Ex parte Gale et al.

Board of Patent Appeals and Interferences

Apr 27, 2000

08266081 (B.P.A.I. Apr. 27, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALLAN R. GALE
and WILLIAM L. KELLEDES
_____________
Appeal No.1997-3237
Application 08/266,081
______________
ON BRIEF
_______________
Before HAIRSTON, FLEMING, and FRAHM, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the rejection of claims
1 through 14, all of the claims presently pending in the
application.
Appeal No. 1997-3237
Application 08/266,081
2
Appellants’ invention relates to a method for controlling
regeneration energy from an electric induction motor. As
disclosed on page 2 of the specification, operating the motor
in regeneration mode creates engine braking and generates
electrical energy for use in charging a battery. The
disclosure on page 2 indicates that the regenerated energy,
however, can damage the battery at or near its fully charge
level. Fig. 1 shows the motor 22 powered by the battery 12
through inverter 14 while the motor controller 24 controls the
regeneration power to prevent the overcharging of the battery.
More specifically, as disclosed on pages 6 and 7 and Fig. 2,
the controller uses the efficiency curve and the independent
variable volts-per-hertz ratio of the motor to start
regeneration at peak efficiency point 70 to store energy in
the battery and at lower efficiency points 72 or 74 when the
battery is fully charged. The state of the charge of the
battery is detected by the battery monitor 15. The steps
followed by the motor controller 24, as disclosed on pages 9
and 10 and Fig. 3, provide peak regenerative efficiency when
the battery is not fully charged while less regenerative power
Appeal No. 1997-3237
Application 08/266,081
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is supplied by operating the motor at reduced efficiency when
the battery is at or near fully charged level.
Representative independent claims 1 and 6 are reproduced
as follow:
1. A method for controlling regeneration energy from an
electric motor, said electric motor having a stator and a
rotor, said method comprising the steps of:
(a) operating said electric motor in a regeneration mode
at a first operating point; and
(b) operating said electric motor in a regeneration mode
at a second operating point of reduced efficiency with respect
to said first operating point in response to a regeneration
current generated by said electric motor.

6. A method of controlling regeneration energy from an
electric motor, said electric motor having a stator and a
rotor, said method comprising the steps of:
(a) operating said electric motor in a regeneration mode
at a first operating point;
(b) providing a battery to receive regeneration current
from said motor;
(c) operating said electric motor in a regeneration mode
at a second operating point of reduced efficiency with respect
to said first operating point in response to a regeneration
current flowing into said battery and a variable representing
a state of charge of said battery.
The Examiner relies on the following references:
Takada et al. (Takada) 5,151,637 Sept. 29, 1992
Kanzaki et al. (Kanzaki) 5,420,491 May 30,
1995
Appeal No. 1997-3237
Application 08/266,081
The rejection of claims 1 and 6 over Kanzaki and Takada1
are new grounds of rejection included for the first time in
the Examiner’s answer mailed August 16, 1996.
Appellants filed an appeal brief on May 20, 1996. 2
Appellants also filed a reply brief on October 17, 1996 which
was acknowledged and entered by the Examiner with further
comments in a supplemental answer.
The Examiner mailed a supplemental answer on February 7,3
1997.
4
(filed Dec. 2, 1992)
Claims 1 through 14 stand rejected under 35 U.S.C. § 112
as being indefinite. Claim 1 stands rejected under 35 U.S.C.
§ 102 as being anticipated by Kanzaki. Claim 6 stands
rejected under 35 U.S.C. § 102 as being anticipated by
Takada. 1
Rather than repeat the arguments of Appellants and the
Examiner, we make reference to the briefs and the answers for2 3
the details thereof.
OPINION
After careful review of the evidence before us, we do not
agree with the Examiner that claims 1 through 14 are properly
rejected under 35 U.S.C. § 112. In addition, we do not
sustain the rejection of claims 1 and 6 as anticipated under
35 U.S.C.
Appeal No. 1997-3237
Application 08/266,081
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§ 102. Accordingly, we reverse.
Turning to the rejection of claims 1 through 14 under 35
U.S.C. § 112, Appellants on page 4 of the brief argue that
both claims recite method steps that are clear and have full
support in the specification. Appellants add that the breadth
of claims should not be addressed by a rejection under 35
U.S.C. § 112 rather by a prior art rejection. Appellants on
pages 4 and 5 of the brief point out that 35 U.S.C. § 112,
sixth paragraph, additionally permits the use of “functional”
claims by construing it to cover the corresponding structure,
material or acts described in the specification and
equivalents thereof. Appellants on page 5 conclude that each
of the limitations “operating said electric motor in a
regeneration mode” at different “operating points” and
“efficiency” levels as well as “providing a battery” are
proper method steps and fully defined by the specification.
In response to Appellants’ arguments, the Examiner on
page 3 of the answer points out that the limitation of
”operating said electric motor in a regeneration mode” is a
functional statement. The Examiner adds that the claims fail
to recite the actual and specific steps for operating the
Appeal No. 1997-3237
Application 08/266,081
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motor at each operating point. The Examiner on page 4 of the
answer further argues that it is not clear whether the
regeneration mode continues from the first operating point to
the second point. The Examiner states that the step of
“providing a battery,” as recited in claim 6, is not only a
method step to define a circuit but is also indefinite since
it is not clear whether the battery is the source or in
addition to the source.
Analysis of claims under 35 U.S.C. § 112, second
paragraph, should begin with the determination of whether
claims set out and circumscribe the particular area with a
reasonable degree of precision and particularity; it is here
where definiteness of the language must be analyzed, not in a
vacuum, but always in light of teachings of the disclosure as
it would be interpreted by one possessing ordinary skill in
the art. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
193 (CCPA 1977) (citing In re Moore, 439 F.2d 1232, 1235, 169
USPQ 236, 238 (1971)). Furthermore, our reviewing court
points out that a claim which is of such breadth that it reads
on subject matter disclosed in the prior art is rejected under
35 U.S.C. § 102 rather than under 35 U.S.C. § 112, second
Appeal No. 1997-3237
Application 08/266,081
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paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195,
197 (Fed. Cir. 1983) (citing In re Borkowski, 422 F.2d 904,
909, 164 USPQ 642, 645-46 (CCPA 1970)). “The legal standard
for definiteness is whether a claim reasonably appraises those
of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
Upon a careful review of the claim language and the
specification, we find that “operating said electric motor in
a regeneration mode” and “providing a battery to receive
regeneration current from said motor,” as recited in claims 1
and 6, are proper method steps. It is clear from the
specification as a whole and page 1 specifically, that the
“regeneration mode” occurs when the motor operates as a
generator exerting a torque on the driver mechanism and
providing current to the power source which is generally a
battery. The specification on pages 2 and 5 also provides
adequate details for “providing a battery” such that any
person skilled in the art would immediately understand the
step of connecting a battery and directing regeneration
current from the motor. We further find that specification on
pages 5 and 6 discloses the efficiency curve of the motor in
Appeal No. 1997-3237
Application 08/266,081
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its generator mode in Fig. 2 with different efficiency levels
achieved by changing the current and rotor flux.
In view of the above and in light of the specification as
a whole, we find that the steps of operating the motor at two
different operating points with different efficiency levels
and providing a battery for receiving the regeneration current
are sufficiently defined and would reasonably appraise those
skilled in the art of the scope of these limitations.
Accordingly, we will not sustain the rejection of claims 1
through 14 under 35 U.S.C. § 112.
Turning to the rejection of claim 1 under 35 U.S.C. §
102, Appellants argue on pages 1 and 2 of the reply brief that
Kanzaki’s motor does not have any different operating points.
Appellants further point out that Kanzaki connects and
disconnects a load from the motor without changing the
operating point.
The Examiner on page 2 of the supplemental answer
responds to Appellants’ arguments by stating that claim 1 does
not recite changing of the operating points but merely
requires the motor be in a regeneration mode at a second point
of reduced efficiency. The Examiner characterizes the
Appeal No. 1997-3237
Application 08/266,081
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teachings of Kanzaki as operating the motor in a regeneration
mode in two operating points by closing the switch and
dissipating power in the resistor or opening the switch and
preventing the power dissipation as the high and low
efficiency points, respectively.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
Appeal No. 1997-3237
Application 08/266,081
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We note that Appellants’ claim 1 recites
... (a) operating said electric motor in a regeneration
mode at a first operating point; and
(b) operating said electric motor in a regeneration mode
at a second operating point of reduced efficiency with
respect to said first operating point in response to a
regeneration current generated by said electric motor
(emphasis added).
We find that claim 1 requires two distinct operating
points while the motor is in regeneration mode, the second
point being at a lower efficiency than the first. We note
that these operating points refer to how efficiently the motor
is generating current. We further find that the claim recites
that the change in the operating point is in response to a
regeneration current from the motor. Therefore, the operating
point of the motor in its regeneration mode is changed to the
reduced efficiency point according to a specific condition of
the regeneration current.
A rejection for anticipation under section 102 requires
that each and every limitation of the claimed invention be
disclosed in a single prior art reference. In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994)
(citing In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990)).
Appeal No. 1997-3237
Application 08/266,081
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Kanzaki in col. 2, lines 33 through 42 and Fig. 1 teaches
that in response to increased DC bus voltage a switch connects
the resistor 5 to the DC link so that the excess regenerated
power is dissipated in the resistor. Kanzaki merely redirects
the regenerated power to a resistor without making any changes
to the way the regenerated power is produced. We do not find
that the resistor 5 affects the efficiency of the regenerated
power as recited in claim 1. It acts merely as a load for
dissipating power that would otherwise be directed to the DC
bus. Therefore, Kanzaki fails to teach the operating of an
electric motor in regeneration mode at two different operating
points where the second point has a reduced efficiency
compared to the first point in response to a regeneration
current as recited in Appellants’ claim 1. Accordingly, we
reverse the rejection of claim 1 under 35 U.S.C. § 102.
Turning to the rejection of claim 6, Appellants on pages
2 and 3 of the reply brief argue that Takada does not teach
the limitation of operating the motor at a second operating
point with reduced efficiency as recited in claim 6.
Appellants further state that Takada is silent with regard to
changing the operation point of the motor in response to
Appeal No. 1997-3237
Application 08/266,081
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either the regeneration current or the state of battery
charge.
The Examiner on page 2 of the supplemental answer states
that Takada in col. 6, lines 27 and 28 discloses the step of
detecting the current supplied to the motor being related to
the variation in charge of the battery. The Examiner further
states that such battery charge detection in terms of
regeneration current flowing to the battery is inherent in the
regeneration mode.
We find that claim 6 requires that the operation of the
motor at the second point with reduced efficiency be in
response to both a “regeneration current flowing into the
battery” and a “state of charge of said battery.” Takada in
col. 7, lines 35 through 44 teaches a deceleration apparatus
for a motor where a part of the regenerated power is absorbed
in a resistor and the rest is returned to the power source.
Takada in col. 9, lines 24 through 47 further discloses that
when the regeneration current is directed to the power supply,
a specific timing imposed by the rotation speed control
circuit 1 causes the motor to change from a first low
efficiency intermittent regeneration mode to a second higher
Appeal No. 1997-3237
Application 08/266,081
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efficiency continuous regeneration mode in order to eventually
stop the motor. It is after elapse of a specific time and not
by any signal from the condition of the battery that Takada’s
motor changes its operating point. Therefore, we fail to
find that Takada discloses, directly or inherently, a change
of the regeneration operating point to a reduced efficiency in
response to the current supplied to or a state of the charge
of the battery. Accordingly, we reverse the rejection of
claim 6 under 35 U.S.C. § 102 over Takada.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 14 under 35 U.S.C. § 112 is
reversed. The decision of the Examiner rejecting claims 1
and 6 under 35 U.S.C. § 102 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
REVERSED

KENNETH W. HAIRSTON )
Appeal No. 1997-3237
Application 08/266,081
14
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )

MARK S. SPARSCHO
FORD MOTOR COMPANY
ONE PARKLANE BLVD.
911 EAST PARKLANE TOWERS
DEARBORN, MI 48126
Appeal No. 1997-3237
Application 08/266,081
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MRF/mds/dal