Ex Parte Gibson et alDownload PDFPatent Trial and Appeal BoardMar 22, 201712348198 (P.T.A.B. Mar. 22, 2017) Copy Citation 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. 81182324 2522 EXAMINER ALSOMIRI, MAJDI A ART UNIT PAPER NUMBER 3662 MAIL DATE DELIVERY MODE 12/348,198 01/02/2009 36865 7590 03/22/2017 MCCOY RUSSELL LLP 806 S.W. BROADWAY, SUITE 600 PORTLAND, OR 97205 Alex O'Connor Gibson 03/22/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX O’CONNOR GIBSON, ROGER LYLE HUFFMASTER, PETER JOHN GRUTTER, FELIX NEDOREZOV, and RODNEY LEWIS LOPEZ Appeal 2014-009403 Application 12/348,1981 Technology Center 3600 Before KEVIN W. CHERRY, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge BAYAT. Opinion Concurring filed by Administrative Patent Judge WORTH. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) the decision to reject claims 1, 4, 6—11, 13—15, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by Nobumoto.2 Appellants’ counsel presented oral arguments on March 13, 2017. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify “Ford Global Technologies, LLC.” as the real party in interest. Appeal Br. 3 (“Appeal Br.,” filed March 10, 2014). 2 Nobumoto et al., US 2007/0078040 Al, pub. Apr. 5, 2007 Appeal 2014-009403 Application 12/348,198 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter “relates to methods and systems for controlling an engine shut-down.” Spec. 1:4—5. Independent claims 1 and 18, reproduced below, are representative of the subject matter on appeal. 1. A method of controlling a vehicle system including an engine that is selectively shut-down during engine idle-stop conditions, comprising: during an idle-stop engine shut-down, adjusting a hydraulic actuation of a torque converter lock-up clutch to adjust drag torque on the engine to stop the engine, including adjusting the lock-up clutch’s actuation responsive to a desired stopping position of the engine. 18. A vehicle system, comprising: a powertrain including wheels, an engine, a torque converter having a lock-up clutch, and an automatic transmission including a forward clutch; wheel brakes; and a control system configured to selectively shut-down the engine during engine idle-stop conditions without receiving a shut-down request by an operator, where to stop the engine for the shut-down, the control system increases engagement of at least the lock-up clutch and the forward clutch to further couple the wheels to the engine while the wheel brakes are engaged, and where to restart the engine, the engine is started without assistance from an auxiliary starter. 2 Appeal 2014-009403 Application 12/348,198 ANALYSIS As set forth below, pursuant to our authority under 37 C.F.R. §41.50(b), we enter a New Ground of Rejection of claims 1, 4, 6-11, 13—15, and 19 under 35U.S.C. § 112, second paragraph, as indefinite. Anticipation by Nobumoto Claims 1, 4, 6—11, 13—15, and 19 In light of this new rejection, we do not reach the merits of the rejection of claims 1, 4, 6-11, 13—15, and 19 under 35 U.S.C. § 102(b) at this time. Before a proper review of the rejection under § 102(b) can be made, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Because the claims fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, we are constrained to reverse, pro forma, the Examiner’s rejection under 35 U.S.C. § 102(b). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). It should be understood that our decision to reverse the rejection of claims 1, 4, 6—11, 13—15, and 19 under 35 U.S.C. § 102(b) is based solely on the indefiniteness of the claims, and does not reflect on the merits of the underlying rejection. 3 Appeal 2014-009403 Application 12/348,198 New Ground of Rejection—Indefiniteness Claims 1, 4, 6—11, 13—15, and 19 The second paragraph of 35 U.S.C. § 112 requires the specification to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. This section contains two requirements: first, the claim must set forth what the applicant regards as the invention, and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently definite. Allen Eng’g Corp. v. BartellIndus., 299 F.3d 1336, 1348 (Fed. Cir. 2002). “As the statutory language of ‘particularity]’ and ‘distinctness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The test for determining the question of indefmiteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. The claims must notify the public of what they are excluded from making and using. Id. For this reason, an applicant is required to use language as precise as the subject matter reasonably permits. Id. In order to determine if the claims set out and circumscribe a particular area with a reasonable degree of precision and particularity, we analyze the language of the claim “in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one 4 Appeal 2014-009403 Application 12/348,198 possessing the ordinary level of skill in the pertinent art.” Moore, 439 F.2d at 1235. Precision in claiming is not only dependent on the claim language itself; it is dependent on the description of the invention in the Specification. The specification is the single best guide to determining the meaning of the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). With that in mind, we begin by analyzing the language of the claims in light of the Specification and the teachings of Nobumoto as it would be interpreted by an artisan possessing ordinary skill. desired stovvins position Independent claim 1 is directed to “a method of controlling a vehicle system including an engine that is selectively shut-down during engine idle- stop conditions” requiring, inter alia, “adjusting the lock-up clutch’s actuation responsive to a desired stopping position of the engine.'1'’ Appellants describe desired stopping position in the Specification as follows: Controller 42 may be further configured to adjust the hydraulic actuation of the transmission component, for e.g., the transmission clutches, responsive to a desired stopping position of the engine such that by the end of the engine shutdown operation, the engine has been brought to the desired stopping position. In one example, the stopping position may be a position that may enable a faster restart during a subsequent restart operation. It will be appreciated that during the engine shutdown operation, the forward clutch and/or torque converter clutches may not be fully disengaged. For example, the controller may keep one or both of them partially engaged. In other words, a transmission gear may be engaged during the engine shutdown (e.g., during the adjustment of the torque converter clutch, forward clutch, or other hydraulic component, to control the spin-down of the engine from idle speed to 5 Appeal 2014-009403 Application 12/348,198 substantially zero speed). Similarly, a transmission gear may be engaged (or may remain engaged) during a subsequent engine restart. That is, neither operation may be performed with the transmission in a neutral condition. Spec. 9:17—10:6 (emphasis added). The Examiner found the limitation “adjusting the lock-up clutch’s actuation responsive to a desired stopping position of the engine” disclosed in paragraph 56 of Nobumoto, which provides: The torque converter 51 is provided with a lockup clutch 64 which is fitted between the pump cover 53 and the turbine 55 to directly connect the turbine 55 to the crankshaft 3 through the pump cover 53. Linked to the oil pump 61 and the electric oil pump 62 through the hydraulic pressure control mechanism 63, the lockup clutch 64 is engaged and disengaged as various solenoid valves provided in the hydraulic pressure control mechanism 63 are turned on and off in a controlled fashion to switch the fluid channels of the hydraulic pressure control mechanism 63 according to the vehicle speed. See Ans. 2 (quoting Nobumoto | 56). The Examiner determined that Nobumoto’s disclosure of adjusting the lock-up clutch’s actuation according to vehicle speed satisfied this claim requirement. In the Appeal Brief, Appellants argue “whether or not Nobumoto shows that the lock-up clutch 64 is engaged and disengaged as various solenoid valves are turned on and off says nothing about the hydraulic actuation being responsive to a desired stopping position—the actual claim language. Notably, claim 1 requires adjusting the torque converter lock-up clutch’s actuation responsive to a desired stopping position of the engine.'1'’ Appeal Br. 10 (emphasis added). But repeating the language of the claim provides no guidance about what a “desired stopping position of the engine” 6 Appeal 2014-009403 Application 12/348,198 is, how it is defined, or even by whom it is defined. This phrase is highly subjective, and on its face, provides little guidance to one of skill in the art. Based on our review of the Specification, the teachings of Nobumoto, the Examiner’s findings, and Appellants’ arguments, we do not find claim 1 sets out and circumscribes a particular area with a reasonable degree of precision and particularity. When faced with a presumably subjective phrase like “a desired stopping position of the engine,” we must determine whether the Specification supplies some standard for measuring the scope of the phrase. Appellants’ Specification offers no objective definition or standard for determining “a desired stopping position of the engine.” The Specification describes “responsive to a desired stopping position of the engine such that by the end of the engine shutdown operation, the engine has been brought to the desired stopping position.” Spec. 9:18—20. This statement, however, is circular and provides no guidance to a skilled artisan to understand the term. The only other discussion of the term is not as a definition, but as a non-limiting example. See Spec. 9:20-21 (“In one example the stopping position may be a position that may enable a faster restart during a subsequent restart operation.” (emphases added)); see also Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (noting that “the use of ‘may’ signifies that the inventors did not intend to limit [the claims to a particular feature]”). With this lone example, a skilled artisan is left to wonder what other forms of “stopping position” are “desired.” “The specification offer no indication, thus leaving the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) 7 Appeal 2014-009403 Application 12/348,198 (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005)). As with the Appeal Brief, Appellants do not define, describe, or provide any examples of a desired stopping position, or for that matter explain how it differs from vehicle speed, or how it is determined or calculated in the Reply Brief. Appellants merely contend that Nobumoto does not disclose a desired stopping position of the engine, or that Nobumoto discloses vehicle speed and throttle opening but not a desired stopping position. See Reply Br. 2—3. Appellants’ counsel at oral argument also failed to persuade us that “responsive to a desired stopping position of the engine” can be given any reasonable meaning. Appellants’ counsel did identify paragraphs 106, 113, and 116—17 of Nobumoto as identifying controlling a stopping position of the engine, see Appeal Br. 11—13, but neither the Appellants’ claims nor Appellants’ Specification provides any guidance as to whether Nobumoto’s discussion in those paragraphs about controlling piston position in the engine is the same as Appellants’ “desired stopping position.” In the absence of any standard or definition, “a desired stopping position” is reasonably interpreted as reciting a subjective element, such as a driver’s desired stopping position—which as the Examiner found may be expressed according to the driver’s speed. This interpretation is plausible considering Appellants’ disclosure describing the relationship between engine speed fluctuations and adjusting actuation of the lockup clutch. See e.g. Spec. 7:12—15 (emphasis added) (“In this example, the level of engagement of the torque converter lock-up clutch (that is, whether the clutch is fully engaged, or partially engaged) may be adjusted in response to 8 Appeal 2014-009403 Application 12/348,198 the speed of the engine to thereby adjust the level of the drag torque responsive to the engine speed and thereby control the spin down of the engine.”). In other words, a driver’s desired stopping position of the engine can reasonably be interpreted as a driver’s deceleration of the engine or reduction in speed. See Nobumoto 1 68 (“the engine stop/restart controller 2a causes the engine to automatically restart with energy produced by combustion when predefined conditions for engine restart (engine restart conditions) are satisfied as a result of depression of the accelerator pedal or the brake pedal during a process of automatic engine stop or upon completion of automatic engine stop.”). Alternatively, the limitation “responsive to a desired stopping position of the engine” can reasonably be interpreted as the desired stopping position of a particular cylinder in the engine. Appellants’ Specification provides that “[i]n all cases, engine control may be performed on a cylinder-by cylinder basis to control the engine torque output.” Spec. 6:15—16. “In one example, the stopping position may be a position that may enable a faster restart during a subsequent restart operation.” Id. 9:20—21. Consistent with this example, Nobumoto discloses that it is possible to stop the pistons 13 at desired positions with higher precision by the engine stop control operation and thereby achieve improved engine restartability. Since the engine stop/restart controller 2a of the ECU 2 controls the engi ne to stop the piston 13 in the expansion stroke cylinder 12A within the aforementioned appropriate piston stop range R with high accuracy even when the vehicle is running, it is possible to execute automatic engine stop more often whenever desired. This allows more reductions in fuel consumption and CO2 emissions. 9 Appeal 2014-009403 Application 12/348,198 Nobumoto If 117; see also Nobumoto Iff 13, 102, 112, 115, 209. Therefore, we also find it reasonable to interpret a desired stopping position of the engine as the desired piston stop position in the cylinder of the engine. Having considered this claim language in the context of the circumstances, we determine the term desired stopping position is indefinite at least because it is susceptible to two equally reasonable interpretations. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). The Miyazaki standard for evaluating indefiniteness is justified, at least in part, because applicants have the opportunity and the obligation to define the invention precisely during prosecution before the US Patent & Trademark Office. Id. Section 112 places the burden of precise claim drafting on applicants. See Packard, 751 F.3d at 1313 (“Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112[, second paragraph], for the [Office], upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection.”). Accordingly, we enter a New Ground of Rejection of independent claim 1 as indefinite under 35U.S.C. § 112, second paragraph, including claims 4, 6, 7—11, 13—15 dependent thereon. Claim 19 also recites the term desired stopping position; we reject independent claim 19 as indefinite for the same reasons. 10 Appeal 2014-009403 Application 12/348,198 Anticipation by Nobumoto Claim 18 Independent claim 18 requires, inter alia, “a control system configured to selectively shut-down the engine during engine idle-stop conditions without receiving a shut-down request by an operator ... the control system increases engagement of at least the lock-up clutch and the forward clutch to further couple the wheels to the engine while the wheel brakes are engaged.” The Examiner finds this disputed limitation in paragraphs 9—11 and 209 of Nobumoto. See Final Act. 5. The Examiner additionally finds this limitation in paragraphs 13, 131, and 138 of Nobumoto. See Ans. 3. We are persuaded by Appellants’ arguments that the cited paragraphs in Nobumoto fail to describe “the control system increases engagement of at least the lock-up clutch and the forward clutch to further couple the wheels to the engine while the wheel brakes are engaged,” as required by claim 18. See Appeal Br. 18—19; Reply Br. 4—5. Although the relied upon paragraphs in Nobumoto describe engagement of the forward clutch, claim 18 also requires the additional engagement of the lock-up clutch to further couple the wheels while the wheel brakes are engaged; the Examiner’s findings in Nobumoto do not account for the whole limitation. Accordingly, we reverse the anticipation rejection of claim 18. DECISION The Examiner’s prior art rejection of claims 1, 4, 6—11, 13—15, and 19 are reversed pro forma. A NEW GROUND OF REJECTION is entered for claims 1, 4, 6-11, 13—15, and 19 as indefinite under 35 U.S.C. § 112, second paragraph. 11 Appeal 2014-009403 Application 12/348,198 The Examiner’s decision to reject independent claim 18 under 35 U.S.C. § 102(b) as anticipated by Nobumoto is reversed. Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Thus, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellants must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the Examiner; or (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REVERSED: 37 C.F.R, $ 41.50(b) 12 Appeal 2014-009403 Application 12/348,198 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX O’CONNOR GIBSON, ROGER LYLE HUFFMASTER, PETER JOHN GRUTTER, FELIX NEDOREZOV, and RODNEY LEWIS LOPEZ Appeal 2014-009403 Application 12/348,198 Technology Center 3600 Before KEVIN W. CHERRY, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge BAYAT. Opinion Concurring filed by Administrative Patent Judge WORTH. WORTH, Administrative Patent Judge, concurring. I write separately to highlight the sparseness of the disclosure, and to observe that the Specification does not aid in the interpretation of independent claim 1. When asked at oral argument about the issues of enablement and best mode, counsel for Appellants pointed variously to page 9 of the Specification and to Figure 6A of the Specification. We note that, although Appellants claim a relationship between drag torque and desired position in independent claim 1, i.e., that drag torque varies as a function of a desired stop position, the Specification does not disclose any equations therefor nor 13 Appeal 2014-009403 Application 12/348,198 does the Specification disclose any examples with numbers as a heuristic in lieu of a completely described mathematical relationship. Page 9 of the Specification contains language that tracks the claim language without providing more in the way of mechanism. Figure 6A of the Specification contains graphs devoid of numbers on the x or y axis (although, typically, when engineers reduce an invention to practice, they do so with specific numbers, e.g., for torque). Further, Figure 6A does not contain the desired stop position, even though the claims use the desired stop position as an independent variable. Counsel for Appellants represents that a person of ordinary skill in the art would be able to practice the invention, i.e., that the invention is enabled. Putting aside whether undue experimentation is required, we note that the Appellants have not provided guidance to a person of ordinary skill. Mathematics is the language of engineering. Engineers use equations to communicate concepts to each other. It is therefore unclear who the intended audience for the Specification is, or whether the Appellants intended the Specification to provide disclosure above and beyond the claims. We note that public disclosure is the quid pro quo of the patent grant. 14 Copy with citationCopy as parenthetical citation