Ex Parte Tamai

Board of Patent Appeals and Interferences

Dec 21, 2010

10996095 (B.P.A.I. Dec. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
74175 7590 12/23/20 10
Harness Dickey & Pierce, P.L.C.
P.O. Box 828
APPLICATION NO.
Bloomfield Hills, MI 48303
I EXAMINER I
101996,095 1 1/23/2004 Goro Tamai GP-303546 5201
FILING DATE
PIPALA, EDWARD J
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
12/23/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte GORO TAMAI
Appeal 2009-007407
Application 101996,095
Technology Center 3600
Before LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007407
Application 101996,095
STATEMENT OF THE CASE
Goro Tamai (Appellant) seeks our review under 35 U.S.C. 5 134 of
the Examiner's decision rejecting claims 1 and 3-17. We have jurisdiction
under 35 U.S.C. 5 6(b). We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A control system in a vehicle for reducing vehicle
rollback upon brake release comprising:
an engine having fuel injectors;
a brake system;
a vehicle grade measurement device that generates a
grade signal;
a motor generator providing a start power to said engine
upon release of said brake system based on said grade signal;
and
a controller that modulates applied brake pressure of said
brake system based on said grade signal of said grade
measurement device and that increases idle speed of said engine
for a grade signal satisfying a first condition, and that stops said
engine and starts said motor generator at a high start power
upon release of said brake system for a grade signal satisfying a
second condition.
THE REJECTION
Before us for review is the Examiner's rejection of claims 1 and
3-17 under 35 U.S.C. 5 103(a) as being unpatentable over Peterson (US
6,25 1,042 B 1, issued Jun. 26, 2001) and Thomas (US 6,411,881 B 1, issued
Jun. 25,2002).
Appeal 2009-007407
Application 101996,095
OPINION
Independent claim 1 recites a system having a controller that stops the
vehicle's engine. Independent claims 7 and 13 are method claims, each
reciting the step of "stopping the engine . . . ." Appellant argues all of the
rejected claims as a group based on the requirement of a controller that stops
the engine, and does not attach any patentable significance to the difference
in claim types. App. Br. 6,7. We select claim 1 as the representative claim,
and claims 3-17 stand or fall with claim 1. 37 C.F.R. 5 41.37(c)(l)(vii).
According to Appellant, the claimed subject matter is directed to the
problem of a hybrid vehicle regaining momentum when stopped on an
incline. See App. Br. 8. The controller of claim 1 stops the vehicle's engine
on a certain grade. The Examiner relies on Peterson for the general
disclosure of a hybrid vehicle, and for the specific teaching that the hybrid's
engine may be stopped or the transmission shifted into neutral idle when the
vehicle is stopped. Ans. 5-6. Neutral idle is where the vehicle is stopped
and the engine remains running but the transmission is disengaged from the
engine, resulting in decreased fuel consumption. See Reply Br. 3; App. Br.
6-7. For the incline-related control, the Examiner relies on Thomas. Ans. 5.
Appellant characterizes Thomas's disclosure as pertaining to a non-hybrid
vehicle and as "directed toward overcoming vehicle rollback for a
powertrain adapted for neutral idle." App. Br. 6.
To the extent that Appellant argues that the Examiner's rejection is
erroneous because Thomas does not disclose stopping the engine, we are not
persuaded of error. See Reply Br. 4; App. Br. 6-7. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Appeal 2009-007407
Application 101996,095
Merck & Co., 800 F.2d 109 1, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413,425 (CCPA 1981)). Appellant does not dispute the Examiner's
findings that Peterson teaches stopping the hybrid's engine and that
it is well known in the art of hybrid vehicles . . .
that it is common practice to turn the internal
combustion engine off when the vehicle comes to a
stop in order to save fuel, similar to the decoupling
of the engine from the drivetrainltransmission by
virtue of a "neutral idle" operation as disclosed by
Thomas.
Ans. 9; see Reply Br. 4-5 (quoting the Examiner and stating that "Appellant
is not arguing whatsoever with either of the Examiner's points"). As such,
we fail to see why the combined teachings would not result in a hybrid
vehicle where the engine is stopped when the vehicle is stopped.
Appellant argues that "the Examiner has failed to provide an apparent
reason to combine the teachings of Thomas and Peterson to yield the instant
invention." App. Br. 9. Specifically, Appellant contends that Thomas's
neutral idle disclosure teaches away from stopping the engine, and that using
a feature that teaches away from the claimed invention is inconsistent with
the Court's decision in KSR Znt'l Co. v. Telejlex Znc., 550 U.S. 398 (2007).
Id. at 8.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant." In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Znc. v. Denso Mfg. Mich. Znc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)). One of ordinary skill in the art
would not view Thomas's neutral idle disclosure as indicating that the
engine may not be stopped - particularly where the ordinary artisan was
Appeal 2009-007407
Application 101996,095
aware that a hybrid vehicle may utilize either neutral idle or may stop the
engine to save fuel. We find that Thomas does not teach away from
Appellant's invention, and therefore are not persuaded by Appellant's
argument that the Examiner has failed to provide an apparent reason to
combine the references' teachings. See Ans. 6-7 (the Examiner's reasoning).
We also are not persuaded by Appellant's apparent argument that the
claimed subject matter cannot be obvious because "neither of these
references even addresses the challenges associated with regaining
momentum with a hybrid car while stopped on an incline . . ." App. Br. 8.
A proper obviousness rejection does not require a showing that the
references would be combined to solve the problem with which Appellant
was concerned. KSR Znt'l Co., 550 U.S. at 419 ("neither the particular
motivation nor the avowed purpose of the [Appellant] controls" in an
obviousness analysis.)
DECISION
The decision of the Examiner to reject claims 1 and 3-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 l.l36(a)(l)(iv).
AFFIRMED
Appeal 2009-007407
Application 10/996,095
mls
HARNESS DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303