx series) aluminum plus other elements and clad
aluminum 8006, 8011, Registration Record Series (7/31/2017)
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2. The Examiner rejects claims 2, 3, 14, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Minami in view of Grunenwald, ASM, and
Kanada.6
3. The Examiner rejects claims 11 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Minami in view of Grunenwald, ASM, and Mitchell.7
DISCUSSION
Claim 1, 4–10, 12, and 13
With respect to claim 1, the Examiner finds that Minami discloses a
heat exchanger including a tube made of a first aluminum alloy; a plurality
of fins made of a second aluminum alloy comprising a base allow and zinc;
and wherein the second alloy has a potential at least 10 mV more negative
than the first alloy, as required by the claim. Final Act. 4 (citing Minami
¶¶ 17, 62, 81, 82). The Examiner acknowledges that Minami does not
disclose that the second aluminum alloy includes a base alloy that is selected
from the group consisting of AA1100, AA8006, and AA8011. Id. The
Examiner relies on Grunenwald as teaching that AA8006 or AA80111 may
be used for fins in a heat exchanger. Id. (citing Grunenwald ¶ 20). The
Examiner also finds that the composition data sheets for both AA8006 and
AA8011 indicate that these alloys may contain zinc or magnesium. Id.
(citing ASM). The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time of invention to have modified the heat exchanger
of Minami to have included fin material of AA8006 or AA8011

mio.asminternational.org/ac/datasheet.aspx?record=156380&print=true&db
Key=grantami_ac_alloylinder
6 Kanada et al., US 4,410,036, iss. Oct. 18, 1983.
7 Mitchell et al., US 2005/0155750 A1, pub. July 21, 2005.
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which may contain zinc or magnesium, doing so would provide
a known construction material for fins where the fins are meant
to corrode before a core tube or core material as taught by
Grunenwald (per Paragraphs 0015 and 0020).
Id. at 5.
Appellant first argues that “Minami fails to disclose heat exchanger
fins formed from zinc-containing alloys.” Appeal Br. 10 (emphasis
omitted). In support, Appellant asserts that Minami discloses only adding
zinc after the fins are formed, either before or during brazing. Id. We
disagree. As the Examiner notes, Minami explicitly discloses the use of a
zinc containing alloy: “in order to attain a prescribed Zn concentration
difference and therefore to create a predetermined pitting potential
difference, it is preferable that a fin is manufactured using Zn contained
aluminum alloy and then Zn concentration of the fin is adjusted by the
aforementioned method at the time of brazing.” Minami ¶ 81; see also
Answer 6.
Next, Appellant argues that the references do not teach or suggest the
use of AA1100, AA8006, or AA8011 plus zinc or magnesium to form the
fins. Appeal Br. 10. Appellant asserts that Grunenwald does not disclose
adding zinc to any non-zinc containing alloys and Grunenwald merely
discloses “that known zinc-containing or non-zinc-containing aluminum
alloys can be selected.” Id. at 11. Appellant further asserts that Grunenwald
acknowledges that the aluminum alloys used can be zinc-free, “there would
be no motivation for the skilled person to add zinc to an alloy that
[Grunenwald] has disclosed for use as a zinc-free alloy because
[Grunenwald] already discloses other alloys that include zinc.” Id. Also,
Appellant asserts that the ASM composition sheets teach away from adding
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zinc to an aluminum alloy because they specify that only trace amounts of
zinc are tolerated. Id. Appellant asserts that “[t]he skilled person would be
motivated away from adding zinc to either AA8006 or AA8011 in order to
avoid brining the alloy out of specification.” Id.
We are not persuaded. The claim requires “a second aluminum alloy
comprising a base alloy selected from the group consisting of AA1100,
AA8006, and AA8011 and zinc or magnesium.” Appeal Br. 18. Because
this is an apparatus claim, the process by which the second aluminum alloy
is made is not relevant to the patentability determination unless Appellant
can show a relevant process limitation. Here, Appellant must show some
non-obvious difference between the claimed product and the prior art relied
upon. See MPEP § 2113. Further, we note that the claim does not require a
specific amount of zinc or magnesium in the second aluminum alloy. Thus,
without any showing of a non-obvious difference between the claimed
product and the prior art, the claim requires only a second aluminum alloy
that includes AA1100, AA8006, or AA8011 and any amount of zinc or
magnesium. Here, the Examiner has shown that Minami discloses fins made
of a second aluminum alloy including zinc; that Grunenwald discloses the
use of either AA8006 or AA8011 for fins in a heat exchanger; and that the
composition sheets for these alloys indicate that they may include zinc.
Thus, we determine that the art of record suggests the use of either AA8006
or AA8011 as suitable aluminum alloys containing zinc for use in Minami’s
fins.
Regarding whether there is a non-obvious difference between the
claimed product and the prior art, Appellant argues that “[f]rom a purely
compositional standpoint, AA1100 plus zinc does not appear to be
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substantially different than AA7072, but Applicant has discovered that it
makes a surprising difference in performance for manufacturability of the
heat exchanger fins.” Appeal Br. 12. Thus, Appellant is arguing that
unexpected results are obtained from the formation of a second aluminum
alloy produced by combining a base zinc-free aluminum alloy and zinc or
magneisum. The problem with this argument is that it is not commensurate
with the full scope of the claim. Appellant only addresses unexpected
results that occur when a base alloy of AA1100 and zinc are used as the
second aluminum alloy claimed. However, the claim allows for a base alloy
selected from the group consisting of AA1100, AA8006, and AA8011, and
Appellant provides no evidence of unexpected results with respect to base
alloys AA8006 and AA8011. We also find that the evidence of alleged
unexpected results is not commensurate with the scope of the claim because
the evidence discloses only a base aluminum alloy plus 1% zinc, whereas the
claim requires any amount of zinc, even a trace amount. Appellant does not
point to any evidence of unexpected results for second aluminum alloys
including other amounts of zinc. Thus, Appellant has not brought forth
sufficient evidence of a non-obvious difference between the product claimed
and the prior art relied upon by the Examiner, which, as discussed, at least
suggests the use of a base alloy AA8006 or AA8011 with zinc.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. Accordingly, we sustain the rejection of claim 1. Appellant does
not provide separate arguments with respect to the rejection of dependent
claims 4–10, 12, and 13. Thus, we also sustain the rejection of claims 4–10,
12, and 13.
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Claims 2, 3, 14, 16, and 17
With respect to claims 2, 3, 14, 16, and 17, the Examiner further finds
Kanada teaches the use of AA 3003 as a conventional tube
construction material for a heat exchanger (per col. 1 line 15–31)
and that AA 3003 has a potential of -710 mV (per the table at the
bottom of column 6).
It would have been obvious to one of ordinary skill in the
art at the time of invention to have used AA 3003 as the alloy for
the tubes as taught by Kanada doing so would provide a known
conventional tube construction material which can help prevent
corrosion of the tubes as taught by Kanada (Col. 1 line 15–31).
Final Act. 6.
Appellant first argues that Kanada does not overcome the deficiency
in the rejection of claim 1. Appeal Br. 12. Having found no deficiency, we
are not persuaded by this argument.
Appellant also argues that “Kanada discloses a new alloy as a
replacement for AA3003,” and thus, any combination with Kanada “would
be made with Kanada’s new alloys, not the comparison alloys that Kanada
teaches to be inferior to its new alloys.” Id. at 13. We disagree for the
reasons provided by the Examiner. Specifically, “[w]hile Kanada may
acknowledge in the invention that other materials may have improved
manufacturability[,] that does not teach away from the use of AA3003 as a
heat exchanger tube material, as Kanada recognizes that AA3003 is a
material used in the prior art for construction of heat exchanger tubes where
corrosion resistance is required (per Col. 1 line 15–31).” Ans. 9.
Thus, we are not persuaded of error and we sustain the rejection of
claims 2, 3, 14, 16, and 17.
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Claims 11 and 18
Claim 11 depends from claim 1 and specifically requires that the
second aluminum alloy includes a base alloy that is AA1100. Appeal
Br. 18. Claim 18 depends from claim 11.
The Examiner further relies on Mitchell as teaching the use of
AA1100 in fin construction and determines that it would have been obvious
to use this material as a known suitable material for such construction. Final
Act. 7.
Appellant first argues that Mitchell does not cure the deficiency in the
rejection of claim 1. Appeal Br. 13–14. Having found no deficiency, we are
not persuaded by this argument. Appellant also reiterates arguments
regarding unexpected results:
As discussed above with respect to the rejection of claims 1, 4–
10, 12, 13, 15, 19, and 20, what is so surprising about the results
reported in the Examples of the application is that from a purely
compositional standpoint, AA1100 plus zinc does not appear to
be substantially different than AA7072. However, Applicant has
discovered that it makes a surprising difference in performance
for manufacturability of the heat exchanger fins. The data shown
in the Table between paragraphs [0017] and [0018] at page 6 of
the application as filed clearly demonstrate this advantage, and
this data is highly commensurate in scope with claims 11 and 18
directed to fin alloys with AA1100 plus zinc.
Id. at 14. We are not persuaded for reasons previously discussed.
Specifically, although the table provided in Appellant’s written disclosure
compares the use of AA1100 with AA7072, it is not commensurate with the
scope of the claim. As discussed above, the claim scope allows for any
concentration of zinc in the base alloy, whereas the data provided in the
written disclosure only relates to results that are obtained when 1% zinc is
added to AA1100. Thus, we are not persuaded that Appellant has provided
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sufficient evidence of unexpected results commensurate with the scope of
the claim at issue.
Accordingly, we also sustain the rejection of claims 11 and 18.
CONCLUSION
We AFFIRM the rejections of claims 1–20.
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)(l)(iv).

In summary:
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1, 4–10, 12,
13, 15, 19, 20
103(a) Minami, Grunenwald,
ASM
1, 4–10, 12,
13, 15, 19,
20

2, 3, 14, 16,
17
103(a) Minami, Grunenwald,
ASM, Kanada
2, 3, 14, 16,
17

11, 18 103(a) Minami, Grunenwald,
ASM, Mitchell
11, 18
Overall
Outcome
1–20

AFFIRMED