Ex Parte Khelifa et al

Patent Trial and Appeal Board

Dec 16, 2015

10571698 (P.T.A.B. Dec. 16, 2015)

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.
10/571,698 11/29/2006 Noureddine Khelifa 8949-91895 9711
22242 7590 12/16/2015
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
GONZALEZ, PAOLO
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
12/16/2015 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 NOUREDDINE KHELIFA and WOLFGANG KRAMER
__________

Appeal 2013-009147
Application 10/571,6981
Technology Center 3700
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Noureddine Khelifa and Wolfgang Kramer (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1–9. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

1 The Appellants identify Webasto SE as the real party in interest. App. Br.
4.
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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A heating and air-conditioning system for a motor vehicle,
in particular a utility vehicle, in order to heat and cool the inside
of a motor vehicle during a running-state and a stop-state of the
motor vehicle, wherein the inside of the motor vehicle is
divided into a front region and a rear region, which can be
heated and cooled separately, comprising:
a front system for heating and cooling the front region
during the running-state of the motor vehicle,
a rear system for heating and cooling the rear region
during the running-state of the motor vehicle, and
a stop-state system for heating and cooling at least the
rear region when the motor vehicle is in the stop-state,
characterized in that the stop-state system is integrated
into the rear system.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Horn US 2003/0192952 A1 Oct. 16, 2003
Brummett US 6,932,148 B1 Aug. 23, 2005

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 23, 2013) and Reply Brief (“Reply Br.,” filed July 12, 2013),
and the Examiner’s Final Office Action (“Final Act.,” mailed Dec. 30, 2011)
and Answer (“Ans.,” mailed May 15, 2013).
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The following rejections are before us for review:
1. Claims 1, 4/1, 6/1, 8, and 9 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Horn.
2. Claims 2, 3, 4/2, 4/3, 6/2, and 6/3 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Horn.
3. Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horn and Brummett.

ISSUES
Did the Examiner err in rejecting claims 1, 4/1, 6/1, 8 and 9 under 35
U.S.C. § 102(b) as being anticipated by Horn?
Did the Examiner err in rejecting claims 2, 3, 4/2, 4/3, 6/2, and 6/3
under 35 U.S.C. § 103(a) as being unpatentable over Horn?
Did the Examiner err in rejecting claims 5 and 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Horn and Brummett?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Final Office
Action and Examiner’s Answer. Additional findings of fact may appear in
the Analysis below.

ANALYSIS
The rejection of claims 1, 4/1, 6/1, 8 and 9 under 35 U.S.C. § 102(b) as
being anticipated by Horn
Claim 1
We will sustain the rejection of claim 1.
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The Appellants challenge the rejection of claim 1 solely on the ground
that Horn does not teach that “the stop-state system is integrated into the rear
system,” as recited in claim 1. App. Br. 7; Reply Br. 1–4.
The Examiner responds that “[a]ccording to the Merriam-Webster
online dictionary, the meaning of the term ‘integrated’ is defined as
following: ‘to [form], coordinate, or blend into a functioning or unified
whole;’ ‘to unite with something else;’ ‘to incorporate into a large unit;’
etc.” Ans. 2. According to the Examiner:
the term ‘integrated’ is being given the broadest reasonable
interpretation (i.e. ‘to [form], coordinate, or blend into a
functioning or unified whole;’ to unite with something else;’ ‘to
incorporate into a large unit’); thus, since Horn’s rear system
(12) and the stop-state system (50) are connected (i.e.,
united/unified) via circuit (29) (see figs. 1–4) in order to operate
together so as to provide cooling and/or heating to the rear
region (i.e., sleeping berth of the cab), it is understood that the
stop-state system (50) is integrated into the rear system (12).
Id. at 2–3.
In reply, the Appellants assert that “[t]he Examiner’s Answer
improperly focuses on the term ‘integrated’ without giving weight to the
term ‘into.’” Reply Br. 2. According to the Appellants, “Merriam-Webster
online dictionary defines ‘into’ as ‘used as a function word to indicate entry,
introduction, insertion, superposition, or inclusion.’” Id. In light of this
definition, the Appellants argue that the rejection is flawed because “FIG. 2
of Horn clearly shows that the rear system (12) of Horn does not enter, is not
introduced into, is not inserted into, is not superposed or included in the
stop-state system (50) of Horn.” Id. The Appellants further argue that
pending claims must be given their broadest reasonable interpretation
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consistent with the Specification, and the Examiner’s interpretation of claim
1 set forth in the Answer is not consistent with the Appellants’ Specification.
Id. at 2–3 (citing Spec. 4:15–19, 12:27–13:2). In particular, the Appellants
contend that the cited passages of the Specification “do not define
integration of the stop-state system 16 into the rear system 14 as being a
connection of the stop-state system 16 and the rear system 14 via a circuit.”
Id. at 3.
The Appellants are correct that during examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification. See In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
However, the Appellants’ proposed definition of “integrated into” as
requiring the rear system to enter, be introduced into, inserted into,
superposed, or included in the stop-state system is not consistent with the
Specification. For example, the Specification indicates that Figure 3 depicts
an “integration of the stop-state system 16 into the rear system 14.” Spec.
12:26–28. As can be seen from Figure 3, the stop-state system 16 does not
enter, is not introduced into, is not inserted into, is not superposed, and is not
included in the rear system 14. Thus, in light of the Specification, the claim
phrase “integrated into” cannot be limited to require “entry, introduction,
insertion, superposition, or inclusion” of the rear system in the stop-state
system as argued by the Appellants.
Furthermore, although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The cited portions of the Appellants’ Specification disclose that integration
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of the stop-state system into the rear system is achieved by supplying the
components of the two systems with air flow from a common blower. See
Spec. 4:15–19, 12:27–13:2. We first note that claim 1 does not recite air
flow from a common blower, but only recites that “the stop-state system is
integrated into the rear system.” Consequently, Appellants’ arguments are
not persuasive because the claim is not so limited. Cf. In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (Because “applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.”) (citation
omitted). We further note that dependent claim 2 recites that components of
the two systems are “supplied with an air flow by the same blower.”
“[C]laim differentiation normally means that limitations stated in dependent
claims are not to be read into the independent claim from which they
depend.” Nazomi Commc'ns, Inc. v. Arm Holdings, PLC., 403 F.3d 1364,
1370 (Fed. Cir. 2005) (quoting Karlin Techs., Inc. v. Surgical Dynamics,
Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999). Therefore, we decline to read
into independent claim 1 a requirement that the two systems are supplied
with an air flow by a common blower.
In view of the forgoing, the claim phrase “the stop-state system is
integrated into the rear system” is reasonably broadly construed to cover the
configuration disclosed in Horn wherein rear system (12) and stop-state
system (50) are connected via cooling agent circuit (29).
Accordingly, we sustain the rejection of claim 1.

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Claim 4/1
The Appellants challenge the rejection of claim 4/1 on the ground that
Horn does not disclose the limitation of claim 4/1 reciting “an evaporator of
the front system, an evaporator of the rear system and a cold accumulator of
the stop-state system communicate with the same condenser.” App. Br. 8;
Reply Br. 4. According to the Appellants, “[a]s seen in Figure 1 of Horn,
the front system 10 and the stop-state system 50 communicate with a ‘same
condenser’ 44 but the rear system 12 does not communicate with the ‘same’
condenser 44.” Id. We agree with Appellants. Horn does not disclose any
communication between evaporator 20 of rear system 12 and condenser 44.
Although Figure 1 shows that heat exchanger 20 and condenser 44 are part
of the same system, we fail to see any communication between exchanger 20
and condenser 44. Therefore, we do not sustain the Examiner’s rejection of
claim 4/1.

Claim 6/1
The Appellants challenge the rejection of claim 6/1 solely on the
ground that “the Examiner has erroneously read the two different condensers
in this claim onto the single condenser 44 in Horn.” App. Br. 8. According
to Appellants:
Claim 6/1 on appeal requires the evaporator of the rear system
and the cold accumulator of the stop-state system to
communicate with the “same” condenser, and that the front
system has its “own” condenser. The noted claim language
clearly indicates two different condensers.
Reply Br. 5.
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We do not find Appellants’ argument persuasive. Claim 6/1 recites
“the front system comprises its own condenser and its own compressor.”
The phrase “its own” indicates that the condenser belongs to the front
system but does not preclude the condenser of the front system from being
shared with the rear system and the stop-state system. Therefore, we sustain
the Examiner’s rejection of claim 6/1.3

Claims 8 and 9
The Appellants do not challenge the rejection of claims 8 and 9.
Therefore, we summarily sustain the Examiner’s rejection of claims 8 and 9.

The rejection of claims 2, 3, 4/2, 4/3, 6/2, and 6/3 under 35 U.S.C. § 103(a)
as being unpatentable over Horn
Claim 2
The Examiner takes the position that Horn discloses all that is claimed
but for the claim limitation “the cooling heat exchanger, a heating heat
exchanger of the rear system and an evaporator of the rear system are
supplied with an air flow by the same blower.” Final Act. 4.
The Examiner concludes that:
It would have been obvious to one of ordinary skill in the
art at the time of the invention was made to rearrange the
cooling heat exchanger (30) within the system in order to be
supplied with an air flow by a same blower, since it has been
held that rearranging parts of an invention involves only routine

3 We note that Appellants have not made the same argument for claim 6/1 as
for claim 4/1, namely that the “evaporator 20” of the rear system cannot
communicate with condenser 44.
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skill in the art; and so as to reduce the manufacturing cost of the
system by using less materials (i.e., pipes) when manufacturing
the system.
Id. at 4–5.
The Appellants challenge the rejection on the ground that the
Examiner’s reason for modifying Horn is insufficient. See App. Br. 9–10.
In particular, the Appellants argue that the rearrangement of parts by itself is
insufficient to support a finding of obviousness and that the prior art must
provide a reason, without the benefit of Appellants’ Specification, to make
the necessary changes in the reference device. App. Br. 9 (citing Ex parte
Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)). With
respect to the Examiner’s statement that the proposed modification would
“reduce the manufacturing cost of the system by using less materials,” the
Appellants argue that “this statement by the Examiner is nothing more than
the Examiner’s opinion, and is not buttressed by any evidence in the record.”
Id.
Absent unexpected results, it would have been obvious to rearrange
the components of Horn. Cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”). Appellants do not show that the Examiner’s combination would
do more than yield expected results, and consequently, the Appellants’
argument is unpersuasive as to error in the rejection.
The Appellants also argue:
Since the proposed modification to Horn would modify the
operation of the Horn heating and cooling system, the Examiner
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has erroneously concluded that it would have been obvious to
the skilled artisan to rearrange the heat exchanger 30 within the
Horn system so that it would be supplied with air flow by the
blower 28.
App. Br. 9 (citing In re Japikse, 181 F.2d. 1019 (CCPA 1950)); see also
Reply Br. 6 (“modification of Horn as suggested by the Examiner would
modify the principle of operation of the rear system 12 as well as the stop-
state system 50 contrary to the guidance in the MPEP”). We do not find this
argument persuasive because Appellants are not relying on the proper
standard for determining propriety of the Examiner’s proposed combination
in light of operability of the resulting device. Specifically, Appellants argue
that any modification to the operation of a device weighs against
obviousness, which is incorrect. In contrast, the case law states that where
the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
would not have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984). Appellants do not assert that the Examiner’s proposed
modification would render the device of Horn unsatisfactory for its intended
purpose or inoperable.
Appellants further argue that “it makes little sense to provide an air
flow to the second heat exchanger 30 in Figure 1 of Horn” because second
heat exchanger 30 “is used to transfer heat from the second cooling agent
circuit 29 to the cold reservoir 18 in order to cool the cooling agent in the
second cooling agent circuit 29.” Reply Br. 6. Appellants’ argument is not
persuasive because it amounts to attorney argument, not record evidence
sufficient to rebut the Examiner’s prima facie case of obviousness. See In re
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Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Attorney argument cannot
take the place of record evidence.).
Claims 3, 6/2 and 6/3
Appellants do not separately argue the rejection of claims 3, 6/2, and
6/3, each of which depends from claim 2. Therefore, we sustain the
rejection of claims 3, 6/2, and 6/3 for the reasons discussed above regarding
claim 2.
Claims 4/2 and 4/3
The Examiner’s proposed modification to Horn does not cure the
deficiency of Horn discussed above in regard to claim 4/1. Thus, we do not
sustain the rejection of claims 4/2 and 4/3 for the reasons discussed above
with regard to claim 4/1.

The rejection of claims 5 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Horn and Brummett
Claim 5
Appellants challenge the rejection on the ground that Horn does not
teach that “an evaporator of the front system and an evaporator of the rear
system communicates with a same condenser,” as required by claim 5.
According to Appellants, “an evaporator in the rear system 12 cannot
communicate ‘structurally’ or in any manner with a ‘same condenser’ 44 as
required by claim 5.” App. Br. 10. We agree, for the same reasons
discussed above with respect to claim 4/1. Thus, we do not sustain the
rejection of claim 5.
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Claim 7
The Examiner’s position is that Horn teaches every limitation of claim
7, except the compressor operable in the stop-state, for which the Examiner
relies on Brummett. Final Act. 6. The Examiner concludes that “[i]t would
have been obvious to one of ordinary skill in the art at the time of the
invention was made to have the compressor of Horn to operate in a stop-
state as in view of Brummett so as to make the vehicle more fuel efficient.”
Id.
Appellants argue that the Examiner’s proposed modification “would
improperly change the operation of the compressor 42 with respect to the
stop-state system 50.” App. Br. 10 (citing Horn ¶ 37 wherein the
compressor 42 is not driven during the operation of the stop-state system
50). We do not find this argument persuasive because it is based on the
incorrect standard for determining obviousness based on the operability of
the resulting device. Appellants merely argue that the Examiner’s proposed
combination would change the operation of compressor 42 but do not
establish that the change would render the system inoperable or
unsatisfactory. See Tec Air Inc. 192 F.3d at 1360; In re Gordon, 733 F.2d at
902. Moreover, we see no reason that the auxiliary engine 51 of Brummett
could not power compressor 42 of Horn in the same way that it powers
compressor 53.
Appellants further argue that “the modified teachings of Horn would
not improve fuel efficiency because the auxiliary engine for the compressor
would draw fuel from the fuel tank 23 in Brummett.” Reply Br. 7.
Appellants’ argument is not persuasive. The fact that the auxiliary engine 51
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would use some amount of fuel does not rebut the Examiner’s finding that
using the auxiliary engine would “make the vehicle more fuel efficient.”
Final Act. 6.
For the forgoing reasons, we sustain the rejection of claim 7.

CONCLUSIONS
The rejection of claims 1, 6/1, 8 and 9 under 35 U.S.C. § 102(b) as
being anticipated by Horn is sustained.
The rejection of claim 4/1 under 35 U.S.C. § 102(b) as being
anticipated by Horn is not sustained.
The rejection of claims 2, 3, 6/2, and 6/3 under 35 U.S.C. § 103(a) as
being unpatentable over Horn is sustained.
The rejection of claims 4/2 and 4/3 under 35 U.S.C. § 103(a) as being
unpatentable over Horn is not sustained.
The rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Horn and Brummett is not sustained.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Horn and Brummett is sustained.

DECISION
The decision of the Examiner to reject claims 1-3 and 6-9 is affirmed
and to reject claims 4 and 5 are reversed.
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).
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AFFIRMED-IN-PART

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