Ex Parte Noonchester et al

Patent Trial and Appeal Board

Sep 29, 2017

13032870 (P.T.A.B. Sep. 29, 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.
13/032,870 02/23/2011 Joseph J. Noonchester P013527-PTUS-RRM /
GM2241
7763
72823 7590
Quinn IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
EXAMINER
CRENSHAW, HENRY T
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
adomagala@quinniplaw.com
U S Docketing @ quinniplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. NOONCHESTER, JONATHAN PUNG,
and THOMAS A. SPIX
Appeal 2016-007619
Application 13/032,870
Technology Center 3700
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1, 2, 4—6, 8—
16, and 18—20, which are all the claims pending in the application.2 We
have jurisdiction under 35 U.S.C. § 6(b).
1 The real party in interest is identified as GM Global Technology
Operations LLC, which is identified as a subsidiary of General Motors.
App. Br. 3.
2 The Final Action is supplemented by an Advisory Action (mailed Feb. 1,
2016).
Appeal 2016-007619
Application 13/032,870
We reverse.
Claimed Subject Matter
The claimed subject matter relates to controlling the temperature of oil
in a power-plant of a vehicle, such as an internal combustion engine. Spec,
paras. 1—2. By using a heat exchanger to exchange heat between engine
coolant and oil, the oil may be heated by the coolant during warm-up and
may be cooled by the coolant during high load operation. Spec. para. 22.
The oil may also bypass the heat exchanger during low load operations,
which “acts to increase the temperature of the oil above that of the coolant.”
Id.
Claims 1, 10, and 20 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A system for controlling a temperature of oil in a power-
plant that produces heat energy as a by-product of generating
power and is operable to propel a vehicle, the system comprising:
a heat-exchanger arranged relative to the power-plant,
wherein the heat-exchanger is configured to receive from the
power-plant the oil and a coolant that removes the heat energy
from the power-plant, modify the temperature of the oil via heat
transfer between the oil and the coolant, and return the modified
temperature oil to the power-plant; and
a valve configured to:
direct the oil through the heat-exchanger during a
warm-up operation of the power-plant when a temperature
of the coolant is greater than the temperature of the oil
such that the temperature of the oil is increased;
direct the oil to bypass the heat-exchanger during a
low load operation of the power-plant such that the
temperature of the oil is increased above the temperature
of the coolant; and
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Appeal 2016-007619
Application 13/032,870
direct the oil through the heat-exchanger during a
high load operation of the power-plant when the
temperature of the oil is greater than the temperature of the
coolant such that the temperature of the oil is decreased;
an actuator configured to operate the valve; and
a controller in electrical communication with the actuator,
wherein the controller is configured to regulate the valve via the
actuator according to each of the warm-up, low load, and high
load operation of the power-plant.
Rejections
I. Claims 1, 4, 5, 8—10, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilmink et al. (US 2008/0006229 Al,
published Jan. 10, 2008) (“Wilmink”), Pineo et al. (US 2009/0229812 Al,
published Sept. 17, 2009) (“Pineo”), and Harris et al. (US 2008/0295785 Al,
published Dec. 4, 2008) (“Harris”). Final Act. 2—5.
II. Claims 2 and 11—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilmink, Pineo, Harris, and Fang et al. (US 6,942,023
B2, issued Sept. 13, 2005). Final Act. 5—7.
III. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilmink, Pineo, Harris, and Pirkle (US 4,883,082, issued
Nov. 28, 1989). Final Act. 7-8.
IV. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilmink, Pineo, Harris, and Pirkle. Final Act. 8.
V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilmink, Pineo, Harris, Fang, and Pirkle. Final Act. 8—9.
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Appeal 2016-007619
Application 13/032,870
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We concur with Appellants’ argument that the Examiner has not
provided sufficient reasons for modifying Wilmink to include a bypass valve
to increase the temperature of the oil. See App. Br. 10, 13.
Wilmink teaches a heat exchanger that uses heat from engine coolant
to heat engine oil after engine startup to bring the oil to its optimal operating
temperature quickly. Wilmink para. 4. Wilmink further teaches cooling the
oil with the coolant during further operation of the engine:
Since the cooling water is subsequently cooled by the cooler
provided in the coolant circuit to a temperature that is lower than
the maximum permissible oil temperature, the oil can be cooled
by the heat exchanger during the further operation of the engine
so that the oil can be kept reliably within its provided temperature
range.
Id.
Pineo teaches using a heat exchanger to cool transmission fluid.
Pineo para. 3. Pineo uses a bypass valve to bypass the heat exchanger
during startup conditions because “the transmission oil is very viscous and
does not flow easily through the heat exchanger, if at all.” Id. at paras. 3^4.
“This bypass valve may be temperature responsive so that it opens causing
bypass flow when the transmission fluid is cold, and it closes to prevent
bypass flow when the transmission fluid heats up to operating temperature.”
Id. at para. 4. The Examiner concludes that one of ordinary skill in the art
would have modified Wilmink in view of Pineo (and Harris) “in order to
provide a greater degree of maintaining the temperature of the engine oil
within the desired ranges.” Final Act. 4.
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Appeal 2016-007619
Application 13/032,870
Appellants argue that “Wilmink’s oil/coolant module, having as its
principle of operation central treatment of the liquids relevant to the engine,
suggests no particular use for a valve, actuator, or controller, as required by
Applicant’s claims.” App. Br. 10 (emphasis omitted). Appellants similarly
contend that “neither Wilmink, via its oil/coolant module, nor Pineo, via its
bypass valve 12, either separately or in combination, so much as consider
specifically directing power-plant oil to increase its temperature above the
temperature of power-plant coolant.” Id. at 13.
We agree with Appellants that Wilmink does not teach using a bypass
valve to increase the temperature of the oil above the temperature of the
coolant, and the Examiner has not provided sufficient reasons why one of
ordinary skill in the art would have modified Wilmink in this manner.
Wilmink’s disclosure supports the Examiner’s finding, Ans. 8, that at some
point during operation the oil is likely to be heated above the temperature of
the coolant, see Wilmink para. 4 (providing that “the oil can be cooled by
the heat exchanger during the further operation of the engine”). Wilmink
does not suggest, however, that it would be desirable to bypass the heat
exchanger in order to more quickly increase the oil temperature to above the
temperature of the coolant. Indeed, the Examiner’s reason for modifying
Wilmink with a bypass valve, to allow the engine oil to increase its
temperature above that of the coolant to maintain the temperature of the
engine oil within desired ranges, appears to contradict Wilmink’s teaching
that it is desirable to cool the engine oil to keep it within its provided
temperature range. Wilmink para. 4.
As noted above, Pineo’s bypass valve is used to prevent viscous
transmission oil from being stuck in the heat exchanger during startup and
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Application 13/032,870
thereby starving the transmission of fluid. Pineo paras. 3^4. Because Pineo
prevents bypass flow when the transmission fluid heats up to operating
temperature, Pineo does not teach “directing the oil to bypass the heat-
exchanger during a low load operation of the power-plant such that the
temperature of the oil is increased above the temperature of the coolant,” as
recited in claim 1. And in view of the disparate purposes of the bypass valve
in Pineo and in claim 1, the Examiner’s reason for modifying Wilmink to
include the bypass valve is not persuasive.
In view of the foregoing, we do not sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Wilmink, Pineo, and Harris.
Because all of the rejections on appeal rely on modifying Wilmink with
Pineo’s bypass valve as in claim 1, we also do not sustain the rejections of
claims 2, 4—6, 8—16, and 18—20 for the same reasons.
DECISION
We reverse the Examiner’s rejection of claims 1, 2, 4—6, 8—16, and
18-20.
REVERSED
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