Stephen Stewart. HancockDownload PDFPatent Trials and Appeals BoardAug 20, 201914477170 - (D) (P.T.A.B. Aug. 20, 2019) Copy Citation 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. Appeal 2019-001217 Application 14/477,170 2 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. Appeal 2019-001217 Application 14/477,170 3 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 Appeal 2019-001217 Application 14/477,170 4 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 Appeal 2019-001217 Application 14/477,170 5 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. Appeal 2019-001217 Application 14/477,170 6 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. Appeal 2019-001217 Application 14/477,170 7 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 Appeal 2019-001217 Application 14/477,170 8 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. Appeal 2019-001217 Application 14/477,170 9 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. Appeal 2019-001217 Application 14/477,170 10 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 Copy with citationCopy as parenthetical citation