Ex Parte Radev

Patent Trial and Appeal Board

Jan 23, 2017

13986705 (P.T.A.B. Jan. 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.
13/986,705 05/28/2013 Vladimir Radev 2368
7590
Vladimir Radev
18 Chancellor Park Drive
Mays Landing, NJ 08330-2049
EXAMINER
CASS, JEAN PAUL
ART UNIT PAPER NUMBER
3669
MAIL DATE DELIVERY MODE
01/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR RADEV
Appeal 2016-000217
Application 13/986,705
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant Vladimir Radev appeals under 35U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—12. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2016-000217
Application 13/986,705
THE CLAIMED SUBJECT MATTER
The claims are directed to hybrid electric vehicles. Claim 1,
reproduced below, is the only independent claim and illustrative of the
claimed subject matter:
1. A vehicle comprising:
a first axle including two driving wheels and a second axle
including two free-rolling wheels, wherein said two wheels of at
least one of said two axles are also steerable for steering the
vehicle;
an electric traction motor for selectively driving said two
driving wheels of said first axle when said electric traction motor
is energized, wherein the direction of rotation of the electric
traction motor is reversible;
a first mechanical drive train connecting the electric
traction motor with the driving wheels of the first axle for
transmitting mechanical energy between the traction motor and
the driving wheels of the first axle;
an electric power source for supplying the electric traction
motor with electric energy, said electric power source including
an electric battery for storing electric energy and selectively
supplying the electric traction motor with electric energy and an
electric generator for charging said electric battery and
selectively supplying the electric traction motor with electric
energy;
an internal-combustion engine for selectively driving said
electric generator or the driving wheels of the first axle and the
electric generator;
a second mechanical drive train connecting said internal-
combustion engine with the driving wheels of the first axle for
transmitting mechanical energy between the internal-combustion
engine and the driving wheels of the first axle, said second
mechanical drive train including a part of said first mechanical
drive train;
a clutch included in the second mechanical drive train for
selectively interrupting the transmission of mechanical energy
between the internal-combustion engine and the driving wheels
of the first axle;
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Application 13/986,705
a third mechanical drive train connecting the internal-
combustion engine with the electric generator for transmitting
mechanical energy between the internal-combustion engine and
the electric generator, said third mechanical drive train including
a part of the second mechanical drive train; and
a central electronic controller arranged and programmed
to control and coordinate the operation of the electric traction
motor, internal-combustion engine, electric generator, and said
clutch, for operating the vehicle and charging the electric battery.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Lennevi
Morrow
Doll
Ogata
Stefani
Kawabata/Taga1
US 6,336,063 B1
US 7,140,461 B2
US 2009/0178869
US 8,360,185 B2
US 8,366,584 B2
EP 0 743 208 B1
Jan. 1, 2002
Nov. 28, 2006
A1 July 16, 2009
Jan. 29, 2013
Feb. 5, 2013
May 20, 1996
REJECTIONS
The Examiner made the following rejections:
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morrow and Lennevi.
2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morrow, Lennevi, and Stefani.
3. Claims 4—6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Morrow and Lennevi, and, alternatively, Kawabata.
1 The first named inventor is Taga, but the Examiner and Appellant
refer to the reference as “Kawabata.” To avoid confusion, the reference is
called Kawabata.
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Application 13/986,705
4. Claims 7—11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lennevi, Morrow, and Stefani, and, alternatively, Ogata.
5. Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Morrow, Lennevi, Stefani, and Doll.
Appellant seeks our review of the rejections.
ANALYSIS
Under 35 U.S.C. § 132, “the examiner bears the initial burden, on
review of prior art or on any other ground, of presenting a prima facie case
of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Section 132 “is violated when a rejection is so uninformative that it prevents
the applicant from recognizing and seeking to counter the grounds for
rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations
omitted).
In the Final Action, the Examiner’s findings that Morrow and/or
Lennevi disclose the limitations in independent claim 1 are supported by
terse citations to figures or passages in the references with little explanation
as to how the references disclose the contested claim limitations. Final Act.
4—11. In the Appeal Brief, Appellant provides detailed and cogent
explanations elucidating why the Examiner’s citations did not disclose the
contested limitations, were irrelevant to the contested limitations, and/or
were inaccurate. Appeal Br. 7—12. Instead of explaining why Appellant’s
positions are incorrect, or why the Examiner’s findings are correct, the
Examiner essentially repeats verbatim — and without explanation — the
original findings and record citations in the Final Action. Ans. 5—16. The
Examiner’s findings simply are so uninformative that it prevents one from
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Application 13/986,705
recognizing and seeking to counter the specific grounds for rejection. This
Board and, more importantly, Appellant should not be required to sift
through the prior art to locate support for the Examiner’s rejections and/or
speculate as to teachings upon which the Examiner relies. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
(“Judges are not like pigs, hunting for truffles buried in briefs.”).
Two examples of the Examiner’s inadequate findings regarding the
“drive train” and “electric power source” limitations in claim 1 are addressed
below. First, the three pertinent “drive train” limitations (emphasis added)
and the Examiner’s findings regarding each limitation in the Final Action
and the Answer are presented in the table below:
Claim 1 Limitations Examiner’s Findings
a first mechanical drive train connecting the
electric traction motor with the driving wheels
“see FIG. 13 and Col.
4, line 25 to line 58”
(Final Act. 7; Ans. 8)
a second mechanical drive train
connecting said internal-combustion
engine with the driving wheels . . ., said
second mechanical drive train including a
part of said first mechanical drive train
“See claim 39 and Col.
3, line 53 to Col. 4, line
15”
(Final Act. 8; Ans. 9)
a third mechanical drive train connecting the
internal-combustion engine with the electric
generator . . ., said third mechanical drive train
including a part of the second mechanical drive
train
“see claim 39 and
claim 56”
(Final Act. 8; Ans. 9)
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Appellant argues that the Examiner’s findings regarding the three
“drive train” limitations in claim 1 are incorrect. Appellant correctly argues
that Figure 13 “shows not one but four different mechanical drive trains
1242, 1282, 1283, 1284, through which mechanical energy is selectively
transmitted from the motor/generators 1238, 1250, 1251 to the wheels of the
three drive axles 122, 124, 126.” Appeal Br. 8. In addition to Figure 13, the
Examiner’s citation to columns 3 and 4 of Morrow discloses additional
wheel drives 122, 124, 126, drive train 142, and motor/generator 138.
Morrow 3:53—4:48. The citation to claims 39 and 54 also discloses a “first
drive train,” “second drive train,” and “first motor/generator.” Morrow
22:58—23:8, 24:41—25:8. Neither the Final Action nor the Answer identify
the specific structure in Morrow which, or how such structure, corresponds
to the three “drive train” limitations in claim 1, including:
(1) which of the many drive trains, motors/generators, and wheels
disclosed in Morrow corresponds to the first, second, and third drive trains,
motor, generator, and wheels recited in claim 1;
(2) a first drive train which connects the “motor with the driving
wheels”;
(3) a second drive train which connects the “engine with the driving
wheels”; and
(4) a third drive train which connects the “engine with the electric
generator.”
The Examiner’s terse citations to Morrow, without explanation, do not
provide sufficient information to permit one to determine whether Morrow
meaningfully discloses the “drive train” limitations in claim 1.
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Second, the “electric power source” limitation in claim 1 recites “an
electric power source for supplying the electric traction motor with electric
energy, said electric power source including an electric battery for storing
electric energy and selectively supplying the electric traction motor with
electric energy and an electric generator for charging said electric battery
and selectively supplying the electric traction motor with electric energy.”
Appeal Br. 18—19 (Claims App.) (emphasis added). The totality of the
Examiner’s finding that Morrow discloses this limitation is: (1) “see FIG. 3
and Col. 6, line 55 to Co[l]. 7, line 5)”; and (2) “see FIG. 13 and Col. 4, line
25 to line 58.” Final Act. 8; see also Ans. 8—9. We note that an unlabeled
figure from Morrow — without any explanation or information — is
presented. Final Act. 7 (compare the unnumbered and unlabeled figure with
Figure 11 in Morrow).
In response to the Examiner’s terse findings, Appellant correctly
argues that: (1) “FIG. 3 does not show any electric battery or electric
generator;” (2) Figure 13 does not show “an electric battery;” and (3) the
column 4 and 6 citations to “electric motor/generators” do not disclose the
individual “traction motor” and “generator” recited in claim 1. Appeal Br. 8.
Depending on Morrow’s operation mode, Morrow’s electric motor/generator
may operate as a motor or a generator, but not both at the same time. See,
e.g., Morrow 4:25 43, 6:55—7:5. Thus, when it acts a generator selectively
supplying electricity to the Morrow system, it cannot also be a traction
motor receiving electricity from itself.
As indicated supra and in response to Appellant’s detailed and cogent
arguments, the Examiner’s Answer merely repeats the same terse findings in
the Final Action. Compare Ans. 9, 13 with Final Act. 8. The Examiner’s
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citation to Figures 3 and 13 and columns 4 and 6 do not disclose the “electric
power source” limitation.
Although the Final Action and Answer provide no explanation or
information about the unlabeled Figure 11, we note that the embodiment in
Figure 11 of Morrow (and related portions of Morrow’s Specification)
disclose (1) storage/battery 1017 which stores electricity and supplies
electricity to the Morrow system (e.g. motors), and (2) generator 1014 which
charges storage/battery 1017 and delivers electricity to the system (e.g.,
motors). The Examiner’s uninformative findings, however, do not inform us
whether or how the Figure 11-related embodiments, either singly or with
other embodiments in Morrow, disclose the other limitations of claim 1.
For at least the reasons discussed above, we cannot sustain the
rejection of independent claim 1, and claims 2—12 which depend from claim
1. Nothing in our decision should be viewed as precluding the Examiner
from reopening prosecution and providing an explanation to Applicant as to
how Morrow and other art of record may disclose the limitations of claim 1.
We note, for example, that other embodiments in Morrow (e.g., Figures 11—
12 and related disclosure) or the admitted prior art in Appellant’s
Specification (e.g., Spec. Tflf 8—23, 29-33) may disclose some of the
limitations in claim 1.
To facilitate any future prosecution, we address two of Appellant’s
other arguments. First, Appellant argues that the Examiner’s findings
regarding the drive axles, traction motor, first drive train, and clutch are
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improper.2 Specifically, Appellant alleges that the claimed invention
describes “a first axle 11 including two driving wheels 12, 13 and a second
axle 14 including two free-rolling wheels 15, 16” whereas Morrow “presents
a vehicle with three drive axles 122, 124 126.” Appeal Br. 7. Appellant also
argues that the claimed invention describes “an electric traction motor 17 for
selectively driving the two driving wheels 12, 13” whereas Morrow “shows
not one but three motor/generators 1238, 1250, 1251.” Id. Appellant argues
that “a first mechanical drive train connects] the electric traction motor 17
with the driving wheels 12, 13” whereas Morrow “shows not one but four
different mechanical drive trains 1242, 1282, 1283, 1284.” Id. at 8. Finally,
Appellant argues that the claimed invention describes “a clutch 32 included
in the second mechanical drive train for selectively interrupting the
transmission of mechanical energy between the internal-combustion engine
27 and the driving wheels 12, 13” {id. at 9) whereas Morrow discloses “two
clutches 38 and 42, which alternatively connect the engine 22 with the
output shaft 28 through two drive trains 36 and 40 respectively. Each of
these two drive trains provides different speed reduction ratio.” Id.
Claim 1 ’s use of the term “comprising” means the device may contain
elements in addition to those explicitly recited and still fall within the scope
of claim 1. In re Skvorecz, 580 F.3d 1262, 1267—68 (Fed. Cir. 2009)
(“‘comprising’ is well understood to mean ‘including but not limited to.’”)
(citations omitted). If Appellant’s argument is that claim 1 requires “exactly
and only” two drive axles, “exactly and only” one traction motor, “exactly
2 We note that the Examiner’s findings do not inform one about which
of Morrow’s many axles, traction motors, drive trains, and clutches in
Morrow’s many embodiments correspond to the claim limitations in claim 1.
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and only” one drive train, and “exactly and only” one clutch, then
Appellant’s argument is not commensurate with the scope of the claims.
Claim 1 is not limited to the specific embodiments described in the
Specification, and limitations not appearing in the claims cannot be relied
upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(stating limitations not appearing in the claims cannot be relied upon for
patentability). Appellant does not show error by the Examiner.
Second, Appellant argues that the Examiner’s finding regarding the
“second mechanical drive train” is improper because Morrow’s “distribution
system is a subject matter foreign to the claimed invention; the Appellant
claims a hybrid electric vehicle . . . needing no distribution system” (Appeal
Br. 9), and Morrow’s “mechanical power transmission fusing! planetary
gear-power-splitting mechanisms is completely different from the
arrangement in Claim 1 of the Appellant’s invention, which does not include
any planetary gear power-splitting mechanisms” (Appeal Br. 10). Claim 1,
however, is not limited to the specific embodiments described in the
Specification, and limitations not appearing in the claims cannot be relied
upon for patentability. See In re Self, 671 F.2d at 1348. Appellant does not
show error by the Examiner.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—12 are
REVERSED.
REVERSED
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