Ex Parte Legros

Patent Trial and Appeal Board

Jan 24, 2018

13193905 (P.T.A.B. Jan. 24, 2018)

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.
13/193,905 07/29/2011 Craig R. Legros 59004US01;
67036-452PUS1
8861
26096 7590 01/26/2018
TART SON OASKFY fr OT DS P C
EXAMINER
400 WEST MAPLE ROAD
SUITE 350
LEO, LEONARD R
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG R. LEGROS
Appeal 2017-001990
Application 13/193,905
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 2, 5-11, 23, and 24.1 Advisory Action dated August
20, 2015. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 3,4, and 12-22 were canceled in an Amendment After Final dated
August 12, 2015. Such Amendment was entered in the Advisory Action
dated August 20, 2015.
Appeal 2017-001990
Application 13/193,905
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to electrical systems, and
more particularly to liquid cooled electrical systems.” Spec. ^ 1. Claim 1 is
the sole independent claim, is illustrative of the claims on appeal, and is
reproduced below.
1. A liquid cooled system comprising:
at least one component;
a coolant passageway contacting said at least one
component such that a liquid coolant cools said at least one
component; and
a coolant filter interrupting said coolant passageway
upstream of said at least one component, wherein said coolant
filter comprises a filter element and a static dissipating agent
(SDA), and wherein at least a portion of the static dissipating
agent is dispersed throughout a coolant in said coolant
passageway.
REFERENCES RELIED ON BY THE EXAMINER
Gembolis US 6,099,726 Aug. 8,2000
France US 2003/0047512 A1 Mar. 13,2003
Himmelmann US 2011/0012447 A1 Jan. 20, 2011
THE REJECTIONS ON APPEAL
Claim 24 is rejected under 35 U.S.C.§ 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that applicant regards as the invention.
Claims 1, 2, 5, 7-11, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Himmelmann and Gembolis.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Himmelmann, Gembolis, and France.
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Application 13/193,905
ANALYSIS
The rejection of claim 24 as being indefinite
As per the Examiner, dependent claim 24 is unclear because parent
“claim 1 recites the [static dissipating agent (“SDA”)] is separate from the
coolant” whereas claim 24 recites “the SDA is a ‘mixture with the coolant.’”
Final Act. 2. Appellant contends that the Examiner’s understanding that the
SDA is separate from the coolant is incorrect. App. Br. 3.
First, it is noted that claim 1 does not actually employ the term
“separate” as indicated above, but instead recites that the SDA “is dispersed
throughout a coolant.” Second, regarding such dispersal, Appellant’s
Specification states
In order to prevent static buildup within the coolant, a static
dissipating agent (SDA) is dispersed within the coolant. Once
dispersed, the SDA compound can be in the form of a mixture
with the coolant (as illustrated in the included drawings) or be
dissolved into the coolant, depending on the particular SDA
compound and coolant used within the electrical system.
Spec. 17 (emphasis added). Thus, the dispersal of the SDA can either be
in the form of a “mixture with,” or the SDA can be “dissolved into,” the
coolant. Hence, we agree with Appellant that claim 1 ’s recitation of the
SDA being “dispersed throughout a coolant” does not preclude claim 24
from subsequently reciting that the dispersal is “in the form of a mixture
with the coolant.” App. Br. 3. Accordingly, we agree with Appellant that
“there is no conflict between claim 24 and claim 1.” App. Br. 3. We do not
sustain the Examiner’s rejection of claim 24 as being indefinite.
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Appeal 2017-001990
Application 13/193,905
The rejection of claims 1, 2, 5, 7—11, 23, and 24
as unpatentable over Himmelmann and Gembolis
Appellant argues claims 1, 2, 5, 7-11, 23, and 24 together. App. Br.
3-5. We select sole independent claim 1 for review, with the remaining
claims (i.e., dependent claims 2, 5, 7-11, 23, and 24) standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner primarily relies on Himmelmann for disclosing the
filtering system of claim 1, but acknowledges that Himmelmann “does not
disclose a static dissipating agent (SDA).” Final Act. 3. The Examiner
relies on Gembolis for teachings regarding “a filter element and a SDA
(column 1, lines 36-38).” Final Act. 3.
Appellant does not dispute the teachings of Himmelmann, but instead
contends that “Gembolis teaches away from the utilization of an anti-static
agent.” App. Br. 3. As support, Appellant references lines 39^40 of column
1 of Gembolis as “explicitly” criticizing the use of SDAs within the coolant
fluid such that Gembolis is directed to a “structure that avoids the drawbacks
associated with utilization of an anti-static agent by not using an anti-static
agent.” App. Br. 4; see also Reply Br. 2.
The entire paragraph of Gembolis relied upon by both the Examiner
and Appellant is as follows
One technique for removing the static charge in the fluid
is to add an anti-static agent such as DuPont Stadis 450 to make
the fluid slightly conductive. However, anti-static agents can
lose potency over time and will typically have to be re-added
(re-doped) to the fluid at regular intervals.
Gembolis 1:36-40.
The Examiner states that this disclosure in Gembolis’ Background
section “does not disqualify [Gembolis] as prior art.” Ans. 6. Appellant, on
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Application 13/193,905
the other hand, contends that one skilled in the art would not look to “a
secondary reference that criticizes the use of static dissipating agents” and
thus would not “come to the conclusion that it would be ‘obvious’ to include
a static dissipating agent in the base reference.” Reply Br. 2.
We agree with Appellant that Gembolis’ invention “avoids the
drawbacks associated with utilization of an anti-static agent” by providing
an alternate solution. App. Br. 4; Reply Br. 2. However, we are not
persuaded that Gembolis’ acknowledgement of certain drawbacks regarding
the use of anti-static agents is indicative that using same to avoid static
charges is to be avoided. Instead, one skilled in the art would have been
informed by Gembolis that by selecting to use anti-static agents, such agents
would need to be re-added at regular intervals.2 The Examiner phrases it
thusly (after discussing various cases on this topic): “one of ordinary skill in
the art would find it feasible to re-add or re-dope the fluid with a SDA
versus investing in a filter structure that dissipates static.” Ans. 7. In other
words, just because better alternatives may exist in the prior art, this does not
mean that an inferior combination is inapt for obviousness purposes. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We are not persuaded of
Examiner error.
2 “A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) {quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)). Here, Gembolis identifies a need (“drawback”) for the regular
infusion of new agents, which we are not persuaded criticizes, discredits, or
discourages investigation into the use of anti-static agents.
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Application 13/193,905
Appellant further contends that the test is not whether one skilled in
the art “would recognize a combination as being possible” but rather
whether such person “would have found the combination to be obvious.”
Reply Br. 2. However, as recognized by Gembolis, a “static charge can
accumulate within the filter apparatus,” and “a spark can jump to a surface
of the housing component,” which, Gembolis states, “can be undesirable in
many situations.” Gembolis 1:30-35; see also Final Act. 3. Hence, the
Examiner reasons that it would have been obvious to combine Gembolis’
SDAs in Himmelmann “for the purpose of protecting the filter against
damage as recognized by Gembolis.” Final Act. 3. Appellant does not
indicate how such a combination for the stated reason would not have been
obvious.
Appellant also challenges the Examiner’s reliance on Gembolis
because “[n]o disclosure, or other teaching, is provided in Gembolis with
regards to the structure by which the anti-static agent would be introduced
into the fluid.” App. Br. 4; see also Reply Br. 3. The Examiner correctly
responds that the structure by which the SDA would be introduced “is not
commensurate in scope with the claims” and that “limitations from the
specification are not read into the claims.” Ans. 7. We agree with the
Examiner.
Appellant further alleges that the pertinent language in Gembolis “is
one sentence” (App. Br. 4), is “a sentence” (App. Br. 5), and is only “a
single reference” (Reply Br. 2). However, it is not the volume of the
teachings relied upon that controls, but instead the focus is on what the
reference “would have meant to a person of ordinary skill in the field of the
invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Here,
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Application 13/193,905
Appellant is not disputing the meaning or scope of Gembolis’ teaching, only
that it is short in length.
Appellant also challenges the Examiner’s reliance on “[ljines 43-56
of Column 1 of Gembolis” contending that this passage “is directed to a
physical structure of the filter and includes no disclosure with regards to the
utilization of an anti-static agent.” App. Br. 5; see also Reply Br. 2. The
Examiner does indeed rely on “Gembolis et al (column 1, lines 43-56),” but
such reliance is with respect to “claims 2—4,” and not claim 1. Final Act. 3.
The passage in question is directed to a prior filter arrangement that is
disclosed in “U.S. Pat. No. 3,933,643 to Colvin” (“Colvin”). Gembolis
1:41 ^44. Appellant argues that Colvin’s use of a physical filter to draw off
static charge is not a “disclosure with regards to the utilization of an anti­
static agent.” App. Br. 5. As indicated above, the Examiner is not relying
on this passage in Gembolis for disclosing “the utilization of an anti-static
agent.” See Final Act. 3. Appellant’s contention is not persuasive of
Examiner error.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 2, 5, 7-11, 23, and 24 as unpatentable over
Himmelmann and Gembolis.
The rejection of claim 6
as unpatentable over Himmelmann, Gembolis and France
Claim 6 states that liquid on a high-pressure side of the filter “is a
coolant” whereas the liquid on a low-pressure side of the filter “is a mixture
of said coolant and said SDA.” In other words, as the liquid coolant moves
from a high-pressure side of the filter to a low-pressure side of the filter, the
liquid coolant becomes a mixture that includes SDAs. The Examiner relies
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Application 13/193,905
on France to teach this limitation because France “discloses a filter
comprising the ability to release an additive within the filter” and “wherein
the additive is a SDA (paragraph 131).” Final Act. 4 (also referencing
France THf 110-112, 129, and 130).
Appellant contends that a skilled person “would not have expected
[the] teachings of the filter of France to be applicable” and that a skilled
person would have no reason to expect France’s dry-cleaning process to
“function in a similar manner when inserted into the lubricating and cooling
system of Himmelmann.” App. Br. 5.
The Examiner identifies Appellant’s argument as “that France et al is
nonanalogous art” and, thereafter, addresses the test for non-analogous art.
Ans. 8 (referencing In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed.
Cir. 1992)). France pertains to “multifunctional filters that are capable of
removing as well as adding components to a filtered material” (France
Abstract) and the Examiner identifies where France teaches “suitable release
agents” as including “anti-static agents.” Ans. 8; France ^ 131. The
Examiner thus states that France’s filter “is ‘reasonably pertinent to the
particular problem with which the applicant (i.e., appellant) was
concerned.’” App. Br. 8. Appellant does not dispute the Examiner’s
reasoning and/or conclusion. See Reply Br. generally. We are thus not
appraised of any reason why France, even assuming it to be in a different
field of endeavor, fails to address the addition of anti-static agents into a
filtered material to avoid a static charge. Accordingly, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claim 6.
DECISION
The Examiner’s rejection of claim 24 as indefinite is reversed.
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Appeal 2017-001990
Application 13/193,905
The Examiner’s art rejections of claims 1, 2, 5-11, 23, and 24 are
affirmed.
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
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