FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Sep 16, 2020

15015404 - (D) (P.T.A.B. Sep. 16, 2020)

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.
15/015,404 02/04/2016 Mark Douglas MALONE 83618349; 67186-234PUS1 1867
46442 7590 09/16/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SCHWARZENBERG, PAUL
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK DOUGLAS MALONE, WILLIAM NAJIB MANSUR,
DANIEL PAUL ROBERTS, and BETH ANN DALRYMPLE
____________

Appeal 2020-003043
Application 15/015,404
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 7–9, 14, and 16–26, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 2.
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STATEMEMNT OF THE CASE
Claimed Invention
Appellant’s “relates to a vehicle system and method associated with
an electrified vehicle. The vehicle system includes an electrically powered
heating device configured to condition a transmission fluid of the electrified
vehicle if certain vehicle conditions are met.” Spec. ¶ 1.
Claims 1, 14, and 24–26 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. An electrified vehicle, comprising:
a transmission; and
an electrically powered heating device configured to
selectively warm a transmission fluid circulated inside said
transmission;
wherein said electrically powered heating device is
mounted through an opening in a transmission housing of said
transmission and includes a probe that extends into a sump of
said transmission.

Appeal Br. 18 (Claims App.).

Rejections
Claim 22 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement.
Claims 9 and 19 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
Claims 14 and 16–20 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Thomas et al. (US 2013/0213335 A1, pub. Aug. 22, 2013)
(“Thomas”).2

2 The Examiner inadvertently includes claim 23, which is separately
rejected, in the statement of this rejection. See Final Act. 9.
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Claims 1, 2, 5, 7–9, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Thomas, Sposato (US 2008/0178830 A1, pub. July
31, 2008), and Davidson, JR. (US 2012/0175358 A1, pub. July 12, 2012)
(“Davidson”).
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas, Sposato, Davidson, and Gries (US 2015/0108112 A1, pub. Apr. 23,
2015).
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas, Sposato, Davidson, and Huyghe (US 2014/0191049 A1, pub. July
10, 2014).
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas, Sposato, Davidson, and Beattie, Jr. (US 8,251,851 B2, iss. Aug. 28,
2012).
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas, Davidson, and Datta et al. (US 2011/0153140 A1 pub. June 23,
2011) (“Datta”).
Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas, Davidson, Blaha (US 3,564,199, iss. Feb. 16, 1971).
Claim 25 is rejected under 35 U.S.C. § 103 as being unpatentable over
Oh (US 2014/0161431 A1, pub. June 12, 2014) and Stevens (US 3,134,374,
iss. May 26, 1964).
Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over
Thomas and Tölle (DE 102005062338 A1, pub, June 28, 2007).

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ANALYSIS
Written Description
Dependent claim 22
The Examiner rejects dependent claim 22 under 35 U.S.C. § 112(a)
because the original disclosure fails to provide adequate written description
for the limitation: “wherein said transmission housing and an oil pan are
separate components of said transmission.” Final Act. 5.
Alleging error in the rejection, Appellant states that the as-filed
Specification provides support for the claimed subject matter in
Figures 3A, 3B, 4,3 and paragraphs 52 and 53. Appeal Br. 5; Reply
Br. 2. First, Appellant argues that “the oil pan 76 is shown as being a
separate component from the transmission housing 72 of the
transmission 60 in Figure 4.” Id. Second, Appellant argues that:
Figures 3A-3B and paragraph [00052] of the subject application
describe a first mounting location of a heating device 64 that is
through a transmission housing 72 of a transmission 60, and
Figure 4 and paragraph [00053] separately describe another
mounting location of the heating device 64 that is through an oil
pan 76 of a transmission 60 that includes a transmission
housing 72. There would be no reason to describe the oil pan
mounting location as a separate embodiment if the oil pan was
the same component as the transmission housing. 1 Stated
another way, if the oil pan and the transmission housing were
the same component, then Figure 4 would be completely
redundant.
Id. at 6.

3 In an Office Action Appendix mailed January 28, 2020, the Examiner
accepted entry of replacement drawings (filed on April 26, 2019) into the
record, which added reference numeral “72” to correct a “clerical error” in
original Figure 4. See Appeal Br. 6 n.1.
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Responding to Appellant’s first argument, the Examiner is
unpersuaded “because although the transmission 60 is shown, the
transmission housing is not identified in the original figure 4.” Ans. 5. The
Examiner is unpersuaded by Appellant’s second argument “because none of
the original drawings show the oil pan and the transmission housing
together.” Id.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112(a), is a question of fact and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need
not literally describe the claimed subject matter (i.e., using the same terms or
in haec verba), but the Specification must convey with reasonable clarity to
those skilled in the art that Appellant was in possession of the claimed
invention. See id.
We are persuaded of error because regardless of whether reference
numeral 72 was included in original Figure 4 to identify the transmission
housing, we find that the drawing of Figure 4 conveys with reasonable
clarity to skilled artisans that the transmission housing and the oil pan 76 are
two separate components of the transmission 60 depicted. In describing
Figure 4, paragraph 53 of Appellant’s Specification indicates that a heater
plate 82 is mounted to “a wall of the oil pan 76,” which describes a
structural feature of the oil pan 76 that is separate and distinct from the
transmission housing. See also claim 24 (“a heater plate mounted to a wall
inside an oil pan”). Second, we agree with Appellant that the description of
the location of the heating device 64 in two differing embodiments at least
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suggests to an artisan that the oil pan 76 of Figure 4 is separate from the
transmission housing because the embodiment of Figures 3A and 3B
describe the heating device 64 as being located in the transmission housing
72. Spec. ¶¶ 52–53. In other words, these two embodiments ostensibly
define two distinct mounting locations for the heating device 64, one “in a
transmission housing 72 of the transmission 60” (id. ¶ 52) and the other
“positioned within an oil pan 76” (id. ¶ 53). If the oil pan was not a separate
component from the transmission housing, we agree that “[t]here would be
no reason to describe the oil pan mounting location as a separate
embodiment.” Appeal Br. 6. It appears the Examiner may have conflated
the written description requirement with enablement, which is separate and
distinct. See Ans. 6 (Neither the specification, nor drawings enable a person
of ordinary skill to determine the claimed relation between the transmission
housing and the oil pan.) (emphasis added).
Accordingly, we do not sustain the rejection of claim 22 under 35
U.S.C. § 112(a).
Indefiniteness
Dependent claims 9 and 19
Claim 9 recites “wherein said electrically powered heating device is
powered by a high voltage battery pack.” Appeal Br. 18 (Claims App.).
Claim 19 recites “warming the transmission fluid during an off-plug
condition by powering the electrically powered heating device with a high
voltage battery assembly.” Id. at 19.
The Examiner determines that “[t]he term ‘high’ in claims 9 and 19 is
a relative term which renders the claim indefinite.” According to the
Examiner, “[t]he terms ‘high’ is not defined by the claim, the specification
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does not provide a standard for ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention.” Final Act. 8.
Appellant argues “the meaning of ‘high voltage’ can be readily
ascertained by those of ordinary skill in the art when reading the subject
specification.” Appeal Br. 7. According to Appellant: “A person of
ordinary skill in the art reading this description would understand the
specification to be directed to high voltage batteries used to power motors to
propel the vehicle and would distinguish such high voltage batteries from
low voltage batteries, which generally have a nominal voltage output of
around 12V.” Id. at 7–8 (citing Spec. ¶¶ 40, 48).
The Examiner is unpersuaded “because the specification does not
define a level of volts for the term high voltage . . . [which] is defined by the
DOE Electrical Safety Guidelines as over 600 volts and it is unclear from the
specification whether the limitation ‘high voltage’ in the claims has a similar
definition.” Ans. 7. We are persuaded by Appellant’s arguments.
The scope of the claims in patent applications must be determined not
solely on the basis of the claims language, but by giving claims their
broadest reasonable interpretation in light of the specification as would be
interpreted by one of ordinary skill in the art. In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, Appellant’s claimed
invention is directed to an electrified vehicle with an electrically powered
heating device and method for powering an electrically powered heating
device for an electrified vehicle. See Appeal Br., Claims App. The
background of the Specification provides that “[i]n general, electrified
vehicles differ from conventional motor vehicles because they are selectively
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driven by one or more battery powered electric machines.” Spec. ¶ 2.
Appellant’s disclosure describes such electrified vehicles as battery electric
vehicles and hybrid electric vehicles. Id. ¶ 3. The Specification
distinguishes between high voltage energy storage devices for high voltage
loads used to power and operate motors to drive the vehicle (“high voltage
traction battery”) and low voltage batteries for low voltage loads such as
lighting systems. Id. ¶¶ 40, 48. For example, “the heating device 64 can be
actuated during a drive cycle to heat the transmission fluid 58, such as by using
power from the high voltage battery pack 24.” Id. ¶ 64. We agree with
Appellant that a person of ordinary skill in the art reading the disclosure
“would understand the specification to be directed to high voltage batteries
used to power motors to propel the vehicle and would distinguish such high
voltage batteries from low voltage batteries, which generally have a nominal
voltage output of around 12V.” Appeal Br. 7–8.
Moreover, based on disclosures in the prior art, we find that a person
having ordinary skill in the art would understand with sufficient definiteness
what is meant by a “high voltage” battery when that claim language is
interpreted in light of the Specification. For instance, “high-voltage vehicle
battery” is used as a term of art in the prior art before us to refer to a power
source used to provide motive power for a hybrid electric vehicle. See
Thomas ¶ 21, Fig. 1.
Accordingly, we find that the term “high voltage” is sufficiently clear
so as not to render claims 9 and 19 indefinite. As such, we do not sustain the
rejection of claims 9 and 19 under under 35 U.S.C. § 112(b).

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Anticipation by Thomas
Independent claim 14, dependent claims 16, 17, and 19
Claim 14 recites, inter alia, “a start time for powering the electrically
powered heating device is based on [1] a planned passenger cabin
preconditioning, [2] an established pattern of drive cycles, or [3] ambient
temperatures.” Appeal Br. 19, Claims App. (emphasis added).
Under the broadest reasonale interpretation, the claim term “or”
recited in claim 14 only requires the Examiner to find one of the three
conditions that a start time for powering the electrically powered heating
device (e.g., a resistive heating device)4 is based on. Appellant asserts that
“Thomas does not power an electrically powered heating device at a start
time is based” on all three conditions, yet Appellant only argues against the
Examiner’s finding as to condition 2. Appeal Br. 8. According to
Appellant, the Examiner’s interpretation of operating the resistive heating
element of “Thomas on a selected or rotating schedule such as one hour
prior to the operation of the vehicle (paragraph [0029] of Thomas) as being
the same as operating the heating element based on an established pattern of
drive cycles” (id. at 8−9) is unreasonable. Appellant asserts that
“[o]perating on a selected or rotating schedule signifies that a user must
specifically set the schedule for operating the heating element, whereas
operating based on an established pattern of drive cycles signifies that the
schedule is automated based on established (i.e., learned) drive cycle
patterns.” Id. at 9; Reply Br. 4 (“Since the pattern is observed and discerned
over time, it cannot be a preset value but instead must be a learned value that
is obtained through some form of automation.”).

4 “[T]he heating device 64 is a resistive heating device.” Spec. ¶ 50.
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We agree with the Examiner (Ans. 8) that Appellant’s interpretation
of the term “established pattern” as an observed and learned value discerned
over time, presumably based on routine past behavior, is inconsistent with
the plain language of the claim in light of the Specfication. The
Specification does not define the term “established pattern,” and, in fact,
only mentions it once indicating that “the start time of the conditioning may
be based on an established pattern of drive cycles associated with the electrified
vehicle 12.” Spec. ¶ 61. The Specification doesn’t describe any automated
or intelligent learning based on past behavior that is observed or discerned
over time; rather, paragraph 62 discloses that “[l]ogic for deriving the
transmission fluid 58 conditioning start times may be programmed within the
control module 66, such as within one or more look-up tables.”
As a result, “the words of a claim ‘are generally given their ordinary
and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996). The “ordinary and customary meaning of
a claim term is the meaning that the term would have to a person of ordinary
skill in the art.” Id. at 1313. “Established” is defined as “widely or
permanently accepted.”5 “Pattern” is defined as “the repeated or regular
way in which something happens or is done.”6 The ordinary and customary
meaning of the term “established pattern” is therefore a widely accepted
regular way in which something happens or is done.

5 https://www.collinsdictionary.com/us/dictionary/english/established (last
visited Sept. 5, 2020).
6 https://www.collinsdictionary.com/us/dictionary/english/pattern (last
visited Sept. 5, 2020).
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The Examiner’s finding that Thomas’s vehicle controller 101 is
programmed to operate the resistive heating elements 108 on a rotating
schedule such as one hour prior to operation of the vehicle (Final Act. 9–10
(citing Thomas ¶ 29)) describes activating the resistive heating elements
based on a revolving schedule and regular way in which something happens.
In other words, the start time for operating the resistive heating elements in
Thomas is based on an established rotating schedule and pattern of drive
cycles, which may be one hour prior to each operation of the vehicle. For
these reasons, we are not persuaded the Examiner’s interpretation of “an
established pattern of drive cycles” is overly broad.
Accordingly, we are not apprised of Examiner error in the rejection of
claim 14 as anticipated by Thomas. Thus, we sustain the rejection of claim
14 under 35 U.S.C. § 102(a)(1), and dependent claims 16, 17, and 19, which
are not argued separately.
Dependent claim 18
We are not persuaded that Thomas, on which the Examiner relies,
fails to disclose that “the warming step is continued until a temperature of
the transmission fluid is within a desired operating temperature range,” as
recited in claim 18, because “the warming of the fluid in Thomas is
continued until the fluid reaches a specific temperature . . . A desired
operating temperature range is not disclosed by Thomas.” Appeal Br. 9.
The Examiner finds that paragraph 29 of Thomas discloses “that the
warming of the fluid is continued until the fluid reaches a specific target
temperature.” Ans. 8. Thomas discloses that the predetermined target
temperature of the transmission oil “may be about 80%” of the operating
temperature for the transmission oil. Thomas ¶ 29. We interpret the
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Thomas’s predetermined target temperature of about 80% as a range and
area of variation with at least one upper and lower limit.
Accordingly, we are not apprised of error in the rejection of claim 18
as being anticipated by Thomas. Thus, we sustain the rejection of claim 18
under 35 U.S.C. § 102(a)(1).
Dependent claim 20
Appellant argues that “Thomas does not determine whether the
vehicle is on-plug prior to powering the heating device.” Appeal Br. 9.
Responding to Appellant’s argument, the Examiner maintains that
“because Thomas teaches operating the heating elements by drawing
electrical current from the onboard battery after disconnection of the vehicle
from the plug~in port ot the power supply . . . This implies that the vehicle
first checks to deterrnine if the vehicle is plugged in before powering the
heating elements with the battery.” Ans. 9.
We are not apprised of error in the Examiner’s rejection of claim 20 at
least because Appellant does not identify any errors with this finding. See
Reply Brief. Therefore, we sustain the rejection of claim 20 under 35 U.S.C.
§ 102(a)(1).
Obvious over Thomas, Sposato, and Davidson
Independent claim 1 and dependent claims 2, 5, 7–9
Claim 1 requires, in part, “wherein said electrically powered heating
device [1] is mounted through an opening in a transmission housing of said
transmission and [2] includes a probe that extends into a sump of said
transmission.” Appeal Br. 18.
In rejecting claim 1 as obvious over Thomas, Sposato, and Davidson,
the Examiner finds the primary reference Thomas fails to disclose the above
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disputed limitation. Final Act. 13. To cure the deficiency in part 1 of the
limitation, the Examiner finds “Sposato, in the related field of oil heating
systems for a vehicle, teaches wherein said electrically powered heating
device (solar panel 80 provides power to first heating element 82 and second
heating element 84, para. 0035, fig. 8) is mounted through an opening in a
transmission housing of said transmission (heating elements in fig. 8 utilize
an internal mounting protruding inside a transmission oil reservoir to heat
the transmission oil, para. 0035, fig. 8).” Id. at 13–14. To account for part 2
of the limitation, the Examiner finds “Davidson, in the related field of
transmission fluid heaters, teaches wherein said electrically powered heating
device (heater body 2 is tightened to a threaded opening in a transmission
pan and a power cord 1 is connected to the heater body 2, para. 0014)
includes a probe (temperature sensor 5 is an internal part of heater body 2,
para. 0017, fig. 4) that extends into a sump of said transmission (temperature
sensor limits current to maintain a temperature to heat the transmission fluid
in the transmission pan, para. 0006).” Id. at 14.
In contesting the rejection of the above limitation in claim 1,
Appellant argues:
Sposato discloses a solar powered heating element 84 that
protrudes into a transmission oil pan 88 (see Figure 8 and
[0035]), and Davidson discloses a heater 8 installed through an
oil pan 9 (see Figure 7 and [0020]). These oil pan locations are
different from the claimed “sump” location. Appellant clearly
distinguished between 1) a sump mounting location and 2) an
oil pan mounting location in the specification. See, e.g., Figures
3A-4 and paragraphs [00052]-[00053]. It is therefore improper
for the Office to equate the oil pan mounting locations of the
prior art with the claimed sump mounting location.
Appeal Br. 10–11; see also Reply Br. 4–5.
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We are not persuaded at least because Appellant’s argument fail to
identify errors in the Examiner’s findings as to the combined teachings of
Sposato and Davidson. Appellant’s argument is instead concerned with two
distinct embodiments of the claimed invention described in paragraph 52
and 53 of the Specification, which correspond to Figures 3A–3B and Figure
4, respectively. However, only the embodiment disclosed in paragraph 52
and Figures 3A and 3B is relevant to the claim before us. See Appeal Br. 2,
Summary of Claimed Subject Matter for Claim 1). Paragraph 52 discloses
that “the heating device 64 is inserted through a hole 70 in a transmission
housing 72 of the transmission 60,” which corresponds to part 1 of the
disputed limitation. The Examiner finds that Sposato’s “heating elements in
fig. 8 utilize an internal mounting protruding inside a transmission oil
reservoir to heat the transmission oil, para. 0035, fig. 8.” Final Act. 13–14.
In other words, the Examiner finds that “Sposato shows the second heating
element 84 is installed through an opening in the transmission housing.”
Ans. 9 Appellant fails to adequately explain why this finding in Sposato as
to part 1 of the limitation is in error.
For part 2 of the disputed limitation, the Examiner relies on Davidson
for teaching that the electrically powered heating device “includes a probe
that extends into a sump of said transmission.” Final Act. 14. Unlike
Appellant’s embodiment of Figure 4 which shows an oil pan 76 separate
from the transmission housing 72, the relevant embodiment of Figure 3A
shows an oil sump 75 that is not separate from the transmission housing 72.
The Examiner finds that the electrically powered heating device of Davidson
includes a probe or temperature sensor that “limits current to maintain a
temperature to heat the transmission fluid in the transmission pan.” Final
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Act. 14 (citing Davidson ¶ 6). “Thus heating, in a controlled manner, the oil
or transmission fluid in an engine’s oil or transmission pan, or a liquid to be
heated contained in a tank or reservoir.” Davidson ¶ 6. Paragraph 52 of
Appellant’s Specification explains that “[a] probe 74 of the heating device
64 may extend inside the transmission 60 such that it is in direct contact with
the transmission fluid 58. For example, in one non-limiting embodiment, the
probe 74 extends into a sump 75 of the transmission 60.” We are
unpersuaded of error because Appellant’s arguments fail to identify why the
Examiner’s finding of a temperature sensor (probe) that extends into a
transmission pan (sump) to heat the transmission fluid in Davidson is
erroneous in light of Appellant’s Specification supra. We also note that
paragraph 35 of Sposato discloses that a “heating element is used to protrude
internally into other oil reservoirs, for example transmission oil reservoir and
heat a plurality of vehicle fluids, for example in this embodiment,
transmission oil.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103, including dependent claims 2, 5, and 7–9, which are not
argued separately.
Dependent claim 21
We are not persuaded that Figure 8 of Sposato, on which the
Examiner relies, “does not fairly teach or suggest a boss that marks the
mounting location of the heating device on the transmission housing”
(Appeal Br. 11) because the evidence of record supports the Examiner’s
position. Similar to the location of the annotated marking in Figure 8, which
the Examiner finds marks the mounting location of heating element 84
(Final Act. 17), we find Figures 4 of Sposato shows heating element 48
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mounted and “thermally coupled to the motor oil reservoir of the engine”
(Sposato ¶ 29). We also find a similar marking in Figure 7 of Sposato that
marks the location where heating element 76 either threaded or snapped into
a prepared opening. Id. ¶ 34. Thus, we sustain the rejection of claim 21
under 35 U.S.C. § 103.
Obvious over Thomas, Sposato, Davidson, and Gries
Dependent claim 3
In contesting the rejection of claim 3 as unpatentable over Thomas,
Sposato, Davidson, and Gries, Appellant argues that “[i]f one were to further
modify Thomas to include the heat transmitting net of Gries, then the
heating element of Thomas (as modified by Sposato and Davison) would no
longer include a ‘probe’ as required by claim 1. Accordingly, the proposed
modification is improper because the result of such a modification is a
construct that lacks each feature of claim 1 (i.e., the claim from which claim
3 depends).” Appeal Br. 12; Reply Br. 6.
The Examiner is unpersuaded by Appellant’s argument “because the
probe 11 has nothing to do with combining the teaching of Gries for a PTC
heater instead of the resistive heat element of Thomas.” Ans. 11.
We also are unpersuaded. As discussed previously with respect to
claim 1, the Examiner relies on Davidson for teaching a probe, not Thomas.
See Final Act. 14. As such, Appellant’s argument cannot demonstrate error
in the rejection.
Further, Appellant contends that the Examiner’s combination of
Thomas, Sposato, and Davidson “to modify the heater of Thomas with the
heater of Gris to provide a positive temperature coefficient (PTC) heater”
(Final Act. 18) would not have been obvious because “[a] heat transmitting
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net would not be submergible within an oil pan.” Appeal Br. 12–13; Reply
Br. 6. We are unpersuaded because the Examiner’s proposed modification is
not directed to “a heat transmitting net,” but, rather, to a PTC heater as
taught by Gries. And, Appellant’s Specification indicates that a PTC heater
can be “positioned in direct contact with the transmission fluid 58.” Spec. ¶
50. Accordingly, we sustain the rejection of claim 3 under 35 U.S.C. § 103.
Obvious over Thomas, Sposato, Davidson, and Huyghe
Dependent claim 4
We disagree that the Examiner’s proposed modification would render
the device of Thomas unsatisfactory for its intended purpose because “[a]
primary objective of Thomas is to provide a ‘submersible’ heating element.”
Reply Br. 6 (citing Thomas ¶ 23); see also Appeal Br. 13. Nothing in
paragraph 23, which describes the embodiment of Figure 1, indicates that
Thomas’s primary objective is to provide a submersible heating element.
Also, the Examiner relies on the embodiment shown in Figure 2 and
described in paragraphs 28–30 of Thomas for teaching “a vehicle controller
101 may operate the resistive heating elements 108 to warm the transmission
oils at selected times.” Final Act. 13. As discussed above with respect to
claim 1, the Examiner relies on Davidson not Thomas for teaching an
electrically powered heating device including a probe that extends into a
sump of the transmission. Id. at 14. Thus, Appellant’s argument against the
proposed combination with the infrared heating device of Huyghe is
baseless. Accordingly, we sustain the rejection of claim 4 under 35 U.S.C.
§ 103.
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Obvious over Thomas, Sposato, Davidson, and Beattie, Jr.
Dependent claim 22
Because Appellant relies on arguments presented for claim 1 in
contesting the rejection of claim 22, we sustain the rejection of claim 22
under 35 U.S.C. § 103 for the same reasons.
Obvious over Thomas, Davidson, and Datta
Dependent claim 23
“Claim 23 requires that ‘logic for deriving the start time is stored
within a look-up table on a control module that is adapted to control the
electrically powered heating device.’” Appeal Br. 14. Appellant argues it
would not be “obvious to modify the controller of Thomas to include logic
for deriving the start time that is stored within a lookup table on the
controller. The start time of Thomas is based on a selected/rotating schedule,
which means that the user must specifically set the schedule for operating
the heating element. Since the schedule is set by the user, there is no need
for any logic for ‘deriving’ the start time.” Appeal Br. 14. Appellant then
concludes that the Examiner’s proposed “motivation for modifying Thomas
to meet the requirements of claim 23 lacks any rational underpinning and is
an improper hindsight reconstruction of the claimed invention.” Id.
The Examiner is unpersuaded “because Datta teaches look-up tables
to store a variety of data and information including desired departure times
and preferences.” Ans. 11–12. According to the Examiner, “[t]he
information in the lookup table in Datta is used to deterrnine the heater
settings and heating time to reach the desired temperature based upon the
current temperature and desired temperature and setting tile selected/rotating
schedule of Thomas would still require logic to determine how long to heat
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the fluid and when to start heating the fluid in order to bring the fluid up to
the required operating temperature when the user is scheduled to drive the
vehicle.” Id. at 12 (citing Datta ¶¶ 20, 30, and 31).
We are not apprised of error in the rejection of claim 23 because
Appellant has not disputed the Examiner’s finding and rationale. Cf. Reply
Br. 6. Therefore, we sustain the rejection of claim 23 under 35 U.S.C.
§ 103.
Obvious over Davidson, Blaha, and Thomas
Independent claim 24
“Claim 24 requires ‘wherein said electrically powered heating device
includes a heater plate mounted to a wall inside an oil pan of said
transmission.’” Appeal Br. 14. Appellant contends that:
The Examiner acknowledges that Davidson fails to disclose
these features. Blaha and Thomas both fail to cure these
deficiencies because neither discloses a heating element that is
"mounted to a wall inside an oil pan." Although Blaha discusses
welding or brazing the plate, it does not specifically discuss
doing so at a wall inside an oil pan. Thomas does not disclose a
heater plate, let along one mounted to a wall of an inside wall of
an oil pan.
Id. at 14–15.
Appellant’s contention against Blaha and Thomas as not disclosing a
heating element mounted to a wall inside an oil pan is unpersuasive of error
because the Exmainer relies on Davidson for teaching “a heater (heater body
2 houses a heating element that is connected to a power cord 1, para. 0014,
fig. 4) mounted to a wall inside an oil pan of said transmission (heater body
2 is tightened to a threaded opening in a transmission pan, para. 0006, fig.
4).” Final Act. 21; Ans. 12.
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Appellant also asserts that “[m]odifying Davidson to include the
heater plate of Blaha would render the heater of Davidson unsatisfactory for
functioning as a drain plug.” Appeal Br. 15; Reply Br. 7.
The Examiner disagrees and states that the combination of Davidson
and Blaha to teach a heater plate does not require bodily incorporation to
render the modified device unsatisfactory for its intended purpose. Ans. 12–
13.
Appellant’s assertion is not persuasive at least because no reasoning
or explanation is provided as to why Davidson’s device would be rendered
unsatisfactory as a drain plug. Morevoer, “it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983
(citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed.
Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Here, the
Examiner does not propose that the features of Blaha be physically
incorporated into the structure of Davidson. Instead, the Examiner
concludes that the combined teachings of the references would have
suggested to one of ordinary skill in the art Appellant’s invention. See Ans.
12–13. Appellant’s argument overlooks “the relevant combined teachings of
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the . . . references.” Andersen, 391 F.2d at 958 (dismissing the argument
that a combination would result in an inoperative structure).
Therefore, we sustain the rejection of claim 24 under 35 U.S.C. § 103.
Obvious over Oh and Stevens
Independent claim 25
Claim 25 requires, in part, “‘wherein said transmission cooling lines
are routed through said electrically powered heating device for warming said
transmission fluid as it is communicated inside said transmission cooling
lines.’” Appeal Br. 15.
In rejecting claim 25 as unpatentable over Oh and Stevens, the
Examiner finds that Oh discloses transmission cooling lines 50, 60, and 70
“adapted to communicate transmission fluid to and from said transmission
(fluid from transmission 1 is fed through hose 50 to oil cooler 2 which then
feeds fluid through hose 60 and nipple 30 to housing 10 and the fluid then
passes out through nipple 40 and hose 70 back to transmission 1.” Final
Act. 22 (citing Oh ¶ 27, Fig. 1).
Appellant argues that Oh fails to disclose “‘transmission cooling
lines’ as the entire disclosure is directed to engine cooling rather than
transmission cooling.” Id. at 15–16. This argument is unpersuasive because
Appellant’s blanket disagreement fails to adequately explain why the
Examiner’s finding in Oh are erroneous.
Appellant also argues that “the lubricant lines 24, 26, of Stevens do
not actually pass ‘though’ the heather element 44.” Id. at 16 (citing Stevens
Fig. 3). The Examiner is unpersuaded “because the transmission lines of Oh
in fig. 2 are routed through the heating device and Steven teaches warming
the fluid within the lines.” Ans. 13; see also Final Act. 22–23 (citing Oh,
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heating body 20). Appellant responds that “the lines 30, 40 are attached to
the housing 10 but are not ‘routed through’ an electrically powered heating
device.” Reply Br. 7. But, as discussed above, the Examiner isn’t relying
on intake nipple 30 and exit nipple 40 as transmission lines in Oh. See Final
Act. 23 (citing Oh ¶¶ 29, 30, 33). As such, we are not apprised of Examiner
error.
Accordingly, we sustain the rejection of claim 25 under 35 U.S.C.
§ 103.
Obvious over Thomas and Tölle
Independent claim 26
Claim 26 requires, in part, “‘wherein said electrically powered heating
device is mounted inside said transmission oil cooler.’” Appeal Br. 16.
Appellant argues that Tölle, on which the Examiner relies, fails to teach this
feature “because portions of the heating element 2 extend outside of the heat
exchanger 1. Therefore, the heating element 2 is not ‘mounted inside’ the
heat exchanger 1.” Appeal Br. 16; Reply Br. 7–8. The Examiner is
unpersuaded because as depicted in figure 2 of Tölle, the heating element 2
is inside the heat exchanger.” Ans. 13.
We are not persuaded of error because claim 26 doesn’t require the
heating device to be mounted and fully enclosed within the heat exchanger.
Instead, the claim requires the heating device to be mounted or attached
inside the heat exchanger. Figures 1 and 2 of Tölle show heating element 2
attached inside heat exchanger 1.
Accordingly, we sustain the rejection of claim 26 under 35 U.S.C.
§ 103.

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CONCLUSION
The decision to reject claims 1–5, 7–9, 14, and 16–26 is affirmed.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22 112(a) Written Description 22
9, 19 112(b) Indefiniteness 9, 19
14,
16−20
102(a)(1) Thomas 14, 16–
20

1, 2, 5,
7−9, 21
103 Thomas, Sposato, 1, 2, 5,
7−9, 21

3 103 Thomas, Sposato,
Davidson, Gries
3
4 103 Thomas, Sposato,
Davidson, Huyghe
4
22 103 Thomas, Sposato,
Davidson, and
Beattie, Jr.
22
23 103 Davidson, Datta 23
24 103 Davidson. Blaha
Thomas
24
25 103 Oh, Stevens 25
26 103 Thomas, Tölle 26
Overall
Outcome
1–5, 7–9,
14, 16–
26

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED