Ex Parte Keefover

Patent Trial and Appeal Board

Jun 21, 2017

13877484 (P.T.A.B. Jun. 21, 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.
DKT08116A 9960
EXAMINER
BOGUE, JESSE SAMUEL
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
13/877,484 04/03/2013
67424 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
06/22/2017
Robert D. Keefover
06/22/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. KEEFOVER
Appeal 2016-002450
Application 13/877,484
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert D. Keefover (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—7 and 9—13, which are all of the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is BorgWamer, Inc.
Appeal Br. 4.
2 Claim 8 is cancelled. Prelim. Amend. 3 (Apr. 3, 2013).
Appeal 2016-002450
Application 13/877,484
THE CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter on appeal.
1. A product comprising:
a turbocharger comprising a turbine torsionally connected
to a compressor
a first housing for said turbine,
a second housing for said compressor fixed with respect to
said first housing;
an exhaust gas recirculation valve mounted on at least: one
of said first or second housings; and
a low pressure exhaust gas reci rculation valve mounted on
said second housing.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Arnold
Spakowski
Joergl
Nishimori
US 6,145,313
US 7,213,613 B2
US 2009/0223219 A1
US 2012/0167862 A1
Nov. 14, 2000
May 8, 2007
Sept. 10, 2009
July 5, 2012
THE REJECTIONS
I. Claim 2 stands rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention
because it is unclear how a single exhaust gas recirculation valve is
mounted to multiple separate housings. Final Act. 2; Ans. 5
(indicating that the Amendment After Final (Mar. 25, 2015) did not
remedy this rejection).3
3 The rejection of claim 2 under 35 U.S.C. § 112(b) as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
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Application 13/877,484
II. Claims 1—3, 7, and 10-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Joergl and Arnold. Final Act. 3^4.
III. Claims 4, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Joergl, Arnold, and Spakowski. Id. at 5—7.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Joergl, Arnold, and Nishimori. Id. at 6.* * * 4
V. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Joergl, Arnold, Spakowski, and Nishimori. Id. at 7—9.
OPINION
Rejection I
The Examiner determines that the recitation in claim 2 of an “exhaust
gas recirculation valve mounted on said turbine and said compressor
housings” is indefinite because it is unclear how the exhaust gas
recirculation valve “is mounted to multiple separate housings as it indicates
a single valve.” Final Act. 2. We do not find the meaning of this recitation
to be unclear. Appellant has explained that “[a]n EGR valve is fully capable
the inventor or a joint inventor regards as the invention because it is unclear
if the exhaust gas recirculation valve of claim 2 is the same as the exhaust
gas recirculation valve of claim 1 (Final Act. 2) has been withdrawn. Adv.
Act. 1 (Apr. 13, 2015); Ans. 5. Similarly, the rejection of claim 3 under 35
U.S.C. § 112(b) as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention because it is unclear if the high pressure exhaust gas
recirculation valve of claim 3 is the same as the exhaust gas recirculation
valve of claim 1 (Final Act. 2—3) has been withdrawn. Adv. Act. 1 (Apr. 13,
2015).
4 Even though the Examiner does not specifically identify Arnold as part of
Rejections II—IV, each rejection refers to the claims as being unpatentable
over Joergl “as applied to” claim 1 or claim 3 above (Final Act. 5—6), and
the rejection of claims 1 and 3 includes Arnold (id. at 3).
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Application 13/877,484
of being mounted to any number of housings” and “[t]he term ‘mounted’ is a
structural limitation indicating that the [valve] is structurally connected to
both ‘said turbine and said compressor housings.’” Reply Br. 4—5 (emphasis
omitted). For these reasons, we do not sustain the rejection of claim 2 under
35 U.S.C. § 112(b) as indefinite.
Rejection II
The Examiner finds that Joergl discloses, inter alia, turbocharger 20
comprising turbine 24 torsionally connected to compressor 22, as well as a
housing for turbine 24 and a housing for compressor 22 “generally notated
by (30).” Final Act. 3. The Examiner acknowledges that housing 30 is not
expressly disclosed as “first and second housings” for the turbine and
compressor, respectively. Id. The Examiner also finds that Joergl discloses,
inter alia, an exhaust gas recirculation valve 34 mounted on at least one of
the turbine or compressor housing and a low pressure exhaust gas
recirculation valve 42 mounted on the compressor housing. Id. (citing Joergl
122).
The Examiner finds that Arnold discloses turbine housing 34 and
compressor housing 54 as first and second housings, respectively, “though
generally indicated as (16).” Id. at 4. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art
for the housing of Joergl to be a first (turbine) housing and
second (compressor) housing as disclosed in Arnold as this was
a well known construction assembly for a turbocharger that
would not effect the installation of EGR valves, and it would also
provide for the separate construction and installation of the
turbine and compressor components simplifying both
manufacture and maintenance.
Id.
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Application 13/877,484
The Examiner finds that separating a single housing into a turbine
housing and separate compressor housing would simplify both manufacture
and maintenance because
fewer individualized parts would need to be included in each
separately manufactured component. This would cause a simpler
construction of each housing as compared to a larger single, more
complex housing with more parts involved in a single piece of
construction. Additionally, should a component within the
turbine housing fail, or separately a component within the
compressor housing fail, the replacement of only one housing
would implicitly be simpler, easier, and more cost effective than
the replacement of the whole system, as would be required if they
were all one housing.
Ans. 3^4. The Examiner further finds that “Joergl[] expressly discloses the
locations of the EGR lines and valves as required by the instantly claimed
invention.” Id. at 4 (citing Joergl, Fig. 2).
Appellant argues that Joergl “merely discloses a single housing 30 for
both a turbine and a compressor.” Appeal Br. 10. Appellant also argues that
“Joergl does not disclose ‘an exhaust gas recirculation valve mounted on at
least one of said first or second housings.’” Id. (citing Statement of Fact 3).
Appellant explains that because Joergl discloses only a single housing, it
cannot disclose an exhaust valve mounted on at least one of the first or
second housings. Id. at 16 (Statement of Fact 3). We do not find these
arguments persuasive in that they fail to address the rejection as articulated
by the Examiner, which is not based on Joergl alone, but on modifying the
single housing 30 of Joergl so as to comprise a first housing for the turbine
and a second housing for the compressor. As to the mounting of an exhaust
gas recirculation valve on housing 30, we note at least Joergl’s disclosure of
inserting valves 34, 42, into housing 30. Joergl || 17, 37 (describing
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Application 13/877,484
forming the housing 30 by casting and then inserting the valves 34, 42 into
the housing 30 to integrate the components in housing 30).
With respect to the combination of Joergl and Arnold, Appellant first
argues that the Examiner-identified element 16 of Arnold is simply a
turbocharger, not first and second housings. Appeal Br. 10; id. at 16
(Statement of Fact 5) (citing Arnold, 2:49—57). The Examiner responds that
Arnold clearly indicates separate compressor housing 54 and separate
turbine housing 34. Ans. 3 (citing Arnold, 3:6—20, Figures). The Examiner
points to V-band component 98 that connects turbine housing 34 to center
housing 50 as supporting that turbine housing 34 and compressor housing 54
(which is located on an opposite side of center housing 50 as turbine housing
34) are separate housings. Id.', see also Arnold, Fig. 2, 3:65^4:2. We are not
persuaded that Arnold lacks first and second housings merely because
element 16 of Arnold identifies a turbocharger.
Appellant next argues that “[o]ne of ordinary skill in the art would not
be motivated to combine Joergl and Arnold for the purpose of ‘simplifying
both manufacture and maintenance’ as suggested by the Examiner.” Appeal
Br. 10. In particular, Appellant asserts “[i]t is unclear why, and the
Examiner has not shown how, splitting the housing of Joergl into a first and
second housing would simplify both manufacture and maintenance.” Id.
Appellant also argues that “[o]ne of ordinary skill in the art would not read
Joergl and Arnold and conclude that splitting the housing of Joergl into two
parts . . . would yield a product that is easier and less expensive to maintain
and manufacture as suggested by the Examiner.” Id. at 12.
Appellant’s argument is not persuasive because it insists upon an
explicit teaching, suggestion, or motivation in the prior art. The Supreme
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Application 13/877,484
Court has rejected such a rigid approach as being incompatible with its
precedent concerning obviousness. KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 415, 419 (2007). Rejections on obviousness grounds must be supported
by “some articulated reasoning with some rational underpinning” to combine
the known elements in the manner required in the claim at issue. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. However, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for [the PTO] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418. In other words, the rationale
to support a modification of the prior art need not be expressly stated in the
prior art and can be reasoned from knowledge generally available to one of
ordinary skill in the art. See MPEP § 2144(1) and cases cited therein.
Appellant has not demonstrated error in the Examiner’s finding regarding
the benefits of separating a single housing into separate turbine and
compressor housings, nor explained why the Examiner’s reasoning based on
simplifying manufacturing and maintenance is beyond the knowledge
available to one of ordinary skill in the art and/or lacks rational
underpinnings.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 1 is unpatentable over Joergl and
Arnold, and we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Joergl and Arnold. We also sustain the rejection of claims
2, 3, 7, 10, 11, and 12 for which Appellant relies on the same arguments and
reasoning we found unpersuasive in connection with claim 1. See Appeal
Br. 12.
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Application 13/877,484
Rejections III—V
Appellant’s arguments in support of the patentability of rejected
claims 4—6, 9, and 13 relate solely to the perceived deficiencies in the
combination of Joergl and Arnold. See Appeal Br. 12—15. Because we have
found no such deficiencies, we are not persuaded of error in the Examiner’s
rejections of claims 4—6, 9, and 13. Accordingly, we sustain, under
35 U.S.C. § 103(a), the rejections of: claims 4, 6, and 9 as unpatentable over
Joergl, Arnold, and Spakowski; claim 5 as unpatentable over Joergl, Arnold,
and Nishimori; and claim 13 as unpatentable over Joergl, Arnold,
Spakowski, and Nishimori.
DECISION
The Examiner’s rejection of claim 2 under 35 U.S.C. § 112(b) as
being indefinite is reversed.
The Examiner’s rejections of claims 1—7 and 9-13 under 35 U.S.C.
§ 103(a) 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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