Ex Parte Wozniak et alDownload PDFPatent Trial and Appeal BoardOct 29, 201411712597 (P.T.A.B. Oct. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte LEONARD G. WOZNIAK, ROBERT C. SIMON JR., CHRISTOPHER E. WHITNEY, DONOVAN L. DIBBLE, CHARLES H. FOLKERTS, JOSEPH R. DULZO, THOMAS MAGNUSSON, MAGNUS WALL, and EMIL RITZEN ________________ Appeal 2012-008410 Application 11/712,597 Technology Center 3600 ________________ Before NEAL E. ABRAMS, MICHAEL L. HOELTER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Leonard G. Wozniak, Robert C. Simon Jr., Christopher E. Whitney, Donovan L. Dibble, Charles H. Folkerts, Joseph R. Dulzo, Thomas Magnusson, Magnus Wall, And Emil Ritzen (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–24. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2012-008410 Application 11/712,597 2 THE CLAIMED SUBJECT MATTER The claimed invention is directed to torque control arbitration in powertrain systems. Claims 1 and 2 are illustrative of the claims on appeal and are reproduced below: 1. A method of regulating a torque output of a vehicle powertrain, comprising: generating a plurality of torque requests; associating each of said plurality of torque requests with one of a plurality of arbitration domains to form torque request sets associated with each of said plurality of arbitration domains; arbitrating a first torque request set within a first of said plurality of arbitration domains to provide a first torque request; introducing said first torque request into a second torque request set associated with a second of said plurality of arbitration domains; arbitrating said second torque request set within said second arbitration domain to provide a second torque request; and regulating a torque source based on said second torque request. 2. The method of claim 1 wherein said steps of arbitrating comprise: identifying a lowest one of a plurality of maximum torque limits within an arbitration domain; identifying a highest one of a plurality of minimum torque limits within said arbitration domain; and setting a torque request output for said arbitration domain equal to the lower of said lowest one of said plurality of maximum torque limits and said highest one of said plurality of minimum torque limits. Appeal 2012-008410 Application 11/712,597 3 REFERENCES RELIED ON BY THE EXAMINER Sugita U.S. 2006/0138995 A1 June 29, 2006 THE REJECTIONS ON APPEAL Claims 2, 5–8, 10, 13–16, 18, and 21–24 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claims 2, 5–8, 10, 13–16, 18, and 21–24 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 2, 5– 8, 10, 13–16, 18, and 21–24 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1–24 are rejected under 35 U.S.C. § 103(a) as obvious over Sugita. ANALYSIS The rejection of claims 2, 5–8, 10, 13–16, 18, and 21–24 as failing to comply with the enablement requirement. The Examiner rejected claim 2 as failing to comply with the enablement requirement, stating “[t]he limitations do not [enable] one skilled in the art to make and use the invention because there is no support for the claimed limitation in the specification nor is there a clear meaning attached to the claimed limitations.” Ans. 7. With respect to the last paragraph in claim 2, the Examiner further asserted there is “no support” for “setting a torque request output for said arbitration domain equal to the lower of said lowest one of said plurality of maximum torque limits and said highest one of said plurality of minimum torque limits” and this language “makes no sense.” Ans. 28. Appeal 2012-008410 Application 11/712,597 4 Appellants assert that the Specification makes clear that the “maximum” and “minimum” recited in claim 2 refer to the type of request that is made and not to the magnitude of the request, and that the Examiner is mistaken in not adopting this interpretation of “maximum” and “minimum” in light of the Specification. Reply Br. 7. Appellants further assert that the language in claim 2 the Examiner described as making no sense is clear when properly interpreted in light of the Specification. Reply Br. 8. We cannot sustain the Examiner's determination that the Specification fails to enable one having ordinary skill in the art to practice the method recited in claim 2. The PTO bears the initial burden when rejecting claims for lack of enablement. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). The test for compliance with the enablement requirement in 35 U.S.C. § 112, first paragraph, is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth eight factors to be considered to evaluate whether a disclosure would require undue experimentation). Although the Examiner’s analysis in this case discusses the amount of direction and guidance presented in the disclosure and scrutinizes claim 2 in detail, the Examiner's enablement analysis does not demonstrate that the Examiner considered evidence related to the remaining Wands factors or drew a conclusion that undue experimentation would be required, based on the evidence as a whole. Accordingly, we cannot affirm the rejection of claims 2, 5–8, 10, 13–16, 18, and 21–24 as failing to comply with the enablement requirement. Appeal 2012-008410 Application 11/712,597 5 The rejection of claims 2, 5–8, 10, 13–16, 18, and 21–24 as failing to comply with the written description requirement. (I) Claim 2 recites, in part: identifying a lowest one of a plurality of maximum torque limits within an arbitration domain; identifying a highest one of a plurality of minimum torque limits within said arbitration domain; and setting a torque request output for said arbitration domain equal to the lower of said lowest one of said plurality of maximum torque limits and said highest one of said plurality of minimum torque limits. App. Br., Claims Appx. (emphasis added) (II) The Examiner rejects claim 2 as failing to comply with the written description requirement, stating, “[t]he specification does not agree with the subject matter on the claimed invention as amended.” Answer 5. The Examiner explains: The claimed: identifying a lowest one of a plurality of maximum torque limits within an arbitration domain; identifying a highest one of a plurality of minimum torque limits within said arbitration domain; and setting a torque request output for said arbitration domain equal to the lower of said lowest one of said plurality of maximum torque limits and said highest one of said plurality of minimum torque limits is still flawed because there is not support for the limitations, ‘a plurality of maximum torque limits within an arbitration domain’ and ‘a plurality of minimum torque limits within said arbitration domain’. There is no plurality of maximum torque limits or a plurality of minimum torque limits [”] disclosed in the specification or drawings. Which set of [torques] make up a Appeal 2012-008410 Application 11/712,597 6 plurality of maximum torques of a plurality of minimum [torques]? Ans. 5-6 (additional emphasis added). (III) Appellants traverse the Examiner’s rejection of claim 2 for failing to satisfy the written description requirement, asserting “the Examiner continues to incorrectly assert that the specification does not disclose a plurality of maximum or minimum torque limits,” and “there are at least three ways in which the specification discloses a plurality of maximum and minimum torques.” Reply Br. 5 (emphasis added). Appellants assert the first of these ways is implicit, stating: First, the language of the specification corresponding to the above amendment at least implicitly discloses a plurality of maximum and minimum torques. The specification provides a simple rule set for arbitrating the torque requests: “the lowest maximum torque request (TMAXLO) and the highest minimum torque request (TMINHI) are identified. The value that is the output from the particular arbitration domain is the lower of TMAXLO and TMINHI” (page 10, lines 6-12). This clearly implies that there may be more than one maximum torque request arbitrated in each arbitration domain and there may be more than one minimum torque request arbitrated in each arbitration domain. Otherwise, the specification would not include the terms "lowest" and "highest," and would simply disclose identifying the maximum torque request and the minimum torque request in each arbitration domain. Reply Br. 5 (emphasis added). Appellants also assert the second of the pertinent disclosures is also implicit, stating: Second, the specification discloses arbitrating a plurality of torque requests, each of which may be a maximum or minimum torque limit. The specification discloses that the Appeal 2012-008410 Application 11/712,597 7 torque features generating the torque requests may number in the tens to over a hundred (page 2, lines 8-9). In addition, there may be as few as five arbitration domains (FIG. 1). Thus, there may be over a hundred torque requests arbitrated in as few as five arbitration domains, and each torque request may be a maximum or minimum torque limit. This clearly implies that there may be multiple maximum torque requests arbitrated in each arbitration domain and multiple minimum torque requests arbitrated in each arbitration domain. Reply Br. 6 (emphasis added). Regarding the asserted third way, Appellants state: Third, one skilled in the art would have understood that there may be a plurality of minimum and maximum torque limits arbitrated in each arbitration domain. For example, the specification discloses arbitration in the propulsion domain of a maximum torque limit that protects the transmission and a minimum torque limit (TRDD(MIN)) that is the "winner" of arbitration in the driver domain (FIG. 3; page 8, line 21 - page 9, line 3). The specification also discloses that traction control systems may be one of the torque features that generates the torque requests (page 9, lines 13-15). Appellants reiterate that one skilled in the art would recognize that traction control systems generate maximum and minimum torque limits to control torque in the propulsion domain. Reply Br. 6. (IV) Regarding the composition of torque requests, the Specification states: All of the torque requests (TRs) generated by the torque features are confined to standard request types. The standard request types include an absolute torque value, a maximum torque limit, a minimum torque limit or a delta torque. In this manner, the overall powertrain system generates very few torque request types. Most powertrain systems can be managed with only the maximum and minimum torque limits. Each of the torque requests is validated as being good and is limited to the capabilities of the powertrain system prior to arbitration. Appeal 2012-008410 Application 11/712,597 8 For example, a validation algorithm processes a TR and determines whether the TR is valid based on, for example, the current operating characteristics of the powertrain system. The TR is compared to maximum and minimum values (i.e., a range) and is limited based on these values. For example, if the TR is for 260 Nm of engine torque output, but the engine is only capable of 250 Nm, the TR is limited to 250 Nm. Spec. ¶ 31 (emphasis added). Accordingly, the torque requests are “standard request types,” and standard request types include an absolute torque value, a maximum torque limit, a minimum torque limit, or a delta torque. In the next paragraph, the Specification explains “arbitration” and “arbitration domains,” stating: Once all of the TRs' have been validated and limited, the TRs are arbitrated within their respective domains. The arbitration starts with the outermost domain and works inward to the innermost domain(s). A simple rule set is implemented for arbitration within an arbitration domain. More specifically, the lowest maximum torque request (TMAXLO) and the highest minimum torque request (TMINHI) are identified. The TR value that is the output from the particular arbitration domain is the lower of TMAXLO and TMINHI. Spec. ¶ 32. Accordingly, the arbitration operation operates on torque requests, which, as discussed above, can be any of a number of things. As pointed out by Appellants, claim 2 on appeal is the result of an amendment to original claim 2 as follows: "identifying a lowest one of a plurality of maximum torque request limits within an arbitration domain; identifying a highest one of a plurality of minimum torque request limits within said arbitration domain; and setting a torque request output for said arbitration domain equal to the lower of said lowest one of said plurality of maximum torque request limits Appeal 2012-008410 Application 11/712,597 9 and said highest one of said plurality of minimum torque request limits." Reply Br. 5; see also the Amendment filed on November 12, 2010. V We agree with the Examiner regarding lack of support in the original disclosure for claim 2. “Adequate written description means that the applicant, in the specification, must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted) (brackets in original), reh’g en banc denied Sep. 18, 2009. The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the … application as of the filing date.” Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). It is important to note that the written description requirement is separate from the enablement requirement; it is possible to satisfy one requirement without satisfying the other. As explained by the Federal Circuit: This court in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 U.S.C. § 112, first paragraph, requires a “written description of the invention” which is separate and distinct from the enablement requirement. The purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was Appeal 2012-008410 Application 11/712,597 10 in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–1564 (Fed. Cir. 1991) (bold emphasis added). In the case of claim 2, a person of ordinary skill in the art would not have recognized, from the original Application, that Appellants possessed what is claimed in claim 2 on appeal. Although the Specification discloses a maximum torque limit and a minimum torque limit (in a list also including “an absolute torque value” and “a delta torque”), the Specification does not disclose the particular process as it is applied to maximum and minimum torque limits recited in claim 2. Claim 2 originally recited identifying certain types of torque requests and then setting a torque request output for an arbitration domain equal to the lower of the identified torque requests. Paragraph 32 of the Specification discusses identifying such requests, i.e., the “lowest maximum torque request (TMAXLO)” and “the highest minimum torque request (TMINHI).” However, amended claim 2 on appeal replaces “maximum torque request” and “minimum torque request” with “maximum torque limits” and “minimum torque limits,” respectively. Appellants have not shown where the original disclosure defines a “maximum torque request” or a “minimum torque request” in such a way that a person of ordinary skill in the art would understand that comparison of such requests means a comparison of maximum or minimum torque limits. Rather, the Specification indicates, in paragraph 32, that a torque request may include any of: an absolute torque value, a maximum torque limit, a minimum torque limit, or a delta torque. The Specification does not indicate the maximum or minimum torque limits are always present in a torque Appeal 2012-008410 Application 11/712,597 11 request since the torque request, as described, may include only an absolute torque value or a delta torque. Spec. ¶ 31. The original disclosure does not disclose that the maximum and minimum torque limits are themselves analyzed in the arbitration process. Instead, the Specification explains that arbitration is performed with respect to “requests,” and the Specification explains that requests might include delta torque values or absolute torque values, not just maximum and minimum torque limits. In other words, paragraph 32 of the Specification discusses arbitration of torque “requests,” whereas claim 2 recites arbitration in terms of torque “limits,” and the Specification indicates torque limits are merely one possible component of torque requests. Accordingly, we find no error in the Examiner’s conclusion that the original disclosure does not convey with reasonable clarity to those skilled in the art that, as of the filing date, that the inventors were in possession of the invention recited in claim 2. As the Examiner stated, “[t]he specification does not agree with the subject matter on the claimed invention as amended.” Ans. 5. Therefore, we affirm the Examiner’s rejection of claim 2 as failing to comply with the written description requirement. We affirm the corresponding rejection of claims 5, 6, 7, 8, 10, 13–16, 18, and 21–24 for the same reasons. The rejection of claims 2–8, 10–16, and 18–24 as indefinite1 Claims 2, 5, 7, 18, 21, and 23 The Examiner asserts that there is insufficient antecedent basis for “said lowest one” and “said highest one” in claims 2, 5, 7, 18, 21, and 23. 1 The Grounds of Rejection in the Examiner’s Answer initially lists claims 2, 5–8, 10, 13–16, 18, and 21–24 in the rejection for indefiniteness. However, the discussion following this claim listing specifically rejects all of claims 2– 8, 10–16, and 18–24. Appeal 2012-008410 Application 11/712,597 12 Ans. 9. Appellants assert that the phrases “a lowest one” and “a highest one” appear at the appropriate places in these claims before the phrases “said lowest one” and “said highest one.” Appeal Br. 17. We agree with Appellants on this issue, the proper antecedent basis is in the pertinent claims. Claims 2–8, 10–16, 18–24 The Examiner states: The terms, "lowest maximum", "highest minimum", "torque delta" in claims 2-8, 10-16, 18-24 are relative terms which renders the claim indefinite. The terms, "lowest maximum", "highest minimum", "torque delta" are not defined by the claims. The specification also fails to provide a standard for ascertaining the requisite degree to comprehend the invention, thus one of ordinary skill in the art would not be reasonably or readily apprised of the scope of the invention. Ans. 9. Appellants state: The Examiner also asserts that the terms "lowest maximum," "highest minimum," and "torque delta" in claims 2- 8, 10-16, and 18-24 render the claims indefinite (see page 8, lines 5-9 of the Final Office Action). However, these terms were modified and clarified in the Amendment filed on November 12, 2010. Appeal Br. 18. We agree with Appellants on this issue inasmuch as the terms "lowest maximum," "highest minimum," and "torque delta" are not present in claims 2–8, 10–16, and 18–24. Accordingly, we reverse both indefiniteness rejections. Appeal 2012-008410 Application 11/712,597 13 The rejection of claims 1–24 under 35 U.S.C. § 103(a) as obvious over Sugita Independent claim 1 recites, in part: associating each of said plurality of torque requests with one of a plurality of arbitration domains to form torque request sets associated with each of said plurality of arbitration domains; arbitrating a first torque request set within a first of said plurality of arbitration domains to provide a first torque request; introducing said first torque request into a second torque request set associated with a second of said plurality of arbitration domains; The Examiner asserts Sugita discloses arbitrating a first torque request set and introducing the first torque request into a second torque request set and cites figure 8 and paragraphs 44–51, 54–56, and 65 for these features. Ans. 12–13 and 24. Appellants assert that Sugita does not disclose arbitrating a torque request set and introducing a torque request from one domain to another domain. Appeal Br 13. Appellants further assert the Examiner misconstrued the phrase “arbitration domain” as “a computer that calculates,” and this misconstruction may have caused the Examiner’s alleged error in concluding that Sugita discloses introducing a torque requests from one arbitration domain to another arbitration domain. Reply Br. 13. We find Appellants’ arguments persuasive. The portions of Sugita cited by the Examiner disclose a type of control of torque, but the Examiner has not identified any portion of Sugita that discloses introducing a first torque request provided by arbitration to a second torque request set Appeal 2012-008410 Application 11/712,597 14 associated with a second of said plurality of arbitration domains. Further, we agree with Appellants that the Examiner’s construction of the term “arbitration domain” as “a computer that calculates” (Reply Br. 13 referring to the Examiner’s Answer 26) is incorrect. The Examiner’s construction is contrary to the definition of arbitration domain given in paragraph 24 of the Specification, which states “[a]n arbitration domain is an area within the powertrain torque flow path that a torque feature or torque features desire to control the torque.” Accordingly, we reverse the rejection of claim 1 and claims 2–8 depending therefrom as obvious over Sugita. For the same reasons, we also reverse the rejection of independent claims 9 and 17 and the claims depending therefrom as obvious over Sugita. DECISION Although we have carefully considered all of Appellants’ arguments, we are not persuaded that the positions taken by the Examiner with respect claims 2, 5– 8, 10, 13–16, 18, and 21–24 as failing to comply with the written description requirement are in error. This being the case, the Examiner’s rejection of claims 2, 5–8, 10, 13–16, 18, and 21–24 as failing to comply with the written description requirement is affirmed. The rejection of claims 2, 5–8, 10, 13–16, 18, and 21–24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement is reversed. The rejection of claims 2–8, 10–16, and 18–24 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed. The rejection of claims 1–24 under 35 U.S.C. § 103(a) as obvious over Sugita is reversed. Appeal 2012-008410 Application 11/712,597 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation