Marc Graaf et al.

Patent Trials and Appeals Board

Oct 30, 2020

13551740 - (D) (P.T.A.B. Oct. 30, 2020)

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.
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Application 13/551,740

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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

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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
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(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
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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.”).
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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
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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,
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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
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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
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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
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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.
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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).
AFFIRMED