Ex Parte 7230345 et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201695001558 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,558 05/16/2011 7230345 297.209 6570 23598 7590 02/29/2016 BOYLE FREDRICKSON S.C. 840 North Plankinton Avenue MILWAUKEE, WI 53203 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/29/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ KOHLER CO. Requester and Appellant v. GENERAC POWER SYSTEMS, INC. Patent Owner and Respondent ____________________ Appeal 2015-007688 Reexamination Control 95/001,558 Patent US 7,230,345 B2 Technology Center 3900 ____________________ Before MARC S. HOFF, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) This is a Decision under 35 C.F.R. § 41.77(f) which incorporates the previous PTAB Decision mailed August 7, 2014 (“2014 Decision”). The 2014 Decision set forth a new ground of rejection under 37 C.F.R. § 41.77(b) of claims 1–4, 7–13, 16–21, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Cummins1, Kohler1, and Domanski, and set forth a new ground of rejection under 37 C.F.R. § 41.77(b) of claims 5, 6, 14, 15, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Cummins1, Kohler1, Domanski, and Danish. 2014 Decision 11. Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 2 In response to the new grounds of rejection, Patent Owner requested that prosecution be reopened under 37 C.F.R. § 41.77(b)(1), filing amended claims therewith.1 The Examiner, in a Determination under 37 C.F.R. § 41.77(d) mailed February 6, 2015, concluded that the amended claims overcome the Board’s new grounds of rejection (Exr. Determ. 5–9). We do not agree with the Examiner’s Determination. Claim 1, which is illustrative of the appealed subject matter, reads as follows: 1. A method of exercising an engine-driven, electrical generator, the generator generating a predetermined output voltage at a predetermined frequency with the engine running a predetermined operating speed, the method comprising the steps of: selecting a generator exercise mode for the generator; starting the engine; and running the engine at a predetermined exercise speed, the exercise speed being less than the predetermined operating speed. Prior Art Relied Upon by the Examiner: Cummins PowerCommand Control Generator Sets Operator's Manual, 960-0153C, 1-1–6-1 (Mar. 2001) ("Cumminsl"). Cummins PowerCommand Digital Paralleling Controller, S-1385d (Jan. 2002) ("Cummins2"). Cummins PowerCommand Digital Generator Set Control, S-1409a (Feb. 2002) ("Cummins3"). Cummins Commercial Mobile Power Operator's Manual Models HGJAD, HGJAE, HGAF, 2–33 (Nov. 2001) ("Cummins4"). 1 The Board denied entry of proposed new claims 25 and 26. Order Remanding Inter Partes Reexamination (mailed November 4, 2014) at 3. Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 3 TP-5580 Kohler® Portable Generator Set Service Manual, 1-1–9-1 (Sept. 1993) ("Kohler 1 "). TP5706 Kohler® Power Systems Fast-Response™ Standby Generator Sets Training Manual, 5–212 (Aug. 2001) (" Kohler2 "). TP6135 Kohler® Power Systems MP AC Setup Program for Automatic Transfer Switches, Software Operation and Installation, 1–38 (Apr. 2002) (" Kohler3 "). TP6140 Kohler® Controller Setup and Application Industrial Generator Set, 1–50 (Oct. 2001) ("Kohler4"). U.S. Patent No. 5,726,503 to Domanski et al. (iss. Mar. 10, 1998) ("Domanski"). Changing Generator Rotational Speed, Danish Wind Industry Assoc., 1– 2 (June 2003) (http://guidedtour.windpower.org/en/tour/wtrb/genpoles.htm) (last visited Feb. 5, 2011) ("Danish"). ISSUES Requester, in response to the Examiner’s Determination, argues that the specification of the ’345 patent does not support the term “exercise cycle” (Req. Comments 3) and does not support running an engine at a predetermined exercise speed “. . . for a majority of the exercise cycle” (Req. Comments 5). Requester argues that, because of the amendment to the claims, a rejection of the claims under § 112 due to the ambiguity of the term “exercise” is appropriate (Req. Comments 10–11). Requester further contends that the claims would have been obvious over the applied art because Cummins1 does not require 30 minutes of continuous operation at not less than 30% of nameplate rating (Req. Comments 14–15). Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 4 Patent Owner asserts that “majority of the exercise cycle” is fully supported by the specification and that “exercise” is a well-known term of art. PO Reply 4. The arguments made by Patent Owner and Requester present us with the following issues: 1. Does the ’345 patent support the phrases “exercise cycle” and “for a majority of the exercise cycle”? 2. Does the amendment to the claims raise the issue of the ambiguity of the term “exercise”? 3. Do the proposed amendments overcome the § 103 rejections over prior art? PRINCIPLES OF LAW 37 C.F.R. § 41.77. Decisions and other actions by the Board. (d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determi- nation that the rejection is maintained or has been overcome. (e) Within one month of the examiner’s determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner’s determination. Within one month of the date of service of comments in response to the examiner’s determination, the Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 5 owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply. (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions spe- cifically withdrawn. 35 U.S.C. § 112 requires a patentee to provide a written description that allows a person of skill in the art to recognize that the patentee invented what is claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To that end, to satisfy the written description requirement, the inventor “must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). The written description “need not recite the claimed invention in haec verba but [it] must do more than merely disclose that which would render the claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). Thus, so long as a person “of ordinary skill in the art would have understood the inventor to have been in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 6 specification, then the adequate written description requirement is met.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). The Manual of Patent Examining Procedure (MPEP) § 2258(II) (9th ed. Rev. 07.2015, Oct. 2015) states Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. § 112. Consideration of 35 U.S.C. § 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. § 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. § 112 issues would be raised as to matter in the original patent claim. Thus, a term in a patent claim which the examiner might deem to be too broad cannot be considered as too broad in a new or amended claim unless the amendatory matter in the new or amended claim creates the issue. To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Mere disclosure of alternative embodiments is not a teaching away. Id. ANALYSIS SUPPORT FOR “EXERCISE CYCLE” We do not agree with Requester that the specification fails to support the claim phrase “exercise cycle.” It is true that the specification does not describe an exercise cycle in haec verba. However, we agree with the Examiner that the ’345 patent discloses a cycle at steps 68, 70, and 72 of Figure 2 (Exr. Determ. 8–9). When the generator is operating in stand-by Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 7 mode (step 64) and power from the utility has not failed (step 66), the ’345 patent discloses entering exercise mode (step 68), starting the engine such that generator 20 generates electrical power (step 70), and operating the engine at its exercise speed for a predetermined time period (step 72). As may be seen from Figure 2, reproduced below, these steps are performed repeatedly, in order, as long as the conditions of steps 64 and 66 are satisfied. Figure 2 is a flow chart depicting the method of the ’345 patent. Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 8 On the other hand, we are persuaded by Requester’s argument that the specification does not support running an engine at a predetermined exercise speed for a majority of the exercise cycle (Req. Comments 5). The ’345 patent does not specify the amount of time the engine is to spend warming up or running at exercise speed. The Examiner has not shown that it is inherent (i.e., necessarily true) that one would run the engine at a predetermined exercise speed for a majority of the exercise cycle (see Exr. Determ. 9). The Examiner relies on Cummins1 as supposedly teaching that it is inherent to run a generator engine at exercise speed for “a minimum of 30 minutes” (Cummins1 6-1, cited at Exr. Determ. 6). We agree with Requester that Cummins1 does not disclose a requirement to run the engine for at least 30 minutes. Cummins1 contains an “Operating Recommendation[]” for a diesel generator: “[e]xercise the generator set at least once a month for a minimum of 30 minutes, under not less than 30 percent of the nameplate rating.” Id. This recommendation does not require 30 continuous minutes, and does not require that the minimum 30 minute exercise per month be performed in a single session. We agree with Requester that Cummins1 does not disclose how much time the generator is to be exercised at Rated Speed & Voltage (see Fig. 3-2 at Cummins1 3-9). Without that disclosure, Cummins1 cannot demonstrate the inherency of exercising the generator for a minimum of 30 minutes, and does not demonstrate the inherency of running the engine at a predetermined exercise speed for a majority of the exercise cycle, as is claimed. We, therefore, agree that amended claims 1, 11, and 20, as well as claims Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 9 dependent therefrom, are not supported by the required written description under 35 U.S.C. § 112, first paragraph. We do not agree with Requester’s argument that the specification does not support “actively adjusting the exercise voltage during the running of the engine at the predetermined exercise speed,” as recited in claim 20 (Req. Comments 8). Requester argues that the ’345 patent teaches only “maintaining” the exercise voltage, not “actively adjusting” it. Req. Comments 9. In the very next sentence, however, Requester contends that “[i]f there is a difference between those terms, neither Generac [n]or the Examiner have explained what is.” Id. We consider this contention to be an admission by Requester that disclosure of “maintenance” is analogous to disclosure of the claimed “active adjustment.” Further, we find that the ’345 patent’s disclosure of “increas[ing] or decreas[ing] the excitation of exciter of generator 20” (id. at col. 6, ll. 1–5) is sufficient to “actively adjust the exercise voltage,” at least temporarily. With respect to Requester’s argument that the term “exercise” in the amended claims is ambiguous (Req. Comments 10–11), we conclude that Requester’s Section 112 arguments concerning this term are not properly before us. Such arguments are only considered in inter partes reexamination “with respect to subject matter added or deleted in the reexamination proceeding.” 37 C.F.R. § 1.906(a); see Decision 7–8. As issued, claim 1 of the ’345 patent recites “running the engine at a predetermined exercise speed, the exercise speed being less than the predetermined operating speed.” As issued, claim 11 recites “running the engine at a predetermined Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 10 exercise speed, the predetermined exercise speed in the range of 40% to 70% of the predetermined operating speed of the engine.” As issued, claim 20 recites “running the engine at a predetermined exercise speed . . . , the predetermined exercise speed in the range of 40% to 70% of the predetermined operating speed of the engine.” The concepts of “exercise” and “exercise speed” are thus present in the claims of the issued patent. We conclude that “exercise” has not been added or deleted in reexamination. As a result, we further conclude that Requester has not raised a Section 112 issue with respect to subject matter added or deleted in the reexamination proceeding. “TEACHING AWAY” ARGUMENT We do not agree with the Examiner that Cummins1 teaches away from the claimed invention. While the Examiner is correct that Cummins1 explicitly warns users not to “idle the engine for long periods . . . . Idling more than 10 minutes can damage an engine” (Cummins1 3-7), Requester correctly observes that Cummins1 is directed to large diesel generators, whereas the ’345 patent is concerned with engine-driven generators of unspecified type (see Req. Comments 16–18).2 We conclude that Cummins1’s advice concerning large diesel generators is not necessarily applicable to different engine types, and should not be read as discouraging the solution claimed in the ’345 patent. See Fulton, 391 F.3d at 1201. 2 We observe that the ’345 patent refers to natural gas and liquid propane as possible engine fuels (id. at col. 4, ll. 2–3). Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 11 ORAL HEARING ARGUMENTS We need not reach Requester’s argument that Patent Owner’s explanation is contradicted by its position at oral argument (Req. Comments 11) because the alleged distinction between these two statements does not impact our decision. OBVIOUSNESS REJECTIONS The Examiner relies on Cummins1 as allegedly teaching that the generator must run at rated speed for a minimum of 30 continuous minutes. See Exr. Determ. 6. As discussed supra, we find that Cummins1 contains no such requirement, and at most discloses a recommendation concerning the exercise of large diesel engines. Consequently, we agree with Requester that it would have been “at least . . . obvious to try exercising at a reduced engine speed. And given the explicit benefits taught by the art, and no legally cognizable teaching away, that same person would have been motivated to spend a majority of the time exercising at that reduced speed.” Req. Comments 23. As a result, we disagree with the Examiner’s determination that the proposed amendments to the claims overcome the rejection of claims 1–4, 7–13, 16–21, and 24 over Cummins1, Kohler, and Domanski. For the same reason, we also disagree with the Examiner’s determination that the proposed amendments to the claims overcome the rejection of claims 5, 6, 14, 15, 22, and 23 over Cummins1, Kohler, Domanski, and Danish. Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 12 CONCLUSIONS 1. The ’345 patent supports the phrase “exercise cycle” but does not support the phrase “for a majority of the exercise cycle.” 2. The issue of any ambiguity concerning the term “exercise” is not within the scope of this reexamination proceeding. 3. The proposed amendments do not overcome the § 103 rejections over prior art. TIME PERIOD FOR RESPONSE In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. §§ 41.79(c) and (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 13 41.81. See also MPEP § 2682. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2015-007688 Patent 7,230,345 B2 Reexamination Control 95/001,558 14 hh PATENT OWNER: BOYLE FREDRICKSON, S.C. 840 NORTH PLANKINTON A VENUE MILWAUKEE, WI 53203 THIRD PARTY REQUESTER: STERNE, KESSLER, GOLDSTEIN & FOX PLLC 1100 NEW YORK A VE, N.W. WASHINGTON, D.C. 20005-3934 Copy with citationCopy as parenthetical citation