Ex Parte STRAUSS

Patent Trials and Appeals Board

Feb 22, 2019

13458778 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/458,778 04/27/2012
24972 7590 02/26/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Steffen STRAUSS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOSC.P7427US/l 1603074 9702
EXAMINER
WIBLIN, MATTHEW
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/26/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN STRAUSS
Appeal2017-006412
Application 13/458,778 1
Technology Center 3700
Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steffen Strauss ("Appellant") seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision, as set forth in the Final Office Action dated
March 4, 2016, and as further explained in the Advisory Action dated July
14, 2016, rejecting claims 18-28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant identifies ROBERT BOSCH GmbH as the real party in
interest. Appeal Br. 1.
Appeal2017-006412
Application 13/458,778
BACKGROUND
The disclosed subject matter "relates to an automatic transmission for
a motor vehicle and a method for controlling such a motor vehicle
transmission." Spec., 1:3-5. Claim 18, the sole independent claim on
appeal, is reproduced below, with emphasis added:
18. A method for supplying a transmission of a
motor vehicle with oil, the motor vehicle having an
input shaft and an output shaft, the transmission
including a first hydraulic pump which is one of
directly and indirectly driven by the input shaft,
the transmission having a second hydraulic pump
that is one of directly and indirectly driven by the
output shaft, and a hydraulic system supplied by
the first and the second hydraulic pumps includes
at least one pressure sensor which is used for the
control of the transmission, the method
compnsmg:
controlling an actual pressure in the
hydraulic system, by a closed loop pressure control
including the pressure sensor, to a first setpoint
value when the first hydraulic pump delivers; and
controlling the actual pressure in the
hydraulic system to a second setpoint value, by the
closed loop pressure control including the pressure
sensor, when only the second hydraulic pump
delivers during a coasting operation of the motor
vehicle, the first setpoint value being greater than
the second setpoint value.
2
Appeal2017-006412
Application 13/458,778
REJECTION2
Claims 18-28 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Holdeman (US 2,895,344, issued July 21, 1959) and Gloge (US
2010/0018808 Al, published Jan. 28, 2010).
DISCUSSION
Claim 18 recites, among other limitations, the step of "controlling the
actual pressure in the hydraulic system to a second setpoint value ... when
only the second hydraulic pump delivers during a coasting operation of the
motor vehicle .... " 3 Appeal Br., Claims App. 1 (emphasis added).
The Examiner relied on Holdeman for this step, citing column 16,
lines 7 to 8 as to the "when only" limitation. Final Act. 6. The Examiner
identified front pump 43 in Holdeman as the "first hydraulic pump" in claim
18 (not in the limitation above) and identified rear pump 115 as the "second
hydraulic pump." Id. at 5.
Appellant argues that, "on account of the presence of the word 'only'
in this clause, the front pump is necessarily not operating during coasting."
Appeal Br. 4. According to Appellant, "no support exists in Holdeman[] for
reading the coasting operation [see Holdeman, 16:7-8] as involving a front
pump made inoperative." Id. at 5. Appellant highlights that Holdeman
2 The Examiner rejected claims 18-28 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
See Final Act. 3--4. In the Advisory Action, the Examiner withdrew this
rejection. See Adv. Act. 2.
3 We will refer to the claim language "when only the second hydraulic
pump delivers during a coasting operation of the motor vehicle" as the
"when only" limitation.
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Appeal2017-006412
Application 13/458,778
expressly "describes the coasting as 'the front pump ... operating at a
substantially reduced capacity .... '" Id. ( quoting, with emphasis added by
Appellant, Holdeman, 16:5---6).
We agree with Appellant's positions as to both the proper construction
of the "when only" limitation and as to the relevant teachings of Holdeman.
As to claim construction, the Specification supports Appellant's position,
describing how "during coasting operation of the vehicle, when only second
hydraulic pump 44 is pumping," ''first hydraulic pump 42 is not operated
and does not deliver any hydraulic oil." Spec., 15:3-16 (emphasis added).
We tum now to the teachings of Holdeman. The relevant passage
discussed by both Appellant and the Examiner provides:
The spring 400 is of sufficient strength so that the valve is
closed when both pumps are operating unless the front pump is
operating at a substantially reduced capacity such as when the
vehicle engine is idling with the vehicle coasting at a
substantial speed.
Holdeman, 16:3-8. Because the "front pump is operating" ( even if at a
"reduced capacity") during the "coasting" relied on by the Examiner, the
relied-on aspects of Holdeman do not satisfy the "when only" limitation,
which expressly requires that "only the second hydraulic rear pump"-i.e.,
the rear pump in Holdeman-is operating.
In the Answer, the Examiner focuses on the definition of "coasting" in
the Specification. See Ans. 3 ( discussing Spec., 2:22-25). The Examiner
states that column 16, lines 11 to 13 of Holdeman disclose "an operation of
the vehicle by which the second pump delivers fluid pressure maintained as
detailed above while the vehicle's internal combustion engine is shut
off/ decoupled to push/tow the vehicle, which meets the terms of the above
4
Appeal2017-006412
Application 13/458,778
'coasting operation' definition [in the Specification] of the motor vehicle."
Id. at 3--4.
The Examiner's discussion, however, does not address Appellant's
argument. Appellant did not argue that Holdeman fails to disclose a
"coasting operation" as defined in the Specification; rather, Appellant argues
(correctly) that, in the relied-on "coasting" in Holdeman, the "front pump" is
operating, thereby falling outside of the scope of the "when only" limitation.
For this reason, we do not sustain the rejection of claim 18, or the
rejection of claims 19-28, which depend from claim 18.
DECISION
We reverse the decision to reject claims 18-28 under 35 U.S.C.
§ 103(a).
REVERSED
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