Jim William. Dunham et al.

Patent Trials and Appeals Board

Jul 19, 2019

14630951 - (D) (P.T.A.B. Jul. 19, 2019)

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.
14/630,951 02/25/2015 Jim William DUNHAM 83502616;
67186-163 PUS1
3598
46442 7590 07/19/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SIDDIQUEE, MUHAMMAD S
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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 JIM WILLIAM DUNHAM, ERIC EMIL JACKSON, PAUL ELIA,
TIMOTHY ALAN MOUCH, JAGJIT ROMANA, CHRIS P. ROXIN,
CHARLIE QIAN, and STEPHEN PIEN
____________

Appeal 2018-005187
Application 14/630,9511
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner’s rejection of claims 1, 2, 4–10, and 17–27.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.

1 Appellant is the Applicant, Ford Global Technologies, LLC, which is
identified as the real party in interest. App. Br. 1.
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BACKGROUND
The subject matter on appeal is directed to “a battery thermal
management system for an electrified vehicle. The battery thermal
management system is configured to heat a battery assembly if its
temperature is below a first temperature threshold and cool the battery
assembly if its temperature is above a second temperature threshold.”
Spec. ¶ 1.
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief, with emphasis added
to relevant limitations at issue in this appeal:
1. A battery thermal management system, comprising:
a battery assembly;
a coolant subsystem that circulates coolant through said battery
assembly;
a refrigerant subsystem that circulates a refrigerant; and
said battery assembly is heated by a first portion of said coolant
exiting from an engine if a temperature of said battery assembly
is below a first temperature threshold and is cooled by a second
portion of said coolant from a chiller if said temperature is
above a second temperature threshold, said refrigerant
exchanging heat with said second portion of said coolant within
said chiller.
App. Br. 9.

STATEMENT OF THE CASE
The Examiner concludes that appealed claims 1, 2, 4–10, and 17–27
would have been obvious to one of ordinary skill in the art at the time of the
invention for the reasons stated on pages 4–9 of the Final Office Action.
Specifically, the claims stand rejected under 35 U.S.C. § 103 as
follows:
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I. Claims 1, 2, 4, 5, 8, and 9, and 26 over Nemesh2 in view of
Jackson3 (Final Act. 4–6, 7–8);
II. Claims 6, 7, and 17–25 over Nemesh and Jackson, in view of
Lombardo4 (id. at 5–6); and
III. Claims 10 and 27 over Nemesh and Jackson in view of
Enomoto5 (id. at 6, 8).
The Examiner’s findings and conclusions that apply to each of the
above rejections, and Appellant’s arguments thereto, may be summarized as
follows. The Examiner finds, and Appellant does not dispute, that Nemesh
discloses a battery thermal management system that meets most of the
limitations recited in claims 1 and 26. Final Act. 4, 7. Relevant to this
appeal, the Examiner finds that although Nemesh contains a battery
assembly that is “capable of being heated [by] the coolant heated from an
engine,” Nemesh “remains silent that the coolant directly com[es] out of the
engine.” Id. Turning to Jackson, the Examiner finds that it was known at
the time of the invention “to utilize hot coolant directly from the engine to
heat the battery system as taught by Jackson [Fig. 1A, paragraph 0017].” Id.
Based on the combined disclosures of Nemesh and Jackson, the Examiner
concludes that it would have been obvious to the skilled artisan to use “hot
coolant directly from the engine in order to have efficient utilization of the
thermal energy.” Id. at 4–5, 7–8. See also id. at 2 (explaining how
“utilizing heated fluid directly from the engine results in less heat loss and
exclusion of the heater (56) [of Nemesh] which can be reasoned as efficient

2 US 2009/0280395 A1, published Nov. 12, 2009.
3 US 2014/0144160 A1, published May 29, 2014.
4 US 2014/0216689 A1, published Aug. 7, 2014.
5 US 2016/0339767 A1, published Nov. 24, 2016.
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utilization of the thermal energy.”); Adv. Act. 2 (“Engine hot coolant is
readily available in the system and it will go [to] waste if not utilized. On the
other hand, utilizing a separate heater [as in Nemesh (56)] requires extra
energy/cost to run.”).
OPINION
Rejection I
We address the claims separately to the extent they are so argued by
Appellant.
With respect to the rejection of claims 1, 2, 4, 5, 8, and 9, Appellant
presents arguments only directed to limitations appearing in independent
claim 1. We, therefore, select this claim as representative and decide the
appealed rejection of these claims on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv). We have considered Appellant’s arguments (App. Br. 3–
6; Reply Br. 1–3) and are unpersuaded that Appellant has identified
reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011). Therefore, we sustain the obviousness rejection
of claims 1, 2, 4, 5, 8, and 9 based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Final
Action and in the Answer. We add the following.
Appellant argues that the Examiner’s proposed modification “would
improperly change the principle of operation of Nemesh” because Nemesh’s
“engine coolant loop 30 . . . is a completely separate coolant loop from the
battery coolant loop 40,” and “[m]odifying these loops to somehow
communicate engine coolant from the loop 30 to the battery 28 of Nemesh
would require a substantial reconstruction and redesign of” Nemesh’s
system. App. Br. 4. Thus, Appellant argues that the proposed modification
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“would completely change the manner in which Nemesh was designed to
heat the battery coolant, thereby changing its principle of operation.” Id.
Appellant also argues that the Examiner’s proposed modification of
Nemesh “would improperly render Nemesh unsatisfactory for its intended
purpose” because “[m]odifying Nemesh to replace the heater 56 with
heating via the engine cooling loop 30 would render Nemesh unsatisfactory
for heating the battery when the vehicle is off and plugged-in for battery
charging.” Id. at 4–5 (emphasis added).
These arguments are not persuasive. Here, we share the Examiner’s
view that a substantial reconstruction or redesign would not be necessary to
incorporate the heated coolant from Nemesh’s engine 24 directly to the
battery assembly 28. Ans. 8–9. The Examiner provides two drawings for
support. Id. The first is Nemesh’s “original system” as depicted in
Nemesh’s Figure 1 set forth below:

Ans. 8. The Examiner’s reference to Nemesh’s “original system” illustrated
in Figure 1 above includes, inter alia, battery system 28 and engine 24. Id.
The Examiner also provides the following drawing which depicts the
Examiner’s proposed “modified system”:
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Id. at 9. Nemesh’s Figure 1, as modified by the teachings of Jackson,
appears to merely add two additional coolant lines from coolant line 48 to
engine 24. Id.
Appellant does not persuasively argue, much less demonstrate, how
the addition of what appears to be only two coolant lines to Nemesh’s
system can be considered a “substantial reconstruction and redesign.” In our
view, the differences between Nemesh’s system and that proposed by the
Examiner constitute a seemingly minor change, not a “substantial” rework of
the Nemesh system as Appellant avers. App. Br. 4; Reply Br. 1–3. In any
event, both Nemesh’s system and the Examiner’s modified system heat
fluid––albeit by different mechanisms––and flow that fluid through the
battery 28. Nemesh ¶ 19; Final Act. 2, 4–5 (citing Jackson ¶ 17). Thus, we
cannot agree with Appellant that the Examiner’s proffered modification
somehow changes this principle of operating Nemesh’s system. App. Br. 4;
Reply Br. 1–3; Compare Nemesh ¶¶ 7, 19 (explaining an “advantage is that
the battery thermal system provides better heat transfer by employing a
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liquid rather than air as the heat transfer medium” and in one mode, “[t]he
battery coolant heater 56 is activated and transfers heat to the coolant as it
passes through. The heat is then transferred to the battery pack 28 as the
coolant flows through it, thus warming the battery pack 28”) with Ans. 9
(explaining how “[i]n the modified system [], while the heater (56) is turned
off, the battery pack (28) is heated by the first portion of heated coolant
exiting from the engine (24)”).
Moreover, as highlighted in the Examiner’s annotated drawing of the
Nemesh “modified system,” the Examiner does not propose eliminating
heater 56 from the arrangement. Ans. 10. Thus, Appellant’s argument
based on this incorrect premise is unavailing. App. Br. 4–5.
We furthermore find no error in the Examiner’s proffered rationale for
modifying the Nemesh system with the teachings of Jackson. Final Act. 2,
4–5; Adv. Act. 2; Ans. 11.
Claim 26
For independent claim 26, Appellant relies on essentially the same
arguments as those provided for the patentability of claim 1. App. Br. 7.
Those arguments are unpersuasive for the reasons we have indicated with
respect to claim 1 supra.
Appellant furthermore asserts that Nemesh’s coolant subsystem 40
does not include an engine because Nemesh’s “engine 24 is part of a
separate engine coolant system 30” and “coolant system 30 does not include
a three-way valve or a chiller.” Id. at 7–8. This argument is unpersuasive,
however, because Appellant fails to address the totality of the art upon
which the Examiner relies––namely, the combined teachings of Nemesh and
Jackson. Final Act. 7–8. Here, we emphasize that “[n]on-obviousness
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cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Thus, for these reasons, and those provided by the Examiner, we are
of the opinion that Appellant has failed to identify reversible error in the
Examiner’s rejection of claims 1, 2, 4, 5, 8, 9, and 26. We, therefore, sustain
the Examiner’s rejection of these claims.

Rejection II
In arguing the rejection of claims 6, 7, and 17–25, Appellant relies on
essentially the same arguments as those provided for the patentability of
claim 1. App. Br. 6. Those arguments are unpersuasive for the reasons we
have indicated with respect to claim 1 supra.
We also find no persuasive merit to Appellant’s bare assertion that the
prior art does not disclose certain limitations recited in claims 17–25. Id. at
6–7; see also Final Act. 5–6 (making specific factual findings and legal
conclusions as to claims 6, 7 and 17–25). See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[T]he Board [has] reasonably interpreted Rule 41.37
to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
The rejection of claims 6, 7, and 17–25 is therefore sustained.

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Rejection III
Claim 10
Appellant’s reliance on previous arguments in asserting the non-
obviousness of claim 10 falls short for the reasons we have already provided
with respect to claim 1 supra.
Claim 27
Appellant relies on essentially the same arguments as those provided
for the patentability of claim 1. Noteworthy here, however, is Appellant’s
misunderstanding that the underlying rejection is based on a combination of
Nemesh, Jackson, and Lombardo. App. Br. 8. The rejection, however,
relies on the combined teachings of Nemesh, Jackson, and Enomoto. Final
Act. 8. Furthermore, Appellant’s arguments with respect to claim 1 deal
with a limitation not appearing in claim 27––namely, the “coolant exiting
from an engine.” Compare App. Br. 9 with id. at 11.
These issues notwithstanding, Appellant does not persuade us of
reversible error in the rejection of claim 27. Here, we note Appellant’s
conclusory assertion that the rejection is not supported by a reasoned
analysis. Such bare statements do not specifically discuss, much less reveal
error in, the Examiner’s findings and conclusions as set forth at pages 8 and
9 of the Final Action.
We also find no persuasive merit to Appellant’s conclusory assertion
that the prior art does not disclose certain limitations recited in claim 27.
See In re Lovin, 652 F.3d at 1357. Such assertions lack any degree of
specificity and do not rise to the level of a separate argument for
patentability under our rules. 37 C.F.R. § 41.37(c)(1)(iv).
The rejections of claims 10 and 27 are therefore sustained.

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DECISION
We affirm the rejection of claims 1, 2, 4–10, and 17–27.
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