Ex Parte Koch et al

Patent Trial and Appeal Board

Oct 25, 2017

13979687 (P.T.A.B. Oct. 25, 2017)

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.
13/979,687 07/15/2013 Achim Koch 2010P01599 5457
24131 7590 10/27/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
NEWTON, JASON TODD
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ACHIM KOCH, CHRISTIAN UHLIG, ROLAND HERFURTH,
CHRISTOPH SPARRER, MARTIN LASAR, VINZENT KREMINA,
and THORSTEN EID
Appeal 2016-005497
Application 13/979,6871
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Achim Koch et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 11, 12, and 15-21.
Final Office Action (June 15, 2015) (hereinafter “Final Act.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Continental Automotive GmbH as the real party in
interest. Appeal Brief 1 (October 8, 2015) (hereinafter “Appeal Br.”).
Appeal 2016-005497
Application 13/979,687
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to an “[e]xhaust-gas
turbocharger having a compressor housing with an integrated wastegate
actuator.” Spec. 1:2-3. Claim 11 is the sole independent claim on appeal
and is reproduced below with relevant claim language presented in italics.
11. An exhaust-gas turbocharger, comprising:
a compressor housing formed with a fresh-air inlet duct;
and
an electric wastegate actuator integrated into said
compressor housing, said electric wastegate actuator being
disposed to be thermally coupled to said fresh-air inlet duct;
said electric wastegate actuator including a direct-current
motor, a drive output shaft, and a gearing coupling said direct-
current motor to said drive output shaft; and
said direct-current motor, said gearing and said drive
output shaft surrounding said fresh-air inlet duct in a U-shape.
Appeal Br. 11 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 11, 12, 15, 16, and 18-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Love et al. (US 2012/0171059 Al,
published July 5, 2012) (hereinafter “Love”) and Vogt
(US 6,435,169 Bl, issued August 20, 2002).
2. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Love, Vogt, and Pringle et al. (US 2003/0201742 Al,
published October 30, 2003) (hereinafter “Pringle”).
2
Appeal 2016-005497
Application 13/979,687
ANALYSIS
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 3-9. We select claim 11 as representative of the group,
and the remaining claims 12, 15, 16, and 18-21 stand or fall with claim 11.
37 C.F.R. § 41.37(c)(l)(iv). Appellants further argue, with regard to the
second ground of rejection, that dependent claim 17 is patentable over Love,
Vogt, and Pringle for the same reasons argued in support of the patentability
of claim 11 over Love and Vogt. Appeal Br. 9. As such, the outcome of the
appeal of the second ground of rejection turns on our analysis of the first
ground of rejection of claim 11.
Claim 11 recites an exhaust-gas turbocharger in which a direct-current
motor, gearing, and a drive output shaft of an electric wastegate actuator
surround a fresh-air inlet duct of the compressor housing “in a U-shape.”
Appeal Br. 11 (Claims Appendix). The Examiner finds that Love discloses
the exhaust-gas turbocharger of claim 11 including a direct-current motor,
gearing, and a drive output shaft of an electric wastegate actuator
(hereinafter “the wastegate actuator components”) surrounding a fresh-air
inlet duct. Final Act. 3—4. The Examiner finds that Love does not explicitly
disclose that the wastegate actuator components are in a U-shape. Id. at 4.
The Examiner finds that Vogt discloses the wastegate actuator components
arranged in a U-shape configuration. Id. The Examiner determines that it
would have been obvious to modify the arrangement of the wastegate
actuator components of Love in a U-shape configuration, as shown in Vogt,
as a matter of obvious design choice with no change in their respective
functions and yielding predictable results (i.e., arranging parts in a U-shape
3
Appeal 2016-005497
Application 13/979,687
would provide a more compact arrangement of the components).” Id. at 4-
5. The Examiner further explains that “a location of the actuator arm
depends on where the associated valve is located” and that “[i]n Love[,] the
actuator arm is located on the same end as the motor shaft.” Examiner’s
Answer 4 (March 11, 2016) (hereinafter “Ans.”). The Examiner determines
that “[i]f the valve to be actuated was located in a different position[,] such
as opposite the shaft end of the motor[,] a different actuator arrangement
would be required.” Id. The Examiner finds that Vogt discloses such an
arrangement “where the valve to be actuated is located opposite the shaft
end of the motor.” Id. at 5. The Examiner finds that Vogt’s arrangement of
the wastegate actuator components “would permit actuation of a valve
located opposite the shaft end of the motor and provide a smaller overall
actuator profile.” Id.
Appellants contend that the Examiner’s rationale based on design
choice is not supported by the prior art because “there is no mention of
providing a more compact arrangement of components in either Love[] or
Vogt.” Appeal Br. 4. On the contrary, Love describes two drawbacks of
wastegate actuation systems having electric actuators are that such actuators
present “a larger package size and a lower maximum operating temperature
than a comparable pneumatic system.” Love 13. Love discloses that its
invention provides “a fast, powerful and compact wastegate actuation
system that can operate effectively in the hot environment of a turbocharger
without having to be de-rated.”2 * 4Id. 5, 17 (emphasis added); see also id.
2 Love explains that in the prior art, at its maximum operating temperature,
the motor duty of the DC motor must be reduced (de-rated) “to avoid the
4
Appeal 2016-005497
Application 13/979,687
14 (identifying “a need for a fast, powerful and compact wastegate
actuation system that can operate effectively in the hot environment of a
turbocharger”) (emphasis added).
Thus, Love identifies a need in the art for a compact wastegate
actuator system and attempts to address that need, and others, through the
arrangements disclosed therein. As noted by the Examiner (Final Act. 5,
Ans. 5-6), Vogt discloses another known arrangement of the wastegate
actuator components in the art. The Examiner further notes that Vogt’s
arrangement is more compact (in terms of height) than Love’s arrangement.
Id. Thus, we agree with the Examiner that one having ordinary skill in the
art, as a matter of design choice, could choose to employ the known
arrangement of Vogt in the system of Love to achieve a more compact
system.
Appellants further argue that “[n]o motivation can be found in the
prior art for configuring the direct-current motor, the gearing and the drive
output shaft to surround said fresh-air inlet duct in a U-shape in order to
provide a more compact arrangement of components.” Appeal Br. 5.
Again, Appellants’ argument is belied by the teachings of Love. We agree
with the Examiner’s finding that Love teaches an arrangement in which the
wastegate actuator components surround the fresh-air inlet. Final Act. 4. In
particular, Love shows in Figure 4 an embodiment in which the actuator
chamber 241 extends circumferentially around a thermally significant
portion of the inlet passageway 215. Love 136. Specifically, Love
discloses an electric motor 231 is mounted on an actuator base 401 that
stator windings from exceeding their rated limit.” Id. ^ 3.
5
Appeal 2016-005497
Application 13/979,687
forms part of the wall of the passageway 215, and gears 233 are disposed so
as to surround passageway 215. Id., Fig. 4. Further, the reason Love’s
wastegate actuator components are arranged to surround inlet passageway
215 is the same reason described by Appellants in the Specification, viz, to
use the cooler air passing through the fresh-air inlet to cool the wastegate
actuator components. Compare Spec. 5:17-6:13, 10:24-11:1 with Love
118, 32-35. As such, we agree with the Examiner that the motivation to
combine the references such that the wastegate actuator components
surround the inlet passageway in a U-shape is found in Love. Ans. 4.
Appellants further contend that the proposed modification to Love’s
arrangement would change the function of Love.3 Appeal Br. 5-7. In
particular, Appellants argue that Love teaches conductive cooling only the
motor and convective cooling the gearing and drive output shaft. Id. at 6.
We agree with Appellants’ understanding of Love. Love ^ 32-35.
Appellants assert that configuring Love’s wastegate actuator components to
surround the fresh-air inlet duct in a U-shape would change the operation of
Love because the gearing and drive output shaft would be conductively
cooled. The Examiner is not proposing to eliminate the convective cooling
of the components in Love. Ans. 7. Even were the proposed modification to
result in conductive cooling of the gearing and drive output shaft, that fact
3 We do not address Appellants’ argument (Appeal. Br. 6-7) that the
functions in Vogt would be changed by the proposed combination, because
this argument is not responsive to the Examiner’s rejection, which does not
propose to modify the system of Vogt. Ans. 7 (Examiner noting that
Appellants’ argument “appears to be refuting a position that was not
advanced by the Office”).
6
Appeal 2016-005497
Application 13/979,687
would not change the function of Love’s system, which would still utilize
the cooler fresh air from inlet passageway 215 to conductively and
convectively cool the wastegate actuator components.
Appellants contend that “under the theory of design choice, the
rearrangement cannot modify the operation of the device in order to be
considered to be an obvious rearrangement of parts.” Reply Brief 5 (May 6,
2016) (hereinafter “Reply Br.”). There is nothing in claim 11 that requires
conductive cooling of all of the components of the wastegate actuator, and
Appellants fail to explain clearly why the proposed modification of Love
would necessarily result in the conductive cooling of all the components as
urged by Appellants. Further, as noted supra, the rearrangement of the
components does not change the overall function because, as modified,
Love’s components are still arranged so as to take advantage of the cooling
provided by the fresh-air passing through the compressor housing.
Appellants argue there is “no suggestion in the prior art to modify”
Love’s configuration so that the wastegate actuator components would
surround the fresh-air inlet duct in a U-shape” because Vogt does not teach
configuring the components to surround any type of duct. Appeal Br. 7-8.
First, a suggestion to modify does not need to be found explicitly in Love or
Vogt. KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (holding that
a rigid teaching-suggestion-motivation test is not the proper obviousness
inquiry). Second, Love suggests configuring the components to surround
the fresh-air inlet, just not in a U-shape, and Love also teaches the need in
the art for a compact actuator system. Thus, there is ample motivation in the
prior art for making modifications to the arrangement in Love so as to
7
Appeal 2016-005497
Application 13/979,687
dispose the wastegate actuator components about the inlet passageway to
result in a more compact actuator system.
Appellants also contend that if a person of ordinary skill in the art
were to modify Love with the teachings of Vogt to provide a more compact
arrangement, “that person would have located the direct-current motor, the
gearing and the drive output shaft of Love [] on one side of the fresh-air inlet
duct since such components are all located on one side of the exhaust bypass
line in Vogt and since Love [] teach that only the . . . direct current motor is
thermally connected to the inlet wall to provide conductive cooling to the
motor.” Appeal Br. 8. First, the placement of the components in Vogt to
one side of the exhaust bypass line would not prompt one having ordinary
skill in the art looking to improve the system of Love to move the
components further away from the fresh-air inlet of the compressor housing.
Love teaches the many advantages of cooling the wastegate actuator
components with the relatively cooler air of the fresh-air inlet. We see
nothing in the disclosures of Love and Vogt that would have led one having
ordinary skill to move the components away from the fresh-air inlet.
Second, Love does not teach that conductive cooling should be
provided only to the direct-current motor or that there are disadvantages to
providing conductive cooling to components of the wastegate actuator
system other than the direct-current motor. In other words, there is nothing
in Love that teaches away from the modification proposed by the Examiner.
For these reasons, we find no error in the Examiner’s rejection of
claim 11 as unpatentable over Love and Vogt. Accordingly, we sustain the
rejection of claim 11, and dependent claims 12 and 15-21 which fall
8
Appeal 2016-005497
Application 13/979,687
therewith, under 35 U.S.C. § 103(a). For the same reasons, we sustain the
rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable Love, Vogt,
and Pringle.
DECISION
The decision of the Examiner rejecting claims 11, 12, and 15-21 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
9