Ex Parte KeefoverDownload PDFPatent Trial and Appeal BoardJun 21, 201713877484 (P.T.A.B. Jun. 21, 2017) Copy Citation 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 2 Appeal 2016-002450 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). 3 Appeal 2016-002450 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. 4 Appeal 2016-002450 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 5 Appeal 2016-002450 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 6 Appeal 2016-002450 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. 7 Appeal 2016-002450 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 8 Copy with citationCopy as parenthetical citation