Ex Parte Soliman et al

Patent Trial and Appeal Board

Jan 29, 2015

12047392 (P.T.A.B. Jan. 29, 2015)

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.
12/047,392 03/13/2008 Ihab S. Soliman 81174391 2951
28866 7590 01/29/2015
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
EBNER, KATY MEYER
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
01/29/2015 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 IHAB S. SOLIMAN and ANDREW J. SILVERI
____________________

Appeal 2013-000290
Application 12/047,392
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ihab S. Soliman et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s Final rejection of claims 1–26. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 3, 10, 13, and 20 pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal 2013-000290
Application 12/047,392

2
CLAIMED SUBJECT MATTER
Claims 1, 8, and 18 are the independent claims and claim 1 is
reproduced below with emphasis on a key disputed claim limitation.
1. A method for controlling transmission input torque
during a downshift, comprising:
(a) using an engine to produce transmission input torque;
(b) during a ratio change phase of the downshift,
operating an electric machine as a motor to increase the
transmission input torque; and
(c) during a torque transfer phase of the downshift
following the ratio change phase, operating the electric machine
as a generator to decrease the transmission input torque.
Appeal Br. 13, Claims App.

REJECTION
Claims 1–26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Motamedi (US 5,445,576, issued Aug. 29, 1995) and
Suzuki (US 6,595,895 B2, issued July 22, 2003). Final Act. 2–3 (dated May
10, 2012); Ans. 2.
ANALYSIS
In rejecting independent claims 1, 8, and 18, including their dependent
claims 2–7, 9–17, and 19–26, the Examiner relies on Motamedi for teaching
the claimed “ratio change phase” as being the period between Motamedi’s t0
and t2, as depicted in Motamedi’s Figure 2. Ans. 3 (citing Motamedi col. 8,
ll. 65–69, and col. 9, ll. 19–36) (“the time period between the start of
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Appeal 2013-000290
Application 12/047,392

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In contesting the rejection to these claims, Appellants argue that “the
Examiner misunderstands the term ‘ratio change phase’ of a downshift.”
Reply Br. 1 (contesting the rejection to independent claim 1); see also id. at
4 (contesting the rejection to independent claim 8); see also id. at 5
(contesting the rejection to independent claim 18). Appellants explain that
“Figure 6B [of the Specification] shows that the ratio change phase 54
occurs during a period in which the transmission gear ratio 56 changes.”
Id. at 1 (emphasis added).
In explaining Motamedi’s transmission, on the other hand, Appellants
state, “[b]etween time t0 and t1[,] the offgoing [] clutch [] is disengaged . . . ,
and the transmission operates in neutral gear from t1 to t3.” Id. at 2 (citing
Motamedi Fig. 2b and col. 9, ll. 11–16). Appellants cite to Motamedi to
support the assertion that “[d]uring the neutral gear phase (t1-t3) [of
Motamedi,] neither offgoing clutch 34 nor oncoming clutch 32 has any
torque transmitting capacity.” Id. at 2 (citing Motamedi col. 9, ll. 37–39).
Appellants then conclude that, therefore, “no change in gear ratio can occur
between [Motamedi’s] t1 and t3, and the ratio change phase cannot occur
between t1 and t3.” Id.
Upon reviewing the record, including the cited portion of Motamedi,
Appellants’ explanation of Motamedi’s operation appears correct, in that
“[b]etween time t0 and t1[,] the offgoing [] clutch [] is disengaged [and,
furthermore,] no change in gear ratio can occur between t1 and t3,” because
Motamedi’s oncoming clutch does not engage until time t3. See Reply Br.
2. Moreover, the Examiner does not contest Appellants’ assertion that
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Application 12/047,392

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Motamedi’s transmission “operates in neutral gear from t1 to t3.” See, e.g.,
Ans. 2–5. Instead, the Examiner interprets the claimed “ratio change phase”
as simply being “only as a phase that occurs after a ‘Start of Downshift’ and
before a ‘Torque Transfer Phase’ [as the Specification] provide[s] no further
explanation of the phrase.” See Ans. 2–3 (citing Spec. 7 and 8) (emphasis
added).
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in [Appellants’] specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). When giving claim
terms their broadest reasonable construction, however, the construction
cannot be divorced from the specification. See In re NTP, 654 F. 3d 1279,
1288 (Fed. Cir. 2011).
In the present case, we are persuaded by Appellants’ argument that
Motamedi’s time period (between t0 and t2) cannot reasonably be construed
as the claimed “ratio change phase,” as such construction is divorced from
Appellants’ Specification. See Reply Br. 1–2. In particular, Figure 6B of
the Specification illustrates that the gear ratio increases to a different value
during the “ratio change phase of the downshift.”1 A downshift is defined

1 We note that the ramp-increase in gear ratio during the “ratio change
phase” 54 (as depicted in Figure 6B of the Specification) appears to indicate
operation of a continuously-variable transmission, whereas the step-increase
Appeal 2013-000290
Application 12/047,392

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based on the beginning and ending gear ratios. Moreover, the Examiner has
not articulated any reason why one skilled in the art would interpret a “ratio
change phase” of a downshift as the time period that does not include the
corresponding increase in gear ratio. Accordingly, a period during which
there is a transition from one gear ratio to the absence of any gear ratio is not
reasonably interpreted as a “ratio change phase of the downshift.” See Reply
Br. 2; Ans. 3; see also Spec., Figs. 6A–6D
As the record does not support a finding that Motamedi’s gear ratio
increases from time t0 and time t2, the Examiner erred in construing this
time period (t0 to t2) as the claimed “ratio change phase of the downshift.”
See Ans. 2–3.
Furthermore, the Examiner does not rely on Suzuki to remedy the
deficiencies of Motamedi as discussed, supra. See Answer 2–7. Therefore,
and for the foregoing reasons, we do not sustain the rejections under 35
U.S.C. § 103(a) of claims 1–26 as unpatentable over Motamedi and Suzuki.

in gear ratio disclosed in Motamedi appears to relate to disengaging an
offgoing clutch (between time t0 and t1) when operating in a high speed gear
(Nt(hi)) to subsequently engage an oncoming clutch (at time t3) to operate in
a low speed gear (Nt(lo)). See, e.g., Motamedi, Fig. 2A and col. 9, ll. 4–36.
Appeal 2013-000290
Application 12/047,392

8
NEW GROUND OF REJECTION
Claims 3, 10, 13, and 20 as Indefinite Under 35 U.S.C. § 112, ¶ 2
We enter a NEW GROUND OF REJECTION of claims 3, 10, 13, and
20 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Claim 3 depends from claim 1 and further recites, in part, “the speed
temperature of the electric machine is less than the reference speed.”
Appeal Br. 13, Claims App. (emphasis added). As we emphasize through
italics, above, the claimed term “the speed temperature” lacks antecedent
basis. Moreover, it is unclear to us what a “speed temperature” is as the
Specification does not refer to this term.
Claim 10 depends from claim 8 and further recites, in part, “during the
torque transfer phase of the downshift.” Appeal Br. 15, Claims App.
(emphasis added). As we emphasize through italics, above, the claimed
term “the torque transfer phase” lacks antecedent basis. Furthermore, it is
unclear to us whether Appellants intend to include this term in claim 8 or
whether Appellants instead intend for claim 10 to depend from claim 9.
Claim 13 depends from claim 8 and further recites, in part, “the speed
temperature of the electric machine is less than the reference speed.”
Appeal Br. 15, Claims App. (emphasis added). As we emphasize through
italics, above, the claimed term “the speed temperature” lacks antecedent
basis. Moreover, it is unclear to us what a “speed temperature” is as the
Specification does not refer to this term.
Claim 20 depends from claim 18 and further recites, in part, “during
the torque transfer phase of the downshift.” Appeal Br. 17, Claims App.
Appeal 2013-000290
Application 12/047,392

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(emphasis added). As we emphasize through italics, above, the claimed
term “the torque transfer phase” lacks antecedent basis. Furthermore, it is
unclear to us whether Appellants intend to include this term in claim 18 or
whether Appellants instead intend for claim 20 to depend from claim 19.
In view of the foregoing, we find that claims 3, 10, 13, and 20 are
indefinite and reject claims 3, 10, 13, and 20 on that basis.

DECISION
We REVERSE the prior art rejections of claims 1–26 under 35 U.S.C.
§ 103(a) as being unpatentable over Motamedi and Suzuki.
As provided, supra, we enter a NEW GROUND OF REJECTION:
Claims 3, 10, 13, and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
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Application 12/047,392

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will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

rvb