Ex Parte Loeffler

Patent Trial and Appeal Board

Jun 26, 2017

13710544 (P.T.A.B. Jun. 26, 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.
13/710,544 12/11/2012 John M. Loeffler P121P0010USD 9667
49458 7590 06/28/2017
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
LESLIE, MICHAEL S
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. LOEFFLER
Appeal 2016-000196
Application 13/710,544
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John M. Loeffler (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 22—38, which are all the
pending claims. See Appeal Br. 1. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Parker Hannifin
Corporation. Appeal Br. 2.
Appeal 2016-000196
Application 13/710,544
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a vehicle drive system that
provides hydraulic energy storage.” Spec., p. 1,11. 13—14. Claim 22,
reproduced below with line breaks added, is the sole independent claim and
is representative of the subject matter on appeal.
22. A braking energy recovery system for use on a vehicle
having a powertrain with a driving portion that includes an
engine, and with a driven portion that includes a transmission
and a driveshaft connecting the transmission to a wheelset, the
driving portion of the powertrain being disengageably coupled
to the driven portion, the braking energy recovery system
comprising:
a first pump, being a variable displacement hydraulic
pump, coupled to the driven portion of the powertrain;
a hydraulic accumulator connected to receive hydraulic
fluid from the first pump, the accumulator being operative to
store hydraulic fluid under pressure;
a hydraulic motor connected to receive hydraulic fluid
from the accumulator, the hydraulic motor being isolated from
the driven portion of the powertrain such that they can turn
independently, the hydraulic motor also being coupled to the
driving portion of the powertrain;
an auxiliary hydraulic system; and
a second hydraulic pump adapted to power the auxiliary
hydraulic system, the second hydraulic pump being coupled to
the hydraulic motor, such that it can be operated by the
hydraulic motor.
2
Appeal 2016-000196
Application 13/710,544
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Fouquet US 2010/0141024 A1 June 10,2010
(“Fouquet ’024”)
Fouquet US 8,087,733 B2 Jan. 3, 2012
(“Fouquet ’733”)
REJECTIONS
The following rejections are before us for review:2
I. Claims 22—38 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 6—8.
2 Appellant includes remarks directed to the Examiner’s objection to
the drawings. See Appeal Br. 24. The propriety of the objection to the
drawings under 37 C.F.R. § 1.83 is reviewable by petition under 37 C.F.R
§ 1.181 (MPEP § 1002.02(c)), rather than appealable to the Board. Ex Parte
Frye, 94 UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see MPEP
§ 1201 (the Board will not ordinarily hear a question that is reviewable by
petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many
kinds of decisions made by examiners that are not appealable to the Board
when they are not directly connected with the merits of issues involving
rejections of claims). Accordingly, we do not specifically review the
Examiner’s objection to the drawings. Nevertheless, to the extent that this
objection turns on the same issues, or is premised on the same reasoning, as
the written description rejection of the claims, our decision herein with
respect to the written description rejection likewise is dispositive as to such
aspect of the objection to the drawings.
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Application 13/710,544
II. Claims 22—38 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement. Id. at 8—11.
III. Claims 22—38 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id. at 11—14.
IV. Claims 22—38 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Fouquet ’733. Id. at 15.
V. Claims 22—38 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Fouquet ’024. Id.
ANALYSIS
Rejection I— Claims 22—38 as failing to comply with
the written description requirement
The stated basis for the Examiner’s rejection under 35 U.S.C. § 112,
first paragraph, for lack of written description, is that Appellant’s
Specification provides insufficient written description support for “the
hydraulic motor also being coupled to the driving portion of the powertrain”
(see Final Act. 6) and “the second hydraulic pump being coupled to the
hydraulic motor, such that it can be operated by the hydraulic motor” (see id.
at 2), as recited in claim 22. The Examiner explained that auxiliary
“hydraulic motor (65) is only connected to [auxiliary] hydraulic pump (62)
by a shaft connection via one-way clutch with the sole purpose of driving
[auxiliary] hydraulic pump (62) alternately with the PTO [(“power take­
off’)] (40).” Id. at 6. The Examiner also explained that pump/motor 34
does not provide adequate support for the “hydraulic motor” limitation
because pump/motor 34 is not coupled to auxiliary hydraulic pump 62 (i.e.,
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Application 13/710,544
the “second hydraulic pump”) such that auxiliary hydraulic pump 62 can be
operated by pump/motor 34. See id. at 2. According to the Examiner,
“[p]ump/motor (34) is only disclosed to operate as a motor in order to restart
the engine and then immediately return to operation as a pump.” Id. at 3
(citing Spec., p. 13,11. 13—19).
Appellant argues that pump/motor 34 and auxiliary hydraulic
pump 62, as described in the Specification, provide adequate written
description support for the limitations in question. See Appeal Br. 6—11. In
particular, Appellant asserts that “hydraulic motor 34 is connected via
clutch Cl to gear 60, which drives gear 62, which drives yoke 76, which is
connected to the engine 22, via input shaft 26, and is thus ‘coupled to the
driving portion of the powertrain.’” Id. at 8. Appellant also asserts that,
“when clutch Cl is engaged, auxiliary hydraulic pump 62 is coupled to the
hydraulic motor 34 through gear 62 and the power take-off 40,” and, “[t]hus,
the [Specification discloses the second hydraulic pump 62 being coupled to
the hydraulic motor 34, such that it can be operated by the hydraulic
motor 34.” Id. at 9. We are not persuaded by Appellant’s arguments.
Appellant’s Specification describes pump/motor 34 as “a variable
displacement type . . . [that] can be reversely driven to function as a motor or
pump.” Spec., p. 5,11. 14—15. In particular, the Specification describes that
“controller 52 may engage the clutch Cl while the engine is running to drive
the primary pump 34.” Id. atp. 11,11. 12—13. The Specification also
describes that “electronic system controller 52 may operate the primary
pump as a motor.” Id. at p. 13,11. 12—13. According to the Specification,
“the electronic system controller may direct the high pressure manifold and
fluid circuitry 50 to supply high pressure fluid from the accumulator
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Application 13/710,544
system 46 to the primary pump (then acting as a motor) with the clutch Cl
engaged, to turn the engine 22 and thereby restart the engine.” Id. at p. 13,
11. 13-16.
Although the Specification describes pump/motor 34 operating as a
“hydraulic motor” coupled to the “driving portion of the powertrain” (i.e.,
engine 22), the Specification does not describe pump/motor 34 as being
coupled to the “second hydraulic pump” (i.e., auxiliary hydraulic pump 62)
such that auxiliary hydraulic pump 62 can be operated by pump/motor 34.
According to the Specification, auxiliary hydraulic pump 62 is coupled to
engine 22 via PTO 40, and “the auxiliary hydraulic pump can be powered by
hydraulic fluid from the accumulators 47 when the engine is not operating,
or by the engine via the power take-off device when the engine is running.”
Id. at p. 8,11. 12—15. In other words, the Specification describes that
engine 22 is coupled to auxiliary hydraulic pump 62 via PTO 40 when the
engine is running and driving pump/motor 34 as a pump, but does not
describe that auxiliary hydraulic pump 62 is coupled to engine 22 via
PTO 40 when pump/motor 34 is acting as a “hydraulic motor.” Thus, we are
not persuaded by Appellant’s contention that pump/motor 34 provides
adequate written description support for “the second hydraulic pump being
coupled to the hydraulic motor, such that it can be operated by the hydraulic
motor,” as recited in claim 22.
For the reasons discussed supra, Appellant does not apprise us of
error in the Examiner’s finding that the disclosure of the Specification fails
to convey to those skilled in the art that Appellant had possession of the
subject matter of claim 22 as of the filing date, thereby failing to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph.
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Application 13/710,544
See AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). Dependent claims 23—28 incorporate the aforementioned
subject matter of claim 22 lacking adequate written description support. To
the extent that the Examiner identifies additional written description issues
in the dependent claims (see Final Act. 6—8), our decision for claim 22 as to
the question of compliance with the written description requirement is
dispositive as to the dependent claims. Accordingly, we sustain the rejection
of independent claim 22, and its dependent claims 23—38, under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
Rejection II— Claims 22—38 as failing to comply with
the enablement requirement
In rejecting claims 22—38 as failing to comply with the enablement
requirement, the Examiner determined that various claim limitations are “not
described in the [Specification or shown in the drawings.” Final Act. 9—11.
In particular, the stated basis for the enablement rejection mirrors that
articulated by the Examiner in the written description rejection of these
claims. Compare id., with id. at 6—8.
Although, as discussed supra, we agree with the Examiner that
claims 22—38 recite language lacking adequate written description support, a
lack of disclosure in the Specification is not necessarily dispositive as to the
issue of enablement. Rather, insofar as the substance of the enablement
requirement is concerned, the dispositive issue is whether Appellant’s
disclosure, considering the level of ordinary skill in the art as of the date of
the application, would have enabled a person of such skill to make and use
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Application 13/710,544
the claimed invention without undue experimentation. In re Strahilevitz,
668 F.2d 1229, 1232 (CCPA 1982). Some factors to be considered in
determining whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Here, the Examiner did not articulate any findings or
analysis, such as by consideration of any of the Wands factors, to show that,
in the absence of such description in the Specification, a person of ordinary
skill in the art would have been unable to make and use the claimed
invention without undue experimentation.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing that independent claim 22, or its dependent
claims 23—38, lack enablement. On this basis, we do not sustain the
rejection of claims 22—38 under 35U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
Rejection III— Claims 22—38 as being indefinite
In determining whether a claim is definite under 35U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Id. at 1314.
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Application 13/710,544
The Examiner’s rejection of claims 22—38 as being indefinite is based
on the same reasoning articulated in Rejections I and II. Namely, the
Examiner determined that various claim limitations are “not described in the
[Specification or shown in the drawings.” Final Act. 12—14. However, the
determination that claim language lacks adequate disclosure in the
Specification does not mean that the language in question is indefinite. In
this regard, the Examiner did not provide any explanation as to why the
scope of the identified claim language is unclear and, thus, failed to establish
that claims 22—38 are indefinite. Accordingly, we do not sustain the
rejection of claims 22—38 under 35U.S.C. § 112, second paragraph.
Rejections IV and V— Claims 22—38 as anticipated
byoneofFouquet 733 and Fouquet ’024
The Examiner found that each of Fouquet ’733 and Fouquet ’0243
“disclose[s] the invention as claimed in claims 22—38.” Final Act. 15 (citing
Fouquet ’733, Claims 1—17, and Fouquet ’024, Fig. 2). Appellant does not
contest the Examiner’s findings that the references disclose the subject
matter of claims 22—38. See Appeal Br. 24 (acknowledging that “the claims
of the present application were copied” from Fouquet ’733). Instead,
Appellant argues that “[t]he art rejections should be withdrawn inasmuch as
the present claims have an effective filing date that predates the filing date of
the applied references.” Id. We disagree.
3 We note that Fouquet ’733 and Fouquet ’024 are the United States
Patent and the United States Patent Application Publication, respectively, of
Application 12/330,976 (filed December 9, 2008, in the United States).
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Application 13/710,544
The present application (filed December 11, 2012) is a continuation of
Application 12/686,459 (filed January 13, 2010), which is a continuation of
Application 11/692,698 (filed March 28, 2007), which claims the benefit of
Provisional Application 60/786,793 (filed March 28, 2006). See Spec., p. 1,
11. 5—10. In a chain of continuation applications, a claim receives the benefit
of the filing date of an earlier application in the chain only if the claim is
supported by the written description of the earlier application. 35 U.S.C.
§§ 112, 119, 120. As discussed supra in our analysis of Rejection I,
claims 22—38 include subject matter lacking adequate support in the
Specification (which contains the same disclosure as the earlier applications)
and, thus, fail to comply with the written description requirement of
35 U.S.C. § 112, first paragraph. As such, Appellant’s claims are not
entitled to the filing date of the earlier applications. Instead, claims 22—38
are entitled to a date no earlier than the December 11, 2012, filing date of the
present application, which does not predate the December 9, 2008, filing
date ofFouquet ’733 and Fouquet ’024.
In the absence of any argument contesting the disclosure of the
applied references, we are not persuaded of error in the Examiner’s findings
that Fouquet ’733 and Fouquet ’024 anticipate the subject matter of
claims 22—38. Accordingly, we sustain the rejections of claims 22—38 under
35 U.S.C. § 102(e).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 22—38 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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Application 13/710,544
We REVERSE the Examiner’s decision rejecting claims 22—38 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We REVERSE the Examiner’s decision rejecting claims 22—38 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s decision rejecting claims 22—38 under
35 U.S.C. § 102(e) as anticipated by Fouquet ’024.
We AFFIRM the Examiner’s decision rejecting claims 22—38 under
35 U.S.C. § 102(e) as anticipated by Fouquet ’733.
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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