Ex Parte Hussain et alDownload PDFPatent Trial and Appeal BoardMar 19, 201814058631 (P.T.A.B. Mar. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/058,631 10/21/2013 46442 7590 03/21/2018 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Quazi Hussain 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. 83387355; 67186-028PUS1 5470 EXAMINER NIEVES, NELSON J ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 03/21/2018 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte QUAZI HUSSAIN, WILLIAM SAMUAL SCHWARTZ, MARK JOHN JENNINGS, and DAVID RICHENS BRIGHAM Appeal2017-000846 Application 14/058,631 Technology Center 3700 Before, LISA M. GUIJT, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-000846 Application 14/058,631 STATEMENT OF THE CASE Appellants Quazi Hussain et al. appeal 1 under 35 U.S.C. § 134(a) from the Examiner's decision, as set forth in the Final Office Action dated February 1, 2016 ("Final Act."), rejecting claims 1--4 and 6-21. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to an electric vehicle thermal barrier. Claims 1, 15, and 20 are the independent claims on appeal. Claims 1 and 3, reproduced below with disputed limitations italicized for emphasis, are illustrative of the claimed subject matter: 1. An electric vehicle powertrain, comprising: a thermal barrier secured directly against a surface of an engine or a surface of a transaxle[,] the thermal barrier is configured to retain thermal energy generated during operation of an electric vehicle. 3. The electric vehicle powertrain of claim 1, wherein the thermal barrier is secured to the surface of the engine, and the surface of the engine is an interior surface within the engine. Appellants identify Ford Global Technologies, LLC as the real party in interest. Appeal Brief, dated May 17, 2016 ("Appeal Br."), at 1. 2 Appeal2017-000846 Application 14/058,631 REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Nagumo Wakao Krus Mirossay Yu Erjawetz Obrist2 Paik us 4,254,621 US 2005/0064989 Al US 2009/0026008 Al US 2011/0017340 Al US 2011/0288717 Al US 2012/0129651 Al WO 2012/056275 Al WO 2014/195153 Al REJECTIONS The Examiner made the following rejections: Mar. 10, 1981 Mar. 24, 2005 Jan.29,2009 Jan. 27, 2011 Nov. 24, 2011 May 24, 2012 Dec. 5, 2013 Dec. 11, 2014 1. Claims 1, 7, 15, and 20 stand rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Wakao. 2. Claims 1, 2, 8-10, 12, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Obrist, Paik, and Wakao. 3 3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Obrist, Paik, Wakao, and Krus. 4. Claims 3, 6, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Obrist, Paik, Wakao, and Nagumo. 2 For translation purposes, the Examiner relies on Obrist (US 2013/0319349 Al, published December 5, 2013). Final Act. 4. 3 The inclusion of claim 5 in this rejection is a typographical error; claim 5 has been cancelled. See Amendment filed Nov. 11, 2015. In addition, although claims 9 and 1 7 are omitted from the Examiner's statement of the rejection, the Examiner provides findings and reasoning for rejecting claims 9 and 17 in view of Obrist, Paik, and Wakao. Therefore, the omission of claims 9 and 17 is also a typographical error. Final Act. 4, 6-7, 8-9. 3 Appeal2017-000846 Application 14/058,631 5. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Obrist, Paik, Wakao, and Mirossay. 6. Claims 1, 12, 15, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Erjawetz. 7. Claims 13, 14, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Erjawetz and Yu. DISCUSSION Appellants seek our review of the rejections of claims 3, 6, 13, 14, 16, 18, and 19. Appeal Br. 2. Rejections 1-3, 5, and 6: Claims 1, 2, 4, 7-12, 15, 17, 20, and 21 Because Appellants do not contest Rejections 1-3, 5, and 6, the rejections of claims 1, 2, 4, 7-12, 15, 17, 20, and 21 are summarily sustained. Re} ections 4 and 7: Claims 3, 6, and 16 as Unpatentable Over Obrist, Paik, Wakao, and Nagumo, and Claims 13, 14, 18, and 19 as Unpatentable Over Erjawetz and Yu Appellants seek our review of the rejections of claims 3, 6, 13, and 14, which depend from independent claim 1, and the rejections of claims 16, 18, and 19, which depend from independent claim 15. Appeal Br. 2. With regard to independent claims 1 and 15, the Examiner finds that Obrist's thermally insulated electric vehicle powertrain discloses all but one of the limitations of claims 1 and 15. Final Act. 4--5, 7-8. The Examiner finds that Obrist does not explicitly teach the limitation reciting that the thermal barrier is secured directly against a surface of an engine or a 4 Appeal2017-000846 Application 14/058,631 transaxle. Id. For this missing limitation, the Examiner finds that Paik discloses a thermal barrier secured directly against a surface of an engine. See, e.g., id. at 5 (citing Paik Abstract ("thermally insulated internal combustion engine, wherein the surface of one or more parts of the internal combustion engine is surrounded completely or partially with a polyurethane foam")). The Examiner determines it would have been obvious "to have modified Obrist and configured the thermal barrier to be directly attached to the engine as taught by the thermal insulation engine of Paik." Id. Claim 3 Claim 3 recites that "the thermal barrier is secured to the surface of the engine, and the surface of the engine is an interior surface within the engine." The Examiner states that although the combination of Obrist and Paik discloses that the thermal barrier is secured directly to the engine surface as recited in claim 1, the combination does not explicitly teach that the insulation is located on "an interior surface of the engine." Final Act. 9--10. For this missing limitation, the Examiner finds that Nagumo discloses that the thermal (or insulating) layer (i.e., platy block 20) is secured to an internal engine surface. Id. at 10. The Examiner determines that it would have been obvious to modify the combination of Obrist and Paik to locate the thermal insulation layer on the interior engine surface as taught by Nagumo to enhance the thermal efficiency of the engine and to decrease the amount of unburned hydrocarbons. Id. (citing Nagumo 1: 11-26). Appellants contend that the Examiner's rejection is erroneous for two reasons. First, Appellants argue that claim 3 requires that the thermal barrier 5 Appeal2017-000846 Application 14/058,631 is "separate and distinct from the engine" whereas Nagumo's "platy block 20 is an integral portion or area of an engine." Appeal Br. 5. Appellants do not identify any support in the Specification for their proposed definition of "thermal barrier" but merely argue that "the thermal barrier is separate and distinct from the engine because the thermal barrier can secure to a surface of the engine." Id. In support, Appellants submit that [i]f the thermal barrier were part of the engine, the thermal barrier could not be secured to a surface of the engine. That is, because the engine is recited in a manner where the engine exists without the thermal barrier, interpreting a portion of an engine as teaching the thermal barrier is misplaced. Reply Brief, dated October 17, 2016 ("Reply Br."), at 2 (emphasis added). In response to Appellants' argument, the Examiner explains that "secured" is construed as "[f]ixed or fastened so as not to give away, become loose, or be lost." Answer, dated September 9, 2016 ("Ans."), at 2- 3 (citing Oxford Dictionary). The Examiner also explains that Nagumo explicitly discloses that the "heat-insulating layer [is] secured to a cast metal member of an internal combustion engine." Ans. 3 (citing Nagumo Abstract and figures showing the heat-insulating layer 20 is "directly secured" to the interior engine surface). 4 Under the ordinary definition of "secured" and usage by those skilled in the art, Nagumo's heat-insulating layer is "secured" to the interior engine surface. Appellants do not persuasively explain why the Examiner's proposed definition is inconsistent with the Specification. In this regard, we note, for 4 Nagumo discloses that platy block 20 is embedded in a surface of cast member 10 (i.e., the cylinder head of the engine block of a combustion engine), and is, therefore, fixedto the engine, as determined by the Examiner. Nagumo 2:52---60. 6 Appeal2017-000846 Application 14/058,631 example, that claim 16 recites "securing the thermal barrier directly to an engine block" and "the thermal barrier [is] separate and distinct from the engine block." Appeal Br. 12 (Claims App.) (emphasis added). Paragraph 8 of the Specification states the "thermal barrier [is] secured relative to an engine." Paragraph 15 states "[i]n a further, non-limiting embodiment ... , the thermal barrier is separate and distinct from the engine." Thus, usage of the terms "secured" and "securing" is broad, and does not require that the thermal barrier must be "separate and distinct" from the engine as argued by Appellants. It would be improper for us to import limitations from the Specification (or claim 16) into claim 3, particularly where Appellants have chosen to use language in claim 3 that is broader than the language used to describe embodiments in the Specification. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellants' argument is not persuasive. Second, Appellants argue that the Examiner presented a new rejection in the Advisory Action, dated April 6, 2016. However, the failure of an Examiner to designate a New Ground of Rejection is a matter reviewable by petition under 3 7 C.F .R. § 1.181 (a), and, thus, is not within the jurisdiction of the Board. For the reasons above, the rejection of claim 3 is sustained. Claim 6 Appellants argue that "[ f]or at least the reasons mentioned above in response to the rejection of claim 3, Obrist, as modified by Paik, Wakao, and N agumo fails to teach or suggest each feature of [] claim [ 6] and the rejection should be reversed." Appeal Br. 6. Because the rejection of claim 7 Appeal2017-000846 Application 14/058,631 3 is sustained, Appellants' argument is not persuasive. The rejection of claim 6 is sustained. Claim 16 Claim 16 recites "securing the thermal barrier directly to an engine block of the engine, the thermal barrier separate and distinct from the engine block." Appellants argue that "[ f]or at least the reasons mentioned above in response to the rejection of claim 3, Obrist, as modified by Paik, Wakao, and N agumo fails to teach or suggest each feature of [] claim [ 6] and the rejection should be reversed." Appeal Br. 6. Because the rejection of claim 3 is sustained, Appellants' argument is not persuasive. Appellants also argue that Nagumo's "platy block 20 is not 'separate and distinct' from an engine block." Appeal Br. 6. However, the Examiner finds that Obrist, not Nagumo, discloses a "thermal barrier separate and distinct from the engine block." Ans. 4; see also Final Act. 10-11. We also note that Paik discloses that a thermally insulating foam surrounds the parts of an engine such that the foam is separate and distinct from the engine block. See, e.g., Paik Abstract. Because Appellants do not address the rejection as articulated by the Examiner, they do not identify error by the Examiner. The rejection of claim 16 is sustained. Claim 13 Claim 13 recites "the vehicle further comprising at least one grille shutter moveable between a first position that permits a first amount of 8 Appeal2017-000846 Application 14/058,631 airflow to the electric vehicle powertrain when the vehicle is operating, and a second position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating, the first amount of airflow greater than the second amount of airflow." The Examiner finds, in part, that Yu discloses a shutter moveable between a first position that permits a first amount of airflow to the electric vehicle powertrain when the vehicle is operating, and a second position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating. Final Act. 15 (citing Yu, Abstract, i-fi-15, 27, 29). Appellants argue that the Examiner's finding is erroneous for several reasons. First. Appellants argue that because "the shutter 14 is only moved when the vehicle is operating, the shutter 14 is not moveable to 'a second position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating' as is the claimed grille shutter." Appeal Br. 7 (emphasis omitted). In response to Appellants' argument, the Examiner explains that "Yu teaches a shutter (14) movable between a first position when the vehicle is operating (vehicle moving [speed more than OJ) and a second position when the vehicle is not operating (vehicle not moving [speed is OJ)." Ans. 5 (citing Yu i127 ("The modification amounts may modify the amount the shutter is opened so that the shutter 14 is more opened or more closed, or the modification amounts may set a percentage opening value for the shutter 14."), and i129 ("In other words, for increasing values of vehicle speed, the modification amount for opening of the shutter decreases.")). The Examiner, thus, finds that "when the vehicle is in operation the vehicle speed is high and when the vehicle is not in operation the vehicle speed is 9 Appeal2017-000846 Application 14/058,631 less than when is in operation (i.e. speed more than 0 is greater than O)." Id. We agree, in that the Examiner correctly finds that Yu discloses "the first amount of air is greater than the second amount of air," and Appellants do not identify error in the Examiner's findings. Id. Second, Appellants argue "the Examiner has not articulated a reasoning having a rational basis that would cause the skilled person to modify Wakao." Appeal Br. 7. However, in the next sentence, Appellants restate the Examiner's reasoning for combining Wakao and Yu- "the Examiner states that it would be obvious to integrate a shutter from Yu into the system of Wakao to 'provide proper cooling to the engine based on the operation state of the vehicle by providing a variation of mass of air."' Id. Appellants' conclusory statement does not explain why the Examiner's reasoning lacks a rational basis to the skilled artisan, and, thus, is not persuasive. Third, Appellants argue that the Examiner's reasoning for combining Wakao and Yu "is based on the Appellant's disclosure and is not based on facts gleaned from the prior art." Id.; see also Reply Br. 3. Contrary to Appellants' argument, an express teaching or motivation in the references is not required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, the Examiner need only articulate a reason to combine the references with some rational underpinning to support the legal conclusion of obviousness. Id. As discussed above, Appellants do not explain why the Examiner's articulated reasoning lacks a rational basis. In addition, the Examiner states the articulated reasoning is fully supported by paragraphs 17 and 18 of Yu. Ans. 5. Appellants do not address the Examiner's explanation, and, thus, do not identify error. Reply Br. 3. Moreover, 10 Appeal2017-000846 Application 14/058,631 Appellants' argument also does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellants' assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The rejection of claim 13 is sustained. Claim 14 Claim 14 recites a vehicle further comprising "a panel that is moveable between a retracted position that permits a first amount of airflow to the electric vehicle powertrain when the vehicle is operating, and an extended position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating, the first amount of airflow greater than the second amount of airflow." Appellants argue that "[ c ]laim 14 is patentable for the reasons mentioned in response to the rejection of claim 13." Appeal Br. 8. Because the rejection of claim 13 is sustained, Appellants' argument is not persuasive. Appellants also argue that Yu' s rotating shutter 14 is not a panel which is moveable between retracted and extended positions, in that "[r]otating a shutter is not retracting and extending a panel." Id. Appellants further argue that the "Specification makes clear in paragraphs [0058] and [0059] that a movable device selectively extended to block air flow into an interior and retracted to permit air flow into an interior is different than a movable device having shutters that are actively rotated." Reply Br. 4. 11 Appeal2017-000846 Application 14/058,631 Appellants' argument is not persuasive. Claim 14 merely states the panel is "moveable" between a retracted and extended position, and does not exclude rotation of the panel to achieve such retracted and extended positions, as argued by Appellants. As the Examiner correctly finds, Figures 2a-2c of Yu disclose "the panel has a retracted position (i.e. Fig 2c) and an extended position (i.e. Fig 2a) wherein the retracted and extended positions are in view of the vertical axis." Ans. 6. The rejection of claim 14 is sustained. Claim 18 Claim 18 recites "actuating at least one grille shutter between a first position that permits a first amount of airflow to the electric vehicle powertrain when the vehicle is operating, and a second position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating." Appellants argue that because "the shutter 14 in Yu is only moveable when the vehicle is operating, the shutter 14 is not moveable to 'a second position that permits a second amount of aiiflow to the electric vehicle powertrain when the vehicle is not operating' as is the claimed grille shutter," and because "the cited art fails to connect operation of a vehicle to a position of the shutter 14, the Examiner's reasoning for the modification is not rationally based and is not gleaned from the cited art." Appeal Br. 9. These arguments are the same arguments made with respect to claim 13. For the reasons discussed above with respect to claim 13, Appellants' arguments are not persuasive. The rejection of claim 18 is sustained. 12 Appeal2017-000846 Application 14/058,631 Claim 19 Claim 19 recites "moving a panel between a retracted position that permits a first amount of airflow to the electric vehicle powertrain when the vehicle is operating, and an extended position that permits a second amount of airflow to the electric vehicle powertrain when the vehicle is not operating." Appellants argue that claim 19 is patentable for the reasons mentioned in response to the rejection of claim[s] 14 and 15." Appeal Br. 9. As discussed above with respect to claims 14 and 15, Appellants' arguments are not persuasive. The rejection of claim 19 is sustained. DECISION For the above reasons, the Examiner's rejections of claims 1--4 and 6- 21 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation