Stephen Stewart. Hancock

Patent Trials and Appeals Board

Aug 20, 2019

14477170 - (D) (P.T.A.B. Aug. 20, 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.
14/477,170 09/04/2014 Stephen Stewart Hancock IRND-742 3842
123446 7590 08/20/2019
Ingersoll-Rand Company (Taft JCN)
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
EXAMINER
FLANIGAN, ALLEN J
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN STEWART HANCOCK
____________________

Appeal 2019-001217
Application 14/477,170
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
ANNETTE R. REIMERS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Office Action dated December 29, 2017 (“Non-Final
Act.”), rejecting claims 1 and 4–6. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Trane International Inc. is the applicant in this application, and is identified
as the real party in interest in the appeal (Appeal Br. 3), and therefore is the
Appellant referred to in this decision.
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THE INVENTION
Appellant’s invention relates to a heat sink system including first and
second clamshells clamped around a tube. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A system comprising:

a tube having a tube radius and a circumference, the tube radius
being defined by a manufacturing tolerance ranging between a
minimum tube radius and a maximum tube radius;

a heat sink having first clamshell and second clamshell portions,
each clamshell portion having an arcuate channel defined by a
maximum channel radius, a channel width and a channel depth,
wherein the arcuate channel of each the first and second
clamshell portions is defined by a single constant radius circular
arc;

wherein the maximum channel radius is greater than the
maximum tube radius, the channel depth is less than the
minimum tube radius, and the channel width is greater than the
maximum tube diameter for each of the first and second
clamshell portions;

wherein the heat sink is configured to deform the tube such that
a width of the tube is greater than a height of the tube after the
first and second clamshell portions are clamped about the tube;
and

wherein the channel width is greater than the width of the tube
after the first and second clamshell portions are clamped about
the tube.

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THE REJECTIONS
The Examiner rejects:
(i) claims 1 and 4–6 under 35 U.S.C. § 112(a) as failing to meet the
written description requirement;
(ii) claims 1 and 4–6 under 35 U.S.C. § 102(a)(1) as anticipated by,
or, in the alternative, under 35 U.S.C. § 103 as being unpatentable over,
Kitajima (US 2006/0243427 A1, published Nov. 2, 2006).

DISCUSSION
Claims 1 and 4–6--§ 112(a)--Written Description
The Examiner rejects claims 1 and 4–6 as failing to comply with the
written description requirement. The Examiner finds that there is “no
disclosure in the originally filed specification or drawings regarding the
‘constant radius circular arc’ defining the arcuate channel of the clamshell
portions.” Non-Final Act. 3. The Examiner takes the position that “the
specification merely indicates that [the clamshell portion] has an ‘arcuate’
(i.e. curved) channel with a given radius and depth,” but “nothing indicates
that this radius is constant.” Id.
The Examiner additionally does not agree with Appellant’s position
that the drawing figures, and particularly Figure 5, which includes a
dimensional line carrying the label “r114,” evidence possession of an
invention having arcuate channels in each clamshell portion in which the
channels are of a single, constant radius, circular arc. Id. In support of this
position, the Examiner asserts that there is no indication that the drawings
are meant to be to scale, and that, elsewhere in the disclosure, in connection
with a tube to be clamped within the channels, a legend “rnom” is used in
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Figure 1, yet the textual disclosure indicates that the tube can be either
circular or non-circular, for example, elliptical. Id. According to the
Examiner, this evidences that “rnom” is “obviously not meant to imply
circularity.” Id.
We disagree with the Examiner as to whether Appellant is entitled to
rely on the drawings, and particularly Figure 5, as evidencing possession of
the claim limitation requiring the channels to be defined by a single constant
radius circular arc. Figure 5 illustrates precisely that limitation. The
position that there is no indication that the drawings are meant to be to scale
is belied by the consistency of dimensions within and among Figures 5–8.
The clamshells are, for all intents and purposes, identical across those
figures. The tube circumferences in Figures 6–8 are consistent with tube
diameters that are nominal, minimum, and maximum tube diameters, as
disclosed in the text. Figure 5 in particular not only identifies a radius “r114”
for the channel curvature in the clamshells, but demonstrates the constancy
of the radius with broken lines maintaining the same radius across the gap
between the clamshells, with the collective curvature presenting a circle or
circular cross-section.
Further, we agree in general with Appellant that reliance on the
disclosure that the tube may be non-circular has little to no bearing on what
is disclosed relative to the contour of the channels in the clamshell portions.
More importantly, the Examiner’s acknowledgement that the tube “can be
‘circular’ or noncircular,” means that Appellant was in possession of both
circular and noncircular tubes. By corollary, even if Appellant’s disclosure
as to the channel shapes were regarded as not being limited to curvatures of
constant radius, that itself is indicative that Appellant was in possession of
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both constant radius curvatures as well as non-constant radius curvatures.
Appellant does not fail to comply with the written description requirement
simply because the claims are limited to one of these and excludes the other.
The rejection of claims 1 and 4–6 as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph, is not sustained.

Claims 1 and 4–6--§ 102(a)(1)--Kitajima
The Non-Final Action does not appear to present factual findings
supporting a rejection of claims 1 and 4–6 as being anticipated by Kitajima.
The Examiner begins the analysis stating that the claims would not be
patentable over Kitajima because oval shapes are specifically suggested
therein as suitable configurations, and “a known oval shape . . . has primarily
a single radius of curvature across the upper and lower sides.” Non-Final
Act. 4. This appears to be a prelude to the alternative rejection based on
obviousness, but in the event that the Examiner intends “primarily a single
radius of curvature” to be a finding supporting anticipation, we do not agree.
Anticipation requires that the identical invention be shown in as
complete detail as is contained in the patent claim. Jamesbury Corp. v.
Litton Industrial Products, Inc., 756 F.2d 1556, 1560 (Fed. Cir. 1985).
Here, the Examiner finds that Kitajima “primarily” discloses identical
structure to that claimed. That is not good enough.
The Examiner includes additional findings and analysis directed to
anticipation in the Answer. Ans. 3–7.2 Appellant does not file a Reply Brief

2 Similar findings and analysis were presented in a Final Action dated
September 7, 2017, prior to Appellant adding the claim limitations directed
to the channels having a single radius of curvature.
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addressing the additions. However, the analysis, which is premised on
assuming that claim 1 fails to comply with the written description
requirement, discussed above, also fails to afford any weight to the
limitation asserted to not have written descriptive support. As such, the
findings and analysis are incomplete insofar as the present scope of claim 1
is concerned.
The rejection of claims 1 and 4–6 as anticipated by Kitajima is not
sustained.

Claims 1 and 4–6--§ 103--Kitajima
As noted above, the Examiner finds that Kitajima discloses that “‘pipe
holding holes 2A, 2A’ in the heat block halves 5, 6” and the ultimate shape
for the deformed tube retained therein may be oval. Non-Final Act. 4 (citing
Kitajima ¶ 76); Ans. 7–8. The Examiner presents an example of a known
oval shape that, also as noted above, “has primarily a single radius of
curvature across the upper and lower sides.” Id. (providing illustration of
oval). The Examiner also provides an illustration of what is referred to as
“biconvex,” which is the shape Appellant’s pair of channels form when
mated. Ans. 9; compare, Appellant’s Figs. 6–8.
The Examiner additionally observes that Kitajima discloses
essentially the same problem and solution as does Appellant, i.e., that the
finished tube-receiving hole should be a shape other than a perfect circle
congruent with the circular tube received in the hole, and should be shaped
such that the tube undergoes deformation as the plate halves are assembled,
to ensure intimate surface-to-surface contact between the tube wall and
groove. Ans. 5–6.
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The Examiner further notes that Kitajima indicates that the pipe
holding hole 2A may have any cross-sectional shape except that of a perfect
circle, and concludes that it would have been obvious to try other recognized
shapes comparable to the ellipse or oval disclosed by Kitajima as being
suitable. Non-Final Act. 5; Ans. 11. The Examiner finds that the biconvex
shape is a similar shape to an ellipse or oval, and thus is a known option in
the realm of shapes suitable for providing a concave profile for the grooves
in the Kitajima clamshell members. Ans. 11.
Appellant attempts to contrast the Kitajima disclosure with the
claimed invention by noting that, whereas Kitajima discloses that the pipe
holding holes can take on at least several shapes, but not a perfect circle,
claim 1 recites that the channels have a single constant radius circular arc.
Appeal Br. 8. The argument fails to take into account that Kitajima uses the
term “pipe holding hole” in the context of the hole formed when heat block
units 5, 6 (corresponding to Appellant’s clamshells) are brought into
abutting relationship. See Kitajima Figs. 2A, 3B. It is the shape of that hole
that is not to be a perfect circle. Appellant’s channels, once the first and
second clamshells are brought into abutting contact, similarly form a pipe
holding hole that is not a perfect circle, despite the channels having a
constant-radius curvature. See, Spec., Figs. 5–8. The argument thus does
not apprise us of error in the rejection.
Appellant further argues that Kitajima teaches away from a single
constant radius shape for the opposing channels, due to its disclosure of
avoiding a pipe-holding hole having a cross-section of a perfect circle.
Appeal Br. 8. However, as Appellant’s own disclosure evidences, providing
a single constant radius shape for opposing channels does not inevitably lead
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to the pipe-holding hole being a perfect circle. As such, this disclosure in
Kitajima, even if it does not expressly teach the use of a single constant
radius shape, is not seen by us as criticizing, discrediting or otherwise
discouraging the use of channels having a single constant radius shape,
particularly in view of the Examiner’s finding (Ans. 9, 11) that the pipe-
holding shape resulting from use of that channel shape may be comparable
to an ellipse or oval. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant counters the Examiner’s discussion of known oval and
biconvex shapes by pointing out that claim 1 does not recite the channel
shapes in a manner resulting in those particular shapes, and by repeating the
argument that Kitajima teaches that shapes other than perfect circles are to
be avoided. The Examiner does not take the position that those known
shapes are recited in claim 1. We address above the latter argument.
Neither argument apprises us of error in the rejection.
Appellant argues that the “obvious to try” conclusion reached by the
Examiner is in error, because:
there are theoretically an infinite number of shapes, sizes and
configurations that one ‘could’ try when working to solve the
problem addressed by the present disclosure -- namely
maximizing contact and thus heat transfer between a plurality of
different sized tubes and a heat sink while maintaining the ability
to remove the heat sinks from the tubes during a repair operation.
Appeal Br. 9. Appellant additionally asserts that the “obvious to try”
conclusion amounts to impermissible use of hindsight analysis, in view of
the Kitajima disclosure that the pipe-holding shape of the heat sink should
not be a perfect circle. Id.
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Appellant’s arguments here fail to take into account that the
Examiner’s position is founded upon the person of ordinary skill in the art
trying shapes that are comparable to an ellipse or oval, and that the channel
shape recited in claim 1 results in a biconvex pipe-holding shape that fits
that characterization. Ans. 11. The Examiner has thus not based the
conclusion that it would have been obvious to try a channel shape falling
within the scope of claim 1 on any “theoretically infinite” selection of
shapes. That the Examiner focuses the rejection on trying known shapes
similar to the oval and elliptical shapes disclosed in Kitajima also
undermines Appellant’s assertion that the conclusion was reached by
employing hindsight reconstruction. The arguments do not apprise us of
error.
Appellant does not separately argue the patentability of dependent
claims 4–6.
In view of the foregoing, the rejection of claims 1 and 4–6 as being
unpatentable over Kitajima is sustained.

DECISION
The rejection of claims 1 and 4–6 under 35 U.S.C. § 112(a) is
reversed.
The rejection of claims 1 and 4–6 under 35 U.S.C. § 102(a)(1) is
reversed.
The rejection of claims 1 and 4–6 under 35 U.S.C. § 103 is affirmed.

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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