Ex Parte SONG

Patent Trial and Appeal Board

Aug 15, 2016

12400294 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/400,294 0310912009
74175 7590 08/17/2016
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
FIRST NAMED INVENTOR
B. JERRY SONG
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.
P005535-PTE-DPH 3761
EXAMINER
SHEPPARD, JASON A
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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
following e-mail address( es):
gm-inbox@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte B. JERRY SONG1
Appeal2014-003032
Application 12/400,294
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-20. Appeal Br. 6. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is GM Global Technology
Operations, LLC. Appeal Br. 2.
Appeal2014-003032
Application 12/400,294
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates to internal combustion engines,
and more specifically to controlling oxygen levels in intake air flow in
engines." Spec. if 1. Claim 1 is illustrative and recites:
1. An engine assembly comprising:
an intake manifold in fluid communication with a
combustion chamber;
a first intake conduit having an inlet directly connected to
an air supply and an outlet directly connected to said intake
manifold;
a voltage source; and
a first oxygen pump assembly disposed in said first intake
conduit, the oxygen pump assembly including an oxygen ion
conducting cell, a first electrode in electrical communication
with the voltage source and a second electrode in electrical
communication with the voltage source, the first electrode being
disposed on a first side of the cell and being exposed directly to
an interior of the first intake conduit, and the second electrode
being disposed on a second side of the cell and isolated from the
interior of the conduit, the first oxygen pump assembly disposed
between the inlet and the outlet and configured to remove oxygen
from an air flow within the interior of the first intake conduit
based on a voltage applied across the cell by the voltage source
to create an oxygen depleted airflow that is directly supplied to
the intake manifold.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1-5, 7-11, 14--18, and 20 as
unpatentable under 35 U.S.C. § 103(a) over Botti (US 6,230,494 Bl; iss.
May 15, 2001).
The Examiner rejected claims 6 and 13 as unpatentable under 35
U.S.C. § 103(a) over Botti and Shi (US 2009/0139497 Al; pub. June 4,
2009).
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Appeal2014-003032
Application 12/400,294
The Examiner rejected claims 12 and 19 as unpatentable under 35
U.S.C. § 103(a) over Botti and Kawasaki (US 7,632,588 B2; iss. Dec. 15,
2009).
ANALYSIS
The Examiner finds that Botti discloses or renders obvious the
elements of claim 1. Final Act. 2--4. The Examiner finds that Botti
discloses "a first intake conduit having an inlet (15) directly connected to an
air supply (inherent) and an outlet (21' & 25') directly connected to said
intake manifold (see [Botti] lines 37-46 of column 6)." Id. at 2. The
Examiner also finds that Botti discloses:
a first oxygen pump assembly (solid oxide fuel cell ["SOFC"]
110) disposed in said first intake conduit, the oxygen pump
assembly (110) ... configured to remove oxygen from an air
flow within the interior of the first intake conduit based on a
voltage applied across the cell by the voltage source to create an
oxygen depleted airflow (see lines 48-53 of column 4) that is
directly supplied to the intake manifold (via 21 i & 25}
Id. at 3. In an Advisory Action, the Examiner specifies that "[r]eferences
made by examiner to passages 21' and 25' as the oxygen depleted air stream
are with respect to the system of Botti operated in oxygen generation mode
(e.g., see lines 48-53 of column 4)." Adv. Act. 2, mailed May 23, 2013.
Appellant argues that Botti does not disclose or render obvious the
recited "oxygen pump assembly" because no embodiment of Botti discloses
an SOFC that receives power, utilizes the power to remove oxygen from an
airstream, and then supplies that airstream to the engine. See Appeal Br. 7-
10; Reply Br. 4--8. Specifically, Appellant contends that, in Botti (see Fig.
3), power is supplied to the SOFC and the SOFC removes oxygen only when
in oxygen generation mode. Reply Br. 7. Appellant further contends in that
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Appeal2014-003032
Application 12/400,294
embodiment, the SOFC does not supply an airstream to the engine. Id. at 3.
Moreover, Appellant further argues that the only embodiment in Botti in
which the airstream from the SOFC is supplied to the engine is that depicted
in Figure 2; however, in that embodiment the SOFC produces power and
does not remove oxygen from the airstream. Id.
We agree with Appellant's view of Botti. The Examiner's findings
are incorrect in that they rely upon a mixing ofBotti's disclosed
embodiments. In particular, while Botti unambiguously describes Figures 1
and 2 as demonstrating modes in which the SOFC produces energy, the
Examiner finds that Figure 2 in particular, could somehow depict the
functionality of Botti' s system while in the oxygen generation mode, in
which the SOFC receives energy and removes oxygen from an airflow. See
Final Act. 2-3; Ans. 3 ("Analogously, in Fig. 2, when operating in oxygen
generation mode, the oxygen depleted air flow is the flow exiting through
the SOFCs fuel (top) side via top outlet (21) while the oxygen enriched air
flow exits via the bottom outlet (23)."). However, such findings are contrary
to the teachings of Botti, which specify that when in oxygen generation
mode, the functionality (including air flows) is as depicted in Figure 3. Botti
4:31---60. Moreover, the Specification is contrary to the Examiner's view
that the SOFC can receive energy in the mode depicted in Figure 2. Botti
4:33--43 ("During normal system operation such as start-up/ cabin heating,
low power mode, medium power mode, and high power mode, electricity is
produced by the SOFC ... for use in various areas of the system ... [or] for
an external use. In the oxygen generation mode, however, electricity is
introduced to the SOFC via line 56 in order to establish a reverse electrical
potential across the electrolyte within the SOFC."). We agree with
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Appeal2014-003032
Application 12/400,294
Appellant that "there is no description in Botti that supports the
[E]xaminer's interpretation that the flow configuration of Figure 2 can be
utilized in an oxygen generation mode." Reply Br. 7.
Accordingly, as the Examiner's rejection relies upon an incorrect
interpretation of the sole reference, we do not sustain the Examiner's
rejection of claim 1. As the Examiner's findings with respect to claims 2-20
(including findings relating to Shi and Kawasaki) do not remedy the
deficiency identified above, we also do not sustain the Examiner's rejection
of claims 2-20. See Final Act. 2-19.
DECISION
We REVERSE the Examiner's rejection of claims 1-20 under 35
U.S.C. § 103(a).
REVERSED
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