Ex Parte Gee

Board of Patent Appeals and Interferences

Jan 12, 2005

09848032 (B.P.A.I. Jan. 12, 2005)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS SCOTT GEE
____________
Appeal No. 2005-0245
Application No. 09/848,032
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ON BRIEF
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Before GARRIS, KRATZ, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 15-18, which are all of the claims pending in this application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.
Appeal No. 2005-0245
Application No. 09/848,032
Page 2
1We rely upon and cite to the English translation of record.
INTRODUCTION
The claims are rejected under 35 U.S.C. § 103(a). As evidence of unpatentability, the
Examiner relies upon the following prior art references:
Gopp et al. (Gopp) 5,555,871 Sep. 17, 1996
Kitada et al. (Kitada)1 JP 6-48,189 Feb.
22,
1994
The specific rejection maintained by the Examiner is as follows:
Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kitada
in view of Gopp.
Appellant states that all the claims stand or fall together (Brief, p. 3). We select claim 15
to represent the issues on appeal. Claim 15 reads as follows:
15. A hybird electric vehicle (HEV) comprising:
an internal combustion engine;
an electric traction motor;
a storage battery for furnishing power to the traction motor;
an engine temperature sensor;
a battery state of charge indicator;
a vehicle system controller (VSC) for receiving a temperature signal from the engine
temperature sensor and a state of charge signal from the battery state of charge
indicator;
and
an engine control unit operated by the VSC, with the engine control unit being
directed to operate the engine in a fail-safe mode in the event that the engine
temperature exceeds a predetermined temperature threshold, with said engine
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Application No. 09/848,032
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2In the first paragraph of the rejection, the phrase on lines 5-7, should read: “powering the vehicle solely
with the traction motor if the battery state of charge is greater than a predetermined charge threshold.” As the
correction is readily apparent from the context of the sentence and the next sentence and from Kitada, the error is
harmless.
controller halting the engine and powering the vehicle solely with the traction motor
if the battery state of charge is greater than a predetermined charge threshold, and
with said engine controller operating the engine on alternating cylinders in the event
that the engine temperature exceeds the predetermined temperature threshold and
the battery state of charge is less than said predetermined charge threshold.
We affirm and in so doing we incorporate by reference the findings of fact and
conclusions of law articulated by the Examiner in the Answer (Answer, pp. 3-5).2 We add the
following for emphasis.
OPINION
The claims are directed to a hybrid electric vehicle and a process for operating it. There
is no dispute here that the hybrid electric vehicle taught by Kitada includes the internal
combustion engine, electric traction motor, battery, temperature sensor, charge indicator, vehicle
system controller and engine control unit required by claim 15 (Compare Brief, pp. 3-4 with
Answer, pp. 3-5). There is further no dispute that Kitada describes one of the two control
conditions required by the claim, i.e., shutting down an overheating engine and, if there is
sufficient battery charge, powering the vehicle using the electric traction motor (Id.). The
question, thus, is whether it would have been obvious to one of ordinary skill in the art to modify
the apparatus and process of Kitada so as to include the second control condition of the claims,
Appeal No. 2005-0245
Application No. 09/848,032
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i.e., operating the overheating engine on alternating cylinders when the battery charge is
insufficient to power the motor, or, in other words, when the battery is dead. The Examiner cites
Gopp as evidence that it was known in the art to control an internal combustion engine such that,
upon overheating, the engine is powered by alternating cylinders and concludes, based on the
evidence provided by Gopp, that the modification of the hybrid electric vehicle of Kitada would
have been obvious to one of ordinary skill in the art (Answer, pp. 3-4).
Appellant argues that the Examiner has engaged in hindsight reconstruction of the
invention by plucking from Gopp the idea of running an engine on alternating cylinders (Brief,
p. 4). This, according to Appellant, is because Kitada teaches shutting down the engine if the
battery is dead and while Gopp describes operating an overheating engine on alternating
cylinders, Gopp makes no reference to a hybrid vehicle having both electric and internal
combustion engine propulsion (Id.).
Appellant’s argument is not convincing because it concentrates on what each reference
teaches separately without considering what the combination would have suggested to one of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(The claimed invention need not be expressly suggested in any one or all of the references,
rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.). As pointed out by the Examiner, the problem of overheating is a
problem with the internal combustion engine component of the hybrid vehicle (Answer, pp. 4-5).
Those of ordinary skill in the art would have looked to solutions to problems with internal
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Application No. 09/848,032
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combustion engines in the art related to internal combustion engines. Gopp provides a solution:
power the engine with alternating cylinders so that the engine can be cooled by drawing fresh air
through the deactivated cylinders. The benefit of incorporating this solution into the hybrid
vehicle of Kitada would have been readily apparent to one of ordinary skill in the art as it would
allow the hybrid electric vehicle to operate even when it is overheating and the battery is dead.
The Examiner has established that there was a reason, suggestion, or motivation to make the
combination which was grounded in the prior art. Such evidence shows that the rejection is not
based upon improper hindsight reconstruction.
The contentions of Appellant do not persuade us of reversible error in the Examiner’s
position. We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 15-18 which has not been sufficiently rebutted by
Appellant.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 15-18 under 35 U.S.C. § 103
is affirmed.
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Application No. 09/848,032
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CT/jrg
Appeal No. 2005-0245
Application No. 09/848,032
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