Ex Parte Shah et al

Patent Trial and Appeal Board

Oct 30, 2013

11290698 (P.T.A.B. Oct. 30, 2013)

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.
11/290,698 11/30/2005 Sanjay M. Shah GP-306237-NAPD-LCH 9814
81466 7590 10/30/2013
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
10/30/2013 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 SANJAY M. SHAH and CHARLES J. BRUGGEMANN
____________

Appeal 2011-010524
Application 11/290,698
Technology Center 3700
____________

Before STEFAN STAICOVICI, JOHN W. MORRISON, and
ADAM V. FLOYD, Administrative Patent Judges.

FLOYD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010524
Application 11/290,698

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-10. The Examiner has withdrawn claims
11-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. An automotive vehicle having a body with a roof
comprising:
a roof pillar extending to and supporting the roof, the roof pillar
being a hollow structural member defining a structural HVAC
duct including an interior surface for airflow therethrough, and
having an insulating coating covering substantially the entire
interior surface.

REFERENCES
Frantz U.S. 2004/0050487 A1 Mar. 18, 2004
Horton
Toas
Kato
U.S. 2004/0239091 A1
U.S. 2005/0236606 A1
U.S. 2005/0282485 A1
Dec. 2, 2004
Oct. 27, 2005
Dec. 22, 2005

REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kato and Frantz.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kato and Frantz.1

1 While the Examiner treated the rejections of claims 1 and 7 separately, we
will address them together.
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Application 11/290,698

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Claims 2, 3, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato, Frantz, and Toas.
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato, Frantz, Toas, and Horton.
Claims 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kato, Frantz, and Horton.

ANALYSIS
The rejection of claims 1 and 7 as unpatentable over Kato and Frantz
The Examiner finds the limitations recited in claim 1 to be disclosed
in Kato with the exception of “an insulating coating covering substantially
the entire interior surface.” Ans. 4. The Examiner relies upon Frantz for
disclosing insulating the interior of the duct, and finds that it would have
been obvious to combine the insulation of Frantz to the interior of the Kato
duct to prevent excessive noise and condensation. Id. Appellants argue that
the air curtain formed in Kato would produce significant noise, and
insulating the interior of the duct would not reduce the noise in any
meaningful way. App. Br. 4. The Examiner does not contradict Appellants’
contention regarding noise reduction which we find persuasive. As for
reducing condensation, Appellants argue that the air moved in the duct of
Kato is not heated nor cooled, thus, condensation would not be a concern.
App. Br. 4-5. The Examiner finds that even if the air in the Kato duct is not
heated or cooled, the air in the vehicle may be. Ans. 8. The Examiner finds
that the temperature differential between the air in the vehicle and the air in
the duct could result in condensation which could be mitigated by insulating
the interior of the duct. Id. Appellants do not offer evidence contradicting
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Application 11/290,698

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the Examiner’s finding. Reply Br. 5. The Examiner’s articulated reasoning
to modify Kato with the insulation of Frantz (i.e., to mitigate against
condensation) appears to have rationale underpinning.
Appellants also argue that Kato does not disclose “a structural HVAC
duct” because the air supply path 32 bypasses the heat exchanger 30, and
thus, the air supplied is not conditioned. App. Br. 3-4. The Examiner finds
that HVAC is an acronym for heating, ventilating, or air conditioning, and
that the duct 18, 22 in Kato is used for ventilation, and thus is an HVAC
duct. Ans. 7. The Examiner also notes that the claim does not require the
vehicle actually be heated, cooled, or ventilated. Misc. Comm. (dated Oct.
27, 2010). We understand the Examiner’s latter argument to be that
“HVAC” as applied to “duct” is a statement of intended use. Appellants
argue that an HVAC duct “is a duct for directing heated, ventilation and air
conditioned air to a vehicle interior.” Reply Br. 4. We agree. “[A] use
limitation [which] does not impart a structural feature different from those of
the prior art” is satisfied by a structure that “inherently possesses [the same]
capability.” In re Yanush, 477 F.2d 958, 959 (CCPA 1973). Here, the duct
in Kato is capable of carrying heated or cooled air, and thus, satisfies the
“HVAC duct” limitation of claim 1. Thus, the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Kato and Frantz is sustained.
With respect to claim 7, the Examiner finds that while the duct in
Kato is located in the A-pillar, moving it to the D-pillar as required by claim
7, would have been an obvious matter of design choice. Ans. 4-5.
Appellants argue that because the A-pillar is adjacent the instrument panel
and other HVAC ducts, locating the duct in the D-pillar provides
advantages. App. Br. 6. In addition, locating the duct in the D-pillar allows
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for using an auxiliary unit and ceiling mounted HVAC vents in the rear of
the vehicle. Id. The Examiner finds that one of ordinary skill would have
expected Appellants’ invention to perform equally well with the HVAC duct
located in the D-pillar of the A-pillar. Ans. 9. We agree that the Appellants
have not provided evidence that locating the duct in the D-pillar in not a
matter of design choice (e.g., unexpected results or criticality). Thus, the
rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Kato and
Frantz is sustained.

The rejection of claims 2, 3, and 10 as unpatentable over Kato, Frantz, and
Toas
The Examiner relies upon Toas for disclosing the particular insulating
coatings recited in claims 2, 3, and 10 (i.e., polyester melamine; polyester
urethane solvent-based; and phenolic, epoxy-based, or acrylic-based,
respectively). Ans. 5. The Examiner determines that it would have been
obvious to use the materials disclosed in Toas for insulating the duct of
Kato, so as to insulate the flow of air and to provide a flame resistant
environment. Ans. 5. Appellants argue that there is no reason to coat the
interior of the duct with a fire retardant coating. App. Br. 7. Because
Appellants do not explain why using a fire retardant coating in a vehicle’s
HVAC duct would not be desirable, we are not persuaded by Appellants’
argument. We also note that Toas discloses that “[f]ibrous insulation
products are often used in environments (e.g., residences, office buildings,
manufacturing facilities, and vehicles) in which fire is a hazard.” Toas, para.
[0003]. Thus, the rejection of claims 2, 3, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Kato, Frantz, and Toas is sustained.

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The rejection of claims 4 and 5 as unpatentable over Kato, Frantz, Toas,
and Horton
With respect to the rejection of claims 4 and 5, Appellants do not
make any other arguments separate from those made with respect to the
rejection of claim 1 under 35 U.S.C. § 103(a). App. Br. 7. Accordingly, for
the reasons set forth supra, we likewise sustain the rejection under
35 U.S.C. § 103(a) of claims 4 and 5 as unpatentable over Kato, Frantz,
Toas, and Horton.

The rejection of claims 6, 8, and 9 as unpatentable over Kato, Frantz, and
Horton
With respect to the rejection of claims 6, 8, and 9, Appellants do not
make any other arguments separate from those made with respect to the
rejection of claim 1 under 35 U.S.C. § 103(a). App. Br. 7-8. Accordingly,
for the reasons set forth supra, we likewise sustain the rejection under
35 U.S.C. § 103(a) of claims 6, 8, and 9 as unpatentable over Kato, Frantz,
and Horton.

DECISION
We AFFIRM the rejection of claims 1 and 7 under 35 U.S.C. § 103(a)
as unpatentable over Kato and Frantz.
We AFFIRM the rejection of claims 2, 3, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Kato, Frantz, and Toas.
We AFFIRM the rejection of claims 4 and 5 under 35 U.S.C. § 103(a)
as unpatentable over Kato, Frantz, Toas, and Horton.
We AFFIRM the rejection of claims 6, 8, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Kato, Frantz, and Horton.
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Application 11/290,698

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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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