Ex Parte Hart et al

Patent Trial and Appeal BoardMar 23, 2017

12967443 (P.T.A.B. Mar. 23, 2017)

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. 12/967,443 12/14/2010 Mitchell E. Hart P013512-GMVE-LCH 1615 81466 7590 03/27/2017 MacMillan, Sobanski & Todd, LLC - GM One Maritime Plaza 720 Water Street 5 th Floor Toledo, OH 43604 EXAMINER LAGUARDA, GONZALO ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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 @ mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITCHELL E. HART, MANOJ TUMMALA, and DAVID R. PARENT Appeal 2015-001719 Application 12/967,443 Technology Center 3700 Before MICHAEL C. ASTORINO, JAMES A. WORTH, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’ rejections of claims 1—9. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellants identify the real party in interest as “GM Global Technology Operations LLC.” (Appeal Br. 1.) Appeal 2015-001719 Application 12/967,443 STATEMENT OF THE CASE The Appellants’ invention “relates generally to fuel system assemblies for use on vehicles.” (Spec. 11.) Independent Claim 1. A vehicle fuel system, for use in a vehicle having an engine, comprising: a fuel tank having a fuel pump module area and a bulk area; a fuel pump mounted in the fuel pump module area and having an inlet and an outlet; a thermostatic valve having a fuel inlet connected to a return fuel line from the engine, a first outlet and a second outlet, the thermostatic valve configured to direct a fuel through the first outlet when a temperature of the fuel flowing from the return fuel line is below a predetermined threshold and to direct the fuel through the second outlet when the temperature is above the predetermined threshold; a cold fuel line connected to the first outlet of the thermostatic valve and extending to direct fuel adjacent to the inlet to the fuel pump; and a warm fuel line connected to the second outlet of the thermostatic valve and extending to direct fuel into the bulk area of the fuel tank away from the fuel pump. References Rich US 5,070,849 Dec. 10, 1991 Brown US 5,881,699 Mar. 16, 1999 Cort US 5,958,237 Sept. 28, 1999 Coha US 6,505,644 B2 Jan. 14, 2003 Rejections The Examiner rejects claims 1—3, 5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Brown and Coha. (Non-Final Action 3.) 2 Appeal 2015-001719 Application 12/967,443 The Examiner rejects claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Brown, Coha, and Cort. (Non-Final Action 5.) The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as unpatentable over Brown, Coha, and Rich. (Non-Final Action 6.) ANALYSIS Claim 1 is the sole independent claim on appeal, with the rest of the claims on appeal (i.e., claims 2—9) depending therefrom. (Appeal Br., Claims App.) Independent claim recites “[a] vehicle fuel system” comprising “a fuel tank” and “a fuel pump” having “an inlet.” (Appeal Br., Claims App.) The Examiner finds that Brown discloses a vehicle fuel system 10 comprising a fuel tank 12, a fuel pump 20, and a pump inlet (boot lift 32 of manifold 30). (See Non-Final Action 3; see Answer 4.) It is our understanding that the Examiner considers Brown’s item 20 and item 32 to together form the claimed fuel pump. (See Brown Fig. 1.) Independent claim 1 also recites that the fuel tank has “a bulk area” and “a warm fuel line” that “extend[s] to direct fuel into the bulk area of the fuel tank away from the fuel pump.” (Appeal Br., Claims App.) The Examiner finds that Brown’s fuel tank 12 has a bulk area and a warm fuel line (manifold outlet 98) that directs fuel into this bulk area. (See Non-Final Action 3^4; see also Answer 6.) It is our understanding that the Examiner considers the entire area in Brown’s fuel tank 12 surrounding manifold 30 to be the “bulk area” of fuel tank 12. (See Brown Figs. 1,3, 5a.) Independent claim 1 further recites that the fuel tank has a “fuel pump module area” and that the fuel pump is “mounted in the fuel pump module 3 Appeal 2015-001719 Application 12/967,443 area.” (Appeal Br., Claims App.) The Examiner finds that Brown does not disclose that its fuel tank 12 has a fuel pump module area but that Coha teaches that a fuel tank is a “known location” to place a reservoir that serves as a fuel pump module area. (See Non-Final Action 4.) The Examiner determines that it would have been obvious to modify Brown “with the fuel pump module area inside the fuel tank” as taught by Coha. (Id.) The Appellants argue that the Examiner does not adequately establish that the proposed modification to Brown would result in the vehicle fuel system recited in independent claim 1. (See Appeal Br. 6—7; see also Reply Br. 2-4.) The Appellants contend that modifying Brown in view of the teachings of Coha would result in Brown “releasing fuel into [a] fuel reservoir” and not into “the bulk area of the fuel tank.” (Appeal Br. 7.) In other words, the Appellants submit that the modified version of Brown’s fuel system would not include the warm fuel line required by independent claim 1. We are persuaded by the Appellants’ position because the Examiner does not adequately explain the fate of manifold outlet 98 in the modified version of Brown’s fuel system 10. As discussed above, the Examiner equates Brown’s manifold outlet 98 to the claimed warm fuel line; and, in the pre-modification version of Brown’s fuel system 10, manifold outlet 98 directs fuel into the bulk area of fuel tank 12. However, the Examiner provides insufficient findings regarding the relocation of manifold 30 in fuel tank 12 in Brown’s modified fuel system 10, much less the whereabouts and/or extension of its outlet 98. As such, on the record before us, we are unable to ascertain whether, in the modified version of Brown’s fuel system 10, manifold outlet 98 would constitute a warm fuel line “extending 4 Appeal 2015-001719 Application 12/967,443 to direct fuel into the bulk area of the fuel tank” as required by independent claim 1. Thus we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Brown and Coha. The Examiner’s further findings and determinations with respect to the dependent claims and the additional prior art references (see Non-Final Action 4—7) do not compensate for the above-discussed shortcoming in the Examiner’s rejection of independent claim 1. Thus, we do not sustain the Examiner’s rejection of dependent claims 2, 3, 5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Brown and Coha; we do not sustain the Examiner’s rejection of dependent claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Brown, Coha, and Cort; and we do not sustain the Examiner’s rejection of dependent claim 7 under 35 U.S.C. § 103(a) as unpatentable over Brown, Coha, and Rich. DECISION We REVERSE the Examiner’s rejections of claims 1—9. REVERSED 5