Ex parte Aihara

Board of Patent Appeals and Interferences

Jan 4, 2000

08300855 (B.P.A.I. Jan. 4, 2000)

Application for patent filed September 6, 1994. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAAKI AIHARA
_____________
Appeal No.1997-1873
Application 08/300,8551
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HEARD: DECEMBER 7, 1999
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Before FLEMING, RUGGIERO, and HECKER, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1 through 8, all of the claims
pending in the present application.
Appeal No. 1997-1873
Application 08/300,855
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The invention relates to a method for judging whether or not an engine is in a steady state
operation during which the monitoring for diagnosis is performed.
Independent claim 1 is reproduced as follows:
1. A method of judging a steady state operation of an engine by monitoring at least one engine
parameter for a predetermined period of monitoring, comprising:
turning on an ignition switch and starting said engine;
detecting an engine parameter;
memorizing an initial value of said engine parameter at the start of said period of monitoring;
calculating a difference between said initial value of said engine parameter and said detected
engine parameter;
discontinuing monitoring if said difference is outside of a predetermined restriction width before
the end of said period of monitoring; and
judging that said engine is in a steady state operation if said difference is within a predetermined
restriction width at the end of said period of monitoring.
The Examiner relies on the following references:
Kay et al. (Kay) 4,691,288 Sept. 1, 1987
Matsuno 5,297,047 Mar. 22, 1994
(filed July 5, 1991)
The Appellant's specification is objected to under 35 U.S.C. § 112, first paragraph for failing
to provide an enabling disclosure of a diagnosis method.
Appeal No. 1997-1873
Application 08/300,855
Appellant filed an appeal brief on May 20, 1996. Appellant filed a reply brief on October 7,2
1996. We note that the record does not show that the Examiner considered or entered this reply brief.
In the normal course of events we would have remanded the appeal back to the Examiner to have a
statement on the record of whether the Examiner considered and entered the reply brief. However,
we decided to proceed with the appeal for judicial economy. Therefore, we will not consider the reply
brief as being properly before us.
3
Claims 6 through 8 are rejected under 35 U .S.C. § 112, first paragraph, for the reasons stated
in the objection to the specification.
Claims 1 through 3 and 6 through 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kay.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kay in view
of Matsuno.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
brief and answer for the respective details thereof.2
OPINION
We will not sustain the rejection of claims 1 through 8 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). We note that
our reviewing court states that "when determining obviousness, the claimed invention should be
Appeal No. 1997-1873
Application 08/300,855
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considered as a whole; there is no legally recognizable 'heart' of the
Appeal No. 1997-1873
Application 08/300,855
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invention." Para-Ordnance Mfg. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert denied, 519 U.S. 822 (1996), citing W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983). cert. denied, 469
U.S. 851 (1984).
On pages 14 through 16 of the brief, Appellant argues that Kay does not teach or suggest
determining a steady state engine condition. We note that Appellant's claim 1 recites a method of
judging a steady state condition comprising the step of discontinuing monitoring if the difference is
outside a predetermined restriction width before the end of said period of monitoring and judging that
the engine is in a steady state operation if the difference is within a predetermined restriction width at the
end of said period of monitoring. We note that Appellant's claim 6 also recites a diagnosing method of
an engine comprising the steps of discontinuing said diagnosis if said difference is outside said range,
judging that said engine is operated in a steady state if the difference is within the range and continuing
said diagnosis while said steady state exists. We note that the only remaining independent claim, claim
8, recites similar language of determining the steady state of an engine. On page 6 of the answer, the
Examiner states that Kay does teach in column 6, line 8, determining the steady state of the engine by
the comparsion of the speed to a reference. On page 2 of the answer, the Examiner states that Kay
teaches a method of judging a steady state operation of the engine pointing us to the abstract.
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Application 08/300,855
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Upon our close review of Kay, we fail to find that Kay has any teachings of determining
whether an engine is in the steady state position. We agree with the Examiner that Kay states in column
6, lines 8 through12, that the adjustment procedure is based on the presumption that, under steady state
operation conditions, the flywheel speed at the end of each firing interval should be the same as at the
beginning of that interval. However, we do not agree that Kay teaches a determination of a steady
state operating condition as recited in Appellant's claims. Kay simply teaches that they are presuming
that the engine is under a steady state condition, but does not teach any method of determining how to
determine whether the engine is in a steady state operating condition.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kay in view
of Matsuno. We fail to find that Matsuno closes the gap as well. Matsuno does not teach the method
steps as recited in Appellant's claims of determining whether an engine is at the steady state. Therefore,
we will not sustain the Examiner's rejection of claims 1 through 8 under 35 U.S.C. § 103.
The specification is objected to under 35 U.S.C. § 112, first paragraph, as not providing an
enabling disclosure of the claimed invention. In particular, the Examiner argues that the specification
does not disclose any details of diagnosis of an engine. Claims 6 through 8 stand rejected under 35
U.S.C. § 112, first paragraph, for the reasons stated in the objection to the specification.
On pages 7 and 8 of the appeal brief, Appellant argues that the specification does in fact
Appeal No. 1997-1873
Application 08/300,855
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disclose that the method for determining the steady state operation of an engine according to the
invention is part of a larger diagnosis method. Appellant points to page 8, lines 5 through 17, of the
specification which is expressly states that the first step of the diagnosis of an engine is to determine
whether the engine is under a steady state operation.
In order to comply with the enablement provision of 35 U.S.C. § 112, first paragraph, the
disclosure must adequately describe the claimed invention so that the artisan could practice it without
undue expermentation. In re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 293 (CCPA 1973); and In re Gay, 309
F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962). If the Examiner had a reasonable basis for
questioning the sufficiency of the disclosure, the burden shifted to the Appellant to come forward with
evidence to rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA
1973), cert. denied, 416 U.S. 935 (1974); In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694
(CCPA 1973); and In re Ghiron, 442 F.2d 985, 992, 169 USPQ 723, 728 (CCPA 1971).
However, the burden was initially upon the Examiner to establish a reasonable basis for questioning the
adequacy of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976); and In re
Armbruster, 512 F.2d 676, 677, 185 USPQ 152, 153 (CCPA 1975).
Upon our review of the specification, we find that the disclosure would have adequately
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Application 08/300,855
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described the claimed invention so that the artisan would have been able to practice
it without undue experimention. In particular, we find that the specification clearly points out that the
determination of the steady state condition of the engine is the first step in many different types of well-
known diagnostic processes of the engine.
Therefore, we will not sustain the Examiner's rejection of claims 6 through 8 under 35 U.S.C.
§ 112, first paragraph.
We have not sustained the rejection of claims 1 through 8 under 35 U .S.C. § 103, nor have
we sustained the rejection of claims 6 through 8 under 35 U.S.C. § 112, first paragraph.
Accordingly, the Examiner decision is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
STUART N. HECKER )
Administrative Patent Judge )
MRF/dal
Appeal No. 1997-1873
Application 08/300,855
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