Ex Parte Mance et alDownload PDFPatent Trial and Appeal BoardApr 30, 201311692423 (P.T.A.B. Apr. 30, 2013) Copy Citation 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 Appeal 2011-010338 Application 11/692,423 2 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, Appeal 2011-010338 Application 11/692,423 3 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 Appeal 2011-010338 Application 11/692,423 4 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 Appeal 2011-010338 Application 11/692,423 5 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. Appeal 2011-010338 Application 11/692,423 6 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 Appeal 2011-010338 Application 11/692,423 7 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. Appeal 2011-010338 Application 11/692,423 8 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 Appeal 2011-010338 Application 11/692,423 9 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. Appeal 2011-010338 Application 11/692,423 10 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 Appeal 2011-010338 Application 11/692,423 11 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 Appeal 2011-010338 Application 11/692,423 12 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 sld Copy with citationCopy as parenthetical citation