Ex Parte Bleile et al

Patent Trial and Appeal Board

May 27, 2016

11921628 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111921,628 0512612009
24972 7590 06/01/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Thomas Bleile
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019/5049 7440
EXAMINER
MANLEY, SHERMAN D
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BLEILE, CHRISTINA STILLER, and
FRIEDRUN REIBER
Appeal2014-004106
Application 11/921,628
Technology Center 3700
Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11-13 and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-004106
Application 11/921,628
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for controlling an
internal combustion engine. Claim 11, reproduced below, is illustrative of
the claimed subject matter:
11. A method for controlling an internal combustion engine
having a first actuator for influencing a gas air mass flow
delivered to the internal combustion engine, having a second
actuator for influencing a high-pressure-side recirculated exhaust
gas mass flow, and having at least one third actuator for
influencing a low-pressure-side recirculated exhaust gas mass
flow, the method comprising:
predefining a first actuating variable for the first actuator
based on at least one of (a) a comparison between a first setpoint
and a first actual value for a fresh air mass flow and (b) further
modeled or measured variables;
predefining a second actuating variable for the second
actuator based on at least one of ( c) a comparison between a
second setpoint and a second actual value for the high-pressure-
side exhaust gas mass flow and ( d) further modeled or measured
variables;
predefining at least one third actuating variable for the at
least one third actuator based on at least one of ( e) a comparison
between a third setpoint and a third actual value for the low-
pressure-side exhaust gas mass flow and (f) further modeled or
measured variables; and
superimposing a third model-based precontrol value on the
third actuating variable, wherein the model-based precontrol
value is derived from at least one mathematical formula.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kurtz US 6,820,599 B2 Nov. 23, 2004
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Application 11/921,628
REJECTIONS
Claims 11 and 20 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 11 and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention.
Claims 11-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kurtz.
OPINION
We sustain the rejection under 35 U.S. C. § 112, first paragraph
The Examiner correctly rejected claims 11 and 20 for failing to
comply with the written description requirement because the recited
"mathematical formula" is not found in Appellants' Specification. Final
Act. 2-3. Appellants attempt to show support by pointing to page 6, lines
14--1 7 of the Specification, which incorporates by reference German Patent
Application No. DE 199 63 358. Appeal Br. 5---6. This is ineffective to
show descriptive support for the recited "mathematical formula" for several
reasons.
Claims 11 and 20 introduce "a third model-based precontrol value."
First and second model-based precontrol values are not recited in claim 11
or 20. The term "third" essentially assigns a descriptive name to the model-
based precontrol value as opposed to indicating the number of model-based
precontrol values required by claims 11 and 20. 1 Claims 11 and 20
1 See, e.g., Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1373
(Fed. Cir. 2005).
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Application 11/921,628
subsequently refer back to "the model-based precontrol value." There being
only one such value previously set forth in the claim, we understand "the
model-based precontrol value" in claims 11 and 20 to refer to the "third
model-based precontrol value."2 So, according to claims 11 and 20, it is the
"third model-based precontrol" that is derived from "at least one
mathematical formula." The "third model-based precontrol value" is
superimposed on "the third actuating variable." Although there is an open-
ended recitation of "further modeled or measured variables" in a Markush-
type grouping,3 claims 11 and 20 relate "the third actuating variable" to "the
2 This may introduce ambiguity for purposes of claims 12 and 13, which
each require an additional "model-based precontrol value," because it could
be unclear to which "model-based precontrol value" the phrase "the model-
based precontrol value" (in claim 11) refers. See Ans. 3. We leave that for
the Examiner and Appellants' consideration in any further prosecution.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
3 This may raise questions concerning definiteness. See l\1PEP § 2173.0S(h)
("a Markush group that encompasses a massive number of distinct
alternative species may be indefinite [] if one skilled in the art cannot
determine the metes and bounds of the claim due to an inability to envision
all of the members of the Markush group."). Further, the breadth of such a
recitation, which could be construed to cover any and all "modeled or
measured variables," whether or not disclosed in the Specification or
currently known or unknown, may be an improper attempt to "preempt the
future before it has arrived." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351-58 (Fed. Cir. 2010) ("[T]he purpose of the written description
requirement is to 'ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification."'). The term "at least
one mathematical formula," may itself raise a similar issue. We leave these
issues for the Examiner and Appellants' consideration in any further
prosecution. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See MPEP § 1213.02.
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Appeal2014-004106
Application 11/921,628
low-pressure-side exhaust gas mass flow." In stark contrast, the portion of
the Specification cited by Appellants relates to a mathematical formula
described only with regard to "ascertaining the actual value of the fresh air
mass flow." According to claims 11 and 20, it is the first actuating variable
and not the third that relates to "fresh air mass flow." So, it is unclear from
the cited portion of the Specification why Appellants believe a disclosure
relating to fresh air mass flow (e.g., at 108, Fig. 1) would be understood as
used to define a variable for "the low-pressure-side exhaust gas mass flow"
(e.g., at 114, Fig. 1).
In addition, the Examiner correctly points out, and Appellants do not
dispute, that incorporation by reference is ineffective when attempting to
incorporate essential subject matter from a foreign reference. Ans. 2-3
(quoting 37 C.F.R. § 1.57(c) (2013)). Even considering column 14 of DE
199 63 358, the reference depicts two formulas, neither of which are
accompanied by English-language descriptions or explanations. Appellants
do not direct our attention to any English-language translations in the
application file wrapper. Nor do Appellants apprise us of any reasons why
one skilled in the art would understand either of the formulas disclosed in
column 14 of DE 199 63 358 as sufficient to provide descriptive support for
the full scope of "at least one mathematical formula" as recited in claims 11
and 20.
Appellants do not appear to maintain their position in the Reply Brief.
Appellants instead point to a different portion of the Specification, which, in
relevant part, states:
The model-based precontrol values are determined by a model
that ... maps a setpoint of the low-pressure-side exhaust gas
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Appeal2014-004106
Application 11/921,628
mass flow onto an actuating variable setpoint for the third
actuator.
Reply Br. 2 (quoting Spec. 3:13-18). Appellants support this position by
arguing that essentially any act that converts one quantity to another is
reasonably considered a function and therefore a mathematical formula. Id.
First, this argument is untimely under 37 C.F .R. § 41.41 (b )(2). Second,
even if we accept that "map[ping]" one quantity to another necessarily
implicates the use of some unspecified mathematical formula, it does not
change the fact that the Specification fails to describe any examples of what
that mathematical formula actually is. Repetition, even if by synonym, does
not necessarily equate to a description consistent with the quid pro quo of
the patent grant. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d at 1352-54.
Accordingly we sustain the rejection under 35 U.S.C. § 112, first
paragraph.
We sustain the rejection under 35 U.S. C. § 112, second paragraph
In rejecting the claims under 35 U.S.C. § 112, second paragraph, the
Examiner analogizes the limitation "superimposing a third model-based
precontrol value on the third actuating variable" in claim 11, and the
corresponding limitation in claim 20, to a situation similar to those involving
a recitation of a "preferred" range within a broader range. Final Act. 3
(citing MPEP § 2173.05(c)). The Examiner concluded that once the "model-
based precontrol value" is superimposed on the third actuating variable, the
third actuating variable is necessarily predefined based on "modeled []
variables" as opposed to any other one of the recited options for predefining
the third actuating variable, e.g., "a comparison ... "or "measured
variables."
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Application 11/921,628
In response, Appellants argue that "it is possible to superimpose the
model-based precontrol value with the value of a measured variable."
Appeal Br. 7. Appellants support this assertion by citing only to the
incorporation by reference statement discussed above without any further
explanation. Id. For the reasons discussed in detail above, we see no reason
one skilled in the art would understand the cited portion of DE 199 63 358 as
relating to "superimposing a third model-based precontrol value on the third
actuating variable." Reliance on DE 199 63 358 to describe the claimed
invention in terms that particularly point out and distinctly claim the
invention is also improper under 37 C.F.R. § 1.57(c) (2013).
The Examiner's initial description of the basis for the indefiniteness
rejection essentially assumes that "superimposing" implies using the "third
model-based precontrol value" in place of, or instead of, any of the other
predefining methods recited. Ans. 4. This may be true but, as the Examiner
also points out,
The word superimposing is also indefinite it is not defined in the
specification and it does not apply anything to the claim as
superimpose at best means to add onto something without
incorporation or to lay something over something.
Ans. 4. We agree with the Examiner that the claims are indefinite, either
because of the lack of clarity regarding the term "superimposing" itself, or
because of the apparent internal conflict if the term "superimposing" is
defined as the Examiner presumes. Ans. 4.
We sustain the rejection under 35 U.S.C. § 103(a)
Appellants reproduce many general legal principles (Appeal Br. 9-11;
Reply Br. 5, 6-9) but the only argument we can identify that pertains to the
particular rejection before us is that Kurtz does not employ a "mathematical
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Appeal2014-004106
Application 11/921,628
formula." Appeal Br. 8; Reply Br. 5---6. In the Final rejection the Examiner
states,
MAPs are the same as models. So if you have a map as shown in
step 332 then you have a model of the operation of the valves.
Final Act. 5. However, the Examiner does not specify exactly what is
considered as the recited "mathematical formula." The MAP in Kurtz refers
to manifold pressure. Kurtz, col. 4, 1. 12. The "maps" in step 332 refers to
graphs of engine control data that are used to adjust valve settings in step
334. Final Act. 5. In the Examiner's Answer, the Examiner cites, more
specifically, to the calculation of manifold pressure and the change in
manifold pressure regarding the "mathematical formula" limitation. Ans. 5.
Though not specifically committing to any particular one, the Examiner has
identified three potential activities in Kurtz to meet the recitation calling for
the use of a "mathematical formula:" ( 1) using the maps to determine the
exhaust gas recirculation (EGR) or mass air flow (MAP); (2) calculating the
manifold pressure; and (3) calculating the change in manifold pressure. \Ve
agree with the Examiner that any one of these is reasonably regarded as
deriving a precontrol value from at least one mathematical formula.
Appellants only argue against "calculating the manifold pressure."
It is true that in addition to stating that "the routine calculates the
manifold pressure" (Ans. 5 (quoting Kurtz col. 5, 11. 20-25)), Kurtz
provides only one specific example of how the manifold pressure is
obtained: "In one example, manifold pressure is measured from sensor
205." Reply Br. 6 (quoting Kurtz col. 5, 11. 25-26). Appellants assert that
"calculates" means only determining a value, and not necessarily doing so
by using a "mathematical formula." Reply Br. 6. As discussed above,
Appellants do not apprise us of any specific requirements for the complexity
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Appeal2014-004106
Application 11/921,628
or nature of the mathematical formula, or even, as discussed above an
example of the mathematical formula of their preferred embodiment.
"[C]alculat[ing]" the manifold pressure by simply determining it is identical
to the pressure sensor reading is essentially the same as "mapping" it to a
particular value-the same process Appellants argue constitutes a
"mathematical formula" for purposes of demonstrating descriptive support
for that limitation. Reply Br. 2. This is essentially an identity function, and
using the nomenclature introduced by Appellants, can be expressed f(x) = x.
We could envision a situation where using a mathematical formula required
something more, but Appellants do not apprise us of any reason why, in this
situation, "mathematical formula" should be more narrowly construed.
Appellants ask us to apply a broad definition that encompasses a simple
mapping function for purposes of demonstrating support under 35 U.S.C.
§ 112, first paragraph (Reply Br. 2), while simultaneously asking us to
employ a narrower definition to exclude a simple mapping function in the
• ' /T""ll. .,. ~ F>. LL rT""l"I .,. • ,.,. ,.,. •, .,., r-1 pnor an ~Kep1y tir OJ.~ ine iaw reqmres exacuy me opposne resun . .)ee
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) ("the
description of a single embodiment of broadly claimed subject matter
constitutes a description of the invention for anticipation [or obviousness]
purposes ... , whereas the same information in a specification might not
alone be enough to provide a description of that invention for purposes of
adequate disclosure ... ") (citations and internal quotations omitted).
As to the Examiner's reliance on the other actions, using the maps to
determine the exhaust gas recirculation (EGR) or mass air flow (MAP) and
4 See also Appeal Br. 7 (arguing, "it is possible to superimpose the model-
based precontrol value [requiring derivation by mathematical formula] with
the value of a measured variable.")( emphasis added).
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Appeal2014-004106
Application 11/921,628
calculating the change in manifold pressure are not traversed by Appellants,
we need not discuss them. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76
(BP AI 2010) (precedential). Any one of these activities is sufficient to
satisfy the claim language.
We sustain the rejection under 35 U.S.C. § 103(a)
DECISION
The Examiner's rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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