Ex Parte Sponsky

Patent Trial and Appeal Board

Jul 22, 2016

12863323 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/863,323 07/16/2010
67907 7590 07/25/2016
VOL VO GROUP INTELLECTUAL PROPERTY
7900 NATIONAL SERVICE ROAD
MAIL STOP, CCI/19
GREENSBORO, NC 27409
John Sponsky
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.
P22076US 5372
EXAMINER
LAGUARDA,GONZALO
ART UNIT PAPER NUMBER
3747
MAILDATE DELIVERY MODE
07/25/2016 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 JOHN SPONSKY
Appeal2014-005331
Application 12/863,323
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Sponsky (Appellant)1 seeks review, under 35 U.S.C. § 134(a), of
the Examiner's decision to reject claims 1-11. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Volvo Trucks Corporation (Sweden) as the real
party in interest and identifies Mack Trucks, Inc. as the assignee of the
application. Appeal Br. 3.
Appeal2014-005331
Application 12/863,323
BACKGROUND
The disclosed subject matter "relates to internal combustion engine air
intake devices, and more specifically to a device for mixing recirculated
exhaust gas into engine intake air." Spec. i-f 1. Claims 1, 7, and 8 are
independent. Claim 1 is reproduced below:
1. A device for mixing exhaust gas in an engine
air intake, comprising:
a mixing chamber disposed in an air intake
conduit, the mixing chamber having an inlet for
receiving intake air and an outlet for exhausting the
intake air, and having a port between the inlet and
the outlet; and,
a mixer tube extending through the port, an
end portion of the mixer tube disposed in the mixing
chamber shaped as a straight cylinder sectioned to
have an elongated elliptical opening facing the
mixing chamber outlet and a wall facing the mixing
chamber inlet, an end tip of the mixer tube is spaced
from a wall of the mixing chamber opposite the port
by a distance not more than 20% of a width of the
mixing chamber.
REJECTIONS
1. Claim 8 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2. Claims 1-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Holze (US 6,427 ,671 B 1, issued Aug. 6, 2002) and
Cooper (US 7,128,039 B2, issued Oct. 31, 2006).2
2 Although only claims 1-7 are listed in the summary of this Rejection
(Final Act. 3 (mailed June 5, 2013)), the Examiner discusses claims 8-11 in
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Application 12/863,323
DISCUSSION
Rejection 1 - The rejection of claim 8
under 3 5 U.S. C. § 112, first paragraph
Independent claim 8 recites, in relevant part, a device in which "an
end tip of the mixer tube is spaced from a wall of the mixing chamber
opposite the port by a distance such that vortex shedding is produced in an
air flow past the end tip." Appeal Br. 16 (Claims App.).
The Examiner rejects claim 8 (and, implicitly, claims 9 and 10, which
depend from claim 8), determining that claim 8
contains subject matter which was not described in the
specification in such a way as to enable one skilled in the art to
which it pertains, or with which it is most nearly connected, to
make and/or use the invention. Specifically the distance between
two objects in a fluid passage necessary to create vortex
shedding.
Final Act. 3.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (quoting In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991)). We
agree with Appellant that the Specification here satisfies this requirement
with respect to the limitation at issue in claim 8.
As argued by Appellant, "paragraphs 015 and 016 describe for one
skilled in the art the knowledge for spacing a mixer tube from a wall to
produce vortex shedding in a fluid flow." Appeal Br. 8. We agree with
Appellant that "[t]he descript[or] 'narrow spacing of the tip from the mixing
the body of the Rejection (id. at 8-11). Thus, we consider claims 8-11 as
rejected.
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Application 12/863,323
chamber wall' in paragraph 016 refers back to the recitation of 'distance not
more than 20%' of paragraph 015" and that, read together, these paragraphs
satisfy the enablement requirement. Id. Further, we agree that paragraphs
31 and 33 of the Specification provide additional support for this conclusion.
Id. at 8-9.
In the Answer, the Examiner states that this Rejection "has been
maintained to address that [A ]ppellant has not sufficiently disclosed how the
type of vortex shedding that the[] application creates is sufficiently different
from the type created by the prior art (vortex shedding that is assumed to be
created by similar structures)." Ans. 2-3. As noted by Appellant, however,
this response "confuses§ 112 and§ 102, demanding a showing of novelty to
overcome the rejection for lacking an enabling disclosure .... " Reply Br. 2.
Because the Specification here satisfies the enablement requirement, we do
not sustain this Rejection.
Rejection 2- The rejection of claims
1-11under35 U.S.C. § 103(a)
A. Claims 1---6 and 11
Addressing independent claim 1, the Examiner relied on Holze for
various limitations but stated that "Holze fails to explicitly teach that the
mixer tube is shaped as a straight cylinder sectioned to have an elongated
elliptical opening." Final Act. 4 (emphasis omitted). The Examiner found,
however, that "Cooper, which deals with air intake, discloses that the Mixer
tube (item 126 in Cooper) is shaped as a straight cylinder (Fig. 2, item 118
and Col. 3, lines 15-17) sectioned to have an elongated elliptical opening
(Col. 3, line 17)." Id. (emphasis omitted). According to the Examiner, it
would have been obvious
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Appeal2014-005331
Application 12/863,323
to have modified Holze with the tube shape of Cooper because
"this has the effect that any air exiting opening 128 is hindered
from travelling away from cylinder ports 122 and is at least
partially prevented from forming chaotic air flows having
directions other than generally towards cylinder ports 122.
Therefore most air will follow concurrent flow paths, resulting
in a substantially even distribution to cylinder ports 122"
([Cooper, c]ol. 3, lines 3-14).
Id. at 4--5.
The passage relied on from Cooper does not provide sufficient
reasoning with rational underpinning to support the legal conclusion of
obviousness of claim 1. See In re Kahn, 441 F .3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). As argued by Appellant, Cooper "addresses the flow of a single gas
stream and does not disclose mixing of fluid flows" and thus "does not serve
as motivation to one of ordinary skill in the art to modify Holze." Appeal
Br. 9. Indeed, Cooper teaches that "[a]ir is fed into manifold 120 via feed
passage 118" (col. 2, 1. 57) and also teaches, in the relied-upon passage, the
use of the disclosed structure to direct the entering air flow towards, rather
than away from, cylinder ports 122 (col. 3, ll. 3-14).
In the Answer, the Examiner states that
the benefits of the shape of this pipe to convey gas [are] stated
[in Cooper] and used as the reason to combine to create the
claimed structure. Specifically that it helps to ensure that all
flows, even the chaotic ones, of gas go in the direction of the
open portion of the pipe. This structure ensures even
distribution.
Ans. 4. This response does not support the conclusion of obviousness,
however, because the Examiner has not shown how these attributes from
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Application 12/863,323
Cooper would be relevant or beneficial to the relied-upon embodiment of the
exhaust gas recirculation mixer disclosed in Holze (see Holze, Fig. 2).
Accordingly, we do not sustain the rejection of independent claim 1,
or the rejection of claims 2-6 and 11, which depend from claim 1.
B. Claims 7-10
For independent claim 7 and for independent claim 8 (and claims 9
and 10 depending from claim 8), the Examiner relies on the same reasoning
to modify Holze based on Cooper discussed above. Compare Final Act. 7-9
(claims 7 and 8), with id. at 3-5 (claim 1). Thus, we also do not sustain the
rejection of claims 7-10.
DECISION
We REVERSE the decision to reject claim 8 under 35 U.S.C. § 112,
first paragraph, and REVERSE the decision to reject claims 1-11 under
35 U.S.C. § 103(a).
REVERSED
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