Ex Parte Cui et al

Patent Trial and Appeal Board

Feb 26, 2013

11422903 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WEIJIA CUI, GARY K. LOWE, and DANIEL H. BLACK
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Appeal 2011-000157
Application 11/422,903
Technology Center 3600
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Before JAMES P. CALVE, WILLIAM A. CAPP and
NEIL T. POWELL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000157
Application 11/422,903
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-15 as unpatentable under 35 U.S.C. § 103(a) over
Dourra (US 6,022,293 iss. Feb. 8, 2000). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to controlling line pressure of hydraulic
fluid in an automatic transmission. Spec. 1, para [0001]. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method of carrying out variable line pressure control
of hydraulic fluid in an automatic transmission, the method
comprising the steps of:
using a solenoid valve to adjust variable line pressure;
updating an open-loop duty cycle table with temperature
dependent duty cycle values when the transmission is under
closed-loop line pressure control; and
applying the updated open-loop duty cycle table to drive
the solenoid valve when the transmission is under open-loop
line pressure control.
OPINION
Appellants argue claims 1-15 under a single heading. App. Br. 6. We
select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)
(vii)(2011). Claims 2-15 stand or fall with claim 1. 1

1 With respect to references to claims other than claim 1 in
Appellants’ Brief, statements that merely point out what a claim recites are
not considered to present an argument for separate patentability of the claim.
37 C.F.R. § 41.37(c)(1)(vii); see also In re Lovin, 652 F.3d 1349 (Fed. Cir.
2011) (Rule 41.37 requires more than recitation of the claim elements and a
naked assertion that the elements are not found in the prior art).
Appeal 2011-000157
Application 11/422,903
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The Examiner finds, and Appellants do not dispute, that Dourra
controls hydraulic line pressure based on actual operating conditions and
provides a control system that can be continuously corrected as a function of
target pressure and operating pressure. Ans. 4, citing Dourra, fig. 2, col. 3,
ll. 3-12, and col. 7 (chart). The Examiner further finds that, when closed-
loop control fails, Dourra reverts to open-loop control. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to update Dourra with an
adaptive open-loop control (like Appellants’) in case the closed-loop system
encounters a fault. Ans. 4-5. According to the Examiner, the person of
ordinary skill in the art would be motivated to so modify Dourra because of
the desirable expected results achieved with an adaptively updated open-
loop duty cycle table for use when one of the line pressure controls fails in
the closed-loop control system. Id.
Appellants distinguish Dourra by stating that Dourra relies on static
mapped test data to operate its line pressure control valve during open-loop
control. App. Br. 7, citing Dourra, col. 10, ll. 17-25. Appellants argue that
Dourra expressly teaches away by rejecting the use of values that have been
adapted during the system’s closed-loop operation. App. Br. 8. Appellants
contend that Dourra deliberately selects open-loop values that differ from
closed-loop adaptive values, thereby teaching away from the claimed
invention. Id.
Appellants further contend that Dourra divergently teaches an additive
battery voltage compensation term when calculating its open-loop duty
cycle. Id., citing Dourra, col. 10, ll. 38-59. Appellants assert that Dourra
expressly diverges away from updating open-loop duty cycle values as a
function of battery voltage as recited in claims 2 and 13. Id.
Appeal 2011-000157
Application 11/422,903
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The Examiner responds by stating that since Dourra already teaches
both open-loop and closed-loop control as well as a duty cycle table
referenced by both fluid temperature and battery voltage, it would have been
obvious to one of ordinary skill in automatic transmission control systems to
make use of data derived from closed-loop control to update the look-up
table for open-loop control with the expected beneficial result of better
control of an automatic transmission. Ans. 8.
Appellants’ arguments are not persuasive. Essentially, Appellants
merely identify an alleged difference between Dourra and the claimed
invention and then conclude that such difference amounts to a teaching away
from the claimed invention.2 However, not every difference between the
prior art and the claimed invention amounts to a “teaching away.” The
obviousness statute, 35 U.S.C. § 103, in pertinent part, expressly
contemplates that a patent claim may be unpatentable notwithstanding that
there are differences between the prior art and the claimed invention.
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102, if
the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.

2 Appellants also contend that Dourra’s use of static values in its
open-loop lookup table teaches away from the duty-cycle averaging steps
recited in dependent claims 6, 7, 10, 11 and 14 because interpolating to
obtain an intermediate value from a pair of static mapped values is neither
the same as, nor renders obvious, averaging two values between the
commanding and observing steps obtained at successive points in time as
engine speed falls below a predetermined threshold. App. Br. 8-9.
Appeal 2011-000157
Application 11/422,903
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35 U.S.C. § 103(a). In bridging the gap between prior art references and a
conclusion of obviousness, the fact finder may rely on the prior art
references themselves, the knowledge of those of ordinary skill in the art, the
nature of the problem to be solved, market forces, design incentives, the
interrelated teachings of multiple patents, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent, or the
background knowledge, creativity, and common sense of the person of
ordinary skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007).
Appellants’ “teaching away” arguments fail. A reference does not
teach away if it merely discloses an alternative design, but does not criticize,
discredit, or otherwise discourage investigation into the claimed invention.
See In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004). Appellants have not
apprised us of any language in Dourra that actually criticizes, discredits, or
discourages investigation into the claimed invention. Dourra relies on one
set of stored data to facilitate open-loop control, while Appellants’ open-
loop control uses data derived or obtained from another source. Appellants
have failed to apprise us of any error in the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in automatic transmission
control systems to use Appellants’ alternative source of data during open-
loop control operation of an automatic transmission.
Accordingly, we sustain the Examiner’s rejection of claims 1-15.3

3 To the extent Appellants contend that they separately argued claims
other than claim 1, our rationale for and our decision to affirm the rejection
of claim 1 applies with equal force to claims 2, 6, 7, 10, 11, 13 and 14.
Appeal 2011-000157
Application 11/422,903
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DECISION
The decision of the Examiner to reject claims 1-15 is 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)(1)(iv).
AFFIRMED

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