Ex Parte Kumar et al

Patent Trials and Appeals Board

Mar 29, 2019

14064448 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/064,448 10/28/2013
46442 7590 04/02/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Sudhir Kumar
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.
83387212;67186-022PUS1 1010
EXAMINER
BAISA, JOSELITO SASIS
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 SUDHIR KUMAR, BEHZAD V AF AKHAH,
SHAHRAM ZAREI, TIENLI WANG, and
EDWARD CHAN-JIUN JIH
Appeal2018-005383
Application 14/064,448 1
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-9, 11, 12, 18-20, and 22-27.
We have jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM.
1 Appellant is the Applicant, Ford Global Technologies, LLC, which,
according to Appeal Brief, is the real party in interest. Appeal Brief
("Appeal Br.") 1, filed November 30, 2017.
2 Our Decision additionally refers to the Specification ("Spec.") filed
October 28, 2013, the Examiner's Answer ("Ans.") dated April 2, 2018, and
the Reply Brief ("Reply Br.") filed April 30, 2018.
Appeal2018-005383
Application 14/064,448
The subject matter on appeal relates to inductor assemblies, methods
of cooling an inductor, and electric vehicle powertrains (see, e.g., claims 1,
18, and 25). The Specification discloses that electric vehicles having an
alternating current electric machine may include an inverter between a
voltage converter (which is connected between a battery and the electric
machine) and the electric machine. Spec. ,r 4. According to the
Specification, the temperature of the inductor can undesirably exceed
constraint limits at high power loads, which can lead to an undesirable
reduction in power in order to lower the inductor temperature. Id. ,r 5. To
address this, the Specification discloses an inductor assembly including,
among other things, a base, wall extending from the base to provide a cavity
for an inductor, and extensions that communicate thermal energy from the
base and the walls. Id. ,r 6.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. An inductor assembly, comprising:
a base;
a plurality of walls extending from the base to provide a
cavity that receives an inductor;
a plurality of extensions of the base to communicate
thermal energy from the base and the plurality of walls; and
a container providing an open area to receive the plurality
of extensions.
2
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Application 14/064,448
REJECTIONS ON APPEAL
I. Claims 1-3, 18, 22, and 23 under 35 U.S.C. § 103 as
being unpatentable over Miller3 and Duan; 4
II. Claims 4---6, 9, and 27 as being unpatentable under
35 U.S.C. § 103 over Miller in view ofDuan and further
in view of Lopatinsky; 5
III. Claim 7 as being unpatentable under 35 U.S.C. § 103
over Miller in view of Duan and further in view of Sato; 6
IV. Claims 8 and 19 as being unpatentable under 35 U.S.C.
§ 103 over Miller in view of Duan and further in view of
Hooey; 7
V. Claims 11, 12, and 20 as being unpatentable under
35 U.S.C. § 103 over Miller in view ofDuan and further
in view of Gevas; 8
VI. Claim 24 as being unpatentable under 35 U.S.C. § 103
over Miller in view of Duan and further in view of
Lopatinsky; and
VII. Claims 25 and 26 as being unpatentable under 35 U.S.C.
§ 103 over Miller in view Sato and Duan.
3 Miller et al., US 6,518,868 Bl, issued Feb. 11, 2003 ("Miller").
4 Duan et al., US 7,325,591 B2, issued Feb. 5, 2008 ("Duan").
5 Lopatinsky et al., US 7,021,894 B2, issued Apr. 4, 2006 ("Lopatinsky").
6 Sato, US 8,400,244 B2, issued Mar. 19, 2013 ("Sato").
7 Hooey et al., US 7,474,185 B2, issued Jan. 6, 2009 ("Hooey").
8 Gevas et al., US 5,226,220 A, issued July 13, 1993 ("Gevas").
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Application 14/064,448
B. DISCUSSION
Rejection I
Claims 1-3, 18, 22, and 23 are rejected under 35 U.S.C. § 103 as
being unpatentable over Miller and Duan.
Appellant argues claims 1-3 and 22 as a first group, claim 23 as a
second group, and claim 18 as a third group. Appeal Br. 3---6. We select
claims 1, 23, and 18 as representative of the issues on appeal for these
respective groups, which we analyze below.
Claims 1-3 and 22
The Examiner finds Miller discloses an inductor housing including,
among other things, a base, a plurality of walls, and a plurality of extensions
(i.e., fins). Ans. 2. The Examiner finds Miller does not disclose a container
providing an open area to receive the extensions, as recited in claim 1, but
finds Duan discloses such a container. Id. The Examiner concludes it would
have been obvious to one of ordinary skill in the art to modify Miller's
housing to include Duan's container to effectively dissipate heat from heat
generating circuit components. Id.
Appellant contends the Examiner's rejection does not replace Miller's
air cooling with Duan's liquid cooling but only modifies Miller's system to
include Duan's container, which would receive Miller's fins. Appeal Br. 3-
4. Appellant argues this modification would have blocked the flow of air
through the fins, inhibited the transfer of thermal energy, and therefore
would not have been obvious to one of ordinary skill in the art. Appeal Br.
4--5; Reply Br. 1-2. Appellant also argues Miller teaches away from the
proposed modification because Miller desires a simple, compact assembly
that is easy and cheap to manufacture. Appeal Br. 4--5.
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Application 14/064,448
Appellant's arguments are unpersuasive. Miller discloses a power
supply module 109 for a computer that includes a printed circuit board 12, a
thermal conducting structure 14, a heat sink 6, and a housing 17. Miller
2:58---63, Figures 1 and 2. The thermal conducting structure 14 includes a
thermal conducting member 36, which can include inductors 42. Id. 3:24--
30. The heat sink 16 includes fins 46 attached to a base 44. Id. 3:35-37.
Duan discloses a liquid-cooling heat dissipation apparatus 100 to
dissipate heat from a heat emitting device 200 (e.g., a CPU 200). Duan
2:48-52. The apparatus 100 includes a casing 1 having a liquid inlet 11 and
a liquid outlet 12 that receive liquid circulated by a driving unit 2. Id. 2:53-
61. The liquid is conveyed through the casing 1 to dissipate heat from fins
33 within the casing 1. Id. 3:53---65, Figures 7 and 8. With regard to this
arrangement, Duan discloses, "[t]herefore, the cooling plate module 3 has
fast heat dissipation and the heat dissipation for the CPU 200 can be
enhanced." Id. 3:61---63. Duan discloses that liquid heated by the fins 33
(i.e., hot water) is conveyed to a liquid cooling array 20, which exchanges
heat with the water so the latter is cooled. Id. 3:18-29.
To the extent the Examiner's proposed modification is to include
Duan's container but retain Miller's air cooling, Appellant's arguments have
not identified a reversible error. The Examiner explains that using Duan's
system, which forcibly conveys a cooling medium and includes the heat
exchanger to cool the cooling medium, is more effective for exchanging heat
than non-moving air. Ans. 10. The Examiner's findings are reasonable in
view of Duan's disclosure that coolant is forced by a driving unit and, once
heated by fins, the coolant is cooled by a heat exchanger so the coolant may
9 Throughout this Decision, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Application 14/064,448
be used once more to cool the fins. Duan 3:61-63. Such a modification
would result in a closed system that circulates air instead of liquid.
Appellant has not cited evidence or persuasive technical reasoning to
demonstrate Duan's system would not be capable of circulating and
exchanging heat with air instead of liquid.
Furthermore, we see no reason the modification of Miller in view of
Duan could not substitute Duan's liquid cooling for Miller's air cooling,
particularly in view of Duan's disclosure that its method enhances heat
dissipation and the mere disclosure that liquid cooling is another way to cool
fins (i.e., another method to accomplish the same purpose). As will be
discussed below for claims 23 and 18, the Examiner finds Duan discloses
liquid cooling and modifies Miller to use Duan' s liquid cooling. In other
words, Appellant has had the opportunity to address such a modification. It
is well-established that the Board is free to affirm an examiner's rejection so
long as "appellants have had a fair opportunity to react to the thrust of the
rejection." In re Kronig, 539 F.2d 1300, 1302---03 (CCPA 1976).
Claims 23 and 18
As noted above, claims 23 and 18 are each argued separately. We
address these claims together here for purposes of efficiency.
Claims 23 depends from claim 1 and recites that the "container holds
a liquid within [its] open area." Independent claim 18 recites a method of
cooling an inductor comprising, among other things, "communicating
thermal energy from the plurality of extensions using a liquid held within a
container."
Appellant asserts the rejections of claims 23 and 18 propose to modify
Miller to include the container of Duan but not a liquid. Appeal Br. 5---6.
These arguments do not address the Examiner's rejection, which finds Duan
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Application 14/064,448
discloses liquid within its container 1 and explains that the modification of
Miller in view of Duan uses cooling liquid. Ans. 3, 10.
As noted above, Duan discloses a circulation system for a liquid to
cool fins 33 within a casing 1 and the system provides enhanced heat
dissipation. Thus, Duan's disclosure supports the Examiner's findings and
would have provided a reason to make the proposed modification.
Moreover, the Examiner's proposed modification relies on the well-
established principle that, for an improvement to be patentable, it must be
more than the predictable use of prior art elements according to their
established functions (e.g., to use circulated liquid to cool fins instead of
using air to cool fins). KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejection of claims 1-3, 18, 22, and 23 over
Miller and Duan.
Rejection II
Claims 4--6, 9, and 27 are rejected as being unpatentable under
35 U.S.C. § 103 over Miller in view ofDuan and further in view of
Lopatinsky.
Appellant argues claim 4 as a first group, claim 5 as a second group,
claim 6 as a third group, and claims 9 and 27 as a second group. Appeal Br.
6-9. Although argued separately, we address claims 4--6 together for
purposes of efficiency and select claims 4 and 9 as representative claims.
Claims 4--6
Claim 4 depends from claim 1 and recites that the "extensions
comprises pins." Claims 5 and 6 depend from claim 4. In the rejection of
claim 4, the Examiner finds Lopatinsky discloses extensions as pins and
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Application 14/064,448
concludes it would have been obvious to use Lopatinsky's pins as extensions
in Miller's system, as modified by Duan. Ans. 3.
Appellant argues the Examiner has not provided a factual basis for the
Examiner's reasons to modify Miller, as modified by Duan, further in view
of Lopatinsky in each of the rejection of claims 4--6. Appeal Br. 6-8.
Appellant's arguments do not identify a reversible error in the
rejections of claims 4--6, which involve the substitution of one cooling
structure (i.e., Lopatinsky's pins 13 (Lopatinsky 4:49--53, Figures 1 and 2))
for another cooling structure (i.e., Miller's fins 46). An express teaching
need not be present in the art to support the substitution of one element for
another element used for the same purpose. In re Fout, 675 F.2d 297, 301
( CCP A 1982 ). Furthermore, such a substitution is no more than the
predictable use of prior art elements according to their established functions
(e.g., to use circulated liquid to cool fins instead of using air to cool fins).
KSR, 550 U.S. at 417.
Claims 9 and 27
Claim 9 depends from claim 1 and recites, among other things that the
"extensions are arranged in an array of rows and columns, [with] at least
some of the columns being staggered." Claim 27 depends from claim 9.
The Examiner finds Lopatinsky discloses such an arrangement and
concludes it would enhance turbulent flow. Ans. 4.
Appellant contends the Examiner has not provided any factual basis
for the Examiner's reasons to combine, which is based upon speculation.
Appeal Br. 8.
The Examiner's rationale appears to rely upon the knowledge of one
of ordinary skill in the art. A teaching, suggestion, or motivation to combine
the relevant prior art teachings does not have to be found explicitly in the
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prior art, as the teaching, suggestion, or motivation may be implicit from the
prior art as a whole. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006)
cited with approval in KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,418
(2007).
[T]he "motivation-suggestion-teaching" test asks not merely
what the references disclose, but whether a person of ordinary
skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the
general problem facing the inventor, would have been led to
make the combination recited in the claims.
In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). Here, the Examiner
explains that Lopatinsky' s arrangement of pins would cause fluid to swirl
and efficiently absorb heat, citing the arrangements shown in Figures 1-5 of
Lopatinsky. Ans. 11. Appellant does not respond to this explanation.
Appellant also argues the Examiner's rationale conflicts with the
rationale for the rejections of claims 4---6. Appeal Br. 9. Claims 9 and 27 do
not depend from claims 4--6. Further, either rationale set forth by the
Examiner for claims 4--6 and for claim 9 would have provided a reason for
one of ordinary skill in the art to make the proposed modification.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejection of claims 4--6, 9, and 27 over Miller,
Duan, and Lopatinsky.
Rejection III
Claim 7 is rejected as being unpatentable under 35 U.S.C. § 103 over
Miller in view of Duan and further in view of Sato.
The Examiner finds Sato discloses a cooling block 1 and concludes it
would have been obvious to use the cooling block 1 to provide a more
effective way of dissipating heat. Ans. 4--5.
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Appellant asserts the Examiner has not provided a factual basis to
support the Examiner's rationale and the proposed modification would
inhibit the transfer of thermal energy from Miller's fins via air. Appeal Br.
9-10; Reply Br. 3.
As with the rejection of claims 4--6, 9, and 27, the Examiner's
rejection of claim 7 appears to rely upon the knowledge of one of ordinary
skill in the art. The Examiner explains that the proposed modification would
result in direct and immediate contact between extensions and Sato' s cold
plate while also dissipating heat via a cooling medium contacting the
extensions. Ans. 11-12. Therefore, the Examiner has provided a reasonable
basis for why the inclusion of Sato' s cooling plate would improve the
effectiveness of the cooling system for Miller, as modified in view of Duan.
Also, the Examiner's modification is to contact end portions of the
extensions with the cooling block. Id. at 4--5. Appellant does not cite
evidence or persuasive technical reasoning demonstrating that such an
arrangement would significantly inhibit the transfer of thermal energy
between Miller's fins and air ( or liquid) flow about the fins.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claim 7 over Miller, Duan, and
Sato.
Re} ections IV and V
Claims 8 and 19 are rejected as being unpatentable under 35 U.S.C.
§ 103 over Miller in view of Duan and further in view of Hooey.
Claims 11, 12, and 20 are rejected as being unpatentable under
35 U.S.C. § 103 over Miller in view ofDuan and further in view of Gevas.
For each of these rejections, Appellant merely states the rejected
claims depend from claims 1 or 18 and are patentable for the same reasons
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Application 14/064,448
as those claims. Appeal Br. 10. As discussed above with regard to the
rejections of claim 1 and 18, Appellant's arguments have not identified a
reversible error in those rejections. Therefore, we sustain the § 103
rejections of claims 8, 11, 12, 19, and 20.
Rejection VI
Claim 24 is rejected as being unpatentable under 35 U.S.C. § 103 over
Miller in view of Duan and further in view of Lopatinsky.
Claim 24 depends from claim 23, which depends from claim 1. Claim
24 recites, among other things, that the container includes an inlet and an
outlet for a liquid and that the extensions are arranged in rows and columns,
with at least some of the columns being staggered.
The Examiner cites Duan for the inlet, outlet, and Lopatinsky for the
arrangement of extensions. Ans. 7. The Examiner concludes it would have
been obvious to modify Miller, as modified in view of Duan, further in view
of Lopatinsky to efficiently spread the flow of cooling fluid around a heat
exchanger. Id.
Appellant asserts the proposed modification contradicts Miller's goal
of providing a compact, simplified design that is easy and cheap to
manufacture, there is no suggestion that Miller's system provides ineffective
cooling or that the proposed modification would provide a benefit, and there
is no factual basis for the Examiner's rationale. Appeal Br. 10-11.
These arguments are unpersuasive. There is no requirement that the
prior art recognize a deficiency or prove that a proposed combination would
necessarily provide a benefit. As noted above, the substitution of
Lopatinsky' s pin arrangement for Miller's arrangement of fins involves the
substitution of one element for another element used for the same purpose.
Fout, 675 F.2d at 301. In addition, the Examiner has articulated reasons
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with some rational underpinning why one of ordinary skill in the art would
have modified Miller in view of Duan (i.e., to include Duan's container and
liquid cooling) and Lopatinsky (i.e., to use Lopatinsky's pin arrangement),
as discussed above with regard to the rejections of claims 1, 4---6, and 9.
Appellant also argues there is no teaching or suggestion of a container
holding a liquid within an open area, as recited in claim 23. Appeal Br. 23.
This argument is unpersuasive because the combination of Miller and Duan
would result in such a container due to the inclusion of Duan's casing 1,
which is configured to hold and circulate a liquid coolant.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claim 24 over Miller, Duan, and
Lopatinsky.
Rejection VII
Claims 25 and 26 are rejected as being unpatentable under 35 U.S.C.
§ 103 over Miller in view Sato and Duan.
Appellant argues Miller's inductors are for a computer power supply
module and the Examiner has not provided a sufficient reason to modify
Miller for use as a battery pack of an electrified vehicle. Appeal Br. 11.
Appellant also states "[t]he rejection appears to be providing a reasoning to
allegedly support a modification to Sato, not a modification to Miller" and
contends "[a] reasoning for modifying Sato is not equally applicable to the
computer power supply module of Miller." Id. at 11-12.
We agree with Appellant that the Examiner's rejection considers
modifying Sato's electric vehicle reactor (Sato 1 :6-22, 2:27-35) 10 in view of
10 We note Appellant's Specification indicates an electric vehicle powertrain
including a battery, a voltage converter, and inductor was known in the art.
Spec. ,r 4.
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Application 14/064,448
Miller because the Examiner concludes it would have been obvious "to use
an inductor assembly into a battery pack of an electric vehicle as taught by
Sato and apply the voltage converter of Miller in view of Duan to provide a
power converter that has an efficient heat dissipating system in a demanding
environment." Ans. 8.
Whether the Examiner listed Miller as the primary reference or Sato
as the primary reference is irrelevant. See In re Bush, 296 F .2d 491, 496
(CCPA 1961) ("In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been pointed out
to the applicant, we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of on
B in view of A, or to term one reference primary and the other secondary.").
As noted above, the Board is free to affirm an examiner's rejection so long
as "appellants have had a fair opportunity to react to the thrust of the
rejection." Kronig, 539 F.2d at 1302---03. An Appellant's actual response to
the thrust of a rejection demonstrates an opportunity to respond. In re Adler,
723 F.3d 1322, 1328 (Fed. Cir. 2013) (Appellant had opportunity to respond,
and in fact did respond in their Reply Brief, to the thrust of the Examiner's
rejection). Here, Appellant has directly addressed a combination based upon
Sato but merely argues one of ordinary skill in the art would not have used
Miller's inductor in the demanding environment of electric vehicles. This is
unpersuasive because one of ordinary skill in the art would have recognized
the benefits taught by Miller to cool an inductor. Appellant cites no
evidence or persuasive technical reasoning to demonstrate modifying
Miller's inductor, such as its cooling components, for use in an electric
vehicle would not have been obvious or would have been beyond the
capabilities of one of ordinary skill in the art. "A person of ordinary skill is
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also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at
421; see also id. at 401 ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.").
Appellant also argues that the limitation "selectively boosts or bucks a
voltage from the battery pack" is not an intended use and that the rejection
fails to show this limitation in the cited art. Miller's inductor, however,
appears to meet the structure of the inductor recited in claim 25 and,
therefore, would be capable of functioning in the same way. Appellant cites
no evidence or persuasive technical reasoning explaining why Miller's
inductor would not be capable of selectively boosting or bucking a voltage.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claim 25 over Miller, Sato, and
Duan.
C. DECISION
The decision of the Examiner is 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).
AFFIRMED
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