Ex Parte Rapp et al

Patent Trial and Appeal Board

Nov 7, 2016

12938716 (P.T.A.B. Nov. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/938,716 11/03/2010
24972 7590 11/09/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Bernd Rapp
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10191/6674 4001
EXAMINER
NORTON, JOHN J
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
11/09/2016 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 BERND RAPP and SASCHA JOOS
Appeal2014-007496
Application 12/938,716
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bernd Rapp and Sascha Joos ("Appellants") seek our review under
35 U.S.C. § 134(a) of the final rejection of claims 1 and 3-12. Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-007496
Application 12/938,716
CLAIMED SUBJECT MATTER
Appellants' invention relates to a method for regulating or controlling
the temperature of a glow plug, which may be used as a starting aid for
combustion in a diesel engine. Spec. p. 1, 11. 7-16, p. 7, 11. 1-8. Claim 1 is
the sole independent claim and is reproduced below with italicized emphases
added to highlight a particular limitation addressed in this decision.
1. A method for regulating or controlling a temperature of
a sheathed-element glow plug in a glow process of the sheathed-
element glow plug, comprising:
determining a resistance using a physical model;
determining a temperature value during a transient
thermal response within the sheathed glow plug as a function of
the resistance of the sheathed-element glow plug; and
regulating a temperature of the sheathed glow plug as a
function of the temperature value;
wherein the resistance of the sheathed-element glow plug
includes a measured resistance and a calculated resistance, and
the transient thermal response takes place between a
preheating phase and a temperature equalization phase of the
glow process.
Claims App. 1.
THE REJECTIONS
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter (US 7 ,234,430 B2, issued June 26, 2007), Uhl
(US 6,712,032 B2, issued Mar. 30, 2004), and Kemwein (US 2009/0316328
Al, published Dec. 24, 2009). Final Act. 3.
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter, Uhl, Kemwein, and Abe (US 4,283,619, issued
Aug. 11, 1981). Final Act. 3.
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Application 12/938,716
III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter, Uhl, Kemwein, Abe, and Kemwein '090 (US
8,082,090 B2, issued Dec. 20, 2011 ). Final Act. 4.
IV. Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter, Uhl, Kemwein, Abe, and Casasso (US 7 ,950,378
B2, issued May 31, 2011 ). Final Act. 4.
V. Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter, Uhl, Kemwein, and Toedter '864 (US 7,730,864
B2, issued June 8, 2010). Final Act. 4--5.
VI. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Toedter, Uhl, Kemwein, Toedter '864, and Kemwein '885
(US 7,957,885 B2, issued June 7, 2011). Final Act. 5.
ANALYSIS
Rejection I: Claims 1 and 3 as Unpatentable Over
Toedter, Uhl, and Kernwein
In rejecting the sole independent claim, claim 1, the Examiner relies
on Toedter for disclosing the following:
(a) Determining a resistance using a physical model;
(b) Determining a temperature value within a sheathed glow plug as a
function of resistance of the glow plug; and
( c) Regulating a temperature of the glow plug as a function of
temperature, where the temperature is determined as a function of
measured resistance and calculated resistance.
Final Act. 3 (citations omitted). The Examiner acknowledges, however, that
Toedter does not disclose using its method during the claimed transient
thermal response. Id.
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Application 12/938,716
To satisfy this limitation, the Examiner relies on Kemwein's teaching
of "controlling glow plug temperature in part by using resistance" and Uhl' s
teaching of "the relevance of utilizing the difference of measurements made
at the initial moment and at completion of the heating phase." Id. (citations
omitted). Based on these teachings and disclosures, the Examiner reasons
that it would have been obvious "to use the method of controlling glow plug
temperatures of Toedter '430 utilizing preheating temperature values as
suggested by Uhl in the heating phase glow process taught by Kemwein
'328." Id.
In contesting the rejection, Appellants argue that the Examiner has
provided "no reason to combine the cited references." Appeal Br. 3.
Appellants further point out that the claims recite "determining a
temperature value during a transient thermal response[, which] takes place
between a preheating phase and a temperature equalization phase," and that
"Toedter only contemplates measurement of resistance (via a current) during
sufficiently stationary phases." See id. (citing, in relevant part, Toedter, col.
3, 11. 18-20); Claims App. 1.
Notably, the cited portion of Toedter discloses that
The evaluation of the resistance of the glow plug 3 by
measurement of the current is certainly insufficient to measure
the temperature, especially in dynamic phases, but in sufficiently
stationary phases the resistance of the glow plug 3 can be
compared with the values of the physical model 4 and the
accuracy can thereby be increased or the plausibility checked.
Toedter '430, col. 3, 11. 17-23 (emphasis added).
In response to Appellants' assertion that no reason was provided, the
Examiner explains that the reason for combining the references was "to
accurately measure the temperature throughout the heating process." Ans. 5.
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Application 12/938,716
In response to Appellants' argument that the combination fails to satisfy the
claimed "transient thermal response," the Examiner explains that the
Appellants "fail[] to link [Toedter's] idea of 'dynamic phases' to the claim
language [and that t]he phrase 'dynamic phases' does not appear in any
claim." Id. at 6.
Notwithstanding the Examiner's explanation, we find Appellants'
arguments persuasive.
First, and even if we credit the Examiner's response that the stated
reasoning was to "accurately measure the temperature throughout the
heating process," we agree with Appellants that inadequate reasoning for
combining the prior art was provided. Appeal Br. 3. The Court in KSR
noted that the analysis supporting a rejection under 35 U.S.C. § 103 should
be made explicit. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Moreover, there "must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. In the present case, the rejection fails to explicitly articulate a reason
for combining Toedter, Uhl, and Kemwein. Final Act. 3 (stating simply that
"[i]t would have been obvious ... to use the method of controlling glow
plug temperature of Toedter' 430 utilizing preheating temperatures values as
suggested by Uhl in the heating phase glow process taught by Kemwein
'328.") In particular, the Examiner fails to explain how combining the cited
art would improve the accuracy-as suggested in the Answer----of Toedter's
method for determining and regulating the temperature of a glow plug. See
id.; Ans. 5.
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Application 12/938,716
Second, we also find persuasive Appellants' argument that the
proposed combination fails to adequately address the claim requirement that
the temperature value is determined "during a transient thermal response,"
which "takes place between a preheating phase and a temperature
equalization phase." Appeal Br. 2-3; Claims App. 1. The Examiner
acknowledges that Toedter "does not disclose using [its] method during a
transient thermal response," but fails to explain exactly how Toedter's
method of controlling glow plug temperature is being modified to determine
the temperature during the claimed period. Final Act. 3. Furthermore,
Toedter discloses that the evaluation of the resistance of the glow plug is
"certainly insufficient" in "dynamic phases," and instead contemplates
measurement during "stationary phases." Appeal Br. 3 (citing Toedter col.
3, 11. 18-20). We credit Appellants' assertion that the phrases "dynamic
phases" and "transient thermal response"-as recited in the claims-would
be "recognized as comparable by one of ordinary skill in the art," and we fail
to see how the Examiner's proposed modification of Toedter overcomes
Toedter's apparent inability to measure resistance or temperature during the
claimed "transient thermal response."
For the foregoing reasons, we do not sustain the rejection of claims
1 and 3 as unpatentable over Toedter, Uhl, and Kemwein.
Rejection II-VI: Claims 4-12 as unpatentable over
Toedter, Uhl, Kernwein, and other cited art
Rejections II-VI rely on the same unsupportable determinations relied
on by the Examiner in rejecting independent claim 1 and dependent claim 3
under Rejection I. See Final Act. 3-5. Accordingly, for the same reasons
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Application 12/938,716
we do not sustain Rejection I, we do not sustain the rejection of dependent
claims 4--12 under Rejections II-VI.
SUMMARY
The Examiner's rejections of claims 1 and 3-12 under 35 U.S.C.
§ 103(a) as being unpatentable are reversed.
REVERSED
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