Ex Parte KOSAKA et al

Patent Trials and Appeals Board

Jun 26, 2019

13928989 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/928,989 06/27/2013
32294 7590 06/28/2019
Squire PB (NV A/DC Office)
8000 TOWERS CRESCENT DRIVE
14THFLOOR
VIENNA, VA 22182-6212
FIRST NAMED INVENTOR
Y osuke KOS AKA
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.
059278.00067 2869
EXAMINER
LAGUARDA,GONZALO
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
IPGENERAL TYC@SQUIREpb.COM
SONIA.WHITNEY@SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSUKE KOSAKA and KOICHIRO SHINOZAKI
Appeal 2018-003571
Application 13/928,989 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 The Appellants identify Honda Motor Co., Ltd. as the real party in interest.
Appeal Br. 3.
Appeal 2018-003571
Application 13/928,989
ILLUSTRATIVE CLAIM
1. An internal EGR amount calculation device for an
internal combustion engine in which a valve overlap time
period of an intake valve and an exhaust valve of a cylinder is
changed by changing valve timing of at least one of the intake
valve and the exhaust valve and an internal EGR amount is
changed according to the change in the valve overlap time
period, comprising:
first exhaust pressure parameter-obtaining means for
obtaining a first exhaust pressure parameter indicative of a
pressure within an exhaust passage during the valve overlap
time period;
second exhaust pressure parameter-obtaining means for
obtaining a second exhaust pressure parameter separate from
the first exhaust pressure parameter and indicative of the
pressure within the exhaust passage during a predetermined
time period including at least a time period other than the valve
overlap time period;
blown back gas amount-calculating means for calculating
a blown back gas amount, which is an amount of burned gases
which temporarily flow out of the cylinder into at least one of
an intake system and an exhaust system, and then flow back
into the cylinder again, according to the first exhaust pressure
parameter;
remaining gas amount-calculating means for calculating
a remaining gas amount, which is an amount of burned gases
remaining in the cylinder, according to the second exhaust
pressure parameter; and
internal EGR amount-calculating means for calculating
the internal EGR amount based on the remaining gas amount
and the blown back gas amount, wherein the internal EGR
amount is used to change the valve timing of at least one of the
intake valve and the exhaust valve.
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Application 13/928,989
REJECTIONS
I. Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Koseki et al. (US 2004/0139949 Al, pub. July 22, 2004) (hereinafter
"Koseki").
II. Claims 2 and 3 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Koseki.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
New Ground of Rejection
The Appellant argues, in part, that independent claim 1 stands rejected
erroneously, as anticipated by Koseki, because Koseki lacks the following
recitation ( emphasis added):
a second exhaust pressure parameter separate from the first
exhaust pressure parameter and indicative of the pressure within
the exhaust passage during a predetermined time period
including at least a time period other than the valve overlap
time period.
See Appeal Br. 7-8. According to the Appellant,
The Office Action took the position that paragraph
[0052] of Koseki discloses the first exhaust pressure parameter,
while paragraphs [0062] and [0082] of Koseki disclose the
second exhaust pressure parameter. Koseki merely describes an
exhaust valve closure in-cylinder residual gas amount
(MRESCYL) and a blow-back gas amount (MRESOL) (See
Koseki, paragraphs [0059] - [0062]). Both MRESCYL and
MRESOL are calculated using a common variable, an exhaust
valve closure timing in-cylinder pressure (PEVC) (See Koseki,
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Application 13/928,989
paragraphs [0061], [0062], [0075], and equation 4). PEVC, in
other words, describes the pressure at the exhaust valve closure
timing, and is used to calculate both the MRESCYL and
MRESOL.
While Koseki describes one common variable, PEVC,
used to calculate two values, MRESCYL and MRESOL,
claim 1 recites that a first exhaust pressure parameter is used to
calculate a blown back gas amount and a second exhaust
pressure parameter is used to calculate a remaining gas amount.
The first exhaust pressure parameter is indicative of a pressure
within an exhaust passage during the valve overlap time period.
A second exhaust pressure parameter, on the other hand, is
separate from the first exhaust pressure parameter, and
indicative of the pressure within the exhaust passage during a
predetermined time period including at least a time period other
than the valve overlap time period. Therefore, claim 1 recites
using two separate parameters, a first exhaust parameter and a
second exhaust pressure parameter, to calculate two different
values, the blown back gas amount and the remaining gas
amount. Koseki, however, merely describes using a single
parameter, PEVC, to calculate two values, MRESCYL and
MRESOL. Applicants therefore respectfully submit that
Koseki fails to disclose or suggest the first exhaust pressure
parameter and the second exhaust pressure parameter, recited in
claim 1.
Id. See also Reply Br. 4-5.
The Examiner's Answer calls into question the meaning of the
"separate from" feature of claim 1:
The claims require this second parameter to be "separate from
the" first parameter, but since they are both "exhaust pressure
parameters" this has not been understood as being wholly
separate (having nothing to do with) but simply different
parameters in the sense that pressure readings during an overlap
period would be different than pressure readings during non-
overlap periods. [Koseki's] PEVC is the "second exhaust
pressure parameter" since it is different than the first parameter
and it is a time period other than the valve overlap (the point
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Application 13/928,989
that the valve closes is outside of the overlap period). Further
since PEVC is determined by estimation of the exhaust passage
pressure than it is also "indicative of the pressure within the
exhaust passage".
Answer 4.
The claimed characterization of the "second exhaust pressure
parameter" as being "separate from" the "first exhaust pressure parameter"
does not appear in the Specification. Neither the Specification nor the
claims themselves adequately reveal the meaning of "separate from" in
claim 1. Indeed, the Specification diminishes the Appellant's asserted
significance of whether the "first exhaust pressure parameter" and the
"second exhaust pressure parameter" might employ a common quantity
(e.g., Koseki's PEVC) in their respective calculations, because the
Specification acknowledges that both direct measurement of a quantity, as
well as estimating a quantity (based upon measurements), are embraced
within respective associated "obtaining" steps:
Note that throughout the specification, the term "obtain" used
in the phrases "obtaining the first exhaust pressure parameter",
"obtaining the second exhaust pressure parameter", and so forth
is intended to include the meaning of directly detecting the
parameters using sensors or the like, and estimating these
parameters based on other parameters.
Spec. 5.
"Without a discemable claim construction, an anticipation analysis
cannot be performed." Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325,
1332 (Fed. Cir. 2010) (citation omitted). Before a proper review of the
rejection under§ 102(b), or§ 103(a), can be conducted, the subject matter
encompassed by the claim must be reasonably understood without resort to
speculation. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (a prior art
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Application 13/928,989
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); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970) ("If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious - the claim becomes
indefinite").
During the Office's evaluation, a proposed patent claim violates the
definiteness requirement of 35 U.S.C. § l 12(b ), when the claim "contains
words or phrases whose meaning is unclear" - i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-11 (Fed. Cir.
2014) (per curiam); see also In re McAward, No. 2015-006416, 2017 WL
3669566, at *3, *5-*6 (PTAB Aug. 25, 2017) (precedential).
Because the meaning of "a second exhaust pressure parameter
separate from the first exhaust pressure parameter" is unclear, independent
claim 1 and its dependent claims 2 and 3 violate the definiteness requirement
of 35 U.S.C. § l 12(b ).
Therefore, we do not assess the merits of the prior-art rejections of
claims 1-3; rather, pursuant to our authority under 37 C.F.R. § 41.50(b), we
reverse,proforma, the claim rejections under 35 U.S.C. § 102(b) and
§ 103(a) and enter a new ground of rejection of the claims as being
indefinite under 35 U.S.C. § l 12(b). This determination does not reflect on
the merits of the underlying prior-art rejections.
DECISION
We REVERSE the Examiner's decision rejecting claim 1 under 35
U.S.C. § 102(b),proforma.
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Application 13/928,989
We REVERSE the Examiner's decision rejecting claims 2 and 3
under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a),
proforma.
We issue a NEW GROUND OF REJECTION for claims 1-3 under
35 U.S.C. § l 12(b), pursuant to 37 C.F.R. § 41.50(b).
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, 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 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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Application 13/928,989
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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