Ex Parte Khadiya

Patent Trial and Appeal Board

Jul 7, 2017

13647436 (P.T.A.B. Jul. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/647,436 10/09/2012 Navin Khadiya 11FECT054;
67341-2943US1
2807
76799 7590
FAURECIA
c/o Carlson, Gaskey & Olds, P.C.
400 W. Maple Road, Ste. 350
Birmingham, MI 48009
EXAMINER
NGUYEN, NGOC T
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
07/11/2017 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):
Silke.Hertzsch@faurecia.com
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAVIN KHADIYA1
Appeal 2016-003038
Application 13/647,436
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Navin Khadiya (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner’s decision rejecting claims 1—6, 8 and 10-13, and 18—25.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Faurecia Emissions
Control Technologies. Appeal Br. 1.
2 Claims 7 and 14—17 remain pending but are not subject to a rejection, and
are not before us for review as part of the present appeal. See Final Act. 11;
Ans. 2; note 3, infra.
Appeal 2016-003038
Application 13/647,436
THE CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a method and apparatus
that recovers energy from coolant, exhaust, and/or exhaust gas recirculation
(EGR) in a vehicle exhaust system.” Spec. 12. Claims 1, 8, and 18 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A heat recovery system comprising:
an engine coolant fluid configured to cool an engine; and
a Rankine cycle system utilizing a working fluid to
convert heat from engine exhaust gases to energy, wherein said
engine coolant fluid comprises said working fluid.
Appeal Br. 10 (Claims App.).
THE EVIDENCE
The Examiner relied upon the following prior art reference in
rejecting the claims on appeal:
Claassen US 2005/0262842 A1 Dec. 1,2005
THE REJECTIONS3
Appellant seeks review of the following rejections:
1. Claim 25 under 35 U.S.C. § 112, 2, as indefinite.
3 The Examiner rejected claims 6, 7, and 13—15 under 35 U.S.C. § 112,11,
as not enabled, but that rejection was later withdrawn and is not before us on
appeal. See Final Act. 2—3; Ans. 2. The Examiner maintained the rejection
of claims 6 and 13 under 35 U.S.C. § 103(a). Final Act. 7, 10; Ans. 2. The
Examiner objected to claims 16 and 17 “as being dependent upon a rejected
base claim,” but indicated that the claims “would be allowable if rewritten in
independent form” and did not reject the claims. Final Act. 11.
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Appeal 2016-003038
Application 13/647,436
2. Claims 1, 3, 8, 18, 21, 23, and 24 under 35 U.S.C. § 102(b) as
anticipated by Claassen.
3. Claims 2, 4-6, 10-13, 19, 20, 22, and 25 under 35 U.S.C. § 103(a)
as unpatentable over Claassen.
ANALYSIS
Indefiniteness
Claim 25 requires “at least one of: ... a second pump . . . and/or a
heat exchanger.” Appeal Br. 13 (Claims App.). The Examiner determined
that the combination of the “at least one of’ language with the “and/or”
terminology “renders the claim indefinite because it is unclear which of the
two elements, i.e. a second pump and a heat exchanger, is actually required.”
Final Act. 3; Ans. 3. Appellant argues that while “and/or” “may not be
preferred ... it is not wrong, i.e. it does not render the claim indefinite.”
Reply Br. 2.
We agree with Appellant that the language “at least one of: ... a
second pump . . . and/or a heat exchanger” in claim 25 does not render the
claim indefinite. The Examiner acknowledged that if the claim read “at least
one of: ... a second pump . . . and a heat exchanger” the claim did not
contain definiteness concerns and covers the presence of a second pump
without a heat exchanger, a heat exchanger without a second pump, or both a
second pump and a heat exchanger. See Ans. 3^4. The Examiner found
indefmiteness based on the “or” in “and/or” in claim 22. See id. In our
view, however, the language “at least one of: ... a second pump ... or a
heat exchanger” has the same scope as the Examiner’s interpretation of the
phrase with “and” as the conjunction. That is, “at least one of: a second
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Application 13/647,436
pump ... or a heat exchanger” means a second pump without a heat
exchanger, a heat exchanger without a second pump, or both a second pump
and a heat exchanger. The “at least one of. . . or” language only introduces
ambiguity if it requires the presence of both the second pump and heat
exchanger, or excludes a combination of the second pump and heat
exchanger. The Examiner’s findings do not explain how the claim can be
read as so limited, and the specification supports the broader interpretation
proposed by Appellant. See Spec. Fig. 1 (illustrating “OPTIONAL PUMP
LOCATION” for pump 40 and “OPTIONAL HEAT EXCHANGER” 42),
117 (describing optional “additional pump 40” and “additional heat
exchanger 42” without suggesting that both must be used in combination).
Accordingly, we do not sustain the rejection of claim 25 as indefinite.
Anticipation
Claim 1
Claim 1 requires “an engine coolant fluid . . . and a Rankine cycle
system utilizing a working fluid . . . wherein said engine coolant fluid
comprises said working fluid.” Appeal Br. 10 (Claims App.). The
Examiner found that Claassen discloses all of the limitations of claim 1.
Final Act. 4 (citing Claassen H 21, 25, Fig. 1). Appellant argues that
Claassen discloses separate Rankine and cooling circuits, and therefore does
not disclose a Rankine system that uses engine coolant fluid as the working
fluid. Appeal Br. 6. In response, the Examiner determined that the claim
does not require common circuits, merely the same working fluid, and found
that Claassen’s medium 3 discloses the working fluid used in both the
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Application 13/647,436
coolant circuit and Rankine circuit when flowing through switch 12. Ans.
4—5 (citing Claassen || 25—28, Fig. 1).
We are not persuaded that the Examiner erred in the rejection of claim
1. Claassen discloses an embodiment where “the medium 3 is charged
directly from the cooling circuit of the combustion engine 1 via a switch unit
12” into the Rankine circuit. Claassen 128 (boldface omitted), Fig. 1. This
passage supports the Examiner’s finding that the two circuits use the same
working fluid. Appellant does not directly address this passage from
Claassen or the Examiner’s correct determination that claim 1 does not
prohibit separate circuits, the premise of Appellant’s argument. See Ans.
4—5; Appeal Br. 6; Reply Br. 2—3. Because we have not been apprised of
error in the Examiner’s findings in connection with the rejection of claim 1,
we sustain that rejection.
Claim 3
Claim 3 requires “said engine coolant circuit and said Rankine circuit
compris[ing] a common circuit such that the Rankine cycle system recovers
energy from exhaust gas heat and from engine coolant heat.” Appeal Br. 10
(Claims App.). The Examiner found that when Claassen’s cooling circuit
and Rankine circuit are interconnected via switch 12, the two circuits are in
communication and meet the “common circuit” requirement of claim 3.
Ans. 6. Appellant argues that the two circuits may be in communication, but
they still fail to form a “common circuit.” Appeal Br. 6—7; see also Reply
Br. 3. According to Appellant, the two circuits “still perform their
independent [functions] even if they are connected,” and therefore “they are
still two separate circuits even when connected.” Reply Br. 3.
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Application 13/647,436
We are not persuaded that the Examiner erred in the rejection of claim
3. Appellant’s argument appears to be premised upon a narrow construction
of “common circuit,” but Appellant does not support that construction by
referring to an understood meaning in the art or the specification. For
example, Appellant does not point to any portion of the specification that
defines the term “common circuit” or suggests that the claimed common
circuit must include a coolant circuit and Rankine circuit that do not perform
their independent functions. Instead, the specification supports the broader
interpretation applied by the Examiner when describing the claimed circuit
by stressing the common working fluid used in the coolant and Rankine
circuit. See Spec. 14, 21, 22 (referring to both the function of cooling the
engine (the function of the engine coolant circuit) and the function of the
Rankine circuit). As discussed above in connection with the analysis of
claim 1, Claassen discloses a system that, in at least one embodiment,
interconnects the coolant and Rankine circuit so that the two circuits use the
same working fluid. The Examiner relies on that same evidence in
connection with claim 3 in support of the finding that Claassen discloses the
claimed common circuit. See Ans. 5—6. The Examiner also found that once
the two circuits are interconnected, the working fluid flows from the cooling
circuit into the pump 11 of the Rankine circuit, through the Rankine circuit,
then back through switch 12 and into the cooling circuit. See Ans. 6. We
discern no error in the Examiner’s finding that this arrangement discloses the
claimed “common circuit.” Accordingly, we sustain the rejection of claim 3.
Claim 21
Claim 21 requires “fluid flow through the engine from the coolant
inlet to the coolant outlet forms part of the Rankine circuit.” Appeal Br. 12
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Application 13/647,436
(Claims App.). The analysis of claim 21 tracks that discussed above with
respect to claims 1 and 3. The Examiner correctly determined that the claim
does “not require that the Rankine circuit itself traverses the engine like the
cooling circuit.” Ans. 7. This interpretation is consistent with the
specification, which depicts the common circuit as including a single inlet
and outlet for the working fluid flowing through the engine, with the
Rankine circuit part of the common circuit disposed between the engine
outlet and inlet. See Spec. Fig. 1. Claassen discloses a similar approach
when switch 12 interconnects the coolant and Rankine circuit. See Claassen
Fig. 1. Once Claassen’s switch 12 interconnects the circuits, similar to the
embodiment disclosed in the specification, it forms one common circuit that
includes a Rankine circuit. See id.', Ans. 7. Accordingly, the fluid flow
through Claassen’s engine forms a part of that Rankine circuit as the
Examiner found. We therefore sustain the rejection of claim 21.
Claims 8, 18, 23, and 24
Appellant’s arguments with respect to claims 8 and 18 incorporate the
arguments made in support of claims 1 and 3. See Appeal Br. 7.
Appellant’s arguments with respect to claims 23 and 24 incorporate the
arguments made in support of claims 8 and 21. See id. at 8. Accordingly,
for the same reasons discussed above in connection with claims 1,3, and 21,
we sustain the rejections of claims 8, 18, 23, and 24.
Obviousness
Claim 22
Claim 22 requires “pumping the working fluid into the engine coolant
inlet with a first pump, and . . . performing one or more of the following
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Application 13/647,436
steps: pumping the working fluid from the engine coolant outlet into an
evaporator with a second pump.” Appeal Br. 12 (Claims App.). The
Examiner found that Claassen inherently discloses the claimed “first pump”
because the coolant circuit necessarily includes a pump, even though
Claassen does not expressly disclose the pump. Ans. 9—10. Even if not
inherently disclosed, the Examiner found that it would have been obvious to
include such a pump in an engine coolant circuit. Id. at 11. The Examiner
also found that Claassen discloses pump 11 as the claimed “second pump”
that pumps the working fluid from the coolant outlet into an evaporator.
Final Act. 10. Appellant argues that the Examiner mistakenly found that
switch 12 acts as the first pump. Appeal Br. 8—9; see also Reply Br. 6—7.
Appellant also argues that even if Claassen inherently discloses a first pump,
“Claassen does not disclose or teach ‘pumping the working fluid from the
engine coolant outlet into an evaporator with a second pump’ that is
different than the examiner’s first pump 12.” Reply Br. 7—8. Appellant also
argues that Claassen does not disclose the second step of claim 22 related to
the location of the heat exchanger. Id. at 8.
We are not persuaded that the Examiner erred in the rejection of claim
22. Appellant focuses on the Examiner’s finding in the Final Office Action
that the switch operates as a pump, but does not adequately address the
Examiner’s finding in the Answer that, regardless of whether the switch
itself acts as a pump, the coolant circuit inherently includes a pump. See
Ans. 9—10; Reply Br. 6—7. Similarly, Appellant does not adequately address
whether it would have been obvious to include a pump in the coolant circuit
that would correspond to the claimed “first pump.” Ans. 11. Based on the
current record, we discern no error in the Examiner’s findings that Claassen
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Application 13/647,436
inherently discloses a pump that corresponds to the claimed “first pump,”
and that, even if not inherently disclosed, it would have been obvious to
include such a pump. Appellant’s remaining argument focuses on the heat
exchanger and the second step of claim 22. See Reply Br. 8. Claim 22,
however, only requires “performing one or more of the following steps”
including “pumping the working fluid from the engine coolant outlet into an
evaporator with a second pump” and the “providing a heat exchanger” step
that Appellant focuses on. Appeal Br. 12 (Claims App.) (emphasis added).
Appellant does not adequately address the first step of claim 22, and the
Examiner’s finding that Claassen discloses a second pump 11 that performs
that step are unrebutted. See Final Act. 10; Appeal Br. 8. Based on the
foregoing, we sustain the rejection of claim 22.
Remaining Claims
Appellant does not raise additional arguments in support of the other
claims rejected as obvious under 35 U.S.C. § 103(a). See Appeal Br. 8—9.
Accordingly, we sustain the rejections of claims 2, 4—6, 10-13, 19, 20, and
25.
DECISION
We reverse the decision of the Examiner to reject claim 25 as
indefinite under 35 U.S.C. § 112, 2. We affirm the decision of the
Examiner to reject claims 1,3,8, 18, 21, 23, and 24 under 35 U.S.C.
§ 102(b) and claims 2, 4—6, 10—13, 19, 20, 22, and 25 under 35 U.S.C
§ 103(a).
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Application 13/647,436
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
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