Ex Parte BenoitDownload PDFPatent Trial and Appeal BoardMar 8, 201712715494 (P.T.A.B. Mar. 8, 2017) Copy Citation 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. 12/715,494 03/02/2010 Ryan J. Benoit P007646-NAPD-LCH 8881 81466 7590 03/10/2017 MacMillan, Sobanski & Todd, LLC - GM One Maritime Plaza 720 Water Street 5 th Floor Toledo, OH 43604 EXAMINER BRAUCH, CHARLES JOSEPH ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 03/10/2017 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): docketing @ mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN J. BENOIT Appeal 2014-0063821 Application 12/715,4942 Technology Center 3700 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and SHEILA F. McSHANE, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Specification (“Spec.,”filed Mar. 2, 2010), Appeal Brief (“Appeal Br.,” filed Dec. 17, 2013), and Reply Brief (“Reply Br.,” filed Apr. 21, 2014), as well as the Final Office Action (“Final Action,” mailed July 18, 2013) and the Examiner’s Answer (“Answer,” mailed Feb. 20, 2014). 2 According to Appellant, “[t]he real party in interest ... is GM Global Technology Operations LLC, .. . which is a subsidiary of General Motors Company.” Appeal Br. 1. Appeal 2014-006382 Application 12/715,494 According to Appellant, the invention relates “to a waste heat accumulator/distributor system incorporated into vehicle cooling systems.” Spec. 11. Claims 1 and 12 are the only independent claims on appeal. Appeal Br., Claims App. We reproduce claims 1 and 12, below, as illustrative of the claims on appeal. 1. A waste heat accumulator/distributor system for use in a vehicle comprising: an engine coolant loop configured to direct engine coolant through a power plant; a powertrain electronics coolant loop configured to direct electronics coolant through a powertrain electronics system; a transmission fluid loop configured to direct transmission fluid through a transmission; a multi-fluid heat exchanger including an engine coolant inlet configured to selectively receive the engine coolant from the engine coolant loop, an electronics coolant inlet configured to selectively receive the electronics coolant from the powertrain electronic coolant loop, and a transmission fluid inlet configured to selectively receive the transmission fluid from the transmission fluid loop, whereby heat transfer between the engine coolant, the electronics coolant and the transmission fluid can occur in the multi-fluid heat exchanger; a first valve controllable to selectively cause the engine coolant to flow into the engine coolant inlet or to bypass the engine coolant inlet of the multi-fluid heat exchanger; and a second valve controllable to selectively cause the electronics coolant to flow into the electronics coolant inlet or to bypass the electronics coolant inlet of the multi-fluid heat exchanger. 12. A method of operating a waste heat accumulator/distributor system in a vehicle, the method comprising the steps of: (a) directing engine coolant through an engine in an engine coolant loop; 2 Appeal 2014-006382 Application 12/715,494 (b) directing electronics coolant through a powertrain electronics system in a powertrain electronics coolant loop; (c) directing transmission fluid through a transmission in a transmission fluid loop; (d) selectively directing the engine coolant through or bypassing a multi-fluid heat exchanger as the engine coolant flows through the engine coolant loop; (e) selectively directing the electronics coolant through or bypassing the multi-fluid heat exchanger as the electronics coolant flows through the powertrain electronics coolant loop; and (f) directing the transmission fluid through the multi-fluid heat exchanger as the transmission fluid flows through the transmission fluid loop. Id. REJECTIONS AND PRIOR ART The Examiner rejects claims 1, 5, 6, and 9-14 under 35 U.S.C. § 103(a) as unpatentable over Jaura (US 2004/0045749 Al, pub. Mar. 11, 2004) and Marton (US 2002/0153125 Al, pub. Oct. 24, 2002). The Examiner rejects claims 2 and 15 under 35 U.S.C. § 103(a) as unpatentable over Jaura, Marton, and Shimizu (US 4,982,895, iss. Jan. 8, 1991). The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable over Jaura, Marton, and Pfeffinger (US 6,772,715 B2, iss. Aug. 10, 2004). The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable over Jaura, Marton, and Wantschik (US 2007/0186878 Al, pub. Aug. 16,2007). 3 Appeal 2014-006382 Application 12/715,494 The Examiner rejects claims 7 and 16 under 35 U.S.C. § 103(a) as unpatentable over Jaura, Marton, and Gering (US 2008/0078542 Al, pub. Apr. 3, 2008). The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as unpatentable over Jaura, Marton, Gering, and Laing (US 4,004,426, iss. Jan. 25, 1977). ANALYSIS Independent claim 1 recites, among other recitations, “a multi-fluid heat exchanger . .., whereby heat transfer between the engine coolant, the electronics coolant and the transmission fluid can occur in the multi-fluid heat exchanger.” Appeal Br., Claims App. Initially, we note that because the claim uses the term “whereby,” and states that heat transfer “can” occur, it may be questionable under some circumstances as to whether the above- reproduced recitation of the claim is optional and does not serve to limit the scope of the claim. In this case, however, the Examiner does not determine that the recitation is optional, but instead the Examiner bases the rejection on a finding that the prior art discloses this claim recitation. See Final Action 2—3; see also Answer 3^1. Appellant argues in the Appeal and Reply Briefs that the prior art must disclose this limitation (i.e., Appellant essentially argues that the claim recitation is not optional). See Appeal Br. 11; see also Reply Br. 3-4. Thus, we base our decision on the understanding of the claim which appears to be shared by Appellant and the Examiner, which is that the portion of the claim at issue should be afforded patentable weight and the prior art must teach (or suggest) a multi-fluid heat exchanger that is 4 Appeal 2014-006382 Application 12/715,494 capable ofheat transfer among the engine coolant, electronics coolant, and transmission fluid therein. In response to Appellant’s argument that Jaura does not teach such a multi-fluid heat exchanger (see Appeal Br. 8—9), the Examiner finds that “[f]orthe entire examination of this case,. .. Jaura ... is never relied upon to disclose a multi-fluid heat exchanger. .. . Jaura . .. discloses a system of multiple fluid loops and Marton is brought in to teach that multiple fluid loops can be brought together in a multi-fluid heat exchanger for heat transfer.” Answer 3. Appellant argues that Marton also does not disclose a multi-fluid heat exchanger that is capable ofheat transfer among the engine coolant, electronics coolant, and transmission fluid therein. AppealBr.il. More specifically, Appellant argues that in Marton . . . “heat from the fluids to be cooled will be transferred to the air stream surrounding the heat exchangers.” (Marton, par. [0026])[.] Thus, it is an air stream that is flowing to get the heat transfer from the other fluids, with the air thus being heated flowing away from the heat exchanger—since it is flowing air. The heat exchanger is even oriented on the vehicle parallel to the air stream and a fan is contemplated to keep the air flowing. So the air in Marton is not an insulation, it is the heat transporting medium to flow heat away from (not between) the fluids flowing through the fittings. Appeal Br. 11. Based on our review, we determine that Appellant’s description of how Marton is expected to operate is persuasive. Conversely, the Examiner fails to provide evidence sufficient to establish that Marton discloses a multi-fluid heat exchanger that is capable ofheat transfer among the engine coolant, electronics coolant, and transmission fluid therein. For example, although the Examiner relies on Marton’s paragraph 26 to support 5 Appeal 2014-006382 Application 12/715,494 the finding that Marton teaches heat transfer among fluids, as stated in a portion of Marton reproduced by the Examiner in the Answer, “[h]eat from the fluids to be cooled will be transferred to the air stream surrounding the heat exchangers”—which does not state, for example, that heat from the fluid will be transferred to any of the other fluids. Answer 3-4, citing Marton 126 (emphasis added). We conclude that the Examiner’s further determination that “[t]he interior [of the heat exchanger] will not be subjected to a cooling flow and there will be significant convective flow from the pipes in the interior to the air in the interior to the other pipes in the interior. The heat also will flow from pipe to pipe based on conduction” {id. at 4), is conjecture lacking a sufficient evidentiary basis. Additionally, independent claim 1 recites “a first valve controllable to selectively cause the engine coolant to flow into the engine coolant inlet or to bypass the engine coolant inlet of the multi-fluid heat exchanger.” Appeal Br., Claims App. Appellant argues the rejection is in error because [t]here is no valve at all in Jaura that can selectively cause the engine coolant to flow into the engine coolant inlet or to bypass the engine coolant inlet of the multi-fluid heat exchanger, let alone flow into a multi-flow heat exchanger, let alone flow into a multi-flow heat exchanger. Paragraph [0037] does not discuss anything relative to a valve (or an engine coolant bypass for that matter) in the engine cooling loop, and none of the figures show such an arrangement either (26 in [F]ig. 1 or 66 in [F]igs. 2 and 3). Appeal Br. 9-10. Based on our review, we determine that Appellant’s argument regarding Jaura is persuasive. For example, the Examiner determines that “Jaura .. . discloses in [Paragraph 0037] that ‘ [appropriate valves and controllers would need to be added as well (see FIG. 3, discussed below)[,]’ [which amounts to] a 6 Appeal 2014-006382 Application 12/715,494 suggestion in the prior art that the specifics of where to put a valve is not inventive.” Answer 4, citing Jaura | 37. We note, however, that consistent with Appellant’s argument set forth above, this portion of Jaura does not appear to discuss the use of a bypass loop or any other structure that would allow a fluid to bypass a heat exchanger—rather, it appears that at most the use of a valve is contemplated, which may permit fluid either to flow through a heat exchanger or not to flow at all, for example. See Jaura 137. The Examiner further determines that “[mjoreover, in [Paragraph 0038] the Jaura reference discloses ‘FIG. 3 adds additional valves having actuators controllable by the VSC 91 known in the art, the ISG transmission pump 86 is reversible, and some additional transmission oil fluid paths (bypass conduits).” Answer 4, citing Jaura 138 (emphasis omitted). While this portion of Jaura does appear to disclose a bypass conduit, it is not clear that the arrangement that includes this conduit allows fluid to flow either through a heat exchanger or to bypass the heat exchanger. Rather, it appears that the bypass conduits may be used to flow fluid through, or alternatively to bypass, a transmission or an integrated- starter-generator (ISG). See Jaura 138 (n.b. “[a controller] can control the valves ... to divert transmission oil [either] to the HEV transmission 64 or the ISG 63[,] or to . .. conduits 99 and 89.”) (italics added). Thus, we determine that the Examiner fails to establish adequately that “[t]he prior art as a whole certainly teaches and suggests all these features.” Answer 4. Thus, based on the foregoing, we do not sustain the rejection of claim 1. Further, we do not sustain any of the rejections of claims 2—11 that depend from claim 1, because the Examiner does not establish that any other 7 Appeal 2014-006382 Application 12/715,494 prior art reference remedies the above-discussed deficiencies in the rejection of the independent claim. With respect to independent claim 12, the claim recites “selectively directing the engine coolant through or bypassing a multi-fluid heat exchanger as the engine coolant flows through the engine coolant loop; [and] .. . selectively directing the electronics coolant through or bypassing the multi-fluid heat exchanger as the electronics coolant flows through the powertrain electronics coolant loop.” Appeal Br., Claims App. The Examiner does not find that either reference discloses selectively directing engine coolant or electronics coolant, but, rather, the Examiner determines that “[o]f course, based on the suggestions in the prior art as a whole, all of these loops [in Jaura] could be routed to the inlets and outlets of.. . Marton[’s] ... multi-fluid heat exchanger between their initial and final destinations.” Answer 6. We determine, however, that the Examiner does not adequately explain why one of ordinary skill in the art would combine and modify Jaura and Marton to provide the claimed selective directing of the engine coolant and electronics coolant, and, thus, we do not sustain the rejection. See id. at 5—6; see also Appeal Br. 12—13. Therefore, for these reasons, we do not sustain the rejection of claim 12 or its dependent claims 13-16. 8 Appeal 2014-006382 Application 12/715,494 DECISION We REVERSE the Examiner’s obviousness rejections of claims 1—16. REVERSED 9 Copy with citationCopy as parenthetical citation