Ex Parte Goerlach

Patent Trial and Appeal Board

Nov 30, 2017

13814161 (P.T.A.B. Nov. 30, 2017)

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.
13/814,161 04/09/2013 Alfred Goerlach BOSC.P7895US/1000202034 8667
24972 7590 12/04/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
KIM, JOHN K
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED GOERLACH
Appeal 2017-004219
Application 13/814,1611
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 11 and 13—20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “Robert Bosch GmbH.” Appeal Brief filed on August 2, 2016 (as revised
October 12, 2016), hereinafter “Appeal Br.,” 2.
2 Appeal Br. 3—5; Reply Brief filed on January 17, 2017, hereinafter “Reply
Br.,” 2—5; Final Office Action (notice emailed on January 6, 2016)
hereinafter “Final Act.,” 2—7; Examiner’s Answer (notice emailed on
November 18, 2016), hereinafter “Ans.,” 2—5.
Appeal 2017-004219
Application 13/814,161
A. BACKGROUND
The inventor states that motor vehicle generators have a “hot point” at
which a cooling effect due to rotation of the generator equilibrates with heat
generated from electrical power losses occurring at diodes of the generator’s
rectifier. Specification filed on February 4, 2013, hereinafter “Spec.,” 1:18—
29. The inventor states the hot point is the hottest temperature the diodes
experience in the generator and the diodes must be designed to operate at the
hot point. Id. 1:29—31. The inventor states that, at higher temperatures,
power losses at the diodes increase with increasing temperature. Id. 3:20—
25; Figure 1. Asa result, there is thermal instability at the higher
temperatures and, in view of this, rectifiers including Schottky diodes are
operated at temperatures in which power losses decrease with increasing
temperature. Id. 3:29-4:8. However, the inventor discloses a rectifier
system in which the operating range of the rectifier system is enlarged so
that operating temperatures include those at which power losses increase as
the temperature increases. Id. 4:12—18.
Representative claim 11 is reproduced from page 7 of the Appeal
Brief (Claims Appendix), as follows (emphasis in bolded italics added):
1. A generator comprising:
a rectifier system having press-in diodes which are
Schottky diodes, wherein:
each of the Schottky diodes includes a barrier
layer;
as a function of a rotational speed of the generator,
an operating point of the generator at which a
temperature of the Schottky diodes is at its highest, is
defined as a hot point;
a maximum permissible barrier layer temperature
T, at which each of the Schottky diodes is configured to
be operated in the hot point, satisfies the equation 1/2 UR
2
Appeal 2017-004219
Application 13/814,161
Rth Ea/T2 IR(T) < 1, where Rth is a thermal resistance
between the barrier layer of the Schottky diode and an
ambient air during operation in the hot point of the
generator, UR is a barrier voltage, IR(T) is a barrier
current, and Ea is an activation energy; and
the Schottky diodes are operated in an
operational range in which the diode losses increase
with increasing temperature.
B. REJECTION ON APPEAL
On appeal, the Examiner maintains3 the rejection of claims 11 and
13—20 under 35 U.S.C. § 103(a) as being unpatentable over Spitz.4 Ans. 2;
Final Act. 4—7.
C. DISCUSSION
Drawing Objection
The Appellant presents arguments against the Examiner’s objection to
the Drawings. Appeal Br. 3. This matter, however, should have been raised
by a timely-filed petition under 37 C.F.R. § 1.181. See 37 C.F.R. § 1.113.
Petitionable matters are not appealable to the Patent Trial and Appeal Board.
In re Berger, 279 F.3d 975, 984—985 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see also MPEP § 1201.
Obviousness Rejection of Claims 11 and 13—20
Claims 11 and 13—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spitz. The Appellant argues claims 11 and 16—20 as a
3 The Examiner has withdrawn the rejection of claims 13—15 under
35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2.
4 US 2008/0122323 Al, published May 29, 2008.
3
Appeal 2017-004219
Application 13/814,161
first group and claims 13—15 as a second group. Appeal Br. 4—5. We select
claims 11 and 13 as representative of these groups.
Claims 11 and 16—20
The Examiner finds Spitz discloses a rectifier system including press-
in high-efficiency Schottky diodes. Final Act. 5. The Examiner further
finds Spitz discloses the diodes may be operated in an operational range in
which diode losses increase with increasing temperature. Id. The Examiner
finds the diodes of Spitz to be the same type of diode recited in dependent
claims 16 and 18 and, therefore, the diodes of Spitz would have the same
characteristics (i.e., the maximum permissible barrier layer temperature
recited in claim 11) or that such characteristics would have been obvious.
Id. at 5—6.
The Appellant contends Spitz does not disclose or suggest that its
“Schottky diodes are operated in an operational range in which the diode
losses increase with increasing temperature,” as recited in claim 11. Appeal
Br. 4. Specifically, the Appellant asserts that Spitz’s Figure 1 depicts the
maximum permissible junction temperature at the point of inflection of the
temperature/total power loss curve for a conventional diode and a high
efficiency diode. Appeal Br. 4; Reply Br. 2—A. In view of this, the
Appellant argues that the diodes of Spitz would have operating ranges for
which diode losses do not increase with increasing temperature (i.e., up to
the maximum permissible junction temperature at the inflection points for
the curves). Appeal Br. 5; Reply Br. 3.
The Appellant’s arguments are unpersuasive. As stated above, the
Examiner finds Spitz discloses the same type of Schottky diode as the
Appellant and the diodes of Spitz may be operated in an operational range in
4
Appeal 2017-004219
Application 13/814,161
which diode losses increase with increasing temperature, citing Spitz’s
Figure 1 and paragraphs 19 and 27. Final Act. 5. “[AJpparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch
& Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the
patentability of an apparatus claim depends on the claimed structure, not on
the use or purpose of that structure, Catalina Mktg. Int 7, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function
or result of that structure. In re Danly, 263 F.2d 844, 848 (CCPA 1959); In
re Gardiner, 171 F.2d 313, 315-16 (CCPA 1949). Although “[a] patent
applicant is free to recite features of an apparatus either structurally or
functionally[,] .... choosing to define an element functionally, i.e., by what
it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997). Where the Examiner establishes a reasonable basis to believe
that a property or characteristic recited in the claims would have been
inherent to the apparatus, the burden of proof shifts to the Appellant to show
that this characteristic or property is not possessed by the prior art. Id. The
Appellant does not direct us to sufficient evidence or persuasive technical
reasoning to refute the Examiner’s reasonable determination that these
diodes would have been capable of losses that increase with increasing
temperature.
Spitz discloses the use of high-efficiency Schottky diodes in rectifiers
for generators and that such diodes have lower blocking-state currents. Spitz
1117, 19. Spitz states that Figure 1 depicts the “maximum permissible
junction temperature” for Schottky diodes. Id. 127. Nonetheless, Spitz
discloses that the diodes used in rectifiers for three-phase generators can
operate at high currents and at high temperatures, such as junction
5
Appeal 2017-004219
Application 13/814,161
temperatures < 225°C (i.e., above the junction temperatures disclosed in
paragraph 27). Id. 14. Moreover, Spitz discloses that its diodes have a low
blocking state current and the power losses its diode experiences increase
less sharply at higher temperatures in comparison to conventional diodes.
Id. ]Hf 13, 14. This is demonstrated by the lower curve in Figure 1 that
represents Spitz’s inventive diode. Id. 126. A copy of Figure 1 is
reproduced below.
$BD/A»2$rnm2
PtilBn - 0,7eV / IF * 100 A t UR ■ 14V
pa0,5*UF* If + 0,5*Ur* Ir
(Figure 1 depicts total power loss versus temperature for conventional
Schottky diodes and the Schottky diodes of Spitz.)
The lower curve in Figure 1 (for the Schottky diodes used by Spitz)
experiences a significantly lower increase in power losses (the vertical axis)
at temperatures higher than its inflection point (197°C) in comparison to
power losses above the inflection point (165°C) of the higher curve (for a
convention Schottky diode). In view of this and Spitz’s disclosure that
diodes can be operated above the inflection point temperature (e.g., at
temperatures < 225°C, as disclosed in paragraph 4), Spitz would have
6
Appeal 2017-004219
Application 13/814,161
suggested operation at temperatures above the inflection point depicted in
Figure 1 for its diodes, which is “in an operational range in which the diode
losses increase with increasing temperature,” as recited in claim 11. Thus,
Spitz’s disclosure supports the Examiner’s findings. The Appellant’s
arguments do not direct us to a reversible error in the Examiner’s rejection
of claim 11. The Appellant does not argue claims 16—20 separately from
claim 11. Appeal Br. 5.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claims 11 and 16—20.
Claims 13—15
Claims 13—15 depend from claim 11 and respectively recite numerical
ranges for a thermal resistance between a barrier layer of Schottky diodes
and ambient air when at the hot point of a generator.
The Appellant contends the Examiner has not established that the
Schottky diodes of Spitz exhibit the thermal resistance values recited in
claims 13—15, such as by establishing the values are inherent to the diodes of
Spitz, and that Spitz is silent with regard to these values. Appeal Br. 5;
Reply Br. 4—5.
The Appellant’s arguments are unpersuasive. The Examiner
concludes it would have been obvious for the Schottky diodes of Spitz to
possess the recited thermal resistance values “so that low conducting-state
power losses increase the efficiency and the output power of the generator.”
Ans. 5. Spitz’s disclosure supports this conclusion by suggesting operation
of high-efficiency Schottky diodes at higher temperatures at which power
losses increase with increasing temperature, as discussed above with regard
to the rejection of claim 11. Consistent with the Examiner’s analysis (e.g.,
7
Appeal 2017-004219
Application 13/814,161
Ans. 5), it would have been obvious to one of ordinary skill in the art to
modify the Schottky diodes—through nothing more than screening of known
materials—to minimize or avoid the problem of thermal instability at higher
temperatures disclosed by Spitz (Spitz 19), such as by selecting a barrier
layer from known materials that are determined via routine experimentation
to lower the thermal resistance between the barrier layer and ambient air.
Such a modification would increase the effect of cooling due to rotation of a
generator and make the generator operate more efficiently at higher
temperatures, as concluded by the Examiner. As a result, the Examiner has
set forth a prima facie case of obviousness and the Appellant’s rebuttal
arguments do not identify a reversible error in the Examiner’s rejection.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103(a) rejection of claims 13—15.
D. SUMMARY
The Examiner’s decision to reject claims 11 and 13—20 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
8