Ex Parte Wanner et al

Patent Trial and Appeal Board

Aug 25, 2016

13138602 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/138,602 11/17/2011
24972 7590 08/29/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Hartmut Wanner
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.
1019117088 5212
EXAMINER
NGUYEN, VIET P
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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 HARTMUT WANNER and UWE DAURER
Appeal2015-003237
Application 13/138,602 1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 12, 13, and 15-22.
We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
Appeal Br. 1.
2 Our decision refers to the Appellants' Specification filed Sept. 9, 2011 (Spec.),
the Final Office Action mailed Apr. 15, 2014 (Final Act.), the Appeal Brief filed
Sept. 15, 2014 (Appeal Br.), the Examiner's Answer mailed Nov. 13, 2014 (Ans.),
and the Reply Brief filed Jan. 13, 2015 (Reply Br.).
Appeal2015-003237
Application 13/138,602
STATEMENT OF THE CASE
The subject matter on appeal relates to circuit configurations for starting an
internal combustion engine and related methods (see, e.g., claims 12 and 18). In
particular, Appellants disclose a circuit configuration that starts an internal
combustion engine more exactly and achieves a longer service life. Spec. p. 3, 11.
6-10. An annotated copy of Figure 1, which depicts an embodiment of a circuit
configuration, is reproduced below.
Fig.1
Control
Relay
Current Path
Figure 1 is a schematic diagram of a circuit configuration for an exemplary starter.
The starter 1 depicted in Figure 1 includes a starter motor 2, a control relay
3, an engaging relay 4, and a switching relay 7. Spec. p. 9, 11. 1-17. Appellants
2
Appeal2015-003237
Application 13/138,602
disclose that the switching relay 7 can be situated in a current path 50.5 that is
switchable by the control relay 3 of engaging relay 4. Spec. p. 10, 11. 7-9.
Independent claim 12 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. 3 The limitations at issue are italicized.
12. A circuit configuration for starting an internal combustion
engme, compnsmg:
a starter including a starter motor, an engaging relay, a switching
relay, and a control relay able to be controlled by an ignition switch, the
engaging relay being able to be controlled by the control relay and a
current path of the starter motor being able to be switched using the
switching relay;
wherein the switching relay is able to be controlled as a function
of an occurrence of a specified event, at least in a switching-off process
of the starter;
wherein the switching relay is situated in a current path that is
able to be switched by the control relay.
The claims on appeal stand rejected as follows:
(1) claims 12, 13, 15, 17-19, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Wanner4 in view of Tanaka; 5
(2) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Wanner and
Tanaka and further in view of Fasola;6 and
(3) claim 20 under 35 U.S.C. § 103(a) as being unpatentable Wanner and
Tanaka and further in view ofNiimi.7
3 Appeal Br. Claims Appendix 1.
4 Wanner, US 2008/0283012 Al, published Nov. 20, 2008 ("Wanner").
5 Tanaka et al., US 7,216,617 B2, issued May 15, 2007 ("Tanaka").
6 Fasola, US 5,325,827 A, issued July 5, 1994 ("Fasola").
7 Niimi, US 5,731,638 A, issued Mar. 24, 1998 ("Niimi").
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Appeal2015-003237
Application 13/138,602
B. DISCUSSION
Rejection (1)
Claims 12, 13, 15, 17-19, 21, and 22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Wanner in view of Tanaka. Claim 12 is representative of the
issues discussed below.
The Examiner finds Wanner discloses a starter system including a starter
motor 2a, an engaging relay 4a, a switching relay 17a, and a control relay 13a.
Final Act. 2. The Examiner finds the switching relay 17a is situated in a current
path able to be switched by the control relay 13a. Final Act. 3.
The Examiner finds Wanner does not disclose that the switching relay is
able to be controlled as a function of an occurrence of a specified event, at least in
a switching-off process of the starter. Final Act. 3. The Examiner finds Tanaka
discloses a switching relay 5b able to be controlled as a function of an occurrence
of a specified event, at least in a switching-off process of the starter. Id. The
Examiner concludes it would have been obvious to use the switching relay and
specified event of Tanaka in the system of Wanner to improve the safety of the
system. Id.
Appellants contend the cited references do not disclose or suggest a
switching relay able to be controlled as a function of an occurrence of a specified
event, at least in a switching-off process of a starter, as recited in claim 12. Appeal
Br. 3. Appellants state that the Examiner appears to assert that the electromagnetic
switch coil 5b of Tanaka functions as a switching relay. Id. However, Appellants
then assert that current supplied to the electromagnetic switch coil 5b is controlled
by relay 4 and the Examiner appears to assert that relay switch 1 Ob is a switching
relay. Id. Appellants argue relay 10 controls current supplied to relay 4 but relay
4
Appeal2015-003237
Application 13/138,602
10 is not part of the starter 5 of Tanaka and the switching-off process of the starter
5 does not control relay 10 or relay 4. Id.
Appellants' arguments are not persuasive of reversible error because they do
not address the Examiner's rejection. As stated by the Examiner at page 3 of the
Answer, the Examiner finds the electromagnetic switch coil 5b is a switching
relay, not the relay switch lOb of relay 10.
The Examiner further explains how the electromagnetic switch coil 5b is
able to be controlled as a function of an occurrence of a specified event, at least in
a switching-off process of a starter. Specifically, the Examiner finds in a
switching-off process of Tanaka's system an ignition switch IG is turned-off,
which ceases the flow of current I3 to coil 1 Oa of relay 10. Ans. 3. As a result,
current 12 does not flow from relay 10 to the coil 4a of relay 4 because switch 1 Ob
opens and current II does not flow to the electromagnetic switch coil 5b because
switch 4b opens. Id. Thus, in a switching-off process the electromagnetic switch
coil 5b, which the Examiner finds to be switching relay, is controlled so no current
flows to the starter motor 5a, which is turned off. Ans. 3--4. Appellants did not
respond to the Examiner's findings in the Reply Brief and therefore have not
directed us to any error in those findings.
Appellants further contend the applied references do not disclose a switching
relay situated in a current path that is able to be switched by a control relay, as
recited in claim 12. Appeal Br. 3. Specifically, Appellants argue Wanner does not
disclose element 17a is a switching relay controlled by the control relay 13a.
Appeal Br. 4.
As an initial matter to address Appellants' arguments, we interpret the
language "wherein the switching relay is situated in a current path that is able to be
switched by the control relay" of claim 12. Namely, we must determine whether
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Appeal2015-003237
Application 13/138,602
the language "that is able to be switched" modifies "a current path" or "the
switching relay." The Specification states "switching relay 7 is preferably situated
in a current path 50.5,8 that is switchable by control relay 3 of engaging relay 4."
Spec. p. 10, 11. 7-9. Moreover, as shown in Figure 1 above, the control relay 3 has
a switch (the unlabeled switch between terminal 50i and terminal 30 in current path
50.5) located in current path 50.5 and the switching relay 7 has a switch (the
unlabeled switch between terminal 30 and terminal 45 in current path 50.5) located
in current path 50.5. Thus, the switching relay 7 is situated in a current path (i.e.,
current path 50.5) and that current path is able to be switched by the control relay
3.
In view of the above, we interpret claim 12 to recite that the current path is
able to be switched by the control relay. 9 To the extent Appellants assert claim 12
requires that the switching relay is able to be switched by the control relay, we find
claim 12 does not recite this.
In response to comments by the Examiner in the Final Action referring to
element 12a as a switching relay, Appellants further argue the comments do not
explain how element 17 a is a switching relay and if one traces a current path upon
which element 17 a is disposed, one does not find a switch that is controlled by
starting relay 13a of Tanaka. Appeal Br. 4; Reply Br. 2.
The Examiner finds the power relays 12a, 12b of Wanner include both
elements 17a, 17b and their respective switches 18a, 18b. Ans. 4. Wanner
discloses elements 17a, 17b as windings of the power relays 12a, 12b. Wanner
8 Appellants cite current path 50.5 as the current path able to be switched by the
control relay 3 in the Summary of Claimed Subject Matter. Appeal Br. 2.
9 During examination, "claims [must be given] their broadest reasonable
construction consistent with the specification." In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007).
6
Appeal2015-003237
Application 13/138,602
if 44. Figure 2 of Wanner is reproduced below.
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'·~ ~- .,~, .. -~·-····-·--..· .................... .,~~ ... -..... ........................ ......... ...................... ~ ~ : ~
,,
<'
17
-.. c~ .. ::~,r .... \_ l4d,, I ... ·
~ ~ ~l-~y~---~~~
; !13'~ !"'-~~ ...... J r-------, ! : : ~- : ,, _i;.·;::+·+·h ~ 113ti t"'~Qt ~ ........ , ; ; : ·1-- .... ~ ~--; r
, : 1 , '"''m' d, /s:i ~,».JI<.: '} 1 · 1 , ,l : .. 0 . ·; 30 .:t~i~' ' ' : • 1 ... l !'--'··" ':} ·• ~ ; l . ! ; 1 ; . 1 : , :o: n1¢ ; ; , T · l
1 HV'\.11 1E~N; 1 ; n ~ 1 PH1; ~ 1 • : H\VI iEW L ! 1 :; : PR1, i
I c:r:r~}·Yr~:-+"-~)&1 ii l~~~r~;:~ i I i l c4~!:~;;:::>7~·--+---1·i% ii i\Ta.~::~::~ !
! l 4<-'"1 \ ~1 ) : i : l ~ ('('Y'\ \ M ; ' I
.... ~.J~l~t_;~ __ J--···1 lll~t±~;LL__J
,.
I I
I I
ta Fig. 2
Figure 2 is a circuit diagram for a parallel starting system.
As shown in Figure 2, switch 18a of power relay 12a is located in a current
path 7 in which the switch 14a of starting relay 13a is also located. As noted
above, the Examiner finds the starting relay 13a functions as a control relay. Final
Act. 2. Wanner discloses that when current flows to starting relay 13a, switch 14a
is closed and current path 7 is closed (i.e., switched) between terminals 30 and 50i.
Wanner if 21. In other words, the switching relay 12a of Wanner (which includes
switch 18a) is situated in a current path able to be switched by the starting relay
13a (i.e., via the switch 14a controlled by the starting relay 13a).
7
Appeal2015-003237
Application 13/138,602
Appellants' arguments do not direct us to a reversible error in the
Examiner's findings because Appellants' arguments are directed to whether the
current path on which the winding 17 a of relay 12a is located is switchable by
starting relay 13a, not whether switch 18a of relay 12a is on a current path
switchable by starting relay 13a.
The Examiner finds at page 4 of the Answer that when switch 14a is closed,
current flows to relay 4a, which closes switches 15a, 16a, as well as switches 15b,
16b. Appellants argue relay 4a is incapable of accomplishing this because relay 4b
controls switches 15b, 16b. Reply Br. 2. To any extent the Examiner erred here, it
is a harmless error because it does not affect whether the switching relay of
Wanner (i.e., power relay 12a, including its switch 18a) is situated in a current path
(i.e., current path 7) able to be switched by starting relay 13a via its switch 14a.
Appellants do not present any arguments in support of the separate
patentability of claims 13, 15, 17-19, 21, and 22. Appeal Br. 4. Therefore, for the
reasons set forth above, and for those expressed in the Examiner's Answer, the
§ 103(a) rejection of claims 12, 13, 15, 17-19, 21 and 22 over Wanner and Tanaka
is sustained.
Rejections (2) and (3)
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wanner
and Tanaka and further in view of Faso la.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable Wanner
and Tanaka and further in view of Niimi.
For the rejections of claims 16 and 20, Appellants contend Fasola and Niimi
do not remedy the deficiencies of the references applied in the rejection of claim
12. Appeal Br. 5. For the reasons set forth above, there are no deficiencies in the
8
Appeal2015-003237
Application 13/138,602
rejection of claims 12 and 18 that require curing by Fasola or Niimi.
C. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
9