Ex Parte Leone

Patent Trials and Appeals Board

Jun 7, 2019

14312323 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/312,323 06/23/2014
36865 7590 06/11/2019
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
FIRST NAMED INVENTOR
Thomas G. Leone
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.
83444065 7917
EXAMINER
WERNER, ROBERT A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/11/2019 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS G. LEONE
Appeal2017-008486
Application 14/312,323 1
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-3, 5-11, 13-18, and 20 under
35 U.S.C. § l 12(a) as failing to comply with the written description
requirement. Claims 4, 12, and 19 have been cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ). An oral hearing was
held on May 30, 2019.
We REVERSE.
1 "The real party in interest is Ford Global Technologies, LLC." Appeal
Br. 3.
Appeal2017-008486
Application 14/312,323
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 11, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method for an engine comprising:
during an engine cold-start, adjusting an exhaust back
pressure valve position based on a desired exhaust back pressure;
determining an actual exhaust back pressure upstream of
the valve;
delivering a desired secondary air amount into an exhaust
passage upstream of a catalyst based on the actual exhaust back
pressure;
adjusting a spark retard amount based on the actual back
pressure; and increasing a fuel injection amount based on the
actual back pressure.
ANALYSIS
The Examiner finds that independent claim 1 's recitation "a desired
exhaust back pressure" fails to comply with the written description
requirement of 35 U.S.C. § 112(a) because "[t]he original disclosure does
not sufficiently describe how the desired exhaust back pressure is
determined" and "no explanation or algorithm is provided for how the
desired exhaust back pressure is determined based upon these conditions."
Final Act. 2-3. Additionally, the Examiner finds that independent claim
11 's recitation "a different back pressure" and independent claim 18 's
recitation "a second exhaust back pressure" fails to comply with the written
description requirement of 35 U.S.C. § 112(a) for the same reason as
claim 1. Id.
The Appellant argues that the Examiner's finding in error because
"claim 1 does not recite 'determining' a desired exhaust back pressure" and
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Appeal2017-008486
Application 14/312,323
"there is nothing in Appellant's disclosure or recited in claim 1 which
requires that the desired exhaust back pressure be 'determined' by some
special algorithm." Appeal Br. 12-13. The Appellant argues claims 11 and
18 on a similar basis. See id. at 18-20. The Appellant's argument is
persuasive because claims 1, 11, and 18 do not require a step of determining
a desired exhaust back pressure or a step of determining a desired exhaust
back pressure by use of a computer or computer instructions.
In response, the Examiner explains that "any value used in a method
must be determined by some means; therefore[,] the limitation 'determining
a desired exhaust back pressure' was interpreted as intrinsic to a claim
utilizing said value." Ans. 5. However, the response is indicative of the
Examiner improperly reading a feature into the claims. See Reply Br. 7-8.
For example, "during an engine cold-start, adjusting an exhaust back
pressure valve position based on a desired exhaust back pressure," as recited
in claim 1, may be better understood in a general sense as a claimed feature
that requires that at a specified time an action is performed that is based on a
selected parameter. The foregoing is indicative of a relationship between the
action of "adjusting an exhaust back pressure valve position" and a selected
parameter, i.e., "a desired exhaust back pressure," but the claim does not
require a specific relationship.
The Appellant argues that the claim limitations at issue, when
properly construed, are supported by the Specification at page 11, lines 16-
22, page 23, lines 8-20, and page 24, lines 8-17, Figure 2, and original
claims 11-14, 18, and 19. See Appeal Br. 13-14, 19, 20; see also id. at 6
(citing Spec. 11:7-23, 12:16-13:5, 14:9-11, Fig. 1), 15 (citing Spec. 16:21-
17:3). The Appellant's argument is persuasive. We agree.
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Appeal2017-008486
Application 14/312,323
Thus, we do not sustain the Examiner's rejection of claims 1-3, 5-11,
13-18, and 20.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-3, 5-11,
13-18, and 20.
REVERSED
4