Ex Parte O et al

Board of Patent Appeals and Interferences

Nov 15, 2011

12016500 (B.P.A.I. Nov. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN P. O’FLYNN and JODY M. SLIKE
____________________

Appeal 2010-002290
Application 12/016,500
Technology Center 3700
____________________

Before: LINDA E. HORNER, JOHN C. KERINS, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002290
Application 12/016,500
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
12. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a liquid cooling system for internal
combustion engine. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A liquid cooling system for an internal combustion engine,
comprising:
a coolant pump;
an air-to-liquid heat exchanger;
a bypass loop for allowing coolant to circulate from the
coolant pump to the engine without passing through the heat
exchanger;
a thermostat housing operatively connected with said
coolant pump, as well as with said heat exchanger and said
bypass loop; and
a thermostatic valve mounted within said thermostat
housing, with said thermostatic valve comprising:
a temperature-responsive primary valve element
for controlling a flow of coolant between said coolant
pump and said heat exchanger; and
a bypass flow control, coupled to said primary
valve element, for controlling a flow of coolant through
said bypass, with said bypass flow control comprising a
resiliently biased valve disc having a conical, annular
sealing surface configured for linear contact with a valve
seat.

Appeal 2010-002290
Application 12/016,500
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kline
Thiel
Fournier
Hrytzak
Yu
US 5,011,074
US 5,690,276
US 5,934,553
US 6,928,995 B1
US 6,953,026
Apr. 30, 1991
Nov. 25, 1997
Aug. 10, 1999
Aug. 16, 2005
Oct. 11, 2005

REJECTIONS
Claims 1, 3-8 and 10-12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thiel and Hrytzak. Ans. 3, 5, 6.
Claims 2 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thiel, Hrytzak and Fournier. Ans. 4, 6.

OPINION
Appellants argue claims 1 and 3-6 as a group. Br. 6-7. We select
claim 1 as representative, and claims 3-6 will stand or fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii). Although argued under a separate subheading,
Appellants do not raise any issues specific to claims 7, 8, and 10-12. Rather,
Appellants rely solely on the arguments presented regarding claim 1. Br. 8.
Similarly, in arguing claim 9, Appellants rely solely on those arguments
presented regarding claim 2. Br. 8.
Regarding the rejection of claim 1, Appellants do not dispute the basic
factual findings made by the Examiner regarding Thiel and Hrytzak. We
adopt these findings as our own. See Ans. 3-4. However, Appellants argue
that the “Examiner’s reliance upon Hrytzak is misplaced because at column
2, lines 16-28, Hrytzak teaches away from and criticizes and distinguishes
Appeal 2010-002290
Application 12/016,500
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the use of a 90° sharp corner valve seat which is found in Thiel at Figure 1
and in Appellants’ device at 72 in both Figures 2 and 3.” Br. 6. Whether a
reference teaches away from a claimed invention is a question of fact. In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). We adopt the Examiner’s
entire response to this argument as our own. See Ans. 8-9. However, we
emphasize that Appellants are arguing that Hrytzak teaches away from a
feature that is not found in the claims. See Ans. 9.
Appellants further contend that
Hrytzak deals with a compressible gas flowing at or near sonic
velocity, whereas the claimed device deals with an oftimes
static, incompressible liquid, flowing at much lower speeds.
The Examiner does not adequately explain why a person of
ordinary skill in the art would have considered combining a
tapered pintle from Hrytzak’s EGR [Exhaust Gas Recirculation]
valve, which controls a gas flow, with a flat valve seat from
Thiel’s thermostatic liquid control valve, particularly when
Hrytzak teaches against a flat seat.
Br. 7. First, as noted above, while the annular sealing surface must be
“configured for linear contact with a valve seat” the feature of the seat upon
which Appellants rely, flatness, is not found in claim 1. Second, although
Hrytzak discusses advantages of the frustoconical shape related to flow
thereby that are likely to prove advantageous specifically to a gaseous
system, Hrytzak also discusses advantages of the frustoconical shape, such
as improving durability and discouraging coking – the buildup of solid
residue – that would also benefit a fluidic system. Thus, we agree with the
Examiner that one of ordinary skill in the art would not have viewed
Hrytzak’s teachings regarding valve geometry as inapplicable to Thiel’s
system simply because Hrytzak’s valve is used in an EGR device.
Appeal 2010-002290
Application 12/016,500
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Regarding the rejection of claim 2, Appellants contend that “Fournier
does not teach the use of bypass orifices in a bypass valve disc.” Br. 7.
Rather, Appellants contend, Fournier “teaches some sort of bypass or
leakage in the sole valve element of a thermostat, which is not a bypass
valve element.” Id. Fournier does not require such a specific teaching to
render the claimed subject matter obvious in view of the combined teachings
of Thiel, Hrytzak and Fournier. Although, as Appellants point out, Fournier
only has a single moving valve element, Fournier teaches placement of a
channel 64 in the exterior closure surface 44 of that valve member 18 in
order to allow some coolant backflow to provide pressure relief. Col. 4, l. 62
– col. 5, l. 24, fig. 5A. Achieving the intended function of Fournier’s channel
requires that the channel provide fluidic communication between the hot and
cold coolant paths when the valve is in the closed position. See id. In order
to apply this teaching to Thiel, such a channel or “orifice” must be placed at
least in the sealing element 64 of Thiel’s third valve assembly, interpreted by
the Examiner as the claimed “valve disc” of the “bypass flow control.” See
Ans. 3, 4, 10.
We note that the Examiner additionally cites Yu and Kline, of which
only Kline was discussed in the final rejection. See Fin. Rej. 8. While these
references do appear relevant to the claimed subject matter, neither is
included in the statement of the rejection nor discussed by Appellants. While
we do not see a need to rely on the teachings of these references to support
the Examiner’s rejection before us for review, we recommend that the
applicability of these references be made clear in any further prosecution so
that Appellants may be afforded a fair opportunity to respond the thrust of
any alternative rejections based thereon. See, e.g., In re Hoch, 428 F.2d
1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a
Appeal 2010-002290
Application 12/016,500
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rejection, whether or not in a ‘minor capacity,’ there would appear to be no
excuse for not positively including the reference in the statement of the
rejection.”).

DECISION
The Examiner’s rejections of claims 1-12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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