Ex parte ROBICHAUX et al.

Board of Patent Appeals and Interferences

Apr 7, 1998

08400066 (B.P.A.I. Apr. 7, 1998)

Application for patent filed March 7, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JERRY D. ROBICHAUX and BRADLEY J. HIEB
____________
Appeal No. 97-0755
Application No. 08/400,0661
____________
ON BRIEF
____________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 11 and 13 through 18, which are all of the
claims pending in this application.
Appeal No. 97-0755
Application No. 08/400,066
We AFFIRM-IN-PART.
Appeal No. 97-0755 Page 3
Application No. 08/400,066
BACKGROUND
The appellants' invention relates to a system and method
for mode selection in a variable displacement engine. An
understanding of the invention can be derived from a reading
of exemplary claims 11 and 14, which appear in the appendix to
the appellants' brief.
The prior art references of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102 and
obviousness under 35 U.S.C. § 103 are:
Ishii 5,038,739 Aug. 13,
1991
Lipinski et al. 5,408,974 Apr. 25,
1995
(Lipinski) (filed Dec. 23, 1993)
Claims 11 and 13 through 18 stand rejected under 35
U.S.C.
§ 112, first paragraph, as failing to provide an adequate
written description of the invention.
Claims 11 and 14 through 16 and 18 stand rejected under
Appeal No. 97-0755 Page 4
Application No. 08/400,066
35 U.S.C. § 102(a)/(e) as being anticipated by Lipinski.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lipinski in view of Ishii.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 7, mailed November 18, 1995) and the examiner's answer
(Paper No. 14, mailed July 30, 1996) for the examiner's
complete reasoning in support of the rejections, and to the
appellants' brief (Paper No. 13, filed July 1, 1996) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-0755 Page 5
Application No. 08/400,066
It is well settled that the description and enablement2
requirements are separate and distinct from one another and
have different tests. See In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984); In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977); and In re Moore, 439
F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971).
The written description issue
We do not sustain the examiner's rejection of claims 11
and 13 through 18 under 35 U.S.C. § 112, first paragraph, as
failing to provide an adequate written description of the
invention.
The description requirement exists in the first paragraph
of 35 U.S.C. § 112 independent of the enablement (how to make
and how to use) requirement. The test for determining2
compliance with the written description requirement is whether
the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17
Appeal No. 97-0755 Page 6
Application No. 08/400,066
(Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
The examiner's basis for this rejection (final rejection,
p. 2) is that "no where in the specification is there even an
example on the apparatus/equations necessary to determine this
vacuum" (i.e., the inferred desired fractional manifold
vacuum) and that the "examiner does not consider inferred
desired fractional manifold vacuum a term in the art."
The appellants argue (brief, pp. 2-3) that this rejection
is not sustainable since the appellants are allowed to be
their own lexicographers and the term "inferred desired
fractional manifold vacuum" is defined at pages 5-6. We
agree. A rejection on the description requirement is
tantamount to a new matter rejection. Both are fully defeated
by a specification which describes the invention in the same
terms as the claims. See In re Bowen, 492 F.2d 859, 864, 181
USPQ 48, 52 (CCPA 1974). Since the appellants' specification
at pages 5-6 describes the "inferred desired fractional
manifold vacuum" in the same terms as used in the claims, we
Appeal No. 97-0755 Page 7
Application No. 08/400,066
See the first two paragraphs of the examiner's response3
to argument set forth in the answer.
The test for enablement is whether one skilled in the4
art could make and use the claimed invention from the
disclosure coupled with information known in the art without
undue experimentation. See United States v. Telectronics,
Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988),
cert. denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d
1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
reverse the examiner's rejection based upon the written
description requirement in the first paragraph of
35 U.S.C. § 112.
To the extent that the examiner intended by stating that3
the specification does not include an example on the
apparatus/equations necessary to determine an inferred desired
fractional manifold vacuum to make a rejection based upon the
enablement requirement in the first paragraph of 35 U.S.C. 4
§ 112, we note only that, in our opinion, the examiner has not
met his burden of proof by advancing acceptable reasoning
inconsistent with enablement. In order to make a rejection,
the examiner has the initial burden to establish a reasonable
basis to question the enablement provided for the claimed
Appeal No. 97-0755 Page 8
Application No. 08/400,066
invention. See In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a
reasonable explanation as to why the scope of protection
provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be
taken as being in compliance with the enablement requirement
of 35 U.S.C. § 112, first paragraph, unless there is a reason
to doubt the objective truth of the statements contained
therein which must be relied on for enabling support. See In
re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971).
Appeal No. 97-0755 Page 9
Application No. 08/400,066
In accordance with 37 CFR § 1.192(c)(7), we have5
selected claim 14 from the appellants' grouping of claims
(brief, p. 2) to decide the appeal on this rejection under 35
U.S.C. § 102.
The prior art issues
We sustain the examiner's rejection of claim 14 under 5
35 U.S.C. § 102(a)/(e) as being anticipated by Lipinski.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Appeal No. 97-0755 Page 10
Application No. 08/400,066
Claim 14 is drawn to an apparatus for determining the
number of cylinders to operate in a variable displacement
engine. The apparatus comprises, inter alia, an engine speed
sensor and a processor coupled to said engine speed sensor for
determining whether the variable displacement engine should be
operated on a fractional number of cylinders. Claim 14
further recites that the processor (1) infers a desired
fractional manifold vacuum representative of as amount of
vacuum required to accommodate the desired torque and the
specific emissions calibration for the variable displacement
engine operating on a fractional number of cylinders, (2)
stores recommendations for the number of cylinders to operate
in the variable displacement engine based on the present
engine speed and the inferred desired fractional manifold
vacuum, and (3) generates a present operating mode
recommendation reflective of the present engine speed and the
inferred desired fractional manifold vacuum.
Lipinski discloses a system for selecting the number of
cylinders to be operated in a multi-cylinder variable
displacement internal combustion engine. As shown in Figure
Appeal No. 97-0755 Page 11
Application No. 08/400,066
1, Lipinski's system includes microprocessor controller 10 of
the type commonly used for providing engine control. Lipinski
teaches that controller 10 contains a microprocessor 10A,
which uses a variety of inputs from accelerator control
position sensor 14, engine speed sensor 16, vehicle speed
sensor 18, and various sensors 12. The sensors 12 may include
engine coolant temperature, air charge temperature, engine
mass air flow, intake manifold pressure, and other sensors
known to those skilled in the art. The controller 10 may
operate spark timing control, air/fuel ratio control, exhaust
gas recirculation (EGR), and other engine and power
transmission functions. In addition, through a plurality of
engine cylinder operators 20, controller 10 has the capability
of disabling the selected cylinders in the engine so as to
cause the engine to have a decreased effective displacement.
For example, with an 8-cylinder engine, the engine may be
operated on 4, 5, 6 or 7 cylinders, or even 3 cylinders, as
required.
Figure 2 of Lipinski is an engine operation map showing
fractional and maximum cylinder operation based on inferred
Appeal No. 97-0755 Page 12
Application No. 08/400,066
engine load and engine speed. At any particular operating
point, accelerator control position sensor 14 transmits to
controller 10 information which is transformed into an
accelerator control position signal indicating the position of
the accelerator control. The position of the accelerator
control is used as a reliable indicator of the driver's demand
with respect to engine torque or power output. Additionally,
as noted above, controller 10 receives information from engine
speed sensor 16, which allows controller 10 to operate the
engine according to the operation map illustrated in Figure 2.
Figure 4 of Lipinski is a flow diagram illustrating the
operation of a variable displacement engine using inferred
engine load as a control variable. Lipinski teaches (column,
4 lines 24-55) that
[i]f vehicle speed is within the control limits of block
102, the routine passes to block 106. At block 106,
contemporaneous engine load is inferred from the
accelerator position and engine speed. As used herein,
the term "load" means volumetric efficiency, which can be
measured in terms of intake manifold pressure or inlet
air charge. Processor 10A within controller 10 contains
stored values for engine load as functions of engine
speed and accelerator control position. It has been
Appeal No. 97-0755 Page 13
Application No. 08/400,066
determined that a system according to the present
invention may be operated with stored load values for
either fractional or maximum operation. Processor 10A
also contains stored values for engine load as a function
of engine speed at wide open throttle. Processor 10A
infers engine load by determining the percentage of wide
open throttle engine load corresponding with the engine
load demanded by the driver, as indicated by the sensed
accelerator control position. The wide open throttle
load and the loading governed by the accelerator control
are compared at the same engine speed. In effect,
processor 10A determines the extent to which the engine
is being loaded, up to and including the wide open
throttle load. The result of this comparison, which is a
fraction having a value less than or equal to one, is
entered into one of two look-up tables, with each having
two dimensions shown in FIG. 2. The look-up tables have
inferred engine load and engine speed as independent
variables. The lookup tables correspond to fractional
and maximum operation. In block 110, processor 10A
compares the values for inferred engine load and engine
speed with the table values to determine whether maximum
operation or fractional operation is indicated.

In our opinion, claim 14 is anticipated since each and
every element set forth in claim 14 is found, either expressly
or inherently described, in Lipinski. In that regard, it is
our determination that the recitation in claim 14 that the
processor infers a desired fractional manifold vacuum "reads
on" Lipinski's disclosure of inferring engine load based on
the accelerator control position and engine speed. We reach
this conclusion based upon the well-known relationship between
Appeal No. 97-0755 Page 14
Application No. 08/400,066
engine load and intake manifold pressure set forth by Lipinski
at column 4, lines 25-30. Accordingly, it is our
determination that an "inferred engine load" is directly
proportional to an "inferred desired fractional manifold
vacuum." Thus, when one skilled in the art infers the engine
load as taught by Lipinski, one is also inherently inferring
the desired fractional manifold vacuum.
The appellants' argument (brief, p. 3) that claim 14 is
not anticipated by Lipinski is unpersuasive for the following
reasons. First, claim 14 "reads on" Lipinski's system as set
forth above. Second, while Lipinski infers engine load and
therefore also infers desired fractional manifold vacuum from
sensing accelerator position, claim 14 does not exclude
utilizing the sensed accelerator position in inferring the
desired fractional manifold vacuum.
Claims 11 and 15 through 18 have not been separately
argued by the appellants. Accordingly, these claims will be
treated as falling with claim 14. See In re Young, 927 F.2d
588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re
Appeal No. 97-0755 Page 15
Application No. 08/400,066
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); and In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
(CCPA 1978). Thus, it follows that the examiner's rejection
of claims 11 and 15 through 18 is also sustained.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 11 and 13 through 18 under 35 U.S.C. § 112, first
paragraph, is reversed; the decision of the examiner to reject
claims 11, 14 through 16 and 18 under 35 U.S.C. § 102 (a)/(e)
is affirmed; and the decision of the examiner to reject claim
17 under 35 U.S.C.
§ 103 is affirmed.
Appeal No. 97-0755 Page 16
Application No. 08/400,066
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0755 Page 17
Application No. 08/400,066
FORD MOTOR COMPANY
J. R. DROUILLARD
SUITE 911 PARKLANE TOWERS EAST
DEARBORN, MI 48126
APPEAL NO. 97-0755 - JUDGE NASE
APPLICATION NO. 08/400,066
APJ NASE
APJ CRAWFORD
APJ ABRAMS
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 02 Apr 98
FINAL TYPED: