Ex Parte DOBRYDEN et al

Patent Trial and Appeal Board

Dec 28, 2018

14565950 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/565,950 12/10/2014
28395 7590 01/02/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Allen Dennis DOBRYDEN
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.
83473914 4691
EXAMINER
RUPPERT, ERIC S
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN DENNIS DOBRYDEN, DANIEL NEVILLE,
MICHAEL REIBLING, KEITH A. CAMPBELL, and PHILIP WARNER
Appeal2018-004065
Application 14/565,950
Technology Center 3700
Before CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ford Global Technologies, LLC ("Appellant") 1 appeals under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-16,
which are all the pending claims. See Appeal Br. (Cover Page); Final Act. 1
(Office Action Summary). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
Ford Global Technologies, LLC is the applicant, as provided in
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 1.
Appeal2018-004065
Application 14/565,950
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates generally to an exhaust gas
heat recovery unit that includes a heat exchanger combined with a noise
reduction member in a single unit." Spec. ,r 1. Claims 1, 13, and 16 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. An exhaust gas heat exchanger, comprising:
a noise reduction member arranged side-by-side and
integrated with the heat exchanger as a single unit, a common
wall member partially defining the noise reduction member and
the heat exchanger, wherein a heat exchanger outlet opens
directly into a chamber of the noise reduction member.
EVIDENCE
The Examiner relied on the following evidence2 in rejecting the
claims on appeal:
Kofink DE 1248373 Aug. 24, 1967
Kuzmenko SU 1543104 Al Feb. 15, 1990
Hur KR 2002-0046504 June 21, 2002
Humburg3 DE 10 2006 060 388 Al June 26, 2008
2 We note that each of these references includes an English-language
translation made of record with the Non-Final Office Action dated
November 16, 2016.
3 We note that both the Examiner and Appellant refer to this reference
as "Humberg" throughout the record.
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Application 14/565,950
REJECTIONS
The following rejections are before us for review:
I. Claims 1-6 and 9-11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kuzmenko and Humburg. Final
Act. 2-5.
II. Claims 7, 8, and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kuzmenko, Humburg, and Hur. Id.
at 5-8.
III. Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kuzmenko, Humburg, and Kofink. Id.
at 8-9.
IV. Claims 13-15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kuzmenko, Humburg, Kofink, and Hur. Id.
at 9-12.
ANALYSIS
Each of independent claims 1, 13, and 16 recites, in relevant part, an
exhaust gas heat exchanger and a noise reduction member ( or resonator) that
are "integrated" as a single "unit," where "a common wall member" at least
partially defines both the heat exchanger and the noise reduction member,
and where the heat exchanger includes an "outlet" that "opens directly into"
a chamber of the noise reduction member. Appeal Br., Claims App. In
rejecting the claims, the Examiner finds that Kuzmenko meets these recited
limitations, with the exception of the common wall member, and relies on
Humburg for disclosing a common wall that partially defines both a heat
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Appeal2018-004065
Application 14/565,950
exchanger and a noise reduction member. See Final Act. 2-3, 6-8, 9-11;
Ans. 15.
Appellant persuasively asserts, however, that neither Kuzmenko nor
Humburg teaches ( as part of an integrated unit including an exhaust gas heat
exchanger and a noise reduction member), a "heat exchanger outlet" that
"opens directly into" a chamber of the noise reduction member, as recited in
the claims. See Appeal Br. 6-7; Reply Br. 4--5. As an initial matter, we
understand Appellant's claims, interpreted in light of the accompanying
disclosure, to require that the heat exchanger outlet open "directly into" the
noise reduction member via an opening in a common wall that partially
defines these elements (see, e.g., Fig. 1 ), as opposed to via any external
piping or other conduit as in Kuzmenko and Humburg. Not only does this
understanding correspond to the only disclosed embodiment of the claimed
arrangement, it is further bolstered by the plain language of the claims,
which all recite that the outlet "opens directly into" (as opposed to merely
flows into or goes into, whether directly or indirectly).
Given this understanding of the claims, we agree with Appellant that
the evidence relied on in the rejections is deficient with respect to this
recited limitation. Specifically, the art cited by the Examiner does not
disclose such a heat exchanger outlet that "opens directly into" a chamber of
a noise reduction member; rather, Kuzmenko and Humburg both include
external piping or other conduit such that the outlets of the identified heat
exchangers "open directly into" the piping or conduit, from which exhaust
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Application 14/565,950
gas then flows into the noise reduction members. See Kuzmenko, Fig (at
least element 9); Humburg, Figs. 1-3 (at least area 48). 4
In short, we agree with Appellant that the Examiner has not
established by a preponderance of the evidence that Kuzmenko or Humburg,
as relied on in the rejections, teaches the recited directly-opening outlet of
the heat exchanger. Thus, even if one of ordinary skill in the art were to
modify the arrangement of Kuzmenko to include a common wall member as
in Humburg, such an arrangement would still lack the heat exchanger having
an outlet that "opens directly into" a chamber of the noise reduction member
absent additional modifications to replace the external piping or other
conduit with a directly-opening outlet of the heat exchanger. 5
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
4 We note that the Examiner relied on Hur and Ko fink for teaching
additional claimed features, but not in a way that would cure the above-
noted deficiency with respect to the directly-opening outlet of the heat
exchanger; further, we observe that these references also appear to similarly
include external piping or other conduit between a heat exchanger and a
noise reduction member. See, e.g., Hur, Fig. 1; Kofink, Fig.
5 We note that it is not the province of the Board, during appellate
review, to pass judgment on the ultimate issue of patentability of claims in
the abstract. Instead, we limit our review to the decisions of the Examiner as
presented in the rejections of record, in light of the arguments made, to
evaluate whether an appellant persuasively apprises the Board of error.
Because the Patent Trial and Appeal Board is a review body, rather than a
place of initial examination, we decline to make a determination as to what
one of ordinary skill in the art may conclude based on a properly constrained
understanding of the claims here, as discussed above; rather, we leave it to
the Examiner to determine the appropriateness of any course of action
should there be further prosecution of this application. See Ex Parte Frye,
94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). In this case, the rejections fail to meet
this required standard.
Accordingly, based on the record presently before us, the Examiner
has not met the burden of establishing a proper prima facie case of
obviousness. On this basis, we do not sustain Rejections I-IV.
DECISION
We REVERSE the Examiner's rejections of claims 1-16.
REVERSED
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