Marc Graaf et al.Download PDFPatent Trials and Appeals BoardOct 30, 202013551740 - (D) (P.T.A.B. Oct. 30, 2020) Copy Citation 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. 13/551,740 07/18/2012 Marc Graaf H-IP13038334US1 (205216) 1608 58637 7590 10/30/2020 Shumaker, Loop & Kendrick, LLP 1000 Jackson Street Toledo, OH 43604-5573 EXAMINER TANENBAUM, TZVI SAMUEL ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 10/30/2020 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): cgolupski@shumaker.com dmiller@shumaker.com tlopez@shumaker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC GRAAF and TOBIAS HAAS Appeal 2019-006179 Application 13/551,740 Technology Center 3700 Before DANIEL S. SONG, STEFAN STAICOVICI, and EDWARD A. BROWN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 5–8, 10–12, 14, 15, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Hanon Systems. Appeal Br. 1. Appeal 2019-006179 Application 13/551,740 2 CLAIMED SUBJECT MATTER The claims are directed to a vehicle refrigerant circuit with a refrigeration system circuit and a heat pump circuit. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fluid conditioning system, comprising: a refrigeration circuit including a heat exchanger and an evaporator; and a heat pump circuit including a condenser, a chiller serially connected to the evaporator of the refrigeration circuit, a first expansion member in fluid communication with the chiller, a second expansion member, and an inner heat exchanger disposed intermediate the heat exchanger and the evaporator, wherein the heat pump circuit includes a branch point disposed upstream of the inner heat exchanger with respect to a direction of a flow of a fluid through the heat pump circuit, the branch point configured to divide the flow of the fluid through the heat pump circuit into a first partial mass flow directed to the first expansion member and a second partial mass flow directed to the second expansion member, wherein the evaporator is configured to cool and dehumidify air passing through the evaporator when a temperature of the air is greater than a temperature of the fluid passing through the evaporator, and wherein the evaporator is configured to heat the air passing through the evaporator when the temperature of the air is lower than the temperature of the fluid passing through the evaporator. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nishida US 2003/0182961 A1 Oct. 2, 2003 Feuerecker US 7,530,390 B2 May 12, 2009 Richter US 2011/0174000 A1 July 21, 2011 Appeal 2019-006179 Application 13/551,740 3 REJECTIONS 1. Claims 1, 5–7, 10–12, 14, 15, and 21 are rejected under pre- AIA 35 U.S.C. § 103(a) as unpatentable over Richter in view of Nishida. Non-Final Act. 2. 2. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Richter in view of Nishida and Feuerecker. Non-Final Act. 16. OPINION Rejection 1: Claims 1, 5–7, 10–12, 14–15, and 21 The Examiner rejects claims 1, 5–7, 10–12, 14, 15, and 21 as unpatentable over Richter in view of Nishida. Non-Final Act. 2. As to independent claim 1, the Examiner finds that Richter discloses a fluid conditioning system substantially as claimed, but fails to disclose a chiller serially connected to an evaporator, and that the branch point is configured to divide a flow of a fluid through the heat pump circuit into a first partial mass flow directed to the first expansion member 10, and a second partial mass flow directed to the second expansion member as the second expansion member 11 [of Richter] is located upstream of the branch point in the heat pump circuit. Non-Final Act. 6. However, the Examiner relies on Nishida to remedy the deficiencies, finding that Nishida discloses a second expansion member 9 located downstream of a branch point in a heat pump circuit, and discloses dividing the refrigerant into a first partial mass flow directed to a first expansion member 10, and second partial mass flow directed to the second expansion member 9 proximate an inner heat exchanger and radiator. Non-Final Act. 6 Appeal 2019-006179 Application 13/551,740 4 (citing Nishida ¶¶ 40, 42). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to relocate the second expansion member of Richter in view of the teachings of Nishida such that the second expansion member 11 is located proximate the inner heat exchanger 9 and downstream of the branch point in the heat pump circuit (see, e.g., annotated Fig. 1, below) with the motivation of optionally dividing the refrigerant into a first partial mass flow directed to the first expansion member 10 and a second partial mass flow directed to the second expansion member 11 and to thereby allow a user to control, in a heat pump circuit, the proportion of refrigerant in a first flow to a cooling heat exchanger (e.g. chiller 8) and a second flow to an inner heat exchanger 9 and a radiator 2. Non-Final Act. 7. The Appellant argues independent claims 1 and 21 together, and does not submit any arguments directed to the dependent claims. Appeal Br. 8. Thus, we select claim 1 as representative, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant could have made but chose not to make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010, precedential). The Appellant does not dispute the Examiner’s findings with respect to Richter, but disputes the Examiner’s modification thereof in view of Nishida. The Appellant initially describes advantages of the claimed invention over the prior art, stating that the claimed arrangement of the branch point and the expansion members “allows for the flow to be selectively distributed to the chiller or the heat pump evaporator,” has Appeal 2019-006179 Application 13/551,740 5 advantages over the prior art in that “refrigerant does not have to pass through two consecutive expansion valves [which] . . . undesirably reduces a pressure and temperature of the refrigerant,” and “allows for the air conditioning system to be adaptable based on the temperature of the outside air and the heat generating component.” Appeal Br. 10 (citing Spec. ¶¶ 41– 44); see also Appeal Br. 15. The Appellant also asserts that the claimed configuration provides operational flexibility in that “the refrigeration circuit evaporator can be operated as a quasi-extended heat pump condenser for further heating the air to the passenger compartment when the ambient temperature is relatively low.” Appeal Br. 12. Thus, the Appellant summarizes that the problem to be solved by the claimed invention relates to providing a configuration for refrigerant to be distributed between a secondary evaporator exchanging heat with the ambient environment and a secondary evaporator exchanging heat with a component of the vehicle . . . wherein each of the secondary evaporators encounters the refrigerant at a similar temperature and pressure after having already passed through a condenser and a refrigeration circuit evaporator during operation in a heat pump mode. Appeal Br. 12. Accordingly, the Appellant asserts that “any reference allegedly disclosing the solution to the problem posed by the Richter configuration must disclose a configuration of parallel arranged secondary evaporators branching from a position downstream of a condenser and a refrigerant circuit evaporator.” Appeal Br. 12; see also Reply Br. 4 (“[t]he invention recited in Claims 1 and 21 is accordingly presenting an entirely different problem to be solved by the repositioning of one of the expansion members (11) of Richter.”). Appeal 2019-006179 Application 13/551,740 6 The Appellant argues that the rejection is deficient because Nishida does not provide teachings for addressing this problem. Specifically, the Appellant argues that Nishida “fails to disclose a branch point leading to one of a pair of expansion members wherein the branch point is associated with a heat pump circuit including a condenser and a refrigeration circuit evaporator upstream of the branch point.” Appeal Br. 13. The Appellant argues that in Nishida, “it is possible for a portion of the refrigerant to bypass the evaporator (5) for cooling and dehumidifying the air delivered to the passenger compartment as opposed to the claimed invention which always requires flow through the refrigeration circuit evaporator prior to a branching of the refrigerant.” Appeal Br. 14. The Appellant further argues that [a]lthough the Nishida reference discloses a branch point (20) leading to a pair of expansion valves (9, 10), the relative positioning of the branch point (20) of Nishida relative to the remainder of the disclosed heat pump circuit renders the disclosure of Nishida as inadequate for solving the problems set forth in the preceding sections relating to the flexibility of operation of the air conditioning system depending on the ambient temperature and the availability of heat generated by a component of the vehicle. Appeal Br. 14. Thus, the Appellant asserts that Nishida “fails to provide any guidance regarding the desired position for a branch point and a pair of expansion valves when each of the aforementioned components is disposed downstream of a heat pump condenser and evaporator combination.” Appeal Br. 13; see also Appeal Br. 15 (“The Nishida reference accordingly fails to provide guidance to one skilled in the art regarding the regulation of the flow of refrigerant between a chiller exchanging heat with a heat Appeal 2019-006179 Application 13/551,740 7 generating component and an evaporator exchanging heat with the ambient air.”). We do not find the Appellant’s arguments persuasive for various reasons. Initially, the Appellant demands that Nishida explicitly disclose not only the recited arrangement of the branch point and the first and second expansion members, but also the use of such arrangement to functionally address the same problem addressed by the Appellant’s invention. See Appeal Br. 12, 14. 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.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 419 (2007). In addition, the Court in KSR rejected the rigid requirement of an explicit teaching, suggestion or motivation to combine known elements in order to establish obviousness. Id. at 418–19. In that regard, obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim,” and that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” such that “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 418, 420–21. What is required is an articulated reason with a rational basis to support the conclusion of obviousness, which has been provided by the Examiner. See id. at 417–18; Non-Final Act. 7. The Appellant also argues Nishida individually in asserting that it fails to provide any guidance whereas “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck, 800 F.2d 1091, Appeal 2019-006179 Application 13/551,740 8 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, the Appellant’s arguments appear to be premised on bodily incorporation of Nishida rather than considering Nishida for its broader teachings or as evidence of the knowledge and skill of one of ordinary skill in determining whether the Examiner’s articulated reasoning for modifying Richter with Nishida is supported by rational underpinnings. See generally, Appeal Br. 13–14. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” Keller, 642 F.2d at 425. We agree with the Examiner that the Appellant “unreasonably narrowly construes what one of ordinary skill in the art would understand and recognize from the teachings of Nishida,” which discloses a branch point downstream of heat exchanger 4 and upstream of an inner heat exchanger 3, ambient air heat exchanger 2, and a cooling heat exchanger. Ans. 3. “A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985); see also In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983). Moreover, a skilled artisan must be presumed to know something about the art apart from what the references expressly disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). As noted by the Examiner, the branch point of Richter is also downstream of heat exchanger 3, and upstream of inner heat exchanger 9, ambient air heat exchanger 2, and cooling heat exchanger 8. Ans. 3–4. Thus, we agree with the Examiner that Appeal 2019-006179 Application 13/551,740 9 one of ordinary skill in the art would understand and recognize that both heat exchangers 5 of Nishida and heat exchanger 8 of Richter both act as cooling heat exchanger. The most relevant teaching of Nishida is the relative positioning of two downstream expansion valves, in a heat pump circuit, to control the proportion of a refrigerant flow in parallel branches to: e. an inner heat exchanger and ambient air heat exchanger; and f. a cooling heat exchanger. Ans. 4. With this understanding and recognition by one of ordinary skill, the Examiner’s articulated reasoning for modifying the system of Richter in order to “allow a user to control, in a heat pump circuit, the proportion of refrigerant in a first flow to a cooling heat exchanger (e.g. chiller 8) and a second flow to an inner heat exchanger 9 and a radiator 2” (Non-Final Act. 7) is supported by rational underpinnings. Indeed, it is not readily apparent where in the Appeal Brief, the Appellant directly addresses the reasoning set forth by the Examiner for modifying Richter in the manner suggested. The Appellant rebuts that “the Examiner has not addressed the fact that the branch point (20) of Nishida is disposed upstream of the first instance of any form of expansion member or evaporator in a heating mode of operation as discussed hereinabove.” Reply Br. 4. However, this line of argument based on narrowly considering Nishida has already been addressed above. As the Examiner explains, one of ordinary skill in the art would understand that the although the heat exchangers 5 of Nishida and 8 of Richter function to cool a different medium, Nishida still provides evidence for the relative location of two expansion valves, in a heat pump circuit, at a branch point wherein the branch point is upstream of a cooling heat exchanger (e.g. cooling heat exchanger 5 of Nishida or cooling heat exchanger 8 of Richter). The teachings of Nishida with respect to the location of Appeal 2019-006179 Application 13/551,740 10 expansion valves to a branch point do not depend on how a downstream cooling heat exchanger is utilized or what heat source is cooled. Ans. 5. According to the Appellant, “the manner in which the refrigerant is conditioned after being divided is relevant to the determination of whether the Nishida reference provides the necessary guidance in modifying the Richter reference.” Reply Br. 5. Although we do not disagree with this assertion, as noted above, the scope of Nishida’s teaching to one of ordinary skill in the art is not merely limited to the invention disclosed therein. EWP, 755 F.2d at 907 (“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.”). The Appellant again views Nishida narrowly, requiring Nishida to explicitly disclose that its arrangement functions the same as, and addresses the same problem as the Appellant’s invention, without giving proper consideration to the knowledge, skill, and creativity of those of ordinary skill in the art, and the Examiner’s reasoning for modifying Richter in the manner suggested. The Appellant further asserts that the Examiner does not consider the claimed system as a whole, and that when considered as a whole the recited heat pump circuit . . . is especially advantageous as the refrigeration circuit evaporator can be operated as either a cooling and dehumidifying evaporator or a heating quasi-extended condenser while the chiller can be used exclusively as the secondary evaporator when the ambient air is too cool to provide adequate heat energy. The Examiner has accordingly ignored the actual positioning and function of the recited branch point and expansion member relative to the remaining components of the heat pump circuit when claiming that the Nishida reference Appeal 2019-006179 Application 13/551,740 11 discloses or suggests a solution to the deficiencies of the Richter reference. Appeal Br. 16. However, such arguments are unpersuasive because the Appellant does not establish how claim 1 requires such advantageous function, and again views Nishida narrowly, views a person of ordinary skill as an automaton, and does not specifically address the reasoning of the Examiner in modifying Richter in the manner suggested. In that regard, we generally agree with the Examiner that the fact that the Appellant’s system may be operated in an advantageous manner “cannot be the basis for patentability when the differences would otherwise be obvious,” and that the claimed invention, as a whole, would have been obvious in view of the applied prior art taken as a whole. Ans. 5–6. Therefore, in view of the above considerations, we are not persuaded of error in the Examiner’s rejection, and affirm the rejection of representative independent claim 1. Claims 5–7, 10–12, 14, 15, and 21 fall with claim 1. Rejection 2: Claim 8 The Examiner rejects claim 8, which depends from claim 1, as unpatentable over Richter in view of Nishida and Feuerecker. Non-Final Act. 16. The Appellant argues that Feuerecker fails to cure the deficiencies of the combination of Richter and Nishida. Appeal Br. 16. Thus, being unpersuaded of deficiencies in the Examiner’s rejection based on the combination of Richter and Nishida, we likewise affirm the rejection of claim 8. Appeal 2019-006179 Application 13/551,740 12 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–7, 10– 12, 14, 15, 21 103(a) Richter, Nishida 1, 5–7, 10– 12, 14, 15, 21 8 103(a) Richter, Nishida, Feuerecker 8 Overall Outcome 1, 5–8, 10– 12, 14, 15, 21 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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