Ex Parte Benoit

Patent Trial and Appeal Board

Mar 8, 2017

12715494 (P.T.A.B. Mar. 8, 2017)

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.
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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;
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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).
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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
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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
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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
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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
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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.
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DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—16.
REVERSED
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