ENGINEERED MACHINED PRODUCTS, INC.

Patent Trials and Appeals Board

Sep 15, 2021

2021001826 (P.T.A.B. Sep. 15, 2021)

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.
15/235,526 08/12/2016 Todd M. STEINMETZ EMP 0176 PUS 3554
22045 7590 09/15/2021
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
COX, ALEXIS K
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/15/2021 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD M. STEINMETZ and MICHAEL P. LASECKI
____________

Appeal 2021-001826
Application 15/235,526
Technology Center 3700
____________

Before JILL D. HILL, CARL M. DEFRANCO, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–19, 28, and 29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Engineered Machined Products, Inc.
Appeal Br. 1.
Appeal 2021-001826
Application 15/235,526
2
THE INVENTION
Appellant’s invention relates to “a thermal management system and
method for a vehicle.” Spec. 1. Claims 1, 12, and 28 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A thermal management system for a vehicle, comprising:
a cooling system including at least one of a fan or a
pump, or at least one valve and connectable to a heat-producing
system of the vehicle, the cooling system having a variable
cooling capacity effected by varying the speed of at least one of
the at least one fan or pump, or by varying the flow rate of the
at least one valve; and
a control system including at least one controller and
operable to control the cooling capacity of the cooling system
in response to at least one input indicative of a heat generation
rate of the heat-producing system, the control system being
configured to increase the cooling capacity of the cooling
system to a first predetermined level in response to the heat
generation rate indicating an increase in the future heat load of
the heat-producing system when a temperature of the cooling
system is at least a predetermined temperature, and to inhibit
increasing the cooling capacity of the cooling system to the first
predetermined level in response to the heat generation rate
indicating an increase in the future heat load of the heat-
producing system when the temperature of the cooling system
is less than the predetermined temperature.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference(s) Date
Reckels US 7,424,868 B2 Sept. 16, 2008
Matsuoka US 2014/0312128 A1 Oct. 23, 2014
Appeal 2021-001826
Application 15/235,526
3
The following rejections are before us for review:
I. Claims 1–19, 28, and 29 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite.
II. Claims 1–19, 28, and 29 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Reckels and Matsuoka.

OPINION
Rejection I: Indefiniteness
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). Moreover, during examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). In other words, even under the broadest reasonable
interpretation, the Board’s construction “cannot be divorced from the
specification and the record evidence” (In re NTP, Inc., 654 F.3d 1279, 1288
(Fed.Cir.2011)) and “must be consistent with the one that those skilled in the
art would reach” (In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). A
construction that is “unreasonably broad” and which does not “reasonably
reflect the plain language and disclosure” will not pass muster. Microsoft
Corp. v. Proxyconn, Inc. v 789 F.3d 1292, 1298 (Fed. Cir. 2015).

Appeal 2021-001826
Application 15/235,526
4
Independent claims 1, 12, and 28: “having a variable cooling capacity”
Independent claims 1, 12, and 28 recite, in relevant part:
1. . . . a cooling system including at least one of a fan or a
pump, or at least one valve and connectable to a heat-producing
system, the cooling system having a variable cooling capacity
effected by varying the speed of at least one of the at least one
fan or pump, or by varying the flow rate of the at least one valve.
. . .
12. . . . a cooling system including at least one of a fan, a pump,
a valve, or a heat exchanger, and having a variable cooling
capacity and connectable to a heat-producing system of the
vehicle.
. . .
28. . . . a cooling system including a cooling device having a
variable cooling capacity and connectable to a heat-producing
system of the vehicle.
Appeal Br. A-1, A-3, A-5 (Claims App.) (emphases added).
The Examiner finds that the claimed phrase, “having a variable
cooling capacity,” is “unclear.” Non-Final Act. 5; see also Ans. 3. The
Examiner defines the claimed phrase “variable cooling capacity” as being
“[the] amount of heat which can be transferred out of the space being
temperature controlled.” Ans. 3. Thus, the Examiner finds that “[h]ow
much heat a system can transfer is a function not only of the components [of
the cooling system], but of the temperatures surrounding it,” and that
“[i]deal efficiency, to which actual operation numbers are compared, is
calculated using the cold sink and hot sink temperatures,” such that “the
cooling capacity of every cooling system varies.” Non-Final Act. 5; see also
Ans. 3 (“[t]he same cooling system, when operating at different conditions,
has a different ability to produce cooling,” for example, “if it is 60 degrees
outside, it is easier to remove heat from a vehicle or building than if it is 70
Appeal 2021-001826
Application 15/235,526
5
degrees outside”). The Examiner also finds that, with reference to
Appellant’s fans, pumps, and valves, “[a]n embodiment is an example; it is
not necessarily a definition.” Id.
Appellant submits, inter alia, that, “a cooling ‘capacity’ of a cooling
system refers to its facility to produce an amount of cooling,” and that, “[b]y
extension, a variable cooling capacity of a cooling system is the facility of
that cooling system to produce different amounts of cooling.” Appeal Br. 8.
Appellant also submits that the Specification “defines and provides clarity
and definiteness” for the claimed phrase “having a variable cooling
capacity”:
the specification describes an embodiment of a cooling system
having a variable cooling capacity that may be controlled
through the operation of different cooling devices within the
system, such as fans, a pump, or a valve. Even more specifically,
it states that one or more [of] these devices may individually have
variable cooling capacities, such as a variable speed in the case
of the fans and the pump, and a variable flow rate in the case of
the valve. Therefore, one example of a cooling system having a
variable cooling capacity, is a cooling system that can vary the
speed of certain devices to create more or less cooling, vary the
flow rate of certain devices to create more or less cooling, or
some combination thereof.
Appeal Br. 8 (citing Spec. ¶ 20); see also Reply Br. 1–2.
The Specification discloses, with reference to Figure 1, that
[f]or a cooling system, . . . it may be possible to determine a
certain cooling level capacity that is required to maintain the
desired temperatures of any particular heat-producing device
. . . . The desired cooling level capacity for any given heat
generation rate may be determined empirically and
preprogrammed into a control system, such as the control system
14. For example, one or more equations, lookup tables or curves
may be used to relate the desired cooling capacity to the heat
generation rate.
Appeal 2021-001826
Application 15/235,526
6
Spec. ¶ 27. Thus, the Specification refers to “a certain cooling level
capacity” as an amount of heat which is desired to be transferred out of a
heat-producing system (i.e., including heat-producing devices such as an
engine or a transmission) to maintain a desired temperature of the heat-
producing system—an interpretation consistent with the Examiner’s
understanding of “cooling capacity.” However, in this context, “cooling
capacity” refers to a desired level of cooling capacity necessary to achieve
desired heat-producing system temperature goals, wherein the variability is
determined by calculations to output different (or variable) goals. In other
words, this disclosure does not relate “cooling capacity” to the cooling
system itself, other than to set a capacity threshold that a cooling system
must have in order to achieve the heat-producing system’s variable (and
cooled) temperature goals.
As relied on by Appellant supra and consistent with the claim
recitation, the Specification also describes “cooling system 12” as having
“variable cooling capacity, which may be controlled, for example, through
operation of various cooling devices within the system—e.g., the fans 22,
24, 26, 28, the pump 52, the valve 58, or some combination of these,”
wherein “[o]ne or more of these cooling devices may individually have
variable cooling capacities—i.e., variable speed in the case of the fans 22,
24, 26, 28 and pump 52, and variable flow rates in the case of the valve 58.”
Spec. ¶ 20. For example, the Specification, with reference to Figure 3’s
graph 81, refers to the “cooling capacity output” of fans in a cooling system:
“the levels shown along the y-axis are normalized fan speeds that allow for
different sized fans to be operated using a common parameter indicative of
their cooling capacity output.” Id. ¶ 28. The Specification further discloses,
Appeal 2021-001826
Application 15/235,526
7
with reference to Figures 8 and 9, charts showing different (normalized)
output or cooling levels (i.e., variable cooling capacities) of certain
components of a cooling system, including fans, pumps, and valves,
depending on variations in parameters of the components (i.e., fan speed,
pump speed, and a “percentage open” valve position). See, e.g., Spec. ¶¶ 47,
48.
Thus, we construe the claimed phrase, “a cooling system having a
variable cooling capacity,” in view of the Specification, to mean a cooling
system capable of changing (or varying) its cooling capacity (i.e., its
operating level) to remove heat from a space (or heat-producing system), as
compared to a cooling system capable of only a constant operating level to
remove heat from a heat-producing system, regardless of whether the desired
temperature of the heat-producing system is variable. Similarly, we construe
the claimed phrase, as recited in independent claim 28, “a cooling device
having a variable cooling capacity,” in view of the Specification, to mean a
cooling device capable of changing (or varying) its cooling capacity (i.e., its
operating level) to remove heat from a space (or heat-producing system), as
compared to a cooling device capable of only a constant operating level to
remove heat from a heat-producing system, regardless of whether the desired
temperature of the heat-producing system is variable.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 12, and 28 as indefinite for reciting a cooling system
“having a variable cooling capacity.” To the extent the Examiner bases the
rejection of the dependent claims on this finding of indefiniteness relative to
independent claims 1, 12, and 28, we also do not sustain the Examiner’s
rejection of dependent claims 2–11, 13–19, and 29.
Appeal 2021-001826
Application 15/235,526
8
Independent claim 1: “or by varying the flow rate of the at least one valve”
The Examiner finds that
[a] flow rate is the rate at which a fluid flows. A valve does not
necessarily have a flow rate at all; it only exists when a
compressor or pump is operating to move fluid through the
system. Furthermore, the same degree of opening of the valve
will result in a different rate of flow through the valve if the pump
or compressor is operating at a different speed.
Non-Final Act. 5. In other words, the Examiner finds that “[t]he valve itself
does not have a flow rate; the refrigerant or other fluid flowing through the
valve has a flow rate.” Ans. 4.
Appellant submits that valves may be designed to have variable flow
rates, for example, valves may be designed to be fully open, at an
intermediate position, or fully closed. Appeal Br. 9; Reply Br. 2.
We agree with Appellant, in that the claimed phrase, “or by varying
the flow rate of the at least one valve” means that the flow rate of the fluid
passing through the valve may be changed or varied, as compared to a valve
that is either only fully open or fully closed. See, e.g., Spec. ¶¶ 47, 48, Figs.
1, 8, 9 (describing and depicting tables showing values having normalized
cooling output levels depending on the percentage the valve is open or based
on the volumetric flow rate through a device (i.e., radiator) adjacent and
downstream of the valve); see also id. ¶ 18 (“bypass valve 58 can be
controlled to output some or all of the coolant through a coolant line 60”).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 as indefinite for reciting “or by varying the flow rate of
the at least one valve.”

Appeal 2021-001826
Application 15/235,526
9
Dependent claim 9: “further configured to decrease the cooling capacity of
the cooling system”

Claim 9 depends (ultimately) from independent claim 1 and recites, in
relevant part,
wherein the control system is further configured to decrease the
cooling capacity of the cooling system when a result of the
arbitration is to control the capacity of the cooling system based
on the heat generation rate indicative of the future heat load of
the heat-producing system[,] and the heat generation rate
indicative of the future heat load of the heat-producing heat load
of the heat-producing system indicates a decrease in the future
heat load of the heat-producing system.
Appeal Br. A-2–A-3 (Claims App.) (emphases added).
The Examiner finds that “[b]ecause claim 9 depends upon claim 8,
which depends upon claim 6 and therefore includes all the limitations of
claim 6, it appears this may be an inadvertent double recitation of the control
of the cooling capacity.” Non-Final Act. 6; see also Ans. 4. The Examiner
explains that “[c]laim 9 recites that this is how the control system is ‘further
configured’, not that this is part of the already-recited control of the system
based upon the arbitration,” and “[i]t therefore appears this may be a
separate and additional step from the previously-recited control based upon
the arbitration.” Id.
Appellant argues, inter alia, that “[c]laim 6 claims that the control
system is further configured to control the capacity of the cooling system
based on an arbitration between two different cooling capacity levels,” and
that “claim 9 claims that the control system is further configured to decrease
the cooling capacity of the cooling system when the arbitration—reference
claim 6—yields a particular result and the requirements of [intervening]
Appeal 2021-001826
Application 15/235,526
10
claim 8 are met.” Appeal Br. 9. Appellant submits that claim 9 does not
“recite an arbitration”; rather,
[claim 9] describes how the control system is configured to
decrease the cooling capacity of the cooling system when two
events occur: (1) that the result of the arbitration is to control the
capacity of the cooling system in a certain way, and (2) that the
heat generation rate indicate of the future heat load indicates a
certain decrease.
Id. at 10.
Independent claim 1 recites a thermal management system comprising
a cooling system and a control system, and claim 6 (which depends on
independent claim 1), claim 8 (which depends from claim 6), and claim 9
(which depends from claim 8) each recite further configurations of the
control system recited in claim 1. Appeal Br. A-2–3 (Claims App.).
As argued by Appellant supra, claim 6 requires the control system of
claim 1 to be further configured to control the cooling system’s (cooling)
capacity based on an arbitration2 between two cooling capacity levels each
based on a different parameter: (i) a cooling capacity level based on the heat
generation rate indicative of the heat-producing system’s future heat load;
and (ii) a cooling capacity level based on the at least one input indicative of
the heat-producing system’s current heat load. Id. at A-2. Claim 8 requires
further configuring the control system of claim 1 to decrease the cooling
system’s cooling capacity based (at least in part) on the heat generation rate
indicative of the heat-producing system’s future heat load indicating a
decrease in the future heat load; however, claim 8 does not refer to or further

2 The Specification discloses that an arbitration is accomplished by a
comparator, for example, arbitrations between two parameters are performed
by first and second comparators 92, 110. See, e.g., Spec. ¶¶ 30, 37, 38,
Fig. 2.
Appeal 2021-001826
Application 15/235,526
11
limit the arbitration of claim 6, or condition the recited decrease of claim 8
on the cooling system’s cooling capacity based on a result of the arbitration
of claim 6. Id.
Consistent with Appellant’s argument, we construe claim 9 supra to
require the control system of claim 1 to be further configured to decrease the
cooling system’s cooling capacity when a result of the arbitration of claim 6
is to control the cooling system’s (cooling) capacity relative to a cooling
capacity level based on the first parameter of the arbitration of claim 6 (i.e.,
(i) the heat generation rate indicative of the heat-producing system’s future
heat load)—as opposed to the arbitration result being made relative to a
cooling capacity level based on the second parameter of the arbitration of
claim 6 (i.e., (ii) on the at least one input indicative of the heat-producing
system’s current heat load)). Although a comma after claim 9’s recitation of
parameter (i) of claim 6’s arbitration may facilitate the clarity of claim 9 (as
suggested by the brackets supra), we read claim 9 as continuing by reciting
another condition that must be met to decrease the cooling system’s cooling
capacity (in addition to the stated result of the arbitration), namely, that the
heat generation rate indicative of the heat-producing system’s future heat
load indicates a decrease in the future heat load. As these limitations are not
recited in independent claim 1 or the intervening claims, we find that claim 9
is not duplicative of the recitations of claims from which it depends.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claim 9 as indefinite for reciting “further configured to decrease the cooling
capacity of the cooling system.”

Appeal 2021-001826
Application 15/235,526
12
Dependent claim 9: “the arbitration”
The Examiner finds that “the arbitration” recited in claim 9 replaces
parameter (ii) of claim 6. Non-Final Act. 6. As discussed supra, we
construe claim 9 to merely indicate, by repeating, which outcome between
the two parameters (i) and (ii) of the arbitration of claim 6 must be the result
in order for the control system to be configured to decrease the cooling
system’s cooling capacity according to claim 9. In other words, we do not
construe claim 9 to state a new arbitration. Also as discussed supra and
regarding the last clause of claim 9 (i.e., “. . . and the heat generation rate
indicative of the future heat load of the heat-producing system indicates a
decrease in the future heat load of the heat-producing system”), we construe
this recitation to be an additional condition (i.e., in addition to the required
outcome of the arbitration) for configuring the control system to decrease the
cooling system’s cooling capacity according to claim 9, and not a recitation
of a new parameter in the arbitration of claim 6.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claim 9 as indefinite for reciting “the arbitration.”
Dependent claims 10 and 29: “a plurality of cooling device levels defining
a respective cooling capacity . . . independent of a maximum capacity”

Claim 10 depends from independent claim 1 and recites, in relevant
part,
wherein the cooling system includes a plurality of cooling
devices, including at least one of the at least one fan or pump, or
the at least one valve, operable to effect a change in the cooling
capacity of the cooling system, the control system being
preprogrammed with a plurality of cooling device levels defining
a respective cooling capacity of each of the cooling devices
independent of a maximum capacity of the respective cooling
device.
Appeal 2021-001826
Application 15/235,526
13
Appeal Br. A-3 (Claims App.). Similarly, claim 29 depends from
independent claim 28 and recites, in relevant part, “wherein the cooling
device is one of a fan, a pump, or a valve.” Id. at A-6.
The Examiner finds that
[a]lthough it is true that the optimal operation point may not be
the same as the maximum capacity, it is also true the two are
inherently related. At a minimum the point of optimal efficiency
cannot be greater than the maximum, because the device cannot
operate at the point. Additionally, there is inherently a maximum
operation rate, and the use of “a maximum” instead of “the
maximum” implies that more than one maximum rate is possible.
Non-Final Act. 7. The Examiner also finds that
although a valve, a fan, and a pump may each be ‘cooling
devices’ in the sense of being components of a cooling system,
none of these has a cooling capacity per se. A fan and a pump
each have a rate of operation, which determines how much air or
working fluid they process. A valve has a degree of opening,
which determines the pressure drop across it. None of these can,
acting alone, cool anything.
Id.; see also id. at 9 (relative to claim 29, “it is unclear what it means for a
valve to have a ‘variable cooling capacity’”); Ans. 5.
Appellant argues that “the claim language is clear on its face: the
control system is preprogrammed with certain values—in this case cooling
device levels,” and that “[t]hese cooling device levels define cooling
capacities of respective cooling devices, and they are independent of the
maximum capacity of the respective cooling device.” Appeal Br. 10.
We agree with Appellant. Claim 10 itself specifies that “cooling
device levels defin[e] a respective cooling capacity of each of the cooling
devices.” Appeal Br. A-3 (Claims App.). Moreover, the Specification
discloses, with reference to Figure 8, that “various cooling devices—in this
Appeal 2021-001826
Application 15/235,526
14
case fans, pumps, and valves—can have their output normalized so that each
can operate at the same level for the purposes of the control system.” Spec.
¶ 45; see also id. ¶ 28 (referring to different sized fans as each having “[a]
cooling capacity output”). Thus, responding to the Examiner’s finding that
the claimed cooling devices do not have “a cooling capacity per se,” we find
that, in the context of the Specification and claim 10, it is clear that the
claimed cooling devices (i.e., fans, pumps, and valves), are associated with
cooling device levels that define their respective cooling capacities (i.e.,
ability to remove heat), which also, according to claim 10, are operable to
effect a change in the cooling system’s cooling capacity (i.e., the overall
systems’ operating level and ability to remove heat from the heat-producing
system).
The Specification also discloses, with reference to Figure 8, that
“level 12 may be chosen to be the maximum amount of current that can be
supplied to the fan or pump motor [and] may be the maximum the valve can
be opened, which may often be 100%.” Spec. ¶ 46. Thus, we understand
that the claimed cooling devices have a maximum capacity (or greatest
possible level associated with the cooling capacity or output of the device)
based on the physical constraints of the device.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 10 and 29 as indefinite for reciting “a plurality of cooling device
levels defining a respective cooling capacity . . . independent of a maximum
capacity.”
Dependent claim 10: “maximum capacity”
The Examiner finds that “it is unclear what is considered to be the
‘maximum capacity’ of a valve.” Non-Final Act. 7.
Appeal 2021-001826
Application 15/235,526
15
Appellant argues that “[t]he maximum capacity of a valve is the
maximum flow rate” through the valve. Appeal Br. 11.
We find that Appellant’s definition would be the ordinary and
customary meaning as would be understood by one of ordinary skill in view
of the Specification, adding that the maximum capacity of a valve is when
the valve is in the fully open position, which is the valve position that allows
the highest possible fluid flow through the valve.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claim 10 for reciting “a maximum capacity of the respective cooling
device,” wherein the cooling device is a valve.
Dependent claim 11: “the control system being further configured to.”
Claim 11 depends from claim 1 and recites, in relevant part,
the control system being further configured to control the cooling
capacity of the cooling system in response to a heat generation
rate of the first heat-producing device [(i.e., the engine)] and in
response to a heat generation rate of the second heat-producing
device [(i.e., the transmission)], and wherein the control system
is further operable to control the cooling capacity of the cooling
system in response to at least one input indicative of a combined
current heat load of the first heat-producing device and the
second heat-producing device, the control system being further
configured to control the capacity of the cooling system based on
an arbitration of a cooling capacity level based on the heat
generation rate of the first heat-producing device, a cooling
capacity level based on the heat generation rate of the second
heat-producing device, and a cooling capacity level based on the
at least one input indicative of the combined current heat load of
the first heat-producing device and the second heat-producing
device.
Appeal Br. A-3 (Claims App.); see, e.g., Spec. ¶ 20.
The Examiner finds that these limitations of claim 11 “are, in
combination, confusing” and “appear to be separate and conflicting
Appeal 2021-001826
Application 15/235,526
16
recitations of the way the controller is configured.” Non-Final Act. 7–8; see
also Ans. 5.
Appellant argues that “[t]he control system of claim 11 is configured
to control the cooling capacity of the cooling system in response to any of a
number of different factors,” as recited in claim 11, wherein “none of them
conflict with any of the others.” Appeal Br. 11.
We agree with Appellant that the recitations of claim 11 recite non-
conflicting ways in which the control system may be configured. Indeed,
claim 11 sets forth controlling the cooling system’s cooling capacity based
on three factors (i.e., the engine’s heat generation rate, the transmission’s
heat generation rate, and an input indicative of a combined current heat load
from engine and transmission), and also based on an arbitration between
these three factors. Moreover, the Examiner does not identify, with
specificity, any conflict between the limitations which results in claim 11
being indefinite.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claim 11 as indefinite for reciting “the control system being further
configured to.”
Independent claim 12: “based on”
Independent claim 12 recites, in relevant part:
A thermal management system for a vehicle, comprising:
a control system including at least one controller and
configured to [(i)] increase the cooling capacity of the cooling
system to a first predetermined level based on a predicted
increase in a future load of the heat=producing system when a
temperature of the cooling system is at least a predetermined
temperature and the cooling system is operating below the first
predetermined level, and [(ii)] inhibit increasing the cooling
capacity of the cooling system to the first predetermined level
Appeal 2021-001826
Application 15/235,526
17
based on the predicted increase in the future heat load of the heat-
producing system when the temperature of the cooling system is
less than the predetermined temperature,
the control system being operable . . . [to] control the
cooling capacity of the cooling system based on a maximum of
a cooling capacity level based on at least one input indicative of
a future heat load of the heat-producing system and a cooling
capacity level based on the at least one input indicative of the
current heat load of the heat-producing system.
Appeal Br. A-3–4 (Claims App.) (emphasis added).
The Examiner finds that “the extensive use of ‘based on’ renders
unclear the metes [and] bounds of protection sought.” Non-Final Act. 8. In
particular, the Examiner finds that
it is unclear what it means for the capacity to be “based on a
maximum of a cooling capacity level based on the at least one
input indicative of a future heat load of the heat producing system
and a cooling capacity level based on the at least on input
indicative of the current heat load of the heat-producing
apparatus.”
Id. The Examiner also finds that “it is unclear what a cooling capacity level
‘based on’ the inputs means” and that “even if the elements to be compared
were clear, it is unclear what value would be assigned ‘based on’ the
maximum.” Id.; see also Ans. 6.
Appellant argues correctly that, “just because a phrase is used several
times in a claim is not a supportable basis [alone] for rejecting the claim as
indefinite—particularly when the phrase itself is not indefinite.” Appeal Br.
12. In other words, the Examiner fails to sufficiently identify any ambiguity
in the conditions recited by the “based on” claim terminology.
Regarding the Examiner’s finding of indefiniteness relative to the
claim limitation reciting controlling the cooling system’s capacity based on a
cooling capacity level’s maximum based on two cooling capacity levels each
Appeal 2021-001826
Application 15/235,526
18
based on different inputs, Appellant argues that “the control system is
operable to control the cooling capacity of the cooling system based on the
greater of two cooling capacity levels.” Appeal Br. 12.
The Specification discloses that
comparator 100 arbitrates a cooling capacity level based on
inputs indicative of the future heat load the input 108—and a
cooling capacity level based on inputs indicative of the current
heat load of the heat-producing system—the input 114. The
comparator 110 may arbitrate the inputs according to any method
effective to produce the desired outcome—e.g., it may choose a
maximum value of the inputs, it may modify one of the inputs
based on the other input, or it may choose to combine the inputs
in some other way. The result is a control effort 116, which may
be in the form of a level of operation of one or more of the
cooling devices.
Spec. ¶ 38 (emphasis added).
Thus, we find that claim 11 is sufficiently clear that the recitation of
controlling the cooling system’s capacity “based on a maximum of” two
cooling capacity levels means that the maximum of the two cooling capacity
levels is used as the basis of the control; in other words, “based on a
maximum of” implies a comparison, as discussed in the Specification.
Regarding the Examiner’s finding of indefiniteness relative to “what a
cooling capacity level ‘based on’ the inputs means,” Appellant argues that
“the control system uses the inputs and based on what it receives, it operates
to control the cooling capacity level of the cooling system.” Appeal Br. 12–
13.
The Specification discloses that “a number of inputs 72 related to the
first heat-producing device—i.e., the engine 36—are used as part of a
predictive cooling system” and “a number of inputs 74 related to the second
heat-producing device—i.e., the transmission 40—are also used as part of
Appeal 2021-001826
Application 15/235,526
19
the predictive cooling system” (id. ¶ 23), wherein “inputs 72 related to
engine operation may include such parameters as the engine speed, a
reference torque for the engine, and a percent torque for the engine” (id.) and
“inputs 74 related to the transmission operation may include a speed of the
transmission output shaft, a reference torque for the transmission retarder,
and a percent torque for the transmission retarder” (id. ¶ 25). The
Specification also discloses that “heat generation rate[s] may be calculated
from the inputs, for example, through an equation or through a lookup
table.” Id. ¶ 26. The Specification further discloses that “[t]he desired
cooling level capacity for any given heat generation rate may be determined
empirically and preprogrammed into a control system;” for example, “one or
more equations, lookup tables or curves may be used to relate the desired
cooling capacity to the heat generation rate.” Id. ¶ 27; see, e.g., id. at Fig. 2
(steps 84, 86).
Thus, we find that claim 11 is sufficiently clear that the two cooling
capacity levels are based on the recited inputs, because, for example, the
capacity levels may be determined empirically relative to heat generation
rates calculated from inputs defined by certain operating parameter of the
heat-producing devices.3
Regarding the Examiner’s finding of indefiniteness relative to a value
to be assigned “based on the maximum of” recitation, we find that the value
would be a cooling capacity level; for example, a cooling capacity level
between 0 and 12, as listed in the tables of Figures 8 and 9 of the
Specification.

3 Enablement is a legal determination of whether a patent enables one
skilled in the art to make and use the claimed invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986).
Appeal 2021-001826
Application 15/235,526
20
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 12 for reciting “based on.”
Dependent claims 6 and 14: “an arbitration”
Claim 6 depends from independent claim 1, and claim 14 depends
(ultimately) from independent claim 12, wherein claims 6 and 14 each
require an arbitration of two cooling capacity levels based on certain inputs.
In particular, claim 6 recites, in relevant part,
the control system being further configured to control the
[cooling] capacity of the cooling system based on an arbitration
of a cooling capacity level based on the heat generation rate
indicative of the future heat load of the heat-producing system
and a cooling capacity level based on the at least one input
indicative of the current heat load of the heat-producing system.
Appeal Br. A-2 (Claims App.). Claim 14 recites, in relevant part,
wherein the control system is further configured to control the
capacity of the cooling system based on an arbitration of a
cooling capacity level based on the predicted increase in the
future heat load of the at least two of the heat-producing devices
and a cooling capacity level based on a current heat load of the
at least two-heat-producing devices.
Id. at A-4 (Claims App.).
The Examiner finds that “it is unclear what ‘arbitration’ means in
[the] context [of claim 14].” Non-Final Act. 8, 9; see also Ans. 6–7.
As discussed supra relative to claim 12 and the disclosure of the
Specification at paragraph 38, the Specification describes the claim term
“arbitration” as a comparison between two different inputs, for example,
performed by comparator 110. The Specification specifically discloses that
“comparator 110 may arbitrate the inputs according to any method effective
to produce the desired outcome—e.g., it may choose a maximum value of
the inputs, it may modify one of the inputs based on the other input, or it
Appeal 2021-001826
Application 15/235,526
21
may choose to combine the inputs in some other way,” wherein “[t]he result
is a control effort 116, which may be in the form of a level of operation for
one or more of the cooling devices. Spec. ¶ 38. Thus, we find that, in view
of the Specification and in the context of claim 14, the meaning of the claim
term “an arbitration” is sufficiently clear, in that “an arbitration” is a
comparison between the two recited cooling capacity levels.
Accordingly, we do not sustain the Examiner’s rejection of claim 14
for reciting “an arbitration.”
Dependent claim 16: “to control the capacity of the cooling system based
on the predicted decrease in the future heat load.”
Claim 16 depends (ultimately) from independent claim 12 and recites,
in relevant part,
wherein the control system is further configured to decrease the
cooling capacity of the cooling system when a result of the
arbitration is to control the capacity of the cooling system based
on the predicted decrease in the future heat load of the at least
two of the heat-producing devices.
Appeal Br. A-4-5 (Claims App.).
The Examiner finds that “it is unclear how the arbitration of cooling
capacity levels can yield a result of ‘to control the capacity of the cooling
system based on the predicted decrease in the future heat load of the at least
two heat-producing devices,” because “using the predicted decrease in the
future heat load as an input to the arbitration means the control of the system
is already based on the predicted decrease in the future heat load.” Non-
Final Act. 8; see also Ans. 7–8.
Appellant submits that “claim 16 depends directly from claim 15, and
it is in claim 15 where the arbitration is introduced,” in that claim 15
specifies “an arbitration of cooling capacity levels associated with at least
Appeal 2021-001826
Application 15/235,526
22
two heat-producing devices.” Appeal Br. 15. Thus, Appellant argues that in
claim 16, the further configuration of the control system is clearly “to
decrease the cooling capacity of the system when a result of [the claim 15
arbitration] points to the first of the two arbitration factors recited in claim
15.” Id.
We find that Appellant’s interpretation of claims 15 and 16 is
factually correct, and that although claim 15 uses a predicted decrease in the
future heat load of the at least two of the heat producing devices to
determine a cooling capacity level subject to an arbitration, claim 16 further
requires the control system to be configured to decrease the cooling system’s
cooling capacity as a result of such arbitration choosing the option to control
the capacity based on such predicted decrease in the future heat load.
Accordingly, we do not sustain the Examiner’s rejection of claim 16
for reciting “to control the capacity of the cooling system based on the
predicted decrease in the future heat load.”
Rejection II
Regarding independent claim 1, the Examiner finds that Matsuoka
discloses, inter alia, a thermal management system, comprising a cooling
system including a fan and connectable to a heat-producing system, the
cooling system having a variable cooling capacity effected by varying the
speed of the fan; and a control system (i.e., “thermostat”) including a
controller and operable to control the cooling system’s cooling capacity in
response to an input indicative of a heat generation rate of the heat-
producing system (i.e., “historical data”). Non-Final Act. 11–12 (citing
Matsuoka ¶ 109). The Examiner determines that Matsuoka does not disclose
the thermal management system relative to a vehicle, and the Examiner
Appeal 2021-001826
Application 15/235,526
23
relies on Reckels for disclosing “the use of predictive control of an HVAC
system in a vehicle.” Non-Final Act. 12 (citing Reckels, Title, Abstr.). The
Examiner reasons that it would have been obvious “to implement
[Matsuoka’s] the thermostat and accompanying modeling to determine
thermostat settings . . . in a vehicle, as disclosed by Reckels . . . to permit the
energy savings.” Id.
Appellant argues that Matsuoka is improperly relied on by the
Examiner, because Matsuoka is non-analogous art to the claimed invention.
Appeal Br. 18–19. In particular, Appellant submits that Matsuoka is in the
field of endeavor of “thermal control of an ambient environment of a
building,” while the claimed invention is in the field of endeavor of “vehicle
thermal management.” Id. at 18. Appellant also submits that the problems
addressed in Matsuoka are “not reasonably pertinent to the particular
problem of thermal management of a vehicle, which is concerned with the
functionality, including efficiency, of mechanical or electromechanical
devices and system—not the comfort of building occupants.” Id.
The Examiner finds that “Matsuoka is pertinent to the problem of
thermal management.” Ans. 10.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference
Appeal 2021-001826
Application 15/235,526
24
is reasonably pertinent . . . if it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor's
attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).
We agree with Appellant that the field of endeavor of the claimed
invention is “a thermal management system and method for a vehicle.”
Spec. ¶ 1. We find that the field of endeavor of Matsuoka is thermodynamic
modeling of a structure. See, e.g., Matsuoka, Title, ¶ 26 (“[v]arious
methods, apparatus, systems, and computer-readable mediums are described
herein that concern the field of thermodynamic behavioral modeling of
structures”). Thus, Matsuoka is not from the same field of endeavor as the
field of Appellant’s endeavor.
Notwithstanding, a problem addressed by the inventors of the present
invention is a thermodynamic management system that “does not solely rely
on reaction to temperature changes that ha[ve] already taken place, but
rather, anticipates future temperature changes and adjusts the cooling system
before a significant temperature change occurs, thereby maintaining a more
constant operating temperature of the heat-producing device.” Spec. ¶ 2.
Similarly, Matsuoka discloses that an object of the invention is “to predict
the thermodynamic behavior,” wherein “[s]uch predictions may have a
variety of tangible, beneficial uses,” such as “accurately actuat[ing] [a
cooling] system in reaching or maintaining desired set point temperatures.”
Matsuoka ¶ 26. Thus, pursuant to prong two of the analogous art test, we
find that Matsuoka logically would have commended itself to an inventor’s
attention in considering the problem of relying solely on reactive cooling
Appeal 2021-001826
Application 15/235,526
25
systems, and thus, Matsuoka is properly relied on by the Examiner as
analogous art to the claimed invention.
Appellant argues that Matsuoka fails to disclose “the use of a heat
generation rate that indicates the future load of the heat-producing system.”
Appeal Br. 19; id. at 20 (“Matsuoka does not teach or suggest using a heat
generation rate as claimed.”). Appellant submits that “a heat generation rate
of a heat-producing system,” as recited in claim 1, means “how much heat is
generated by the heat-producing system per a period of time,” and that claim
1 requires that this rate must be used “as an indicator of future heat load.”
Id. at 20. In support, Appellant refers to the Specification for disclosing that
a heat generation rate has units of power such as kilowatts . . .
and may be determined from parameters such as an engine speed,
engine reference torque, and a percent engine torque when the
heat-producing device is an engine, or a speed of a transmission
output shaft, a reference torque for a transmission retarder, and
percent torque for the transmission retarder when the heat-
producing device is a transmission.
Id. (citing Spec. ¶¶ 24, 25).
The Examiner responds that Appellant is arguing limitations not
recited in claim 1, because claim 1 requires at least one input indicative of a
heat generation rate, and does not require that the heat generation rate itself
is the input. Ans. 10. The Examiner maintains that “[t]he use of historical
data (not just current temperature) regarding temperatures is indicative of the
heat generation rate.” Id.
Paragraph 109 of Matsuoka discloses, in relevant part,
Model fitting unit 648 may be operable to fit the basis function
weight factors associated with a set of basis functions to some or
all of the acquired data. . . . The weighting factors may be fit
using any suitable history of data, including . . . a number of days
in a range of 1 to 14. In fitting the weighting factors, model
Appeal 2021-001826
Application 15/235,526
26
fitting unit 648 may first identify one or more basis functions for
which representations are stored in the model parameter storage
element 650. . . . Model fitting unit 648 may then determine the
appropriate historical data stored in acquired data element 646 to
use . . . and fit the weighting factors to that historical data so that
the weighted basis functions characterize the historical
thermodynamic response of the structure and can thus be
subsequently used for predicting the future thermodynamic
response of the structure.
Matsuoka ¶ 109.
We find that the Examiner’s reference to Matsuoka’s use of historical
data alone, as disclosed in paragraph 109 of Matsuoka, without further
explanation, is insufficient to support the Examiner’s conclusion that
Matsuoka’s model uses an input indicative of a heat generation rate of the
heat-producing system. For example, to the extent Matsuoka’s structure is a
heat-producing system, the Examiner does not make any specific findings
relative to whether “basis functions characterizing an indoor temperature
trajectory of the structure” (id. at Abstr.) is an input indicative of a heat
generation rate of the heat-producing structure. Notably, such trajectories
are in response to a change in HVAC actuation state, and do not appear to be
trajectories (or perhaps increasing temperature rates over time) for the heat-
producing system itself. Id. In other words, we decline to speculate as to
why the Examiner finds the historical data (perhaps including basis
functions), as relied on by the Examiner relative to paragraph 109 of
Matsuoka, discloses the claimed input indicative of a heat generation rate of
a heat-producing device. See also In re Biedermann, 733 F.3d 329, 337
(Fed. Cir. 2013) (an applicant is entitled to fair opportunity to react to the
thrust of a rejection).
Appeal 2021-001826
Application 15/235,526
27
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and dependent claims 2–11, under 35 U.S.C. § 103, as
unpatentable over Matsuoka and Reckels. The Examiner relies on the same
deficient findings relative to Matsuoka in the rejections of independent
claims 12 and 28, and therefore, for essentially the same reasons, we also do
not sustain the Examiner’s rejection of dependent claims 13–19, and 29.
CONCLUSION
The Examiner’s decision rejecting claims 1–19, 28, and 29 is
reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19, 28,
29
112(b) Indefiniteness 1–19, 28,
29
1–19, 28,
29
103 Reckels, Matsuoka 1–19, 28,
29
Overall
Outcome
1–19, 28,
29
REVERSED