Ex Parte Kuehnel

Patent Trial and Appeal BoardMay 31, 2016

12630530 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/630,530 134603 ABB 7590 FILING DATE 12/03/2009 06/03/2016 C/O Taft Stettinius & Hollister LLP One Indiana Square, Ste. 3500 Indianapolis, IN 46204-2013 FIRST NAMED INVENTOR Janpeter KUEHNEL 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. 1004501-001073 9915 EXAMINER HTAY,AYE SU MON ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 06/03/2016 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): taft-ip-docket@taftlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JANPETER KUEHNEL Appeal2014-002579 Application 12/630,5301 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1 and 3-11. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant's claimed invention relates to "[a] compressor of an exhaust-gas turbocharger." (Spec. i-f 8.) 1 According to Appellant, the real party in interest is ABB Turbo Systems AG. (Appeal Br. 2.) Appeal2014-002579 Application 12/630,530 Claims 1 and 11 are the independent claims on appeal. Claim 1 is representative and reproduced below: 1. A compressor of an exhaust-gas turbocharger, comprising: a rotatably mounted compressor wheel; a main flow duct for supplying a medium for compression to the compressor wheel; and a circulation chamber, arranged radially outside the main flow duct and delimited from the main flow duct by a contoured wall, which extends from an intake region of the main flow duct to a circulation opening formed into the contoured wall in a region of rotor blades of the compressor wheel, with the contoured wall being fastened to a housing of the compressor by a plurality of struts in the circulation chamber, wherein a spacing between any directly adjacent struts is different in a circumferential direction than a spacing between any other directly adjacent struts, the contoured wall having a non-uniform stiffness over its circumference. REJECTIONS2 Claims 1, 3-5, 7-9, and 11 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Church (US 5,399,064, iss. Mar. 21, 1995) and Nakao (US 2001/0028839 Al, pub. Oct. 11, 2001). Claims 6 and 10 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Church, Nakao, and Zuhn (US 3,143,103, iss. Aug. 4, 1964). 2 Claims 7-10 were rejected under 35 U.S.C. Â§ 112, second paragraph, in the Final Office Action. (See Final Action 3--4.) Appellant's amendment, filed April 17, 2013, addressed the basis for the rejection and was entered by the Examiner. (See Advisory Action mailed May 7, 2013.) The Examiner indicates that the rejection has been overcome. (See Answer 6.) Therefore, we treat the failure of the Answer to indicate the withdrawal of the rejection of claims 7-10 under 35 U.S.C. Â§ 112, second paragraph, as inadvertent. 2 Appeal2014-002579 Application 12/630,530 FINDINGS OF FACT We rely on the Examiner's findings of fact stated in the Final Office Action and in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS Claim 1 is rejected underÂ§ 103(a) as being unpatentable over Church and Nakao. Claim 1 recites, in relevant part: the contoured wall being fastened to a housing of the compressor by a plurality of struts in the circulation chamber, wherein a spacing between any directly adjacent struts is different in a circumferential direction than a spacing between any other directly adjacent struts, the contoured wall having a non-uniform stiffness over its circumference. The Examiner finds that Church discloses "the contoured wall [ ( 116 inner wall)] being fastened to a housing (76 intake housing) of the compressor by a plurality of struts (146 deflector supports; 132 webs) in the circulation chamber" and "a spacing ... between adjacent struts." (Final Action 5.) The Examiner finds that Church "does not disclose: Wherein a spacing between any directly adjacent struts is different in a circumferential direction than a spacing between any other directly adjacent struts." (Id. at 6.) However, the Examiner finds that Nakao teaches "a plurality of struts (12 guide plates) in the circulation chamber" and that "the plurality of struts may be arbitrarily spaced." (Id. at 7 .) The Examiner determines that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the spacing of the struts of Church et al. by arbitrarily spacing them as taught by Nakao ... for the purpose of changing the direction of the flow as desired. 3 Appeal2014-002579 Application 12/630,530 (Final Action 7, emphasis added.) Appellant argues that there is no motivation to combine Church and Nakao. (See Appeal Br. 5-7, Reply Br. 2.) In particular, Appellant asserts that, in Nakao, "[t]here is no disclosed relation of the arrangement of the guide plates to reducing excitations per excitation order." (Appeal Br. 6.) Nor is there a "disclosure or suggestion in either of the cited references that by providing a non-uniform distribution of the support ribs, the available excitation energy can be distributed between different excitation orders." (Id. at7.) Appellant, however, does not directly address the Examiner's articulated reason for modifying Church in view of Nakao, namely "for the purpose of changing the direction of the flow as desired." (Final Action 7.) Moreover, the Examiner need not establish that one of ordinary skill in the art would have combined the teachings of Church and Nakao for the same reasons proffered by Appellant. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (In the obviousness determination, "neither the particular motivation nor the avowed purpose of the [Appellant] controls."). Therefore, Appellant has not persuaded us that the combination of Church and Nakao lacks adequate reasoning. Appellant further argues that "[i]f the structure of the Nakao publication was incorporated into the Church publication there is no indication that the desired result would take place because of the different arrangements of the annular space of the Church publication compared to the annular treatment of the Nakao publication." (Appeal Br. 7.) According to Appellant, "inclusion of guide plates 12 of the Nakao publication into the 4 Appeal2014-002579 Application 12/630,530 Church publication would render the Church publication turbocharger unsuitable for its intended function, noise reduction." (Reply Br. 5.) However, as discussed above, the Examiner does not propose to incorporate the guide plates of Nakao into Church. (See Final Action 7.) "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, "the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. And the Examiner simply determines that "it would have been obvious ... to modify the spacing of the struts of Church" in view of the teaching of Nakao. (Final Action 7.) Further with regard to Appellant's assertion that Church would be rendered unsuitable for its intended function (Reply Br. 5), we note that Church describes a "Turbocharger having Reduced Noise Emissions." (Church, Title.) Appellant does not persuasively explain or present evidence why arbitrarily spacing the struts of Church, as proposed, would render Church's device unsuitable for functioning as a turbocharger or would be incompatible with reduced noise emissions. Appellant additionally argues that "[ n ]either the Church nor the Nakao publications disclose the contoured wall having a non-uniform stiffness over its circumference," as required by claim 1. (Appeal Br. 7.) Appellant asserts that Nakao does not disclose the claimed contoured wall because "[g]uide plates 12 are arranged in the annular treatment cavity 8 which is completely surrounded by material having the constant thickness and thus is not likely to have issues with deflection." (Id. at 8.) 5 Appeal2014-002579 Application 12/630,530 Appellant does not persuasively explain why the Examiner's findings that Church discloses "a contoured wall (116 inner wall)" and that struts 132 and 146 are attached to contoured wall 116 are in error. (See Final Action 5.) Further, the Examiner explains that "[s]ince the plurality of struts are attached to the contoured wall and provide support to the contoured wall, it is inherent that the [arbitrary] arrangement of [the] plurality of struts would contribute to the stiffness of the contoured wall regardless of the thickness of the contoured wall." (Answer 14.) We agree with the Examiner. Even though a thicker wall may require less support, Church's struts support the contoured wall. Modifying Church to provide non-uniform spacing of the struts would provide non-uniform support of the contoured wall and, thus, non-uniform stiffness over the circumference of the contoured wall. For the above reasons, Appellant has not persuaded us that the Examiner erred in rejecting claim 1 underÂ§ 103(a). Appellant argues that "independent claim 11 and [the] dependent claims are distinguishable over the cited references for reasons similar to those discussed above with respect to independent claim 1." (Appeal Br. 9.) Therefore, for the same reasons discussed above with respect to claim 1, we are not persuaded that the Examiner erred in rejecting claims 3-11 underÂ§ 103(a). Appellant's other arguments have been considered but are not deemed persuasive of error. DECISION The Examiner's rejections of claims 1 and 3-11 under 35 U.S.C. Â§ 103(a) are affirmed. 6 Appeal2014-002579 Application 12/630,530 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7