Ex Parte Gerhardt et al

Patent Trial and Appeal Board

Oct 31, 2018

14804977 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/804,977 07/21/2015
113140 7590 11/02/2018
Bejin Bieneman PLC
Ford Global Technologies, LLC
2000 Town Center
Suite 800
Southfield, MI 48075
FIRST NAMED INVENTOR
Torsten Gerhardt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83535917(65080-1636) 4690
EXAMINER
MARTINEZ BORRERO, LUIS A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORSTEN GERHARDT, JONATHAN MUNDY, JAMES LLOYD,
JAMES NEUGEBAUER, SIMON POTTICARY, RICHARD CRAVEN, and
BRUCE SOUTHEY
Appeal2018-003903
Application 14/804,977 1
Technology Center 3600
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-20 under 35 U.S.C. § 103 as unpatentable over
Dube2 and Gros3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Ford Global Technologies, LLC ("Appellant") is the applicant, according to
3 7 C.F .R. § 1.46, and is identified as the real party in interest. Appeal Br. 3.
2 US 2008/0071436 Al, published Mar. 20, 2008.
3 US 2014/0229046 Al, published Aug. 14, 2014.
Appeal2018-003903
Application 14/804,977
CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent claims. Claim 1 is illustrative, and
reads:
1. An electric bicycle comprising:
a motor;
a controller;
a heart rate monitor programmed to communicate a heart
rate signal representing a heart rate of an occupant to the
controller; and
the controller being programmed to receive a destination
distance of the electric bicycle relative to a predetermined
destination;
the controller being programmed to provide instruction to
increase power to the motor during a final stretch of a journey to
the predetermined destination based at least on the heart rate
signal and the destination distance.
Appeal Br. 20 (Claims App.).
ANALYSIS
Claims 1-1 7
As for claim 1, the Examiner finds that Dube discloses an electric
bicycle comprising a motor, a controller, and a heart rate monitor. Final Act.
4--5 (citing Dube ,r,r 16, 17, 39). As to the last two clauses of claim 1, reciting
operation of the programmed controller, the Examiner finds that Dube does
not disclose that "the controller [is] programmed to receive a destination
distance of the electric bicycle relative to a predetermined destination"
("next-to-last clause"), but finds Dube discloses that "the controller [is]
programmed to provide instruction to increase power to the motor during a
final stretch of a journey to the predetermined destination based at least on ..
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Application 14/804,977
. the destination distance" ("last clause"). Id. at 5 (citing Dube ,r,r 45, 47--49,
60).
The Examiner relies on Gros for teaching the next-to-last clause of
claim 1. Id. at 5-6 (citing Gros ,r,r 29, 34, 47, Fig. 2). According to the
Examiner, Gros teaches this limitation in describing that the user inputs the
coordinates of a destination. Ans. 5 ( citing Gros ,r 29). The Examiner
concludes that it would have been obvious to modify Dube to include this
limitation to allow the bicycle to take into account the average power
delivered by the cyclist, as well as the available electric power, the
topography, and the maximum distance the bicycle can travel. Id.
Appellant contends that the combination of Dube and Gros fails to
teach or suggest the next-to-last clause of claim 1. Appeal Br. 11. Appellant
asserts that the "destination distance" is "a dynamic measurement between
the electric bicycle and a specific 'predetermined destination."' Id. at 8-9. In
support, Appellant quotes paragraph 163 of Appellant's Specification. Id. at
9. Paragraph 163 describes, in part, "a location device may be configured to
communicate to the controller the destination distance of the electric bicycle
10 relative to the predetermined destination," and the location device can be,
for example, a GPS receiver that transmits GPS information to the computing
device 28. Appellant explains that "the 'destination distance' changes as the
electric bicycle moves relative to the predetermined location," and, thus, the
destination distance is not a "static value." Reply Br. 2. Appellant contends
that its interpretation of "destination distance" is required by the last clause of
claim 1. Id. at 3 .
Appellant contends that Gros fails to teach or suggest receiving "a
destination distance of the electric bicycle relative to a predetermined
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Application 14/804,977
destination" ( emphasis added), but instead discloses inputting the coordinates
of a destination into the system. Appeal Br. 11 ( emphasis added ( citing Gros
,r 29)). Appellant contends that the inputting of coordinates of a destination
in Gros "is the input of static data before the travel is initiated, which is used,
in part, to create a power distribution profile ( shown in Figure 3 of Gros)
prior to the trip." Reply Br. 3. Referring to the last clause of claim 1,
Appellant contends that "it does not make sense that power to a motor would
be increased based on a static measurement like that of Gros." Id. Appellant
contends that the Examiner's interpretation of Gros is inconsistent with the
broadest reasonable interpretation of the claimed "destination distance." Id.
Appellant's contentions are persuasive. Appellant's construction of the
"destination distance" is consistent with both the claim language and the
Specification. Inputting the coordinates of a destination into the system at the
beginning of a journey, as in Gros, is different from the controller receiving a
destination distance during or along a journey to determine "a final stretch of
a journey to the predetermined destination," as in the claimed electric bicycle.
The claimed destination distance is determined relative to the predetermined
destination; it does not correspond to that destination. As the location of the
electric bicycle approaches the predetermined destination, the destination
distance changes by correspondingly decreasing.
As to the final clause of claim 1, Appellant contends that because
"Dube does not receive a destination distance, it follows that Dube cannot
teach an increase in power to the motor based the destination distance."
Reply Br. 4. Appellant contends that none of paragraphs 45, 47--49, and 60
of Dube cited by the Examiner teaches or suggests increasing power to the
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motor during the "final stretch of the journey," as claimed. 4 Appeal Br. 9--10.
For example, the Examiner finds that paragraph 48 of Dube teaches that its
system "may conserve heart rate and speed to cover a certain distance in a
certain time." Final Act. 5. The Examiner concludes that Dube's system
"can increase the power of the motor based on a heart rate and a certain
distance." Ans. 4. The Examiner finds that paragraph 60 of Dube discloses
"provid[ing] a training program in the processing unit to make the user's
body activity level correspond to a desired activity level as a function of
distance, time, speed, energy consumed, body maximum level of activity,
etc." (Final Act. 5), and "[b ]y increasing and decreasing the motor assistance
over a period of time, one may get the same experience as when training on a
programmed training bicycle, or device, but may also take advantage of the
pleasure of riding outside" (Ans. 4--5). We agree with Appellant that these
paragraphs, as well as the other cited paragraphs, fail to disclose the final
clause. Appeal Br. 10.
Appellant also contends, even assuming Dube discloses keying a
specific activity to "a final stretch," Dube fails to disclose an "'increase' in
'power to the motor during a final stretch of a journey based at least on ...
the destination distance,"' as claimed. Appeal Br. 10. Appellant asserts that
the "distance" discussed, for example, in paragraphs 36, 47, and 48 of Dube,
"is not tied to a specific destination and, specifically, does not disclose a
dynamic measurement between the electric bicycle and a specific
predetermined destination." Id. We agree.
4 Should there be further prosecution of this application before the Examiner,
the Examiner may consider whether the meaning of the term "final stretch" is
sufficiently clear to one of ordinary skill in the art to comply with the
requirements of 35 U.S.C. § 112, second paragraph, or§ 112(b ).
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And even assuming Dube's system "can increase the power of the
motor based on ... a certain distance," as the Examiner submits (Ans. 4
( emphasis added)), the Examiner has not established by a preponderance of
the evidence that Dube's controller "[is] programmed to provide instruction
to increase power to the motor during a final stretch of a journey to the
predetermined destination based at least on . .. the destination distance," as
required by claim 1. Appeal Br. 20 (Claims App. (emphasis added)). It is not
sufficient that Dube' s system could be programmed to perform this required
function in claim 1. Even assuming Dube's controller could be modified to
perform the claimed function, this fails to satisfy the "capable of' test, which
requires that the prior art structure be capable of performing the function
without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement
Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the
functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id. The Examiner has not
shown by a preponderance of the evidence that the controller of Dube, as
modified by Gros, would have the programming or structure needed to meet
the claim limitation. Nor has the Examiner proposed modifying Gros to have
this programming or structure.
Thus, we do not sustain the rejection of claim 1, or of claims 2-17
depending therefrom, as unpatentable over Dube and Gros.
Claims 18-20
Claim 18 recites a "system for a bicycle, comprising a computing
device having a ... memory ... storing instructions ... comprising
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programming to" "receive a destination distance of the bicycle relative to a
predetermined destination" and "provide instruction to increase power to a
motor during a final stretch of a journey to the predetermined destination
based at least on the heart rate and the destination distance." Appeal Br. 22
(Claims App. (emphasis added)). For reasons similar to those discussed for
claim 1, we do not sustain the rejection of claim 18, or of dependent claims
19 and 20, as unpatentable over Dube and Gros.
DECISION
We reverse the rejection of claims 1-20.
REVERSED
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