Ex Parte Silveri et al

Patent Trial and Appeal Board

Nov 27, 2013

12048608 (P.T.A.B. Nov. 27, 2013)

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.
12/048,608 03/14/2008 Andrew J. Silveri 81174660 5219
28866 7590 11/29/2013
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
11/29/2013 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 ANDREW J. SILVERI and IHAB S. SOLIMAN
____________

Appeal 2011-011248
Application 12/048,608
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/048,608

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STATEMENT OF THE CASE
Andrew J. Silveri and Ihab S. Soliman (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 102(e) claims 6 and 11-13 as anticipated by Gebby (US 2007/0142166 A1;
pub. Jun. 21, 2007) and under 35 U.S.C. § 103(a) claims 1-5 and 8-10 as
unpatentable over Gebby and Ogata (US 2007/0216312 A1; pub. Sep. 20,
2007). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to a powertrain for a
hybrid electric vehicle (HEV), and, in particular to a method for avoiding
shift hunting among gears of an automatic transmission.” Spec. 1, ll. 7-9;
figs. 1, 5. Claims 1, 6 and 11 are independent.
Claims 1 and 11 are illustrative of the claimed subject matter and
recite:
1. A method for controlling a vehicle powertrain,
comprising:
(a) scheduling a downshift from a current gear while an
engine produces wheel torque with a demanded wheel torque;
(b) determining whether the downshift can be avoided
using an electric motor to produce wheel torque combined with
the engine-produced wheel torque;
(c) continuing operation in the current gear if the
downshift can be so avoided;
(d) producing the downshift if the downshift cannot be so
avoided.

11. In a powertrain for a motor vehicle that includes an
engine, a transmission driveably connected to the engine and
wheels of the vehicle, an electric machine able to operate as an
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electric motor for transmitting power to at least some of the
vehicle wheels, a method for controlling the powertrain
comprising the steps of:
(a) operating the engine and transmission to produce a
wheel torque at a desired vehicle speed with the transmission
operating in a desired gear in response to a demanded wheel
torque;
(b) determining that the vehicle is ascending a grade and
requires a change in wheel torque to maintain the vehicle speed;
(c) using a shift schedule to determine that an upshift to a
higher gear is to occur; and
(d) performing the upshift, if the magnitude of wheel
torque able to be produced in the higher gear is equal to or
greater than the increased demanded wheel torque.

ANALYSIS
Anticipation by Gebby - Claims 6 and 11-13
Each of independent claims 6 and 11 recites a method for controlling
the powertrain including the step of “determining that the vehicle is
ascending a grade and requires a change in wheel torque to maintain the
vehicle speed.” App. Br., Clms. App’x. The Examiner found that Gebby
teaches a method for controlling the powertrain including the step of
“determining that the vehicle is ascending a grade and requires an increased
wheel torque to maintain the vehicle speed (See at least Paragraph 2 ‘hill
climbing’).” Ans. 5.
Appellants contend that “[t]he Examiner cites Gebby’s paragraph
[0002] as a basis for rejecting [claims 6 and 11], but Gebby merely states
there that engines are sized to meet high road conditions, such as hill
climbing. Gebby discloses nothing about determining that the vehicle is
ascending a grade.” App. Br. 6-7. See also Reply Br. 2.
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In response to Appellants’ arguments, the Examiner took the position
that
Gebby clearly discloses [the step] of determining
when a vehicle is in ascending grade (See at least
Paragraph 2 “hill climbing”). Gebby discloses [the
step] of determining a torque demand (“306” [fig.
3]) and [the step of] determining an amount of
torque available. Gebby discloses [the step] of
comparing the torque demand to the torque
available. It is well known to one of ordinary skill
in the art that when on an ascending grade a high
amount of torque is required in order to maintain
vehicle speed. Gebby clearly discloses [the step] of
determining if the demanded torque by the driver
is available and sufficient and [the step of]
comparing the demanded torque to the available
torque. Gebby discloses [the step] of comparing
[the] demanded torque to the available torque and
[provides] the necessary measures in order to
maintain the vehicle speed during hill climbing.
Ans. 11.
Gebby merely teaches that “motors convert electric energy into
mechanical energy, and engines transform chemical energy into mechanical
energy. Such vehicle engines are sized to meet relatively high load
requirements, such as hill climbing or rapid acceleration from standstill.”
Gebby, para. [0002]. Gebby does not explicitly teach the step of
“determining that the vehicle is ascending a grade.” As such, we disagree
with the Examiner’s position that “Gebby clearly discloses [the step] of
determining when a vehicle is in ascending grade.” See Ans. 11. Moreover,
we note that maintaining the vehicle speed during hill climbing is not the
same as determining that the vehicle is ascending a grade. We further find
that the Examiner has not articulated sufficient technical reasoning to
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establish a reasonable basis for belief that Gebby’s powertrain method must
necessarily include the step of “determining that the vehicle is ascending a
grade,” so as to establish anticipation under the principles of inherency. See
Ans. 11. “Inherency . . . 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.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). An anticipation rejection cannot be
predicated on an ambiguous reference. Rather, disclosures in a reference
relied on to prove anticipation must be so clear and explicit that those skilled
in the art will have no difficulty in ascertaining their meaning. In re Turlay,
304 F.2d 893, 899 (CCPA 1962).
Accordingly, for the foregoing reasons, we are constrained to reverse
the Examiner’s rejection of claims 6 and 11-13 as anticipated by Gebby.
Obviousness over Gebby and Ogata - Claims 1-5 and 8-10
Independent claim 1 recites a method for controlling a vehicle
powertrain including the step of “determining whether the downshift can be
avoided using an electric motor to produce wheel torque combined with the
engine-produced wheel torque.” App. Br., Clms. App’x. The Examiner
found that Gebby discloses the method steps of independent claim 1 except
“Gebby does not explicitly disclose of the step of (b) determining whether
the downshift can be avoided using an electric motor to produce wheel
torque combined with the engine-produced wheel torque.” Ans. 8. The
Examiner found that Ogata “teaches this limitation.” Id. (citing Ogata,
Abstract). The Examiner concluded that “it would have been obvious to one
skilled in the art at the time the invention was made to have include[d] the
teachings of Ogata in Gebby for the purpose of determining whether the
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motor and the engine have enough torque in order to avoid downshifting.”
Ans. 8-9.
Appellants contend that “[n]either Gebby nor Ogata disclose [the step
of] (b) determining whether the downshift can be avoided using an electric
motor to produce wheel torque combined with the engine-produced wheel
torque.” App. Br. 10; Reply Br. 4. Specifically, Appellants contend that
“[a]ccording to claim 1, the basis for the determination whether the
downshift can be avoided is the combined torque of the engine and motor,
not whether the electric motor can produce its upper limit torque, as Ogata
discloses. Ogata discloses nothing about avoiding a downshift.” App. Br.
10-11; Reply Br. 5.
Ogata discloses:
If the vehicle ECU 22 judges in Step S2 that
the motor output system has no failure or, in other
words, that the motor output system is normal, the
vehicle ECU 22 advances the process to Step S3.
In Step S3, the vehicle ECU 22 selects a gear shift
map SU1 for upshift and a gear shift map SD1 for
downshift, and then concludes the present control
period.

On the other hand, if the vehicle ECU 22
judges in Step S1 that it is difficult for the electric
motor 6 to output the upper limit torque or judges
in Step S2 that the motor output system has a
failure, the vehicle ECU 22 advances the process
to Step S4. In Step S4, the vehicle ECU 22 selects
a gear shift map SU2 for upshift and a gear shift
map SD2 for downshift, and then concludes the
present control period.

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Ogata, paras. [0053] and [0054] (emphasis added), fig. 2; see also App. Br.
10; Reply Br. 4. Based on Ogata’s disclosure, we agree with Appellants that
(1) “Ogata always performs the downshift, either delayed if the motor
produces limit[ed] torque, or undelayed if the motor produce[s] no torque”
and (2) “Ogata discloses nothing about avoiding a downshift.” App. Br. 11;
Reply Br. 5. As such, we find that the Examiner has failed to establish by a
preponderance of the evidence that Ogata discloses the method step of
“determining whether the downshift can be avoided using an electric motor
to produce wheel torque combined with the engine-produced wheel torque.”
Accordingly, for the foregoing reasons, we reverse the Examiner’s
rejection of claims 1-5 and 8-10 as unpatentable over Gebby and Ogata.

DECISION
We REVERSE the decision of the Examiner to reject claims 1-13.

REVERSED

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