Ruona, William Charles. et al.

Patent Trials and Appeals Board

Jul 2, 2020

13617320 - (D) (P.T.A.B. Jul. 2, 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.
13/617,320 09/14/2012 William Charles Ruona 83249985 9204
36865 7590 07/02/2020
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
EXAMINER
PICON-FELICIANO, RUBEN
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM CHARLES RUONA,
GOPICHANDRA SURNILLA, and DAVID KARL BIDNER
____________

Appeal 2018-005828
Application 13/617,320
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3, 9–12, and 16–32, which are all the
pending claims. See Appeal Br. 9–26; Non-Final Act. 1 (Office Action
Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
An oral hearing was held on March 17, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 3.
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Application 13/617,320

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to a charge air cooler for an
internal combustion engine, and to reducing entry of condensation (e.g.,
water droplets) into the combustion chambers of the engine. See Spec., p. 1,
ll. 3–16. Claims 3, 9, and 17 are independent. Claim 3, reproduced below
with emphasis added, is illustrative of the subject matter on appeal.
3. A charge air cooler, comprising:
an inlet to admit charge air;
a plurality of heat exchange passages to remove heat
from the charge air;
an outlet opening positioned at a charge air exit
discharging charge air from the heat exchange passages to a
downstream intake passage upstream of an engine intake
manifold; and
a dispersion element including a mesh-like screen
positioned at and extending fully across the outlet opening, the
dispersion element uniformly patterned fully across the outlet
opening, wherein the screen is positioned below all heat
exchange passages.

EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Kennedy US 7,011,080 B2 Mar. 14, 2006
Steurer US 2010/0300647 A1 Dec. 2, 2010
Palm US 2011/0094219 A1 Apr. 28, 2011
Wenzel US 2011/0173954 A1 July 21, 2011

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REJECTIONS
The following rejections are before us for review:
I. Claims 17–20, 23, and 25–31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Palm, Steurer, and Wenzel.
Non-Final Act. 3–9.
II. Claims 3, 9, 16, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Steurer and Wenzel. Id. at 9–13.
III. Claims 10–12, 21, 22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steurer, Wenzel, Palm, and
Kennedy. Id. at 13–15.

ANALYSIS
All the claims recite an engine’s charge air cooler comprising an inlet
opening to admit charge air, a plurality of heat exchange passages, an outlet
opening to expel charge air, and a dispersion element that extends fully
across the outlet opening, where both the outlet opening and the dispersion
element extending thereacross are “positioned below all heat exchange
passages.” Appeal Br., Claims App. Resolution of this appeal turns on
whether this positioning—the outlet opening and the dispersion element
being located below the heat exchange passages—is accounted for in the
prior art cited by the Examiner. Upon review of Appellant’s arguments, we
agree with Appellant that it is not. See Appeal Br. 15–16; Reply Br. 2–4.
In all the rejections on appeal, the Examiner relies on a combination
of Steurer and Wenzel to teach an engine’s charge air cooler with an outlet
opening and a mesh screen (i.e., a dispersion element) that could extend
fully across the outlet opening. The Examiner indicates that Steurer includes
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Application 13/617,320

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“an outlet configured to discharge the charge air from the heat exchange
passages” and “a dispersion element extending at least partially across the
outlet.” Non-Final Act. 9. The Examiner acknowledges that Steurer does
not disclose the limitation that the dispersion element includes a “mesh-like
screen” that “extends fully across the outlet.” Id. at 11 (emphasis omitted).
But, citing Wenzel’s use of a mesh filter “to collect particulates, debris
and/or condensate from . . . exhaust gases,” the Examiner concludes that “it
is well-known in the art to have a mesh-like screen that extends fully across
an outlet opening of a heat exchanger.” Id. at 12 (emphasis omitted).
As a preliminary matter, we—like Appellant—question whether
Wenzel teaches a dispersion element as claimed. We agree with Appellant
that Wenzel discloses cylindrical screen 30 positioned where exhaust gas
enters an engine’s air intake. On appeal, Appellant argues that the Examiner
has not adequately explained why one of ordinary skill in the art would
modify Wenzel’s cylindrical screen to extend fully across an outlet opening.
See Appeal Br. 13–14, 16. The Examiner’s only explanation on this point is
that “it would have been obvious . . . to have modified the charge air cooler
of Steurer to further include a mesh-like screen as part of a dispersion
element extending fully across the outlet opening.” Non-Final Act. 12–13.
Appellant argues that the Examiner’s rationale is not sufficiently articulated
to support the rejections before us. We need not discuss this question
further, however, because we conclude that we cannot sustain the rejections
for another reason.
In particular, Appellant persuasively argues that the rejections on
appeal do not account for a limitation in each of the claims before us—that
the mesh-like screen and the outlet opening are both located below the heat
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exchange passages. We agree with Appellant that the Examiner’s rejections
fail to discuss this claimed limitation and that Steurer does not disclose the
positioning of an outlet (or discharge) opening and a dispersion element
extending thereacross below the heat exchange passages.
In the Answer, the Examiner summarily dismisses this portion of the
claims, noting that “the charge air cooler of Steurer can be positioned at
different orientations with respect to the engine system.” Ans. 21. But
Appellant correctly notes that the claimed limitation does not relate
specifically to the placement of the cooler within the engine, but rather to
“the relative positioning of the mesh-like screen to the heat exchange
passages.” Reply Br. 3.
Moreover, contrary to the Examiner’s statement in the Answer, our
review of Steurer shows that the orientation of Steurer’s drawings and
placement of the outlet is not arbitrary. Instead, the various embodiments of
dispersion elements taught in Steurer demonstrate that they were aimed at
placing the outlet opening above the heating elements, thus preventing the
very arrangement of structure claimed here—an outlet near liquid
condensation under the heating coils. See Steurer ¶¶ 5–13; Figs. 1, 5–14.
Indeed, it is Appellant’s disclosure that observes that it is the positioning
recited, whereby the outlet opening is below the heat exchange passages,
which creates the challenge presented by condensation being close to the
outlet—namely, that “water droplets may be blown out of the charge air
cooler and into the combustion chambers of the engine resulting in increased
potential for engine misfire, loss of torque and engine speed, and incomplete
combustion, for example.” Spec., p. 1, ll. 12–16; see id. at p. 1, l. 17 – p. 2,
l. 17; p. 9, l. 3 – p. 10, l. 16; Fig. 2.
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We note that any consideration of whether it may have been obvious
to one of ordinary skill in the art to locate the outlet opening and dispersion
element below the heat exchange passages (and thereby encompass the
claimed teaching)—for example, if there are placement or orientation
challenges in designing the structural arrangement—is outside the scope of
the rejections before us for review. It may be possible that such positioning
would be obvious, but that conclusion is not supported by the objective
evidence before us.
Rejections based on obviousness must rest on a factual basis. In
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). For the reasons discussed herein, we
agree with Appellant that the Examiner has not supplied a sufficient factual
basis that either Steurer or Wenzel teaches a charge air cooler where the
outlet opening and the dispersion element extending thereacross are
positioned below the heat exchange passages.
We find that the rejections relying on Steurer and Wenzel are
premised on a finding not supported by a preponderance of the evidence.
Accordingly, we do not sustain them.

DECISION
We REVERSE the Examiner’s decision rejecting claims 17–20, 23,
and 25–31 under 35 U.S.C. § 103(a) as being unpatentable over Palm,
Steurer, and Wenzel.
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We REVERSE the Examiner’s decision rejecting claims 3, 9, 16, and
32 under 35 U.S.C. § 103(a) as being unpatentable over Steurer and Wenzel.
We REVERSE the Examiner’s decision rejecting claims 10–12, 21,
22, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Steurer,
Wenzel, Palm, and Kennedy.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20, 23,
25–31 103(a) Palm, Steurer, Wenzel
17–20,
23, 25–31
3, 9, 16, 32 103(a) Steurer, Wenzel 3, 9, 16, 32
10–12, 21,
22, 24 103(a)
Steurer, Wenzel, Palm,
Kennedy
10–12,
21, 22, 24
Overall
Outcome
3, 9–12, 16–32

REVERSED