Ex Parte Mortreux

Patent Trial and Appeal Board

Apr 26, 2018

14024519 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/024,519 09/11/2013
23280 7590 04/30/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Francis Mortreux
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.
11000744.1079 9957
EXAMINER
FEBLES, ANTONIO R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS MORTREUX
Appeal2017-006394
Application 14/024,519
Technology Center 3700
Before: CHARLES N. GREENHUT, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm, designating our affirmance as including new grounds of
rejection.
1 Appellant identifies Alstom Transport Technologies, of Levallois-Perret,
France, as the real party in interest. Appeal Br. 2.
Appeal2017-006394
Application 14/024,519
CLAIMED SUBJECT MATTER
The claims are directed to an air conditioning device, in particular for
a rail vehicle. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An air conditioning device for inside air conditioning in at
least one passenger compartment of a rail vehicle passenger
compartment, or premises, the air conditioning device
compnsmg:
a primary circuit, in which a refrigerant circulates, the
primary circuit including an evaporator;
a first secondary circuit in which a first fluid circulates, the
first fluid passing through the evaporator to exchange heat
therein with the refrigerant, the first secondary circuit including
at least one first heat exchanger in which the first fluid exchanges
heat with inside air;
at least one first compartment housing the primary circuit;
an air treatment zone, formed outside the at least one first
compartment, to communicate with inside air, and housing the
first heat exchanger; and
at least one leaktight wall separating the at least one first
compartment from the air treatment zone.
REJECTI0NS 2
Claims 1--4, 6-8, and 10-12 are rejected under 35 U.S.C. § I03(a) as
being obvious over Wilson (US 2008/0245503 Al; published Oct. 9, 2008)
and Yamamoto (US 2006/0026982 Al; published Feb. 9, 2006).
2 The Examiner withdrew rejections under 35 U.S.C. §§ 112 and 102. Adv.
Act. Jun. 15, 2016
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Application 14/024,519
Claims 5 and 12 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wilson, Yamamoto, and Kotani (US 2010/0223940 Al;
published Sept. 10, 2010).
Claim 9 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Wilson, Yamamoto and Mueller (US 2003/0070789 Al; published Apr.
17, 2003).
OPINION
The Examiner relies on Yamamoto for the "leaktight" aspect of
independent claims 1 and 11. Final Act. 12, 18. Appellant correctly points
out that there is insufficient evidence to conclude, as the Examiner has done,
that Yamamoto's wall 20 is indeed "leaktight." App. Br. 14. Nevertheless,
the paragraphs cited by both Appellant and the Examiner (paras. 13, 14, 25,
40, 41) make it very clear that, in addition to Yamamoto' s improvements
upon the header connections, the dividing wall 20, which separates the
engine room and vehicle compartment, also plays at least some role in
refrigerant leak prevention. See Ans. 4. This is apparent because paragraphs
13 and 14, in addition to attributing leak prevention to improved joints, tout
the benefits of having the leak-prone components of the system on the
engine side of the vehicle department dividing wall. Thus, Yamamoto
suggests to one skilled in the art that wall 20 should, at the very least, be
leak resistant. In conducting an obviousness analysis, it must be
remembered that one skilled in the art is not an automaton (KSR v. Teleflex,
550 U.S. 398,421 (2007)) and knows something about the art apart from
what the references expressly suggest (In re Jacoby, 309 F .2d 513, 516
( CCP A 1962) ). Although being leak resistant does not necessarily make a
wall "leaktight" as the Examiner found, one skilled in this art would
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Application 14/024,519
understand that one particular way to make a wall leak resistant is to make it
"leaktight." It would have been obvious to do this to obtain the maximum
benefits touted by Yamamoto, namely preventing refrigerant leak into the
vehicle compartment. Thus, having considered Appellant's arguments, we
ultimately agree with the Examiner's conclusion of obviousness. However,
as our reasoning departs from that of the Examiner, we designate our
affirmance of the Examiner's rejection as including new grounds of rejection
so as to afford Appellant the procedural options associated therewith.
Regarding claims 3 and 4, Appellant does not address the specific
findings and cited portion of Wilson relied upon by the Examiner. App. Br.
11, 15; see Final Act. 13 ( citing Wilson para. 26). Appellant makes the
naked assertion that the claim limitations are not disclosed in the prior art
without any supporting explanation as to why Wilson's removable modular
unit does not teach the removable shared support of claims 3 and 4.
Arguments of this nature do not satisfy the requirements of 3 7 C.F .R.
§ 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, we sustain the Examiner's rejection of claims 3 and 4.
Regarding claim 9, Appellant alleges the improper use of hindsight by
the Examiner for proposing to incorporate into Wilson/Yamamoto a gasket
from Mueller's refrigerated oven. App. Br. 16-17. A familiar item such as
a "gasket" would have obvious uses in the heat exchange arts beyond the
specific purpose for which it is used in Mueller-to seal a refrigerated oven.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007) ("familiar items
may have obvious uses beyond their primary purposes."); see also In re
ICON Health and Fitness, Inc., 496 F. 3d 1374, 1380 (Fed. Cir. 2007).
Again, attributing the requisite presumption of skill to the hypothetical
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Application 14/024,519
artisan considered for purposes of an inquiry under § 103, we must agree
with the Examiner that employing a notoriously well-known structure such
as a gasket to produce a leaktight interface in the manner described in claim
9 would have been obvious to one of ordinary skill in this art. Accordingly,
we sustain the Examiner's rejection of claim 9.
DECISION
The Examiner's rejections are affirmed.
We designate our affirmance as including new grounds of rejection
pursuant to 37 C.F.R. § 4I.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
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Application 14/024,519
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. § 4I.50(b)
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