Ex Parte Weinbrenner et al

Patent Trial and Appeal Board

Jan 25, 2018

12970856 (P.T.A.B. Jan. 25, 2018)

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.
12/970,856 12/16/2010 Marcus Weinbrenner 1006/0180PUS1 6891
60601 7590 01/25/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
AVILES BOSQUES, ORLANDO E
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
01/25/2018 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 MARCUS WEINBRENNER, ANDREAS KEMLE,
OTTOKAR KUNBERGER, THOMAS STRAUSS,
and BERND SCHUFER
Appeal 2017-003561
Application 12/970,856
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3, 4, 7—11, and 13—18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Behr GmbH & Co. KG as the real-party-in-interest.
Appeal Br. 2.
Appeal 2017-003561
Application 12/970,856
THE INVENTION
Appellants’ invention relates to cooling devices. Spec. 13. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A device for cooling a coolant that is provided for
cooling a charging fluid for charging an internal combustion
engine, the device comprising:
a refrigerant path or a refrigerant circuit, the refrigerant path
or refrigerant circuit having a first evaporator for a refrigerant
for cooling an ambient air and a second evaporator for the
refrigerant for cooling the coolant; and
a coolant path or a coolant circuit, the coolant path or
coolant circuit having a radiator and the second evaporator for
the refrigerant of the refrigerant path or refrigerant circuit for
cooling the coolant, and the coolant path or coolant circuit
further having a single charging fluid heat exchanger,
wherein the first evaporator and the second evaporator in
the refrigerant path or refrigerant circuit are arranged in a series
arrangement,
wherein the second evaporator is located downstream of the
first evaporator with respect to the refrigerant flow, and
wherein the second evaporator is implemented as a separate
unit from the heat exchanger,
the device further comprising a coolant bypass for the
second evaporator, the coolant bypass being arranged in the
coolant path or coolant circuit, with one end of the coolant
bypass connected in the coolant path or coolant circuit at a
point between the second evaporator and the single heat
exchanger.
2
Appeal 2017-003561
Application 12/970,856
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Martin US 4,285,205 Aug. 25, 1981
Brotz US 2002/0184908 A1 Dec. 12, 2002
Leuthner US 2003/0145610 A1 Aug. 7, 2003
Khelifa US 2004/0000161 A1 Jan. 1,2004
Lifson US 2010/0199712 A1 Aug. 12, 2010
Burk EP 1342893 A2 Sept. 10, 2003
The following rejections are before us for review:
1. Claims 1, 4, 7—9, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brotz and Burk.
2. Claims 3, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brotz, Burk, and Martin.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brotz, Burk, and Leuthner.
4. Claims 11 and 14—16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brotz, Burk, and Khelifa.
5. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brotz, Burk, and Lifson.
OPINION
Unpatentability of Claims 1, 4, 7—9, and 13
Over Brotz and Burk
Appellants argue claims 1, 4, 7—9, and 13 as a group, and we select
claim 1 as representative. Appeal Br. 9—13; see 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Brotz discloses the claimed invention except
for: (1) the heat exchanger being a single charging fluid heat exchanger; and
3
Appeal 2017-003561
Application 12/970,856
(2) the charging fluid being for charging an internal combustion engine.
Final Action 2—3. The Examiner relies on Burk as disclosing the cooling of
charging air. Id. at 3^4. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
add a heat exchanger to Brotz and use coolant in coolant circuit 2 to cool a
charging fluid. Id. at 4. According to the Examiner, a person of ordinary
skill in the art would have done this to reduce pollution. Id.
Appellants traverse the Examiner’s rejection by arguing against the
Examiner’s proposed combination and/or modification of the prior art and
the Examiner’s rationale for doing so. Appeal Br. 9—11. In particular,
Appellants argue that a person of ordinary skill in the art would not add
“another” heat exchanger to Brotz’s cooling path. Id. at 9. Appellants also
argue that neither reference teaches to have “both” a temperature raising
device (such as Brotz’s battery/fuel cell 4) and a charge air cooler (such as
Burk’s element 5). Id. at 9—10.
The Examiner responds that Brotz’s main drive unit can be an internal
combustion engine. Ans. 3. The Examiner observes that Burk uses a charge
air cooler for an internal combustion engine to reduce pollution. Id. The
Examiner concludes that Burk’s teaching would have motivated a person of
ordinary skill in the art to modify Brotz by incorporating a charge air cooler
to reduce pollution. Id. at 4.
Appellants’ argument that Brotz’s system is used to cool a battery or
fuel cell is not persuasive. “A reference may be read for all that it teaches,
including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322,
1331 (Fed. Cir. 2012), citing KSR Inti Co. v. Teleflex Inc., 550 U.S. 398,
418-421 (2007). Therefore, it is not necessary for the prior art to serve the
4
Appeal 2017-003561
Application 12/970,856
same purpose as that disclosed in Appellants’ Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In reLintner, 458 F.2d 1013, 1016 (CCPA 1972). A person of
ordinary skill in the art would have recognized that Brotz’s cooling system
could cool devices other than a battery or fuel cell. Appellants’ “Description
of the Background Art” section in the Specification admits that it is known
to use cooled charging fluid. Spec. H 4, 5.
Furthermore, we are not persuaded by Appellants’ arguments that
Brotz’s invention would necessarily be modified so that it cooled both a
battery 4 and a charge air heat exchanger. Appeal Br. 9-10. The
obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc). Here, Brotz and Burk contain the
necessary teaching. The Examiner’s final rejection states that “a person of
ordinary skill in the art would recognize that the coolant path can be used to
a cool a charging air.” Final Action 3. As we understand the Examiner’s
rejection, Brotz’s cooling system can be used to cool a charging air heat
exchanger and Burk teaches cooling air to charge an internal combustion
engine.2
Appellants also argue that it is unclear how Brotz’s battery/cell can be
a charge air cooler for an internal combustion engine. Appeal Br. 12. This
2 The Examiner does mention that Brotz’s cooling circuit could cool both a
battery and a charge air heat exchanger. Final Action 4. However, we view
this as a merely an alternative to a modification of Brotz where a charge air
heat exchanger is substituted in lieu of a battery or fuel cell as the object to
be cooled.
5
Appeal 2017-003561
Application 12/970,856
argument is off the mark as it mischaracterizes the Examiner’s findings of
fact and reasons for combining the prior art.
Finally, Appellants argue that “[sjimply because the electric or hybrid
vehicle of Brotz may include an engine therein does not indicate that one
skilled in the art would arbitrarily place a charge air cooler for the engine in
a circuit for the drive battery or fuel cell.” Id. at 13. This argument is
merely another way of restating Appellants’ previous arguments that we
have previously considered and found unpersuasive.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 1, 4, 7—9, and 13.
Unpatentability of Claims 3, 10, 11, and 14—18
over Combinations Based on Brotz and Burk
Appellants cite only to the arguments presented for the patentability of
claim 1 as conferring patentability on claims 3, 10, 11, and 14—18, which
stand rejected as being unpatentable over Brotz and Burk in combination
with additional references. Appeal Br. 13—14. For the reasons discussed
with respect to claim 1, we are not apprised of error in the Examiner’s
rejection of claims 3, 10, 11, and 14—18. Accordingly, the rejections of
claims 3, 10, 11, and 14—18 are sustained.
DECISION
The decision of the Examiner to reject claims 1,3,4, 7—11, and 13—18
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)(l)(iv).
AFFIRMED
6