UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CONTROLS SOUTHEAST, INC.
`
`Petitioner,
`
`v.
`
`QMAX INDUSTRIES, LLC
`
`Patent Owner.
`
`
`
`U.S. Patent No. 8,469,082
`
`HEAT TRANSFER BETWEEN TRACER AND PIPE
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,469,082
`
`
`
`
`
`
`
`
`

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`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 1
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ............................................... 1
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................................ 1
`
`C. Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§§ 42.8(b)(3)-(4)) ............................................................................................. 2
`
`III.
`
`INTER PARTES REVIEW FEE ...................................................................... 2
`
`IV. CONTENT REQUIREMENTS ....................................................................... 3
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ................................................ 3
`
`B. Identification of Challenge (37 C.F.R. § 42.104(b)) ....................................... 3
`
`1. Challenged Claims ........................................................................................... 3
`
`2. Summary of the Specific Statutory Grounds on Which the Challenge to Each
`Claim is Based ................................................................................................. 3
`
`3. How the Challenged Claims Are To Be Construed ........................................ 4
`
`4. How the Construed Claims Are Unpatentable ................................................ 4
`
`5. Exhibit Numbers of Supporting Evidence and Relevance of Supporting
`Evidence to Challenge Raised ......................................................................... 4
`
`IV. OVERVIEW OF THE ‘082 PATENT ............................................................ 5
`
`A. Description of the Alleged Invention of the ‘082 Patent................................. 5
`
`B. Summary of the Prosecution History of the ‘082 Patent ................................. 8
`
`V.
`
`CLAIM CONSTRUCTION ..........................................................................11
`
`A. “a continuous heat transfer cement fill layer” ...............................................11
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................13
`
`VII. UNPATENTABILITY OF THE CHALLENGED CLAIMS .......................13
`
`A. Ground 1 - Claims 1-9, 11, 12, and 18-20 are obvious under 35 U.S.C.
`§ 103(a) over Malone in view of Bilbro. .......................................................14
`
`1. Claim 1 ...........................................................................................................19
`
`2. Claim 2 ...........................................................................................................30
`
`3. Claim 3 ...........................................................................................................31
`
`4. Claim 4 ...........................................................................................................32
`
`
`
`ii
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`

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`5. Claim 5 ...........................................................................................................32
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`6. Claim 6 ...........................................................................................................34
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`7. Claim 7 ...........................................................................................................35
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`8. Claim 8 ...........................................................................................................36
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`9. Claim 9 ...........................................................................................................43
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`10. Claim 11 .........................................................................................................43
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`11. Claim 12 .........................................................................................................45
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`12. Claim 18 .........................................................................................................46
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`13. Claim 19 .........................................................................................................50
`
`14. Claim 20 .........................................................................................................51
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`B. Ground 2 - Claims 2-4 are obvious under 35 U.S.C. § 103(a) over Malone in
`view of Bilbro and Mizuno. ...........................................................................51
`
`1. Claim 2 ...........................................................................................................52
`
`2. Claim 3 ...........................................................................................................53
`
`3. Claim 4 ...........................................................................................................54
`
`C. Ground 3 - Claims 1, 8, 11, 12, and 18-20 are obvious under 35 U.S.C.
`§ 103(a) over Malone in view of Bilbro and Ikas .........................................54
`
`1. Claim 1 ...........................................................................................................56
`
`2. Claim 8 ...........................................................................................................59
`
`3. Claim 11 .........................................................................................................61
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`4. Claim 12 .........................................................................................................62
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`5. Claim 18 .........................................................................................................63
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`6. Claim 19 .........................................................................................................64
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`7. Claim 20 .........................................................................................................65
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`VIII. CONCLUSION ..............................................................................................66
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`iii
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`
`
`List of Exhibits
`
`Exhibit 1001:
`
`U.S. Patent No. 8,469,082 to Perry (“the ‘082 Patent”)
`
`Exhibit 1002:
`
`File History of the ‘082 Patent
`
`Exhibit 1003:
`
`English Translation of Japanese Patent Publication No.
`
`JP 2000-110985 to Mizuno et al. (“Mizuno”)
`
`Exhibit 1004:
`
`U.S. Patent No. 7,203,419 to Malone et al. (“Malone”)
`
`Exhibit 1005:
`
`U.S. Patent No. 3,331,946 to Bilbro (“Bilbro”)
`
`Exhibit 1006:
`
`Great Britain Patent No. 1,081,889 to Ikas Isolering (“Ikas”)
`
`Exhibit 1007:
`
`U.S. Patent No. 6,410,893 to Barth et al. (“Barth III”)
`
`Exhibit 1008:
`
`S.O. Jones, Electrically Traced Process Lines, J. Electrical
`
`Engineering, December 1963 (“Jones”)
`
`Exhibit 1009:
`
`U.S. Patent No. 6,131,617 to Barth et al. (“Barth I”)
`
`Exhibit 1010:
`
`U.S. Patent No. 5,086,836 to Barth et. al (“Barth II”)
`
`Exhibit 1011:
`
`English Translation of JP S63-112696 to Omura (“Omura”)
`
`Exhibit 1012:
`
`PIP PNSC0035 Steam Tracing Specification (“PIP Spec”)
`
`Exhibit 1013:
`
`Dictionary definitions for “continuous” and “elliptical”
`
`Exhibit 1014:
`
`Declaration of Dr. John P. Abraham (“Abraham Decl.”)
`
`
`
`
`
`iv
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`

`

`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 et seq. and 37 C.F.R. § 42.1 et seq., Petitioner
`
`Controls Southeast, Inc. (“Petitioner”) hereby petitions for inter partes review of
`
`U.S. Patent No. 8,469,082 (“the ‘082 Patent”). Petitioner submits that claims 1-9,
`
`11, 12, and 18-20 of the ‘082 Patent are unpatentable under 35 U.S.C. § 103 in
`
`view of the prior art references identified herein. This Petition demonstrates that
`
`there is a reasonable likelihood that each of the challenged claims is unpatentable.
`
`Accordingly, it is respectfully requested that the Board institute inter partes review
`
`of the ‘082 Patent.
`
`II. MANDATORY NOTICES
`
`A. Each Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Controls Southeast, Inc. and AMETEK, Inc. Controls Southeast, Inc. is a
`
`wholly-owned division of AMETEK, Inc.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Petitioner is the plaintiff in an action against the Patent Owner involving the
`
`‘082 Patent captioned Controls Southeast, Inc. v. QMax Industries, Inc. et al., in
`
`the United States District Court for the Western District of North Carolina, Case
`
`No. 3:16-cv-00230-FDW-DSC (the “Lawsuit”). Concurrently filed herewith is a
`
`Petition for inter partes review of United States Patent No. 8,662,156 (the parent
`
`of the ‘082 Patent), which is also owned by Patent Owner and asserted in the
`
`above-captioned matter.
`
`
`
`1
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`

`

`
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`C. Lead and Back-Up Counsel and Service Information (37 C.F.R.
`§§ 42.8(b)(3)-(4))
`
`Petitioner’s counsel designated below consent to electronic service:
`
`Lead Counsel
`Benjamin E. Leace (Reg. No. 33,412)
`beleace@ratnerprestia.com
`
`RatnerPrestia
`2200 Renaissance Blvd
`Suite 350
`King of Prussia, PA 19406
`Telephone: 610-407-0700
`Fax: 610-407-0701
`
`Back-Up Counsel
`Andrew J. Koopman (Reg. No. 65,537)
`akoopman@ratnerprestia.com
`
`Christopher H. Blaszkowski (Reg.
`No. 61,461)
`cblaszkowski@ratnerprestia.com
`
`RatnerPrestia
`2200 Renaissance Blvd
`Suite 350
`King of Prussia, PA 19406
`Telephone: 610-407-0700
`Fax: 610-407-0701
`
`
`
`III.
`
`INTER PARTES REVIEW FEE
`
`Pursuant to 37 C.F.R. §§ 42.103(a) & 42.15(a)(1)-(2), a fee of $23,000
`
`accompanies this Petition by way of credit card payment. Fourteen claims are
`
`challenged, so no excess claim fees are required. Petitioner authorizes the Director
`
`to charge any additional fees associated with this Petition to Deposit Account
`
`No. 18-0350.
`
`
`
`2
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`
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`IV. CONTENT REQUIREMENTS
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the ‘082 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review of
`
`the challenged claims of the ‘082 Patent on the grounds identified in this Petition.
`
`B.
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`
`1.
`
`Challenged Claims
`
`Petitioner requests inter partes review and cancellation of claims 1-9, 11, 12,
`
`and 18-20 (collectively, the “Challenged Claims”) of the ‘082 Patent. A detailed
`
`statement of the grounds supporting grant of the requested relief is set forth in
`
`Section VII below.
`
`2.
`
`Summary of the Specific Statutory Grounds on Which the
`Challenge to Each Claim is Based
`
`Inter partes review of the Challenged Claims is requested in view of the
`
`following references: U.S. Patent No. 7,203,419 to Malone et al. (“Malone”); U.S.
`
`Patent No. 3,331,946 to Bilbro (“Bilbro”); Japanese Patent Publication No.
`
`JP 2000-110985 to Mizuno et al. (“Mizuno”); and Great Britain Patent
`
`No. 1,081,889 to Ikas Isolering (“Ikas”). Each of these references is prior art to the
`
`‘082 Patent under (pre-AIA) 35 U.S.C. §§ 102(b), as explained below in Section
`
`VII.
`
`
`
`3
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`

`

`
`
`1
`
`2
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`2-4
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`Ground Claim Number(s) Proposed Rejections
`1-9, 11, 12, and 18-
`Claims 1-9, 11, 12, and 18-20 are obvious under
`20
`35 U.S.C. § 103(a) over Malone and Bilbro.
`Claims 2-4 are obvious under 35 U.S.C. § 103(a)
`over Malone, Bilbro, and Mizuno.
`Claims 1, 8, 11, 12, and 18-20 are obvious under
`35 U.S.C. § 103(a) over Malone, Bilbro, and Ikas.
`
`3
`
`1, 8, 11, 12, and
`18-20
`
`
`
`Each of the patents and printed publications listed above pertain to the same
`
`field of endeavor, namely, heat transfer elements for pipes. This Petition is also
`
`accompanied by the declaration of Petitioner’s technical expert, Dr. John P.
`
`Abraham (Ex. 1014), which provides evidence regarding the knowledge of a
`
`person of ordinary skill in the art (“POSITA”), and what the above patents and
`
`printed publications would have conveyed to a person of ordinary skill in the art.
`
`3. How the Challenged Claims Are To Be Construed
`
`The construction of terms in the Challenged Claims is set forth below in
`
`Section V.
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`4. How the Construed Claims Are Unpatentable
`
`An explanation of how the Challenged Claims are unpatentable under the
`
`grounds set forth in Section III(B)(2) is set forth below in Section VII.
`
`5.
`
`Exhibit Numbers of Supporting Evidence and Relevance of
`Supporting Evidence to Challenge Raised
`
`The Exhibit numbers for the supporting evidence relied on in this Petition
`
`are set forth in the List of Exhibits provided on page iv. An explanation of the
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`
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`4
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`
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`relevance of the supporting evidence is provided along with the explanation of how
`
`the Challenged Claims are unpatentable in Section VII, and throughout the
`
`Abraham Decl.
`
`IV. OVERVIEW OF THE ‘082 PATENT
`
`A. Description of the Alleged Invention of the ‘082 Patent
`
`The alleged invention of the ‘082 Patent is a heat transfer element for
`
`facilitating the transfer of heat from a tracing tube or “ tracer” to a pipe
`
`transporting a fluid. The tracer may constitute either a fluid tracer (having a heated
`
`fluid flowing inside) or an electrical tracer. The element includes curved mounting
`
`surfaces following the contour of the pipe, and a channel for receiving the tracer.
`
`The transfer element is formed from metal, and may be affixed to the tracer and/or
`
`the pipe with heat transfer cement, each of which are well known to enhance
`
`thermal conductivity.
`
`
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`5
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`
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`Portion of FIG. 2 of the ‘082 Patent
`
`
`
`With reference to FIGS. 2 and 3, the ‘082 Patent discloses a heat transfer
`
`element 10 which is configured to be attached to a pipe 6.
`
`
`
`6
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`

`

`
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`
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`Heat transfer element 10 is placed overtop tracer 8, such that tracer 8 is positioned
`
`within a channel 16 of heat transfer element 10. The outer surface of heat transfer
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`element 10 covers channel 16, so that no portion of channel 16 or racer 8 is visible
`
`from the outer surface of heat transfer element 10.
`
`Heat transfer element 10 includes curved mounting surfaces 14 extending
`
`outward on either side of channel 16. Curved mounting surfaces 14 follow the
`
`perimeter of pipe 6.
`
`
`
`7
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`

`

`
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`Heat transfer cement 12 is provided between tracer 8 and heat transfer
`
`element 10, and between heat transfer element 10 and pipe 6. Heat transfer cement
`
`12 may be provided in a “continuous” layer extending the length of tracer 8.
`
`B.
`
`Summary of the Prosecution History of the ‘082 Patent
`
`U.S. Patent Application No. 13/476,002 (“the ‘002 Application”), which
`
`eventually issued as the ‘082 Patent, was filed on May 20, 2012. The
`
`‘002 Application was a continuation of U.S. Patent Application No. 13/154,142
`
`(“the ‘142 Application”), which was filed on June 6, 2011. The ‘142 Application
`
`claimed priority to two provisional applications, U.S. Patent Application
`
`No. 61/120,425, filed on December 6, 2008, and U.S. Patent Application
`
`No. 61/167,023, filed on April 6, 2009.
`
`The ‘002 Application was filed with twenty claims. Claim 1 of the
`
`‘002 Application was directed to a heat transfer element which comprises “first
`
`and second curved mounting surfaces” and “a lengthwise opening defined between
`
`the two curved mounting surfaces.” Claim 1 required the heat transfer element to
`
`be “configured for attachment to a pipe with tracer tubing received within the
`
`channel.” (Ex. 1002, page 103.)
`
`The ‘002 Application included two other independent claims, claims 11 and
`
`20, which required a heat transfer element having similar features. Claim 11
`
`
`
`8
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`

`

`
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`recited “[a] method for facilitating heat transfer,” while claim 20 recited “[a] heat
`
`transfer system” which, unlike claim 1, positively recited the pipe and tracer.
`
`On August 15, 2012, an Office Action was issued which rejected all twenty
`
`claims of the ‘002 Application. In particular, claims 11, 12, 15, and 18 were
`
`rejected under 35 U.S.C. § 102 as anticipated by Mizuno et al. (JP 2000-110985),
`
`and the remaining claims were rejected under 35 U.S.C. § 103 as unpatentable over
`
`Mizuno alone (for claims 1-10, 13, 14, 16, 17, and 20) or Mizuno in view of Barth
`
`et al. (US 5,086,836) (for claim 19).
`
`In the Office Action, the Examiner asserted that FIG. 1 of Mizuno shows
`
`Applicant’s claimed heat transfer element. FIG. 1 of Mizuno is reproduced below:
`
`FIG. 1 of Mizuno
`
`
`
`(Ex. 1003.) While the above structure of Mizuno is formed from heat transfer
`
`cement, the Examiner explained that it would have been obvious to instead form
`
`this structure from a metal such as aluminum, as doing so would allow for easier
`
`
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`9
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`

`
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`assembly with predesigned pipes and tracers, and would not negatively impact the
`
`heat transfer capabilities of the device. (See Ex. 1002, page 52.)
`
`Applicant responded to the Office Action six months later, on February 15,
`
`2013. In its response, Applicant amended independent claims 1, 11, and 20,
`
`canceled claims 5-10 and 12-17, and added new claims 21-32. (See Ex. 1002,
`
`pages 15-22.) In its amendments to the independent claims, Applicant (1) limited
`
`the shape of the lengthwise opening in the heat transfer element, and (2) introduced
`
`a heat transfer cement fill layer.
`
`With respect to the shape of the lengthwise opening, Applicant specified in
`
`the claims that the opening had “first and second generally parallel channel walls”
`
`and “a curved channel ceiling.” (See Ex. 1002, page 15.) Applicant identified no
`
`express support, however, for the claimed parallel channel walls. The specification
`
`of the ‘002 Application includes no definition for “parallel” or “generally parallel.”
`
`In fact, the term “parallel” is entirely absent from the specification of the
`
`‘002 Application. The limitations added to claim 1 to overcome the prior art
`
`rejections and secure allowance appear to be drawn solely from Applicant’s
`
`interpretation of what is shown in the drawings of the ‘002 Application.
`
`A Notice of Allowance followed on May 10, 2013, allowing claims 1-4, 11,
`
`and 18-32. In the Notice of Allowance, the Examiner indicated that Applicant’s
`
`addition of the terms “generally” and “about” to the claims was improper and in
`
`
`
`10
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`

`

`
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`violation of 35 U.S.C. § 112, ¶ 2, and ordered them removed by Examiner’s
`
`amendment. (See Ex. 1002, page 9.) The Examiner’s statement of reasons for
`
`allowance was as follows:
`
`The prior art does not teach or fairly suggest the use of a
`
`heat transfer element made of metal, with the first and
`
`second generally parallel channel walls and curved
`
`ceiling defining a channel configured for receiving tracer
`
`tubing.
`
`(Ex. 1002, page 10.) Applicant submitted no comments in response to these
`
`reasons. The ‘082 Patent subsequently issued on June 25, 2013.
`
`V. CLAIM CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.100(b), in an inter partes review, the claims of
`
`the subject patent are to be given their broadest reasonable interpretation in light of
`
`the specification. Petitioner has specifically identified one phrase from the
`
`Challenged Claims requiring construction to determine the broadest reasonable
`
`interpretation. For those terms not specifically construed below, Petitioner
`
`believes no particular construction is required for purposes of this review1.
`
`A.
`
`“a continuous heat transfer cement fill layer”
`
`A “generally continuous” heat transfer fill layer was added by Applicant
`
`during prosecution of the ‘002 Application. Similar to the problem of using the
`
`
`1 Petitioner has submitted additional claim terms for construction in the Lawsuit.
`11
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`

`

`
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`term “generally” in association with the parallel channel walls, the requirement
`
`that the fill layer be “generally” continuous was determined by the Examiner to
`
`render the claims indefinite under 35 U.S.C. § 112, ¶ 2, and the term “generally”
`
`was deleted by Examiner’s amendment. (See Ex. 1002, page 9.) Applicant neither
`
`objected to nor commented on the Examiner’s deletion of “generally” from the
`
`claims.
`
`The specification of the ‘082 Patent includes no definition for “continuous”
`
`or “generally continuous.” In fact, the term “continuous” is entirely absent from
`
`the ‘082 Patent specification.
`
`A POSITA would understand the term “continuous” to mean
`
`“uninterrupted.” (Ex. 1014, ¶ 98.) However, without use or explanation in the
`
`specification, it cannot be determined in what dimension the heat transfer cement
`
`fill layer is uninterrupted. For example, this term could encompass an
`
`uninterrupted fill layer in the thickness direction from an upper to a lower surface;
`
`an uninterrupted fill layer along the length of the heat transfer element; or an
`
`uninterrupted fill layer around a circumference of the heat transfer element.
`
`Absent greater detail in the claims, or guidance in the specification, the broadest
`
`reasonable interpretation of this phrase requires that all reasonable permutations of
`
`a “continuous” layer are covered by the claim language.
`
`
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`12
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`

`

`
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`Consistent with the level of support for this limitation provided by the
`
`intrinsic evidence, and the ordinary and customary meaning of “continuous,”
`
`Petitioner submits that the broadest reasonable interpretation of the phrase “a
`
`continuous heat transfer cement fill layer” in the claims of the ‘082 Patent is “a
`
`heat transfer cement fill layer which is uninterrupted in at least one dimension of
`
`the heat transfer cement fill layer. (Ex. 1014, ¶¶ 99-101.)
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`With respect to the ‘082 Patent, a POSITA would have at least a bachelor’s
`
`degree in mechanical engineering with at least one year of experience in the field
`
`of thermal engineering and/or heat transfer systems, including pipe tracing
`
`systems. (Ex. 1014, at ¶¶ 41-44.)
`
`VII. UNPATENTABILITY OF THE CHALLENGED CLAIMS
`
`The concept of metal heat transfer elements which could be installed overtop
`
`a tracer tube, and which could be held in place by heat transfer cement, was not
`
`new at the time of the alleged invention embodied by the ‘082 Patent. (Ex. 1014,
`
`¶¶ 60-69.) Such heat transfer elements had, in fact, existed for years.
`
`The critical claim limitation added to overcome the prior art was a channel
`
`in the heat transfer element which has parallel walls and a curved ceiling. Such a
`
`channel, however, does not render the claims of the ‘082 Patent novel or
`
`nonobvious. Several of the references relied on in this Petition expressly show and
`
`
`
`13
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`

`
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`describe channels with this shape. As set forth below, a POSITA would have
`
`readily known of and used such a channel in heat transfer applications. (Ex. 1014,
`
`¶¶ 131-133.)
`
`The claim amendment relating to a parallel walled channel shape was the
`
`sole basis for the allowance of the claims, as stated by the Examiner in the Notice
`
`of Allowance. The ‘082 Patent, however, does not mention parallel walls, let alone
`
`suggest that the use of such a shape provides any unexpected results, fulfills a
`
`long-felt but then unmet need in the art or satisfied any other secondary
`
`consideration. There is no importance relating to this channel shape that can be
`
`recognized from a plain reading of the’ 082 Patent, which is silent regarding the
`
`“parallel walls” of the channel. Accordingly, for the reasons set forth in detail
`
`below, the challenged claims are obvious under 35 U.S.C. § 103.
`
`A. Ground 1 - Claims 1-9, 11, 12, and 18-20 are obvious under 35
`U.S.C. § 103(a) over Malone in view of Bilbro.
`
`Malone (Ex. 1004) issued on April 10, 2007, and is therefore prior art
`
`against the ‘082 Patent under pre-AIA 35 U.S.C. § 102(b). Bilbro (Ex. 1005)
`
`issued on July 18, 1967, and is therefore prior art against the ‘082 Patent under pre-
`
`AIA 35 U.S.C. § 102(b). Malone was not cited during the prosecution of the
`
`‘082 Patent. Bilbro, while cited, was never applied by the Examiner to reject the
`
`claims of the ‘082 Patent. A brief summary of each reference is set forth below.
`
`
`
`
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`14
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`
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`Malone is directed to heated conduits. Malone discloses that one such
`
`conduit comprises includes “a pipe, an electrical heater extending alone the length
`
`of the pipe, and a thermally insulating jacket extending around the pipe and
`
`heater.” (Ex. 1004, abstract.)
`
`FIG. 2 of Malone depicts a heated conduit which includes an aluminum
`
`tube 7, a heating cable 8 adjacent the aluminum tube 7, and a metal foil 9 which
`
`extends over heating cable 8 to
`
`secure heating cable 8 to the
`
`outside of tube 7. (Ex. 1004,
`
`col. 3:54-61.) Metal foil 9
`
`adheres to aluminum tube 7 in
`
`order “to further enhance the
`
`distribution of thermal energy
`
`from the heater to the pipe.”
`
`(Ex. 1004, col. 2:39-41.) Metal
`
`foil 9 may further be in the form of a sheet “which extends over the cable and onto
`
`the pipe on either side of the cable.” (Ex. 1004, col. 2:41-45.)
`
`
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`15
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`

`
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`Bilbro is directed to an electric pipe heater. Bilbro discloses a heat transfer
`
`apparatus which includes “a channel member with heat transfer material disposed
`
`therein” and “a heat conductor element…disposed in the heat transfer material
`
`without air gaps….” (Ex. 1005, abstract.)
`
`FIG. 2 of Bilbro depicts a channel member 10 formed from a rigid metal
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`such as steel. (Ex. 1005, col. 2:42-44.) Channel member 10 is positioned overtop
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`a heat conductor element H
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`adjacent the outer surface of
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`a pipe P. (Ex. 1005,
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`col. 2:52-60, and FIG. 2.)
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`Channel member 10 includes
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`“longitudinal edges 10b”
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`which “rest in contact with
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`the external surface of pipe P ….” (Ex. 1005, col 3:39-46.) The length of channel
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`member 10 may be substantially the same as the length of heat conductor element
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`H. (Ex. 1005, col. 2:52-54.)
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`Heat conductor element H is embedded within a heat transfer material 12
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`which locks heat conductor element H to pipe P. (Ex. 1005, col. 4:19-24.) Heat
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`transfer material 12 fills the space around heat conductor element H within channel
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`
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`16
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`member 10 so that “air spaces are eliminated around the element H and a very
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`efficient heat transfer is obtained.” (Ex. 1005, col. 4:6-7.)
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`The prior art itself provides a POSITA with a motivation to combine
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`elements of Bilbro into the system of Malone. (Ex. 1014, ¶¶ 149-153.)
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`Principally, Bilbro expressly discloses that its embodiments are “prefabricated so
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`as to facilitate application of the heat transfer material and so as to provide an
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`improved final installation of such material.” (Ex. 1005, col. 1:37-42) Also,
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`Bilbro’s embodiments “apply an evenly distributed covering of a heat transfer
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`material on electrical heating wires, steam tracing, and the like whereby gaps in
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`such material are avoided.” (Ex. 1005, col. 1:43-47.) As depicted in the annotated
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`figure below, metal foil 9 of Malone and channel member 10 of Bilbro have a
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`similar shape to that claimed in the ‘082 Patent —parallel channel walls, a curved
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`channel ceiling, and curved mounting surfaces.
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`
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`17
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`
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`Annotated Comparison of FIG. 2 of Bilbro (left) and FIG. 2 of Malone (right)
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`
`
`
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`The similarity of shape adds an additional basis for a POSITA to have had a
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`reasonable expectation of success in combining aspects of Bilbro—including heat
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`transfer material 12—into the system of Malone. Other advantages from Bilbro
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`which would be desirable in the system of Malone are apparent from the disclosure
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`of Bilbro, and are set forth below. (Ex. 1014, ¶¶ 149-153.) It would have been
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`obvious to a POSITA to combine aspects of Bilbro with the system of Malone, and
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`a POSITA would have had a reasonable expectation of success in doing so. (Id.)
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`18
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`1.
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`Claim 1
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`Claim 1 is directed to a heat transfer element. Malone discloses a metal foil
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`which transfers heat from a heating cable to a tube.
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`a. an inner surface running a length of the heat transfer
`element, the inner surface comprising
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`Metal foil 9 of Malone has an inner surface running along its length.
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`(Ex. 1004, FIG. 2; Ex. 1014, ¶¶ 125-26.)
`
`i.
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`first and second curved mounting surfaces configured
`to mate with an outer surface of a pipe for attachment
`thereto
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`Metal foil 9 of Malone has curved surfaces on either side of heating cable 8
`
`where it contacts aluminum tube 7. (Ex. 1004, FIG. 2; Ex. 1014, ¶ 127.) The
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`curved surfaces of metal foil 9 are configured to be adhered to the outer surface of
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`aluminum tube 7. (Ex. 1004, col. 3:54-61; Ex. 1014, ¶¶ 127-28.)
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`ii.
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`first and second parallel channel walls each extending
`from an interior portion of a respective one of the first
`and second curved mounting surfaces
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`Metal foil 9 of Malone has parallel walls extending on either side of heating
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`cable 8 down to the curved surfaces which contact aluminum tube 7. (Ex. 1004,
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`FIG. 2; Ex. 1014, ¶ 129.)
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`Moreover, the use of parallel walls instead of curved or angled walls would
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`have been an obvious design choice to a POSITA. (Ex. 1014, ¶¶ 130-31.)
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`Petitioner notes that the specification of the‘082 Patent neither recites the use of
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`
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`19
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`
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`parallel walls nor identifies any advantages related to the use of parallel walls.
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`Bilbro discloses a number of options for shapes of a heat transfer element,
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`including multiple options having parallel sidewalls. (Ex. 1005, FIGS. 5 and 7,
`
`col. 4:46-54.) In view of Bilbro’s recognition of multiple shape options for heat
`
`transfer elements, some of which incorporate parallel walls, it would have been
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`obvious to, and within the skill of, a POSITA to incorporate such a feature in
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`Malone. (Ex. 1014, ¶¶ 132-33 .)
`
`iii.
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`a curved channel ceiling having a elliptical cross-
`sectional shape extending between the first and second
`parallel channel walls, the channel ceiling having a
`curvature configured to correspond to a curvature of an
`outer surface of tracer tubing
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`Metal foil 9 of Malone has a curved channel ceiling with a semi-elliptical
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`cross-sectional shape extending between the parallel walls. (Ex. 1004, FIG. 2;
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`Ex. 1014, ¶¶ 134-35.) The curvature of the channel ceiling of metal foil 9
`
`corresponds to the contour of heating cable 8. (Ex. 1004, FIG. 2; Ex. 1014, ¶¶
`
`136-37.)
`
`
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`20
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`
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`iv.
`
`a lengthwise opening defined between the two curved
`mounting surfaces, the lengthwise opening being an
`opening of an interior lengthwise channel defined by
`the first and second parallel channel walls and the
`curved channel ceiling, the interior lengthwise channel
`being sized and dimensioned to receive tracer tubing
`therein
`
`Metal foil 9 of Malone has a lengthwise opening between the curved outer
`
`surfaces and defined by the parallel walls and curved channel ceiling of metal
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`foil 9. (Ex. 1004, FIG. 2; Ex. 1014, ¶¶ 138-39.) This channel is sized to receive
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`heating cable 8 therein. (Id.)
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`b. an outer surface running the length of the heat transfer
`element which does not provide access to the interior
`lengthwise channel
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`Metal foil 9 of Malone includes an outer surface running along its length
`
`which does not provide access to the interior channel. (Ex. 1004, FIG. 2; Ex. 1014,
`
`¶¶ 140-43.) In particular, metal foil 9 may be in the form of a sheet “which
`
`extends over the cable and onto the pipe on either side of the cable.” (Ex. 1004,
`
`col. 2:41-45.)
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`c. wherein the heat transfer element is configured for
`attachment to a pipe, utilizing heat transfer cement, with
`tracer tubing received within the interior lengthwise
`channel
`
`Metal foil 9 of Malone is configured to be attached to aluminum tube 7 with
`
`heating cable 8 received in the channel therein.
`
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`21
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`Preliminarily, “heat transfer cement” is not recited as part of the structure of
`
`the claimed heat transfer element, but as accompanying an intended use of the heat
`
`transfer element, in attaching the heat transfer element to the pipe. It is well
`
`established that “[a] claim containing a ‘recitation with respect to the manner in
`
`which a claimed apparatus is intended to be employed does not differentiate the
`
`claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all
`
`the structural limitations of the claim.” See M.P.E.P. § 2114. Inasmuch as the
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`metal foil 9 of Malone is capable of being attached to aluminum tube 7 with heat
`
`transfer cement, Malone teaches this limitation of claim 1.
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`If this “heat transfer cement” limitation is considered to be a requirement of
`
`claim 1, it would nonetheless have