Ex Parte Johnston et al

Patent Trial and Appeal Board

Jan 30, 2019

13459112 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/459, 112 04/28/2012 Vincent George Johnston
113241 7590 02/01/2019
Garlick & Markison (TSLA)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
2011US0047/P0576-2NUS 2121
EXAMINER
TADESSE, MARTHA
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
mmurdock@texaspatents.com
bpierotti@texaspatents.com
patentdocket@tesla.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT GEORGE JOHNSTON,
CURT RAMOND O'DONNELL, WULFER ADRIJAN de BRUIJN,
and MARCO ELKENKAMP
Appeal 2018-005231 1
Application 13/459,1122
Technology Center 3700
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 26-40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Oct. 2,
2017), the Reply Brief ("Reply Br.," filed Apr. 23, 2018), the Examiner's
Answer ("Ans.," mailed Feb. 22, 2018), and the Final Office Action ("Final
Act.," mailed Mar. 31, 2017).
2 According to Appellants, the real party in interest is Tesla Motors Inc.
Appeal Br. 2.
Appeal2018-005231
Application 13/459, 112
BACKGROUND
According to Appellants, "[t]he present invention relates generally to
thermal control systems and, more particularly, to a system for controlling
the level of heat rejection from the coolant fluid in a vehicle cooling system
to the refrigerant of a refrigeration system in the coolant-to-refrigerant heat
exchanger of a vehicle thermal management system." Spec. ,r 2.
CLAIMS
Claims 26 and 34 are the independent claims on appeal. Claim 26 is
illustrative of the appealed claims and recites:
26. A method of regulating thermal dissipation of a battery
pack of a vehicle, the vehicle including a coolant loop coupled to
and in thermal communication with the battery pack and a heat
exchanger, a refrigeration system coupled to and in thermal
communication with the heat exchanger and an evaporator, a
coolant within the coolant loop, and a by-pass valve coupled to
the coolant loop to regulate a first amount of the coolant that
flows through the heat exchanger and a second amount of the
coolant that is diverted around the heat exchanger, the method
compnsmg:
determining a first temperature corresponding to the
coolant;
comparing the first temperature to a first preset
temperature range;
adjusting the by-pass valve at a first time based on
comparing the first temperature to the first preset temperature
range;
comparing a second temperature corresponding to an
evaporator outlet temperature before adjusting the by-pass valve
at the first time to a third temperature corresponding to the
evaporator outlet temperature after adjusting the by-pass valve at
the first time; and
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Appeal2018-005231
Application 13/459, 112
adjusting the by-pass valve at a second time after the first
time to decrease the first amount of the coolant that flows
through the heat exchanger and increase the second amount of
the coolant that is diverted around the heat exchanger if the
second temperature and third temperature are not within a preset
range.
Appeal Br. 15.
REJECTIONS
1. The Examiner rejects claims 26-40 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 26-40 under 35 U.S.C. § I03(a) as
unpatentable over Nemesh3 in view of Dogariu. 4
DISCUSSION
Indefiniteness
The Examiner finds that limitations drawn to an "evaporator outlet
temperature" render the claims indefinite because it "is unclear as to if said
limitations refer to the evaporator outlet air temperature or the evaporator
outlet refrigerant temperature." Final Act. 2. Appellants do not present
argument regarding the substance of the rejection of claims 26-40 under
35 U.S.C. § 112, second paragraph. See Appeal Br. 7-8. Rather, Appellants
assert that an after final amendment regarding the claim language at issue
should have been entered and that "the amendment will be made after the
appeal which will cause this rejection to be moot." Id. Thus, Appellants
3 Nemesh et al., US 2010/0012295 Al, pub. Jan. 21, 2010.
4 Dogariu et al., US 2009/0317697 Al, pub. Dec. 24, 2009.
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Appeal2018-005231
Application 13/459, 112
have not shown any error in the rejection as it stands. 5 Accordingly, we
summarily sustain this rejection.
Obviousness
We are persuaded of reversible error in the rejection of independent
claims 26 and 34 because the Examiner has failed to establish that it would
have been obvious for the proposed combination to be operable to compare
first and second temperatures at an evaporator outlet and to adjust the by-
pass valve if the first and second evaporator outlet temperatures are not
within a preset range.
Even if we were to agree with the Examiner that it would have been
obvious to combine Nemesh and Dogariu as proposed, we find that the
Examiner has not established that the combination would result in the
method and device required by the independent claims. Each of the claims
requires comparing a "second temperature" at an evaporator outlet to a
"third temperature" at the evaporator outlet and adjusting the by-pass valve
when the second and third temperatures are not within a preset range. See
Appeal Br. 15-17. Yet, we fail to see how either reference individually
teaches such a comparison, and the Examiner has not otherwise explained
why the combination would teach such a comparison.
The Examiner finds that Nemesh teaches a system including a
temperature sensor for measuring the temperature at an evaporator outlet.
Final Act. 3--4 ( citing Nemesh ,r 20). Although the Examiner indicates that
Nemesh teaches "comparing a second temperature ... corresponding to an
5 We note that Appellants' argument regarding the Examiner's refusal to
enter an amendment is a petionable matter that is not before us on Appeal.
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Appeal2018-005231
Application 13/459, 112
evaporator outlet temperature," we agree with Appellants that the cited
portion ofNemesh discloses only that "sensor 90 may be employed to
measure the temperature of air flowing out of the evaporator." See id.; see
also Nemesh ,r 20. Nemesh does not appear to disclose the comparison
indicated by the Examiner, and Nemesh does not otherwise disclose a use
for this temperature sensor.
Further, the Examiner relies on Dogariu as teaching "comparing a
second temperature . . . corresponding to an evaporator outlet temperature ..
. ; and [then] adjusting the by-pass valve." Final Act. 4--5. However, we
agree with Appellants that the Examiner's indication that the evaporator air
temperature corresponds to the ambient air temperature disclosed in Dogariu
is not supported on the record before us. See Reply Br. 3. The Examiner
finds, without explanation, that the evaporator air temperature corresponds
to the ambient air temperature disclosed in Dogariu. Final Act. 4--5. But the
Examiner does not explain how these temperatures correspond to each other,
and it is not clear from the cited portions of Dogariu that they do. Further,
as Appellants point out, the Specification distinguishes cabin temperature,
i.e. ambient temperature, and HVAC evaporator air outlet temperature. See
Spec. ,r 23; Fig. 5. Thus, without further explanation, we find error in the
Examiner's finding that "Dogariu teaches the concept of a controller 68 ...
comparing a second temperature corresponding to an evaporator outlet
temperature ... to a third temperature corresponding to the evaporator outlet
temperature ... and adjusting the by-pass valve" based on that comparison,
because Dogariu does not appear to teach any measurement of the
evaporator outlet temperature.
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Appeal2018-005231
Application 13/459, 112
Further, we are not persuaded by the Examiner's assertion that the
claim limitations at issue would have been obvious simply because the
combination "would or could" be used to control a by-pass valve in the
manner claimed. An invention "composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007). Instead, a determination ofunpatentability on a
ground of obviousness must include "'articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness."' Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the
Examiner has not set forth any reason why one of ordinary skill in the art
would have found it obvious to compare temperatures at an evaporator outlet
and adjust the by-pass valve according to that comparison, which is of
particular import here because, as discussed above, neither reference
discloses measuring and comparing evaporator outlet temperatures for any
reason.
Based on the foregoing, we are persuaded of reversible error in the
rejection of independent claims 26 and 34. Accordingly, we do not sustain
the rejection of these claims as obvious. For the same reasons, we also do
not sustain the rejection of dependent claims 27-33 and 35--40 as obvious.
CONCLUSION
We AFFIRM the rejection of claims 26--40 under 35 U.S.C. § 112,
second paragraph. We REVERSE the rejection of claims 26--40 under
35 U.S.C. § 103(a).
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).
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Application 13/459, 112
AFFIRMED
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