Ex Parte Pal et al

Patent Trials and Appeals Board

Jun 24, 2019

14524019 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/524,019
61654 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
10/27/2014
06/26/2019
FIRST NAMED INVENTOR
Debabrata Pal
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.
1510801.329US1 1075
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBABRAT A PAL and CRAIG R. LEGROS
Appeal2018-005902
Application 14/524,019 1
Technology Center 2800
Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 1, 3---6, and 9. Br. 5-10.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellant is the Applicant, Hamilton Sundstrand Corporation, which is
also identified as the real party in interest. Br. 2.
Appeal2018-005902
Application 14/524,019
BACKGROUND
The subject matter on appeal is directed to an electric motor system.
Claim 1 is the only independent claim on appeal, is illustrative, and is copied
below from the Claims Appendix to the Appeal Brief:
1. An electric motor system, comprising:
a motor housing;
a stator core disposed within the motor housing and
including a back iron heat exchanger for passing fluid
therethrough, wherein the back iron heat exchanger is in direct
thermal contact with the stator core;
a fluid inlet disposed at a first portion of the back iron
heat exchanger that is at least partially in fluid communication
with a liquid coolant source and is configured to accept a
cooling mixture;
a fluid outlet disposed at a second portion of the back
iron heat exchanger for outletting a gas coolant from the back
iron heat exchanger such that liquid coolant is convertible to the
gas coolant in the back iron heat exchanger by receiving energy
from the stator core allowing the gas coolant exit through the
outlet and thereby removing heat from the stator core; and
a fluid mixer configured to mix air and the liquid coolant
ahead of the fluid inlet to create the cooling mixture, wherein
the fluid mixer includes one or more liquid sprayers to spray
liquid particles of the liquid coolant into the air such that the
cooling mixture includes liquid particles dispersed therein when
it enters the fluid inlet.
Br. 12.
STATEMENT OF THE CASE
On appeal, the Examiner maintains the following rejections:
I. Claim 9 under 35 U.S.C. § 112(a) as lacking written
description; and
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Appeal2018-005902
Application 14/524,019
II. Claims 1, 3---6, and 9 under 35 U.S.C. §103 as unpatentable
over the base combination of Masoudipour2 in view of Hara 3,4 .
Adv. Act. 2; Ans. 2.
OPINION
Rejection I
Claim 9-the only claim subject to this rejection----depends from
claim 1 and further requires that the "fluid inlet is defined in the motor
housing and includes a plurality of introducers for spraying the cooling
mixture into the back iron heat exchanger." Br. 13 (Claims App'x.). The
Examiner finds that claim 9 fails to comply with the written description
requirement of 35 U.S.C. § 112(a). Final Act. 4.
In rejecting claim 9, the Examiner focuses on the differences between
the "closed loop system of figure 1" and "the open loop system of figure 2,"
stating that the fluid inlet 109 and sprayers 101 a depicted in Figure 1 and the
fluid mixer 225 depicted in Figure 2 "are not described as being used
together" and there is no disclosure of how one would incorporate the closed
loop system of figure 1 into the open loop system of figure 2." Final Act. 4.
We reverse this rejection.
"[The written description] inquiry is a factual one and must be
assessed on a case-by-case basis." Purdue Pharma L.P. v. Faulding Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000). An original claim is part of the
2 US 2009/0044548 Al, published Feb. 19, 2009.
3 US 2002/0085892 Al, published July 4, 2002.
4 The Examiner also relies on additional prior art in the rejection of claims 3,
4, 6, and 9. Ans. 2. Because Appellant does not present separate arguments
under § 103 for these claims, we need not discuss the content of these
additional references.
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Application 14/524,019
original disclosure. See In re Gardner, 475 F.2d 1389, 1391 (CCPA 1973)
( explaining how "an original claim, in itself constituted a description in the
original disclosure equivalent in scope and identical in language to the total
subject matter now being claimed. See In re Anderson, 471 F.2d 1237
(CCPA 1973). Nothing more is necessary for compliance with the
description requirement.").
Here, claim 9 now depends from claim 1, but originally depended
from claims 7 and 8. The limitations of original claims 7 and 8 appear
almost verbatim in appealed claim 1 before us. Thus, we agree with
Appellant (Br. 5) that the Examiner has failed to give proper weight to the
text of original claim 9.
The Examiner also fails to provide adequate reasons why the skilled
artisan would not have considered the express disclosure of original claim 9
to be sufficient to establish possession of a system that employs a fluid
mixer 225 and a fluid inlet 109, together with the additional limitations
recited in claim 9. In fact, the Examiner does not squarely address
Appellant's argument to this effect (Br. 5-6), but rather focuses on how
Appellant's argument is more directed to enablement than written
description. Ans. 3. We furthermore observe that Figure 2 of the
application has a fluid inlet 109 and a fluid mixer 225. See Fig. 2.
Under these circumstances, we determine that the Examiner failed to
establish that Appellant did not have possession of the subject matter of
claim 9 at the time the application was filed. It follows that we do not
sustain the Examiner's rejection under 35 U.S.C. § 112(a).
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Application 14/524,019
Rejection II
Appellant presents arguments only directed to independent claim 1. 5
Br. 6-10. We, therefore, select this claim as representative and decide the
appeal of this rejection on the basis of claim 1 alone.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Masoudipour discloses all of the elements
recited in claim 1, but "does not disclose a fluid mixer configured to mix air
and the liquid coolant ahead of the fluid inlet [ 4 7] to create the cooling
mixture." Final Act. 9. The Examiner relies on Hara for this disclosure (id.
at 9-10), as well as for the limitation previously present in claim 8, but now
recited in claim !-"wherein the fluid mixer includes one or more liquid
sprayers to spray liquid particles of the liquid coolant into the air such that
the cooling mixture includes liquid particles dispersed therein when it enters
the fluid inlet." Id. at 10.
The Examiner determines that it would have been obvious to the
skilled artisan "to implement the cooling system of Masoudipour having a
fluid mixer as taught by Hara, in order to remove the need for expensive
cooling components thereby reducing costs (i10026 of Hara)." Id. at 9-10.
5 The limitations of claims 7 and 8 were added to claim 1 by an amendment
after final rejection. See Amendment dated October 23, 2017. The
Examiner entered the amendment on November 3, 2017 and issued an
Advisory Action indicating that the rejection of claim 1 is made under 35
U.S.C. § 103 over a combination ofMasoudipour and Hara. Adv. Act. 2;
see also Ans. 2 ( explaining how claim 1 is rejected under § 103 "as
previously applied to cancelled claims 7-8").
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Application 14/524,019
Appellant argues that Hara does not disclose the claimed fluid mixer
because Hara's "joining of two tubes is not a fluid mixer ... let alone one
that has one or more sprayers." Br. 8.
This argument fails to persuade us of reversible error in the rejection.
We start with the language of claim 1 which requires, inter alia, "a fluid
mixer configured to mix air and the liquid coolant." Br. 12 (Claims App'x.)
(emphasis added). Hara discloses two branch portions 13 and 14, with 13
being connected to a cooling liquid supply unit and 14 being connected to a
compressed air supply unit. Hara ,r 19. Hara teaches that "the cooling water
and the compressed air respectively supplied to the branch portions 13 and
14 merge and mix with each other in the confluent portion 12, so that the
cooling water is disintegrated into minute water particles in the form of a
mist." Id. ,r 22. Here, we find no fault with the Examiner's determination
that Hara' s branch portions 13 and 14 form the claimed fluid mixer, because
they mix air and liquid coolant, and "perform the same functions disclosed
in the application." Ans. 4. Appellant does not provide any meaningful
explanation how the claimed structure differs from that of Hara. Br.,
generally. As such, Appellant's statement that Hara fails to disclose the
"fluid mixer" limitation recited in claim 1 amounts to little more than a
conclusory assertion. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board [has] reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.").
For these reasons, and those provided by the Examiner, we are of the
opinion that Appellant has failed to identify reversible error in the
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Examiner's obviousness rejection of claims 1, 3---6, and 9. We, therefore,
sustain the Examiner's obviousness rejection of these claims.
DECISION
The Examiner's final decision to reject claims 1, 3---6, and 9 is
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).
AFFIRMED
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