Ex Parte Vitek et al

Patent Trial and Appeal Board

Aug 7, 2018

14004189 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/004,189 12/18/2013
76799 7590 08/09/2018
FAURECIA
c/o Carlson, Gaskey & Olds, P.C.
400 W. Maple Road, Ste. 350
Birmingham, MI 48009
FIRST NAMED INVENTOR
Christian Paul Vitek
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
ATTORNEY DOCKET NO.
67341-2996US1;
11FECT018
CONFIRMATION NO.
1736
EXAMINER
MCCLAIN, WILLIAM E
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
Silke.Hertzsch@faurecia.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN PAUL VITEK and BORIS KIENLE
Appeal2017-007080
Application 14/004,189 1
Technology Center 1700
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 2-6, 9, and 12-21. We have jurisdiction under 35 U.S.C. § 6(b ).
The appealed invention relates to a thermoelectric generator unit for
coupling to an exhaust gas pipe of an internal combustion engine.
1 According to Appellants, the real party in interest is FAURECIA
EMISSIONS CONTROL TECHNOLOGIES, GERMANY GMBH. See
App. Br. 1.
Appeal2017-007080
Application 14/004, 189
Independent claim 2 is representative of the appealed subject matter and is
reproduced below:
2. A thermoelectric generator unit, in particular for coupling
to an exhaust gas pipe of an internal combustion engine,
compnsmg:
at least one inner tube having gas flowing therein and an outer
circumference that comprises at least one flat portion,
an oval outer housing completely surrounding [the] at least one
[] inner tube in a circumferential direction, and wherein the
outer housing comprises two housing shells which meet each
other at a short axis area of the outer housing and are fastened
to each other in this area,
a plurality of thermoelectric modules arranged on the at least
one flat portion of the at least one inner tube,
at least one cooling element comprising a cooling channel
having an outer wall with a flat side on which the
thermoelectric modules are arranged, wherein a first portion of
an outer circumference of the outer wall substantially
corresponds to a curvature of the outer housing and a second
portion of the outer circumference of the outer wall is
substantially flat and
an assembly unit made up of the at least one inner tube, the
plurality of thermoelectric modules, and the at least one cooling
element, the assembly unit being surrounded by an elastic
compensation element that rests on an inner side of the outer
housing and is retained in the outer housing by clamping.
Claims Appendix to App. Br. 17.
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Application 14/004, 189
Appellants (see App. Br., generally) request review of the following
rejections: 2
I. Claims 2, 3, 12-13, 15-16, and 19-21 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of
Adldinger3 (DE 102009058550 Al), Parise, (US 6,986,247
Bl) and Kroner (US 2008/0201949 Al).
II. Claims 4--6, 9, 14, and 17-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Adldinger,
Parise, Kroner and further in view of Brzoza, et al.,
(DE I02008002095Al)4•
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 2-11.)
OPINION
2 The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph,
rejections of claims 11, 16 and 21. (Ans. 25; Advisory Action 2). The
amendment to claim 16 submitted September 22, 2016 appears to have
overcome the 35 U.S.C. § 112, first paragraph rejection which was not
repeated in the Examiner's Answer.
3 We refer to US 2012/0297755 Al as an English language equivalent for
this document.
4 Appellants and the Examiner identify this reference as Brzoza, the last
name of the third listed inventor. We will do likewise. We refer to the
machine translation provided in the record for this document.
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Application 14/004, 189
Rejection I5
Claims 2, 3, 12 and 16
The Examiner found Adldinger discloses a thermoelectric generator
unit that includes an inner tube 204, an outer housing 102, thermoelectric
modules 10, a cooling element 214, and an elastic compensation element 20.
(Final Act. 6-7; Adldinger Figures 7-8). The Examiner acknowledged that
Adldinger does not disclose an oval outer housing. To address this
difference, the Examiner relied on Parise. The Examiner further found
Kroner discloses a housing that is formed from two shells 34, 36 that are
welded together around a substrate 10. (Final Act. 8-9). The Examiner
determined that it would have been obvious to form a thermoelectric
generator such as described by Adldinger having oval housing as taught by
Parise because it was a predictable use of prior art elements. (Final Act. 7).
The Examiner also determined it would have been obvious to have the half
shells taught by Adldinger to have the housing shells meet at a short axis.
(Final Act. 9-10).
Appellants argue there is nothing to suggest that the oval shape of
Parise would be a suitable replacement for the circular shape taught by
Adldinger. (App. Br. 4--5).
Appellants' arguments are not persuasive of reversible error. One of
ordinary skill in this art routinely following the combined teachings of the
5 Appellants present separate arguments addressing several claims
separately. (App. Br. 5-12). We select independent claim 2 as
representative of the rejected claims and will address the separate arguments
presented.
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Application 14/004, 189
references as combined by the Examiner would have reasonably arrived at
the claimed thermoelectric generator having oval housing without resort to
Appellants' Specification. See, e.g., KSR Int 'l Co. v. Teleflex Inc., 127 S. Ct.
550 US 417, 418 (2007) ("[ A ]nalysis [ of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ."). Adldinger discloses the shape of the outer housing,
and the channel the elements contained therein, can adjust to other shapes.
(Adldinger ,r 136). Consequently, a person of ordinary skill in the art would
have reasonably expected that a thermoelectric generator of Adldinger could
have been formed with an oval housing.
Appellants argue there is no disclosure or teaching found anywhere in
the cited references of an oval housing that comprises two shells that meet
each other at a short axis of the oval housing as claimed. (App. Br. 5).
Adldinger discloses the shape of the outer housing formed from two
half shells, and the channel elements contained therein, can adjust to other
shapes. (Adldinger ,r,r 133, 136). It is undisputed that the two outer housing
shells must join at some point to complete the housing. Appellants have not
directed us to evidence that indicates Adldinger places a limitation at the
point in which the two shells can meet. Appellants have not directed us to
evidence that establishes an unexpected advantage is obtained by having the
two shells meet each other at a short axis of the oval housing. (Note Spec.
57---60). Moreover, Adldinger discloses the generator housing is specifically
designed to achieve the appropriate clamping force. A person of ordinary
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Application 14/004, 189
skill in the art would have recognized the clamping force that is achieved by
having the two housing shells that meet each other at a short axis of the oval
housing. (Adldinger ,r,r 127, 134, 135).
Claim 13
Appellants argue that Adldinger only discloses a single cooling
channel 214, and as such, there is no disclosure or teaching of multiple inner
tubes being arranged in an alternating fashion with multiple modules and
multiple cooling elements as claimed. (App. Br. 7).
Appellants' argument lacks persuasive merit. A thermoelectric
generator unit comprising multiple modules and multiple cooling elements
would have been obvious to a person of ordinary skill because Adldinger
discloses the assembly can comprise three or more thermoelectric modules
with corresponding channel elements. (Adldinger ,r 38).
Claim 15
Appellants argue claim 15 requires the thermoelectric modules are
arranged such that module end faces are not in contact with the elastic
compensation element. (App. Br. 7).
Appellants' argument lacks persuasive merit. The Examiner
determined the end faces of thermoelectric element 10 are not in contact
with the elastic compensating element 20 from Figure 8 that rests on an
inner side of the outer housing and is retained in the outer housing by
clamping. (Ans. 8). Furthermore, Adldinger discloses the compensating
element 20 can be omitted if element 104 -108 are formed from metal.
(Adldinger ,r 136).
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Application 14/004, 189
Claims 19 and 20
Appellants argue Adldinger does not disclose or teach first and second
cooling channels arranged as required by claims 19 and 20. (App. Br. 8-9).
Appellants' arguments are not persuasive. The Examiner determined
Adldinger suggests arranging a heating channel on the inside and two
cooling channels are on the outside. (Final Act. 8). As stated above,
Adldinger discloses the assembly can comprise three or more thermoelectric
modules with corresponding channel elements. (Adldinger ,r 38). A person
of ordinary skill in the art would have had sufficient skill to arrange the
multiple modules and multiple cooling elements in a thermoelectric
generator unit. Appellants have not directed us to evidence that establishes
an unexpected advantage is obtained by arranging a heating channel on the
inside and two cooling channels on the outside.
Claim 21
Appellants argue the Examiner is engaging in hindsight reconstruction
of the claimed invention in determining it would have been obvious to form
Adldinger's thermoelectric generator having an oval shape and arranged as
required by claim 21. (App. Br. 10-11).
Appellants' arguments are not persuasive. The Examiner determined
Adldinger suggests various arrangements for the heating channel and
cooling channels are on the outside (Ans. 12-13; Final Act. 14--16). As
stated above, Adldinger discloses the assembly can comprise three or more
thermoelectric modules with corresponding channel elements. (Adldinger ,r
3 8). A person of ordinary skill in the art would have had sufficient skill to
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Application 14/004, 189
arrange the multiple modules and multiple cooling elements in a
thermoelectric generator unit.
Rejection II
Claims 4--6, 14, and 17-186
According to the Examiner, Adldinger does not teach at least one
gas-carrying channel and a bypass channel provided in an interior of the
outer housing, and wherein hot gas can be selectively directed through the at
least one gas-carrying channel and/or the bypass channel. (Final Act. 17).
The Examiner found Brzoza teaches a thermoelectric generator wherein the
at least one inner tube comprises at least three inner tubes that form at least
two gas-carrying outer channels and a bypass channel arranged therebetween
(Brzoza Fig. 1, 3a-3f, 8). The Examiner concluded that it would have been
obvious to add a bypass pipe taught by Brzoza to the high temperature
channel taught by Adldinger in order to prevent large thermal stress. (Final
Act. 18).
Appellants argue claims 4 and 5 require a bypass channel and at least
one gas-carrying channel and claim 6 requires a bypass channel and at least
two outer channels. (App. Br. 11-13). Appellants argue claim 14 requires a
bypass channel and arranged in a middle of the outer housing and is
thermally isolated at both sides with respect to adjoining inner tubes. (App.
Br. 14). Appellants argue Adldinger does not teach or suggest the placement
of a bypass tube/channel placed within a channel as required by the claimed
invention. (App. Br. 11-15). Appellants argue the Examiner has offered no
6 Claims 17 and 18 depend directly or indirectly from claim 6. Consequently
we will limit our discussion to claims 4--6 and 14.
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Application 14/004, 189
explanation as to how to modify the embodiments of Adldinger's Figure 7 or
8 to include a bypass as required by claims 4--6 and 14,. (App. Br. 11-15).
Appellant specifically argue centrally locating the bypass in the arrangement
of Adldinger' s Figure 7 would require the removal of the module 10 and in
Adldinger' s Figure 8 would require the placement of the bypass at the
location of its cooling channel 214. (App. Br. 11-12).
It is well settled that the initial burden of presenting evidence to
support a prima facie case of obviousness rests with the examiner. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Claims 4--6 and 14 all
require a bypass channel in addition to other tubes/ channel arrangements as
specified by the individual claims. The Examiner has failed to provide an
adequate explanation or directed us to evidence that establishes why a
person of ordinary skill in the art would have formed a thermoelectric
generator unit, such as described by Adldinger, including a bypass
tube/channel as required by claims 4--6 and 14.
After consideration the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
determination that the subject matter recited in claims 4--6 and 14 would
have been obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103(a). We agree with Appellants the Examiner has failed to
provide adequate explanation for modifying Adldinger to include a central
bypass channel. Accordingly, we reverse the rejections of claims 4--6, 14,
and 17-18.
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Claim 9
Claim 9 requires a plurality of parallel inner tubes, each having a wide
side arranged to be perpendicular to a long axis of a cross-section of the oval
outer housing.
Appellants argue Brzoza's three tubes 3a-3f are part of an outer tube
4 configuration and cannot reasonably be considered as corresponding to the
claimed inner tubes as required by claim 9. (App. Br. 13). Further,
Appellants argue that even if Brzoza's tubes 3a-3f correspond to the inner
tubes, these tubes are clearly no parallel inner tubes (id. at 13-14). Indeed,
Appellants argue Adldinger, Brzoza, Parise and Kroner either fail to disclose
an inner tube or fail to disclose a plurality of inner tubes. (Id.).
Appellants' arguments are not persuasive. Initially, we note, as did
the Examiner (Ans. 19), that Appellants' argue the references individually,
rather than as combined in the rejection. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981).
The Examiner determined Adldinger suggests various arrangements for the
heating channel and cooling channels. (Ans. 12-13; Final Act. 20-21). As
stated above, Adldinger discloses the assembly can comprise three or more
thermoelectric modules with corresponding channel elements. (Adldinger ,r
3 8). A person of ordinary skill in the art would have had sufficient skill to
arrange the multiple modules and multiple cooling elements in a
thermoelectric generator unit to arrive at the structure of claim 9.
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DECISION
The rejections under 35 U.S.C. §103(a) of claims 2, 3, 12-13, 15-16,
and 19-21 as unpatentable over Adldinger, Parise and Kroner, and claim 9
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Adldinger, Parise, Kroner, and Brzoza are affirmed.
The rejection under 35 U.S.C. §103(a) of claims 4---6, 14, and 17-18
as unpatentable over the combination of Adldinger, Parise, Kroner, and
Brzoza is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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