Ex Parte BELLINGER et al

Board of Patent Appeals and Interferences

Sep 30, 2002

08944807 (B.P.A.I. Sep. 30, 2002)

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not written for publication and is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEVEN M. BELLINGER and DAVID J. MUNT
__________
Appeal No. 2001-0034
Application 08/944,807
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 4, 6, 8 and 9. Claims 10 and 11 have been
allowed. Claims 2, 3, 5 and 7, the only other claims pending in
the application, have been indicated by the examiner to contain
allowable subject matter, but currently stand objected to until
such time that they are rewritten in independent form.
Appeal No. 2001-0034
Application 08/944,807
2
Appellants’ invention pertains generally “to systems for
controlling semiautomatic transmissions, and more specifically to
systems for switching between manual and automatic control modes
of a number of top gears of a semiautomatic transmission”
(specification, page 1). A further understanding of appellants’
invention can be derived from a reading of exemplary claim 1,
reproduced below (with emphasis added):
1. A system for selecting between automatic and manual
control of a number of gear ratios of a semiautomatic
transmission comprising:
an internal combustion engine coupled to a semiautomatic
transmission having a number of manually selectable gear ratios
and a number of automatically selectable gear ratios;
means for determining an engine fueling rate;
a switch having a first switch position and a second switch
position;
a memory unit including a software algorithm for controlling
shifting between the number of automatically selectable gear
ratios; and
a control computer responsive to said first switch position
to execute said software algorithm and thereby control shifting
between the automatically selectable gear ratios, said control
computer responsive to said second switch position to inhibit
execution of said software algorithm such that said number of
automatically selectable gear ratios are manually selectable if
said engine is currently engaged with any of said number of
automatically selectable gear ratios and said fueling rate is
less than a threshold fueling rate.
Appeal No. 2001-0034
Application 08/944,807
3
The sole reference cited in the final rejection against the
claims is:
White et al. (White) Re. 36,186 Apr. 6, 1999
Claims 1, 4, 6, 8 and 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over White.
White pertains to “[a] control system for controlling
automatic shifting of a manual/automatic transmission . . .
including a cruise control system and an auto-shift mode for
controlling automatic upshift and downshift operations between
the top two gears of a heavy duty truck transmission” (abstract).
In rejecting the appealed claims as being unpatentable over
White, the examiner notes several of the similarities between the
system of White and that of the claims, including, a
semiautomatic transmission having a number of manually selectable
gear ratios and a number of automatically selectable gear ratios,
a memory unit including a software algorithm for controlling
shifting between the number of automatically selectable gear
ratios, and a control computer for switching between an
operational mode wherein the transmission is shifted between the
automatically selectable gear ratios under the control of the
Appeal No. 2001-0034
Application 08/944,807
4
software algorithm and an operational mode wherein the
transmission is manually shifted between the manually selectable
gear ratios.
What passes for the examiner’s analysis of the differences
between the appealed claims and the system of White, and the
examiner’s conclusions of obviousness with respect to those
differences, is found in the sentence spanning pages 3 and 4 of
the answer, which we reproduce below:
While White et al does not specifically disclose the
limitations in the same manner as claimed, it would
have been obvious to one skilled in the art at the time
of the invention to be motivated to modify the control
system of White et al because such modification will
provide maximum fuel economy and engine performance,
while minimizing driver’s fatigue and improving the
overall vehicle performance.
The examiner amplifies on this position at the bottom of
page 6 of the answer, wherein it is stated:
Contrary to Appellant’s assertion, White et al.
discloses the software algorithm being executed by a
control computer or electronic control unit. The
software is executed under certain conditions and
prohibited in others. See column 7. The White et al.
patent allows manual shifting in the automatically
selectable transmission gears. Appellant’s attention
is directed to columns 5, 7-12 of the White et al
patent.
Appeal No. 2001-0034
Application 08/944,807
1 As a courtesy to both the Board and counsel for appellants,
the examiner should in the future more clearly identify the
source of short quotations taken from references. This can be
accomplished by separating individual passages from each other by
their own set of quotation marks, and by pinpointing their
location within the document by using both the column number and
the specific line numbers where they appear.
5
The only other place in the answer where the examiner
attempts to support the standing rejection with specific
teachings from the White reference is found in the second
paragraph on page 7 of the answer, wherein the examiner provides
what appears at first blush to be a large block quotation from
White, but which is actually a series of no less than four (4)
separate and distinct short quotes from various locations in
White’s specification.1 Notably missing is any explanation of
the relevance of these quotes to the obviousness issue at hand.
In particular, there is no explanation of precisely where White
teaches “allow[ing] manual shifting in the automatically
selectable transmission gears” as asserted by the examiner in the
last paragraph on page 6 of the answer.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532. 28 USPQ2d 1955,
Appeal No. 2001-0034
Application 08/944,807
6
1956 (Fed. Cir. 1993) and In re Oetiker, 977 F.2d 1443, 1446, 24
USPQ2d 1443, 1446 (Fed. Cir. 1990). A prima facie case of
obviousness is established when the teachings of the prior art
itself would appear to have suggested the claimed subject matter
to one of ordinary skill in the art. See In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) and In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). If
the examiner fails to establish a prima facie case, the rejection
is improper and will be overturned. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In the present case, the examiner has made no findings of
fact regarding, among other things, the scope and contents of the
applied prior art, or the differences between the prior art and
the appealed claims. In this regard, the examiner’s statement
that White does not specifically disclose “the limitation in the
same manner as claimed” (answer, page 3, last 2 lines) does not
suffice. Moreover, the examiner has not specifically set forth
how the control system of White is to be modified, or a
convincing line of reasoning as to why the artisan would have
been motivated to make any such modification. Hence, the
Appeal No. 2001-0034
Application 08/944,807
7
examiner’s statement that it would have been obvious “to modify
the control system of White” because “such modification” would
provide “maximum fuel economy and engine performance,” while
“minimizing driver fatigue and improving the overall vehicle
performance” (answer, sentence bridging pages 3 and 4) also does
not suffice. Also lacking is a clear and precise explanation of
how the examiner’s “modified” White system, whatever that may be,
would satisfy each and every element of, for example, claim 1.
It is therefore our conclusion that the examiner has not met his
initial burden of establishing that White presents a prima facie
case of obviousness with regard to the subject matter of
independent claim 1. This constitutes a first reason
necessitating reversal of the examiner’s rejection of claims 1,
4, 6, 8 and 9.
In addition, we see the requirement of claim 1 that the
control computer is responsive to the second switch position to
inhibit execution of said software algorithm such that said
number of automatically selectable gear ratios are manually
selectable as being a difference between the system of claim 1
and the system of White. The examiner’s assertion (answer, page
6, last line) that this is taught by White at columns 5 and 7-12
Appeal No. 2001-0034
Application 08/944,807
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is simply to broad to be informative as to where White teaches
this mode of operation. Contrary to the examiner, we read White
in the same manner as appellants as providing only for automatic
shifting of automatically selectable gear ratios. Support for
this position is found in White at, for example, column 5, line
64, through column 6, line 4; column 6, lines 19-32; column 6,
lines 39-50; and column 8, lines 25-33. In that we are unaware
of any teaching or suggestion in White of inhibiting execution of
the software algorithm such that the automatically selectable
gear ratios are manually selectable as called for in claim 1, and
in that the examiner has failed to direct us as to where any such
teaching or suggestion might by found in White, we must agree
with appellants that this claimed feature is not taught or
suggested by White. This constitutes an additional reason
necessitating reversal of the examiner’s rejection of the claims
1, 4, 6, 8 and 9.
Appeal No. 2001-0034
Application 08/944,807
9
The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2001-0034
Application 08/944,807
10
Cummins, Inc.
11 South Meridian
Indianapolis, IN 46204