Ex Parte Jaros et al

Patent Trial and Appeal Board

Sep 5, 2017

14197860 (P.T.A.B. Sep. 5, 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.
14/197,860 03/05/2014 Rolf Jaros BOSC.P8697US/11603792 6153
24972 7590 09/07/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
REID JR, CHARLES H
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
09/07/2017 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 ROLF JAROS, NIKOLAS POERTNER,
AXEL REUTER, and ALEXANDER TROFIMOV
Appeal 2017-002113
Application 14/197,860
Technology Center 2800
Before GEORGE C. BEST, AVELYN M. ROSS, and JANE E. INGLESE,
Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision we refer to the Specification (“Spec.”) filed March 5, 2014,
the Final Office Action (“Final Act.”) dated February 8, 2016, the Appeal
Brief (Appeal Br.) filed September 19, 2016, the Examiner’s Answer
(“Ans.”) dated October 31, 2016, and the Reply Brief (“Reply Br.”) filed
November 21, 2016.
2 Appellants identify the real party in interest as Robert Bosch GmbH, which
is also the Applicant. Appeal Br. 2.
Appeal 2017-002113
Application 14/197,860
STATEMENT OF CASE
The subject matter on appeal relates to “a method for operating an
electric machine coupled to an internal combustion engine in a motor
vehicle” and is “equipped to be operated as a motor during the starting
process of the internal combustion engine.” Spec. 2,11. 21—23 and 3,11. 2-4.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for operating an electric machine coupled to an
internal combustion engine in a motor vehicle, the method
comprising:
operating, during a starting process of the internal
combustion engine, the electric machine as a motor according to
a rotational speed specification signal;
wherein the electric machine includes a stator winding, a
rotor winding, a field regulator assigned to the rotor winding and
a current converter post-connected to the stator winding having
controllable switching elements.
Appeal Br. 8 (Claims App’x).
REJECTIONS
The Examiner maintains the rejection of claims 1—15 under 35 U.S.C.
§ 103(a) as being unpatentable over Algrain3 in view of Herbig.4 Final Act.
2.
Appellants request our reversal of the Examiner’s rejection of claims
1—15. Because our basis for reversing the rejection of claim 1—i.e., the lack
of a teaching to operate the electric machine during a starting process of the
internal combustion engine—applies to independent claims 10, 11, 13, and
3 Marcelo C. Algrain, US 7,174,714 B2, issued February 13, 2007
(“Algrain”).
4 Herbig et al., US 2013/0049460 Al, published February 28, 2013
(“Herbig”).
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Application 14/197,860
15, as well as the dependent claims, we focus our discussion below on
independent claim 1.
OPINION
Claim 1:
The Examiner rejects claim 1 (among others) as obvious over Algrain
and Herbig. Final Act. 2. The Examiner finds that Algrain teaches a method
of operating an electric machine during the starting process of an internal
combustion engine and according to a rotational speed specification signal.
Id. The Examiner acknowledges that Algrain does not teach an electric
machine including a stator winding, a rotor winding, a field regulator, or a
current converter as claimed; but, the Examiner finds that Herbig teaches
using an electric machine meeting these claim limitations. Id. The
Examiner reasons that including the electric machine of Herbig in the
apparatus of Algrain in order “to provide an approach to prevent
overvoltages in the electrical system of a motor vehicle” would have been
obvious to one of ordinary skill in the art at the time of Appellants’
invention. Id. at 3.
Appellants argue that Algrain fails to teach operating the electric
machine during a starting process of the internal combustion engine. Appeal
Br. 5. According to Appellants, “Algrain merely describes that [the] engine
boost (which the Office apparently alleges is operation of an electric
machine) must be adjusted as a function of engine speed and load or other
operating conditions ‘during the engine’s operating cycles.’” Id. But,
Appellants explain that “Algrain never mentions a ‘starting process of the
internal combustion engine.’ And, in fact, Algrain’s boost does not operate
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Application 14/197,860
during the starting process of the internal combustion engine” because the
engine is already running. Id.
In the Answer, the Examiner interprets “one of [the] engine’s
operating cycles as a starting process of the engine. An internal combustion
engine has multiple starting processes even if the engine has already started
combustion.” Ans. 2. The Examiner explains that both the turbocharger and
air conditioner “is a starting process after the engine [has] already started
because it involves changing the load of the engine.” Id.
Appellants urge that “[o]ne of skill in art understands that starting the
turbocharger is the starting process of the turbocharger—not the starting
process of the internal combustion engine.” Reply Br. 2. Appellants also
argue that “‘changing the load of the engine’ does not cause the starting of
the air conditioner to be the starting of the internal combustion engine . . .
[r]ather, it changes the load of an engine that is already running.” Id. at 3.
Appellants also argue that the Examiner’s interpretation of an internal
combustion engine having multiple starting processes “even if the engine
has already started” is an unreasonable interpretation of the claims. Id.
We agree with Appellants and conclude that the Examiner’s
interpretation of “during a starting process of the internal combustion
engine” is overbroad and inconsistent with the plain language of the term
and as understood by the Specification. “[D]uring examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir.
2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)); see also
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the
scope of the claims in patent applications is not determined solely on the
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Application 14/197,860
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (“[T]he specification is always highly relevant to the claim
construction analysis ... it is the single best guide to the meaning of a
disputed term.” (internal citation omitted)).
As the Appellants explain (Appeal Br. 4—5), a system that is operating
while the engine is already running is not operating during a starting process
of the internal combustion engine. As ordinarily understood, the starting
process refers to the state of the internal combustion engine as ignition is
achieved and the engine is turned on. If the engine is already running, it is
not starting or turning on. This understanding is consistent with the
Specification, which explains:
It would be desirable to improve the starting process of the
internal combustion engine having such electric machines.
Spec. 2,11. 18—19 (emphasis added).
The operation as motor of the electric machine, during the
starting process of the internal combustion engine, also permits
evacuating the air from the intake manifold by dragging the
internal combustion engine, until a charging desired for ignition
is achieved.
Id. at 3,11. 15—20 (emphasis added).
As an example, a target rotational speed no is provided, and when
this is reached, an injection release and an ignition release take
place by engine control unit 12, and with that, the starting
process of the internal combustion engine is closed. The motor
operation of electric machine 100 is then ended.
Id. at 10,11. 22—26 (emphasis added).
The starting process of the internal combustion engine begins at
a point to, at which engine control unit 12 transmits a rotational
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speed specification signal including a start signal to arithmetic
unit 4 of electric machine 100. ... The target rotational speed
is no at this point. . . . Thereafter, arithmetic unit 4 of electric
machine 100 begins automatically and independently to turn on
the internal combustion engine.
Id. at 11,11. 5—16 (emphasis added).
At a time ti target rotational speed no is reached. Subsequently,
arithmetic unit 4 goes over into a control operation, and controls
the actual rotational speed of the electric machine to the target
rotational speed no. Up to a time t2, the air is evacuated from the
intake manifold, which may be by the dragging of the internal
combustion engine, until a charging desired for ignition is
reached. Thus, in this case, the electric machine is used to set
the desired target charging at the time of using the combustion.
Id. at 11,11. 16—25 (emphasis added).
At a point t3, the desired target charging has been reached, and
an injection (in direct-injection engines) is released.
Id. at 12,11. 1—2 (emphasis added)].
Thus, from these passages of the Specification, it is clear that “during
a starting process of the internal combustion engine” means when the engine
is turned on through ignition—not a mere change in load while the engine is
already running.
Because Algrain fails to teach operating an electric machine during a
starting process of the internal combustion engine, Appellants’ arguments
are persuasive of reversible error.
CONCLUSION
The Examiner reversibly erred in rejecting claims 1—15 under 35
U.S.C. § 103(a) as being unpatentable over Algrain in view of Herbig.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—15 is
reversed.
REVERSED
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