Ex Parte Shutty et al

Patent Trial and Appeal Board

Dec 12, 2017

12995592 (P.T.A.B. Dec. 12, 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.
DKT08001A 1974
EXAMINER
LAGUARDA, GONZALO
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
12/995,592 12/01/2010
67424 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
John Shutty
12/13/2017 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 JOHN SHUTTY and
HOUCINE BEN BECHIR BENALI
Appeal 2016-004084
Application 12/995,592
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 17—23, which constitute all the claims pending in
this application. App. Br. 4. Claims 1—16 and 24—53 have been withdrawn.
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “includes controlling exhaust gas
recirculation in turbocharged engine systems.” Spec. 1:8—9. Method claim
Appeal 2016-004084
Application 12/995,592
17 is the sole independent claim, is illustrative of the claimed subject matter,
and is reproduced below:
17. A method of controlling exhaust gas recirculation
(EGR) in a turbocharged engine system including a high pressure
(HP) EGR path and a low pressure (LP) EGR path, the method
comprising:
a) establishing a base HP EGR setpoint and a base LP EGR
setpoint, which are respectively associated with the HP EGR path
and the LP EGR path and contribute to a total EGR setpoint;
b) applying system constraints to at least one of the base
HP EGR setpoint and the base LP EGR setpoint of step a) or an
adjusted HP EGR setpoint and an adjusted LP EGR setpoint from
step h) to produce a constrained HP EGR setpoint and a
constrained LP EGR setpoint;
c) determining an HP EGR actuator command and an LP
EGR actuator command corresponding to at least one of the base
HP EGR setpoint or base LP EGR setpoint established in step a),
the constrained HP EGR setpoint and the constrained LP EGR
setpoint established in step b ), or the adjusted HP EGR setpoint
and the adjusted LP EGR setpoint from step h);
d) applying respective actuator limits to the HP EGR
actuator command and the LP EGR actuator command
determined in step c) to produce an updated HP actuator
command and an updated LP EGR actuator command;
e) determining an updated HP EGR setpoint and an
updated LP EGR setpoint corresponding to the updated HP EGR
actuator command and updated LP EGR actuator command from
step d);
f) applying a transfer function to the updated LP EGR
setpoint from step e) to produce a modified LP EGR setpoint;
g) comparing the updated HP EGR setpoint and modified
LP EGR setpoint to the base HP EGR setpoint and the base LP
EGR setpoint from step a);
h) adjusting the base HP EGR setpoint and the base LP
EGR setpoint based on the comparison from step g) to generate
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Application 12/995,592
the adjusted HP EGR setpoint and the adjusted LP EGR
setpoints; and
i) applying the updated HP actuator command and updated
LP actuator command to one or more EGR actuators.
REFERENCES
Donaldson US 6,102,014 Aug. 15,2000
Gates et al. (“Gates”) US 6,415,776 B1 July 9, 2002
Vigild et al. (“Vigild”) US 7,261,098 B2 Aug. 28, 2007
REJECTIONS ON APPEAL
Claims 17—21 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vigild and Gates.
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vigild, Gates, and Donaldson.
ANALYSIS
The rejection of claims 17—21 and 23
as unpatentable over Vigild and Gates
Appellants argue claims 17—21 and 23 together.1 App. Br. 8—20. We
select method claim 17 for review with claims 18—21 and 23 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants provide a brief summary of both Vigild and Gates (App.
Br. 8) and conclude that “the inconsistencies between Gates and Vigild yield
insurmountable discrepancies which frustrate the alleged obviousness of’
claim 17. App. Br. 9; see also id. at 19; Reply Br. 6. Appellants identify
1 Appellants’ statements regarding dependent claim 20 address previously
made arguments. See App. Br. 18. We do not consider such statements to
be separate arguments.
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certain claim elements which are allegedly lacking in the Examiner’s
combination (App. Br. 10—11) and contend, “it is difficult to find the Vigild
disclosure and Gates disclosure cohesive in a way which would yield the
limitations” of claim 17. App. Br. 11. According to Appellants, this is
because the Gates’ disclosure employs a “pressure-based feedback control”
whereas the Vigild disclosure employs “a signal indicative of an amount of
an exhaust gas component.” App. Br. 12 (citations to the references
omitted). In short, Appellants contend, “Vigild focuses on using gas
concentration readings . . . whereas Gates uses a pressure drop differential.”
App. Br. 12. Hence, because of the use of different variables in the
respective systems, Appellants contend, “[t]he Examiner has failed [to]
present reasoning as to how these methods can be combined in any obvious
manner . . . .” App. Br. 12; see also id. at 19.
We disagree with Appellants’ assessment regarding the
incompatibility between the two systems, and also the Examiner’s alleged
failure to present reasoning to combine the systems. Regarding the alleged
incompatibility between the respective systems, it is not disputed that Gates
teaches a controller that “infers actual EGR mass from the pressure
differential before and after a control orifice.” Gates 4:54—57; see also Ans.
4. Hence, Gates teaches that its controller obtains (“infers”) a mass value
from a pressure differential value, the inferred mass value then being used in
subsequent operations. See Gates 4:57—65 and Fig. 3. Accordingly, Gates’
conversion of a pressure differential value into a mass value is not
persuasive that there are “insurmountable discrepancies” between the Gates
and Vigild systems (App. Br. 9) because Gates discloses a controller that
transforms pressure differential values for use in a system that performs
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calculations using a different value. See, e.g., steps 104 and 108 in Figure 3
of Gates. Nor do we agree with Appellants that “[t]he Examiner” is at fault
for not presenting such reasoning (App. Br. 12) since Gates expressly
provides same.
Appellants next assert, “[t]he Vigild disclosure . . . [explicitly]
distinguishes itself from Gates” because in Vigild, rates are “based strictly
upon gas concentrations.” App. Br. 12—13. Appellants’ contention is not
persuasive in view of Appellants’ failure to take into account Gates’
teaching of converting from pressure differential values to mass values as
discussed above. Furthermore, once Gates’ inferred mass values are
ascertained, Appellants do not explain how one skilled in the art is unable to
convert a mass value into a value that is “indicative of an amount of an
exhaust gas component” (i.e., “concentration”) as employed by Vigild.
Vigild 2:3—16. This is because, regarding this latter conversion (i.e., mass to
concentration), Vigild teaches a reverse conversion, i.e., using concentration
values to “make it possible to control the percentage by mass of the inert gas
in the intake plenum.” Vigild 2:21—25. Accordingly, Appellants’ contention
regarding rates “based strictly upon gas concentrations” (see supra) is not
persuasive of Examiner error.
Appellants further contend, “the references have incompatible control
methods which are tied to respective control structures.” Reply Br. 6.
However, this assertion is not persuasive of Examiner error in view of the
Examiner’s statement that, “[t]he fact that Vigild controls the system
differently than Gates does not make the two references incapable of being
combined for what they might teach someone possessing ordinary skill in
the art.” Ans. 6. Appellants acknowledge that they “have not argued that
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one reference may not be bodily incorporated into the other reference.”
Reply Br. 6.
Appellants also contend, “Vigild teaches away from Gates by stating
that ‘improvements are required (emphasis added) with regard to the prior
art” (i.e., Gates). App. Br. 13; see also id. at 20. However, the Examiner
corrects Appellants by indicating that Vigild actually states (after addressing
Gates) that further improvements are required’ (emphasis added).” Ans. 6.
In other words, as per the Examiner, Vigild “is a further improvement” of
Gates’ teaching, such that “Vigild does not teach away from what is before.”
Ans. 6.
We agree with the Examiner. Vigild identifies certain problems with
Gates’ pressure system which Vigild overcomes (see Vigild 1:44—61; 2:3—
25). However, we are not persuaded that Vigild’s “further improvements” is
indicative of a “teaching away” because Appellants do not explain how a
further improvement of “what has come before” can be said to teach away
from that which “has come before.” Ans. 6. Additionally, we are instructed
by our reviewing court that “[t]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed” (italics added) In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Hence, Appellants’ argument “that Vigild
specifically teaches a different method for EGR regulation than Gates”
(Reply Br. 6) is not persuasive of Examiner error.
Appellants further contend that “Vigild teaches the measuring of all
exhaust gas” and that Vigild “does not provide for the determination of EGR
contributions by separate EGR paths.'” App. Br. 14 (emphasis added). The
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Examiner, to the contrary, states that in Vigild, the different valves are
adjustable and that “each pathway allows [that respective path] to go from
the exhaust to the intake.” Ans. 3. Indeed, Fig. 3 of Vigild illustrates high
pressure valve 54 and low pressure valve 82 each being separately connected
to the controller “for receiving a correcting signal.” See Vigild 8:7—16.
Appellants do not explain how Vigild’s disclosure of the valves “receiving a
correcting signal” “does not show or imply that the path[s] have individual
setpoints.” App. Br. 14. It is further noted that Gates, like Vigild, teaches
determining “the approximate position that the EGR valve should be in”
(i.e., a “setpoint”) and that a controller is used to regularly monitor such
setting (i.e., “the sequence repeats itself’).2 Gates 5:10-18; see also
Abstract. Accordingly, Appellants’ contention that Vigild fails to “provide
for the determination of EGR contributions by separate EGR paths” (App.
Br. 14), or ascertaining “individual setpoints” is not persuasive.
Appellants acknowledge that Gates discloses “extensive testing” (see
Gates 4:54—65; 5:10—18) but contends that such testing “does not equate to
‘applying system constraints’” to the base or adjusting setpoints as recited.
App. Br. 15; see also Reply Br. 5 (the “‘extensive testing’ in Gates lacks the
requisite context to justify” the Examiner’s position). The Examiner, on the
other hand, states, “[t]he point of the extensive testing would be to determine
appropriate settings for the various operating conditions of the system and to
2 Appellants further contend that the Examiner’s position “is essentially that
setpoints are inherent in the adjustment of EGR valves, but the Examiner has
failed to show any such teaching.” Reply Br. 2. We are not persuaded by
Appellants’ contention regarding inherency due to the explicit reasons
expressed above (and which follow) regarding the teachings of Vigild and
Gates.
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also determine the actual values the system is able to achieve . . . Ans. 4.
There is merit to the Examiner’s position in view of Gates’ teaching. Gates
teaches a controller that “implements a closed loop control of the EGR
valve” and that the controller “determines the approximate position” that the
valve should be using (according to a look-up table) and that a “stepper
motor” is employed to achieve the desired valve position. Gates 5:10-16.
After which, the controller “commands the EGR valve to open to the
resulting modified value” and that, subsequently, “the sequence repeats
itself.” Gates 5:16—18. We thus are not persuaded the Examiner erred in
relying on Gates’s “extensive testing” to apply system constraints on a base
or to adjust setpoints as claimed.3
Addressing Vigild, Appellants contend, “[t]he Vigild disclosure fails
to disclose individual HP EGR and LP EGR setpoints ...” (App. Br. 15),
but this contention is not persuasive in view of our discussion above
regarding Vigild’s disclosure of separately controlled valves. Nor is
Appellants’ contention persuasive when Appellants argue the art
individually, and not the combined teachings of Vigild and Gates.
Appellants also contend, “the burden is upon the Examiner to show
obviousness, and it is not upon the Applicants to show non-obviousness.”
App. Br. 17; see also id. at 19. More correctly, the initial burden is upon the
Examiner to present a prima facie case of obviousness, and once done, the
3 Appellants also contend, “neither Gates nor Vigild teach ‘applying
respective actuator limits ... to produce an updated HP actuator command
and an updated LP actuator command’ as recited by claim 17.” App. Br. 16.
However, Appellants’ contention is not persuasive in view of Gates’
teaching of using a “stepper motor” to control valve position as discussed.
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burden of persuasion shifts to Appellants.4 We have also been instructed by
our reviewing court that the Examiner satisfies its initial procedural burden
of establishing a prima facie rejection by adequately explaining the
shortcomings it perceives so that Appellants are properly notified and able to
respond. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). On the
other hand, the Examiner fails to carry its procedural burden of establishing
a prima facie rejection when the rejection is so “uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Jung, 637 F.3d at 1362 (citing Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990)). In the matter before us, we conclude that the
Examiner presented a satisfactory prima facie rejection, in part due to
Appellants’ ability to recognize and counter the various grounds of rejection
that have been expressed. Furthermore, Appellants’ disagreement with the
Examiner’s findings is not persuasive that the Examiner erred in rendering
such findings and conclusion. For the above reasons, we are not in
agreement with Appellants’ contention that the Examiner failed to make a
prima facie case of unpatentability or the contention that the burden of
production improperly shifted to Appellants. See, e.g., Oetiker, 977 F.2d at
1445. Thus, and based on the record presented, we are not persuaded the
4 “The PTO bears the initial burden of showing a prima facie case of
obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). When a
prima facie case of obviousness is made, the burden then shifts to the
applicant to come forward with evidence and/or argument supporting
patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002).” In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014); see also In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
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Examiner erred in combining Vigild and Gates or in concluding that claim
17 is obvious in view of such combination. Final Act. 2.
Appellants further contend that although “the Examiner admits that a
transfer function is an equation,” the Examiner “fails to point out such an
equation in Gates.”5 App. Br. 17. In rejecting claim 17, the Examiner states
that with respect to Gates’s discussion of error values (Gates 5:52—55),
“there would have been comparisons of values being greater or less than or
equal to” and that, consequently, the “correlation made to determine an error
value . . . would have equations.” Ans. 5. Indeed, Figure 3 of Gates is a
flow chart depicting steps ascertaining whether a value is less than or greater
then a desired value. See also Gates 4:54 to 5:9 (discussing steps 104—114).
Appellants do not explain how, in ascertaining whether a value is less than
or greater than a desired value, such steps fail to disclose an equation (i.e., a
“transfer function”). Consequently, Appellants’ contention that Gates does
not disclose the use of any equation either “implicitly or explicitly” is not
persuasive. App. Br. 17.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 17—21 and 23 as being obvious over Vigild
and Gates.
5 Appellants also contend, “[t]he Examiner is mistakenly conflating a
computer algorithm (which is simply a method) with an equation.” Reply
Br. 5. However, claim 17 recites “applying a transfer function” and
Appellants’ Specification describes such functions as being first, second, or
higher order “mathematical models,” consistent with the Examiner’s
understanding above. See Spec. 3:32 to 4:5; 19:8—11; Figs. 5—7.
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The rejection of 22 as
unpatentable over Vigild, Gates, and Donaldson
Appellants contend that claim 22 is patentable because Donaldson
“does not overcome the deficiencies of the proposed combination of Vigild
and Gates.” App. Br. 21. Because we are not persuaded there are
deficiencies in the combination of Vigild and Gates, Appellants’ contention
regarding Donaldson is not persuasive. We sustain the Examiner’s rejection
of claim 22.
DECISION
The Examiner’s rejections of claims 17—23 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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