Ex Parte Haeberer et al

Patent Trial and Appeal BoardApr 18, 2016

12520289 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/520,289 06/19/2009 34044 7590 04/20/2016 MICHAEL BEST & FRIEDRICH LLP (Bosch) 100 EAST WISCONSIN A VENUE MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Rainer Haeberer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 022862-9006 8481 EXAMINER MURPHY, KEVIN F ART UNIT PAPER NUMBER 3753 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAINER HAEBERER and MATTHIAS HORN Appeal2014-002602 Application 12/520,289 Technology Center 3700 Before JAMES P. CAL VE, WILLIAM A. CAPP and FREDERICK C. LANEY, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 12-18, 20-22, 24, 26-34, and 37--42. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). Appeal2014-002602 Application 12/520,289 THE INVENTION Appellants' invention relates to heating fluid in a vehicle exhaust system. Spec. i-fi-f l-12. Claim 12, the sole independent claim, is reproduced below, and is illustrative of the subject matter on appeal. 12. A device for supplying a fluid medium for metering a liquid reducing agent into an exhaust system for reducing pollutants in an exhaust gas, the device comprising: at least one supply line having a first heater and a line connection piece; at least one system component with an internal region having a second heater to heat the internal region; and at least one heat-conducting sleeve, wherein the at least one system component has a module connection piece coupled to the line connection piece to form an interface; wherein the at least one heat-conducting sleeve extends through the interface into the line connection piece and the module connection piece, wherein the heat-conducting sleeve is thermally coupled to the first heater and to the second heater for transmitting heat to the interface, and wherein the sleeve provides a fluid connection between the at least one supply line and the internal region of the at least one system component. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Rudbarg Lawless Davis Hofmann Argent us 3,789,188 us 3,791,415, us 4,883,943 us 5,884,475 us 5,921,591 2 Jan.29, 1974 Feb. 12, 1974 Nov. 28, 1989 Mar. 23, 1999 July 13, 1999 Appeal2014-002602 Application 12/520,289 The following rejections are before us for review: 1. Claims 12-18, 20, 21, 27-30, and 42 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Davis. 2. Claims 22, 24, 26, 31, 33, 34, 37 and 38 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis and Lawless. 3. Claims 27-30 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis and Hofmann. 4. Claim 31 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis, Lawless, and Hofmann. 5. Claim 32 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis and Argent. 6. Claims 39--41 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis and Rudbarg. OPINION Anticipation by Davis Claim 12 The Examiner finds that Davis discloses all of the limitations of claim 12. Final Action 2. In particular, the Examiner finds that Davis' heat pipe end 60 satisfies the limitation in claim 12 directed to a second heater. Id. Appellants traverse the rejection by arguing, among other things, that heat pipe end 60 is not a "heater" as that term is used in claim 12. Appeal Br. 5. In response, the Examiner states that Davis' heat pipe end 60 qualifies as a "heater" because it transfers heat to the fuel within the tank 10. Ans. 12. According to the Examiner, heat pipe end 60 meets the definition of a "heater," namely, "a device that imparts heat." 3 Appeal2014-002602 Application 12/520,289 The dispute between the Examiner and Appellants is largely a matter of claim construction. 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). We look to the specification to see if it provides a definition for claim terms. See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). However, "[e]ven when guidance is not provided in explicit definitional format, 'the specification may define claim terms 'by implication' such that the meaning may be found in or ascertained by a reading of the patent documents."' Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). The Specification does not define the term "heater" expressly. However, the Specification discloses a container heater 118 that brings a fluid to a working temperature. Spec i-f 18. The Specification also discloses a line heater 212 as a heating coil. Spec. i-f 22. The Specification also discloses a module heater 222 embodied as a heating coil that provides heat to line 218 and its internal region 220. Spec. i-f 27. The Specification further discloses a heat-conducting sleeve 224, that is inserted between supply line 120 and line 128. Spec. i-f 29. The heat- conducting sleeve 224 is in thermal contact with regions heated by heating elements 212 and 222 to transmit heat to interface 124. Spec. i-f 32. Such heat transfer occurs by either heat conduction or radiation. Id. 4 Appeal2014-002602 Application 12/520,289 Thus, the Specification differentiates between elements that actively generate heat (heater 118, 212, and 222) and elements that only passively conduct heat (sleeve 224). A person of ordinary skill in the art, having read the entire disclosure of Appellants' Specification, would not view a passive heat conducting element as a "heater." Davis similarly differentiates between a heater and a passive heat transfer element. Heat generated by the heater element of this invention is transferred directly, to the fuel in the tank by means of convection in accordance with a first embodiment of the invention, or by a passive heat transfer element in thermal contact with the heater in accordance with alternate embodiments of the invention. The passive heat transfer elements extends through the tank discharge opening and into the tank to provide heat inputs at selected points within the tank. Davis, col. 1, 11. 60-68 (emphasis added). One such example of a passive heat transfer element is a heat pipe. Various types of passive heat transfer elements may be used with an active element in accordance with this invention. When a heat pipe is used as a passive conduction element, heat is transferred to the opposite end of the heat pipe by means of evaporation and condensation of the working fluid circulating within the heat pipe. Id. col. 2, 11. 1---6 (emphasis added). Davis contains the following description of heat pipe end 60. Heat pipe 44 shown in FIG. 3 and 4 is a thin walled tube containing a working fluid which evaporates and condenses in accordance with the temperature it is subjected to along its length. In fitting 14 as shown in FIGS. 3 and 4, the heat pipe 44 is butt connected via coupling sleeve 42 to resistance heater rod 41. As current is passed through heater rod 41, the outside surface of the rod is heated. This heat is coupled by conduction 5 Appeal2014-002602 Application 12/520,289 to heat pipe 44 which causes the working fluid inside the heat pipe at the connection end to evaporate. A fluid circulation loop is then set up within heat pipe 44 as the fluid at the end of the heat tube that is immersed in the fuel is at a colder temperature than the fluid at the coupling sleeve end of the heat tube. Consequently, the vapor at end 60 condenses, giving up its latent heat of evaporation to the walls of heat pipe 44 and then, via convection, to the wax and fuel surrounding heat pipe end 60. In this manner, heat is efficiently transferred from resistance heater rod 41 to heat pipe end 60 and therefore heats the fuel within tank 10 in the critical areas in and adjacent to fuel tank discharge opening 46. Id. col. 4, 11. 14--34 (emphasis added). In view of the foregoing, we find that heat pipe end 60 is merely a passive heat conducting element and not a "heater" that actively generates heat. The Examiner erred in finding that heat pipe end 60 satisfies the "second heater" element of claim 12. For the reasons set forth above, we do not sustain the Examiner's anticipation rejection of claim 12. Claims 13-18, 20, 21, 27-30, and 42 These claims depend, directly or indirectly, from claim 12. Claims App. For the same reasons articulated above with respect to the anticipation rejection of claim 12, we do not sustain the anticipation rejection of claims 12-18, 20, 21, 27-30, and 42. Unpatentability of Claims 39-41 over Davis and Rudbarg Claim 39 The Examiner finds that Rudbarg discloses a heating conducting sleeve that extends axially from a first heater 65 to a second heater 65 (plurality of heaters along line 21 in Figure 1) through a coupling interface, as claimed. Final Action 10-11. The Examiner concludes that it would 6 Appeal2014-002602 Application 12/520,289 have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Davis such that additional heating elements are provided, including having a heating element surrounding opposite ends of the sleeve at the interface, as taught by Rudbarg, for the purpose of providing additional heating to thereby reduce the possibility of formations of wax layers within the fluid line (elimination of wax layers as desired by Davis). Id. at 11. Appellants traverse the Examiner's rejection by arguing that Davis fails to disclose a heat conducting sleeve that extends axially from the first heater to the second heater, a point already conceded by the Examiner. Appeal Br. 6. Appellants argue that it would not have been obvious to modify Davis as proposed because it would change the principle of operation of Davis. Id. at 7. Appellants also argue that it would not have been obvious to add heating elements to Davis as taught by Rudbarg because the Examiner already contends that Davis has two heaters. Id. In response, the Examiner states that the rejection relies on Rudbarg for the teaching regarding additional heaters around the sleeve. Ans. 12. The Examiner states that the rejection no longer relies on element 60 of Davis as the second heater. Id. Appellants' arguments do not apprise us of error in regards to the rejection of claim 39. Appellants' arguments attack Davis and Rudbarg individually rather than addressing the Examiner's proposed combination. However, it is well settled that non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). 7 Appeal2014-002602 Application 12/520,289 Appellants provide no persuasive explanation as to how the proposed combination purportedly changes the principle of operation of Davis. We sustain the unpatentability rejection of claim 39. Claims 40 and 41 Appellants traverse the Examiner's rejection of these two claims by raising essentially the same arguments that we previously discussed in connection with the rejection of claim 39 above. For essentially the same reasons, we sustain the unpatentability rejection of claims 40 and 41. Unpatentability of Other Claims Rejected over Combinations Based on David The Notice of Appeal states "Applicant hereby appeals to the Board of Patent Appeals and Interferences from the decision dated January 29, 2013 of the Examiner finally rejecting Claims 12-18, 20-22, 24, 26-34 and 37--42. Notice of Appeal, filed May 24, 2013. Thus, Appellants appealed all of the claims that were rejected finally by the Examiner. In the Appeal Brief, however, Appellants listed the Grounds of Rejection to Be Reviewed on Appeal as only grounds 1and6, i.e., anticipation of claims 12-18, 20, 21, 27-30, and 42 by Davis and the obviousness of claims 39--41 over Davis and Rudbarg. Appeal Br. 3. Appellants have waived any arguments as to grounds 2-5, and we summarily sustain those rejections. See Manual of Patent Examining Procedure,Â§ 1215.03 (9th Ed. Rev. 7, Nov. 2015). 8 Appeal2014-002602 Application 12/520,289 Claim 12 lVew Ground of Rejection Claim 12 is an independent claim and claim 39 depends directly from claim 12. Claims App. We previously sustained the Examiner's rejection of claim 39 as unpatentable over Davis and Rudbarg. Settled law maintains that a broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is unpatentable as obvious. See Soverain Software LLC v. Victoria's Secret Direct Brand Management, LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015). In view of our decision to sustain the Examiner's rejection of claim 39 as unpatentable as obvious, we hereby enter a NEW GROUND OF REJECTION that claim 12 is also unpatentable as obvious over Davis and Rudbarg. We also find that Rudbarg cures the deficiencies of Davis noted above for the rejection of claim 12, because Rudbarg discloses first and second heaters 65, 65, as recited in claim 12, and the Examiner has provided reasons supported by rational underpinnings for modifying Davis with these additional heating elements. See Final Action 10-11. As modified by the teachings of Rudbarg, Davis discloses and renders obvious claim 12. The Dependent Claims No inference should be drawn from the failure to make a NEW GROUND OF REJECTION of other claims. Should there be further prosecution before the Examiner, we leave to the Examiner to determine whether to reject these other claims. 1 1 See 37 C.F.R. Â§ 41.50(b). See also Manual of Patent Examining Procedure (MPEP), 8th ed., rev. 8, July 2010, Â§ 1213.02. Under 37 C.F.R. Â§ 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case. Because the exercise of 9 Appeal2014-002602 Application 12/520,289 DECISION The decision of the Examiner to reject claims 12-18, 20, 21, 27-30, and 42 as anticipated by Davis is REVERSED. The decision of the Examiner to reject claims 22, 24, 26, 31, 33, 34, 37, and 38 as unpatentable over Davis and Lawless is AFFIRMED. The decision of the Examiner to reject claims 27-30 as unpatentable over Davis and Hofmann is AFFIRMED. The decision of the Examiner to reject claim 31 as unpatentable over Davis, Lawless, and Hofmann is AFFIRMED. The decision of the Examiner to reject claim 32 as unpatentable over Davis and Argent is AFFIRMED. The decision of the Examiner to reject claims 39--41 as unpatentable over Davis and Rudbarg is AFFIRMED. We enter a NEW GROUND OF REJECTION rejecting claim 12 as unpatentable under 35 U.S.C. Â§ 103(a) over Davis and Rudbarg. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R Â§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: authority under 37 C.F.R. Â§ 41.50(b) is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to some but not all of the claims on appeal. 10 Appeal2014-002602 Application 12/520,289 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. Â§Â§ 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 11