Ex Parte Major et alDownload PDFPatent Trial and Appeal BoardJun 19, 201312103317 (P.T.A.B. Jun. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGORY A. MAJOR and STEVEN A. TARNOWSKY ____________________ Appeal 2011-005677 Application 12/103,317 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and ADAM V. FLOYD, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005677 Application 12/103,317 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5, and 7-20.2,3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to a “belt alternator starter (BAS) system . . . coupled to an internal combustion engine to replace an alternator (and a starter motor, if any) in a conventional vehicle.” Spec. 4, para. [0016]. The independent claims on appeal are claims 1, 7, and 15. Claim 1, reproduced below, is illustrative of the appealed subject matter. 1 Appellants identify the real party in interest as GM Global Technology Operations, Inc. App. Br. 3. 2 Although Appellants and the Examiner appear to suggest that all of claims 1-20 stand rejected (App. Br. 5; Fin. Rej. 1 (Sept. 1, 2010); Ans. 2), neither Appellants nor the Examiner include reference to claims 3, 4, and 6 in the “Grounds of Rejection to be Reviewed on Appeal” (App. Br. 10; Ans. 2-3). Moreover, the Examiner fails to refer by claim number to claim 4 within the Answer at all, and the Examiner’s reference to claims 3 and 6 (Ans. 4) in the body of the Answer is unclear regarding the basis of any rejection since it refers to at least one prior art reference that is not of record in this appeal. Accordingly, it does not appear that claims 3, 4, and 6 are subject to a specific ground of rejection that is before us on appeal. 3 We consider claims 15-20 to be subject to a specific ground of rejection that is before us on appeal since the Examiner refers by claim number to claims 15-20 within the body of the Final Rejection (Fin. Rej. 3-4 (Sept. 1, 2010) and the Answer (Ans. 4-5) and relies only on prior art, namely, Usoro and Hirose, that is included in the statement of the rejection under which claims 15-20 are discussed. Additionally, Appellants include reference to claims 15-20 in the “Grounds of Rejection to be Reviewed on Appeal” (App. Br. 10), and the Examiner does not comment thereon (Ans. 2). Appeal 2011-005677 Application 12/103,317 3 1. A belt alternator starter (BAS) system for a hybrid vehicle comprising: a first pulley; a first belt that encircles the first pulley and a crankshaft pulley of an internal combustion engine; a motor generator unit (MGU) that comprises a second pulley and that functions as an electric motor to start the engine and as a generator to charge a battery when the engine is running; a second belt that encircles the second pulley and at least one drive pulley of an accessory unit; and a first clutch that couples/decouples the crankshaft pulley to/from the second pulley depending on operation of the engine. REJECTIONS Appellants seek review of the following rejections: (1) claims 1, 2, 5, 7-11, and 15-20 under 35 U.S.C. § 103(a) as unpatentable over Usoro (US 7,582,034 B2, iss. Sep. 1, 2009) and Hirose (US 6,453,865 B2, iss. Sep. 24, 2002) (Ans. 3-5); (2) claim 12 under 35 U.S.C. § 103(a) as unpatentable over Usoro, Hirose, and Peterson (US 6,251,042 B1, iss. Jun. 26, 2001) (Ans. 5-6); and (3) claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Usoro, Hirose, Hotta (US 7,004,864 B2, iss. Feb. 28, 2006), and Takahashi (US 6,852,063 B2, iss. Feb. 8, 2005) (Ans. 6). ANALYSIS Rejection (1) Appellants argue claims 1, 2, 5, 7-11, and 15-20 as a group. App. Br. 11-13. We select claim 1 as the representative claim, and claims 2, 5, 7-11, and 15-20 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2011-005677 Application 12/103,317 4 The Examiner found that Usoro teaches substantially all of the limitations of independent claim 1 except for the motor generator unit (MGU) functioning as an electric motor to start the engine. Ans. 3-4. The Examiner further found that Hirose “teaches use of the motor to start the engine.” Id. at 4 (citing Hirose, col. 8, l. 59 – col. 9, l. 22). The Examiner concluded that “it would be obvious to one of ordinary skill . . . to modify the apparatus as disclosed by Usoro with a motor to start the engine smoothly.” Id. Appellants contend that the Examiner’s modification to Usoro would result in two motors and would not teach or suggest a single MGU that functions both as an electric motor to start the engine and as a generator to charge a battery when the engine is running. App. Br. 11; Reply Br. 6. The Examiner responds that the rejection is based on a single motor that serves both functions and points to Hirose’s “single motor that is used to both charge a battery when the vehicle is running (col. 9, l[.] 60-col. 10, l[.] 4) and to start the engine (col. 9, l[l.] 1-5).” Ans. 7. As the Examiner’s rejection would not result in two separate motors, Appellants’ contention that the references fail to teach or suggest a single MGU is unpersuasive. Appellants also contend that modifying the MGU of Usoro to function as an electric motor to start the engine would render Usoro unsatisfactory for its intended purpose and change the principle of operation of Usoro. App. Br. 11-13; Reply Br. 6-7. In particular, Appellants contend that Usoro is specifically designed with “a one-way clutch 44 that prevents the motor/generator 40 from transferring torque to the engine 12.” App. Br. 12; see also id. (citing Usoro, col. 4, ll. 8-13 (“without the one-way clutch 44, Appeal 2011-005677 Application 12/103,317 5 the motor/generator could transfer at least a portion of its output torque back to the engine 12 when the engine 12 is off, and that the torque transferred back to the engine 12 could cause the engine to rotate backwards”) and Usoro, col. 4, ll. 13-17 (“the one-way clutch 44 prevents the transfer of torque from the motor/generator 40 back to the engine 12 . . . .”)). According to Appellants, allowing the transfer of torque back to the engine in Usoro “would contradict Usoro’s explicit [teaching] . . . to prevent backwards rotation of the engine 12 when the motor/generat[or] is functioning as a motor.” App. Br. 12. The Examiner responds that “Usoro does not teach a one way clutch for a blanket prevention of torque transmission to the engine,” but rather merely “when the engine is off and to prevent the engine from rotating backwards.” Ans. 7 (citing Usoro, col. 4, ll. 8-13). The Examiner further responds that Hirose too similarly teaches disengagement of its clutch when the engine is off. Id. at 7-8 (citing Hirose, col. 9, ll. 41-45). The Examiner states that Usoro’s and Hirose’s teachings thus “coincide,” rather than being “contrary” to each other. Id. at 7. We disagree with Appellants’ contention that modifying the MGU of Usoro to function as an electric motor to start the engine would render Usoro unsatisfactory for its intended purpose such that the Examiner has failed to set forth a prima facie case of obviousness. App. Br. 11-13; Reply Br. 6-7. Using an MGU in Usoro that functions as an electric motor to start the engine is not inconsistent with the broad purpose described in Usoro to “provide the reaction torque to enable the accessories to be driven by the motor/generator when the engine is off.” (Usoro, col. 1, ll. 46-47). As Appeal 2011-005677 Application 12/103,317 6 explained by the Examiner (see Ans. 7-8), Hirose similarly “mechanically separate[s] the crankshaft 11 from the transmission belt 17 (that is, from the pulley 125)” “[w]hile the engine 10 is at a stop by the series of idling stop control process.” Hirose, col. 9, ll. 41-45. In this way, vehicle accessories “are accordingly driven by the auxiliary machinery driving electric motor 31 . . . [and] [t]he auxiliary machinery driving electric motor 31 is thus not required to drive the crankshaft 11 . . . [which] desirably relieves the loading applied to the auxiliary machinery driving electric motor 31.” Hirose, col. 9, ll. 45-54. Merely modifying Usoro as taught by Hirose to enable the transfer of torque from the motor/generator to the engine for engine start-up would not make Usoro’s drive system inoperable or impede full performance of the broad intended purpose to drive vehicle accessories with the motor/generator when the engine is off since Hirose accomplishes that same broad purpose. We also disagree with Appellants’ contention that modifying the MGU of Usoro to function as an electric motor to start the engine would change the principle of operation of Usoro. App. Br. 11-13; Reply Br. 6-7. The “principle of operation” referred to by Appellants relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.” (emphasis added)). Under In re Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to Appeal 2011-005677 Application 12/103,317 7 operate. It cannot be said that a “change in the basic principles” occurs by sending torque from the motor/generator to the engine for engine start-up when Usoro’s device, even as modified by Hirose, continues to operate as described hereinabove with respect to driving vehicle accessories. Appellants further contend that additional modifications would be necessary “to accomplish the [Examiner’s] proposed modification,” such as but not limited to, modification of the motor/generator to rotate in a backwards direction relative to its normal direction of rotation, selective disconnection of the accessories to prevent backwards operation of the accessories, and removal of the one way clutch 44. App. Br. 12; Reply Br. 8. The Examiner responds that “it would have been obvious for one of ordinary skill in the art to incorporate the clutch of Hirose into the invention of Usoro” since “the clutches of Usoro and Hirose are both designed for the same purpose and because the results of substituting the clutch of [Hirose] into the invention of [Usoro] are predictable.” Ans. 8. Appellants have not asserted that any additional modifications would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find that a person of ordinary skill in the art would overcome those difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants’ contentions that the Examiner “failed to consider the differences between Usoro as a whole and the claimed invention as a whole” Appeal 2011-005677 Application 12/103,317 8 and “failed to consider the scope and content of the prior art” (App. Br. 13) are attorney’s argument and lack any facts, evidence, or reasoning in support thereof. As such, these contentions are unpersuasive. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney's arguments in a brief cannot take the place of evidence). Appellants further contend that “the Examiner failed to resolve the level of ordinary skill in the art.” App. Br. 13. Although the Examiner did not make a specific finding regarding the level of ordinary skill in the art, that hardly is dispositive where, as here, the level of ordinary skill is evidenced by the cited prior art references themselves. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); see also Okajima v. Bourdeau, 261 F.3d. 1350,1355 (Fed. Cir. 2001) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) and Chore-Time Equip.,Inc. v. Cumberland, 7 13 F.2d 774, 779 n.2, (Fed. Cir. 1983) (affirming court decision of invalidity). Appellants have not argued nor provided evidence that the level of ordinary skill in the art is different than represented by the cited references. For the foregoing reasons, the Examiner did not err in concluding that the subject matter of independent claim 1 would have been obvious from the combination of Usoro and Hirose; and we sustain the rejection of independent claim 1, and claims 2, 5, 7-11, and 15-20 that fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Usoro and Hirose. Appeal 2011-005677 Application 12/103,317 9 Rejections (2) and (3) Claims 12, 13, and 14 depend from independent claim 7. Appellants’ arguments in support of the patentability of claims 12, 13, and 14 solely relate to the perceived deficiencies in the combined teachings of Usoro and Hirose. App. Br. 14; Reply Br. 9. Since we have found no such deficiencies in the combination of Usoro and Hirose, the Examiner did not err in concluding that the subject matter of claim 12 would have been obvious from the combination of Usoro, Hirose, and Peterson and that the subject matter of claims 13 and 14 would have been obvious from the combination of Usoro, Hirose, Hotta, and Takahashi. Accordingly, we sustain, under 35 U.S.C. § 103(a), the rejection of claim 12 as unpatentable over Usoro, Hirose, and Peterson and the rejection of claims 13 and 14 as unpatentable over Usoro, Hirose, Hotta, and Takahashi. DECISION The Examiner’s rejection of claims 1, 2, 5, 7-11, and 15-20 under 35 U.S.C. § 103(a) as unpatentable over Usoro and Hirose is AFFIRMED. The Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Usoro, Hirose, and Peterson is AFFIRMED. The Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Usoro, Hirose, Hotta, and Takahashi is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2011-005677 Application 12/103,317 10 mls Copy with citationCopy as parenthetical citation