Ex Parte Noack et al

Patent Trial and Appeal Board

May 23, 2017

13206066 (P.T.A.B. May. 23, 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.
13/206,066 08/09/2011 Christoph Noack BOSC.P7101US/11603007 3090
24972 7590 05/25/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
KAN, YURI
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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 CHRISTOPH NOACK, FRANK BERUSCHA,
MICHAEL DAMBIER, and TOBIAS ALTMUELLER
Appeal 2014-002119
Application 13/206,0661
Technology Center 3600
Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
AMEE A. SHAH, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
GERSTENBLITH.
Opinion Dissenting filed by Administrative Patent Judge
SHAH.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christoph Noack et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—15. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify “ROBERT BOSCH GmbH of Stuttgart in the
Federal Republic of Germany” as the real party in interest. Appeal Br. 1.
Appeal 2014-002119
Application 13/206,066
Claimed Subject Matter
Claims 1 and 14 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A method for operating a motor vehicle which is driven
with the aid of an electric machine, which is supplied with
electrical energy from an energy store which is charged by an
external energy source, the method comprising:
notifying the motor vehicle of at least one of a
destination and a route, wherein the motor vehicle is connected
to the external energy source for charging the energy store; and
outputting, via the motor vehicle, information as to when
the energy store has been charged with sufficient energy to at
least one of reach the destination and cover the route, wherein
the driver stops at a next charging station after having at least
one of reached the destination and covered the route.
Appeal Br., Claims App. 1.
Rejections
Appellants seek review of the following rejections:
I. Claims 1, 2, 4—8, and 12—15 under 35 U.S.C. § 103(a) as
unpatentable overNaito (US 2010/0106401 Al, pub. Apr. 29, 2010) and
Sakakibara (US 2009/0144150 Al, pub. June 4, 2009);
II. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Naito,
Sakakibara, and Biondo (US 2010/0301810 Al, pub. Dec. 2, 2010); and
III. Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over
Naito, Sakakibara, and Koebler (US 2007/0112475 Al, pub. May 17, 2007).
SUMMARY OF DECISION
We REVERSE.
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Application 13/206,066
ANALYSIS
Rejection I— Claims 1 and 14
The Examiner finds that Naito discloses the elements of claims 1 and
14, with the exception of “outputting, via the motor vehicle, information as
to when the energy store has been charged with sufficient energy.” Final
Act. 3 (mailed Mar. 28, 2013). The Examiner finds that Sakakibara “teaches
that when the charge of electric storage device 216 has been completed
(YES is determined in S140), electric powered vehicle 200 notifies charging
facility 300 of the charge completion (step SI 50).” Id. The Examiner
determines that it would have been obvious to one of ordinary skill at the
time of the invention
to modify the teaching of Naito by utilizing notification of
charging facility of the charge completion by electric powered
vehicle, when the charge of electric storage device has been
completed as taught by Sakakibara in order to enhance
establishing a charging system of an electric powered vehicle
capable of giving incentive for external charge to a user of the
electric powered vehicle.
Id. (citing Sakakibara^ 11).
Appellants contend that Sakakibara does not teach the claim
limitations missing from Naito. Appeal Br. 4. Specifically, Appellants
assert that “Sakakibara et al. does not describe outputting, via the motor
vehicle, information as to when the energy store has been charged with
sufficient energy to at least one of reach the destination and cover the route.”
Id. Rather, Appellants contend that Sakakibara notifies the charging facility
when the charging of the electric storage device is completed. Id.
In the Answer, the Examiner finds that Sakakibara’s teaching—
notifying the charging facility once charging of the electric storage device is
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Application 13/206,066
completed—is equivalent to the claimed outputting step. Ans. 4.
Specifically, the Examiner “finds that a situation when the charge of electric
storage device has been completed is equivalent to a situation when
power/energy store has been charged with sufficient energy.” Id. The
Examiner considers this finding based on “giving the claimed limitations
and the prior art their broadest reasonable interpretation.” Id.
In their Reply Brief, Appellants maintain that indicating when a
charge is completed is not equivalent to, and does not disclose, indicating
when a charge is sufficient to reach the destination or cover the route.
Reply Br. 3.
We agree with Appellants. The Examiner has not identified any
portion of Naito or Sakakibara that outputs information when the energy
store has been charged with sufficient energy to at least one of reach the
destination or cover the route, as recited in claims 1 and 14. The Examiner
relies entirely on Sakakibara, but a teaching that a charge is complete does
not necessarily indicate anything about whether the charge is sufficient to
either reach the destination or cover the route.2 Simply put, the Examiner’s
finding of equivalence is not supported by a preponderance of the evidence.3
2 Although the Examiner purports to rely on a broadest reasonable
interpretation of the claim limitations, the Examiner fails to provide any
claim construction, let alone a construction that reads on Sakakibara. See
Ans. 4.
3 The dissent spends over three pages attempting to explain a single
sentence provided by the Examiner. See Ans. 4. The Examiner does not
provide the claim construction proffered by the dissent, implicitly finds that
the type of information output by the motor vehicle is an affirmative
limitation of the claims (as discussed below), does not explain any reasoning
behind any contradictory construction (i.e., one that does not give
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Application 13/206,066
Accordingly, we do not sustain the rejection of claims 1 and 14.
affirmative weight to the type of information output by the motor vehicle),
and, accordingly, does not give Appellants an opportunity to respond to
whatever construction the Examiner had in mind. Had the Examiner
actually construed the claim limitation or provided an opinion on the
construction in such a manner that Appellants had an opportunity to respond,
we may have a different record than the one presently before us.
Additionally, the Examiner’s findings are contradictory with respect
to whether the type of information output by the motor vehicle is an
affirmative claim limitation and not simply non-functional descriptive
material. Final Act. 3. In particular, the Examiner finds that Naito teaches
“outputting, via the motor vehicle, information as to at least one of reach the
destination and cover the route.” Id. Were the information output irrelevant,
the Examiner could have stopped there. But, the Examiner does not rely
solely on Naito; rather, the Examiner turns to Sakakibara in an attempt to fill
the gap. Id.
As the dissent states, we took claim construction into account,
including the contradictory findings by the Examiner. Nonetheless, were we
to go beyond the arguments and positions presented on appeal, as the dissent
suggests we should do, the outcome of the appeal would remain the same
because the Examiner failed to provide a reason with rational underpinnings
as to why one of ordinary skill in the art would have been prompted to
combine the teachings Sakakibara with those of Naito. The Examiner’s
finding—“to enhance establishing a charging system of an electric powered
vehicle capable of giving incentive for external charge to a user of the
electric powered vehicle”—is not supported by a preponderance of the
evidence. Ans. 4—5 (citing Sakakibara 111). The incentive referred to in
Sakakibara is a fee reduction in exchange for receiving advertising
information. See, e.g., Sakakibara 113. The Examiner has not explained
how providing advertising in exchange for reducing the fee for using a
charging station has anything to do with outputting information as to when
the energy store has been charged with sufficient energy, as recited in
claims 1 and 14, or outputting information as to when the energy store has
been charged fully, as taught by Sakakibara.
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Application 13/206,066
Rejection I— Claims 2, 4—8, 12, 13, and 15
Claims 2, 4—8, 12, 13, and 15 depend from claim 1 or claim 14. The
Examiner relies upon Sakakibara to the same extent described above with
respect to claims 1 and 14. See Final Act. 3—4. Accordingly, for the reasons
discussed with respect to claims 1 and 14, we do not sustain the rejection of
claims 2, 4—8, 12, 13, and 15.
Rejections II and III— Claims 3 and 9—11
Claims 3 and 9—11 depend from claim 1. The Examiner relies upon
Sakakibara to the same extent described above with respect to claim 1. See
Final Act. 4—6. Accordingly, for the reasons discussed with respect to
claim 1, we do not sustain the rejection of claims 3 and 9-11.
DECISION
We reverse the Examiner’s decision rejecting claims 1—15.
REVERSED
2
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH NOACK, FRANK BERUSCHA,
MICHAEL DAMBIER, and TOBIAS ALTMUELLER
Appeal 2014-002119
Application 13/206,0664
Technology Center 3600
Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge, dissenting.
With the utmost respect for my colleagues, I respectively dissent from
the majority decision reversing the rejection of independent claims 1 and 14
under 35 U.S.C. § 103(a).
As noted by the majority on page 4, footnote 2, the Examiner relies on
the broadest reasonable interpretation of the claim limitation in finding that
Naito and Sakakibara teaches the outputting step of claims 1 and 14. See
Ans. 3^4; Final Act. 3. The Appellants, in arguing that Sakakibara does not
describe information equivalent to the information claimed (Appeal Br. 4;
see also Reply Br. 3), argue that the Examiner’s interpretation is incorrect.
Contrary to the majority’s opinion (page 5, footnotes 2 and 3), this raises the
4 Appellants identify “ROBERT BOSCH GmbH of Stuttgart in the
Federal Republic of Germany” as the real party in interest. Appeal Br. 1.
Appeal 2014-002119
Application 13/206,066
issue of claim construction, a matter of law. Thus, in order to determine
whether the Examiner’s rejection is in error, we must start with and
appropriately address claim construction. The majority does not reach the
issue of claim construction, implicitly finding that the claims require the
specific type of information recited, i.e., “information as to when the energy
store has been charged with sufficient energy to at least one of reach the
destination and cover the route.” See Majority Opinion 3.5
Independent claim 1 recites a method with the steps of notifying a
vehicle of a destination or route and outputting, via the vehicle, information,
and wherein a driver stops at a charging station after reaching the destination
or completing the route. The information outputted concerns whether the
energy store has been charged “with sufficient energy” to reach the
destination or cover the route. Appeal Br. (Claims App.). Independent
claim 14 recites a device comprising an “arrangement” for similarly
notifying and outputting information as recited in claim 1. Id. However,
independent claims 1 and 14 do not require a determination of whether the
store has “sufficient” energy or any further steps that are dependent on the
outputting of the information. See generally, Appeal Br. Claims App.
Further, the wherein clause of claim 1 of a driver stopping does not recite
that the stop is a result of or based on the outputted information. As such,
claims 1 and 14 require notifying a vehicle of a destination or route and
5 Although the majority decides that because the Examiner does not raise
the issue of claim construction, the Board will not either (footnote 2), in
contradiction, the majority raises the issue of whether the Examiner’s
reasoning is sufficient (footnote 3) despite the fact that the Appellants do not
raise the issue or present any arguments against the Examiner’s reasoning.
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Application 13/206,066
outputting information, with the specific type of information being non­
functional descriptive material with no patentable weight.
Non-functional descriptive material cannot render patentable an
invention that is otherwise non patentable over the prior art. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability); and Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”).
Although we will not disregard any claim limitations and will assess the
claimed invention as a whole, we will follow the Federal Circuit’s guidance
as in the Gulack decision and will “not give patentable weight to printed
matter absent a new and unobvious functional relationship between the
printed matter and the substrate.” Id.', see also King Pharms. Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1278—79 (Fed. Cir. 2010) (applying the “printed
matter” reasoning to method claims containing an “informing” step that
could be either printed or verbal instructions).
In this case, the claimed type of information does not have a “new and
unobvious functional relationship” with the claimed method and device of
operating a vehicle. The function of outputting information regarding the
energy store would be performed in the same manner regardless of the
specific type of information. Similar to the type of event broadcast in Ex
parte Herman Mathias, 84 USPQ2d 1276 (BPAI 2005), the only difference
lies in the type of information output. As noted above, the wherein clause of
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Application 13/206,066
a user stopping at a charging station does not rely on the specific information
outputted.
The Appellants do not argue that the prior art does not teach
outputting information regarding the energy in the energy source; rather, the
Appellants argue that the prior art fails to teach that the information is
whether there is sufficient energy to reach the destination or complete the
route. See Appeal Br. 3^4; Reply Br. 2—3. There is no objective evidence of
record that there is a functional distinction between information regarding
whether the energy store is charged with sufficient energy to reach the
destination or cover the route, as recited, and information regarding suitable
charging facilities when the amount of stored energy is insufficient to travel
to the destination and when the stored energy is full, as taught by the prior
art (see Ans. 4, citing Naito 1 56 and Sakakibara 1103). Thus, the specific
type of information constitutes non-functional descriptive that may not be
relied upon for patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); Ex parte Nehls, 88 USPQ2d at 1889.
Concluding otherwise would result not only in the Appellants’
specific information distinguishing over the prior art, but equally would
distinguish every other type of information. To give effect to the
Appellants’ argument, we would need to ignore our reviewing court’s
concerns with repeated patenting. See King Pharms., 616 F.3d at 1279
(“The rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations.”) (citation omitted).
Based on this claim construction, I disagree with the majority that the
Examiner’s finding of equivalence is in error. Even if the prior art does not
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Application 13/206,066
teach the specific type of information recited, the information is not
functionally related to either the outputting step or the user stopping at a
charging station, and does not distinguish the invention over the prior art.
Thus, I would affirm the rejection under 35 U.S.C. § 103(a) of independent
claims 1 and 14, and respectfully dissent from the majority conclusion that
the rejection of claims 1 and 14 is improper.
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