Ex Parte Kuhn et al

Patent Trial and Appeal Board

Dec 4, 2017

13591764 (P.T.A.B. Dec. 4, 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.
13/591,764 08/22/2012 Daniel KUHN BOSC.P7639US 1077
24972 7590 12/06/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
SCHARPF, SUSAN E
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
12/06/2017 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 DANIEL KUHN and ANDRAS MONTVAY
Appeal 2016-001188
Application 13/591,7641
Technology Center 3700
Before WILLIAM V. SAINDON, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
Appeal Br. 2.
Appeal 2016-001188
Application 13/591,764
CLAIMED SUBJECT MATTER
The claims are directed to methods for recognizing a type of error in
an exhaust gas recirculation system having a plurality of exhaust gas
recirculation lines. Spec. 1:3-10. Claims 1, 10, and 11 are independent.
Claim 1 reproduced below, is illustrative of the claimed subject matter:
1. A method for determining a faulty exhaust gas
recirculation line in an exhaust gas recirculation system of an
internal combustion engine having a plurality of exhaust gas
recirculation lines, wherein an overall quantity of gas indicated
by a specified exhaust gas recirculation rate is provided
proportionately via the plurality of exhaust gas recirculation lines
in accordance with an exhaust gas recirculation apportioning
ratio defining a relative proportion of the overall quantity of
exhaust gas recirculated in the exhaust gas recirculation system
by each of the plurality of exhaust gas recirculation lines, the
method comprising:
testing the exhaust gas recirculation system in order to
recognize an error in the exhaust gas recirculation system;
when the error is recognized, performing: (i) a
modification of the exhaust gas recirculation apportioning ratio
by controlling the exhaust gas recirculation system; and (ii) a
renewed testing of the exhaust gas recirculation system operated
with the modified exhaust gas recirculation apportioning ratio;
and
determining a faulty exhaust gas recirculation line as a
function of a result of the renewed testing of the exhaust gas
recirculation system.
Appeal Br. 10 (Claims App.).
REJECTIONS
The Examiner made the following rejections:
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I. Claims 1, 10, and 11 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter regarded as the invention.
II. Claims 1, 10, and 11 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
III. Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujita (US 7,836,693 B2, issued Nov. 23, 2010), Maeda
(US 5,207,093, issued May 4, 1993), and Nagae (US 7,801,669 B2, issued
Sept. 21,2010).
OPINION
Rejection I— The rejection of claims 1, 10, and 11 under
35 U.S.C. § 112, second paragraph
The Examiner’s rejection of claims 1, 10, and 11 is predicated on
alleged ambiguity in the definition of “exhaust gas recirculation
apportioning ratio.” The Examiner asserts that the claims do not match the
definition in the Specification. Final Act. 3—4. In particular, the Examiner
offers three different interpretations: 1) “(amount of low pressure exhaust
gas recirculated): (amount of exhaust gas recirculated)”; 2) “(amount of high
pressure exhaust gas recirculated): (amount of exhaust gas recirculated)”;
and 3) “(sum of the amount of low pressure exhaust gas and high pressure
exhaust gas recirculated): (amount of exhaust gas recirculated).” Id. at 3.
Appellants point out that for the Examiner’s third possibility, the ratio
is always equal to one. Appeal Br. 4. Further, Appellants indicate that this
is not the definition for the apportioning ratio. Id. at 4-5. As to the
Examiner’s first and second possibilities, Appellants state that these
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Application 13/591,764
interpretations are the inverse of each other and correspond to the 0% or
100% apportioning ratios defined in the Specification. Id. (discussing Spec.
3:24-32).
As noted by the Examiner, Appellants defined the exhaust gas
recirculation apportioning ratio in the Specification. Final Act. 3.
Specifically, Appellants define the apportioning ratio “such that given an
AGR apportioning ratio of 0%, only a high-pressure exhaust gas
recirculation line is used, and given an AGR apportioning ratio of 100%
only a low pressure exhaust gas recirculation line is used.” Id.; Spec 3:24-
32. Appellants have defined the claim language at issue in the Specification
as essentially the first possibility listed by the Examiner (Final Act. 3).
Thus, the rejection that the claims are indefinite based on that language is
not sustained because a person of ordinary skill in the art reviewing the
claims in light of the Specification would know which possibility was
claimed. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (Claim limitations must be read “in light of the specification as it
would be interpreted by one of ordinary skill in the art.”).
Rejection II The rejection of claims 1, 10, and 11 under
35 U.S.C. § 112, first paragraph
The Examiner rejected claims 1,10, and 11 as failing to comply with
the written description requirement for the same reason discussed regarding
the rejection under 35 U.S.C. § 112, second paragraph. Final Act. 3—4.
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
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Application 13/591,764
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “In the context of the
written description requirement, an adequate prima facie case must. . .
sufficiently explain to the applicant what, in the examiner’s view, is missing
from the written description.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.
Cir. 2007). Here, the Examiner has not demonstrated that the Specification
lacks written description support for the claim language at issue. Instead,
the Examiner acknowledges that the Specification defines the claim
language at issue. See Final Act. 3. In light of this, the Examiner has not
explained sufficiently “what... is missing from the written description” and
thus has not met his or her burden. Hyatt, 492 F.3dat 1370. Therefore, the
Examiner’s rejection is not sustained.
Rejection III Hie rejection of claims 1—11 under 35 U.S.C. § 103(a)
Background
We understand the Examiner’s rejection based on the combination of
Fujita, Maeda, and Nagae to include the exhaust gas structure taught by
Fujita, including an engine 1 having a turbocharger 3 with both low pressure
exhaust gas recirculation passage 61 and high pressure exhaust gas
recirculation passage 51. See Final Act. 4-5.
We understand that the Examiner relies upon Fujita to disclose
multiple exhaust gas recirculation lines, but not any of the three clauses of
the method recited in claim 1. See Final Act. 5 (^ 11 (first sentence)). We
understand that the Examiner relies upon Maeda to teach each of the recited
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steps, and, more generally, to teach “a method for determining a faulty
exhaust gas recirculation line in an exhaust gas recirculation system of an
internal combustion engine (column 1, line 49 - column 2, line 3).” Id.
We also understand that the Examiner acknowledges that Maeda
teaches the use of a single exhaust pipe 13 and a single exhaust gas
recirculation line 13a. See, e.g., Final Act. 11 (“In this case, knowledge
generally available to one of ordinary skill in the art would suggest that a
testing method that is known to work in an EGR system with a single
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exhaust gas recirculation line.'1'’) (emphasis added). Maeda Figure 1,
annotated by the Board, is provided below to illustrate Maeda’s system.
FIGURE I
2
Maeda Fig. 1, annotated by the Board. As described by Maeda, “FIG. 1 is
an explanatory diagram showing a total structure of an embodiment of a
failure diagnosis device of an EGR control device.” Maeda 2:12-14.
We understand the Examiner’s conclusion is that a person having
ordinary skill in the art at the time of the invention would have modified the
multi-recirculation line system of Fujita with the failure diagnosis scheme of
Maeda because “an exhaust gas recirculation system with a plurality of lines
would require a method of testing similar to a system with a single line,” and
because “the testing method of a single line exhaust gas recirculation system
. . . is known in the art.” Final Act. 5. Further, we understand the Examiner
to rely upon Nagae to teach an apportioning ratio. Id. at 5-6. Our
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understanding of the Examiner’s combination of Fujita, Maeda, andNagae
does not equate to the invention recited in the claims, as explained below.
Claim 1
Appellants argue that “there is no suggestion in Nagae (either taken
individually or in combination with Fujita and Maeda) to perform . . . when
the error is recognized . . . (ii) a renewed testing of the exhaust gas
recirculation system operated with the modified exhaust gas recirculation
apportioning ratio,” as recited in claim 1. Appeal Br. 7 (emphasis added and
omitted); see also Reply Br. 5 (“In any case, there is no suggestion in the
overall teachings of Fujita, Maeda and Nagae to perform . . . (ii) renewed
testing of the exhaust gas recirculation system operated with the modified
exhaust gas recirculation apportioning ratio.” (emphasis added and
omitted)).
The Examiner finds that Maeda teaches “renewed testing” and that
“[i]n a turbocharged engine, both high pressure and low pressure EGR lines
are used, but the method for testing the system from a single line system
would still be applicable, even though the method would be more
complicated for the designer to implement.” Ans. 11.
We agree with Appellants that the Examiner has not provided
adequate articulated reasoning to modify Fujita with the relied-upon
teachings of Maeda to support the legal conclusion of obviousness of
independent claim 1. Rejections based on obviousness must be supported by
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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418 (2007).
The Examiner relies upon the following reasoning for the obviousness
rejection under 35 U.S.C. § 103(a).
[I]t would have been obvious to a person having ordinary skill in
the art to combine the Fujita and Maeda references since an
exhaust gas recirculation system with a plurality of lines would
require a method of testing similar to a system with a single line.
Further, it would have been obvious when designing a testing
method for a multi-line exhaust gas recirculation system to start
with the testing method of a single line exhaust gas recirculation
system since this is known in the art.
Final Act. 5.
This reasoning is deficient. Claim 1 requires more than simply adding
the single-line exhaust gas testing method of Maeda to both of Fujita’s two
exhaust gas lines. Claim 1 states that, when an error is recognized, the
apportioning ratio is modified. The claim defines this apportioning ratio as a
proportion of the overall gas quantity recirculated by each line. Thus, to
modify the apportioning ratio, the testing method requires knowledge of how
to mix two exhaust lines. As we understand the prior art, Maeda’s testing
method controls the flow of a single line, and if it were applied to Fujita’s
two lines, it would still be a method of controlling the flow of two single
lines independently. There is no disclosure in Maeda of apportioning flow
between two (or more) lines. See also App. Br. 6-7 (Appellants arguing that
Maeda does not discuss modification of the claimed apportioning ratio).
We understand and appreciate the Examiner’s position that one would
look to single line testing methods when designing a multiple line system.
Id. However, the modification proposed by the Examiner requires more than
a straight application of the prior art method; it requires further modification
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to be able to consider the overall flow of multiple lines. Although the
Examiner acknowledges that “the method [for testing] would be more
complicated,” simply acknowledging that further modification is necessary
is insufficient evidence or technical reasoning to persuade us that the further
modification would have been obvious to a person of ordinary skill in the
art. Indeed, the Examiner does not cite to evidence or otherwise provide
persuasive technical reasoning explaining how this further modification (the
testing method to include apportioning between multiple lines) would have
been obvious. Thus, the rejection of claim 1 is not sustained.
Claims 4-9 depend from claim 1 and rejection of claims 4-9 depends
upon the same deficient findings and reasoning. Accordingly, the rejection
of claims 4-9 is also not sustained.
Claim 2
Claim 2 depends from claim 1. Appeal Br. 10 (Claims App.). The
Examiner relies on the same deficient findings and reasoning based on
Fujita, Maeda, and Nagae discussed above, regarding claim 1 (see supra the
rejection of claim 1). Thus, for the same reasons discussed above, we do not
sustain the rejection of claim 2.
Claim 3
Claim 3 depends from claim 1. Appeal Br. 10 (Claims App.). The
Examiner relies on the same deficient findings and reasoning based on
Fujita, Maeda, and Nagae discussed above, regarding claim 1 (see supra the
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rejection of claim 1). Thus, for the same reasons discussed above, we do not
sustain the rejection of claim 3.
Claims 10 and 11
Similar to claim 1, independent claims 10 and 11 recite “a renewed
testing of the exhaust gas recirculation system operated with the modified
exhaust gas recirculation apportioning ratio.” Appeal Br. 11-12 (Claims
App.). For claims 10 and 11, the Examiner relies on the same deficient
findings and conclusions with regard to Fujita, Maeda, and Nagae discussed
above with regard to claim 1. Compare Ans. 4-5, with id. at 7-8, and id. at
8-9. Thus, for the same reasons discussed above, we also do not sustain the
rejection of claims 10 and 11.
DECISION
The Examiner’s decision to reject claims 1, 10, and 11 under
35 U.S.C. § 112(b) is not sustained.
The Examiner’s decision to reject claims 1, 10, and 11 under
35 U.S.C. § 112(a) is not sustained.
The Examiner’s decision to reject claims 1-11 under 35 U.S.C. § 103
is not sustained.
REVERSED
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