Ex Parte Ma et al

Board of Patent Appeals and Interferences

May 21, 2010

11390978 (B.P.A.I. May. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte QI MA, STEPHEN YURKOVICH, KENNETH P. DUDEK,
STEPHEN K. FULCHER, ROBERT X. MONCHAMP, and
JON C. MILLER
____________

Appeal 2009-001665
Application 11/390,978
Technology Center 3700
____________

Decided: May 21, 2010
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Qi Ma et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1 and 11 under 35 U.S.C.
Appeal 2009-001665
Application 11/390,978

2
§ 102(b) as anticipated by Takahashi (US 5,012,422, issued Apr. 30, 1991)
and provisionally finally rejecting claims 1-28 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-22 of
copending nonprovisional patent Application No. 11/396,242.1 We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to regulating fuel to an engine during an
engine start and crank-to-run transition.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A fuel control system for regulating fuel to cylinders of
an internal combustion engine during an engine start and crank-
to-run transition, comprising:
a first module that determines a plurality of step-ahead
cylinder air masses (GPOs) for a cylinder based on a plurality
of GPO prediction models; and
a second module that regulates fueling to a cylinder of
said engine based on said plurality of step-ahead GPOs until a
combustion event of said cylinder.

1 The Image File Wrapper indicates the following: Appellants filed a
terminal disclaimer on July 10, 2007. In the Final Office Action, the
Examiner informed Appellants that the terminal disclaimer was in non-
compliance. Final Office Action, mailed Aug. 1, 2007. Appellants’ Appeal
Brief, filed on December 21, 2007, fails to address the Examiner’s
provisional nonstatutory double patenting rejection. App. Br., passim. The
Examiner maintained the provisional nonstatutory double patenting rejection
and restated that the first terminal disclaimer was not in compliance. Ans. 3
and 4. Appellants filed a second terminal disclaimer on March 31, 2008,
along with their Reply Brief. The Examiner’s communication, mailed April
8, 2008, acknowledges the receipt and entry of the Reply Brief but fails to
state whether the second terminal disclaimer is in compliance. Further
prosecution before the Examiner should resolve whether the second terminal
disclaimer is in compliance.
Appeal 2009-001665
Application 11/390,978

3

OPINION
Appellants argue, inter alia, that the Examiner erred in finding
Takahashi discloses, teaches, or suggests regulating fuel to a cylinder based
on step-ahead GPOs until a combustion event, as set forth in claims 1 and
11. See App. Br. and Reply Br. passim. In order to determine the accuracy
of the Examiner’s findings, we must determine whether Takahashi either
expressly or inherently discloses: 1) determining a plurality of step-ahead
cylinder air masses (GPOs) based on a plurality of GPO prediction models
and 2) regulating the fueling of a cylinder based on these determined GPOs.
Takahashi provides a fuel injection control method that enables an
engine to be run in a manner similar to running an engine having an air fuel
sensor or internal pressure sensor without actually employing the sensors.
Col. 1, ll. 21-25. Costs are the driving factor for developing this method. Id.
The process estimates a number of parameters (i.e., atmospheric pressure
level, air flow through a throttle valve, internal pressure level within the
intake manifold, air flow into the cylinder) related to the operation of the
engine. Col. 1, ll. 49-55. The process is cyclically repeated throughout the
operation of the engine. Col. 1, ll. 56-57. Manifold pressure is estimated in
part upon a previous value of air flow into a cylinder and this flow is
estimated in part upon a previous estimated value of manifold pressure. Col.
1, ll. 57-61. Manifold pressure is preferably estimated by the estimate of
two air flows, viz. throttle air flow and cylinder air flow. Col. 3, ll. 28-31.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
Appeal 2009-001665
Application 11/390,978

4
631 (Fed. Cir. 1987). To establish anticipation, every element and limitation
of the claimed invention must be found in a single prior art reference,
arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). In other words, “there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention.” Scripps
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.
Cir. 1991).
We agree with Appellants that Takahashi fails to anticipate the
claimed process. The claimed process requires the use of GPO prediction
models. Appellants have proffered that an “estimation” is an approximation
or an uncertain calculation of a quantity, whereas, a “prediction” refers to a
statement that a particular event will occur in the future, i.e., a determination
of a quantity in advance of an event. App. Br. 9. Appellants’ proffered
definitions are consistent with the ordinary meanings of the words
“estimation” and “prediction.”2 Further, the Examiner has not contested
Appellants’ proffered definitions. Therefore, we will use Appellants’
proffered definitions for an understanding of the words “estimation” and
“prediction.” Takahashi appears to expressly disclose that the fueling of the
cylinder is based upon estimation of values that have been previously
estimated. In other words, Takahashi is not determining values based upon
what could occur in the future, but determining values based upon what has
occurred in the past. As such, Takahashi fails to expressly describe the
claimed process.

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1999).
Appeal 2009-001665
Application 11/390,978

5
When relying on the theory of inherency, the examiner has the initial
burden of providing a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristic
reasonably flows from the teachings of the applied prior art. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986).
As argued by Appellants, the Examiner technical reasoning to
conclude that Takahashi inherently uses GPO prediction models is flawed.
Moreover, the Examiner’s formulations on page 5 do not result in a
determination of air mass as the Examiner opines but merely an air mass
flow rate. A person of ordinary skill in the art would have readily
appreciated that density (ρ) is mass over volume and volume flow rate (Q) is
volume over time. As such, the product of density and volume flow rate is
mass over time, viz. mass flow rate. Thus, Appellants have demonstrated
error in the Examiner’s technical reasoning that supported the Examiner’s
finding Takahashi inherently describes the claimed process.
In view of the foregoing, we are constrained to reverse the Examiner’s
rejection of claims 1 and 11 as anticipated by Takahashi.
Likewise, we are constrained to reverse the Examiner’s provisional
rejection of claims 1-28 under the nonstatutory doctrine of obvious-type
double patenting. The Examiner fails to provide any analysis comparing the
claims 1-28 of the current patent application to claims 1-22 of the copending
application. Generally, any obviousness-type double patenting analysis
entails two steps. First, as a matter of law, the claims in both an earlier and a
later filed application must be construed and a determination must be made
to ascertain the differences between the claims. Second, a determination
needs to be made as to whether the differences in subject matter between the
Appeal 2009-001665
Application 11/390,978

6
claims render the claims patentably distinct. See e.g., Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001) (internal citations and
footnote omitted). The Examiner’s rejection fails to construe the claims,
note the differences, and provide an analysis as to why the claims are not
patentably distinct.

DECISION
The Examiner’s decision is reversed as to the rejection of claims 1 and
11 as anticipated under 35 U.S.C. § 102(b) and the provisional rejection of
claims 1-28 under the nonstatutory doctrine of obvious-type double
patenting.
REVERSED; 37 C.F.R. § 41.50(b)

mls

HARNESS DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303