Ex Parte 7230345 et al

Patent Trial and Appeal Board

Feb 29, 2016

95001558 (P.T.A.B. Feb. 29, 2016)

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.
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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.
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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).
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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
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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
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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
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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.
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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
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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
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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).
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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.

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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. §
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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.

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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