Ex Parte Major et al

Patent Trial and Appeal Board

Feb 10, 2015

11930342 (P.T.A.B. Feb. 10, 2015)

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.
11/930,342 10/31/2007 Gregory A. Major P000940-NAPD-LCH 9752
81466 7590 02/10/2015
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
EBNER, KATY MEYER
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
02/10/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY A. MAJOR and
TODD M. TUMAS
____________

Appeal 2013-000903
Application 11/930,342
Technology Center 3600
____________

Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, 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 and 14. Appeal Br. 4. Claims 2–13 and 15–21 have
been cancelled. Id. at 8–9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to hybrid electric
vehicles, and[,] more particularly[, to] air conditioning for belt-alternator-
starter hybrid electric vehicles.” Spec. ¶ 1. Independent claim 1, reproduced
below, is illustrative of the claims on appeal:
1. A hybrid electric vehicle having an air
conditioning system comprising:
an engine having an engine shaft;
a motor-generator having a motor-generator
drive shaft;
a torque transfer assembly including an
accessory drive pulley mounted to the engine shaft,
an electronically controlled, clutched pulley
mounted directly to the motor-generator drive
shaft, and an accessory drive belt mounted around
the accessory drive pulley and the clutched pulley
for transferring torque therebetween, the motor-
generator and torque transfer assembly configured
to transfer torque from the motor generator to the
engine during engine startup operations; and
a variable capacity refrigerant compressor
including a compressor driven shaft extending
from the refrigerant compressor and configured to
provide an input torque to drive the compressor, a
first portion of a compressor clutch directly
mounted on and rotatably fixed to the motor-
generator drive shaft and a second portion of the
compressor clutch mounted directly on and
rotatably fixed to the compressor driven shaft, the
first and second portions of the compressor clutch
engageable to cause torque to transfer through the
compressor clutch from the motor-generator drive
shaft to the compressor driven shaft and
disengageable to prevent torque transfer from the
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motor-generator drive shaft to the compressor
driven shaft.
Appeal Br. 8 (Claims App.).

EVIDENCE RELIED ON BY THE EXAMINER
Fujioka US 2004/0116227 A1 June 17, 2004
Park US 2007/0187953 A1 Aug. 16, 2007

REJECTION ON APPEAL
Claims 1 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Park and Fujioka. Ans. 2; Final Act. 2–4 (mailed Jan. 24, 2012).

ANALYSIS
The rejection of claim 1 under 35 U.S.C. § 103(a)
A. Appellants’ Positions
First, Appellants assert that the prior art does not teach “that the first
portion of the compressor clutch is directly mounted on the motor-generator
shaft and allows for selective torque transfer from the motor-generator shaft
to the driven compressor shaft.” Appeal Br. 4. Appellants contend that the
reasoning provided by the Examiner for modifying Park to include the
compressor clutch of Fujioka (Final Act. 3) is incorrect because “clutch
(140) [in Park] is disengaged during vehicle operation, so there are no torque
losses or power consumption savings” from the modification. Appeal Br. 4–
5. According to Appellants, Fujioka also does not disclose a compressor
clutch arranged as recited in claim 1 because planetary gear mechanism 13
(among other structures) is interposed between rotor shaft 16 (connected to
motor-generator 12) and auxiliary unit drive shaft 19 (connected to auxiliary
unit clutch 23). Id. at 5.
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Second, Appellants contend that neither Park nor Fujioka teaches “the
use of a variable [capacity] compressor with the use of a compressor clutch
that selectively allows for and prevents torque transfer between the motor
and the compressor.” Id. Appellants assert that the Examiner improperly
relied on paragraph 97 from Fujioka on this issue (see Final Act. 3) because
Fujioka only discusses use of a variable capacity compressor in “a system
without a compressor clutch where the planetary gear mechanism controls
the torque transfer between the motor and compressor.” Appeal Br. 6.
B. The Examiner’s Positions
In response, the Examiner states that one of ordinary skill in the art at
the time of the invention would be motivated to modify Park to include a
clutch between the motor and the compressor to avoid losses caused by
unnecessarily operating the compressor during engine start, even when air
conditioning is not desired. Ans. 2, 3 (citing Park ¶¶ 36 and 42 for the
proposition that the motor drives the compressor on engine start). As to
Fujioka, the Examiner asserts that when modifying Park to include a
compressor clutch, one of ordinary skill in the art at the time of the invention
would not have incorporated the planetary gear mechanism in Fujioka
because a skilled artisan “would have recognized that the motor and
compressor in [Park] are designed to operate at the same speed, and
therefore any speed reduction between the shafts provided by a reduction
gear would be unnecessary.” Ans. 3–4.
In response to Appellants’ argument regarding the variable capacity
compressor, the Examiner states that Fujioka teaches “that variable capacity
compressors are well-known in the art.” Ans. 4 (citing Fujioka ¶ 97). The
Examiner contends that while Fujioka “suggests that the compressor clutch
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is not mandatory with a variable capacity compressor, a clutch may still be
used to completely disengage the compressor.” Ans. 4.

C. Discussion
We are not apprised of Examiner error in rejecting claim 1.
Appellants have not demonstrated that the reasoning articulated by the
Examiner for modifying Park to include the compressor clutch of Fujioka—
avoiding losses from operating the compressor when air conditioning has not
been requested (Ans. 2, 3)—lacks a “rational underpinning to support the
legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (citation omitted), quoted in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Further, we are not persuaded by Appellants’
argument that the compressor clutch of Fujioka could not be incorporated
into Park because such modification would “require a complete redesign of
the compressor-motor assembly . . . .” Reply Br. 2–3. Appellants provide
no evidence supporting this contention, only attorney argument. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.” (citation omitted)).
Further, Appellants have not demonstrated error in the Examiner’s
reasoning that one of ordinary skill in the art at the time of the invention
would, when modifying Park, not have incorporated the planetary gear
mechanism disclosed in Fujioka. See Ans. 3–4. Although Appellants
contend that the compressor clutch in Fujioka interacts in a specific way
with the planetary gear mechanism in Fujioka (Reply Br. 3), this does not
demonstrate either (1) that the compressor clutch in Fujioka could not
operate without interacting with the planetary gear mechanism, as in the
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modified version of Park described in the rejection or (2) that a skilled
artisan would be unable to modify Park to include Fujioka’s compressor
clutch without also including a planetary gear mechanism.
As to Appellants’ second argument, we are not persuaded that the
Examiner erred in finding that the prior art teaches a variable capacity
compressor in use with a compressor clutch. Ans. 4. Specifically, we do not
agree with Appellants’ argument (Appeal Br. 5–6) that a skilled artisan
reviewing Fujioka would view the use of a variable capacity compressor as
limited to one preferred embodiment, i.e., a system with a variable capacity
compressor, a planetary gear mechanism, and no compressor clutch. See
Fujioka ¶ 97. Instead, we find the Examiner’s view of how a skilled artisan
at the time of the invention would interpret Fujioka—“that the compressor
clutch is not mandatory with a variable capacity compressor, [but that] a
clutch may still be used to completely disengage the compressor”—to be
more reasonable. Ans. 4; see also id. at 2 (providing articulated reasoning to
modify Park to include a compressor clutch). Further, because Appellants
do not address this issue in the Reply Brief (see Reply Br. 3), Appellants
have not explained the supposed error in the Examiner’s finding. For these
reasons, we sustain the Examiner’s decision to reject claim 1.

The rejection of claim 14 under 35 U.S.C. § 103(a)
A. Appellants’ Positions
Appellants assert that Park does not teach the “motor-generator”
recited in parts (a) through (d) of claim 14, but rather, Park “only teaches a
motor (111), which is only employed as a motor.” Appeal Br. 6. Focusing
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on part (c),1 Appellants argue that paragraph 5 of Park—relied on by the
Examiner (Final Act. 3)—“does not in any way teach or suggest that a motor
connected to a refrigerant compressor would be the means by which an
engine may be employed to charge the battery through such a motor.”
Appeal Br. 6–7. Appellants contend that paragraphs 5 through 7 of Park
distinguish between traction motors (as allegedly required by claim 14) and
starter motors (as allegedly taught in Park). Id. at 7.
B. The Examiner’s Positions
In response, the Examiner asserts that Fujioka, not Park, was relied on
as teaching the recited “motor-generator,” and that one cannot show
nonobviousness by attacking references individually. Ans. 4. The Examiner
relies on paragraph 5 of Park as teaching that “it is well known in the hybrid
vehicle art that an engine ‘charges the battery and drives the vehicle along
with the electric motor.’” Id.
C. Discussion
We are persuaded that the Examiner has not demonstrated that the
prior art teaches part (c) of claim 14. We agree with Appellants’ argument
that “the way the references are combined in the Final Office Action still
does not create a motor-generator in Park.” Reply Br. 4. Even if Park is
modified by replacing motor 111 with motor-generator 12 from Fujioka, the
resulting device would not be able “to receive the torque from the engine
and charge a battery,” as recited in part (c) of claim 14. This is because

1 Claim 14, part (c) recites “operating the motor-generator in an
alternator mode to receive torque from the engine and charge a battery.”
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clutch 140 in Park only engages to enable motor 111 to provide torque to
start the engine. See Park ¶¶ 32–36.
Further, we do not agree with the Examiner’s position that paragraph
5 from Park provides the motivation or teaching for which it is cited. Read
as a whole, paragraphs 5 through 7 in Park distinguish between traction
motors, which provide torque to propel the vehicle and receive torque to
generate electrical power (see Park ¶¶ 5, 6) and starter motors, which only
provide torque to start an engine (see Park ¶ 7). The Examiner has not
demonstrated how this general teaching would motivate one to further
modify Park (i.e., after incorporating Fujioka’s motor-generator) to transfer
engine torque through clutch 140 to drive a motor-generator (in the location
of motor 111), and thereby satisfy part (c) of claim 14. For these reasons,
we do not sustain the Examiner’s decision to reject claim 14.

CONCLUSION
For the reasons set forth above, we affirm the Examiner’s decision to
reject claim 1 under 35 U.S.C. § 103(a) and reverse the Examiner’s decision
to reject claim 14 under 35 U.S.C. § 103(a).
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)(1)(iv).

AFFIRMED-IN-PART

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