Ex parte ARAI

Board of Patent Appeals and Interferences

Mar 22, 2001

08633564 (B.P.A.I. Mar. 22, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENTAROU ARAI
_____________
Appeal No. 2000-2115
Application No. 08/633,564
______________
HEARD: March 7, 2001
_______________
Before McCANDLISH, Senior Administrative Patent Judge,
FRANKFORT, and LAZARUS, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 2, all of the claims pending in this
application.
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Application No. 08/633,564
2
Appellant's invention relates to a front-wheel-drive and
rear-wheel-drive vehicle in which one of either a set of front
wheels or a set of rear wheels are driven by an engine (e.g.,
an internal combustion engine) and the other set of wheels
thereof is driven by an electric motor, wherein the electric
motor is intended to automatically operate to assist the
starting (i.e., initial movement) of the vehicle on a road
surface having a low coefficient of friction, such as on a
slippery snowy road, only when the wheels driven by the engine
slip and the torque at those wheels becomes small (i.e., when
the actual driving torque at the wheels driven by the engine
falls below a predetermined low level). Of importance to
appellant is the need that inefficient operation of the
electric motor be prevented so that a relatively inexpensive
direct-current (DC) brush motor can be used, with no problem
in its durability. A correct copy of claims 1 and 2 on appeal
is attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
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Application No. 08/633,564
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Shea 4,180,138 Dec.
25, 1979
Kawakatsu 4,335,429 Jun.
15, 1982
Ito et al. (Ito) 5,225,982 Jul. 6,
1993
Kriegler et al. (Kriegler) 5,492,189 Feb. 20,
1996
(filed Nov. 22,
1994)
In addition to the above-noted prior art references, the
examiner has also relied upon an admission of prior art found
at page 7, lines 9-24, of appellant's specification.
Claims 1 and 2 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the specification in such a way as to enable one
skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the invention.
Claims 1 and 2 additionally stand rejected under 35
U.S.C.
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Application No. 08/633,564
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§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
In addition to the foregoing rejections under § 112, the
appealed claims also stand rejected under 35 U.S.C. § 103 as
follows:
a) Claims 1 and 2 as being unpatentable over Shea in view
of either Ito or Kawakatsu, and
b) Claims 1 and 2 as being unpatentable over Shea in view
of appellant's admitted prior art (APA) (specification, page
7, lines 9-24) or Kriegler.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 22, mailed June 14, 2000) for the examiner's complete
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Application No. 08/633,564
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reasoning in support of the rejections, and to appellant's
brief (Paper No. 21, filed November 1, 1999) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review we have reached the determinations
which follow.
As a preliminary matter, we note that appellant (brief,
page 5) has grouped claims 1 and 2 as standing or falling
together. Accordingly, in discussing the issues on appeal we
focus particularly on representative independent claim 1.
Looking first to the examiner's rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph, we understand
this rejection to be based on lack of enablement. The first
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paragraph of 35 U.S.C. § 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art
to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those in the relevant art to make and
use the invention without "undue experimentation." In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). That some experimentation may be required is not
fatal; the issue is whether the amount of experimentation
required is "undue." Id. at 736-37, 8 USPQ2d at 1404.
In this particular instance, after considering
appellant's disclosure as a whole and reviewing the claims in
light of the specification (In re Sneed, 710 F.2d 1544, 2548,
218 USPQ 385, 388 (Fed. Cir. 1983)), we find that the
specification would permit one skilled in the art to make and
use appellant's claimed subject matter without undue
experimentation. More particularly, without commenting on the
embodiment of the invention seen in Figure 1 of the drawings
and the driving torque detecting circuit (15) seen therein, we
note that on page 7 of the specification appellant has
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provided disclosure of an alternative embodiment of the
invention that is not shown in the drawings. In this
alternative embodiment, it is noted that "a torque sensor may
be mounted on a shaft of the front wheels 1 to thereby
directly detect the driving torque of the front wheels 1"
(page 7, lines 20-24). With the sensors for detection of the
driving torque of the front wheels serving as the "means for
detecting a driving torque of the set of engine-driven wheels"
set forth in claim 1 on appeal and providing an input to the
"control means" set forth in claim 1, we conclude that one
skilled in the art could readily make and use the claimed
invention without undue experimentation.
Since our review of appellant's specification reveals
adequate guidance to enable the skilled artisan to make and
use the claimed invention without undue experimentation, it
follows that the examiner's rejection of claims 1 and 2 under
35 U.S.C.
§ 112, first paragraph, as being directed to a non-enabling
disclosure will not be sustained.
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8
Turning to the examiner's rejection of claims 1 and 2
under 35 U.S.C. § 112, second paragraph, we note that the
examiner's first concern (answer, page 4) is that the
specification does not define any value for the relative terms
"high" and "low" coefficient of friction. Our review of the
specification, however, reveals that these relative terms are
reasonably set forth therein as relating to a high coefficient
of friction road surface, such as a dry conventional asphalt
road surface, while the low coefficient of friction is
understood to be that which would be encountered on a
slippery, snowy road or on ice. Moreover, we fail to see the
relevance of the examiner's focus on the terms "high" and
"low" coefficient of friction in rejecting claims 1 and 2 on
appeal under 35 U.S.C. § 112, second paragraph, since those
particular terms do not appear in the claims on appeal. As
for the examiner's further concern (answer, page 5) about the
terminology "predetermined value," "predetermined level" and
"lower limit value," we consider that one of ordinary skill in
the art would have no problem understanding these terms and
their relevance to the claimed subject matter when such are
considered in light of appellant's specification, and
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therefore conclude that the scope of the subject matter
embraced by appellant's claims on appeal is reasonably clear
and definite, and fulfills the requirements of 35 U.S.C. §
112, second paragraph. See, for example, pages 3 and 4, and
pages 8 and 9 of appellant's specification. Concerning the
examiner's additional comments relating to claim 2 on appeal,
we fail to see that the issues pointed to by the examiner in
any way create a problem under 35 U.S.C. § 112, second
paragraph. It is our opinion that when the questioned
language of claims 1 and 2 on appeal is read in light of
appellant's specification as it would be interpreted by one of
ordinary skill in the art, the skilled artisan would
reasonably understand the scope and content of appellant's
claims on appeal. Accordingly, we will not sustain the
examiner's rejection of claims 1 and 2 under 35 U.S.C. § 112,
second paragraph.
We next look to the examiner's prior art rejections of
appealed claims 1 and 2 under 35 U.S.C. § 103 as being
unpatentable over Shea in view of Ito or Kawakatsu, and also
as being unpatentable over Shea considered in view of the APA
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(Spec., Page 7, lines 9-24) or Kriegler. Like appellant
(brief, pages 12-14), we observe that Shea, the secondary
references, and the APA relied upon by the examiner may
disclose certain individual components of the claimed subject
matter (e.g., a vehicle having both front-wheel-drive and
rear-wheel-drive as broadly set forth in the preamble of claim
1 on appeal (Shea) and certain torque detecting or calculating
means), but neither the secondary references, the APA, nor
Shea provide any teaching or suggestion that such known
elements from such disparate systems can or should be combined
in a manner so as to result in appellant's claimed subject
matter. In this regard, we view the examiner's attempt to
combine the applied prior art in the manner asserted in the
examiner's answer (pages 5-8) to be a clear example of the
examiner utilizing appellant's own disclosure in the present
application as a blueprint for piecing together unrelated
components of the various references and APA. Having
concluded that the examiner has engaged in a hindsight
reconstruction of appellant's claimed subject matter, it
follows that we will not sustain either of the examiner's
grounds of rejection under 35 U.S.C. § 103.
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Application No. 08/633,564
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To summarize our decision, we note that the examiner's
rejections of appealed claims 1 and 2 under 35 U.S.C. § 112,
first paragraph, and under 35 U.S.C. § 112, second paragraph,
have been reversed. Both of the examiner's rejections of the
appealed claims under 35 U.S.C. § 103 have likewise been
reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
RICHARD B. LAZARUS )
Administrative Patent Judge )

Appeal No. 2000-2115
Application No. 08/633,564
12
CEF:lbg
ARMSTRONG, WESTERMAN, HATTORI,
MCLELAND AND NAUGHTON
1725 K STREET, NW
SUITE 1000
WASHINGTON, DC 20006
Appeal No. 2000-2115
Application No. 08/633,564
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CLAIM 1
1. A front-wheel-drive and rear-wheel-drive vehicle in which
one of either a set of front wheels or a set of rear wheels
are driven by an engine and the other set of wheels thereof
are driven by an electric motor, wherein said electric motor
is operated when said vehicle starts, said vehicle comprising:
means for detecting a driving torque of the set of
engine-driven wheels; and
control means for prohibiting operation of said electric
motor when the driving torque detected during start-up of said
vehicle exceeds a predetermined value.
CLAIM 2
2. A front-wheel-drive and rear-wheel-drive vehicle
according to claim 1, wherein said predetermined value is set
to a lower limit value of the driving torque applied to the
set of engine-driven wheels at vehicle start-up only by the
drive of the set of engine driven wheels [sic, at] an
acceleration above a predetermined level.