13781401 (P.T.A.B. Jul. 30, 2018)

Ex Parte BEYER et al

Patent Trial and Appeal BoardJul 30, 2018

13781401 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/781,401 02/28/2013 Richard BEYER 87369 7590 08/01/2018 Crowell & Morning LLP Intellectual Property Group P.O. Box 14300 Washington, DC 20044-4300 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. 102761.63834US 5267 EXAMINER MO,XIAOEN ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 08/01/2018 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): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD BEYER, NICHOLAS ASMIS, MARK MCCOLLOUGH, CORY HAMILTON, and WILLIAM SCHAFFELD Appeal 2016-008198 Application 13/781,401 Technology Center 3700 Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-8. We have jurisdiction under 35 U.S.C. Â§ 6(b ). An oral hearing was held July 10, 2018. We affirm-in-part and enter new grounds of rejection. Appeal2016-008198 Application 13/781,401 CLAIMED SUBJECT MATTER The claims are directed to a method to enhance gas recirculation in turbocharged diesel engines. Claim 1, reproduced below, with emphasis added, is illustrative of the claimed subject matter: 1. An apparatus for exhaust gas recirculation for an internal combustion engine, comprising: a fresh air intake passage of the engine arranged to direct a majority of fresh air to be introduced into the internal combustion engine to the engine; a fresh air flow control valve arranged in the fresh air intake passage; and an exhaust gas recirculation conduit arranged to pass exhaust gas from an exhaust manifold of the engine to the fresh air intake passage, wherein the fresh air intake passage includes a reduced cross- section flow portion between the fresh air flow control valve and a combustion chamber of the engine, the exhaust gas recirculation conduit is arranged to introduce exhaust gas from the exhaust manifold into the fresh air intake passage at a location adjacent to an upstream end of the reduced cross-section portion, an outlet of the exhaust gas recirculation conduit is arranged facing downstream within, and within a central region of, the fresh air intake passage, and an outer surface of the outlet of the exhaust gas recirculation conduit and an inner swface of the fresh air intake passage are sized to generate Coanda flow at the upstream end of the reduced cross-section portion. REJECTIONS Claims 1-6 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Weisz (US 7,353,811 B2, issued April 8, 2008). Claims 7 and 8 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Weisz. 2 Appeal2016-008198 Application 13/781,401 OPINION The rejection of claims 7 and 8 under 35 US.C. Â§ 103(a) as being unpatentable over Weisz Claims 1, 5 and 7 are independent. Appellants argue all claims under a single grouping. However, the claim language argued, and the issues raised, regarding the anticipation rejection of claims 1 and 5 (App. Br. 9-13) are not germane to the Examiner's analysis of independent claim 7 underÂ§ 103(a). Appellants mistakenly identified claim 7 as a dependent claim. App. Br. 13. There may be some arguments raised with regard to language present in claims 1 and 5 that could be applicable to claim 8, which depends from claim 7 and contains a related, but different, limitation pertaining to the Coanda effect. However, we will not speculate as to what Appellants may have intended to argue. Under 37 C.F.R. Â§ 4I.37(c)(l)(iv), it is Appellants' obligation to separately group and argue the rejection of any claims Appellants wish to have us consider. As this has not been done regarding the rejection of claims 7 and 8, we summarily sustain the Examiner's rejection of claims 7 and 8. The rejection of claims 1-6 under 35 US.C. Â§ 102(b) as being anticipated by Weisz Independent claims 1 and 5 recite the same limitation, emphasized above, upon which Appellants seek to distinguish the claimed device from that of Weisz. The essence of the distinction Appellants seek to draw, according to their arguments, is based on the presence or absence of the Coanda effect in Weisz. Limitations of this nature have long presented examination difficulties. On the one hand, "it is elementary that the mere recitation of a newly discovered function or property, inherently possessed 3 Appeal2016-008198 Application 13/781,401 by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art." In re Swinehart, 439 F.2d 210, 212-13 ( CCP A 1971 ). On the other hand, where, as here, there appears to be a very similar structure cited by the Examiner, the PTO may still have difficulty ascertaining with reasonable certainty whether or not the specific property recited, in this case "Coanda flow," will be exhibited by the prior-art structure when in operation. The controlling law seeks to account for this difficulty by creating a burden-shifting framework. See MPEP Â§Â§ 2112, 2114. Our reviewing court's predecessor has stated that "where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an applicant can be put to this burdensome task, the examiner must provide sufficient evidence or scientific reasoning to establish there is a sound basis for the examiner's belief that the recited functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F .3d 1531, 1534 (Fed. Cir. 1993). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). 4 Appeal2016-008198 Application 13/781,401 The record before us lacks such an analysis from the Examiner. In the Final Action, the only time the Examiner appears to address the issue of Coanda flow, the Examiner states, "having the venture [sic] nozzle 10 which provides a reduced flow cross section generates the coanda flow effect." Final Act. 3. However, there is no evidence or reasoning in the record before us to demonstrate that the presence of the venturi in Weisz, without more, is sufficient to necessarily bring about Coanda flow. The Examiner expounds on this reasoning in the Answer, indicating that it is the convex nature of the venturi that results in Coanda flow. Ans. 6-7. Again there is no evidence in the record that a convex surface such as that depicted in Weisz will, without more, necessarily result in Coanda flow. The evidence of record conflicts as to whether or not the Examiner's spoon example is illustrative of Coanda flow because, although the stream of water bends around a convex surface, there is no entrainment of the surrounding fluid, the air, into the jet of water. See Re. Br. Evi. Apx. Ex. B p. 5; Ans. 6. The Examiner's late presentation of this evidence and reasoning on this matter leaves us with a record that is not fully developed as to exactly what defines when the Coanda effect is or is not exhibited, and exactly what structure is necessary to bring it about. The Examiner is correct in that Weisz, or other skilled artisans for that matter, need not have recognized the existence of Coanda flow in Weisz's device in order for Weisz's device to anticipate. Ans. 7; Schering Corp. v. Geneva Pharms., 339 F. 3d 1373, 1377 (Fed. Cir. 2003) ("[I]nherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure") ( citations omitted). Nevertheless, in order to sustain a rejection on the basis of inherency, the record before us must contain sufficient evidence and sound technical 5 Appeal2016-008198 Application 13/781,401 reasoning to demonstrate why the structure present in Weisz would necessarily bring about the "Coanda flow" characteristic recited. As this has not been done, we do not sustain the anticipation rejection on the basis set forth by the Examiner. Pursuant to 37 C.F.R. Â§ 41.50(b), we reject claims 1-6 and 8, under 35 USCÂ§ 112,first and second paragraphs, as being indefinite and failing to comply with the written description and enablement requirements. Although we are able to determine the Examiner's anticipation rejection is not sufficiently supported by a preponderance of the evidence for the reasons discussed above, we still have difficulty finding a supporting disclosure for, and ascertaining the precise metes and bounds of, the subject matter of claims 1, 5, and 8. Claims 1 and 5 state that two surfaces-the "outer surface of the outlet of the exhaust gas recirculation conduit and an inner surface of the fresh air intake passage"-are "sized to generate Coanda flow." The size of a surface may be defined by a linear dimension, such as a length, width, or diameter, or by a two-dimensional quantity such as an area. Surfaces may also have a shape, such as convex. We are unable to find any description in the Specification, particularly within paragraphs 12, 13, 30 and 31 cited by Appellants, relating to this limitation (App. Br. 8, 11-12), as to how size-related quantities of the recited surfaces influence the generation of Coanda flow. A convex shape of the surface 221 is associated with Coanda flow in paragraphs 9 and 31. Paragraph 13, cited by Appellants, discusses various quantities, including diameters of the fresh air and exhaust tubes or conduits themselves, as opposed to the size of their inner or outer surfaces. Although paragraph 13 identifies factors that influence the velocity ratio, none of the quantities discussed in that paragraph relate to the sizing 6 Appeal2016-008198 Application 13/781,401 of the "outer surface of the outlet of the exhaust gas recirculation conduit and an inner surface of the fresh air intake passage" as recited in claims 1 and 5. Additionally, there is no disclosure that relates the quantities discussed in paragraph 13 with regard to the velocity ratio, to the production of Coanda flow, as recited in claim 8. Although one skilled in the art may be able to experiment with various parameters and know whether Coanda flow exists or not, even though the delineation of that is not well-defined in the record before us, it is not clear how one skilled in the art would know whether the "outer surface of the outlet of the exhaust gas recirculation conduit and an inner surface of the fresh air intake passage," in particular, are "sized to generate Coanda flow" as recited in claims 1 and 5 ( emphasis added). Further, the term "by adjusting" in claim 8 reads as a manipulative method step within an apparatus claim rendering the scope of claim 8 unclear. It is additionally unclear how or when the "adjusting" must be performed or what the recited parameters must be adjusted with respect to. Further, as discussed above, it is not clear from the Specification how the recited parameters should be adjusted, or even selected, such that "the Coanda effect is obtained." We are unable to identify sufficient guidance in the Specification that relates the specific parameters respectively recited in claims 1, 5 and 8, to generating, or obtaining, a Coanda flow or effect. The absence of any disclosed correlation between the recited variables and the recited effects renders the scope of claims 1, 5 and 8 unclear under 35 U.S.C. Â§ 112, second paragraph because one skilled in the art would be unable to determine whether the parameters recited in claims 1, 5, and 8 were "sized" or "adjusted" for the specific purpose of generating or obtaining a Coanda flow or effect. Furthermore, the absence of any disclosure demonstrating 7 Appeal2016-008198 Application 13/781,401 possession of a specific apparatus where the specific parameters recited are responsible for generating or obtaining a Coanda flow renders the Specification lacking an adequate written description of the subject matter claimed, under 35 U.S.C. Â§ 112, first paragraph. In addition to the lack of direction provided by the Specification, as discussed above, Appellants fail to provide a working example specifying values for each of these recited parameters. The enablement requirement of 35 U.S.C. Â§ 112, first paragraph, does not merely require the instruction to make, but "how to make." The lack of direction and examples in the Specification, coupled with the unpredictable nature of fluidic behavior that may be a consequence of minor structural changes in a system, results in a disclosure that fails to describe the invention in such terms that one skilled in the art can make and use the claimed invention without undue experimentation. See MPEP Â§ 2164. The lack of guidance as to how the specific parameters respectively recited in claims 1, 5 and 8, relate to generating, or obtaining, a Coanda flow or effect renders the disclosure non- enabled under 35 U.S.C. Â§ 112, first paragraph. For the foregoing reasons, pursuant to 37 C.F.R. Â§ 4I.50(b), we reject claims 1-6, and 8, under 35 U.S.C. Â§ 112, first and second paragraphs, as being indefinite and failing to comply with the written description and enab lement requirements. DECISION The Examiner's rejection of claims 1-6 under 35 U.S.C. Â§ 102(b) as being anticipated by Weisz is reversed. The Examiner's rejection of claims 7 and 8 under 35 U.S.C. Â§ 103(a) as being unpatentable over Weisz is summarily affirmed. 8 Appeal2016-008198 Application 13/781,401 Pursuant to 37 C.F.R. Â§ 4I.50(b), we reject claims 1-6, and 8, under 35 U.S.C. Â§ 112, first and second paragraphs, as being indefinite and failing to comply with the written description and enablement requirements. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). 9 Appeal2016-008198 Application 13/781,401 AFFIRMED-IN-PART; 37 C.F.R. Â§ 4I.50(b) 10