Ex Parte Keppy

Patent Trial and Appeal Board

Sep 18, 2018

14061101 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/061,101 10/23/2013
34044 7590 09/20/2018
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
BrentKeppy
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.
081276-9666-USOl 8067
EXAMINER
SCHARPF, SUSAN E
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT KEPPY
Appeal2017-008583
Application 14/061, 101
Technology Center 3700
Before KEVIN F. TURNER, MICHAEL L. HOELTER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-18. We
have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons explained below, we do not find error in the rejections
of claims 1---6 and 8-18, but we do not sustain the rejection of claim 7.
Accordingly, we AFFIRM-IN-PART.
1 The real parties in interest are identified as Robert Bosch LLC and Robert
Bosch GmbH. Br. 3. Robert Bosch GmbH is the applicant under 3 7 C.F .R.
§ 1.46.
Appeal2017-008583
Application 14/061, 101
Claimed Subject Matter
Claims 1 and 11 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A method comprising:
operating an internal combustion engine producing, as a
byproduct, exhaust gases;
segregating the flow of exhaust gases into a first, relatively
hot flow and a second, relatively cold flow;
directing the second flow to an intake of the internal
combustion engine for combustion with fresh intake air and fuel;
storing heat energy from the first flow in a latent heat
storage device; and
releasing heat energy from the latent heat storage device
to reduce cold start emissions during a subsequent operation of
the internal combustion engine after a period of shutoff.
Rejections
I. Claims 1---6, 8-13, 15, and 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Sanders (US 4,258,677, issued Mar. 31, 1981)
and Caldwell (US 2012/0125300 Al, published May 24, 2012). Final Act.
2---6.
II. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable
over Sanders, Caldwell, and Bose (US 3,861,142, issued Jan. 21, 1975).
Final Act. 6.
III. Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable
over Sanders, Caldwell, and Malecek (US 5,611,392, issued Mar. 18, 1997).
Final Act. 6-7.
2
Appeal2017-008583
Application 14/061, 101
IV. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable
over Sanders, Caldwell, and Powell (US 2011/0240249 Al, published Oct.
6, 2011). Final Act. 7.
V. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable
over Sanders, Caldwell, and Jessberger (US 6,334,437 Bl, issued Jan. 1,
2002). Final Act. 7-8.
DISCUSSION
Rejection I: Claims 1-6, 8-13, 15, 18
The Examiner finds Sanders teaches an exhaust method including the
claimed steps of storing heat energy from the exhaust gas in a latent heat
storage device and releasing heat energy from the latent heat storage device
to reduce cold start emissions. Final Act. 2 ( citing Sanders col. 1, 11. 24--42,
col. 1, 11. 36-53, col. 1, 1. 66-col. 2, 1. 24). The Examiner finds Caldwell
teaches a vortex tube used in performing the missing steps of segregating the
flow of exhaust gases into a first, relatively hot flow and a second, relatively
cold flow, and directing the second flow to an intake of the internal
combustion engine for combustion with fresh intake air and fuel. Id. at 3
(citing Caldwell paras. 7, 13, 54). The Examiner determines one of ordinary
skill in the art would have combined the teachings of Sanders and Caldwell
"because both references state that their devices can replace any standard
muffler," both devices "could be combined because their operation would
not conflict with each other," and combining the teachings "would be an
obvious combination of known prior art elements to yield predictable
results." Id. The Examiner also identifies benefits of each element that
would motivate one of ordinary skill in the art to combine them, including
3
Appeal2017-008583
Application 14/061, 101
"an exhaust gas recirculation system and providing for heating the engine
fluids during cold start, both of which improve engine performance and
reduce pollution." Ans. 8. "Installing both devices on an engine system
would allow for the benefits of each to be utilized." Id.
Appellant argues the Examiner's obviousness rationale appears to be
missing a critical component, namely whether the known elements are
combined "according to known methods." Br. 9. "Appellant asserts that a
known method for combining an engine heating device like that of Sanders
with a vortex tube muffler of Caldwell simply does not exist." Id.
The Supreme Court explained in KSR International Co. v. Teleflex
Inc., 550 U.S. 398,416 (2007), that "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." Appellant's interpretation of "known
methods" to require that the prior art expressly describe how to combine
teachings from the prior art does not follow from the KSR decision. Indeed,
Appellant's interpretation would eviscerate the law of obviousness because
if one prior art reference described how to combine teachings from another
reference, there would be no need to rely on obviousness to combine them.
Rather, KSR indicates from its review of three illustrative decisions that:
(1) "when the prior art teaches away from combining known elements,
discovery of a successful means of combining them is more likely to be
nonobvious," (2) although the combination of two elements may perform a
useful function, they do not add to the prior art when the elements do "no
more than they would in separate, sequential operation," and (3) "when a
patent simply arranges old elements with each performing the same function
it had been known to perform and yields no more than one would expect
4
Appeal2017-008583
Application 14/061, 101
from such an arrangement, the combination is obvious." Id. at 416-17
(internal quotation omitted). The question is whether one of ordinary skill in
the art, wanting to obtain the benefits of two known elements, would have
been able to implement a predictable variation in combining them or
whether doing so would have been beyond his or her skill. See id. at 417.
Here, the Examiner finds the latent heat storage device (taught in
Sanders) could be placed upstream or downstream of Caldwell's vortex tube,
and that "[ e ]ither of these arrangements would be an acceptable ( although
possibly not optimal) arrangement and obvious to one of ordinary skill in the
art when working with a piping system such as an exhaust system." Final
Act. 8; Ans. 9. "Additionally," as the Examiner finds, "the latent heat
storage device could be placed in parallel with the vortex tube, allowing for
3 possible arrangements of the devices that would be obvious to one of
ordinary skill in the art." Final Act. 8-9; Ans. 9.
Appellant's arguments do not explain why the Examiner's findings
and conclusion of obviousness are in error. Appellant acknowledges that "a
number of hypothetical options exist as to how a vortex-equipped muffler of
Caldwell and its operation can be combined with an engine heating device of
Sanders and its operation," but contends that placing the vortex-equipped
muffler upstream or downstream of the exhaust gas conduit "amounts to
nothing more than hindsight reconstruction based on Appellant's own
disclosure." Br. 9. In particular, Appellant argues connecting the Sanders
and Caldwell devices in series rather than being combined into a single, new
muffler strips the Examiner's rationale of any meaningful impetus "since
that alone is the supposed basis for motivating the combination and
supporting the rationale." Br. 9-10. We do not agree, however, because, as
5
Appeal2017-008583
Application 14/061, 101
noted above, the Examiner also identifies benefits of both systems and finds
that one of ordinary skill in the art would have wanted to obtain the benefits
of both systems by combining them. Ans. 8. Placing one upstream or
downstream of the other logically would have been the simplest way to
combine Sanders' latent heat storage system with Caldwell's vortex tube
muffler.
Appellant argues that placing the vortex-equipped muffler (Caldwell)
directly upstream of the engine heating device (Sanders) so that the hot gas
stream HG of Caldwell can feed the exhaust gas conduit 22 of Sanders "goes
in direct contrast of Sanders' stated intention of having the device 16 as far
upstream as possible in the exhaust ( column 2, line 48)." Br. 10. Sanders
explains that the reason for this arrangement is that "the further upstream
[ engine heating] device 16 is located, the more heat will be available for
storage and later use." Sanders col. 2, 11. 48-50. Sanders does not suggest,
however, that locating the heating device somewhat downstream will fail to
provide any benefit. Moreover, one of ordinary skill in the art would have
recognized that placing Sanders' latent heating device downstream of
Caldwell's vortex tube to receive the hotter flow may also further Sanders'
goal of extracting heat for storage.
Appellant also argues "it is general practice to place a muffler as the
furthest downstream item in the exhaust system since the purpose of the
muffler is to control the sound produced in all upstream components as it
exits the final outlet to the environment." Br. 10. It is unclear whether
Appellant's argument is directed to using Caldwell's muffler or Sanders'
device modified to perform as a muffler furthest downstream. Even
accepting Appellant's attorney argument as true, however, it does not show
6
Appeal2017-008583
Application 14/061, 101
error in the Examiner's finding because Appellant does not persuasively
challenge the Examiner's finding that both references state they may be used
( or modified) to replace a standard muffler. Final Act. 3 ( citing Caldwell
para. 43; Sanders col. 5, 11. 29--33).
Appellant makes additional arguments about potential design
challenges in further integrating Sanders' heat storage device and Caldwell's
vortex tube. Br. 10-11. These arguments do not inform us of error in the
rejection in light of our discussion supra of arranging the devices in series.
Moreover, Appellant's arguments are speculative and do not demonstrate
that more than ordinary skill would be required to overcome any challenges
posed by seeking to integrate the devices. And, contrary to Appellant's
argument, Br. 10, we note that the Examiner did not merely consider what
"could" be done. Rather, as discussed supra, the Examiner articulated
reasons with rational underpinning as to why one of ordinary skill would
have sought to combine the identified teachings from Sanders and Caldwell.
See, e.g., Ans. 8. Absent evidence that combining the teachings would have
been beyond the level of ordinary skill, we are not informed of error in the
rejection. See Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) ("Leapfrog presents no evidence that the inclusion of a
reader in this type of device was uniquely challenging or difficult for one of
ordinary skill in the art." (citing KSR, 550 U.S. at 420-21)).
Appellant further argues:
Careful consideration of the 'common aspect' of Sanders
and Caldwell ( that each could be used to replace an existing
muffler) is likely to suggest to one of skill in the art seeking a
muffler thats/he ought to select one of the potential solutions for
the muffler and that it would only be redundant to combine them
7
Appeal2017-008583
Application 14/061, 101
together, especially considering the level of specialization of
each of the separate prior art devices.
Br. 11. In essence, Appellant argues one of skill in the art would have been
led away from combining the teachings of Sanders and Caldwell because
each reference states that it alone may replace or be modified to replace a
standard muffler. See id. Each device provides benefits, however, of
improving engine performance and reducing pollution, and the way in which
these benefits are achieved is not in conflict. See Final Act. 3; Ans. 8. We
agree with the Examiner that there may be some optimal, non-obvious
design that incorporates elements from Sanders and Caldwell, but that is not
what Appellant claims here. See Ans. 9.
Appellant also argues the Examiner has not considered method claim
1 as a whole "since the rationale for obviousness is apparently constructed
solely around the concept of Sanders and Caldwell providing replacement
structures for standard mufflers, without even contemplating or addressing
active operations or steps toward accomplishing a method." Br. 11. We
understand the Examiner's rejection, however, to be based on combining the
teachings of Sanders and Caldwell in a way that works to provide the
benefits of both and to also provide a standard noise muffling function. We
also agree with the Examiner's findings that such a system in operation
would perform the steps of method claim 1, Ans. 10, and these findings are
not rebutted by Appellant.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 1 under
35 U.S.C. § 103 as unpatentable over Sanders and Caldwell. Thus, we
8
Appeal2017-008583
Application 14/061, 101
sustain the rejection of claim 1, and, for the same reasons, the rejection of
claims 2-6 and 8-10, which are not argued separately.
Appellant argues the rejection of independent claim 11 is in error for
the same reasons argued in support of claim 1, with the exception of
arguments based on claim 1 reciting a method. See Br. 12-16. For the same
reasons as claim 1, we sustain the rejection of claim 11 and the rejection of
claims 12, 13, 15, and 18, which are not argued separately.
Rejection II: Claim 7
Claim 7 depends from claim 1 and recites that "the releasing of heat
energy includes releasing heat energy to a catalyst." The Examiner finds
Bose teaches releasing heat energy to a catalyst, and that one of ordinary
skill in the art would have used this teaching in Sanders "because
substituting the catalyst taught by Bose with the coolant taught by Sanders
would be a simple substitution of one known element for another to obtain
predictable results." Final Act. 6 (citing Bose Fig. 1, col. 5, 1. 49---col. 6, 1.
10).
Appellant contends the catalyst referred to in Bose is "a composition
or element for initiating a chemical reaction when combustible exhaust gases
are bubbled up through a charge of water 200," and argues the context of
Bose's catalyst "is entirely different than that used in Appellant's claim and
application-in which 'catalyst' refers to a type of physical device used
widely in automobile emissions systems, and containing catalyst material for
chemical reaction." Br. 17. Appellant notes that the purpose of Bose's
catalyst is to help convert harmful aldehydes to formaldehyde that is
periodically discharged from Bose's mixing chamber. Id.; see Bose col. 5, 1.
9
Appeal2017-008583
Application 14/061, 101
67---col. 6, 1. 4. This conversion process takes place to prevent aldehyde
gases that may form in the mixture of gases being recirculated to the
combustion chambers from reaching the chambers or gumming the system.
Bose col. 5, 11. 56-66.
We agree with Appellant that, on this record, "[ n Jo evidence has been
set forth as to why it would be obvious to release heat energy to the
'catalyst' of Bose, nor how this could feasibly be accomplished." Br. 17.
Although claim 7 does not recite a purpose for the catalyst, and it is
permissible for the Examiner to rely on reasons for using Bose's catalyst that
differ from the reasons given in Appellant's Specification for using a
catalyst, it is unclear on this record whether Bose's catalyst would provide
any benefit in Sanders' system or how it would receive heat energy released
by Sanders' device. Although, as the Examiner points out, Ans. 10-11,
Appellant acknowledges catalytic converters are widely used in automobile
admission systems, Br. 17, the Examiner's statement-that "[ c ]ombining the
catalytic converter taught by Bose into the exhaust system formed by the
combination of Sanders and Caldwell would be a simple substitution of one
known element for another to obtain predictable results," Ans. 11-is
conclusory and insufficient to explain why one of skill in the art would have
combined a catalytic converter with Sanders in the manner claimed. In
particular, it is unclear what role Bose's catalyst would play in such a
system, and we do not see findings or reasoned explanation as to why one of
ordinary skill in the art would have incorporated a conventional catalytic
converter in the modified system of Sanders and Caldwell to receive heat
energy from the latent heat storage device.
10
Appeal2017-008583
Application 14/061, 101
In view of the foregoing, on this record, we do not sustain the
rejection of claim 7 under 35 U.S.C. § 103 as unpatentable over Sanders,
Caldwell, and Bose.
Rejections 111-V
Appellant argues the rejections of claims 14, 16, and 17 set forth in
Rejections III-V are in error based on the arguments presented in support of
claim 11, from which claims 14, 16, and 17 indirectly depend. Br. 17-18.
For the same reasons that we sustain the rejection of claim 11, this argument
does not inform us of error in the rejections of claims 14, 16, and 17.
Appellant also argues that Malecek, Powell, and Jessberger "cannot
be combined with Sanders and Caldwell to result in a prima facie case of
obviousness being established" for each of claims 14, 16, and 17,
respectively. Id. This conclusory statement does not explain why the
Examiner's findings that Malecek, Powell, and Jessberger teach additional
limitations in claims 14, 16, and 17 are in error, or identify error in the
Examiner's articulated reasoning as to why one of ordinary skill in the art
would have combined teachings from the references in the manner claimed.
See Final Act. 6-8.
In view of the foregoing, we sustain the rejections of claims 14, 16,
and 17 under§ 103 as set forth in Rejections III-V.
DECISION
We affirm the Examiner's rejections of claims 1---6 and 8-18. We
reverse the Examiner's rejection of claim 7.
11
Appeal2017-008583
Application 14/061, 101
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
12