Ex Parte Gokhale et alDownload PDFPatent Trial and Appeal BoardSep 26, 201211167420 (P.T.A.B. Sep. 26, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MANOJ PRAKASH GOKHALE, ROY JAMES PRIMUS, and KENDALL ROGER SWENSON ____________ Appeal 2010-009398 Application 11/167,420 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009398 Application 11/167,420 - 2 - STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-26, 28, 29, 31, 33-37, 40-42, and 46-47. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to a system and method for controlling compressor choke in a turbocharged engine operated at high altitudes. Spec. 1, para. [0001]. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A method of operating a turbocharged system, comprising: controlling speed of a turbocharger and substantially eliminating choke of a compressor coupled to a turbine by adjusting exhaust flow through a turbine waste gate, or by adjusting airflow through a compressor recirculation valve, or by adjusting a combination thereof in response to various parameters including compressor inlet temperature, compressor inlet pressure, and turbocharger speed; wherein: if the compressor inlet pressure and the compressor inlet temperature are less than first preselected values, then controlling comprises: at least partially opening the turbine waste gate, or the compressor recirculation valve, or a combination thereof if the turbocharger speed is greater than a first preselected speed; or at least partially closing the turbine waste gate, or the compressor recirculation valve, or a combination thereof if the turbocharger speed is less than a second preselected speed; or if the compressor inlet pressure and the compressor inlet temperature are greater than second preselected values, then controlling comprises at least partially closing the turbine wastegate. Appeal 2010-009398 Application 11/167,420 - 3 - THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Kobayashi US 4,713,965 Dec. 22, 1987 Hayashi US 5,829,254 Nov. 3, 1998 Berger DE 197 05 463.31 Aug. 20, 1998 Wright US 6,782,737 B2 Aug. 31, 2004 Boley US 6,990,814 B2 Jan. 31, 2006 Ge US 7,143,580 B2 Dec. 5, 2006 The following rejections are before us for review. 1. Claims 1- 4, 7-9, 11, 12, 17, 18, 20, 21, 23-26, 29 and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hayashi.1 2. Claims 5, 6, 28, and 31 are rejected under 35 USC §103(a) as being unpatentable over Hayashi and Berger. 3. Claims 10 and 42 are rejected under 35 USC § 103(a) as being unpatentable over Hayashi and Ge. 4. Claims 13 and 14 are rejected under 35 USC § 103(a) as being unpatentable over Hayashi and Wright. 5. Claims 15 and 16 are rejected under 35 USC § 103(a) as being unpatentable over Hayashi, Wright, and Berger. 6. Claim 19 is rejected under 35 USC § 103(a) as being unpatentable over Hayashi and Kobayashi. 1 Although the Examiner set forth the rejection of claims 20 and 21 (App. Br. 13) as a separate ground of rejection from the rejection of claims 1-4, 7-9, 11, 12, 17, 18, 23-26, 29, and 33 (App. Br. 4), we have consolidated the two rejections as both rejections are under 35 U.S.C. § 103(a) as unpatentable over Hayashi. Appeal 2010-009398 Application 11/167,420 - 4 - 7. Claims 22, 34, 37, 40, and 41 are rejected under 35 USC § 103(a) as being unpatentable over Hayashi, Boley, and Ge. 8. Claims 35, 46, and 47 are rejected under 35 USC § 103(a) as being unpatentable over Hayashi, Ge, and Berger. 9. Claim 36 is rejected under 35 USC § 103(a) as being unpatentable over Hayashi, Ge, and Wright. ANALYSIS Rejection 1 – Obviousness based on Hayashi The Examiner finds that Hayashi discloses the step of comparing atmospheric pressure with a preselected value (ratio of PDmax/PRT), but fails to separately and directly compare compressor inlet temperature to a preselected value per se. Ans. 6-7. The Examiner also finds that Hayashi stores preselected pressure ratio data as a function of turbocharger speed, inlet pressure, and inlet temperature and inasmuch as Hayashi compares inlet pressure with the preselected value of PDmax/PRT, the value of the compressor inlet temperature being less than a preselected value can be derived using the formula for the ideal gas law. Ans. 7. The Examiner notes that it is well known in the art to: selectively open and close a turbine waste gate and/or a compressor recirculation valve in response to parameters including turbocharger speed; selectively open a turbine waste gate to avoid back pressure of the exhaust gas; and selectively open a compressor recirculation valve to avoid a surge, choke, or other abnormal condition in the compressor. Ans. 7-8. However, the Examiner fails to make any conclusion of law with respect to whether it would have been obvious to one of ordinary skill in the art to modify Hayashi to generate a preselected Appeal 2010-009398 Application 11/167,420 - 5 - comparison value for atmospheric temperature and use such comparison value in the control logic that generates control commands to the waste gate actuator. See Ans. 4-8. The initial burden of presenting a prima facie case of obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the Appellant. See Oetiker at 1445; see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Where there is an attempt to show obviousness over a single reference, there must also be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antic, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness rejection relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court has admonished lower courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn). In the instant case, the key difference between Hayashi and the claimed invention is how atmospheric temperature is taken into account in Appeal 2010-009398 Application 11/167,420 - 6 - determining a control command to a waste gate actuator. Both systems detect operating conditions for turbocharger speed, atmospheric pressure, and atmospheric temperature. Both systems also store data based on preselected values of, or at least derived from, turbocharger speed, atmospheric pressure, and atmospheric temperature. However, we agree with the Appellants that there is a difference between how the two systems compare actual operating data to preselected values in order to derive control commands to the waste gate. Appellants assert that their invention requires that both inlet pressure and inlet temperature are each separately compared to preselected values. App. Br. 12-15. We note the use of the plural form of ‘values’ in claim 1: “if the compressor inlet pressure and the compressor inlet temperature are less than first preselected values.†See App. Br., Clms. App’x. Emphasis added. We also agree with the Appellants that Hayashi does not perform two separate, discrete comparisons, namely, a first comparison based on pressure and a second, separate comparison based on temperature, before determining a control command to the waste gate. App. Br. 12.2 The Examiner found that “Hayashi fails to disclose the compressor inlet temperature value being less than a preselected value†(Ans. 6), and 2 Because claim 1 requires that both inlet pressure and inlet temperature are less than first preselected values when the turbocharger speed is greater than a first preselected speed in order to generate a control command to open the turbine waste gate, it is at least theoretically possible that inlet pressure could be less than a first preselected value and the turbocharger speed could be greater than a first preselected speed and yet no control command to open the turbine waste gate would be generated by the control system because the inlet temperature is not also less than a first preselected value. Appeal 2010-009398 Application 11/167,420 - 7 - merely observed that it is possible to derive a preselected comparison value for atmospheric temperature using the formula for the ideal gas law (Ans. 26-28). The Examiner, as the party with the initial burden, failed to offer any articulated reasoning with rational underpinning to explain why it would have been obvious to a person of ordinary skill in the art to modify Hayashi to not only generate the preselected comparison value for atmospheric temperature, but also to use such comparison in the control logic that generates control commands to the waste gate actuator. Thus, because the Examiner did not articulate any reason supported by a rational underpinning as to why it would have been obvious to a person of ordinary skill in the art to modify Hayashi to achieve the claimed subject matter, the burden never shifted to Appellants to come forward with evidence or argument to overcome the Examiner’s rejection. See also App. Br. 11-15. Accordingly, we do not sustain the Examiner’s rejection of claims 1- 4, 7-9, 11, 12, 17, 18, 20, 21, 23-26, 29, and 33 as unpatentable over Hayashi. Rejections 2-9 Obviousness based on Hayashi/Berger, Hayashi/Ge, Hayashi/Wright, Hayashi/Wright/Berger, Hayashi/Kobayashi, Hayashi/Boley/Ge, Hayashi/Ge/Berger, and Hayashi/Ge/Wright Appellants argue that none of Berger, Ge, Wright, Kobayashi, and Boley cure the deficiency of the Examiner’s obviousness rejection based on Hayashi alone. App. Br. 15-20. We agree. Accordingly, we also do not sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of: claims 5, 6, 28, and 31 as unpatentable over Hayashi and Berger; claims 10 and 42 as unpatentable over Hayashi and Ge; claims 13 and 14 as unpatentable over Hayashi and Wright; claims 15 and 16 as unpatentable over Hayashi, Appeal 2010-009398 Application 11/167,420 - 8 - Wright, and Berger; claim 19 as unpatentable over Hayashi and Kobayashi; claims 22, 34, 37, 40, and 41 as unpatentable over Hayashi, Boley, and Ge; claims 35, 46, and 47 as unpatentable over Hayashi, Ge, and Berger; and, claim 36 as unpatentable over Hayashi, Ge, and Wright. DECISION We REVERSE the Examiner’s rejections of claims 1-26, 28, 29, 31, 33-37, 40-42, 46, and 47. REVERSED Klh Copy with citationCopy as parenthetical citation