Ex Parte Jensen et al

Patent Trial and Appeal Board

Mar 25, 2016

12463572 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/463,572 05/11/2009
7590 03/28/2016
Thomas A. Miller
Caterpillar, Inc
c/o Miller, Matthias & Hull LLP
One North Franklin Street, Suite 2350
Chicago, IL 60606
FIRST NAMED INVENTOR
Jeffrey E. Jens en
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.
50100/08-397 9883
EXAMINER
EBNER, KA TY MEYER
ART UNIT PAPER NUMBER
3618
MAILDATE DELIVERY MODE
03/28/2016 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 JEFFREY E. JENSEN, BRIAN HOWSON,
DAVID M. SPURLOCK, and MICHAEL J. BARNGROVER
Appeal2014-001758
Application 12/463,572 1
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' claimed invention "relates generally to an energy
recovery and cooling system for a hybrid machine" and, in particular, "to a
1 According to Appellants, the real party in interest is Caterpillar Inc.
(Appeal Br. 2.)
Appeal2014-001758
Application 12/463,572
system for successively recovering and using thermal energy from a
plurality of machine components on a hybrid machine." (Spec. i-f 1.)
Claims 1, 12, and 17 are the independent claims on appeal. Claim 1 is
representative and reproduced below:
1. An apparatus comprising:
a fluid pump operably connected to a condenser;
a fluid path operably connected to the fluid pump and to a
turbine, the fluid path being configured to convey a fluid pumped
by the fluid pump; and
a first machine component and a second machine
component connected in series in the fluid path, the first machine
component having a static operating temperature equal to or
lower than a static operating temperature of the second machine
component, wherein the fluid path is in thermal communication
with the first machine component and the second machine
component, the first and second machine components being
ordered in the fluid path such that the fluid path first contacts the
first machine component prior to contacting the second machine
component.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable overDauksis (US 5,176,000, iss. Jan. 5, 1993) and Noguchi
(US 8,037,956 B2, iss. Oct. 18, 2011).
FINDINGS OF FACT
\Ve rely on the Examiner's findings of fact stated in the Non-Final
Office Action mailed Feb1uary 11~ 2013, and in the Answer, Additional
findings of fact may appear in the Analysis below.
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Application 12/463,572
ANALYSIS
Claims l, 3, 5--8, 12-14, and 17-20
Independent claim 1 recites, in relevant part, (emphasis added):
the first machine component having a static operating
temperature equal to or lower than a static operating
temperature of the second machine component, ... the first and
second machine components being ordered in the fluid path such
that the fluid path first contacts the first machine component prior
to contacting the second machine component.
Independent claims 12 and 17 each contain a similar limitation.
The Examiner finds:
Dauksis discloses an apparatus compnsmg: ... a first
machine component (engine cooling system 80) and a second
machine component (engine exhaust system 10) connected in
series in the fluid path, ... the first and second machine
components being ordered in the fluid path such that the fluid
path first contacts the first machine component prior to
contacting the second machine component (Fig. 1 ).
Dauskis [sic] does not explicitly disclose that the engine
cooling system (i.e., the first machine component) has a static
operating temperature equal to or lower than a static operating
temperature of the exhaust system (i.e., the second machine
component). However, it is noted that it is known in the art that,
during regular operation, engines have a lower static operating
temperature than engine exhaust systems.
(Non-Final Action 3.)
Although Dauksis does not explicitly state the relative temperatures of
the engine exhaust and cooling systems, Appellants do not dispute the
Examiner's finding that an engine exhaust system is known to operate at a
higher temperature than an engine cooling system (see Non-Final Action 3,
see also Answer 2). Therefore, Dauksis shows a "first machine component
having a static operating temperature equal to or lower than a static
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operating temperature of the second machine component" and "the first and
second machine components being ordered in the fluid path such that the
fluid path first contacts the first machine component prior to contacting the
second machine component," as recited in claim 1. (See Dauksis, Figs. 1, 2.)
Moreover, the Examiner finds that "Noguchi et al. disclose a vehicle
component fluid path configured such that fluid contacts the component
having a lower static operating temperature before contacting a component
having a higher static operating temperature (column 2, lines 12 - 17, and
column 6, lines 57 - 67)." (Final Action 4.) Thus, "[a]rranging machine
components [in] ascending temperature order in a fluid path is not inventive,
as it is implicitly disclosed by Dauksis [and] explicitly disclosed by
Noguchi." (Answer 4.)
Therefore, Appellants have not persuaded us that the Examiner erred
in combining Dauksis and Noguchi; nor have Appellants persuaded us that
the combination of Dauksis and Noguchi does not disclose the final
limitation of claim 1 and the similar limitations in independent claims 12
and 17.
With regard to claims 17-20, Appellants further argue that the
Examiner does not state a prima facie case of obviousness. (Appeal Br. 11.)
We do not agree. The Non-Final Office Action states, with specific
reference to claims 17-20, that "Noguchi et al. disclose a method of
pumping fluid along the fluid path" and that "Dauksis discloses a method
employing the heat content of a fluid to power a turbine and condensing the
fluid for reuse." (Non-Final Action 5.) Moreover, as the Examiner explains,
"[ d]ue to the substantial similarities between the apparatus recited in claims
1 - 16 and the method recited in claims 17 - 20, the details of the rejection
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applied to the apparatus were not repeated" and the Non-Final Office Action
directed the Appellants to the relevant section of Dauksis. (Answer 9.) As a
procedural matter, this is sufficient to present a prima facie case of
obviousness. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
For the above reasons, Appellants have not persuaded us that the
Examiner erred in rejecting independent claims 1, 12, and 17, or in rejecting
dependent claims 3, 5-8, 13, 14, and 18-20, which, except as noted above,
were not separately argued from their respective independent claims.
Claims 2, 4, 15, and 16
Appellants argue dependent claims 2, 4, 15, and 16 together. (See
Appeal Br. 7-9.) Therefore, these claims stand or fall together. 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 2 is representative and reproduced below:
2. The apparatus of claim 1, wherein one of the first
machine component and the second machine component
includes a batteP;.
The Examiner finds that Noguchi teaches a battery arranged in a fluid
path. (See Non-Final Action 4.) The Examiner concludes that it would have
been obvious to incorporate a battery into Dauksis' s fluid path "in order to
combine the cooling systems and achieve the space[] and cost-saving
advantages taught by Noguchi et al." (Id. at 5; see also Answer 5---6.)
Appellants argue that "it would not have been obvious to add a
battery ... into the fluid path in Dauksis to cool the battery." (Appeal Br. 7-
8.) In particular, Appellants argue, but provide no persuasive evidence, that
the components in Dauksis' s fluid path "would overheat batteries, not cool
them." (Id. at 8.)
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The Examiner disagrees with Appellants' argument and finds that
Noguchi et al. address the disparate operating temperatures of the
various components by placing them in ascending temperature
order in the fluid path. Furthermore, if placing batteries in the
same cooling loop as an engine jacket and exhaust manifold
jacket would overheat the battery (Appeal Brief, page 8),
appellant's fluid path would be equally ineffective at cooling a
battery as the fluid path disclosed by Dauksis.
(Answer 7.)
Appellants do not respond to the Examiner's argument and have not
persuaded us that the Examiner erred in concluding that it would have been
obvious to incorporate a battery into Dauksis' s fluid path.
Appellants next argue that "Dauksis already includes batteries 26 in
the overall system, and specifically avoids putting the batteries in the fluid
loop with the engine jacket and exhaust jacket." (Appeal Br. 8.) Therefore,
Appellants argue, "combining Dauksis with Noguchi in the suggested
manner would undermine this principle of operation." (Id.)
Dauksis generally relates to a system for "utilizing the excess heat
generated by the internal combustion engine, to charge electric motor
energizing batteries." (Dauksis, col. 1, 11. 66-68.) Specifically, Dauksis
discloses that
a fluid is first heated in an internal combustion engine cylinder
water jacket and then converted to its gaseous phase in a double
walled manifold enshrouding the internal combustion engine
exhaust manifold. The gas then turns a turbine ... rotatably
connected to a generator which produces electrical energy when
the turbine turns. This electrical energy is used to charge a bank
of batteries. The bank of batteries is used to supply an electrical
motor.
(Id. at Abstract.) Although Dauksis shows the batteries 26 positioned
outside of the fluid path (see, e.g., Dauksis, Fig. 2), Appellants do not
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persuasively explain why including a battery in Dauksis's fluid path, as
proposed, would undermine Dauksis' s principle of transferring excess heat
to the fluid path to ultimately charge batteries 26 or would undermine any
other principle of operation of Dauksis. Additionally, to the extent that
Appellants are arguing that the prior art teaches away from the Examiner's
combination, e.g., Appellants' assertions that "Dauksis ... specifically
avoids putting batteries in the fluid loop" and that the combination is "taught
away from" (Appeal Br. 8), Appellants do not persuasively explain how the
positioning of batteries 26 in Dauksis' s Figures, without more, criticizes,
discredits, or otherwise discourages adding batteries to the fluid path. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants further argue that the proposed combination "is not
technically logical" because "neither reference teaches a system that could
accommodate the high temperature components of Dauksis without
destroying the sensitive low temperature components proposed to be added
from Noguchi." (Appeal Br. 9.) According to Appellants, for the
"combination to work without destroying components, the Dauksis system
would be [sic] definition have to be able to reconcile over 1000°F of
component difference. Not only does Dauksis fail to teach such a system,
but Noguchi also fails to teach such a system." (Id.)
Appellants' argument for the asserted 1000°F difference relies on
newly presented evidence, i.e., a citation to a website. (See id.) However,
this was not evidence of record and will not be considered. See 3 7 CPR
§ 41.37(c)(2) ("A brief shall not include ... any new or non-admitted
affidavit or other Evidence.") Regardless, and as discussed above, the
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Examiner finds that "Noguchi et al. address the disparate operating
temperatures of the various components." (Answer 7.)
For the above reasons, Appellants have not persuaded us that the
Examiner erred in rejecting claims 2, 4, 15, and 16.
Claims 9-11
Appellants argue dependent claims 9-11 together. (See Appeal Br. 9-
10.) Therefore, these claims stand or fall together. 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 11 is representative and is reproduced below:
11. The apparatus of claim 10, wherein the radiator fan is
configured to be driven such that it increases speed when there is
an increase in heat generated by one of the first machine
component and the second machine component.
The Examiner determines that it would have been obvious "to further
modify the system disclosed by Dauksis to include the fans taught by
Noguchi et al. to facilitate cooling of the components." (Non-Final
Action 5.) The Examiner also determines that "[i]t is well known in the art
that an increase in fan speed improves heat transfer." (Id.) Additionally, the
Examiner finds that "[t]he fans disclosed by Noguchi et al. are capable of
being driven at an increased speed to accommodate an increase in heat
generation by the machine components." (Id.)
Appellants argue that "there is no indication in Noguchi that its
fans are actually capable of variable speed let alone increased speed."
(Appeal Br. 9.) Appellants also argue that additional cooling of Dauksis's
fluid "runs counter to the principles of Dauksis" because "doing so would
only waste the energy that Dauksis is trying to extract and use. Indeed, such
excess cooling would result in the very disadvantage that Dauksis lamented
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in the Background: excess energy being 'squandered in the form of heat
lost.'" (Id. at 1 O; see also Dauksis, col. 1, 11. 17-20.)
The Examiner answers that "variable speed fans are old and well-
known in the art. It is maintained that providing a variable speed fan enables
improved or reduced cooling, as necessary." (Answer 8.)
Appellants do not respond to the Examiner's further argument; nor do
Appellants dispute the Examiner's finding that "an increase in fan speed
improves heat transfer." (Non-Final Action 5.)
As discussed above, in Dauksis' s system, excess heat is transferred to
the fluid flowing toward turbine 14, which turns generator 22 to charge
batteries 26. (See Dauksis, col. 3, 11. 33-56 and Fig. 2.) As the Examiner
points out, "[c]ooling of the fluid [exiting turbine 14] is necessary before
returning the fluid to the fluid path to repeat the cycle." (Answer 9, citing
Dauksis, col. 3, 11. 58---63.) In other words, cooling the fluid, as proposed,
enables the fluid to absorb more excess heat from the components along the
fluid path and, thus, provide more energy to the turbine. Accordingly, we
are not persuaded that the inclusion of a variable speed fan would be
contrary to the principles of Dauksis or would result in "excess energy being
'squandered in the form of heat lost."' (See Appeal Br. 10.)
Appellants' other arguments have been considered but are not deemed
persuasive of error.
For the above reasons, Appellants have not persuaded us that the
Examiner erred in rejecting claims 9-11.
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DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) 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
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