12321363 (P.T.A.B. Jun. 10, 2014)

Ex Parte Elbert et al

Patent Trial and Appeal BoardJun 10, 2014

12321363 (P.T.A.B. Jun. 10, 2014)

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. 12/321,363 01/20/2009 Andreas Elbert MB 730 7700 7590 06/11/2014 KLAUS J. BACH & ASSOCIATES PATENT AND TRADEMARKS 4407 TWIN OAKS DRIVE MURRYSVILLE, PA 15668 EXAMINER EVANS, BRYAN A ART UNIT PAPER NUMBER 3618 MAIL DATE DELIVERY MODE 06/11/2014 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 ANDREAS ELBERT, PETER GERE, ARNOLD KLIMAS, LENA KRIMSTEIN, VAN DUNG NGUYEN, and WERNER WALTER ____________________ Appeal 2012-006014 Application 12/321,363 Technology Center 3600 ____________________ Before: LYNNE H. BROWNE, JILL D. HILL, and TIMOTHY J. GOODSON, Administrative Patent Judges GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andreas Elbert, Peter Gere, Arnold Klimas, Lena Krimstein, Van Dung Nguyen and Werner Walter (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 2, 4-6, and 8-17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a motor vehicle in which a power electronics system is arranged in the engine compartment above the internal Appeal 2012-006014 Application 12/321,363 2 combustion engine and below the hood. Spec., p. 2, ll. 12-18. Independent claim 1 is reproduced below: 1. A motor vehicle having a drive unit with an internal combustion engine (VM), disposed in an engine compartment provided with a hood (M) and an electrical machine for at least assisting in driving the vehicle and for generating electric energy, and a power electronics system (LE) for operating the motor vehicle by at least one of the internal combustion engine (VM) and the electrical machine by controlling the electric power supplied to, and by, the electric machine during operation of the motor vehicle by the internal combustion engine and the electrical machine, the power electronics system (LE) being arranged in the engine compartment above the internal combustion engine (VM) and below the hood (M), within a housing (G) which is disposed above the engine at a minimum distance from the engine compartment hood (M), the housing (G) being mechanically connected to, and supported by, body parts of the motor vehicle. PRIOR ART The Examiner relies on the following evidence: Summers Asao Iverson Sakata Minami US 6,302,385 B1 US 2004/0211613 A1 US 6,828,755 B1 US 7,032,699 B2 JP 2007-269097 Oct. 16, 2001 Oct. 28, 2004 Dec. 7, 2004 Apr. 25, 2006 Oct. 18, 2007 GROUNDS OF REJECTION Claims 1, 2, 4-6, 8, 9, 11-14 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Asao in view of Iverson and Minami. Ans. 5. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Asao in view of Iverson, Minami, and Summers. Ans. 8. Appeal 2012-006014 Application 12/321,363 3 Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Asao in view of Iverson and Sakata. Ans. 9. OPINION The Examiner finds that Asao discloses a motor vehicle as recited in claim 1, including a power electronics system arranged above an internal combustion engine, except that Asao does not teach a housing that is mechanically connected to and supported by body parts of the motor vehicle. Ans. 5. The Examiner finds that Minami discloses such an arrangement and that it would have been obvious to modify Asao to mechanically connect the housing to the body parts in order to strengthen the body without adding additional reinforcement. Ans. 6. The Examiner additionally states that “[w]hile Asao is understood to have a hood, Asao does not specifically show or teach a hood or the power electronics system being arranged below the hood.” Ans. 5. However, the Examiner finds that Iverson discloses a hood and the power electronics system being arranged below the hood, and that it would have been obvious to modify Asao to include a hood and a power electronics system below the hood to improve the vehicle’s aerodynamics and aesthetics. Ans. 5-6. The Examiner determines that Asao’s inverter unit 4 corresponds to the claimed “power electronics system,” Asao’s engine 1 corresponds to the claimed “internal combustion engine,” Asao’s rotary electric machine 2 corresponds to the claimed “electrical machine,” and Asao’s mounting plate 15, case 46 and heat sink 47 correspond to the claimed “housing.” Ans. 5. Upon reviewing the Examiner’s findings and the disclosure of Asao, we are unable to determine what portions of Asao the Examiner considers to Appeal 2012-006014 Application 12/321,363 4 disclose the limitation in claim 1 that the power electronics system is arranged in the engine compartment “above the internal combustion engine (VM).” We note that Figure 3 of Asao shows the inverter unit 4, the case 46 and the heat sink 47 positioned above the rotary electric machine 2. See also Asao ¶¶ 42, 45. Yet Figure 3 does not appear to indicate where the internal combustion engine 1 is located relative to these components. Further, the Examiner does not find that the other cited references disclose a power electronics system that is arranged above the internal combustion engine. The Examiner finds that Iverson discloses a hood with a power electronics system arranged below the hood, but the Examiner does not find that Iverson discloses that the power electronics system is arranged above the internal combustion engine. Ans. 5. As Appellants point out, Figure 1 of Iverson depicts the battery system module 10 to the side of the engine 16, not above it. App. Br. 4. Lacking a more thorough explanation of how Asao’s disclosure teaches the power electronics system being arranged in the engine compartment “above the internal combustion engine,” or why such an arrangement would be obvious based on the teachings of the cited references, the Examiner fails to meet the burden of establishing a prima facie case of obviousness of claim 1. We therefore do not sustain the rejection of claim 1, and claims 2, 4-6, and 8-17 which depend therefrom. While the rejections of claims 10, 15 and 16 are based additionally on the disclosures of Summers or Sakata, the Examiner does not assert that either of these additional references overcome the deficiencies discussed above regarding the arrangement of the power electronics system above the internal combustion engine. We therefore do not sustain the rejection of Appeal 2012-006014 Application 12/321,363 5 claims 10, 15, and 16 for the same reason as discussed supra with respect to claim 1. DECISION We REVERSE the Examiner’s rejection of claims 1, 2, 4-6, and 8-17. REVERSED mls