Ex Parte Gokhale et al

Patent Trial and Appeal Board

Sep 26, 2012

11167420 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANOJ PRAKASH GOKHALE,
ROY JAMES PRIMUS, and KENDALL ROGER SWENSON
____________

Appeal 2010-009398
Application 11/167,420
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009398
Application 11/167,420

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-26, 28, 29, 31, 33-37, 40-42, and 46-47. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention relates to a system and method for controlling
compressor choke in a turbocharged engine operated at high altitudes.
Spec. 1, para. [0001]. Claim 1, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A method of operating a turbocharged system,
comprising:
controlling speed of a turbocharger and substantially
eliminating choke of a compressor coupled to a turbine by
adjusting exhaust flow through a turbine waste gate, or by
adjusting airflow through a compressor recirculation valve, or
by adjusting a combination thereof in response to various
parameters including compressor inlet temperature, compressor
inlet pressure, and turbocharger speed; wherein:
if the compressor inlet pressure and the compressor inlet
temperature are less than first preselected values, then
controlling comprises:
at least partially opening the turbine waste gate, or the
compressor recirculation valve, or a combination thereof if the
turbocharger speed is greater than a first preselected speed; or
at least partially closing the turbine waste gate, or the
compressor recirculation valve, or a combination thereof if the
turbocharger speed is less than a second preselected speed; or
if the compressor inlet pressure and the compressor inlet
temperature are greater than second preselected values, then
controlling comprises at least partially closing the turbine
wastegate.

Appeal 2010-009398
Application 11/167,420

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kobayashi US 4,713,965 Dec. 22, 1987
Hayashi US 5,829,254 Nov. 3, 1998
Berger DE 197 05 463.31 Aug. 20, 1998
Wright US 6,782,737 B2 Aug. 31, 2004
Boley US 6,990,814 B2 Jan. 31, 2006
Ge US 7,143,580 B2 Dec. 5, 2006

The following rejections are before us for review.
1. Claims 1- 4, 7-9, 11, 12, 17, 18, 20, 21, 23-26, 29 and 33 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Hayashi.1
2. Claims 5, 6, 28, and 31 are rejected under 35 USC §103(a) as
being unpatentable over Hayashi and Berger.
3. Claims 10 and 42 are rejected under 35 USC § 103(a) as being
unpatentable over Hayashi and Ge.
4. Claims 13 and 14 are rejected under 35 USC § 103(a) as being
unpatentable over Hayashi and Wright.
5. Claims 15 and 16 are rejected under 35 USC § 103(a) as being
unpatentable over Hayashi, Wright, and Berger.
6. Claim 19 is rejected under 35 USC § 103(a) as being
unpatentable over Hayashi and Kobayashi.

1 Although the Examiner set forth the rejection of claims 20 and 21
(App. Br. 13) as a separate ground of rejection from the rejection of claims
1-4, 7-9, 11, 12, 17, 18, 23-26, 29, and 33 (App. Br. 4), we have
consolidated the two rejections as both rejections are under 35 U.S.C.
§ 103(a) as unpatentable over Hayashi.
Appeal 2010-009398
Application 11/167,420

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7. Claims 22, 34, 37, 40, and 41 are rejected under 35 USC
§ 103(a) as being unpatentable over Hayashi, Boley, and Ge.
8. Claims 35, 46, and 47 are rejected under 35 USC § 103(a) as
being unpatentable over Hayashi, Ge, and Berger.
9. Claim 36 is rejected under 35 USC § 103(a) as being
unpatentable over Hayashi, Ge, and Wright.

ANALYSIS
Rejection 1 – Obviousness based on Hayashi
The Examiner finds that Hayashi discloses the step of comparing
atmospheric pressure with a preselected value (ratio of PDmax/PRT), but
fails to separately and directly compare compressor inlet temperature to a
preselected value per se. Ans. 6-7. The Examiner also finds that Hayashi
stores preselected pressure ratio data as a function of turbocharger speed,
inlet pressure, and inlet temperature and inasmuch as Hayashi compares inlet
pressure with the preselected value of PDmax/PRT, the value of the
compressor inlet temperature being less than a preselected value can be
derived using the formula for the ideal gas law. Ans. 7. The Examiner notes
that it is well known in the art to: selectively open and close a turbine waste
gate and/or a compressor recirculation valve in response to parameters
including turbocharger speed; selectively open a turbine waste gate to avoid
back pressure of the exhaust gas; and selectively open a compressor
recirculation valve to avoid a surge, choke, or other abnormal condition in
the compressor. Ans. 7-8. However, the Examiner fails to make any
conclusion of law with respect to whether it would have been obvious to one
of ordinary skill in the art to modify Hayashi to generate a preselected
Appeal 2010-009398
Application 11/167,420

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comparison value for atmospheric temperature and use such comparison
value in the control logic that generates control commands to the waste gate
actuator. See Ans. 4-8.
The initial burden of presenting a prima facie case of obviousness
rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the Appellant. See Oetiker at 1445; see also In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Where there is an
attempt to show obviousness over a single reference, there must also be a
showing of a suggestion or motivation to modify the teachings of that
reference to achieve the claimed invention. Sibia Neurosciences, Inc. v.
Cadus Pharmaceutical Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
Determining obviousness with respect to whether a single piece of prior art
could be modified to produce the claimed invention invokes an inquiry into
whether a person having ordinary skill in the art would have had a reason to
so modify the prior art reference. See Comaper Corp. v. Antic, Inc., 596
F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness rejection relying on
such a modification to bridge the difference between the prior art and the
claimed invention must be supported by articulated reasoning with rational
underpinning to explain why the person of ordinary skill in the art would
make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Supreme Court has admonished lower courts that this analysis should be
made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing Kahn).
In the instant case, the key difference between Hayashi and the
claimed invention is how atmospheric temperature is taken into account in
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Application 11/167,420

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determining a control command to a waste gate actuator. Both systems
detect operating conditions for turbocharger speed, atmospheric pressure,
and atmospheric temperature. Both systems also store data based on
preselected values of, or at least derived from, turbocharger speed,
atmospheric pressure, and atmospheric temperature. However, we agree
with the Appellants that there is a difference between how the two systems
compare actual operating data to preselected values in order to derive control
commands to the waste gate. Appellants assert that their invention requires
that both inlet pressure and inlet temperature are each separately compared
to preselected values. App. Br. 12-15. We note the use of the plural form of
‘values’ in claim 1: “if the compressor inlet pressure and the compressor
inlet temperature are less than first preselected values.” See App. Br., Clms.
App’x. Emphasis added. We also agree with the Appellants that Hayashi
does not perform two separate, discrete comparisons, namely, a first
comparison based on pressure and a second, separate comparison based on
temperature, before determining a control command to the waste gate. App.
Br. 12.2
The Examiner found that “Hayashi fails to disclose the compressor
inlet temperature value being less than a preselected value” (Ans. 6), and

2 Because claim 1 requires that both inlet pressure and inlet
temperature are less than first preselected values when the turbocharger
speed is greater than a first preselected speed in order to generate a control
command to open the turbine waste gate, it is at least theoretically possible
that inlet pressure could be less than a first preselected value and the
turbocharger speed could be greater than a first preselected speed and yet no
control command to open the turbine waste gate would be generated by the
control system because the inlet temperature is not also less than a first
preselected value.
Appeal 2010-009398
Application 11/167,420

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merely observed that it is possible to derive a preselected comparison value
for atmospheric temperature using the formula for the ideal gas law (Ans.
26-28). The Examiner, as the party with the initial burden, failed to offer
any articulated reasoning with rational underpinning to explain why it would
have been obvious to a person of ordinary skill in the art to modify Hayashi
to not only generate the preselected comparison value for atmospheric
temperature, but also to use such comparison in the control logic that
generates control commands to the waste gate actuator.
Thus, because the Examiner did not articulate any reason supported
by a rational underpinning as to why it would have been obvious to a person
of ordinary skill in the art to modify Hayashi to achieve the claimed subject
matter, the burden never shifted to Appellants to come forward with
evidence or argument to overcome the Examiner’s rejection. See also App.
Br. 11-15. Accordingly, we do not sustain the Examiner’s rejection of
claims 1- 4, 7-9, 11, 12, 17, 18, 20, 21, 23-26, 29, and 33 as unpatentable
over Hayashi.
Rejections 2-9
Obviousness based on Hayashi/Berger, Hayashi/Ge,
Hayashi/Wright, Hayashi/Wright/Berger, Hayashi/Kobayashi,
Hayashi/Boley/Ge, Hayashi/Ge/Berger, and Hayashi/Ge/Wright
Appellants argue that none of Berger, Ge, Wright, Kobayashi, and
Boley cure the deficiency of the Examiner’s obviousness rejection based on
Hayashi alone. App. Br. 15-20. We agree. Accordingly, we also do not
sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of: claims 5, 6,
28, and 31 as unpatentable over Hayashi and Berger; claims 10 and 42 as
unpatentable over Hayashi and Ge; claims 13 and 14 as unpatentable over
Hayashi and Wright; claims 15 and 16 as unpatentable over Hayashi,
Appeal 2010-009398
Application 11/167,420

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Wright, and Berger; claim 19 as unpatentable over Hayashi and Kobayashi;
claims 22, 34, 37, 40, and 41 as unpatentable over Hayashi, Boley, and Ge;
claims 35, 46, and 47 as unpatentable over Hayashi, Ge, and Berger; and,
claim 36 as unpatentable over Hayashi, Ge, and Wright.

DECISION
We REVERSE the Examiner’s rejections of claims 1-26, 28, 29, 31,
33-37, 40-42, 46, and 47.

REVERSED

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