13381544 (P.T.A.B. Nov. 30, 2017)

Ex Parte Feuchter et al

Patent Trial and Appeal BoardNov 30, 2017

13381544 (P.T.A.B. Nov. 30, 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. 13/381,544 03/26/2012 Wilfried Feuchter BOSC.P7062US/11603000 1835 24972 7590 12/04/2017 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas NEW YORK, NY 10019-6022 EXAMINER STAUBACH, CARL C ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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 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 WILFRIED FEUCHTER and ANDREAS HEYL Appeal 2016-006240 Application 13/381,544 Technology Center 3700 Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and NATHAN A. ENGELS, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Wilfried Feuchter and Andreas Heyl (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s rejections2 under 35 U.S.C. § 103(a) of claims 12, 13, 16—18, 20, and 21 as unpatentable over Ditner et al. (US 6,845,467 Bl, iss. Jan. 18, 2005) and Moteki et al. (US 6,334,084 Bl, iss. Dec. 25, 2001); of claims 14 and 15 as unpatentable over Ditner, Moteki, and Kamen et al. (US 6,965,206 B2, iss. Nov. 15, 2005); and of 1 According to Appellants, the real party in interest is Robert Bosch GmbH. Appeal Br. 2. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated June 2, 2015 (“Final Act.”). We also refer herein to the Appeal Brief filed Nov. 24, 2015 (“Appeal Br.”); the Examiner’s Answer mailed Apr. 6, 2016 (“Ans.”); and the Reply Brief filed June 6, 2016 (“Reply Br.”). Appeal 2016-006240 Application 13/381,544 claim 19 as unpatentable over Ditner, Moteki, and de Bruijn et al. (US 5,428,745, iss. June 27, 1995). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 12 and 18 are independent claims. Claim 12 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 12. A method for actuating at least one actuator, comprising: providing two control units and a selection logic, wherein each of the control units is configured to selectively influence the actuator; performing, by each one of the two control units, a self- diagnosis; generating, by each one of the two control units, two activating signals as a function of the self-diagnosis by each control unit, wherein one of the two activating signals generated by each respective control unit is assigned to a first control unit and the other one of the two activating signals generated by each respective control unit is assigned to a second control unit, and wherein each of the two activating signals indicates whether the assigned control unit is to be one of activated or not activated; and activating, by the selection logic, one of the two control units for influencing the actuator as a function of the four activating signals generated by the two control units. ANALYSIS Obviousness of Claims 12, 13, 16—18, 20, and 21 over Ditner and Moteki We are persuaded by Appellants’ arguments that the Examiner erred in rejecting claims 12, 13, 16—18, 20, and 21 over Ditner and Moteki. See Appeal Br. 3—5; Reply Br. 1—6. 2 Appeal 2016-006240 Application 13/381,544 The Examiner determines that Ditner provides two control units and teaches a method for generating controller output, including inter alia, “generating, by each one of the two control units, two activating signals as a function of the self-diagnosis by each control unit (IActive _204, UActive_204, IActive_206, UActive_206.” Final Act. 2 (citing Ditner, col. 5,11. 10—20). While acknowledging that “Ditner is silent as to controlling an actuator,” the Examiner finds that because Moteki teaches “duplexed (102- 107) self diagnostic (101) controllers control an actuator (3) of an internal combustion engine (ICE)” and “fail safe controllers of actuators increase operational availability of the actuator,” it would have been obvious “to add Moteki’s actuator to Ditner’s controller output in order to provide fail safe actuation of an ICE actuator to increase the engines availability and/or reliability.” Id. at 3. The Examiner also reasons that even if “Ditner’s activation signals ‘UActive _204 andUActive_206’ are inputs and therefore not activation signals generated by their respective controllers, . . . that IActive and UActive signals are generated by their respective controllers [] even if the transformation from IActive to UActive is processed by the opposite controller [as] the claim only recites ‘wherein one of the two activating signals’ applying the limitation to two of the four total signals and not all.” Id. at 6—7. In contesting the Examiner’s rejection of claim 12 as obvious over Ditner and Motekis, Appellants first explain that “the explicit disclosure of Ditner [is] that ‘IACTIVE is the status signal from each controller,’ and ‘UACTIVE input allows each controller to monitor the state of the IACTIVE output of the other controller.’” Appeal Br. 5 (citing Ditner, 3 Appeal 2016-006240 Application 13/381,544 col. 6, 11. 25—29). Appellants also explain that even though “Fig. 2 [of Ditner shows] IActive204 signal being fed into UActive206 input, and IActive206 signal being fed into UActive204 input, there is no factual basis for the Examiner to contend that ‘Ditner clearly teaches four activation signals (IActive_204, UActive_204, IActive_206, UActive_206).’” Id. Appellants reason that since only one signal is generated by each controller, [that] the alleged subsequent ‘transformation’ (which is actually mere inputting) of the single signal into the corresponding UActive input still results in only a single signal which has been senerated bv a controller and ultimately fed (allegedly in a transformed state, according to the Examiner) to the other controller. Id. As Appellants further explain in the Reply Brief, “In Ditner, IActive signals ... are described as provided as output,” while” UActive signals. . . are described as received as input,” so that “input received by a unit is, under no circumstances, generated bv the receiving unit.” Reply Br. 4. We agree and find that because the Examiner’s legal conclusion of obviousness is not supported by evidence, it cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.” (footnote omitted)). For the foregoing reasons, we will not sustain the Examiner’s rejection of claims 12, 13, 16—18, 20, and 21 over Ditner and Moteki. 4 Appeal 2016-006240 Application 13/381,544 Obviousness of Claims 14 and 15 over Ditner, Moteki, and Kamen; and of Claim 19 over Ditner, Moteki, and de Bruijn The rejections of claims 14 and 15 over Ditner, Moteki, and Kamen; and of claim 19 over Ditner, Moteki, and de Bruijn are based on the same unsupported findings discussed above with respect to Ditner and must be reversed for similar reasons. DECISION We REVERSE the Examiner’s rejections. REVERSED 5