Ex Parte Mance et al

Patent Trial and Appeal Board

Apr 30, 2013

11692423 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/692,423 03/28/2007 Andrew M. Mance GP-308355-RD-JMC 7536
60770 7590 04/30/2013
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
04/30/2013 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 ANDREW M. MANCE and JAMES L. LINDEN
__________

Appeal 2011-010338
Application 11/692,423
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
11 through 19. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
Appellants’ invention is said to be directed to mixtures of oligo-
(alkylsiloxanes) and alkyl ether alkylene glycols to cool aluminum-
containing power inverter circuitry for vehicle traction motors (Spec. para.
[0008]).
Claim 11 is illustrative (key limitations italicized):
11. A method of cooling an electronic power inverter for
an electric traction motor on an automotive vehicle for driving
at least one wheel of the vehicle, where the electronic power
inverter comprises an aluminum-containing component, the
method comprising:
circulating a non-aqueous liquid, dielectric coolant
composition between a coolant reservoir and the aluminum
component in a coolant circuit that is substantially free of
water and molecular oxygen, the coolant composition
consisting essentially of a liquid mixture of an oligo-(alkyl
siloxane), a monomer or oligomer of an alkyl ether alkylene
glycol, and an azole, the azole being a compound selected from
the group consisting of 2-mercaptobenzothiazole, benzotriazole,
and 5-methyl-1H-benzotriazole and dispersed in the liquid
mixture in an amount for inhibiting dissolution of the aluminum
component.
Appellants appeal the following rejections:
1. Claims 11-14 and 16-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nagashima (US 2006/0174642, published
Aug. 10, 2006) as evidenced by Kikuchi (US 2006/0220236,
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published Oct. 5, 2006) and in view of Woyciesjes (US
2006/0054564, published Mar. 16, 2006).
2. Claims 11-12 and 14-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ostrom (US 2006/0174643, published Aug.
10, 2006) as evidenced by Kikuchi and in view of Woyciesjes.
3. Claims 11-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tilton (US 2008/0028782, published Feb. 7,
2008) as evidenced by Appellants’ Specification (Spec. 2), in view of
Hsu (US 6,772,603, issued Aug. 10, 2004) as evidenced by Kikuchi
and further in view of Woyciesjes.

With regard to rejections (1), (2), and (3), Appellants argue the subject
matter common to claim 11 (App. Br. generally). We select claim 11 as
representative. Accordingly, the rejection of claims 12-19 will stand or fall
with our analysis of the rejection of claim 11.

ISSUE
Did the Examiner reversibly err in determining that the disclosures in
Nagashima, Ostrom, and Tilton of a coolant circuit without mention of water
or oxygen would have rendered obvious the claimed circuit under the
broadest reasonable interpretation of “substantially free of water and
molecular oxygen” in claim 11? We decide this issue in the negative.
Did the Examiner reversibly err in determining that it is not necessary
that the prior art suggest the combination (corrosion inhibitors in a coolant
circuit for an aluminum-containing inverter) to achieve the same advantage
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or result (substitution of aluminum for heavy metal components in an
inverter) discovered by Appellants? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Rejection 1
The Examiner finds that “Nagashima teaches cooling integrated
electric motor-inverters used to drive an automotive vehicle (abstract; see
Figures, [0005]) and teaches circulating a coolant between a reservoir and
inverter ([0033] – [0034]), wherein the coolant is a dielectric coolant
comprising a mixture of greater than 60% hexamethyldisiloxane and 10% to
30% propylene glycol methyl ether (Dow Corning OS-120, [0032]; [0011],
[0039]) with a boiling point of about 98oC ([0039]).” Ans. 4. The Examiner
finds that it is generally known, as evidenced by Kikuchi, that aluminum is
used for inverter casings. Id. (citing Kikuchi [0006]). The Examiner
determined based on Kikuchi that “it would be reasonable for one of
ordinary skill in the art to expect an inverter system in an automotive would
have at least some aluminum parts.” Id. at 4-5.
The Examiner also found that Nagashima does not specifically teach
including an azole in the coolant, however, Woyciesjes teaches including
corrosion inhibitors in heat transfer fluids for assemblies such as inverters,
and specifically an azole compound and a siloxane wherein the azoles
include triazoles, thiazoles, benzotriazole, 5-methylbenzotriazole,
mercaptobenzothiazole, etc., where the heat transfer systems have metallic
components such as ferrous and nonferrous alloys, and aluminum, brass and
bronze alloys, that are vulnerable to corrosion. Id. at 5 (citing Woyciesjes
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abstract, [0018]1-[0025], [0033]-[0035], [0052], [0075]-[0076]). The
Examiner determined that it would have been obvious to include the azole
corrosion inhibitors of Woyciesjes in the heat transfer fluids of Nagashima
for the reason that the service life of the heat transfer system would be
prolonged and corrosion minimized. Id. (citing Woyciesjes [0018]).
The Examiner finds that since Nagashima “does not teach the coolant
circuit comprising water or molecular oxygen, the claim limitations of the
coolant circuit being substantially free of water and molecular oxygen are
deemed met.” Ans. 4.
Appellants argue that “the Examiner’s reliance on Nagashima is based
on what the reference does not actually disclose.” App. Br. 9. Appellants
contend that “[n]o combination of these references teaches anyone how to
select an azole constituent for a water-free coolant system for an aluminum
component from the Woyciesjes omnibus disclosure of water-containing
coolant compositions for all metals; especially when Nagashima and
Kikuchi don’t distinguish between copper and aluminum in their
applications.” App. Br. 12. Appellants also argue that the Examiner failed
to present a prima facie case of obviousness because “none of the
combinations of references suggest the problem which Appellants’ claimed
methods solve.” App. Br. 13.

1 The Examiner cites Woyciesjes para. [0018] for the teaching that heat
transfer systems often have several metallic components including
aluminum and para. [0019] for teaching including corrosion inhibitors to
minimize corrosion and prolong service life (Ans. 5). Woyciesjes lists these
metallic components in para. [0017] and teaches in para. [0018] that there is
a need to provide corrosion inhibiting heat transfer fluids to prolong the
service life of the heat transfer system. The Examiner’s citations to
Woyciesjes appear to be harmless error as Appellants refer to the correct
para. [0017] in the Appeal Brief. See App. Br. 12.
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The Examiner responds that Kikuchi is used as an evidentiary
reference to demonstrate that an electronic power inverter device would be
expected to have at least some aluminum parts (Ans. 15, 16) and also
responds that the claim does not require the inverter to be exclusively
aluminum (Ans. 14). The Examiner further responds that Nagashima
teaches that the coolant does not include water and does not teach adding
coolant or oxygen to the coolant circuit (Ans. 17). Neither the claim nor the
Specification provides a definition for what constitutes a coolant circuit that
is substantially free of molecular oxygen or of water (id.).
The Examiner also responds that Woyciesjes does not comment on
corrosion synergy being dependent on water content, but, rather, provides a
reason for including a corrosion inhibitor containing both a siloxane based
surfactant with an azole, namely, “a synergistic positive effect on preventing
aluminum localized corrosion in a heat transfer fluid solution” (Ans. 19-20
(emphasis in Answer); citing Woyciesjes [0088]).
The Examiner further responds to Appellants’ argument that one
skilled in the art would not have selected the three specific azole inhibitors
claimed from the list of 10 azole compounds taught by Woyciesjes (App.
Br.) by determining Woyciesjes provides more than enough direction when
it identifies three preferred azoles including benzotriazole, tolyltrizole, or
mercaptobenzothiazole. Ans. 24 (citing Woyciesjes ([0036]). Appellants do
not address the Examiner’s response to their argument.
We do not find the Appellants’ arguments persuasive.
We agree with the Examiner that “a coolant circuit that is
substantially free of water and molecular oxygen” as recited in claim 11 is
not defined by the Specification. Specifically, the Specification does not
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suggest any criticality to the amount of water and molecular oxygen present
in the coolant circuit and Appellants have not directed us to any evidence to
suggest the lack of adding water and molecular oxygen to a coolant circuit
would not meet the substantially free limitation. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the Specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). It is the Appellants’ burden to precisely define the
invention, not the USPTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Therefore, the Examiner did not err in finding that the coolant circuit
of Nagashima meets the broadest reasonable claim interpretation of
substantially free in claim 11.
All the steps of the claimed method are disclosed in the references.
Accordingly, the Examiner has made out a prima facie case of obviousness.
“The combination of familiar elements according to known methods is likely
to be obvious when it does not more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). The operative
question is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id. In that
regard, combining Woyciesjes’ aluminum corrosion inhibitor in
Nagashima’s method of cooling an electronic power inverter in view of
Kikuchi’s teaching that power inverters are known to contain aluminum
components appears to yield, predictably, the subject matter of claim 11. No
evidence of secondary considerations to overcome the prima facie case of
obviousness has been submitted.
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The Appellants have argued, as a matter of law, the combination of
Nagashima, as evidenced by Kikuchi, and Woyciesjes is improper because
“none of the combinations of references suggest the problem which
Appellants’ claimed methods solve.” App. Br. 13. However, “[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under §103.” KSR at 1741-42.
We conclude Appellants have failed to show that the Examiner erred
in rejecting claims 11 as unpatentable over Nagashima as evidenced by
Kikuchi and in view of Woyciesjes.
Rejection 2
The Examiner found that “Ostrom teaches cooling integrated electric
motor-inverters used to drive an automotive vehicle (abstract; see Figures,
[0005]) and teaches circulating coolant between a reservoir and inverter
([0005], [0024]-[0028]), wherein the coolant is a dielectric coolant
comprising a mixture of greater than 60% hexamethyldisiloxane and 10% to
30% propylene glycol methyl ether (Dow Corning OS-120, [0023]) with a
boiling point of about 98C ([0023]; see [0006]-[0008]).” Ans. 6-7. As the
Examiner found in regard to Nagashima, Ostrom also does not teach the
coolant circuit comprises water or molecular oxygen. Id. at 7. On that basis,
the Examiner found that the claim limitation of the coolant circuit being
substantially free of water and molecular oxygen to be met by the teachings
of Ostrom. Id.
Based on the above findings as to Ostrom, Kikuchi and Woyciesjes,
supra, the Examiner determined that “[a]t the time of the invention a person
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having ordinary skill in the art would have found it obvious to include the
azole corrosion inhibitors of Woyciesjes in the heat transfer fluids of Ostrom
and would have been motivated to do so to provide a corrosion inhibiting
heat transfer fluid in heat transfer systems that minimize corrosion and
prolong the service life of the heat transfer system . . . .” Id. at 8.
Appellants argue that Ostrom “expressly state[s] that the [cooling]
fluid is non-corrosive to copper.” App. Br. 16 (underlining omitted). Thus,
Appellants’ position is that “Ostrom does teach away from the need for an
inhibitor in their coolant and cooling processes for copper-containing
inverters.” Id.
The Examiner responds that the teaching in Ostrom of the “’use of
dielectric coolant fluid to cool electronic power inverters that contain a
direct bonded copper substrate and bus bar’ (page 15)” is not a teaching of
copper-only inverters or that Ostrom is concerned only with copper-based
inverters. Ans. 27. The Examiner further responds that Ostrom contains no
express teaching that the composition is specifically non-corrosive to copper
nor does Ostrom “criticize, discredit, or otherwise discourage inhibitors” (id.
at 28). Even if Ostrom teaches that coolant is non-corrosive to the copper-
based inverter, the Examiner finds that Woyciesjes teaches the multiple
metallic components of heat transfer systems are known to be vulnerable to
corrosion (citing Woyciesjes [0017]) thus the use of a plurality of corrosion
inhibitors corresponding to the metal to be protected (citing Woyciesjes
[0071]) “would result in enhanced corrosion inhibition of a spectrum of
metallic surfaces.” Ans. 28-29.
We do not find the Appellants’ arguments persuasive.
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Even if Ostrom can be said to teach a different solution to the problem
of corrosion caused by a coolant, it does not teach away from the claimed
subject matter unless it also criticizes, discredits or otherwise discourages
the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Appellants do not argue that Ostrom discourages the addition of
corrosion inhibitors. Instead, Appellants argue, as a matter of law, that “the
Examiner has erred because none of the combinations of references suggest
the problem which Appellants’ claimed methods solve.” App. Br. 17 (citing
In re Omeprazole Patent Litigation, 531 F.3d 1361, 1379 (Fed. Cir. 2008);
Reply Br. 3-6. Appellants assert that none of the prior art references cited
by the Examiner recognized the problem of a traditional dielectric liquid
coolant resulting in the dissolution of aluminum when aluminum is
substituted for copper in a traditional inverter. Reply 4. However, as found
by the Examiner, Woyciesjes teaches aluminum metal components are
vulnerable to corrosion and teaches including corrosion inhibitors to
minimize corrosion and prolong service life. (Ans. 7-8). In In re
Omeprazole Patent Litigation, on the other hand, the prior art reference was
found to “not disclose or suggest a negative interaction between the drug
core and the enteric coating.” See 531 F.3d at 1379-80.
We conclude Appellants have failed to show that the Examiner erred
in rejecting claim 11 as unpatentable over Ostrom as evidenced by Kikuchi
and in view of Woyciesjes.
Rejection 3
The Examiner finds that “Tilton teaches spray cooling an azeotrope
coolant” and “specifically teaches OS-120 as well suited for use with
thermal management systems used to cool the electronic systems found in
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hybrid electric and full electric vehicles.” “Tilton further teaches air is
removed and non-oxidizing gases are inserted into the spray chamber . . . .”
Ans. 9 (citing Tilton [0049], [0050]). The Examiner further finds that “Hsu
teaches using azeotrope working fluids to provide thermal management for
hybrid/full electric vehicles and specifically teaches inverters (col 3 ln 5-23
and ln 44-50).” Ans. 10.
As the Examiner found in regard to Nagashima and Ostrom, Tilton
also does not teach the coolant circuit requires water. Id. at 10. On that
basis, the Examiner found that the claim limitation of the coolant circuit
being substantially free of water to be met by the teachings of Tilton. Id.
The Examiner also found that Tilton affirmatively teaches air is removed
and non-oxidizing gases are inserted into the spray chamber. Id. at 9.
Based on the above findings as to Tilton, Hsu, Kikuchi and
Woyciesjes, supra, the Examiner determined that “[a]t the time of the
invention a person having ordinary skill in the art would have found it
obvious to include the azole corrosion inhibitors of Woyciesjes in the heat
transfer fluids of Tilton and would have been motivated to do so to provide a
corrosion inhibiting heat transfer fluid in heat transfer systems that minimize
corrosion and prolong the service life of the heat transfer system . . . .” Id. at
11-12.
Appellants argue that “neither Tilton nor Hue [sic, Hsu] provide any
teaching or insight that OS-120-type, dielectric liquid mixtures present any
problem for cooling aluminum-containing power inverter systems.” App.
Br. 20 (underlining omitted). Appellants again cite In re Omeprazole Patent
Litigation for their position that “the Examiner has erred because none of the
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combinations of references suggest the problem which Appellants’ claimed
methods solve.” Id.
We do not find the Appellants’ arguments persuasive for the same
reasons explained above.
On this record, we affirm the Examiner’s § 103 rejections of claims
11-19 for the reasons given above and presented by the Examiner.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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