Ex Parte Dubey et al

Patent Trial and Appeal Board

Sep 18, 2018

14546353 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/546,353 11/18/2014
121691 7590 09/20/2018
Ford Global Technologies, LLC/
King & Schickli, PLLC
800 CORPORATE DRIVE, SUITE 200
Lexington, KY 40503
FIRST NAMED INVENTOR
Prashant Dubey
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.
83480651 6282
EXAMINER
COOLMAN, VAUGHN
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASHANT DUBEY,
LUCAS AP ANDI PHAN, and AARON PETER KLOP
Appeal2017-010932
Application 14/546,353 1
Technology Center 3600
Before BART A. GERSTENBLITH, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4 and 6-18. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify Ford Global Technologies, LLC as the real party in
interest. Appeal Br. 3.
Appeal2017-010932
Application 14/546,353
ILLUSTRATIVE CLAIM
1. An air flow optimization device for motor vehicle heat
exchangers comprising:
a body including a first air flow opening having an inlet
side and an outlet side, a second air flow opening and a ribbed
panel between the first and second air flow openings; and
a series of fixed vanes provided across said first air flow
opening and dividing said first air flow opening into a plurality
of air flow channels.
CITED REFERENCES
The Examiner relies upon the following references:
Shin
Nam et al.
(hereinafter "Nam")
US 8,196,978 B2 June 12, 2012
US 2015/0118949 Al Apr. 30, 2015
REJECTIONS
I. Claims 1--4, 6-9, 12, and 18 are rejected under 35 U.S.C.
§ I02(a)(2) (AIA) as anticipated by Nam.
II. Claims 16 and 17 are rejected under 35 U.S.C. § 102(a)(2)
(AIA) as anticipated by Shin.
III. Claims 10, 11, and 13-15 are rejected under 35 U.S.C. § 103
(AIA) as unpatentable over Nam.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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Application 14/546,353
ANALYSIS
Independent Claims 1 and 18
and Dependent Claims 2-4 and 6-15
Asserting error in the rejection of independent claim 1, the Appellants
argue that the Nam reference does not teach the recited "fixed vanes,"
because the corresponding feature of Nam identified by the Examiner ( the
"top air flaps," element 18 of Nam) are "active air flaps that are selectively
opened/closed so that an engine compartment selectively receives external
air from the front of a vehicle in accordance with the operation state of an
engine." Appeal Br. 9 (quoting Nam ,r 26).
The Examiner's Answer states that the identified feature of Nam
meets the "fixed vanes" limitation, based upon a dictionary definition of the
word "fixed" (i.e., "securely placed or fastened"):
The vanes 18 of Nam are indeed securely fastened across the
first air flow opening in that the vanes are attached securely to
the body of the air flow optimization device ( otherwise they
would not stay in place in a production vehicle during use) as
well as securely placed in that each vane has a specific location
that does not vary with respect to each vane's axis and
endpoints.
Answer 7 (quoting "Merriam-Webster's online dictionary").
In response, the Appellants point out that "the very same definition
cited by the Examiner expressly states: 'securely placed or fastened:
STATIONARY."' Reply Br. 2. The Appellants argue:
Id.
The Examiner ignores "stationary" in the definition of "fixed,"
which is plainly the meaning utilized by Appellant as the
drawing figures illustrate that the claimed "series of fixed
vanes" are stationary and/or immobile (another definition
expressly recited in Merriam-Webster's online dictionary).
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Application 14/546,353
The evaluation of the Appellants' argument turns on whether the
expression "fixed vanes" of claim 1 should be construed so as to encompass
Nam's "top air flaps" -which are connected and secured to adjacent
structures, to some extent, but are nevertheless capable of some amount of
rotational movement.
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Am. A cad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). As the Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) ( citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259---60 (Fed. Cir. 2010).
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Significantly, the Specification states the following (in regard to the
embodiments of Figures 1-3, which show "air flow optimization device 1 O"
with a first "series of fixed vanes 26" and a "second series of fixed vanes
36"):
Advantageously, the air flow optimization device 10 is
relatively inexpensive to produce. It does not include motors,
moving vanes and linkage like shutter systems. The reduction
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Appeal2017-010932
Application 14/546,353
in cost ( as much as 62 % compared to a shutter system of
comparable size) and weight (as much as 33.33% less in
weight) when compared to an automatic shutter system is
substantial and, therefore, the air flow optimization device 10 is
a more attractive alternative than a shutter system for many
applications. It also eliminates potential warranty issues
associated with a shutter system.
Spec. ,r,r 19, 21, 3 7. Thus, the Specification draws a distinction between
"fixed vanes" (the expression employed in claim 1 and used to describe the
disclosed embodiments of the invention) and "moving vanes" (id. ,r 37)-
sharply criticizing the latter. Accordingly, the claim term "fixed vanes,"
properly construed in view of the Specification, excludes Nam's "top air
flaps," which are moving ( or moveable) elements that are inconsistent with
the disclosed invention.
In view of the foregoing discussion, claim 1 was erroneously rejected
as being anticipated by Nam.
The same error applies to the rejection of independent claim 18, which
also recites "fixed vanes." See Appeal Br. 11; see also Answer 9.
Therefore, we do not sustain the rejection of claims 1--4, 6-9, 12, and 18
under 35 U.S.C. § 102(a)(2) (AIA).
The obviousness rejection of claims 10, 11, and 13-15 ( all of which
depend ultimately from claim 1) relies upon Nam for disclosing all the
recited features of base claim 1 - including the "fixed vanes." See Final
Action 5-7. Therefore, for the same reasons discussed above, with regard to
the anticipation rejection of claim 1 - we do not sustain the rejection of
claims 10, 11, and 13-15 under 35 U.S.C. § 103 (AIA).
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Independent Claim 16
and Dependent Claim 17
Independent claim 16 recites:
16. An air flow optimization system for a motor vehicle,
compnsmg:
a heat exchanger;
an air flow optimization device upstream from said heat
exchanger, said air flow optimization device having:
a body including a first opening, a second opening and a
ribbed panel between said openings, each of said openings
having an inlet side and an outlet side; and
a series of fixed vanes provided across said openings and
dividing said openings into a plurality of air flow channels,
whereby said ribbed panel is orientated to direct air flow
toward the plurality of air flow channels.
(Emphasis added).
The Appellants argue that claim 16 was rejected erroneously, because
the cited Shin reference does not teach that the "ribbed panel is orientated to
direct air flow toward the plurality of air flow channels." See Appeal Br.
12-13.
According to the rejection, Figures 7 and 8 of Shin teach claim 16's
"series of fixed vanes" that "