Ex Parte Oesterle et al

Patent Trial and Appeal Board

Dec 9, 2016

12945649 (P.T.A.B. Dec. 9, 2016)

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.
12/945,649 11/12/2010 Jorg Oesterle 5149.109815 8220
24978 7590 12/13/2016
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
DANICIC, CHRISTOPHER
ART UNIT PAPER NUMBER
1758
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG OESTERLE, ROLF JEBASINSKI, THOMAS NORDING,
and GEORG WIRTH1
Appeal 2015-006785
Application 12/945,649
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and
N. WHITNEY WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of sole independent claim 1 as
unpatentable over Kawai (JP 61-254082, published Nov. 11, 1986) and
Purdy (US 3,524,772, issued Aug. 18, 1970) and of dependent claims 2, 5—7,
9, 11—17, and 19-22 as unpatentable over these references alone or in
1 J. Eberspacher GmbH & Co. KG is identified as the real party in interest.
App. Br. 2.
Appeal 2015-006785
Application 12/945,649
combination with additional prior art. We have jurisdiction under 35 U.S.C.
§6.
We REVERSE.
Appellants claim an exhaust system for a combustion engine
comprising an exhaust gas-conducting component 3 having an inner wall 4,
a cooling jacket 15 surrounding the inner wall, at least one thermoelectric
generator 8 for converting heat into electric energy disposed between the
inner wall and cooling jacket, and a spring structure 20 under
circumferential preload for applying a radial preload to and for supporting
the at least one thermoelectric generator, “wherein said spring structure
includes regions with different elasticity in the circumferential direction,
wherein regions of higher elasticity [24] and regions of lower elasticity [25]
alternate in the circumferential direction” (claim 1, Figs. 1—5).
In rejecting claim 1, the Examiner finds that Kawai discloses an
exhaust system having an inner wall, a cooling jacket, and thermal electric
generators therebetween (Ans. 2—3) but “is silent to a spring structure and
particulars thereof’ {id. at 3). The Examiner accounts for this deficiency as
follows:
Purdy teaches the use of a spring structure (19, 27) in a TE [i.e.,
thermoelectric] device comprising regions of lower and higher
elasticity (27 and regions of only 19 between 27) wherein the
TE elements are under preload and supported alternately on the
regions of lower elasticity (figure 2 a[n]d col. 4, lines 40-50). It
would have been obvious to one of ordinary skill in the art
would [sic, to] have used the spring structure of Purdy
providing spring regions positioned] at each TE element in
Kawai because the spring resilient member (structure) provides
constant pressure to maintain low electrical loss electrode
contacts as well as provide a high heat conductivity to
maximize efficiency, as taught by Purdy (col. 9, lines 25-30).
The Examiner notes that because the TE elements of Kawai
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Appeal 2015-006785
Application 12/945,649
alternate radially in the circumferential direction (abstract and
figure 4), use of the spring structure of Purdy will provide
alternating regions of 19 and 19/27 wherein the outer contacts
are supported by the spring structure, thereby reading on the
instant claimed invention.
(Id.)
Appellants argue:
The Examiner has failed to explain how Purdy’s generally
planar, linear arrangement for connecting individual
thermoelectric blocks which urges Purdy’s flexible membrane
19 outward against the high temperature block 11 and the low
temperature block 13 could be modified for use in an annular
thermoelectric generator to include regions with alternating
high and low elasticity in a circumferential direction for
applying an inwardly directed radial preload.
(App. Br. 20). In this regard, Appellants emphasize that “[njeither Purdy’s
flexible wall 19 nor Purdy’s mesh springs 27, nor their combination, is
disclosed as having the claimed alternating regions of higher and lower
elasticity” (id. at 21). According to Appellants, “[t]he Examiner is clearly
relying upon hindsight using Appellants’] disclosure and claims to arrive at
a finding of non-patentability of the claimed subject [matter]” (Reply Br. 4).
Appellants’ argument has merit. The Examiner’s finding that the
spring structure of Purdy comprises “regions of lower and higher elasticity
(27 and regions of only 19 between 27)” (Ans. 3) is not expressly supported
by the cited disclosures of Purdy. Further, the Examiner fails to explain why
an artisan would have considered Purdy’s above regions to have differing
elasticities and would have incorporated this non-discussed feature of Purdy
into the exhaust system of Kawai in such a way as to result in the claim 1
limitation “wherein said spring structure includes regions with different
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Appeal 2015-006785
Application 12/945,649
elasticity in the circumferential direction, wherein regions of higher
elasticity and regions of lower elasticity alternate in the circumferential
direction.” In the record before us, only Appellants, in their Specification,
disclose a reason for providing such alternating regions (i.e., “so that the
spring structure 20 can easily offset the expansion or the adjustment of the
TE-generator 8 to the outside” (Spec. 1 bridging 12—13)).
Because the record reflects that the Examiner’s obviousness
conclusion regarding claim 1 is based on the teachings of the Specification
of the application on appeal, rather than the applied prior art, we do not
sustain the § 103 rejections of this claim and the claims depending
therefrom.
The decision of the Examiner is reversed.
REVERSED
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