Ex Parte SponskyDownload PDFPatent Trial and Appeal BoardJul 22, 201612863323 (P.T.A.B. Jul. 22, 2016) Copy Citation 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 2 Appeal2014-005331 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. 3 Appeal2014-005331 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 4 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 5 Appeal2014-005331 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 6 Copy with citationCopy as parenthetical citation