Theodore Lipa

Patent Trials and Appeals Board

Jul 2, 2020

14469903 - (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.
14/469,903 08/27/2014 THEODORE LIPA III 15491-033 (H07147 US) 1654
168384 7590 07/02/2020
Dickinson Wright PLLC - Ann Arbor
350 S. Main Street
Suite 300
Ann Arbor, MI 48104
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3762
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):
DWPatents@dickinson-wright.com
tgarrett@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte THEODORE LIPA III
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Appeal 2018-008388
Application 14/469,903
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision (dated January 11, 2018, hereinafter “Final Act.”) rejecting claims 1
and 3–52 under 35 U.S.C. § 103(a) determining claims 1, 3, and 4 are
unpatentable over Applicant Admitted Prior Art (Figure 3 in Appellant’s
Specification; hereinafter “AAPA”) and Haupt (US 2008/0108293 A1, pub.
May 8, 2008); and determining claim 5 is unpatentable over AAPA, Haupt,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies MAHLE International GmbH as the
real party in interest. Appeal Br. 2.
2 Claim 2 has been canceled. Appeal Br. 13.
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and Poitier (EP 0266230 A1, pub. May 4, 1988). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims generally relate to “a HVAC module, and more
particularly relates to a valve with a curved portion offset from an axis of the
valve by an offset amount that determines proportions of air flowing on
opposite sides of the valve.” Spec. ¶ 1.
Claims 1 and 4 are independent. Claim 1 is reproduced below as
illustrative of the claimed subject matter.
1. A heating, ventilation, and air-conditioning
(HVAC) module adaptable to balance portions of air delivered
by the module to distinct zones, said module comprising:
a valve configured to rotate about an axis to variably
restrict a delivery of incoming air to a first zone and a second
zone, wherein the valve defines a curved portion characterized as
curved about and offset from the axis by an offset amount, the
curved portion forming a cavity between the axis and the curved
portion, wherein an increase to the offset amount decreases a first
portion of air delivered to the first zone relative to a second
portion of air delivered to the second zone, wherein the valve has
a closed state, in which the valve separates the incoming air from
the first portion and from the second portion and in which both
the first zone and the second zone are in communication with the
cavity, and
wherein rotation of the valve toward the closed state
decreases both the first portion and the second portion.
Appeal Br. 13 (Claims App.).
OPINION
For independent claims 1 and 4, the Examiner relies on substantially
the same evidence and reasoning to determine the claimed subject matter
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would have been obvious in view of AAPA and Haupt. Final Act. 2–4.
Appellant raises a dispositive issue regarding the Examiner’s rationale for
why a skilled artisan would have modified the valve 320 in Figure 3 of the
AAPA in view of the temperature door 26 that Haupt discloses to arrive at
the valve configuration claims 1 and 4 recite. Appeal Br. 5–8.3 In
particular, Appellant contends a deficiency exists in the Examiner’s
explanation for why a skilled artisan would have modified the valve of
Figure 3 that controls the flow of air to multiple outlets with a temperature
door that controls the mixture of cold and warm air. Id.; see also Reply Br.
2–4.
The Examiner finds that the AAPA generally discloses the recited
structures of claims 1 and 4, except that it is “silent about the valve having
[the recited] curved portion.” Final Act. 3. The Examiner finds that Haupt
teaches a valve 26 in Figure 1 that has a curved portion 38 characterized as
curved about and offset from the axis 28 by an offset amount R, wherein an

3 In the Appeal Brief, Appellant raises this issue in the context of claim 1
without specifically identifying that it applies also to claim 4. See Appeal
Br. 5–8. In fact, Appellant raises a wholly separate argument of
patentability for claim 4. Id. at 8–10. Nevertheless, the recited limitation at
issue regarding claim 1 (i.e., “the valve defines a curved portion
characterized as curved about and offset from the axis by an offset amount,
the curved portion forming a cavity between the axis and the curved
portion”) is substantially the same as a similar limitation recited in claim 4.
See id. 13, 14 (Claims App.). Moreover, the Examiner addressed this
limitation found in both claims 1 and 4 together. Final Act. 3–4. Therefore,
although Appellant does not identify specifically the fact that its
patentability argument for claim 1 applies equally to claim 4, the Examiner
has had an opportunity to address Appellant’s argument regarding the same
limitation in the context of claim 1. As a result, we view Appellant to be
disputing the Examiner’s rejection of claim 4 based also on the same ground
raised in the context of claim 1.
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increase to the offset amount decreases a first portion of path 58. Id. The
Examiner “note[s] that when applied prior arts are combined, the H[a]upt
curve of door will decrease the [AAPA] first portion of air compared to the
second zone of air.” Id. at 4. The Examiner determines,
It would have been obvious to one of ordinary skill in the
art at the time of the invention to have the [AAPA] . . .
modified with the Haupt curved door in order to control the
different amount of treated air to different zones and provide
optimum cooling/heating where desired.
Furthermore it would have been obvious to one of
ordinary skill in the art at the time of the invention to substitute
the [AAPA] . . . door with the Haupt curved door, because the
substitution of one known element for another would have
yielded predictable results of controlling air through the
different openings in order to provide conditioned air where
needed and thus provide comfort to the occupant inside the
vehicle.
Id. at 4. The Examiner clarifies that the rejection “only applie[s] the curved
door not the functioning of the H[a]upt [reference]” and the “AAPA in
combination of the H[a]upt would teach the airflow, as claimed.” Id. at 5.
Appellant contends that the Examiner’s rationale is deficient because
neither AAPA nor Haupt supports the Examiner’s finding it was known to
use the curved valve that Haupt discloses to restrict air flow and control the
amount of treated air allowed to flow to different zones. Appeal Br. 6–7.
Appellant argues, “[a]bsent the mixing function disclosed in the context of
Haupt, there is no known reason to use the rotary valve of Haupt in the first
place.” Id. at 7. We agree.
The issue is whether the Examiner has shown with sufficiency that a
skilled artisan would have known to modify the valve 322 shown in Figure 3
of AAPA, which opens to allow air to flow and closes to block the flow of
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air, with that curved door of Haupt. As Appellant correctly notes, the only
evidence in the record regarding the known uses for the curved door relates
to temperature control and adjusting the composition of the warm and cold
air upstream of a valve such as the one shown in AAPA. Appeal Br. 6–7.
Although the record supports a finding that a skilled artisan would have
known that modifying the valve 322 with the curved portion of the
temperature door 26 would restrict the flow of air through the modified
valve (see Haupt ¶ 38), the Examiner fails to show why a skilled artisan
would have sought to restrict the flow of air to one of the zones valve 322
feeds when in the open position.
To the extent the Examiner identifies a reason, it lacks evidentiary
support. In particular, the Examiner states that a skilled artisan would have
made the modification “in order to control the different amount of treated air
to different zones and provide optimum cooling/heating where desired,” but
there is no evidence that a skilled artisan knew modifying valve 322 with the
curved door would optimize cooling/heating, nor is there any evidence that a
skilled artisan knew constricting the flow of air to one zone versus another
would improve cooling/heating in the different zones.
Moreover, the Examiner has not provided sufficient evidence that
constricting the flow of air through valve 322 yielded the predictable result
of providing conditioned air where needed or that skilled artisan recognized
a problem with the amount of air valve 322 allowed to flow to the different
zone. Absent the teachings from Appellant’s Specification, there is no
evidence in the record that shows a skilled artisan recognized a benefit of
using valve 322 to restrict the flow of air when in the open state or, more
generally, that restricting the flow of air to one zone versus another would
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improve the flow of conditioned air to where it is needed. As a result, it
appears the Examiner’s reasoning was infected by impermissible hindsight.
In view of the foregoing, we are persuaded that Examiner’s rejection
of independent claims 1 and 4 was improper. The Examiner’s reliance on
Poitier does not cure the above deficiencies. Therefore, we do not sustain
the Examiner’s rejection of claims 1, 3–5.
CONCLUSION
The Examiner’s rejections of claims 1 and 3–5 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 3–5 103(a) AAPA, Haupt,
Poitier
1, 3–5

REVERSED