Erik J. Christen

Patent Trials and Appeals Board

Aug 11, 2020

2018008751 (P.T.A.B. Aug. 11, 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.
14/744,471 06/19/2015 Erik J. Christen 83535195; 67186-184PUS1 8558
46442 7590 08/11/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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 ERIK J. CHRISTEN
Appeal 2018-008751
Application 14/744,471
Technology Center 3700
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.
SONG, 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 1–6 and 8–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 2.
Appeal 2018-008751
Application 14/744,471

2
CLAIMED SUBJECT MATTER
The claims are directed to tire preconditioning for electrified vehicles.
Claims 1 and 13, reproduced below, is illustrative of the claimed subject
matter:
1. An electrified vehicle, comprising:
a tire;
an electrically powered heating device configured to
selectively warm said tire; and
a control module configured to command actuation of said
electrically powered heating device if the electrified vehicle is
on-plug and an upcoming drive cycle is expected within a
predetermined threshold amount of time.
13. A method, comprising:
powering a heating device during an on-plug condition of
an electrified vehicle if an upcoming drive cycle is expected
within a predetermined threshold amount of time; and
warming at least one tire of the electrified vehicle with the
heating device.
Appeal Br. 10–11, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ahmed US 4,848,510 July 18, 1989
Lavicska US 5,573,686 Nov. 12, 1996
Jones US 5,897,802 Apr. 27, 1999
McCall US 5,994,669 Nov. 30, 1999
Gray US 6,350,963 B1 Feb. 26, 2002
Petrenko US 2005/0035110 A1 Feb. 17, 2005
Vasseur US 2005/0049344 A1 Mar. 3, 2005
Currle US 6,896,047 B2 May 24, 2005
Zhu US 2006/0016793 A1 Jan. 26, 2006
Kamachi US 2012/0318783 A1 Dec. 20, 2012
Lee US 2015/0158366 A1 June 11, 2015
Appeal 2018-008751
Application 14/744,471

3
REJECTIONS
1. Claims 1–6 and 8–21 are rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 2.
2. Claims 1, 4, 5, 9, 10, and 12–21 are rejected under 35 U.S.C.
§ 103 as unpatentable over Lee or Kamachi in view of Petrenko, Lavicska,
Jones, or Gray, and McCall. Final Act. 3.
3. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Lee or Kamachi in view of Petrenko, Lavicska, Jones, or Gray, and McCall,
and further in view of Vasseur. Final Act. 4.
4. Claims 3, 6, 8, and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Lee or Kamachi in view of Petrenko, Lavicska, Jones, or
Gray, and McCall, and further in view of Ahmed and Currie. Final Act. 5.
5. Claims 14 and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Lee or Kamachi in view of Petrenko, Lavicska, Jones, or
Gray, and McCall, and further in view of Zhu. Final Act. 6.
OPINION
Rejection 1: Indefiniteness
The Examiner rejects claims 1–6 and 8–21 as being indefinite based
on the recitation “if” in independent claims 1, 13, and 21. Final Act. 2. The
Examiner determines that the claims are indefinite because the term “if”
“does not clearly set[] the metes and bounds of the claim scope clearing [sic,
clearly] indicating whether such ‘if’ conditions exist or not.” Final Act. 2.
According to the Examiner, “if no condition is met, it is unclear what the
scope of the claim is.” Ans. 6.
The Appellant disagrees and argues that “[t]he claims simply recite
that the heating device will be actuated/powered if certain conditions are
Appeal 2018-008751
Application 14/744,471

4
met” such that “[t]here is nothing unclear or ambiguous about the term ‘if’
when read in the context of the claim language and the specification,” and
that the claims would be readily understood by persons of ordinary skill in
the art. Appeal Br. 4.
We agree with the Appellant for the reasons argued. Claims may be
drafted to include conditional limitations, and we see no basis for this
rejection. Cf. Ex parte Schulhauser, No. 2013-007847 (PTAB April 28,
2016) (precedential) 2016 WL 6277792 (considering conditional language
“if” in apparatus and method claims); see also Cybersettle, Inc. v. Nat’l
Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (“It is of
course true that method steps may be contingent.”).

Rejection 2: Obviousness
The Examiner rejects claims 1, 4, 5, 9, 10, and 12–21 as unpatentable,
relying on Lee or Kamachi for disclosing a plug-in electric vehicle having a
tire, an electric heater, and a control module for actuating the heater via a
high voltage battery or via external plug-in power. Final Act. 3. The
Examiner relies on Petrenko, Lavicska, Jones, or Gray for disclosing various
known heating units, including those for heating a vehicle tire. Final Act. 3.
The Examiner further relies on McCall as disclosing “a controller that
controls a heater prior to the usual starting time or an upcoming drive cycle,”
and “a timer that would automatically allow the heater to be switched on
prior or within a predetermined time, e.g., one hour prior to starting work in
the moring [sic, morning].” Final Act. 3, citing McCall, col. 4, ll. 1–11,
Abstract; see also Ans. 6.
Appeal 2018-008751
Application 14/744,471

5
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to adapt Lee or Kamachi with a heating device for
heating a tire to melt or remove ice/snow as shown in the secondary
references, and to have modified the control modules to
determine[] a predefined threshold amount of time or a control
amount of time prior to a start of vehicle, including the upcoming
cycle[] or an expected key-on operation, if (when) the vehicle is
on-plug with a power source so as to automatically enable the
heater to be powered on and performing the warming of the tire
within the expected predetermined time to have the vehicle ready
for operation while conserving the energy without undue waste.
Final Act. 4.
As to claim 1, we agree with the Appellant that the rejection is
inadequate. Appeal Br. 5–6. Under Schulhauser, “[t]he broadest reasonable
interpretation of a system claim having structure that performs a function,
which only needs to occur if a condition precedent is met, still requires
structure for performing the function should the condition occur.” No. 2013-
007847; 2016 WL 6277792 *7. Although the Examiner relied upon McCall
as disclosing powering/actuating a heating device to warm a tire of an
electrified vehicle when the vehicle is on-plug and an upcoming drive cycle
is expected, we generally find persuasive the Appellant’s argument that
McCall does not cure the deficiencies of the combination of primary and
secondary references because McCall merely discloses
a timed thermostat switch 40 that allows a user to set a specific
time for switching a battery warmer ON and OFF. McCall
therefore has nothing to do with controlling tire warming when a
vehicle is on-plug and an upcoming drive cycle is expected. The
switch 40 is not capable of determining if a vehicle is on-plug or
if an upcoming drive cycle is expected.
Appeal 2018-008751
Application 14/744,471

6
Appeal Br. 5; Reply Br. 3.
Even if McCall’s timed thermostat switch provides teaching as to
actuating a heating device based on an upcoming drive cycle so as to
“conserv[e] the energy without undue waste” as concluded by the Examiner
(i.e., by heating the tires only prior to expected upcoming drive cycle), the
rejection does not adequately address how or why it would have been
obvious to modify the control modules of Lee or Kamachi in view of McCall
to command actuation of the heating device “if the electrified vehicle is on-
plug,” and the upcoming drive cycle is “expected within a predetermined
threshold amount of time.” In other words, claim 1 requires a controller that
executes a specific action of actuating the heating device upon meeting of
the recited conditions. However, the references relied upon do not disclose
such conditions, and although the Examiner has concluded such conditioned
function would have been obvious, the rejection does not provide reasoning
sufficient to support that conclusion.
The Examiner responds that Lee or Kamachi discloses control
modules that actuate a heater with a power source that can be “an external
source as the vehicle is a plug-in hybrid vehicle,” and “would have allowed
actuation of a heater of a vehicle when the vehicle is plug-on to an external
source in anticipation of the driving cycle/time to have the vehicle in an
improved condition.” Ans. 6–7, citing Lee ¶ 3, Kamachi ¶ 54. Although we
do not disagree with the Examiner’s contentions, the mere possibility of
such operation does not establish obviousness of the specific action of
actuating the heating device upon meeting of the recited conditions
precedent. It is not apparent that a controller of either Lee or Kamachi as
modified by McCall would operate in the manner recited, rather than, for
Appeal 2018-008751
Application 14/744,471

7
example, actuating the heating device only when the vehicle is off-plug,
and/or based on an upcoming drive cycle that is determined by a specific
time set by the user as disclosed in McCall. Therefore, we do not sustain the
Examiner’s rejection of independent claim 1.
That said, the Appellant’s arguments with respect to independent
claims 13 and 21 are not persuasive. These claims are method claims, and
thus, a step reciting a condition precedent does not need to be performed if
the condition precedent is not met. Schulhauser, No. 2013-007847; 2016
WL 6277792 **3–5; see also Cybersettle, 243 F. App’x at 607 (“It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed”); MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(11) (9th ed. Rev. 08.2017, Jan. 2018). In that regard, as
alluded to by the Appellant, albeit in the context of Rejection 1, the inclusion
of the conditional term “if” in claims 13 and 21, without any recitations
limiting what must happen if the condition is not met, renders these claims
very broad. See Appeal Br. 4 (“It appears that the Office may have mistaken
the breadth of these claims with indefiniteness.”).
Accordingly, claim 13 recites a method of warming a tire of an
electrified vehicle with a heating device, and claim 21 recites a method
wherein the heating device is powered by grid power or a high voltage
battery assembly. These claims are satisfied by the Examiner’s articulated
rejection discussed above in which the electric vehicle of Lee or Kamachi is
modified to include a heating unit of a secondary prior art reference to heat a
tire to melt or remove ice or snow. Final Act. 4.
Appeal 2018-008751
Application 14/744,471

8
Thus, we affirm the Examiner’s rejection of independent claim 13. In
addition, except for dependent claims 15 and 20, the Appellant does not
separately argue the remaining claims 14 and 16–19 that depend from
independent claim 13. Hence, the rejection of claims 14 and 16–19 is also
affirmed. We address the Appellant’s further arguments to dependent claims
15 and 20, as well as independent claim 21 infra.

Claim 15
Claim 15 depends from claim 13, and recites “determining whether a
Key-On event is expected within the predefined threshold amount of time.”
Appeal Br. 11, Claim App. The Appellant argues that “[n]one of the
asserted prior art discloses these features.” Appeal Br. 7. However, we
observe that this recitation further elaborates on the recited “if” condition
pertaining to the expected upcoming drive cycle of claim 13. As such, the
Appellant’s argument is unpersuasive for the reasons discussed relative to
claim 13, and we affirm the rejection of claim 15.

Claim 20
Claim 20 depends from claim 13, and recites that the method
comprises “warming the at least one tire during an off-plug condition by
powering the heating device with a high voltage battery assembly.” Appeal
Br. 12, Claims App. The Appellant argues that none of the prior art
discloses operation using a high voltage battery assembly during off-plug
conditions as required. Appeal Br. 7. However, the Appellant argues the
references individually whereas “[n]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
Appeal 2018-008751
Application 14/744,471

9
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Claim 20 is satisfied by the Examiner’s articulated rejection discussed above
in which the electric vehicle of Lee or Kamachi is modified to include a
heating unit of a secondary prior art reference to heat a tire to melt or
remove ice or snow. Final Act. 4. In that regard, it cannot be reasonably
disputed that an electrified vehicle such as an electric vehicle operates via its
high voltage battery. Thus, we affirm this rejection of claim 20.

Claim 21
Independent claim 21 recites “automatically warming a tire . . . with a
heating device if an upcoming drive cycle is expected,” and that the heating
device “is powered by a high voltage battery assembly if the electrified
vehicle is off-plug.” Appeal Br. 12, Claims App. The Appellant argues that
none of the prior art discloses “such an ‘automatic’ methodology for
warming a tire,” or operation using a high voltage battery assembly during
off-plug conditions as required. Appeal Br. 7. However, these arguments
are unpersuasive for reasons similar to those discussed above relative to
claims 13 and 20. In that regard, we also observe that the recitations
regarding “automatically warming” and using a high voltage battery further
elaborates on the recited “if” condition regarding the expected upcoming
drive cycle, and adds another “if” condition of the vehicle being off-plug.
Accordingly, we affirm this rejection of claim 21.
Therefore, in view of the above considerations, we reverse Rejection 2
as to claims 1, 4, 5, 9, 10, and 12, but affirm the same as to claims 13–21.

Appeal 2018-008751
Application 14/744,471

10
Rejection 3: Claim 2
The Examiner rejects claim 2 as unpatentable over Lee or Kamachi in
view of Petrenko, Lavicska, Jones, or Gray, and McCall, and further in view
of Vasseur. Final Act. 4. The Appellant relies on dependency for the
patentability of claim 2, and correctly argues that the Examiner’s application
of Vasseur fails to remedy the deficiency of the Examiner’s rejection of
claim 1. Appeal Br. 7–8. Accordingly, we reverse this rejection of claim 2.

Rejection 4: Claims 3, 6, 8, and 11
The Examiner rejects claims 3, 6, 8, and 11 as unpatentable over Lee
or Kamachi in view of Petrenko, Lavicska, Jones, or Gray, and McCall, and
further in view of Ahmed and Currie. Final Act. 5. The Appellant relies on
dependency for the patentability of these claims, and correctly argues that
the Examiner’s application of Ahmed and Currie fails to remedy the
deficiency of the Examiner’s rejection of claim 1. Appeal Br. 7–8.
Accordingly, we reverse the rejection of claims 3, 6, 8, and 11. The
Appellant’s specific arguments directed to the limitations of claims 3 and 11
are moot. Appeal Br. 8; Reply Br. 4.

Rejection 5: Claims 14 and 19
Claims 14 and 19 depend from claim 13, and the Examiner rejects
these claims as unpatentable over Lee or Kamachi in view of Petrenko,
Lavicska, Jones, or Gray, and McCall, and further in view of Zhu. Final
Act. 6. The Appellant relies on dependency for patentability of these claims,
and argues that the Examiner’s application of Zhu fails to remedy the
deficiency of the Examiner’s rejection of claim 13. Appeal Br. 9. However,
Appeal 2018-008751
Application 14/744,471

11
having found no deficiency in the Examiner’s rejection of claim 13, we
affirm this rejection of claims 14 and 19.
CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. Rejection of claims 1–6 and 8–21 under 35 U.S.C. § 112(b) as
being indefinite is reversed.
2. Rejection of claims 1, 4, 5, 9, 10, and 12–21 as unpatentable
over Lee or Kamachi in view of Petrenko, Lavicska, Jones, or Gray, and
McCall is reversed as to claims 1, 4, 5, 9, 10, and 12, and is affirmed as to
claims 13–21.
3. Rejection of claim 2 as unpatentable over Lee or Kamachi in
view of Petrenko, Lavicska, Jones, or Gray, and McCall, and further in view
of Vasseur is reversed.
4. Rejection of claims 3, 6, 8, and 11 as unpatentable over Lee or
Kamachi in view of Petrenko, Lavicska, Jones, or Gray, and McCall, and
further in view of Ahmed and Currie is reversed.
5. Rejection of claims 14 and 19 as unpatentable over Lee or
Kamachi in view of Petrenko, Lavicska, Jones, or Gray, and McCall, and
further in view of Zhu is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–21 112(b) Indefiniteness 1–6, 8–21
1, 4, 5, 9,
10, 12–21
103 Lee or Kamachi,
and Petrenko,
13–21 1, 4, 5, 9,
10, 12
Appeal 2018-008751
Application 14/744,471

12
Lavicska, Jones, or
Gray, and McCall
2 103 Lee or Kamachi,
and Petrenko,
Lavicska, Jones, or
Gray, and McCall,
Vasseur
2
3, 6, 8, 11 103 Lee or Kamachi,
and Petrenko,
Lavicska, Jones, or
Gray, and McCall,
Ahmed, Currie
3, 6, 8, 11
14, 19 103 Lee or Kamachi,
and Petrenko,
Lavicska, Jones, or
Gray, and McCall,
Zhu
14, 19
Overall
Outcome
13–21 1–6, 8–12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART