14416715 - (D) (P.T.A.B. Feb. 21, 2020)

BEHR GMBH & CO. KG

Patent Trials and Appeals BoardFeb 21, 2020

14416715 - (D) (P.T.A.B. Feb. 21, 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. 14/416,715 01/23/2015 Johannes Diem 888200-0187 4719 12919 7590 02/21/2020 Paul D. Strain Strain & Strain PLLC Strain & Strain, PLLC 1455 Pennsylvania Ave NW, Suite 400 Washington, DC 20004 EXAMINER TRIEU, THAI BA ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 02/21/2020 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 JOHANNES DIEM, MARK SCHIENEMANN, and MATTHIAS FEHRENBACH Appeal 2018-005979 Application 14/416,715 Technology Center 3700 Before MICHEAL C. ASTORINO, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HOFFMANN, 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, 2, 5–10, 12, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part, and enter a new ground of rejection, based on indefiniteness, pursuant to 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “BEHR GMBH & CO. KG.” Appeal Br. 1. Appeal 2018-005979 Application 14/416,715 2 According to Appellant, the invention “relates to a system for charge- air cooling for an internal combustion engine based on an engine family.” Spec. 1. Below, we reproduce claim 1 as illustrative of the appealed claims: 1. A system for cooling a charge-air of a plurality of internal combustion engine models of an engine family comprising: a standardized intake module arranged between a throttle flap and a combustion chamber of an internal combustion engine having a charge-air compressor, a standardized first charge air cooler structurally integrated into the standardized intake module, a charge-air line arranged between the charge-air compressor and the throttle flap, and a standardized second charge air cooler adapted to be arranged between the throttle flap and the charge-air compressor in the charge air-line, wherein the plurality of internal combustion engine models comprises a normal performance engine model and a top end engine model, wherein the standardized intake module and first charge air cooler are arranged on the normal performance engine model, wherein the standardized intake module, first charge air cooler, and second charge air cooler are arranged on the top-end engine model, and wherein the standardized intake module, first charge air cooler, and second charge air cooler are interchangeable between the normal performance engine model and the top-end engine model. Appeal 2018-005979 Application 14/416,715 3 REJECTIONS AND PRIOR ART2 The Examiner rejects the claims as follows: I. Claims 1, 2, 6–10, and 13 under 35 U.S.C. § 103 as unpatentable over Kühlmeyer et al. (DE 10 2010 027 220 A1, pub. Jan. 19, 2012) (“Kühlmeyer”) and either “Design Choice,” Kim (US 8,459,388 B2, iss. June 11, 2013), or Hufendiek et al. (US 5,477,817, iss. Dec. 26, 1995) (“Hufendiek”); II. Claims 1, 2, 5–10, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Friedrich et al. (WO 2009/036889 A1, pub. Mar. 26, 2009) (“Friedrich”) and either “Design Choice,” Kim, or Hufendiek; III. Claims 1, 2, 5–10, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Michels et al. (US 2010/0132355 A1, pub. June 3, 2010) (“Michels”) and either “Design Choice,” Kim, or Hufendiek; IV. Claim 8 under 35 U.S.C. § 103 as unpatentable over any one of Kühlmeyer, Friedrich, and Michels; and “Design Choice,” and Mason et al. (US 4,362,131, iss. Dec. 7, 1982) (“Mason”); and V. Claim 8 under 35 U.S.C. § 103 as unpatentable over any one of Kühlmeyer, Friedrich, and Michels; and either Kim or Hufendiek; and Mason. 2 In the Answer, the Examiner withdraws the indefiniteness rejection from the Final Office Action. See Answer mailed Feb. 16, 2018 (“Answer”), 4; see Final Action mailed June 5, 2017 (“Final Action”), 7–11. We combine rejections relative to the Answer and Final Office Action. Appeal 2018-005979 Application 14/416,715 4 ANALYSIS New Ground of Rejection—Indefiniteness As set forth above, independent claim 1 recites, in relevant part, a standardized intake module arranged between a throttle flap and a combustion chamber of an internal combustion engine having a charge-air compressor, a standardized first charge air cooler structurally integrated into the standardized intake module, . . . wherein the plurality of internal combustion engine models comprises a normal performance engine model and a top end engine model, wherein the standardized intake module and first charge air cooler are arranged on the normal performance engine model, wherein the standardized intake module, first charge air cooler, and second charge air cooler are arranged on the top-end engine model, and wherein the standardized intake module, first charge air cooler, and second charge air cooler are interchangeable between the normal performance engine model and the top-end engine model. Appeal Br., Claims App. Appellant’s argument as to why the Examiner’s obviousness rejections are in error is that “none of Fr[ie]drich, Michels, or K[ü]hlmeyer discuss[es] a set of standardized components that are interchangeable between two different engine models,” and that “[n]one of the[] references appear[] to teach or suggest an air charge system that is interchangeable for top-end engine and normal end engine.” Appeal Br. 13. For the following reasons, the claim recitations directed to standardized and interchangeable components are not clear, however. Specifically, it is not clear whether the standardized intake module is arranged on each of an internal combustion engine, a normal performance Appeal 2018-005979 Application 14/416,715 5 engine model, and a top end engine model at the same time, is arranged on these engines at different times, or is simply interchangeable among these engines. This is because claim 1 expressly recites that the “standardized intake module [is] arranged . . . [relative to] an internal combustion engine,” is “arranged on the normal performance engine model,” and is “arranged on the top-end engine model,” without indicating that the intake module is removed from any of these engines before being arranged on any other engine. See id., Claims App. (Claim 1). Stated otherwise, the words of claim 1 create ambiguity as to the timing of when the standardized intake module is arranged on different engine models. We contemplate that a scenario where a single intake module remains connected to multiple engines may occur, for example, during testing or evaluation of multiple engines. However, Appellant’s Specification apparently describes the same standardized intake module attached to different engines at different times, but not connected to multiple engines at the same time. See, e.g., Spec. 11–12. It also is not clear how or whether the claimed “second charge air cooler” is interchangeable between the top end engine model and the normal performance engine model, as recited in the last portion of claim 1, because other portions of the claim recite that the second charge air cooler is connected to the top end engine model but do not recite that the second air charger cooler is connected to the normal performance engine model. See Appeal Br., Claims App. (Claim 1). Restated, the claim 1 contradicts itself by 1) first claiming that the second charge air cooler connects to the top end engine model while not claiming that the second charge air cooler connects to the normal performance engine model, but 2) then claiming that the Appeal 2018-005979 Application 14/416,715 6 second charge air cooler is interchangeable with the normal performance engine model. Appellant’s Specification describes the use of second charge air cooler—“second cooling device 17”—only when describing the use of the top end engine model shown in Figures 2 and 3, and not with the normal performance engine model shown in Figure 1. See Spec. 11–12; Figs. 1–3. Accordingly, the Specification fails to adequately instruct a skilled artisan’s understanding of the claimed invention. Consequently, “under the broadest reasonable interpretation when read in light of [Appellant’s] Specification, [the above-discussed claim recitations are] vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.” Ex parte McAward, 2015–006416 (PTAB Aug. 25, 2017) (precedential). Accordingly, we reject independent claim 1, and claims 2, 5–8, 10, 12, and 13 that incorporate the recitations of claim 1 therein, under 35 U.S.C. § 112(b), as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. Rejections I–V—Obviousness Rejections As explained above, we are unable to determine the metes and bounds of claims 1, 2, 5–8, 10, 12, and 13. Thus, we cannot assess the merits of the Examiner’s obviousness rejections of these claims. Consequently, we pro forma do not sustain any of the Examiner’s obviousness rejections for claims 1, 2, 5–8, 10, 12, and 13, because sustaining any such rejection would necessarily be based upon speculation as to the meaning of the claims’ recitations. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (addressing an obviousness rejection). Appeal 2018-005979 Application 14/416,715 7 With respect to independent claim 9, the claim recites the following: 9. An internal combustion engine having a charge air compressor wherein the internal combustion engine is part of an engine family, wherein a first charge air cooler is arranged in an intake tract downstream of a throttle flap, wherein a second charge air cooler for precooling the charge air is arranged upstream of the throttle flap and downstream of a charge-air compressor. Appeal Br., Claims App. Appellant argues that the Examiner’s obviousness rejections are in error because “none of Fr[ie]drich, Michels, or K[ü]hlmeyer discuss[es] a set of standardized components that are interchangeable between two different engine models.” Appeal Br. 13. Inasmuch as claim 9 does not include such a recitation, this argument does not persuade us that any rejection of claim 9 is in error. For similar reasons, Appellant does not persuade us that the Examiner errs by Appellant’s argument that “[n]one of the[] references appears to teach or suggest an air charge system that is interchangeable for top-end engine and normal end engine.” Specifically, claim 9 does not include recitations of an interchangeable air charge system, or top end and normal engines. CONCLUSION We pro forma reverse the Examiner’s obviousness rejections of claims 1, 2, 5–8, 10, 12, and 13. We affirm the Examiner’s obviousness rejections of claim 9. We enter a new ground of rejection, based on indefiniteness, for claims 1, 2, 5–8, 10, 12, and 13. Appeal 2018-005979 Application 14/416,715 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 6–10, 13 103 Kühlmeyer, Design Choice, Kim, Hufendiek, 9 1, 2, 6–8, 10, 13 1, 2, 5–10, 12, 13 103 Friedrich, Design Choice, Kim, Hufendiek, 9 1, 2, 5–8, 10, 12, 13 1, 2, 5–10, 12, 13 103 Michels, Design Choice, Kim, Hufendiek, 9 1, 2, 5–8, 10, 12, 13 8 103 Kühlmeyer, Friedrich, Michels, Design Choice, Mason 8 8 103 Kühlmeyer, Friedrich, Michels, Kim, Hufendiek, Design Choice, Mason 8 112, second paragraph Indefiniteness 1, 2, 5–8, 10, 12, 13 Overall Outcome 9 1, 2, 5–8, 10, 12, 13 1, 2, 5–8, 10, 12, 13 As set forth above, this Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2008), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2018-005979 Application 14/416,715 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new [e]vidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the [E]xaminer. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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 IN PART; 37 C.F.R. § 41.50(b)