Ex Parte Richard

Board of Patent Appeals and Interferences

May 30, 2006

09787952 (B.P.A.I. May. 30, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL RICHARD
____________

Appeal No. 2006-1063
Application No. 09/787,952
____________

HEARD: MAY 9, 2006
____________

Before CRAWFORD, LEVY, and NAPPI, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-3, 6-8 and 11, which are all of the claims
pending in this application.

We REVERSE.
BACKGROUND
The appellant's invention relates to a system for starting
an internal combustion engine and charging an electrical circuit
(specification, page 1).
Appeal No. 2006-1063
Application No. 09/787,952

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Claim 1 is representative of the invention, and is
reproduced as follows:
1. System for a motor vehicle, able, on one hand, to start
up an internal-combustion engine and, on the other hand, to
charge an electrical circuit, including a main electrical machine
able to operate, on the one hand, as a generator and, on the
other hand, as an electric motor, said electrical machine driving
the internal-combustion engine by means of a belt when said main
electrical machine is operating in motor mode, the system further
comprises a management means which drive the main electrical
machine, further comprising a supplementary starter, as well as
means for detecting at least one condition for triggering
activation of said supplementary starter, and the management
means drive the main electrical machine and the starter,
according to a particular sequence, when said condition is
detected by said detection means, wherein the management means
include means for actuating the supplementary starter, when a
condition for activating the supplementary starter is detected,
in such a way that its pinion meshes on a complementary ring in
order to drive the internal combustion engine, in order to drive
the main electrical machine in a motor mode, when the pinion of
the starter has been meshed and in order to cut off the starter
and drive the main electrical machine in generator mode when it
is detected that the internal-combustion engine has started and
the management means include means for cutting off the operation
of the main electrical machine in motor mode, when a condition
for activation of the supplementary starter is detected.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dyches et al. (Dyches) 5,601,058 Feb. 11, 1997
Bolenz et al. (Bolenz) 6,032,632 Mar. 7, 2000

Appeal No. 2006-1063
Application No. 09/787,952

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Claims 1, 2, 6 and 7 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Bolenz.
Claims 3, 8 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bolenz in view of Dyches.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (mailed February 17,
2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed December 31, 2003) and reply
brief (filed April 19, 2004) for the appellant's arguments
thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation and obviousness
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
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Application No. 09/787,952

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reaching our decision, appellant’s arguments set forth in the
briefs along with the examiner's rationale in support of the
rejections and arguments in rebuttal set forth in the examiner's
answer. Upon consideration of the record before us, we make the
determinations which follow.
We begin with the rejection of claims 1, 2, 6 and 7 under 35
U.S.C. § 102(e) as being anticipated by Bolenz. We turn first to
claim 1. To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
If, however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught would
result in the performance of the questioned function, it
seems to be well settled that the disclosure should be
regarded as sufficient.

The examiner’s position (answer, page 3) is that:

Operation inherently requires that starter 37 first
be actuated to engage the pinion, since this is how
such a conventional starter operates, with
starter/generator 14 then being actuated. The
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inherent function of starter/generator 14 is, by
definition, to operate in generator mode after
starter operation is completed. This operation
is sufficient to anticipate starting actuation
function as broadly specified by claim 1 and 6.

Appellant asserts (brief, page 6) that Bolenz fails to disclose
management means which drive the main electrical machine and the
starter according to a particular sequence, and that Bloenz also
fails to disclose “the management means include means for cutting
off the operation of the main electrical machine in motor mode
when a condition for activation of the supplemental starter is
detected. It is further argued (brief, page 7) that “[n]otably,
the electrical machine is not cut off when at least one condition
for activation of the supplemental starter is detected - as
claimed.”
The examiner responds (answer, page 5) by asserting “[t]he
function of ‘cutting off the operation of the main electrical
machine in motor mode’ is performed when only the starter 37 is
used for starting. The claims do not require that the main
electrical machine and supplementary starter be separately
energized to apply starting rotation to the engine sequentially
in a particular pattern.”
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Application No. 09/787,952

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Appellant asserts in the reply brief (page 2) that “the
examiner’s allegations that the operation of ... Bolenz
inherently requires that starter 37 first be actuated is in
error” because “Bolenz clearly discloses on column 4, lines 25-28
that ‘at higher temperatures of the internal combustion engine
over 40_C. the starting functions are performed exclusively by
the substantially wear-free starter/generator device 24.’”
With respect to the examiner’s allegation that control
device 36 of Bolenz must inherently provide a control sequence of
energizing and deenergizing the starter 37 and/or the
starter/generator device 33, appellant asserts (id.) that as
disclosed by Bolenz, either the conventional starter, or the
starter/generator, or both are activated, but not according to a
particular sequence. Appellant further asserts (reply brief,
page 3) that “[c]laim 1 recites that ‘the management means
include means for cutting off the operation of the main
electrical machine in motor mode when a condition for activation
of the supplementary starter is detected (emphasis added), not
simply cutting off the operation of the main electrical machine
in motor mode, as erroneously alleged by the Examiner.”
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Application No. 09/787,952

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From our review of Bolenz we find that in the event of a
cold internal combustion engine, the conventional starter and the
starter/generator together perform the starting function (col. 2,
lines 21-24). Bolenz further discloses that for temperatures
over 30/40° C., the starting function is performed by the
starter/generator alone (col. 2, lines 31-33). In describing
cold temperature starts, Bolenz discloses that for starts with
temperatures below 30-40°C., the inertia-wheel machine (24)
provides approximately half of the dragging moment of the
conventional starter, and that the conventional starter takes
over the other half in the case of the cold start. In this way
the structural dimensions of both the conventional starter and
the inertia-wheel device over the starter/generator device are
substantially reduced (col. 4, lines 22-42).
We find from this disclosure that when a cold start of the
engine is necessary, that both the starter/generator and the
conventional starter each provide half the dragging moment
necessary for starting the engine, such that the dimensions of
both the conventional starter and the starter/generator can be
substantially reduced.
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Application No. 09/787,952

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Although Bolenz uses the phrase “takes over” we interpret
the passage, taken with the passages stating that the
conventional starter and the starter/generator work together to
mean that each provides half of the force necessary to start the
engine when it is cold. We find no disclosure in the reference
that the starter and the starter/generator operate in a sequence.
However, even if the starter and the starter/generator do in
fact work in sequence, claim 1 would still not be met because
Bolenz does not disclose that the operation of the
starter/generator is cut off when a condition for activation of
the conventional starter is detected. That is, when the
conventional starter takes over for the starter/generator in
providing the other half of the dragging moment needed to start
the engine, there is no disclosure that a need for activating the
conventional starter is detected or that the starter/generator is
cut off, as required by claim 1.
From the disclosure of Bolenz that at temperatures above 30-
40°C., only the starter/generator is used to start the engine, we
do not agree with the examiner (answer, page 3) that the
operation inherently requires the conventional starter 37 to be
actuated first. Nor do we agree with the examiner (answer, page
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5) that the function of cutting off the operator of the main
electrical machine [starter/generator] in motor mode is performed
only when the starter is used for starting, because of the
disclosure of Bolenz (col. 4, lines 25-28) that “[a]t high
temperatures of the internal combustion engine, the starting
function is performed exclusively by the substantially wear-free
starter/generator machine 33.”
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of claim 1 by
Bolenz. The rejection of claim 1 under 35 U.S.C. § 102(e) is
reversed. As independent claim 6 also requires that “the
operation of the main electrical machine in motor mode is cut off
when at least one condition for activation of the supplementary
starter is detected”, we cannot sustain the rejection of
independent claim 6, along with dependent claims 2 and 7. The
rejection of claims 2, 6 and 7 under 35 U.S.C. § 102(e) is
reversed.
We turn next to the rejection of claims 3, 8 and 11 under 35
U.S.C. § 103(a) as being unpatentable over Bolenz in view of
Dyches. We cannot sustain the rejection of claims 3, 8 and 11
because Dyches fails to make up for the basic deficiencies of
Bolenz. The rejection of claims 3, 8 and 11 under 35 U.S.C.
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§ 103(a) is reversed.

CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2, 6 and 7 under 35 U.S.C. § 102(e) is reversed. The decision
of the examiner to reject claims 3, 8 and 11 under 35 U.S.C.
§ 103(a) is reversed.
Appeal No. 2006-1063
Application No. 09/787,952

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REVERSED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
Appeal No. 2006-1063
Application No. 09/787,952

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