Ex Parte Hussain et al

Patent Trial and Appeal Board

Mar 19, 2018

14058631 (P.T.A.B. Mar. 19, 2018)

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.
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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.
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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
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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
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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.
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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
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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
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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
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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,
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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.
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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.
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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
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