Ex Parte Eckhoff et al

Patent Trial and Appeal Board

May 25, 2017

12387482 (P.T.A.B. May. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/387,482 05/01/2009 Philip A. Eckhoff 1108-035-004-000000
10163
5614
138951 7590 05/30/2017
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
NGUYEN, CHUONG P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP A. ECKHOFF, WILLIAM H. GATES III,
PETER L. HAGELSTEIN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, ROBERT LANGER,
ERIC C. LEUTHARDT, EREZ LIEBERMAN,
NATHAN P. MYHRVOLD, MICHAEL SCHNALL-LEVIN,
CLARENCE T. TEGREENE, and LOWELL L. WOOD, JR.
Appeal 2014-004972
Application 12/387,482
Technology Center 3600
Before GEORGE R. HOSKINS, AMANDA F. WIEKER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Philip A. Eckhoff et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 178—189, 198—204,
206, 217, 218, and 225—236.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 1—177 and 237—358 are cancelled. Appeal Br. 43, 51 (Claims
App.). Claims 190-197, 205, 207—216, and 219-224 are withdrawn. Final
Act. 1; Appeal Br. 43—51 (Claims App.).
Appeal 2014-004972
Application 12/387,482
THE CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “Awarding Privileges to
a Vehicle Based Upon One or More Fuel Utilization Characteristics.” Spec.
1:1—2. Claim 178, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
178. A vehicle, comprising:
a first drive train powered by combustible fuel for
propelling the vehicle;
a second drive train powered by electricity for propelling
the vehicle;
a determination module coupled with the first drive train
and the second drive train and configured to determine a status
indicative of combustible fuel utilization in comparison to
electricity utilization for propelling the vehicle; and
a transmitter coupled with the determination module and
configured to transmit to an off-site entity the status indicative
of combustible fuel utilization in comparison to electricity
utilization for the vehicle.
Appeal Br. 43 (Claims App.).
THE EVIDENCE
The Examiner relied upon the following prior art references in
rejecting the claims on appeal:
Taniguchi ’580 US 2003/0046580 A1 Mar. 6, 2003
Taniguchi ’191 US 2005/0021191 A1 Jan. 27, 2005
Tanase US 7,130,766 B2 Oct. 31,2006
Oyobe US 2007/0073455 A1 Mar. 29, 2007
Brigham US 2009/0050383 A1 Feb. 26, 2009
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Application 12/387,482
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 178-189, 198-204, 206, 217, 225, 226, 229-231, 233, and
236 under 35 U.S.C. § 103(a) as unpatentable over Brigham and
Taniguchi ’191.
2. Claim 218 under 35 U.S.C. § 103(a) as unpatentable over Brigham,
Taniguchi ’191, and Oyobe.
3. Claims 227 and 228 under 35 U.S.C. § 103(a) as unpatentable over
Brigham, Taniguchi ’191, and Tanase.
4. Claims 232, 234, and 235 under 35 U.S.C. § 103(a) as
unpatentable over Brigham, Taniguchi ’191, and Taniguchi ’580.
ANALYSIS
Claim 178 requires “a determination module . . . configured to
determine a status indicative of combustible fuel utilization in comparison to
electricity utilization for propelling the vehicle.” Appeal Br. 43 (Claims
App.). Regarding this limitation, the Examiner found that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made that Brigham et al teach a
determination module (i.e. propulsion system controller 14)
coupled with the first drive train and the second drive train
configured to determine a status indicative of combustible fuel
utilization in comparison to electricity utilization for propelling
the vehicle (i.e. by measuring the battery status (‘170’),
hydrogen quantity (‘172’), and gasoline quantity (‘174’), and
selecting] the propulsion with highest priority (‘190’), the
controller would obvious[ly] perform the comparison for
making the selection) (Fig 3—\\ [0039]—[0040]; [0043]; [0046]—
[0047]).
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Application 12/387,482
Final Act. 3. Similarly, in the Answer, the Examiner found that Brigham’s
Figure 4 discloses a determination module that measures battery status,
hydrogen quantity, and gasoline quantity and selects the propulsion with the
highest priority. Ans. 18. The Examiner then found that in order for
Brigham’s controller to make a selection between battery, hydrogen, or
gasoline for driving, “there is obviously some comparison between the fuel
and electricity.” Id. The Examiner further found that Brigham involves a
“comparison between the fuel/hydrogen/battery before the drive begins.” Id.
at 19. The Examiner found this disclosure sufficient to meet the claim
limitation because the Examiner construed the limitation as “merely an
intended [sic] of use of how the status indicative is utilized for propelling the
vehicle,” and “[t]here is nothing in the claim positively reciting of whether
the comparison happens before or after the drive begins.” Id. Finally, the
Examiner found that the “claimed ‘status indicative’ can be the cost of each
energy source to propel the vehicle, or based [on] other factors such as cost
of a vehicle operation, an environmental impact, or an availability of a re­
energizing/re-fueling source.” Id.
Appellants argue that the Examiner failed to establish “how one of
ordinary skill in the art would interpret the ‘propulsion system controller 14’
of Brigham as allegedly disclosing or suggesting” the claimed determination
module. Appeal Br. 18. More specifically, Appellants argue that the
Examiner failed to identify the claimed “status indicative of combustible
fuel utilization in comparison to electricity utilization for propelling the
vehicle.” Id. at 43 (Claims App.), 18—19. According to Appellants,
Brigham discloses a controller that decides whether to use electrical energy
from a battery or energy from an internal combustion engine based on an
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Application 12/387,482
algorithm, which does not disclose the claimed “status.” Id. at 20. Further,
Appellants argue that the Examiner’s reference to battery status, hydrogen
quantity, and gasoline quantity does not disclose the claimed status
involving a comparison of combustible fuel to electricity utilization,
“particularly where Brigham discloses that after the algorithm selects a
propulsion and fuel strategy with the highest priority and available
resources, the drive begins.” Id. Appellants contend that the Examiner’s
claim construction “mischaracterized” the limitation and that “the Examiner
failed to explain how a comparison between ‘combustible fuel utilization’
and ‘electricity utilization’ could occur before the drive begins.” Reply Br.
5—6. Finally, Appellants argue that the “Examiner failed to explain, and it is
completely unclear from the record, how the Examiner-proffered ‘cost of
each energy source to propel the vehicle,’ ‘cost of a vehicle operation,’
‘environmental impact,’ or ‘availability of a re-energizing/re-fueling source’
would be interpreted by one of ordinary skill in the art as disclosing” the
status limitation. Id. at 6.
We agree with Appellants that the Examiner did not adequately
support the finding that Brigham discloses the “status indicative” limitation.2
2 The language used in the Final Office Action and Answer makes it unclear
whether the Examiner found that Brigham expressly discloses the “status
indicative” limitation, that Brigham failed to disclose the limitation but it
was nevertheless obvious to modify Brigham to include it, or whether
Brigham inherently discloses the limitation. See Final Act. 3 (“[I]t would
have been obvious . . . that Brigham et al teach . . . .”) (emphasis added);
Ans. 18 (“[TJhere is obviously some comparison between the fuel and
electricity.”) (emphasis added). Because the analysis does not set forth any
reasoning explaining why it would have been obvious to modify Brigham to
add the “status indicative” feature, or why Brigham inherently discloses the
limitation, we view the Examiner’s rejection as based on a finding that
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The Examiner’s finding that Brigham’s discloses battery status, hydrogen
quantity, and gasoline quantity combined with a selection of propulsion with
the highest priority does not support the finding that “there is obviously
some comparison between the fuel and electricity.” Ans. 18. The Examiner
points to no disclosure in Brigham to support this finding, and finding “some
comparison between fuel and electricity” fails to address the claim
requirements requiring a comparison of fuel utilization and electricity
utilization. Similarly, the Examiner’s finding that in “well-known or hybrid
vehicle[s],” the control system “must know whether the battery is exhausted
... or how much gas [is] left” does not point to any evidentiary support or
address the claim’s “utilization” requirements. Id. at 18—19.
Further, the Examiner’s claim construction positions do not support
the findings related to Brigham. The Examiner reads the “status indicative”
limitation as mere “intended use” and apparently non-limiting, but we
disagree. See id. at 19. The claim positively requires “a determination
module . . . configured to determine a status indicative of combustible fuel
utilization in comparison to electricity utilization for propelling the vehicle.”
Appeal Br. 43 (Claims App.). The claim does not require a determination
configured to determine any status at all—it calls out a specific status that
involves a specific configuration that amounts to more than an intended use.
At a minimum, the Examiner’s findings must establish that Brigham’s
purported determination module is capable of determining a “status
indicative of combustible fuel utilization in comparison to electricity
utilization,” and the findings fail to do so. We also disagree with the
Brigham expressly discloses the “status indicative” limitation.
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Examiner’s finding that Brigham discloses the limitation because the
limitation does not “positively recit[e] . . . whether the comparison happens
before or after the drive begins.” Ans. 19. Even if the claim is read to cover
comparisons of fuel and electricity utilization before any driving occurs, the
Examiner does not explain where Brigham discloses such a utilization
comparison prior to driving. Again, Brigham discloses assessing the amount
of charge in a battery or fuel level prior to a drive, but that does not
necessarily disclose any specific battery or fuel utilization, and the
Examiner’s findings do not adequately explain how Brigham’s disclosure or
the other prior art of record fills that gap. See Brigham || 39-40, 46-47;
Ans. 18-19.
Finally, we disagree with the Examiner’s construction that reads the
“status indicative” limitation on Brigham’s disclosure of cost information,
environmental impact, or availability of re-energizing/re-fueling sources.
Ans. 19. The Examiner’s finding does not explain how any of these
disclosures in Brigham disclose utilization of either fuel or electricity, or a
comparison of the two values.
Based on the foregoing, we determine that the Examiner’s findings
regarding Brigham and the “status indicative” limitation lack adequate
support. The Examiner did not rely on Taniguchi ’191 in a manner that
would remedy the deficiencies in the findings regarding Brigham. See Final
Act. 3^4; Ans. 18—20. Accordingly, we do not sustain the rejection of
independent claim 178 as unpatentable over Brigham and Taniguchi ’191.
All of the remaining claims depend from claim 178, and do not rely on other
prior art references in a manner that would remedy the deficiencies in the
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rejection of claim 178. We therefore do not sustain the rejection of those
claims for the same reason.
DECISION
We reverse the decision of the Examiner to reject claims 178—189,
198-204, 206, 217, 218, and 225-236 under 35 U.S.C. § 103(a).
REVERSED
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