Ex Parte Martinchick et al

Patent Trial and Appeal Board

Jun 30, 2017

12121832 (P.T.A.B. Jun. 30, 2017)

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.
12/121,832 05/16/2008 Matthew J. Martinchick P002728-NAPD-LCH 7598
81466 7590 07/05/2017
MacMillan, Sobanski & Todd, LLC - GM
One Maritime Plaza
720 Water Street
5 th Floor
Toledo, OH 43604
EXAMINER
DECKER, PHILLIP
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
docketing @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. MARTINCHICK, MARK D. NEMESH, and
SOWMYALATHA JAYARAMAN
Appeal 2015-007593
Application 12/121,832
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew J. Martinchick et al. (Appellants)1 seek our review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated August 14, 2014 (hereinafter “Final Act.”), rejecting
claims 15-22. Claims 1-14 are canceled. Appeal Br. 18 (Claims App.).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify GM Global Technology Operations LLC, which is a
subsidiary of General Motors Company, as the real party in interest. Appeal
Brief 1 (January 14, 2015) (hereinafter “Appeal Br.”).
Appeal 2015-007593
Application 12/121,832
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a method of operating a
heating system in a vehicle.” Spec., para. 7. Claim 15 is the sole
independent claim on appeal and is reproduced below.
15. A method of operating a heating system in a vehicle, the
method comprising the steps of:
(a) determining if a power plant is operating;
(b) determining if a temperature of a coolant in a power plant
coolant loop is above a predetermined temperature threshold;
(c) when the temperature in the power plant coolant loop is
not above the predetermined temperature threshold and the
power plant is operating, actuating a valve to isolate a heater core
coolant loop from the power plant coolant loop, activating a
coolant pump in the heater core coolant loop and activating a
coolant heater in the heater core coolant loop to heat the coolant
in the heater core coolant loop before the coolant flows through
a heater core in a first direction; and
(d) actuating the valve to direct the coolant from the heater
core coolant loop into the power plant coolant loop and the
coolant from the power plant coolant loop into the heater core
coolant loop and through the heater core in the first direction
when the temperature in the power plant coolant loop is at or
above the predetermined temperature threshold.
Appeal Br. 18 (Claims App.).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 15-22 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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Application 12/121,832
2. Claims 15-22 stand rejected under 35U.S.C. § 101 as being
directed to patent ineligible subject matter.
3. Claims 15, 16, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gehres (US 2009/0139472 Al,
published June 4, 2009) and Matsunaga (US 6,454,180 B2, issued
September 24, 2002).
4. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gehres, Matsunaga, and Salim
(US 7,063,138 B2, issued June 20, 2006).
5. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gehres, Matsunaga, and Baster (US 2,841,127, issued July 1,
1958).
ANALYSIS
Rejection of Claims 15-22 under 35 U.S.C. § 112, second paragraph
The Examiner states that “[cjlaim 15 is indefinite because the method
determines whether the power plant is operating and has steps to be
performed if the power plant is operating, but has no steps to perform if the
power plant is not operating.” Final Act. 2. The Examiner explains that one
can infringe claim 15 by performing only step (a), i.e., determining whether
the power plant is operating, because the remaining steps (b) through (d) do
not apply if the power plant is not operating. Ans. 12.
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Application 12/121,832
We do not sustain the indefiniteness rejection because it is based on
an incorrect interpretation of claim 15.2 * 4Only the performance of step (c) is
contingent on a determination that the power plant is operating. Step (b)
must be performed to practice the claimed method regardless of the outcome
of step (a). Further, step (d) must be performed “when the temperature in
the power plant coolant loop is at or above the predetermined temperature
threshold” regardless of whether the power plant is operating. Appeal Br. 18
(Claims App.); see also id. at 5 (Appellants contending that step (d) is not
limited to when the power plant is operating). Our interpretation also is
consistent with Appellants’ Specification, which describes that step (d) can
occur after the power plant ceases operation:
Even after the power plant 24 ceases operation and the vehicle is
in an electric vehicle mode, while the coolant is still warm
enough to provide the necessary heat to the heater core, the three-
way valve 58 and bypass valve 76 may remain in their positions
for the third mode of operation. This allows for additional heat
to be taken from the coolant, allowing the coolant heater 72 to
draw less power from the battery pack to heat the coolant. The
vehicle 20 may then remain in the electric vehicle operating
mode for a longer time before having to re-start the power plant
24.
Spec., para. 24.
2 Even if the Examiner’s interpretation of claim 15 were correct, such an
interpretation would not render claim 15 indefinite. Rather, the Examiner’s
interpretation would simply mean that the method of claim 15 is extremely
broad because the method could end after step (a).
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Application 12/121,832
Because we disagree with the interpretation of the steps recited in
claim 15, we do not sustain the rejection of claim 15, and its dependent
claims 16-22, under 35 U.S.C. § 112, second paragraph, as indefinite.
Rejection of Claims 15-22 under 35 U.S.C. § 101
The Examiner determines that claim 15 is directed to an abstract idea
because it is not drawn to a process that involves physical transformation of
an object involved in the process or is tied to a particular machine or
apparatus. Final Act. 3. The Examiner finds that the claimed method “may
be performed by a series of mental steps” and the limitations of “activating a
valve,” “activating a coolant pump,” and “activating a coolant heater”
“merely convey insignificant extra solution activity” and “do not impart
meaningful limitations on the scope of the claim.” Id. at 4; see also id. at
10-11 (Examiner stating that “the heating system is merely the object that
the method acts upon, and the heating system does not perform the method’’
and “[t]he Office construes the ‘actuating’ steps to be mere instructions to
apply the abstract idea”).3 * 5Dependent claims 16-22 are rejected for the
same reasons as claim 15, from which they depend. Id. at 4.
Under Alice, first, we “determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice Corp. v. CLS Bank Int’l, 134
3 The Examiner further states that under the 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 FR 74618 (December 16, 2014), “claim
15 is drawn to an abstract idea and the claim does not recite additional claim
elements that amount to significantly more than the abstract idea itself.”
Examiner’s Answer 13-14, dated June 15, 2015 (“Ans.”).
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Application 12/121,832
S. Ct. 2347, 2355 (2014). If so, we “examine the elements of the claim to
determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.” Id.
at 2357 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72, 79 (2012)). “While the two steps of the Alice framework are
related, the ‘Supreme Court’s formulation makes clear that the first-stage
filter is a meaningful one, sometimes ending the § 101 inquiry.’” Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). At
step one, “it is not enough to merely identity a patent-ineligible concept
underlying the claim; we must determine whether that patent-ineligible
concept is what the claim is ‘directed to.’” RapidLitig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).
Wq do not sustain the rejection of claims 15-22 because we disagree
that these claims are directed to an abstract idea. Claim 15 is directed to a
method of operating a heating system in a vehicle. The method calls for
testing for certain conditions in the vehicle and then actuating a valve, a
coolant pump, and a coolant heater in the vehicle, based on the vehicle’s
condition, to control the flow of coolant through the vehicle to operate the
heating system. Despite the fact that claim 15 does not recite the apparatus
used to perform the recited steps, we disagree with the Examiner’s
determination that the steps “could be performed as a series of mental steps.”
Ans. 13. Rather, these steps positively recite actions within the vehicle’s
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Application 12/121,832
heating system that specifically activate and actuate particular elements of
the system and direct coolant through the system.
For these reasons, we do not sustain the rejection of independent
claim 15, and its dependent claims 16-22, under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
Rejection of Claims 15, 16, 19, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Gehres and Matsunaga
The Examiner finds that Gehres discloses steps (a), (b), and (c) of the
method recited in claim 15, but does not explicitly disclose step (d). Final
Act. 4-5. The Examiner finds that it is implicit in the disclosure in Gehres
of “state (4)” (Gehres, para. 17), in which the engine is on and the coolant
temperature is sufficiently high to support heating of the cabin, that valve 52
is open. Id. at 5; see also Gehres, Fig. 2. As discussed in further detail
infra, we agree with, and Appellants do not contest, this finding.
The Examiner further states it would have been obvious “to modify
Gehres by reversing the flow” so that the coolant flows through the heater
core in the first direction, “as a mere reversal of movement.” Id. at 5-6.
The Examiner explains that “a person having ordinary skill in the art at the
time of the invention could reverse the flow in Gehres simply by reversing
the pump 44 output direction.” Ans. 15-16 (Examiner explaining that
“[rjeversing the direction would still circulate heat from cooling system to
heater core and [vice versa] because they are in a closed loop”).
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Application 12/121,832
We understand this proposed modification to suggest reversing the
pump 44 output direction during state (4). This suggestion appears to be
based on a misunderstanding as to the operation of the pumps in Gehres.
For the reasons that follow, we do not understand Gehres to operate pump
44 during state (4). Gehres discloses that “the primary and auxiliary heaters
38, 40, are supplied with coolant from either the engine cooling subsystem
31 or by the fuel fired heater 34” and “the cores 38, 40 are never supplied
concurrently from both sources of heated coolant.” Id., para. 14. “When
supplied with coolant from the engine cooling subsystem 31 the flow of
coolant is from the IN ports to the OUT ports of cores 38, 40. When supplied
with coolant from the fuel fired heater 34 the flow of coolant passes into the
heaters 38, 40 from the outlet ports to the inlet ports (reverse flow).” Id.
In state (3), Gehres describes that valve 52 is closed to isolate circuit
31 from circuit 33 to prevent engine coolant pump 42 from damaging the
auxiliary pump 44, both of which will be running. Id., para. 17. “In state (4)
the engine is on and coolant temperature in the engine coolant system sub­
circuit is sufficiently high to support heating of the cabin.” Id., para. 7.
Gehres discloses that during state (4), “[t]he valve to the auxiliary heater will
be closed and the valves to the front and auxiliary cores modulated as
required by temperature settings.” Id.
Based on this disclosure, we infer, as did the Examiner, that valve 52
is open in state (4), because the coolant temperature in the engine is
sufficiently high to support heating of the cabin. Id. We also infer from this
disclosure, that auxiliary pump 44 is not running in state (4) because valve
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Appeal 2015-007593
Application 12/121,832
54 at the outlet from the fuel fired auxiliary heater 34 is closed and the
auxiliary heater is not supplying coolant to the OUT ports of cores 38, 40.
Id. Rather, in state (4), valves 56, 58 adjacent the IN ports to the cores 38,
40 are open. Id. Thus, we understand that the system uses engine driven
pump 42 to pump coolant to the cores 38, 40 during state (4). Id., para. 11
(“The engine coolant circulation subsystem 31 includes an engine driven
pump 42 which forces coolant to circulate through the engine and cooling
system elements 36”). Thus, the Examiner’s proposed modification to
reverse the flow of auxiliary pump 44 during state (4) lacks rational
underpinnings because it is based on a misunderstanding as to the operation
of Gehres.
In the alternative, the Examiner proposes to modify Gehres “by
adding the valve actuating of Matsunaga when the temperature in the power
plant coolant loop is at or above the predetermined temperature threshold in
order to enable using the excess heat in the power plant for heating the
passenger compartment via the heater core.”4 Ans. 11 (presenting rationale
in new ground of rejection) (emphasis omitted). Appellants argue that the
4 The Examiner finds:
Matsunaga teaches (d) actuating the valve (170) to direct
the coolant from the heater core coolant loop into the power plant
coolant loop and the coolant from the power plant coolant loop
into the heater core coolant loop and through the heater core in
the first direction when the temperature in the power plant
coolant loop is at or above the predetermined temperature
threshold (col. 11 lines 41 - 45 and 51 - 54).
Ans. 11.
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Application 12/121,832
Examiner’s reason for the modification is in error because “excess heat from
the engine (32) is already used [in Gehres] to heat the passenger cabin via a
heater core (38), so there is no reason to add this function from Matsunaga.”
Reply Br. 5-6.
We agree with Appellants that the Examiner fails to provide adequate
reasoning to explain why one having ordinary skill in the art would have
been led to modify Gehres with the valve actuation of Matsunaga. As noted
by Appellants, and explained in detail supra, in Gehres, when the engine is
on and the coolant temperature in the engine coolant system sub-circuit is
sufficiently high to support heating of the cabin, the valve 52 is opened and
the primary and auxiliary heaters 38, 40, are supplied with coolant from
engine cooling subsystem 31. Gehres, paras. 7, 14, 17. As such, the system
of Gehres already uses the excess heat in the power plant for heating the
passenger compartment via the heater core.
For these reasons, the Examiner has not provided adequate reasoning
to support a modification of Gehres that would have led one having ordinary
skill in the art to the subject matter of claim 15. As such, we do not sustain
the rejection of claim 15, and its dependent claims 16, 19, 21, and 22, under
35 U.S.C. § 103(a) as unpatentable over Gehres and Matsunaga.
Rejections of Claims 17, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Gehres, Matsunaga, and either Salim or Baster
The rejections of claims 17, 18, and 20 rely on the modification of
Gehres with the teaching of Matsunaga as relied upon in the rejection of
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Application 12/121,832
independent claim 15. Final Act. 7-10. We do not sustain these remaining
grounds of rejection for the same reasons discussed above with regard to
claim 15.
DECISION
The rejections of claims 15-22 are reversed.
REVERSED
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