Ex Parte CHARNESKY et al

Patent Trial and Appeal Board

Feb 25, 2019

12817971 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/817,971 06/17/2010
70422 7590 02/27/2019
LKGLOBAL (GM)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
FIRST NAMED INVENTOR
SCOTT P. CHARNESKY
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.
P011218-US-NP/003.0765 6702
EXAMINER
KING, BRIAN M
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
gm@lkglobal.com
gmcruise@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SCOTT P. CHARNESKY, GREGORY J. FADLER,
THOMAS K. LOCKWOOD, and KEVIN A. GOLSCH
Appeal2017-003750
Application 12/817 ,971
Technology Center 3700
Before KEN B. BARRETT, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott P. Chamesky et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting all pending claims 1 and 4--22
in this application. 2 The Board has jurisdiction over the appeal under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 The Appeal Brief identifies GM Global Technology Operations, Inc., as
the real party in interest. Br. 2.
2 We refer to the Final Action mailed June 12, 2015 ("Final Act."), the
Appeal Brief filed February 23, 2016 ("Br."), and the Answer mailed
October 25, 2016 ("Ans."). There are two Answers in this case, respectively
Appeal2017-003750
Application 12/817,971
CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal, and it recites:
1. A powertrain cooling system for deployment onboard a
vehicle including an engine compartment, the powertrain cooling
system comprising:
a first airflow path;
a second airflow path;
a primary radiator core positioned in the first airflow path;
an auxiliary radiator core positioned in the second airflow
path; and
a first airflow valve positioned in the second airflow path
upstream of the auxiliary radiator core, the first airflow valve
movable between a closed position wherein the first airflow
valve impedes airflow to the auxiliary radiator core and an open
position;
wherein the cooling efficiency of the primary radiator core is
greater than the cooling efficiency of the auxiliary radiator core
such that the primary radiator core rejects a given amount of
heat to a reduced volume of aiiflow as compared to the auxiliary
radiator core, and wherein the first airflow path directs the
airflow discharged by the primary radiator core around and not
into the engine compartment.
Br. 41 (Claims App.) (emphases added).
mailed September 19, 2016 and October 25, 2016. There is no explanation
in the record concerning why the second Answer was filed. It appears the
only difference between the two is that some verbiage was added at the top
of page 3 in the second Answer, so we refer to the second Answer.
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REJECTIONS ON APPEAL 3
Claims 1, 4, 11, 12, and 21 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Zhou (US 2010/0025006 Al, pub. Feb. 4, 2010), Prior
(US 2008/0185125 Al, pub. Aug. 7, 2008), Abdeljawad (US 7,004,245 B2,
iss. Feb. 28, 2006), and Klausing (US 5,429,179, iss. July 4, 1995).
Claims 1, 4, and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Prior, Abdeljawad, and Klausing.
Claims 5 and 6 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Prior, Abdeljawad, Klausing, and Amano
(US 2010/0147611 Al, pub. June 17, 2010).
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Prior, Abdeljawad, Klausing, Amano, and Iwasaki (US 2004/0226764 Al,
pub. Nov. 18, 2004).
Claims 8 and 9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Prior, Abdeljawad, Klausing, Amano, and Zhou.
Claim 10 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Prior, Abdeljawad, Klausing, Amano, Zhou, and Banzhaf
(US 5,215,044, iss. June 1, 1993).
Claim 14 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Prior, Abdeljawad, Klausing, and Siler (US 6,354,096 Bl, iss. Mar. 12,
2002).
3 A rejection of claims 1, 4--15, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, has
been withdrawn. See Final Act. 2 (rejection); Ans. 20 (withdrawal).
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Claim 15 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Zhou, Prior, Abdeljawad, Klausing, and Harich (US 2008/0257286 Al,
pub. Oct. 23, 2008).
Claims 16 and 22 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Thien (US 4,186,693, iss. Feb. 5, 1980) and Klausing.
Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Thien, Klausing, and Marsh (US 6,604,515 B2, iss. Aug. 12, 2003).
Claim 18 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Thien, Klausing, Marsh, and Christensen (US 5,143,516, iss. Sept. 1,
1992).
Claim 19 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Prior and Klausing.
Claim 20 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Prior, Klausing, and Thien.
ANALYSIS
A. Obviousness over Zhou, Prior, Abdeljawad, and Klausing
(claims 1, 4, 11, 12, and 21)
In rejecting claim 1, the Examiner cites Zhou's radiator 119 as the
primary radiator, and cites Zhou's radiator 153 as the auxiliary radiator.
Final Act. 3. However, the Examiner finds Zhou's radiators are not
disclosed as satisfying the claim requirement for the cooling efficiency of
radiator 119 to be greater than that of radiator 153, by rejecting a given
amount of heat to a reduced volume of airflow. Id. at 4.
The Examiner correspondingly cites Klausing as teaching "a system
with an auxiliary heater which also acts as a cooler, which is used to recover
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Application 12/817,971
unused excess heat or ... to cool." Id. ( citing Klausing, 1:35--45, 2:20-22).
The Examiner finds Klausing further teaches:
that when integrating the auxiliary component, it does not
provide the same level of cooling and is less efficient (Column 6,
lines 5-7) which as would be known to one in the art would be
beneficial because as an auxiliary component that is used for
providing excess cooling / heating using a less efficient
component would for an auxiliary system that is not used as the
primary system would allow for a cheaper component to be used
and would allow for cost savings in system design.
Id. at 4--5. In the Examiner's view, "Klausing teaches the use of two heat
exchange systems, one which is more efficient, and one which is less
efficient," so Klausing's teachings "can be applied equally to any heat
exchange system with a primary and auxiliary heat exchanger, such as"
disclosed in Zhou. Id. at 20; Ans. 21-23.
Based on those understandings of the Klausing disclosure, the
Examiner concludes it would have been obvious to modify Zhou's primary
radiator to have a greater cooling efficiency than Zhou's auxiliary radiator,
"to provide cost savings through the use of a less efficient component as the
auxiliary radiator." Final Act. 5.
Appellants contend, in part, "the Examiner has failed to provide a
convincing line of reasoning indicating why one of ordinary skill in the art
would have combined the disparate teachings of [Zhou and Klausing] to
arrive at" the invention recited in claim 1. Br. 23, 26-29. In particular,
Appellants assert the Examiner has not established a rational basis for
decreasing the efficiency of Zhou's auxiliary radiator 153, as proposed, to
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achieve cost savings, especially without also decreasing the efficiency of
Zhou's primary radiator 119 to achieve further cost savings. Id. at 27-28. 4
The Examiner responds that it would have been obvious to make
Zhou's primary radiator 119 to be more efficient than Zhou's auxiliary
radiator 153, "as the radiator 153 is operated in an alternative heating and
auxiliary manner in a similarly less integrated way as that of Klausing," so
"that it be provided in a less efficient manner that would result in cost
savings less energy consumed in the operating the controls by less
integration or by materials used." Ans. 24 ( emphasis added).
We agree with Appellants' argument that the rejection presently
before us does not satisfy the Examiner's burden to provide a rational
underpinning sufficient to support the legal conclusion of obviousness. 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). In particular, the
Examiner has not established a rational relationship between Zhou's primary
and auxiliary radiators 119 and 15 3, and Klausing' s primary and auxiliary
heat exchangers, that would motivate a person of ordinary skill in the art to
modify Zhou as proposed by the Examiner.
We start with Zhou. Figure 1 of Zhou is reproduced below.
4 Appellants confuse which of Zhou's two radiators 119 and 153 is found to
be the primary or the auxiliary radiator, but the point raised by Appellants
applies either way. Compare Final Act. 3 (identifying radiator 119 as
primary, and radiator 153 as auxiliary) with Br. 27-28 (identifying
radiator 153 as primary, and radiator 119 as auxiliary); Ans. 24.
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~---------------------------------~
--·109
111
j SYSTEM
ELECTRONICS
'-115
I
RESERVOIR I
I
I
I
I
I
: ' 155 I L------r-J------------------~ ____ J
,------ r-~----------, -~
1:~31 i ~ r~, r ~149 '-151 ~?------~~~ -_ _1:= ~~ -
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/ I I I
'------------------ I I '-137 I
------------------l. - 1-1 I
I I ·139 I
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133
145 I
I DRYER/ / I
SEPARATOR I
127 t HEATER I
I -143 I
I I ___ J I I
I 125 I -------------y------- ~-----------------
103 -
FIG.1
Zhou's Figure 1 illustrates thermal management system 100 for a vehicle,
pertinently including power train cooling subsystem 101 and heating,
ventilation, and cooling (HV AC) subsystem 107. Zhou ,r,r 2, 10.
In power train cooling subsystem 101, coolant circulated through
loop 109 transfers heat away from motor 111 and electronics 113, and
discharges heat to the ambient atmosphere via radiator 119. Id. ,r 11.
Fan 123 ensures sufficient air passes through radiator 119 to achieve a
desired cooling level. Id.
HV AC subsystem 107 provides temperature control for the vehicle's
passenger cabin. Id. ,r 14. Fan 147 circulates air through the cabin. Id. To
cool the air, coolant circulated through loop 151 transfers heat away from
the air via radiator 153, to be deposited to a refrigerant in heat
exchanger 133. Id. To heat the air, valves 155, 157, 159 are used to couple
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HV AC subsystem 107 to power train cooling subsystem 101, so that coolant
heated by subsystem 101 flows through radiator 153. Id. Additionally,
heater 161 may be employed to transfer heat to the air. Id.
Thus, Zhou's two radiators 119 and 153 operate to cool or heat
different vehicle systems. Radiator 119 cools the coolant in loop 109, which
then cools motor 111 and electronics 113. Radiator 153 cools or heats the
airflow passing through radiator 153, to be delivered to the passenger
compartment. There is no indication that the airflow passing through
radiator 119 is delivered to the passenger compartment. See, e.g., id. ,r 11.
The only intermixing between the two radiators is that radiator 153 uses the
coolant from loop 109 to heat the passenger compartment airflow. Id. ,r 14.
But, radiator 119 functions to cool the coolant, which is at cross purposes to
radiator 153 using the coolant to heat the passenger compartment airflow.
From these considerations, it is not clear to us, and the Examiner does
not explain adequately, why the Examiner identifies radiator 119 as a
primary radiator, and identifies radiator 153 as an auxiliary radiator. We
understand claim 1 does not itself define the difference between primary and
auxiliary in this regard. Nonetheless, claim 1 does specify that the primary
radiator has a greater cooling efficiency than the auxiliary radiator, in a
specific way. The Examiner bears the burden of providing a rational
underpinning sufficient to support the obviousness of configuring Zhou's
primary radiator 119 and auxiliary radiator 153 in such a fashion.
We, therefore, tum to Klausing. Figure 4 of Klausing is reproduced
below.
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-c:-
76
72 74
~
80.,.,,.. 100
FIG. 4
Klausing's Figure 4 illustrates heat exchanger 70, which recovers excess
heat produced by an internal combustion engine (not shown in Figure 4) for
heating a residential building. Klausing, Fig. 1, 1: 14--20, 1 :33--46, 3: 18-25.
Accordingly, exhaust stream 7 6 of the internal combustion engine is directed
through heat exchanger circuit 78 of heat exchanger 70. Id. at 4:2-8.
Working fluid 74 is directed through tank 72 of heat exchanger 70, from an
inlet (Figure 4, lower left comer) to an outlet (Figure 4, upper right comer).
Id. at 4:2-8, 4:50-54, Fig. 2A. Heat is thereby transferred from exhaust
stream 7 6 to working fluid 7 4, which is carried to other components of
Klausing's heating and cooling system to provide heat thereto. Id. at 4:2-8,
1 :44--46, 3 :28--43.
Klausing's heat exchanger 70 further incorporates means 80 for
auxiliary heating of working fluid 74, in situations where the heat provided
by exhaust stream 76 is insufficient to meet the demands of Klausing's
heating and cooling system. Id. at 1:21--48, 3:25-27, 4:8-12, 6:1-12.
Means 80 includes heating element 104 to transfer heat to working fluid 74.
Id. at 6:1-14. Means 80 also includes fan 100, for cooling working fluid 74
in a coo ling mode. Id. at 4: 13-1 7, 6: 10-12. Klausing indicates that, in
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comparison to other heat exchanger 70 embodiments disclosed in Klausing,
means 80 of heat exchanger 70 in Figure 4 "is integrated, but to a lesser
degree, into the entire structure of the apparatus, does not provide the same
level of cooling in the cooling mode, and is less efficient." Id. at 6:4--8; see
also id. at Figs. 2A, 2B, 3, 5, 6 (showing other embodiments).
Thus, it makes sense to refer to Klausing's exhaust stream circuit 78
as a primary heat exchanger, and to refer to Klausing' s auxiliary means 80
as an auxiliary heat exchanger. They both operate to cool or heat the same
stream of liquid for the same purpose, namely, working fluid 74 to provide
heat to other components of Klausing' s system. In normal operation,
exhaust stream circuit 78 alone heats working fluid 74, but"[ w ]here more
severe weather requires further heat input, a separate auxiliary heater [80,
104] can be used to further heat the working fluid." Id. at 1:32--48, 4:2-12.
In Klausing's system, using an auxiliary heat exchanging means 80 having a
relatively low efficiency to achieve cost savings makes sense, given the
limited usage of means 80 in the overall system.
Zhou's system, by contrast, is not similarly situated. Because Zhou's
radiators 119 and 153 operate to cool or heat different vehicle systems, the
engineering reason why Klausing can employ a less efficient heat exchanger
for its auxiliary means 80 does not apply to Zhou's alleged auxiliary
radiator 153. The Examiner does not provide any technical analysis or
reasoning sufficient to explain why it would nonetheless have been obvious
to modify Zhou, in light of Klausing, to reach the invention recited in
claim 1.
Moreover, while the Examiner discusses heat exchanger efficiency as
a general matter, the Examiner does not address the requirement of claim 1
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Application 12/817,971
for the differential cooling efficiency to be "such that the primary radiator
core rejects a given amount of heat to a reduced volume of airflow as
compared to the auxiliary radiator core." Br. 41 (Claims App.). That is,
even assuming a differential cooling efficiency would have been obvious in
Zhou, the Examiner does not provide reasoning to establish the obviousness
of the specific manner of differential cooling efficiency recited in the claim.
The Examiner relies on Prior in relation to the claimed airflow valve,
and relies on Abdeljawad in relation to the claimed first airflow path being
directed around the engine compartment, and not in relation to the
differential cooling efficiencies of the radiators. See Final Act. 3--4. Also,
the Examiner's additional consideration of dependent claims 4, 11, 12, and
21 does not cure the deficiency as to claim 1. See id. at 5-6. Thus, we do
not sustain the rejection of claims 1, 4, 11, 12, and 21 as having been
obvious over Zhou, Prior, Abdeljawad, and Klausing.
B. Obviousness over Prior, Abdeljawad, and Klausing
(claims 1, 4, and 13)
In rejecting claim 1, the Examiner cites Prior's radiator 32 as the
primary radiator, and cites Prior's radiator 30 as the auxiliary radiator. Final
Act. 6. However, the Examiner finds Prior's radiators are not disclosed as
satisfying the claim requirement for the cooling efficiency of radiator 32 to
be greater than that of radiator 30, by rejecting a given amount of heat to a
reduced volume of airflow. Id. The Examiner then relies on Klausing, in a
substantially similar fashion as in the first rejection described above, to
determine it would have been obvious to modify Prior so that radiator 32 has
a greater cooling efficiency than radiator 30. Id. at 7.
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Appellants contend, in part, that the Examiner's obviousness rationale
"exceeds the bounds of reason," for essentially the same reasons discussed
above in connection with the first rejection. Br. 31-32. The Examiner's
response, likewise, is essentially the same. Ans. 26-27.
We agree with Appellants' argument that the rejection presently
before us does not satisfy the Examiner's burden to provide a rational
underpinning sufficient to support the legal conclusion of obviousness. In
particular, the Examiner has not established a rational relationship between
Prior's primary and auxiliary radiators 32 and 30, and Klausing's primary
and auxiliary heat exchangers, that would provide a reason for a person of
ordinary skill in the art to modify Prior as proposed by the Examiner.
We first consider Prior. Figure 4 of Prior is reproduced below.
FIG .. 4
Prior's Figure 4 is a schematic side view of vehicle 10, illustrating heat
exchanger system 20A. Prior ,r,r 11, 17. Heat exchanger system 20A
includes radiator 30 which cools engine 14, and intercooler radiator 32
which cools the airflow between supercharger 18 and engine 14 to increase
the spark plug performance in engine 14. Id. ,r 13.
Thus, Prior's two radiators 32 and 30 operate to cool or heat different
vehicle systems. Radiator 32 cools a heat exchanging fluid, which circulates
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to and thereby cools the airflow entering engine 14 from supercharger 18.
Radiator 30 cools a different heat exchanging fluid, which circulates to and
thereby cools engine 14. The only intermixing between the two radiators is
that they both use the same airstream 28 to cool their respective heat
exchanging fluids.
From these considerations, it is not clear to us, and the Examiner does
not explain adequately, why the Examiner identifies radiator 32 as a primary
radiator, and identifies radiator 30 as an auxiliary radiator. In any event,
Prior's system is not similarly situated to Klausing's system. That is,
because Prior's radiators 32 and 30 operate to cool different vehicle systems,
the engineering reason why Klausing can employ a less efficient heat
exchanger for its auxiliary means 80 does not apply to Prior's auxiliary
radiator 30. The Examiner does not provide any technical analysis or
reasoning sufficient to explain why it would nonetheless have been obvious
to modify Prior, in light of Klausing, to reach the invention recited in
claim 1. Moreover, as with the first rejection considered above, the
Examiner does not provide reasoning to establish the obviousness of using,
in Prior, the specific manner of differential cooling efficiency recited in
claim 1.
The Examiner relies on Abdeljawad in relation to the claimed first
airflow path being directed around the engine compartment, and not in
relation to the relative cooling efficiencies of the radiators. See Final Act. 7.
Also, the Examiner's additional consideration of dependent claims 4 and 13
does not cure the deficiency as to claim 1. See id. at 8. Thus, we do not
sustain the rejection of claims 1, 4, and 13 as having been obvious over
Prior, Abdeljawad, and Klausing.
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C. Obviousness over Prior, Abdeljawad, Klausing, and one or more of
Amano, Iwasaki, Zhou, Banzhaf, Siler, and Harich
(claims 5-10, 14, and 15)
The Examiner's additional consideration of dependent claims 5-10,
14, and 15, and of Amano, Iwasaki, Zhou, Banzhaf, Siler, and Harich, does
not address the deficiency identified above in relation to independent
claim 1. See Final Act. 10-15. Therefore, for the reasons provided above,
we do not sustain the rejections of claims 5-10, 14, and 15 as having been
obvious over Prior, Abdeljawad, Klausing, and one or more of Amano,
Iwasaki, Zhou, Banzhaf, Siler, and Harich.
D. Obviousness over Thien and Klausing
(claims 16 and 22)
Claim 16
In rejecting independent claim 16, the Examiner cites Thieu's
radiator 5 as the primary radiator, and cites Thieu's radiator 8 as the
auxiliary radiator. Final Act. 15. However, the Examiner finds Thieu's
radiators are not disclosed as satisfying the claim requirement for the cooling
efficiency of radiator 5 to be greater than that of radiator 8. Id. The
Examiner then relies on Klausing, in a substantially similar fashion as in the
first rejection described above, to determine it would have been obvious to
modify Thien so that radiator 5 has a greater cooling efficiency than
radiator 8. Id. at 16. That is, according to the Examiner:
[I]t would be obvious ... to combine the invention of Thien with
that of Klausing to have of [Thieu's] primary radiator core is
greater than the cooling efficiency of [Thi en's] auxiliary radiator
core ... to provide cost savings through the use of a less efficient
component as the auxiliary radiator.
Id. ( emphasis added).
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Appellants contend the Examiner's stated motivation "to reduce the
efficiency of auxiliary radiator 8 ... for the purpose of cost savings is fully
unsupported by reasoning or citation." Br. 34. According to Appellants, the
Examiner's modification would undesirably "render the resulting cooling
system, which now contains a modified radiator [8] having a reduced
cooling efficiency, less effective [in] dissipating heat and therefore less
well-suited for its intended purpose." Id. Appellants further assert "the
Examiner has failed to provide any articulated reasoning explain[ing] why
one of ordinary skill in the art would have seen fit to purposeful[ly] reduce
the efficiency of auxiliary radiator 8 ... while simultaneously maintaining
( or increasing) the efficiency of radiator 5." Id.
We determine the Examiner has provided a rational underpinning for
the proposed obviousness of modifying Thien in light of Klausing, which is
supported by a preponderance of the evidence. We first consider Thien.
The sole Figure of Thien is reproduced below.
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Thieu's Figure shows a vehicle including two radiators 5 and 8, and
engine 2. Thien, 3:41--47, 3:55-58. The "radiators 5 and 8 may be arranged
in series or parallel with regard to water circulation" to engine 2, to cool the
engine. Id. at 3:66-4:4.
[T]he system is controlled in such a way that initially only the
fan [ 4] of the first cooling unit [ 4, 5] is operative whilst the
fan [7] of the second cooling unit [7, 8] comes automatically into
action only when engine heat output exceeds the capacity of the
first unit.
Id. at 2:50-55, 3:11-26, 3:55-58.
Thus, Thieu's two radiators 5 and 8 cool the same heat exchange fluid
(water) to cool the same vehicle component (engine 2). Radiator 8 "comes
automatically into action only when engine heat output exceeds the
capacity" of radiator 5, and is part of a "smaller" cooling unit that "assist[ s]
and support[s]" the cooling unit of radiator 5, so the Examiner's
identification of radiator 5 as a primary radiator and of radiator 8 as an
auxiliary radiator makes sense. Id. at 1:32-35, 2:50-55, 3:55-58.
Further, the Examiner has provided a rational underpinning sufficient
to support the obviousness of configuring Thieu's primary radiator 5 and
auxiliary radiator 8 such that the former has a greater cooling efficiency than
the latter, as recited in claim 16. First, it is important to note that Thien
indicates the cooling unit of primary radiator 5 "evacuate[ s] at least 60% of
maximum heat output by the engine," while the cooling unit of auxiliary
radiator 8 "must be capable of dealing with only about 31 %" of the engine's
maximum heat output. Id. at 2:42-50, 2:64---67. According to Thien, the
second cooling unit of radiator 8 "may be of considerably smaller
dimensions than" the first cooling unit of radiator 5. Id. at 2:67-3:4. Thus,
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although Thien does not disclose that the cooling efficiency of primary
radiator 5 is greater than that of auxiliary radiator 8, Thieu's system is
nonetheless consistent with using such a configuration. We are not
persuaded by Appellants' contention that reducing the cooling efficiency of
Thieu's auxiliary radiator 8 would render Thien less well-suited for its
intended purpose.
Further, Klausing recognizes that one need not use the most efficient
heat exchanger available for every implementation. In particular, Klausing
discloses various alternative structural configurations for an auxiliary
means 80 to a primary means 76 for heating heat exchange fluid 74. See
Klausing, 4:50-54, Figs. 2A, 2B, 3, 4, 5, 6. Klausing discloses that the
auxiliary means 80 in Figure 4 may be suitable for some implementations,
even though the auxiliary means 80 in Figure 4 "is less efficient" than the
other disclosed auxiliary means 80. Id. at 6:4--8; Br. 24 (reading Klausing in
the same manner). The Examiner finds "cost savings" is a reason why such
a less efficient heat exchanger may be used (Final Act. 16), and Appellants
do not provide any reason to doubt that finding.
Thus, the evidence of record establishes a person of ordinary skill in
the art would have appreciated that it may be beneficial to achieve cost
savings by using a less efficient heat exchanger, in situations where a greater
efficiency is not required. Further, a preponderance of the evidence
establishes that Thien presents such a circumstance, given the auxiliary role
played by radiator 8 within the overall cooling system of Thien, which is
similar to the auxiliary role played by auxiliary means 80 within the overall
cooling system of Klausing. We therefore conclude there is a rational
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underpinning for the Examiner's conclusion that claim 16 would have been
obvious over Thien and Klausing.
For the foregoing reasons, we sustain the rejection of claim 16 as
having been obvious over Thien and Klausing.
Claim 22
Claim 22 depends from claim 16. Br. 46 (Claims App.). In rejecting
claim 22, the Examiner provides "a different interpretation" of Thien, in
which Thieu's radiator 8 is cited as the primary radiator, and Thieu's
radiator 5 is cited as the auxiliary radiator. Final Act. 16-17. That is, the
Examiner determines it would have been obvious to modify Thien such that
the cooling efficiency of radiator 8 is greater than that of radiator 5. We
conclude the Examiner has not established a rational underpinning for this
modification, given the respective roles of the two radiators in Thien,
discussed in detail above. Therefore, we do not sustain the rejection of
claim 22 as having been obvious over Thien and Klausing.
E. Obviousness over Thien, Klausing, and Marsh (claim 17)
Appellants do not argue for the patentability of claim 17 separately
from its parent claim 16. See Br. 34--35. For the reasons provided above in
connection with claim 16, we sustain the rejection of claim 17 as having
been obvious over Thien, Klausing, and Marsh. 37 C.F.R. § 4I.37(c)(l)(iv).
F. Obviousness over Thien, Klausing, Marsh, and Christensen (claim 18)
Claim 18 depends from claim 16, and recites the airflow heated by the
primary radiator is directed "around and not into the engine compartment."
Br. 45 (Claims App.).
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The Examiner finds the airflow heated by Thi en's primary radiator 5
"mov[ es] air into and around the engine compartment." Final Act. 19
( emphasis added). The Examiner cites Christensen as curing this deficiency
ofThien. Final Act. 19--20 (citing Christensen, 1:7-19, 1:37-38); Ans. 29.
Appellants argue Christensen fails to disclose airflow heated by a
primary radiator being directed around and not into an engine compartment.
Br. 35-36 (citing Christensen, 1:7-19, 3:22-25, 4:46-50, Figs. 1-5, 7, 8).
We agree with Appellants. As representatively shown in Figure 3,
Christensen provides recirculation shield 30 and fan shroud 32 which
prevent recirculation of an airflow ( dashed arrows) passing through
radiator 22 and fan 24 back to the incoming airflow. See Christensen, 1 :7-
19, 1:36-38, 3:23-28, 3:50-61. In this way, the airflow is directed to and
through compartment 10 containing engine 20. Id. at 3: 1-9, 4: 1--4, 4:46-50,
Figs. 3, 7. Thus, the Examiner has not established any disclosure in the prior
art indicating that a primary radiator airflow may be directed around and not
into an engine compartment, as claimed.
For the foregoing reasons, we do not sustain the rejection of claim 18
as having been obvious over Thien, Klausing, Marsh, and Christensen.
G. Obviousness over Prior and Klausing (claim 19)
Independent claim 19 recites a primary radiator core and an auxiliary
radiator core, wherein "the auxiliary radiator core [has] a cooling efficiency
less than the cooling efficiency of the primary radiator core." Br. 45--46
(Claims App.).
In rejecting claim 19 as having been obvious over Prior and Klausing,
the Examiner cites Prior's radiator 32 as the primary radiator, and cites
Prior's radiator 30 as the auxiliary radiator. Final Act. 8. However, the
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Examiner finds Prior's radiators are not disclosed as satisfying the claim
requirement for the cooling efficiency of radiator 30 to be less than that of
radiator 32. Id. at 8-9. The Examiner then relies on Klausing, in a
substantially similar fashion as in the first rejection described above, to
determine it would have been obvious to modify Prior so that radiator 30 has
a lower cooling efficiency than radiator 32. Id. at 9.
Appellants contend the rejection is in error for reasons analogous to
those presented against the rejection of claim 1 as having been obvious over
Prior, Abdeljawad, and Klausing. Br. 39. The Examiner's response,
likewise, is the same. Ans. 29.
For the reasons provided above in connection with the proposed
obviousness of claim 1 over Prior, Abdeljawad, and Klausing, we agree with
Appellants' argument that the rejection presently before us does not satisfy
the Examiner's burden to provide a rational underpinning sufficient to
support the legal conclusion of obviousness. Therefore, we do not sustain
the rejection of claim 19 as having been obvious over Prior and Klausing.
H Obviousness over Prior, Klausing, and Thien (claim 20)
The Examiner's additional consideration of dependent claim 20, and
of Thien, does not address the deficiency identified above in relation to
independent claim 19. See Final Act. 9-10. Therefore, for the reasons
provided above, we do not sustain the rejection of claim 20 as having been
obvious over Prior, Klausing, and Thien.
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DECISION
The Examiner's decision to reject claims 1, 4--15, and 18-22 is
REVERSED. The Examiner's decision to reject claims 16 and 17 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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