Ex Parte HEIL et alDownload PDFPatent Trial and Appeal BoardAug 7, 201812512669 (P.T.A.B. Aug. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/512,669 07/30/2009 23911 7590 08/09/2018 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Michael HEIL 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. CONFIRMATION NO. 080437.61724US 6157 EXAMINER RUPPERT, ERIC S ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 08/09/2018 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): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL HEIL, MATTIAS BRUCE, and ROBERTSALZBERGER Appeal 2017-003411 Application 12/512,669 Technology Center 3700 Before JENNIFERD. BAHR, LEE L. STEPINA, and SEAN P. O'HANLON, Administrative Patent Judges. O'HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Heil et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision, as set forth in the Final Office Action dated March 21, 2016 ("Final Act."), rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief identifies Bayerische Motoren W erke Aktiengesellschaft as the real party in interest. Appeal Br. 1. Appeal 2017-003411 Application 12/512,669 SUMMARY OF THE INVENTION Appellants' disclosure is directed to "a method for controlling and/or regulating the evaporator temperature of an air conditioning system in a motor vehicle at high outside air temperatures, and to a control unit for carrying out the method." Spec. ,r 2. Claims 1 and 12 are independent. Claim 1, reproduced below from page 13 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. A method for controlling and/or regulating an evaporator temperature of an air conditioning system in a motor vehicle in a cooling mode, the method comprising the acts of: when an outside air temperature exceeds a predetermined limit value, controlling and/or regulating the evaporator temperature to a predetermined minimum evaporator temperature until a predetermined desired temperature in an interior of the vehicle is reached; and in response to reaching the predetermined desired temperature in the interior of the vehicle, incrementally increasing the evaporator temperature from the predetermined minimum evaporator temperature until the earlier of: (i) a predetermined interior humidity in the vehicle is reached, and (ii) the interior temperature is higher than the predetermined desired temperature for the interior of the vehicle. REJECTIONS Claims 1--4, 9, and 12-15 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Takahashi (US 6,330,909 Bl, issued Dec. 18, 2001), Park (US 2002/0166331 Al, published Nov. 14, 2002), Sughiura (JP 62-178420 A, issued Aug. 5, 1987), Yamashita (JP2002-192933 A, 2 Appeal 2017-003411 Application 12/512,669 published July 10, 2002), and Schildknecht (US 3,989,097, issued Nov. 2, 1976).2 Claims 5-8, 10, 11, and 16-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Takahashi, Park, Sughiura, Yamashita, Schildknecht, and Sewell (US 5,531,801, issued July 2, 1996). Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Takahashi, Park, Sughiura, Yamashita, Schildknecht, and Henkel (US 3,007,320, issued Nov. 7, 1961). ANALYSIS Rejection Based on Takahashi, Park, Sughiura, Yamashita, and Schildknecht Appellants present arguments for independent claims 1 and 12 collectively. See Appeal Br. 6-10. We select claim 1 as representative, treating claim 12 as standing or falling with representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Takahashi discloses a method of controlling and/ or regulating an evaporator temperature of an air conditioning system in a motor vehicle in a cooling mode, including, when an outside air temperature exceeds a predetermined value, allowing the evaporator temperature to be reduced to a predetermined minimum temperature until a predetermined desired temperature inside the vehicle is reached. Final Act. 2. The Examiner determines that "[t]he general concept of providing cooling to an apparatus to a lower limit falls within the realm of common knowledge as [an] obvious mechanical expedient," and, in support of this 2 The Examiner relies on English translations of the Japanese references, to which we also cite. 3 Appeal 2017-003411 Application 12/512,669 determination, finds that Park teaches actively controlling and/or regulating the evaporator temperature. Id. at 3. The Examiner relies on Sughiura to teach, in response to the vehicle interior reaching a predetermined desired temperature, increasing the evaporator temperature until a predetermined interior humidity in the vehicle is reached and the vehicle interior temperature exceeds the predetermined desired temperature. Id. at 3--4. The Examiner determines that it would have been obvious to one of ordinary skill in the art "to have modified Takahashi to include the controls of Sughiura, in order to maintain a comfortable humidity and temperature in the vehicle and provide power savings and efficient operation." Id. at 4. The Examiner relies on Schildknecht to teach activating an air conditioner compressor based on either the temperature or the humidity exceeding chosen respective values. Id. The Examiner determines that it would have been obvious to one of ordinary skill in the art "to have modified Takahashi to include wherein the evaporator temperature is increased until the earlier of the temperature or humidity set-points are reached, in order to provide a comfortable environment." Id. The Examiner relies on Yamashita to teach "the well-known concept of gradually increasing an evaporator temperature in response to a decrease in power to the compressor." Id. at 5. Appellants traverse, first arguing that Sughiura increases its evaporator temperature "in response to the vehicle interior temperature being lower than a desired temperature -rather than 'in response to reaching the predetermined desired temperature in the interior of the vehicle,' as claimed." Appeal Br. 6; see also Reply Br. 1-3. 4 Appeal 2017-003411 Application 12/512,669 Appellants' argument is directed to the following limitation (hereinafter, the "incremental increase" limitation) of claim 1: in response to reaching the predetermined desired temperature in the interior of the vehicle, incrementally increasing the evaporator temperature from the predetermined minimum evaporator temperature until the earlier of: (i) a predetermined interior humidity in the vehicle is reached, and (ii) the interior temperature is higher than the predetermined desired temperature for the interior of the vehicle. Appeal Br. 13 (Claims App., emphasis added). Thus, Appellants' method initiates the incremental increase of the evaporator temperature if the vehicle interior reaches a predetermined temperature, and will stop the incremental increase of the evaporator temperature if the vehicle interior exceeds the same predetermined temperature. Sughiura's system operates in the same manner: if the vehicle interior temperature is below a predetermined temperature, the evaporator temperature is increased, and if the vehicle interior temperature reaches the same predetermined temperature, the increase of the evaporator temperature is stopped. Sughiura 6-7. Appellants' efforts to distinguish "reaching" from "lower than" fail to apprise us of any difference in how the recited method and the method of Sughiura operate, and, thus, fail to apprise us of error. We agree with the Examiner that "reaching" a temperature below Sughiura's set point temperature meets the limitations of claim 1. See Final Act. 8; Ans. 10.3 Appellants next argue that Sughiura fails to disclose the incremental increase limitation because Sughiura increases evaporator temperature when 3 Our citations herein are to the second Examiner's Answer mailed on December 9, 2016. 5 Appeal 2017-003411 Application 12/512,669 two criteria-temperature and humidity levels-are satisfied rather than based solely on temperature. Appeal Br. 7-8; see also Reply Br. 3--4. We are not persuaded by Appellants' argument. Sughiura discloses increasing the temperature of the evaporator when the cabin humidity is lower than the preset humidity and the cabin temperature is lower than the preset temperature. Sughiura 6-7. Thus, Sughiura discloses, at least in some circumstances (i.e., when the cabin humidity is lower than the preset humidity), performing the claimed step of increasing the temperature in response to reaching the predetermined desired temperature in the interior of the vehicle. Furthermore, Appellants' argument that a condition additional to (in combination with) the one related to the interior temperature is precluded is not commensurate with the scope of claim 1, which uses the open-ended "comprising" transitional phrase. Appellants' argument, therefore, fails to apprise us of error. Additionally, we note that claim 1 does not require increasing the evaporator temperature if the predetermined desired temperature in the interior of the vehicle is not reached. See Ex Parte Schulhauser, No. 2013- 007847 (PTAB April 28, 2016) (precedential); see also Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 Fed. App'x 603, 607 (Fed. Cir. 2007) ("It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed"). Therefore, because the incremental increase limitation step is contingent on an event that may not occur, the claimed method can be carried out without performing the incremental increase limitation step. Accordingly, Appellants' arguments that Sughiura fails to disclose this step 6 Appeal 2017-003411 Application 12/512,669 is not commensurate in scope with claim 1 and, consequently, does not persuade us of Examiner error. Finally, Appellants argue that the Examiner's reliance on Schildknecht "is improper because it changes the principle of operation of the [Takahashi-Sughiura] combination." Appeal Br. 9. Specifically, Appellants identify the principle of operation as "to control the evaporator temperature to increase until both (i) [ a predetermined vehicle interior humidity is reached] and (ii) [the internal vehicle temperature is higher than the desired interior vehicle temperature] are met." Id.; see also id. at 8. According to Appellants, "considering only temperature (or only humidity) would result in a very different control approach than if both temperature and humidity were to be taken into account." Reply Br. 5. We are not persuaded by Appellants' arguments, and agree with the Examiner that "Sughiura's and Schildknecht's principle[s] of operation [are] broader than Appellant[s] contend[]." Ans. 11. Both Sughiura and Schildknecht measure temperature and humidity, and use these measurements to control operation of the compressor of an air conditioning system. Id.; Sughiura 3--4 ( explaining that such compressor control provides power savings), 6-7; Schildknecht 4:60-67. Appellants have not provided persuasive evidence that modifying Takahashi-Sughiura's system to control the compressor based on temperature or humidity within the vehicle interior would change the Takahashi-Sughiura combination's principle of operation because it would only change how Takahashi-Sughiura accomplishes the operation of the compressor to save power, but not the operations themselves. See In re Afouttet, 686 F .3d 1322, 1332 (Fed. Cir. 2012) (holding that a modification that only changes how a reference accornp1ishes 7 Appeal 2017-003411 Application 12/512,669 its operability, rather than the operations themselves, would not destroy its principle of operation). Nor do Appellants present persuasive evidence that the Examiner's modification of Sughiura's system would entail substantial reconstruction and redesign. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). Thus, Appellants fail to apprise us of error. Accordingly, for the foregoing reasons, we sustain the rejection of independent claims 1 and 12, as well as of dependent claims 2--4, 9, and 13- 15, which are not argued separately, as being unpatentable over Takahashi, Park, Sughiura, Yamashita, and Schildknecht. Rejections Based on Takahashi, Park, Sughiura, Yamashita, Schildknecht, and One of Sewell and Henkel Appellants do not present separate arguments for the rejections of dependent claims 5-8, 10, 11, and 16-20, instead relying on the arguments presented for claim 1. Appeal Br. 10-11. Accordingly, we sustain the rejections of: claims 5-8, 10, 11, and 16-18 as being unpatentable over Takahashi, Park, Sughiura, Yamashita, Schildknecht, and Sewell, and claims 19 and 20 as being unpatentable over Takahashi, Park, Sughiura, Yamashita, Schildknecht, and Henkel. DECISION The Examiner's decision to reject claims 1-20 is affirmed. 8 Appeal 2017-003411 Application 12/512,669 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 9 Copy with citationCopy as parenthetical citation