Ex Parte Major et alDownload PDFPatent Trial and Appeal BoardNov 23, 201512032816 (P.T.A.B. Nov. 23, 2015) 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. 12/032,816 02/18/2008 Gregory A. Major P002278-NAPD-LCH 5215 81466 7590 11/24/2015 MacMillan, Sobanski & Todd, LLC - GM One Maritime Plaza 720 Water Street 5th Floor Toledo, OH 43604 EXAMINER TANENBAUM, TZVI SAMUEL ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 11/24/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GREGORY A. MAJOR and WILLIAM R. HILL1 __________ Appeal 2014-000059 Application 12/032,816 Technology Center 3700 __________ Before ANNETTE R. REIMERS, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gregory A. Major and William R. Hill (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1–20 under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is GM Global Technology Operations LLC. App. Br. 1. Appeal 2014-000059 Application 12/032,816 2 CLAIMED SUBJECT MATTER The invention concerns an air conditioning system. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. An air conditioning system for a vehicle comprising: a condenser having a first condenser header spaced from a second condenser header, a condenser core extending between the first and second condenser headers, and a refrigerant inlet operatively engaging the first condenser header; an integrated assembly including a chiller mounted to the first condenser header and having a liquid inlet and a liquid outlet configured to be in fluid communication with a secondary loop of the air conditioning system, an expansion device in fluid communication with the condenser and mounted adjacent to the chiller for directing a refrigerant into the chiller, and a refrigerant outlet; and a receiver/dryer area located in one of the condenser and the integrated assembly. App. Br. 19, Claims App. (emphasis added). Independent claims 10 and 17 contain the same or similar language as that emphasized above. REJECTIONS The claims stand rejected as follows: I. Claims 1, 7, 10, 11, and 13–16 under 35 U.S.C. § 103(a) as unpatentable over Inui2 and Manwill.3 II. Claims 2–5, 12, 17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, and Shembekar.4 2 JP 2006-007866, pub. Jan. 12, 2006. 3 US 6,260,379 B1, iss. July 17, 2001. 4 US 2008/0149312 A1, pub. June 26, 2008. Appeal 2014-000059 Application 12/032,816 3 III. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, and Ohashi.5 IV. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, and Kato.6 V. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, and Umehara.7 VI. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, Shembekar, and Kato. OPINION Regarding the independent claims, the Examiner finds that Inui teaches an air conditioning system comprising a condenser (14) and a chiller (18) “mounted to the condenser.” See Final Act. 2 (claim 1), 3 (claim 10), 8 (claim 17). The Examiner states that because the claims do not require that the chiller is “mounted directly to the condenser,” Inui’s disclosure of a condenser “connected to” the chiller, with refrigerant lines and other components located between them, satisfies the claims. Id. at 14. Further, the Examiner states that the claim term “[‘]mounted[’] merely means ‘to set or place or to attach to,’” which Inui discloses in Figure 1. Ans. 17–18. Appellants contend that Inui does not disclose a chiller “mounted to” the first condenser header, as claimed, because Inui’s chiller (18) “is separate and spaced from the condenser (14), with multiple refrigerant lines and other components located between them.” App. Br. 7. Appellants 5 US 2007/0144715 A1, pub. June 28, 2007. 6 JP 2002-277106, pub. Sept. 25, 2002. 7 US 2007/0084596 A1, pub. Apr. 19, 2007. Appeal 2014-000059 Application 12/032,816 4 dispute the Examiner’s interpretation of the claim language as “connected to” or “to set or place or to attach to.” Id. at 8; Reply Br. 2–3. Further, Appellants contend that it is not necessary for the claim to recite “directly mounted to,” because the claim language “‘mounted to’ another element” necessitates a direct connection to that element. Reply Br. 3–4. Finally, Appellants contend that Manwill, Shembekar, Ohashi, Kato, and Umehara fail to cure this deficiency. App. Br. 8, 13, 16, 17. We are persuaded by Appellants’ arguments. “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Considering the phrase “mounted to” in light of Appellants’ Specification, we note that Appellants provide four embodiments of the disclosed invention, each of which shows a chiller directly mounted to a first condenser heading. See Spec. ¶¶ 10–13, Figs. 2–5. Indeed, the Specification notes that prior art air conditioning systems, in which a chiller was “mounted separately” from other components, required additional components and implicated additional location concerns. Id. ¶ 2. Appellants’ Specification, therefore, demonstrates that in this case, “mounted to” cannot be read so broadly as to include components that are separate from each other and merely connected to the same system with intervening components. Therefore, we agree with Appellants that although Inui may disclose a chiller (18) and a condenser (14) with lines and intermediate components therebetween, Inui does not disclose that the chiller and condenser are “mounted to” each other, as required by each independent claim. See Inui, Appeal 2014-000059 Application 12/032,816 5 Fig. 1; see also App. Br. 7–8; Reply Br. 2–4. Compare Ex Parte Gates, 2008 WL 3557120, at *4 (Aug. 12, 2008) (concluding that the broadest reasonable interpretation of “at least one lens cover mounted on the carrier” requires that “the lens cover is directly mounted on to the carrier, because one of ordinary skill in this art would understand the Specification as disclosing components connected together are to be securely attached, affixed, or fastened to each other,” and noting that “the Examiner’s reading of this claim is too broad as compared to [the] reading one of ordinary skill in the art would give the claim in light of the Specification”), with Ex Parte Sakai, 2008 WL 5206432, at *5 (Dec. 11, 2008) (concluding that “the claim does not require the mounting to be direct” where “[t]he Specification also does not show a direct connection of the piezoelectric element to the housing”). Manwill, Shembekar, Ohashi, Kato, and Umehara do not cure this deficiency. Accordingly, we reverse the Examiner’s rejection of independent claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over Inui and Manwill, and we reverse the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Inui, Manwill, and Shembekar. For the same reasons, we reverse the Examiner’s rejections of dependent claims 2– 9, 11–16, and 18–20 under 35 U.S.C. § 103(a) as unpatentable over Inui and Manwill, together or in further combination with Shembekar, Ohashi, Kato, and Umehara. DECISION We REVERSE the rejections of claims 1–20 as unpatentable under 35 U.S.C. § 103(a). Appeal 2014-000059 Application 12/032,816 6 REVERSED Ssc Copy with citationCopy as parenthetical citation