Ex Parte Lienkamp et al

Patent Trial and Appeal Board

Apr 29, 2016

12053979 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/053,979 03/24/2008
65764 7590 05/03/2016
FRASER CLEMENS MARTIN & MILLER LLC
28366 KENSINGTON LANE
PERRYSBURG, OH 43551-4163
Sebastian Lienkamp
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.
P001609-FCA-CHE
(1-39056)
CONFIRMATION NO.
5292
EXAMINER
DECKER, PHILLIP
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
lopez@fraser-ip.com
howard@fraser-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN LIENKAMP and REMY FONTAINE
Appeal2014-002738
Application 12/053,979
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sebastian Lienkamp and Remy Fontaine ("Appellants") 1 appeal under
35 U.S.C. § 134 from the Examiner's final decision rejecting claims 6, 7, 9,
11-13, and 17-19 in this application. The Board has jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies GM Global Technology Operations LLC as
the real party in interest. Appeal Br. 1.
Appeal2014-002738
Application 12/053,979
CLAIMED SUBJECT MATTER
Claims 6 and 13 are independent. Claim 6 illustrates the subject
matter on appeal:
6. A heating system for optimizing heating in a fuel
cell vehicle comprising:
a stack coolant loop including a fuel cell stack comprising
a fuel cell stack outlet, a primary pump, and a radiator module
comprising a radiator module inlet; and
a bypass coolant loop including a coolant heater, a
secondary pump, and an inlet and an outlet, said inlet and said
outlet located between said fuel cell stack outlet and said radiator
module inlet, wherein said bypass coolant loop is fluidly
connected to and runs parallel with a portion of said stack coolant
loop between said fuel cell stack and said radiator module,
said bypass coolant loop does not include a shut off valve, and
the heating system is configured to split a flow of coolant
between said bypass coolant loop and said stack coolant loop.
Appeal Br. 14 (Claims App., emphasis added).
REJECTION ON APPEAL
Claims 6, 7, 9, 11-13, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ishigaki (US 2007/0298298 Al, pub. Dec. 27,
2007), Ishikawa (WO 20071069022 A2, pub. June 21, 2007), and Ap
(US 6,448,535 Bl, iss. Sept. 10, 2002). 2
2 The Final Office Action additionally rejected claims 17 and 18 under 35
U.S.C. § 112, fourth paragraph, as improperly depending from canceled
claim 16, and construed the claims to depend from claim 13. Final Act. 2.
Thereafter, the Examiner entered Appellants' amendment changing
claims 1 7 and 18 to depend from claim 13, but the Examiner did not
expressly withdraw the rejection. Adv. Act. 2; Ans. 9. Based on the record,
the Examiner's failure to withdraw the rejection appears to have been an
oversight, and we consider the rejection to have been withdrawn.
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Appeal2014-002738
Application 12/053,979
ANALYSIS
The Examiner finds Ishigaki and Ishikawa disclose each and every
limitation of claim 6, except for the bypass coolant loop not including a
shut-off valve. Final Act. 3--4. In particular, the Examiner finds Ishigaki's
Figure 4 shows stack coolant loop 33, 32, 10, and 31 including fuel cell
stack 2, primary pump 23, and radiator 21, as well as bypass loop 11
including heater core 41 and secondary pump 42. Id. at 3. Ishigaki
incorporates a first valve at the branch point 14 inlet to bypass loop 11, and a
second valve at the confluence 13 outlet from bypass loop 11. Ishigaki
i-fi-f 126, 166. Therefore, the Examiner finds Ishigaki's bypass loop 11
includes shut-off valves. 3
The Examiner finds Ap's Figure 4 illustrates bypass coolant loop 70
not including a shut off valve. Final Act. 4. The Examiner determines it
would have been obvious to modify Ishigaki' s bypass loop 11 "by adding
said bypass coolant loop does not include a shut off valve as taught by Ap in
order to reduce the number of components and therefore reduce cost." Id.
Appellants argue there is no reason to omit the valves in Ishigaki at
branch 14 and confluence 13, based on Ap. Appeal Br. 8. According to
Appellants, doing so would contravene the switching and control aspects of
Ishigaki's valves, thereby running "counter to obviousness" and teaching
away from the Examiner's modification omitting the valves. Id. at 8, 10.
3 The Final Office Action does not state expressly the basis for finding
Ishigaki's bypass loop 11 fails to "not include a shut off valve" as claimed.
Final Act. 3--4. The Appeal Brief suggests the finding is based on Ishigaki's
Figure 4 including valves at branch point 14 and confluence 13. Appeal
Br. 10. The Answer does not dispute that suggestion. Ans. 12.
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Appeal2014-002738
Application 12/053,979
Appellants further assert Ap "does not provide any explicit basis for not
including valves" in a coolant flow loop. Id. at 10-11.
The Examiner responds that reducing the number of components and
thereby reducing cost is a sufficiently articulated rational basis for omitting
Ishigaki's valves at branch 14 and confluence 13, as "[i]t has long been
recognized that reduction of costs is strong motivator for modifying an
apparatus." Ans. 12. The Examiner further states "it is within the ability of
a person having ordinary skill in the art to use other means for controlling
fluid flow, such as by using other types of valves besides shut-off valves,
selectively activating a pump, or using flow restrictors or conduits of
different diameters." Id. (emphasis added). In the Examiner's view, "the
effect of the omission of the valve[s] in Ishigaki ... is not relevant to the
patentability of the present patent claims." Id. at 13.
The Examiner's determination that it would have been obvious to
remove Ishigaki' s valves at branch point 14 and confluence 13 is not
supported by sufficient rational underpinnings. While we appreciate that
cost reduction may be a factor to be considered in the obviousness analysis,
in this case it is the sole proffered reason for removal of Ishigaki's valves.
The Examiner has not established that removal of Ishigaki's valves would
have led to predictable results in the operation of Ishigaki's fuel cell cooling
system, or that a person of ordinary skill in the art would have had a
reasonable expectation of success in removing Ishigaki's valves while still
maintaining an operable device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416-18 (2007); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (obviousness requires that a skilled artisan would have
perceived a reasonable expectation of success in making the invention).
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Appeal2014-002738
Application 12/053,979
The Examiner's only discussion of the operational ramifications of
removing Ishigaki's valves at branch 14 and confluence 13 is that "other
means for controlling fluid flow" could be used instead. Ans. 12. The
Examiner does not explain why or how the use of such other means would
lead to a reduced cost of manufacture. It would appear that adding such
other means would increase the cost of manufacture that removal of
Ishigaki' s valves is designed to achieve, versus the system without any such
fluid control means. For example, replacing Ishigaki's valves with other
fluid control means may require the system to be redesigned in order to
compensate for the removal and operate as required, which could affect the
cost analysis. A preponderance of evidence does not support the notion that
removing Ishigaki's valves and replacing them with other flow control
devices would reduce cost.
Finally, we appreciate Ap's Figure 4 shows a bypass loop 70 that does
not include a shutoff valve. However, as Appellants argue, the Examiner
has not cited any disclosure in Ap providing a reason for removing the
valves from Ishigaki's bypass loop 11. Appeal Br. 10. As discussed above,
the Examiner's cost reduction rationale is not supported by sufficient
rational underpinnings.
The other cited prior art reference, Ishikawa, is not relied upon in
relation to the claim limitation that the bypass coolant loop does not include
a shut off valve. Final Act. 4. Thus, we do not sustain the rejection of
claim 6 as unpatentable over Ishigaki, Ishikawa, and Ap.
Independent claim 13, like claim 6, recites the "bypass coolant loop
does not include a shut off valve." Appeal Br. 15 (Claims App.). The
Examiner's obviousness rationale for rejecting claim 13 in that regard is
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Application 12/053,979
identical to claim 6. See Final Act. 5. Thus, we do not sustain the
obviousness rejection of claim 13.
The obviousness rejection of dependent claims 7, 9, 11, 12, and 17-19
does not cure the noted deficiency as to the independent claims, so we
likewise do not sustain the rejection as to the dependent claims. See Final
Act. 4, 6.
DECISION
The Examiner's decision to reject claims 6, 7, 9, 11-13, and 17-19 is
reversed.
REVERSED
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