Ex Parte Corba

Board of Patent Appeals and Interferences

Sep 25, 2006

10271236 (B.P.A.I. Sep. 25, 2006)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID CORBA
____________

Appeal No. 2006-1770
Application No. 10/271,236
Technology Center 3700
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ON BRIEF
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Before OWENS, GROSS, and HORNER, Administrative Patent Judges.
GROSS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1
through 5 and 8 through 23. On page 2 of the Answer, the examiner states that
appellant’s arguments with respect to claims 14 through 19 and 21 are persuasive and that
claims 14 through 19 are allowable and that claim 21 would be allowable if rewritten in
independent form. We note, however, that the examiner maintains a rejection of claim 19
under 35 U.S.C. § 112, second paragraph. Accordingly, the claims remaining before us
on appeal are claims 1 through 5, 8 through 13, 19, 20, 22, and 23.
Appellant's invention relates to an engine having an intercooler bypass for
preventing air from flowing through the intercooler when an idle state for the engine is
detected. Claim 1 is illustrative of the claimed invention, and it reads as follows:

Appeal Number: 2006-1770
Application Number: 10/271,236

1. A method comprising the steps of:

detecting an idle condition for an engine; and

based on engine speed and load, inducing air to bypass an intercooler for the engine and
preventing air from entering the intercooler such that air is input to an intake manifold of
the engine through an intercooler bypass that excludes the intercooler.

The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Jenny 4,513,571 Apr. 30, 1985
Nakao 4,716,734 Jan. 05, 1988

Claims 10, 19, 20, and 23 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1 through 5, 8 through 11, 13, 20, 22, and 23 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Nakao.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable over Nakao
in view of Jenny.
Reference is made to the Examiner's Answer (mailed August 26, 2005) for the
examiner's complete reasoning in support of the rejections, and to appellant's Brief (filed
June 30, 2005) and Reply Brief (filed October 31, 2005) for appellant's arguments
thereagainst.

OPINION
We have carefully considered the claims, the applied prior art references, and the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we will reverse the indefiniteness rejection of claims 10, 19, 20, and 23, the
anticipation rejection of claims 1 through 5, 8 through 11, 13, 20, 22, and 23, and the
obviousness rejection of claim 12.
With regard to the rejection under 35 U.S.C. § 112, second paragraph, the
examiner asserts (Answer, page 3) that in claims 10, 19, 20, and 23, it is unclear whether
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Appeal Number: 2006-1770
Application Number: 10/271,236

the phrase “air temperature” refers to the temperature of ambient air, air leaving the
compressor, or air in the engine intake manifold. We agree with appellant (Brief,
page 11) that the phrase covers all types of air temperature and is, therefore, broad, not
indefinite. Therefore, we cannot sustain the rejection of claims 10, 19, 20, and 23 under
35 U.S.C. § 112, second paragraph.
As to the anticipation rejection, appellant contends (Brief, pages 12-13, and Reply
Brief, pages 2-3) that Nakao fails to disclose preventing air from entering the intercooler.
Specifically, appellant indicates that in Figure 1 of Nakao, there is nothing to prevent air
from flowing into the intercooler’s input, and in Figure 4 of Nakao, there is nothing to
prevent air from flowing into the intercooler’s output. Accordingly, appellant concludes
that Nakao does not anticipate claims 1 through 5, 8 through 11, 13, 20, 22, and 23.
The examiner (Answer, page 8) directs our attention to Nakao, column 7, lines
15-23, which states:
Under such a control for the air flow control valve 18 provided to
the bypass channel 17, the intake air introduced into the inlet channel 5 is
supplied through the bypass channel 17 to the combustion chamber 4
without passing through the intercooler 10 on the occasion of the start of
operation and during the idle operation. Accordingly, on the occasion of
the start of operation and during the idle operation, the intake air is not
cooled by the intercooler 10. (Italics added for emphasis.)

The examiner relies on the above-noted passage as proof that Nakao’s engine prevents air
from entering the intercooler, as recited in each of the independent claims.
We agree with the examiner that the text of the Nakao patent appears to
substantiate the examiner’s assertion that Nakao discloses preventing air from passing
through the intercooler. However, as pointed out by appellant, there is no structure
disclosed in Nakao to support the statements relied upon by the examiner. There is
nothing to prevent air from entering intercooler 10 through its input in Figure 1 or
through its output in Figure 4 of Nakao. Accordingly, Nakao fails to satisfy all the
limitations of each independent claim. Consequently, we cannot sustain the anticipation
rejection of independent claims 1, 11, 20, and 22, nor of their dependents, claims 2
through 5, 8 through 10, 13, and 23.
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Appeal Number: 2006-1770
Application Number: 10/271,236

As to claim 12, we find no teaching or suggestion in Jenny, and the examiner has
pointed to none, that would overcome the shortcomings of Nakao. Therefore, we cannot
sustain the obviousness rejection of claim 12 over the combination of Nakao and Jenny.

CONCLUSION
The decision of the examiner rejecting claims 10, 19, 20, and 23 under 35 U.S.C.
§ 112, second paragraph, claims 1 through 5, 8 through 11, 13, 20, 22, and 23 under
35 U.S.C. § 102(b), and claim 12 under 35 U.S.C. § 103 is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
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Appeal Number: 2006-1770
Application Number: 10/271,236

INTERNATIONAL ENGINE INTELLECTUAL PROPERTY COMPANY
4201 WINFIELD ROAD
P.O. BOX 1488
WARRENVILLE, IL 60555
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