Ex Parte Karl

Board of Patent Appeals and Interferences

Aug 17, 2006

09802982 (B.P.A.I. Aug. 17, 2006)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte STEFAN KARL
_____________

Appeal No. 2006-1228
Application No. 09/802,982
______________

HEARD: July 25, 2006
_______________

Before OWENS, LEVY, and NAPPI, Administrative Patent Judges

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1, 2, 8-15 and
17-23. Claims 3 and 16 have been withdrawn from consideration by
the examiner, and claims 4-7 have been canceled.
THE INVENTION
The appellant claims a device comprising heat-pump and air-
conditioning branches for heating and/or air conditioning the
passenger compartment of a motor vehicle. Claim 1 is
illustrative:

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Application No. 09/802,982

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1. A device for heating and/or air conditioning the
passenger compartment of a motor vehicle, comprising an
engine-cooling loop in which a heat-carrying fluid
circulates for taking up heat from the engine and
returning the heat to an air heater; a heat-pump loop
in which a refrigerant fluid circulates, said heat-pump
loop containing a compressor, a first evaporator
constituting a cold source of the heat jump at which
the refrigerant fluid takes up heat from the
surroundings, and a first condenser constituting a hot
source of the heat pump at which the refrigerant fluid
gives up heat, the first condenser being integrated
into the engine-cooling loop upstream of the air
heater, the device further comprising an air-
conditioning branch containing a second condenser and a
second evaporator, the air-conditioning branch having
an upstream end connected to the heat-pump loop
downstream of the compressor, and a downstream end
connected to the heat-pump loop upstream of the
compressor, and a switching device making it possible
to make the refrigerant fluid circulate either in the
air-conditioning branch, or in the heat-pump branch, is
[sic: in] such a way as to form a heat-pump loop.

THE REFERENCES
Whalen 3,910,345 Oct. 07,1975
Enomoto et al. (Enomoto) 5,291,941 Mar. 08,1994
Echigoya et al. (Echigoya) 5,971,290 Oct. 26,1999
Patry1 2,288,278 May 14, 1976
(French patent)
Momose 59-24134 Feb. 07, 1984
(Japanese Kokai)
Obara 63-207709 Aug. 29, 1988
(Japanese Kokai)
Noda et al. (Noda) 10-76837 Mar. 24, 1988
(Japanese Kokai)
Suzuki et al. (Suzuki) 11-34640 Feb. 02, 1999
(Japanese Kokai)

1 Citations herein to Patry, Momose, Obara, Noda and Suzuki are to the English
translations thereof which are of record.
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Application No. 09/802,982

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THE REJECTIONS
The claims stand rejected as follows: claims 12, 15 and 17-
23 under 35 U.S.C. § 112, first paragraph, written description
requirement; claims 2, 8, 9, 11 and 12 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention; claims 1, 2, 10, 11, 13 and
14 under 35 U.S.C. § 103 over Noda in view of Enomoto; claims 8
and 9 under 35 U.S.C. § 103 over Noda in view of Enomoto and
Echigoya; claims 12, 15 and 17-23 under 35 U.S.C. § 103 over Noda
in view of Enomoto and Whalen, Momose or Patry; claims 15 and 17
under 35 U.S.C. § 103 over Noda in view of Enomoto and Obara;
claims 18 and 19 under 35 U.S.C. § 103 over Noda in view of
Enomoto and Suzuki; and claims 12 and 20-23 under 35 U.S.C. § 103
over Noda in view of Enomoto, Obara and Suzuki.
OPINION
We affirm the rejections of claims 1, 2, 10, 11, 13 and 14
under 35 U.S.C. § 103 over Noda in view of Enomoto, and claims 8
and 9 under 35 U.S.C. § 103 over Noda in view of Enomoto and
Echigoya, and reverse the other rejections.
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Rejection of claims 12, 15 and 17-23 under
35 U.S.C. § 112, written description requirement
The examiner argues that “to the extent that all of these
claims can be read to claim some automatic control system of
these valves to produce some intended effect on compressor
pressure, there simply is no support in the original
specification for any type of automatic control” (answer,
page 3).
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The rejected claims require valve systems for controlling
the flow of heat-carrying fluid through a first evaporator and a
first condenser. The appellant’s specification shows possession
of such valves (page 5, lines 9-17), and does not limit the
valves to being either manual or automatic. Hence, the
specification provides adequate written descriptive support for
the recitation of valves generally in the rejected claims.
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We therefore reverse the rejection of claims 12, 15 and 17-
23 under 35 U.S.C. § 112, first paragraph, written description
requirement.
Rejection of claims 2, 8, 9, 11 and 12
under 35 U.S.C. § 112, second paragraph
The examiner argues that it is unclear which of the two
evaporators or two condensers in claim 1 are referred to in
claims 2 and 11 (answer, page 4).
Claim 2, which depends from claim 1, includes “the
evaporator of the heat-pump loop”. In claim 1, only one heat-
pump loop evaporator is recited, and it is referred to as the
first evaporator. Claim 11, which depends from claim 1, recites
that “the heat-pump loop includes pressure-reducing means for
reducing the pressure of the refrigerant fluid between the
condenser and the evaporator.” It is clear that the condenser
and evaporator are those of the heat-pump loop, and claim 1
refers to them, respectively, as the first condenser and the
first evaporator. Hence, it is clear which evaporator and
condenser in claim 1 are referred to in claims 2 and 11.
The examiner argues that the accumulator in claims 8 and 9
does not exist in elected figure 3 (answer, page 4). That
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Application No. 09/802,982

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accumulator, as stated in the specification, is integrated into
evaporator 16 (page 12, lines 19-21).
The examiner argues that in claim 12, the first and second
valve systems are not well defined and the anti-return valve is
not upstream of the evaporator (brief, page 4). The examiner’s
mere assertion that the first and second valve systems are not
well defined is not adequate for establishing that the claim
would have been unclear to one of ordinary skill in the art. As
for the anti-return valve, the anti-return valve (42) in figure 3
is in the inlet to the evaporator (16) and, therefore, reasonably
can be considered to be upstream of the evaporator.
For the above reasons we reverse the rejection of claims 2,
8, 9, 11 and 12 under 35 U.S.C. § 112, second paragraph.
Rejection of claims 1, 2, 10, 11, 13 and 14
under 35 U.S.C. § 103 over Noda in view of Enomoto
Noda discloses a motor vehicle passenger compartment heating
system comprising a loop wherein hot refrigerant from a
compressor (2) passes through a condenser (3) to heat hot water
from the engine (1) before the water passes through heater cores
(13, 23) that heat air entering the passenger compartment, and
the refrigerant that exits the condenser passes through a liquid
tank (4) and an expansion valve (5) and then passes through an
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evaporator (6) where it takes up heat from water entering the
engine (figure 1).
Enomoto discloses a motor vehicle passenger compartment
heating and cooling system comprising 1) a main conduit (16)
through which refrigerant flows from a compressor (10) through,
sequentially, a pressure sensor (104), a first electric
valve (181), a condenser (11), a receiver (12), a check
valve (24), a first expansion valve (13), a heat exchanger (14),
and an evaporator/accumulator (15), and then returns to the
compressor, and 2) a bypass conduit (20) through which
refrigerant from the compressor flows, sequentially, through the
pressure sensor (104), a second electric valve (182), a second
expansion valve (22), the heat exchanger (14), and the
evaporator/accumulator (15), and then returns to the compressor
(figure 1).
The appellant argues that the references provide no
motivation to use Enomoto’s air conditioning circuit in Noda’s
system because Noda has no air conditioner and Enomoto already
has both heating and cooling circuits (brief, page 12). That
motivation would have been to provide air conditioning along with
the benefits of Noda’s heating system.
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The appellant argues that unlike the heating circuits of the
appellant and Noda, the heating circuit in Enomoto’s figure 8
does not include an evaporator (brief, page 17). Noda is relied
upon by the examiner for a disclosure of the appellant’s heating
circuit that includes an evaporator (answer, page 5). Moreover,
Enomoto shows an evaporator (15) in the heating circuit in
figure 1.
The appellant argues that if one of ordinary skill in the
art were to combine the teachings of Noda and Enomoto, the
resulting system would be one of those sketched by the appellant
on pages 14 and 16 of the brief (brief pages 13-16). The sketch
on page 14 leaves out Enomoto’s condenser (11) upstream of the
receiver (12). That condenser is comparable to the appellant’s
condenser 36. The sketch on page 16 does not provide Enomoto’s
air conditioning circuit.
The appellant argues that the examiner’s proposed
combination fails to render obvious a three-way valve switching
device that makes it possible to circulate the refrigerant fluid
in either the air-conditioning branch or the heat-pump branch in
such a way as to form a heat-pump loop (brief, pages 15 and 17).
Such a switching device is Enomoto’s electric valves 181 and 182
which can be replaced by a three-way valve (col. 6, lines 1-2).
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Regarding claim 2 the appellant argues that in Noda’s figure
8, the evaporator is downstream of the engine (brief, page 17).
Noda does not have a figure 8. The evaporator (6) in figure 1 is
upstream of the engine.
With respect to claim 11 the appellant argues that the
references fail to disclose a means for reducing the pressure of
the refrigerant fluid between the condenser and the evaporator in
the heat pump loop (brief, page 18). Such a means is Noda’s
expansion valve (5).
The appellant does not provide a substantive separate
argument as to claims 10, 13 and 14 (brief, page 18).
For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claims 1, 2, 10, 11, 13
and 14 under 35 U.S.C. § 103 over Noda in view of Enomoto.
Accordingly, we affirm that rejection.
Rejection of claims 8 and 9 under 35 U.S.C. § 103
over Noda in view of Enomoto and Echigoya
Echigoya discloses a vehicle heat exchange system having an
accumulator (66) at the inlet of a compressor (62), and teaches
that the accumulator separates the cooling medium into a liquid
coolant and a gas coolant, and supplies only gas coolant to the
compressor (col. 3, lines 64-67).
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Patry discloses a heat pump for air conditioning the
interior of a building (page 1).
The appellant argues that Echigoya’s accumulator is not
common to both the air-conditioning and heat-pump loops (brief,
page 18). The appellant does not argue that the references lack
a refrigerant fluid accumulator in the air-conditioning loop as
required by claim 8. The appellant’s argument pertains only to
claim 9. Echigoya’s disclosure that the accumulator prevents
liquid from entering the compressor would have fairly suggested,
to one of ordinary skill in the art, an accumulator at the inlet
to the compressor that is common to the heating and air-
conditioning loops in Enomoto’s system (compressor 10, figure 1).
Regardless, Enomoto’s evaporator/accumulator (15) is common to
the heating and air-conditioning loops (figure 1).
We therefore affirm the rejection of claims 8 and 9 under
35 U.S.C. § 103 over Noda in view of Enomoto and Echigoya.
Rejection of claims 12, 15 and 17-23
under 35 U.S.C. § 103 over Noda in view of
Enomoto and Whalen, Momose or Patry
Whalen discloses a heating and cooling system for a multi-
story building (col. 1, lines 4-5).
Momose discloses a calorimeter for an air conditioner
(page 1).
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The examiner argues that because Whalen and Momose (and
presumably Patry which, like Whalen, discloses a building air-
conditioning system) are in the examiner’s search class, the fact
that they pertain to different systems is irrelevant (answer,
pages 16-17). The mere fact that references are in the same
search class does not mean one of ordinary skill in the art would
have combined their teachings. There must be some teaching from
the prior art itself which would have suggested the combination.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The examiner has not provided evidence that the applied
references themselves would have fairly suggested, to one of
ordinary skill in the art, combining the relied upon teachings
pertaining to building heating and cooling systems and an air
conditioner calorimeter with the vehicle passenger compartment
systems of Noda and Enomoto.
The examiner argues that the structures in Noda’s figures 3
and 4 are modules (answer, page 16). What the appellant’s
claim 12 requires is a modular casing containing the recited
components, and the examiner has not explained how the applied
references would have fairly suggested such a modular casing to
one of ordinary skill in the art.
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Thus, the examiner has not carried the burden of
establishing a prima facie case of obviousness of the appellant’s
claims 12, 15 and 17-23 under 35 U.S.C. § 103 over Noda in view
of Enomoto and Whalen, Momose or Patry. Consequently, we reverse
that rejection.
Rejection of claims 15 and 17 under 35 U.S.C. § 103
over Noda in view of Enomoto and Obara
Obara discloses a vehicle air conditioner (page 1). The
examiner relies (answer, page 7) upon Obara’s second water
valve (13) which controls the flow rate of hot water into a
heater core (12) (page 5). The examiner states that “[t]he
examiner has looked but has not found the control of compressor
inlet pressure using valve systems such as disclosed by
Appellant” (answer, page 17). We therefore reverse the rejection
of claims 15 and 17 under 35 U.S.C. § 103 over Noda in view of
Enomoto and Obara.
Rejection of claims 18 and 19 under 35 U.S.C. § 103
over Noda in view of Enomoto and Suzuki
Suzuki discloses a vehicle heating and cooling system
(¶ 0001). The examiner relies (answer, page 7) upon Suzuki’s
valves 45 for bypass around radiator 42 (¶ 0012). Claims 18
and 19 require a valve system for bypass around a condenser. The
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examiner incorrectly considers Suzuki’s radiator to be a
condenser (answer, page 7). Because the examiner has not
established that the applied prior art would have fairly
suggested, to one of ordinary skill in the art, a valve system
for bypass around a condenser, we reverse the rejection of claims
18 and 19 under 35 U.S.C. § 103 over Noda in view of Enomoto and
Suzuki.
Rejection of claims 12 and 20-23
under 35 U.S.C. § 103 over Noda in view of
Enomoto, Obara and Suzuki
The examiner argues that it would have been obvious to one
of ordinary skill in the art to combine Suzuki’s condenser bypass
control valves (45) with the other applied references (answer,
page 8). As pointed out above, Suzuki’s bypass is around a
radiator instead of a condenser. Also, the examiner has not
explained how the applied references would have fairly suggested
the appellant’s modular casing to one of ordinary skill in the
art.
We therefore reverse the rejection of claims 12 and 20-23
under 35 U.S.C. § 103 over Noda in view of Enomoto, Obara and
Suzuki.
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Application No. 09/802,982

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DECISION
The rejections of claims 12, 15 and 17-23 under
35 U.S.C. § 112, first paragraph, written description
requirement, and claims 2, 8, 9, 11 and 12 under 35 U.S.C. § 112,
second paragraph, are reversed. The rejections of claims 1, 2,
10, 11, 13 and 14 under 35 U.S.C. § 103 over Noda in view of
Enomoto, and claims 8 and 9 under 35 U.S.C. § 103 over Noda in
view of Enomoto and Echigoya, are affirmed. The rejections of
claims 12, 15 and 17-23 under 35 U.S.C. § 103 over Noda in view
of Enomoto and Whalen, Momose or Patry, claims 15 and 17 under 35
U.S.C. § 103 over Noda in view of Enomoto and Obara, claims 18
and 19 under 35 U.S.C. § 103 over Noda in view of Enomoto and
Suzuki, and claims 12 and 20-23 under 35 U.S.C. § 103 over Noda
in view of Enomo1to, Obara and Suzuki, are reversed.

Appeal No. 2006-1228
Application No. 09/802,982

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No time period for taking any subsequent action in

connection with this appeal may be extended under 37 CFR

§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

TJO/vsh
Appeal No. 2006-1228
Application No. 09/802,982

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