Ex Parte Swoish et al

Patent Trial and Appeal Board

Feb 16, 2018

13891875 (P.T.A.B. Feb. 16, 2018)

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.
13/891,875 05/10/2013 Christopher C. Swoish P021779-PTUS-RRM 1001
80748 7590 02/21/2018
Cantor Colburn LLP-General Motors
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
SHEPPARD, JASON A
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER C. SWOISH and CHRISTOPHER WHITT
Appeal 2016-006129
Application 13/891,8751
Technology Center 3700
Before JOHN C. KERINS, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final decision rejecting claims 1—10, the only claims remaining in the
application. See Appeal Br. 10-12, Claims App. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is GM GLOBAL
TECHNOLOGY OPERATIONS LLC., who is the Applicant. Appeal Br. 1.
Appeal 2016-006129
Application 13/891,875
CLAIMED SUBJECT MATTER
The claims are directed to “a particulate filter device monitoring
system for an engine.” Spec. 11. Claims 1 and 6 are the only independent
claims. Claim 1 reproduced below, is illustrative of the claimed subject
matter:
1. A particulate filter device monitoring system for an
engine comprising:
a particulate filter device including at least one sensor;
a regeneration mode trigger module configured to set a
regeneration request based on soot accumulation in the
particulate filter device based on signals received from the at
least one sensor;
a regeneration control module configured to control
regeneration of the particulate filter device; and
a soot out model module including a soot out model
configured to calculate changes in soot out rate during extended
engine idle periods.
Appeal Br. 10, Claims App.
REJECTIONS
The Examiner made the following rejections:
I. Claims 1—10 stand rejected as being directed to patent-
ineligible subject matter under the judicial exception to 35 U.S.C. § 101.
II. Claims 1—10 stand rejected under 35 U.S.C. § 112(b), as failing
to particularly point out and distinctly claim the subject matter regarded as
the invention.
III. Claims 1, 4—6, 9, and 10 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Wills (US 2007/0056274 Al, published Mar.
15,2007).
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Appeal 2016-006129
Application 13/891,875
IV. Claims 2, 3, 7, and 8 stand rejected under 35 U.S.C. § 103 as
obvious over Wills.
OPINION
Rejection I— The rejection of claims 1—10
as patent-ineligible subject matter
The Examiner finds that “[t]he claim[s are] directed to the abstract
idea of ‘monitoring a particulate filter’ and essentially comprise^ ‘modules
configured to’ execute various algorithms.” Non-Final Act. 5. The
Examiner states that “the additional structural elements . . . are inferential to
their respective claims, are structures that are well known in the art, and do
not serve to transform the respective claims into something significantly
more than the abstract idea.” Id. at 6 (emphasis added).
Appellants submit that the claims are not subject to the judicial
exception to eligible subject matter because “[cjlaim 1 is directed to a
system, a concrete and tangible article that monitors a particulate filter
device,” and “[cjlaim 6 is directed to an internal combustion engine.”
Appeal Br. 4. Appellants assert that “the system itself is described as being
embodied in modules which are themselves actual physical components.”
Id. Appellants thus argue that “given the presence of these positively recited
elements, both claims 1 and 6 should be clearly understood to be directed to
one of the four statutory categories, i.e., a machine.” Id. at 5 (emphasis
added).
To determine whether a claim is directed to ineligible subject matter,
we apply the two-step test explained in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347, 2355 (2014). First, we determine whether
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Application 13/891,875
the claims at issue are directed to a patent-ineligible concept such as an
abstract idea. Id. Next, we “examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357.
Taking up the first step of the patent-eligibility analysis, we do not
find that claim 1 or claim 6 has been established to be directed to an abstract
idea. See Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289, 1293 (2012). (“The Court has recognized, however, that
too broad an interpretation of this exclusionary principle could eviscerate
patent law. For all inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”).
Reviewing claim 1 it is clear that claim 1 explicitly recites “a
particulate filter device including at least one sensor.” Appeal Br. 10,
Claims App. Claim 6 explicitly recites “an engine including an exhaust gas
conduit.” Id. at 11. Both structures in claim 1 and in claim 6 are physical
and positively required by the claims. The reasoning used to determine that
the claimed subject matter is judicially-excepted from patent eligibility
under § 101 is therefore inadequate. Having determined that the threshold
determination under step one of the Alice framework is inadequate, we need
not move to the second step.
We therefore reverse the Examiner’s rejection of claims 1 and 6 as
directed to patent ineligible subject matter. Likewise, because the Examiner
did not analyze any of claims 2—5 and 7—10, we reverse the Examiner’s
rejection of these claims as well. See Non-Final Act. 5—6.
We therefore do not sustain the rejection of claims 1—10 under 35
U.S.C. § 101.
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Appeal 2016-006129
Application 13/891,875
Rejection II— The rejection of claims 1—10 under 35 U.S.C. § 112(b)
Noting that “[t]he claims recite various modules, each interpreted
under 112(f) as comprising, among other possible structure, software
embodied in memory as a non-transitory machine-readable storage
medium,” the Examiner asserts that “[i]t is therefore unclear whether the
claims are attempting to require separate, distinct elements for each of the
recited modules, or whether the modules are merely software residing on a
single device (e.g., one non-transitory machine-readable storage medium)
resulting in a multiple inclusions of the claimed modules.” Non-Final Act.
7. We understand the Examiner’s position to be that there are multiple
embodiments that would be encompassed by the claims. Thus, according to
the Examiner, the term “module” is so broad it is indefinite. See id. at 6—7.
We disagree. The Examiner did not adequately explain why the
claims are unclear. As Appellants point out in their Appeal Brief, “modules
. . . are clearly defined [in the Specification at] paragraph [0014] and would
be understood by one of ordinary skill in the art.” Appeal Br. 6. See Spec,
f 14. Furthermore, by the Examiners own admission (Non-Final Act. 6—7),
the Examiner’s concerns are a matter of claim breadth, not indefmiteness.
However, “[b]readth is not indefmiteness.” In re Gardner, 427 F.2d 786,
788 (1970).
We are persuaded by Appellants’ arguments that the language of
claims 1—10 is not indefinite, based on, among other things, the description
in the Specification. Appeal Br. 5—6. Accordingly, we do not sustain the
rejection of claims 1—10 under 35 U.S.C. § 112(b).
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Application 13/891,875
Rejection III— The rejection of claims 1, 4—6, 9,
and 10 under 35 U.S.C. § 102(a)(1)
Claims 1 and 6
The Examiner finds that Wills anticipates Appellants’ particulate filter
including inter alia, “a soot out model module (soot production model 320
of Fig. 8) including a soot out model configured to calculate changes in soot
out rate during extended engine idle periods (e.g., see pars. [0050], [0071],
[0065], and [0057-0058]).” Non-Final Act. 8. Appellants, for their part,
submit that Wills does not disclose all of the claim limitations and in
particular, “[a]t no point does Wills teach to calculate changes in soot out
rate during extended engine idle periods.” Appeal Br. 7 (emphasis omitted),
Reply Br. 3. Further, Appellants expound that “[t]he Examiner appears to
have overlooked the language in paragraph [0058] of Wills that teaches that
functions of engine operating conditions/soot production relationships may
vary both quantitatively and qualitatively depending on the type, size make,
and model of engine.” Appeal Br. 7 (emphasis omitted). Thus Appellants
conclude that “[a]t no point does Wills suggest that a particular soot
production rate for a particular fueling rate will change over time during
idle.” Id. (emphasis omitted). The Examiner responds stating that “[t]he
fact that Wills teaches normalization and interpolation of soot production
with respect to time means that Wills inherently understands the need for the
correction of soot production as a function of time for any recognized engine
operating condition which Wills recognizes includes engine idle.” Ans. 5.
We agree that Appellants have the better view because Wills does not
disclose every limitation of claims 1 and 6. See Verdegaal Bros. v. Union
Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (Finding that a
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Application 13/891,875
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.).
Wills states that “the rate of particulate production will vary according
to engine operating conditions such as fuel rate, exhaust gas recirculation
(EGR) fraction, and timing of fuel injection into the cylinders (SOI, or start
of injection).” Wills f 53. Wills is silent with respect to the soot production
rate varying with engine idling time. Moreover, Wills does state that
“[ojther factors may also bear on the particulate production rate,” id., but is
not specific as to what those other factors may be. Wills does discuss
“engine idling” and “normalized soot production.” See id. f 57. However,
this discussion centers on fuel rates and engine size and not on engine idling
time. See e.g., id. (“Point 200c shows the engine 110 idling, with a fuel rate
of 1,500 grams per hour, corresponding to a normalized soot production
215a of 0.003, which in turn in one 15-liter engine embodiment corresponds
to a soot production rate of 3 grams per hour.”) (boldface omitted). Thus, it
is not apparent that Wills discloses the limitation of “a soot out model
module including a soot out model configured to calculate changes in soot
out rate during extended engine idle periods” as required by claims 1 and 6.
Accordingly, we do not sustain the rejection of claims 1 and 6.
Claims 4 and 5 depend from claim 1. Appeal Br. 10, Claims
Appendix. Claims 9 and 10 depend from claim 6. Id. at 11—12. The
rejection of claims 4, 5, 9, and 10 relies upon the same erroneous finding as
the rejection of claims 1 and 6. Non-Final Act. 7—10. Therefore, for the
reasons discussed above, we also do not sustain the rejection of claims 4, 5,
9, and 10.
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Application 13/891,875
Rejection IV— The rejection of claims 2, 3, 7, and 8
under 35 U.S.C. § 103
Claims 2 and 3 depend from claim 1. Id. at 10. Claims 7 and 8
depend from claim 6. Id. at 11. The rejection of claims 2,3,7, and 8 relies
upon the same erroneous finding as the rejection of claims 1 and 6. Non-
Final Act. 7—10. Therefore, for the reasons discussed above, we also do not
sustain the rejection of claims 2, 3, 7, and 8.
DECISION
The Examiner’s decision to reject claims 1—10 under 35 U.S.C. § 101
is reversed.
The Examiner’s decision to reject claims 1—10 under 35 U.S.C.
§ 112(b) is reversed.
The Examiner’s decision to reject claims 1, 4—6, 9, and 10 under 35
U.S.C. § 102(a)(1) is reversed.
The Examiner’s decision to reject claims 2, 3, 7, and 8 under 35
U.S.C. § 103 is reversed.
REVERSED
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