Ex Parte Kuehnel

Patent Trial and Appeal Board

May 31, 2016

12630530 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/630,530
134603
ABB
7590
FILING DATE
12/03/2009
06/03/2016
C/O Taft Stettinius & Hollister LLP
One Indiana Square, Ste. 3500
Indianapolis, IN 46204-2013
FIRST NAMED INVENTOR
Janpeter KUEHNEL
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.
1004501-001073 9915
EXAMINER
HTAY,AYE SU MON
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANPETER KUEHNEL
Appeal2014-002579
Application 12/630,5301
Technology Center 3700
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 and 3-11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to "[a] compressor of an
exhaust-gas turbocharger." (Spec. i-f 8.)
1 According to Appellant, the real party in interest is ABB Turbo Systems
AG. (Appeal Br. 2.)
Appeal2014-002579
Application 12/630,530
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
representative and reproduced below:
1. A compressor of an exhaust-gas turbocharger, comprising:
a rotatably mounted compressor wheel;
a main flow duct for supplying a medium for compression
to the compressor wheel; and
a circulation chamber, arranged radially outside the main
flow duct and delimited from the main flow duct by a contoured
wall, which extends from an intake region of the main flow duct
to a circulation opening formed into the contoured wall in a
region of rotor blades of the compressor wheel, with the
contoured wall being fastened to a housing of the compressor by
a plurality of struts in the circulation chamber, wherein a spacing
between any directly adjacent struts is different in a
circumferential direction than a spacing between any other
directly adjacent struts, the contoured wall having a non-uniform
stiffness over its circumference.
REJECTIONS2
Claims 1, 3-5, 7-9, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Church (US 5,399,064, iss. Mar. 21, 1995) and
Nakao (US 2001/0028839 Al, pub. Oct. 11, 2001).
Claims 6 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Church, Nakao, and Zuhn (US 3,143,103, iss. Aug. 4,
1964).
2 Claims 7-10 were rejected under 35 U.S.C. § 112, second paragraph, in
the Final Office Action. (See Final Action 3--4.) Appellant's amendment,
filed April 17, 2013, addressed the basis for the rejection and was entered by
the Examiner. (See Advisory Action mailed May 7, 2013.) The Examiner
indicates that the rejection has been overcome. (See Answer 6.) Therefore,
we treat the failure of the Answer to indicate the withdrawal of the rejection
of claims 7-10 under 35 U.S.C. § 112, second paragraph, as inadvertent.
2
Appeal2014-002579
Application 12/630,530
FINDINGS OF FACT
We rely on the Examiner's findings of fact stated in the Final Office
Action and in the Answer. Additional findings of fact may appear in the
Analysis below.
ANALYSIS
Claim 1 is rejected under§ 103(a) as being unpatentable over Church
and Nakao. Claim 1 recites, in relevant part:
the contoured wall being fastened to a housing of the compressor
by a plurality of struts in the circulation chamber, wherein a
spacing between any directly adjacent struts is different in a
circumferential direction than a spacing between any other
directly adjacent struts, the contoured wall having a non-uniform
stiffness over its circumference.
The Examiner finds that Church discloses "the contoured wall [ ( 116
inner wall)] being fastened to a housing (76 intake housing) of the
compressor by a plurality of struts (146 deflector supports; 132 webs) in the
circulation chamber" and "a spacing ... between adjacent struts." (Final
Action 5.) The Examiner finds that Church "does not disclose: Wherein a
spacing between any directly adjacent struts is different in a circumferential
direction than a spacing between any other directly adjacent struts." (Id.
at 6.) However, the Examiner finds that Nakao teaches "a plurality of struts
(12 guide plates) in the circulation chamber" and that "the plurality of struts
may be arbitrarily spaced." (Id. at 7 .) The Examiner determines that
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the spacing of the
struts of Church et al. by arbitrarily spacing them as taught by
Nakao ... for the purpose of changing the direction of the flow
as desired.
3
Appeal2014-002579
Application 12/630,530
(Final Action 7, emphasis added.)
Appellant argues that there is no motivation to combine Church and
Nakao. (See Appeal Br. 5-7, Reply Br. 2.) In particular, Appellant asserts
that, in Nakao, "[t]here is no disclosed relation of the arrangement of the
guide plates to reducing excitations per excitation order." (Appeal Br. 6.)
Nor is there a "disclosure or suggestion in either of the cited references that
by providing a non-uniform distribution of the support ribs, the available
excitation energy can be distributed between different excitation orders."
(Id. at7.)
Appellant, however, does not directly address the Examiner's
articulated reason for modifying Church in view of Nakao, namely "for the
purpose of changing the direction of the flow as desired." (Final Action 7.)
Moreover, the Examiner need not establish that one of ordinary skill in the
art would have combined the teachings of Church and Nakao for the same
reasons proffered by Appellant. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007) (In the obviousness determination, "neither the particular
motivation nor the avowed purpose of the [Appellant] controls.").
Therefore, Appellant has not persuaded us that the combination of Church
and Nakao lacks adequate reasoning.
Appellant further argues that "[i]f the structure of the Nakao
publication was incorporated into the Church publication there is no
indication that the desired result would take place because of the different
arrangements of the annular space of the Church publication compared to the
annular treatment of the Nakao publication." (Appeal Br. 7.) According to
Appellant, "inclusion of guide plates 12 of the Nakao publication into the
4
Appeal2014-002579
Application 12/630,530
Church publication would render the Church publication turbocharger
unsuitable for its intended function, noise reduction." (Reply Br. 5.)
However, as discussed above, the Examiner does not propose to
incorporate the guide plates of Nakao into Church. (See Final Action 7.)
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, "the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." Id. And the Examiner simply determines
that "it would have been obvious ... to modify the spacing of the struts of
Church" in view of the teaching of Nakao. (Final Action 7.)
Further with regard to Appellant's assertion that Church would be
rendered unsuitable for its intended function (Reply Br. 5), we note that
Church describes a "Turbocharger having Reduced Noise Emissions."
(Church, Title.) Appellant does not persuasively explain or present evidence
why arbitrarily spacing the struts of Church, as proposed, would render
Church's device unsuitable for functioning as a turbocharger or would be
incompatible with reduced noise emissions.
Appellant additionally argues that "[ n ]either the Church nor the
Nakao publications disclose the contoured wall having a non-uniform
stiffness over its circumference," as required by claim 1. (Appeal Br. 7.)
Appellant asserts that Nakao does not disclose the claimed contoured wall
because "[g]uide plates 12 are arranged in the annular treatment cavity 8
which is completely surrounded by material having the constant thickness
and thus is not likely to have issues with deflection." (Id. at 8.)
5
Appeal2014-002579
Application 12/630,530
Appellant does not persuasively explain why the Examiner's findings
that Church discloses "a contoured wall (116 inner wall)" and that struts 132
and 146 are attached to contoured wall 116 are in error. (See Final
Action 5.) Further, the Examiner explains that "[s]ince the plurality of struts
are attached to the contoured wall and provide support to the contoured wall,
it is inherent that the [arbitrary] arrangement of [the] plurality of struts
would contribute to the stiffness of the contoured wall regardless of the
thickness of the contoured wall." (Answer 14.)
We agree with the Examiner. Even though a thicker wall may require
less support, Church's struts support the contoured wall. Modifying Church
to provide non-uniform spacing of the struts would provide non-uniform
support of the contoured wall and, thus, non-uniform stiffness over the
circumference of the contoured wall.
For the above reasons, Appellant has not persuaded us that the
Examiner erred in rejecting claim 1 under§ 103(a). Appellant argues that
"independent claim 11 and [the] dependent claims are distinguishable over
the cited references for reasons similar to those discussed above with respect
to independent claim 1." (Appeal Br. 9.) Therefore, for the same reasons
discussed above with respect to claim 1, we are not persuaded that the
Examiner erred in rejecting claims 3-11 under§ 103(a).
Appellant's other arguments have been considered but are not deemed
persuasive of error.
DECISION
The Examiner's rejections of claims 1 and 3-11 under 35 U.S.C.
§ 103(a) are affirmed.
6
Appeal2014-002579
Application 12/630,530
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
7