Ex Parte Kernwein et al

Patent Trial and Appeal Board

Aug 31, 2017

12941906 (P.T.A.B. Aug. 31, 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.
12/941,906 11/08/2010 Markus KERNWEIN TWEL4106US 1708
26822 7590 09/05/2017
Hackler Daghighian Martino & Novak
433 North Camden Drive, Fourth Floor
Beverly Hills, CA 90210
EXAMINER
STAUBACH, CARL C
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
marc @martinopatentlaw.com
jcf@hdmnlaw.com
marc@hdmnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS KERNWEIN and JOERG STOECKLE
Appeal 2015-005215
Application 12/941,906
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
1—5 and 7—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We are informed that the real party in interest is BorgWamer Ludwigsberg
GmbH. Appeal Br. 3 (Nov. 26, 2014).
Appeal 2015-005215
Application 12/941,906
CLAIMED SUBJECT MATTER
The claims are directed to a method for heating a glow plug. Claims
1—5 and 7—18 are pending. Claims 1,13, and 17 are independent, and claim
1 is reproduced below to illustrate the claimed subject matter:
1. A method for heating a glow plug to a setpoint temperature
using a glow program which specifies the course over time of an
effective voltage which is generated using pulse width
modulation and is applied to heat the glow plug, the method
comprising:
providing for the glow plug and other glow plugs of a same
model series, a nominal value parameter that matches within a
scope of manufacturing tolerances and that is typical for the
model series;
determining a single deviation between a measured glow
plug parameter and the nominal value parameter, wherein the
measured glow plug parameter is measured from a cold glow
plug; and
adapting the entirety of the glow program as a function of
the single deviation by changing the course over time of the
effective voltage in proportion to the deviation.
REJECTION
Claims 1—5 and 7—18 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boisvert et al. (US 6,148,258, iss. Nov. 14, 2000
(hereinafter “Boisvert”)), Moritz et al. (US 2009/0193882 Al, pub. Aug. 6.
2009 (hereinafter “Moritz”))2 and Sakurai (US 8,228,659 B2, iss. July 24,
2012).
2 The Examiner cites to Moritz (US 7,886,587 B2, iss. Feb. 15, 2011). See
Final Act. 2.
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DISCUSSION
Appellants make five arguments addressed to the three independent
claims and a sixth, additional argument addressed to claim 17. Appeal Br.
12—21. Appellants do not address the dependent claims separately. In
connection with the first five arguments, we select claim 1 as representative,
and claims 13 and 17 and the dependent claims stand or fall together with
claim 1. 37 CFR § 41.37(c)(l)(iv). We address Appellants’ sixth argument
separately.
Argument 1
Appellants argue that “none of the references, whether alone or in
combination, teach or suggest to adapt the entirety of the glow program only
once as a function of a single deviation by changing the value of the
effective voltage in proportion to the deviation.” Appeal Br. 12.
The Examiner finds “none of the independent claims contain all three
features together to adapt (1) the entirety of the glow program (2) only once
as a function of a (3) single deviation by changing the value of the effective
voltage in proportion to the deviation.’” Ans. 10—11 (internal quotations
omitted). The Examiner also points to the transition phrase “comprising”
and notes its open-ended effect. Id. at 11.
Appellants argue that the phrase “adapting the entirety of the glow
program as a function of the single deviation by changing the course over
time of the effective voltage in proportion to the deviation” recited in claim
l,and similar language in claims 13 and 17, demonstrates that the Examiner
is incorrect. Id. at 13. The Examiner finds that the open-ended transition
term “comprising” (Appeal Br. 23 (Claims App.) in claim 1 is inclusive or
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open-ended and does not exclude additional, unrecited elements or method
steps. Final Act. 11; Ans. 10-11; see also Mars Inc. v. H.J. Heinz Co., 377
F.3d 1369, 1376 (Fed. Cir. 2004). The Examiner is correct. Given the open-
ended nature of the independent claims, the one-time adjustment Appellants
argue for is simply not claimed. Accordingly, we are not persuaded that the
Examiner erred on this basis.
Argument 2
Second, Appellants argue that Boisvert does not teach “how to
determine a single deviation between a measured glow plug parameter and
the nominal value parameter and then adapting the entirety of the glow
program only once as a function of the single deviation.” Appeal Br. 14.
The Examiner responds that Boisvert was not relied upon to teach “a single
deviation.” Answer 11. Instead, Sakurai was relied on for such a teaching.
Appellants are not addressing the rejection, which is based on a combination
of references rather than on Boisvert alone. See In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck 8l Co., 800 F.2d 1091 (Fed. Cir. 1986).
Appellants’ Reply Brief contends that its second argument did more
than discuss a single reference. We find only discussion of Boisvert under
the heading Argument 2 (Appeal Br. 13—14), and so are not persuaded by
Appellants’ Reply Brief under the same heading. The additional discussion
found in the Reply Brief under the heading regarding Argument 2 is a new
argument and not in response to the Examiner’s Answer, and so is not
proper in a Reply Brief. 37 CFR § 41.41(b)(2)(2014) (“Any argument raised
in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer . . . will not be
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Application 12/941,906
considered by the Board for purposes of the present appeal, unless good
cause is shown.”). ; Kaufman Company, Inc. v. Lantech, Inc., 807 F.2d 970,
973 n.* (Fed. Cir. 1986).
Argument 3
Appellants argue that the proposed modification of Moritz would
render Moritz unsatisfactory for its intended purpose. Appeal Br. 14—17.
After describing the operation of Moritz at length, Appellants conclude
“[cjombining Moritz with the other prior art destroys a central purpose of
Moritz to detect old plugs versus new plugs.” Id. at 17. There is no
discussion in Argument 3 of any reference other than Moritz.
The Examiner’s Answer points out that Moritz is not being modified
but rather Boisvert is what is being modified. Ans. 12. The Examiner states
that “Moritz is relied upon for a nominal value parameter that matches
within a scope of manufacturing tolerances, and that is typical for the model
series, [and] the measured glow plug parameter is measured from a cold
glow plug.” Answer 12—13 (internal citations omitted).
We are not persuaded by Appellants’ Argument 3. First, as the
Examiner notes, the rejection involves modification of Boisvert in light of
the teachings of Moritz and not the reverse. Ans. 12. An argument
predicated only on the structure and function of Moritz does not address the
combination, which the Examiner finds renders the claimed subject matter
obvious. Second, Appellants’ Argument 3 attacks the Moritz reference
individually, making no mention of the other references relied upon.
Therefore, for reasons similar to those we relied on in connection with
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Argument 2, we are not persuaded that the Examiner errs in rejecting these
claims on the basis argued in Argument 3.
In the Reply Brief, Appellants state that “the problems illuminated by
the Appellant of combining Moritz and Sakurai with Boisvert are the same
and remain valid.” Reply 5. However, based on our review, Argument 3
made no mention of the Sakurai reference.
Appellants then continue by arguing that “Boisvert itself is rendered
unsatisfactory for its intended purpose” if combined as the Examiner
proposed. Id. This is a new argument, not made in response to an argument
first found in the Examiner’s Answer, and we will not consider it. 37 CFR §
41.41(b)(2); Kaufman, 807 F.2d at 973.
Argument 4
The Examiner finds that “Sakurai teaches adapting the entirety of the
glow program as a function of a single deviation by changing the course
over time of the effective voltage in proportion to the deviation.” Final Act.
3^4 (internal citations omitted). The Examiner notes that Sakurai also
teaches the advantages to heating glow plugs uniformly {id. at 4) and
concludes, “it would have been obvious to one skilled in the art at the time
of the invention to add Sakurai’s consistent and repeatable glow plug
temperature rising control to Boisvert’s control to improve engine
ignitability when there are variations between glow plugs.” Id.
Appellants argue that Sakurai teaches a feedback loop.
In this loop, voltage and current are repeatedly measured (S3)
and used to calculate a duty ratio that supplies a predefined
power to the glow plug (S4 to S6). Thus Sakurai teaches to
constantly monitor and adapt power. Each measurement of
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voltage and current is used only to adapt the present duty ratio.
The next repetition of the loop yields a new measurement of
voltage and current resulting in the new calculation of the duty
ratio.
Appeal Br. 18. Appellants contrast this with their invention saying:
[Appellants] make[] just one measurement to determine a single
deviation and then appl[y] this single deviation to the entirety of
the glow program. Therefore, Sakurai’s teaching is not the same
as [Appellants’] teaching and is not applicable prior art to form
a basis for an obviousness rejection.
Id. at 19.
The Examiner finds that Sakurai teaches a closed loop control and that
Sakurai “teaches a single measurement and an adaptation within the control
loop of Sakurai fig. 4, which satisfies the claim limitation of ‘adapting the
entirety of the glow program as a function of a single deviation by changing
the course over time of the effective voltage in proportion to the deviation.’”
Ans. 13. In effect, the Examiner is relying on the fact that Sakurai adjusts
the power supplied to glow plugs based on one measurement at a time. The
Examiner again points out that a single measurement is not claimed. Id.
Appellants object to the Examiner’s finding in the Reply Brief,
arguing that the “Examiner has taken a feedback loop method and
selectively taken one iteration of the feedback loop as then teaching a
method of not using a feedback loop.” Reply 8.
Appellants do not point to any claim language that precludes claim 1
from reading on the combination the Examiner finds makes claim 1 obvious.
The open-ended transition “comprising” does not exclude the repeated
measurements of Sakurai. Accordingly, Argument 4 does not persuade us of
Examiner error in rejecting claim 1.
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Argument 5
Appellants argue that “a direct combination of the prior art [Boisvert,
Moritz, and Sakurai] does not result in -[Appellants] invention as claimed.”
Appeal Br. 19-20. Appellants explain the basis of their argument that a
direct combination of references is necessary to support a finding of
obviousness by asserting that:
[a]s in Sundance Inc. v. DeMonte Fabricating Ltd.[, 550 F.3d
1356 (Fed. Cir. 2008),] to combine the prior art to then result in
the Applicant’s [sic] invention requires that the functioning of
the prior art to [sic] be changed. The Examiner’s combination is
improper because it requires the prior art to not maintain its
respective properties or functions after the prior art has been
combined to then result in the Applicant’s [sic] invention.
Therefore, similar to Sundance Inc. v. DeMonte Fabricating Ltd.,
the Applicant’s [sic] claims are now allowable over the prior art
and the obviousness rejection should be removed.
Appeal Br. 20. Appellants’ argument is not persuasive. In Sundance, the
Federal Circuit held the claim at issue invalid as obvious over a combination
of prior art references. Sundance, 550 F.3d at 1367. The court there wrote
Just as with the claim at issue in KSR [International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007)], the segmented truck cover
claimed in the ’109 patent represents the “mere application of the
known technique to a piece of prior art ready for improvement.”
Id. at 1740. It would have been obvious to replace the one-piece
cover in Cramaro with the segmented cover of hall. Indeed the
benefits of combining Hall and Cramaro would have been
inescapably obvious to a person having ordinary skill in the art
at the time of the invention of the truck cover claimed in the ’109
patent.
Id. Sundance is utterly silent on anything like Appellants’ asserted “direct
combination” analysis, instead finding it obvious to combine a segmented
truck bed cover with one that included other claim features but had a unitary
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cover. The district court’s finding of non-obviousness and the resulting
judgement for plaintiff were therefore reversed. We are not persuaded by an
argument predicated on a Federal Circuit case holding, which appears
contrary to the proposition for which Appellants have cited it.
Argument 6.
Claim 17 includes the step “selecting a glow program from a memory
in which a plurality of glow programs for different model series are stored.”
Appeal Br. 26 (Claims Appendix). The Examiner finds that Moritz discloses
this step. Final Act. 9, citing Moritz 3:50-67, 4:39-43, 5:23—30. In one of
the passages relied on by the Examiner, Moritz describes the initial startup
of his system: “In the first measurement into the empty memory, it is
assumed that all plugs are new. Monitored are the absolute values of the
plug vector. They are compared to threshold values and determine the plug
malfunction or also a plug type.” Id. at 3:51—54. We take from this that
threshold values for plug type are already stored.
Appellants direct their argument to a different aspect of Moritz, its
compensation for aging glow plugs. Appellants argue that Moritz “indicates
that a glow program is adapted by use of correction factors, but does not
imply that several different glow programs for different types of glow plugs
are stored in a memory.” Appeal Br. 21. After discussing how Moritz
accommodates aging of glow plugs, Appellants argue “an aging correction
based on a glow-duration counter as disclosed by Moritz . . . has nothing to
do with manufacturing tolerances and is not determined by calculating a
deviation between a measured value and a nominal value of a glow plug.”
Id. Appellants’ Reply Brief continues this line of reasoning, stating “[t]he
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wording of Moritz refers to differences of glow plugs of the same model
series and thus to differences caused by manufacturing tolerances.” Reply
Br. 9.
We are directed to no special definition of “different model series”
and our review of the Specification found none. We agree with the
Examiner that pre-stored data concerning plug type encompasses “different
model series,” and as so we are not persuaded the Examiner erred in finding
that Moritz teaches the step “selecting a glow program from a memory in
which a plurality of glow programs for different model series are stored.”
Appeal Br. 26 (Claims Appendix).
Conclusion
For the foregoing reasons and based on this record, we do not find
error in the Examiner’s determination that claims 1—5 and 7—18 are obvious
in view of Boisvert, Moritz, and Sakurai. Accordingly, we sustain the
rejection of claims 1—5 and 7—18 under 35 U.S.C. § 103(a) as obvious in
view of Boisvert, Moritz, and Sakurai.
DECISION
The Examiner’s rejection of claims 1—5 and 7—18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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