Ex Parte Wright et al

Patent Trial and Appeal Board

Apr 5, 2018

14189080 (P.T.A.B. Apr. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/189,080 02/25/2014
46442 7590 04/09/2018
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Robert Wright
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.
83418628; 67186-067
PUSl
EXAMINER
TUN,NAYL
2409
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
04/09/2018 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT WRIGHT and WALTER JOSEPH ORTMANN
Appeal2017-010702
Application 14/189,080 1
Technology Center 2600
Before ALLEN R. MacDONALD, SHARON PENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1-3, 5-11, and 13-24, all of the pending claims of the application. 2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Ford Global Technologies, LLC, which,
according to the Brief, is the real party in interest. See Appeal Br. 1.
2 Claims 4 and 12 are canceled. See Final Act. 2.
Appeal2017-010702
Application 14/189 ,080
STATEMENT OF THE CASE
Invention
According to Appellant, the invention relates to "communicating an
alert to a location remote from a vehicle in response to disabling a Power
Generation mode of the vehicle." Spec. ,-r 4. 3
Exemplary Claims
Claims 1, 11, and 16 are independent claims. Claims 1 and 16 are
exemplary and are reproduced below with limitations at issue italicized:
1. A method, comprising:
controlling a vehicle in a Power Generation mode
by commanding an engine and an electric machine of the
vehicle to generate and supply power to an electrical
accessory separate from the vehicle, and controlling the
vehicle includes communicating an alert to a location
remote from the vehicle in response to disabling the Power
Generation mode of the vehicle.
16. A vehicle system, comprising:
an engme;
an electric machine;
a control unit in communication with said engine
and said electric machine and configured to control said
engine and said electric machine in a Power Generation
mode in which power is generated and supplied to an
electrical accessory remote from the vehicle system; and
3 This Decision refers to: (1) Appellant's Specification filed February 25,
2014 ("Spec."); (2) the Final Office Action ("Final Act.") mailed August 25,
2016; (3) the Appeal Brief ("Appeal Br.") filed January 23, 2017; (4) the
Examiner's Answer ("Ans.") mailed June 14, 2017; and (5) the Reply Brief
("Reply Br.") filed August 14, 2017.
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Application 14/189 ,080
an alert system that provides remote notification of
shutdown of said Power Generation mode.
Appeal Br. 12, 14.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Grant et al. ("Grant")
Oyobe et al. ("Oyobe")
King
Inagawa et al. ("Inagawa")
US 2007 /0085692 Al
US 2009/0058097 Al
US 2010/0133900 Al
US 2010/0283625 Al
REJECTIONS
Apr. 19, 2007
Mar. 5, 2009
June 3, 2010
Nov. 11, 2010
Claims 16-20 and 24 stand rejected under 35 U.S.C. § l 12(a), as
failing to comply with the written description requirement. Final Act. 2-3.
Claims 11, 13-15, 21, and 22 stand rejected under 35 U.S.C. § l 12(b),
as being indefinite. Final Act. 3--4.
Claims 1-3, 5, 6, 9, 10, 16-20, 23, and 24 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of King and Grant.
Final Act. 5-10.
Claims 7, 8, 11, 13-15, and 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of King, Grant, and Oyobe.
Final Act. 10-14.
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of King, Grant, Oyobe, and Inagawa. Final Act. 14--
15.
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Application 14/189 ,080
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See
Manual of Patent Examining Procedure (MPEP) § 1205.02; 37 C.F.R.
§§ 41.37(c)(l)(iv), 41.39(a)(l).
ISSUES
( 1) Whether the Examiner errs in finding Appellant's Specification
lacks written support under 35 U.S.C. § 112(a), for the term "remote," as
used in the limitation "a Power Generation mode in which power is
generated and supplied to an electrical accessory remote from the vehicle
system," of claim 16.
(2) Whether the Examiner errs in finding King teaches or suggests
"controlling a vehicle in a Power Generation mode by commanding an
engine and an electric machine of the vehicle to generate and supply power
to an electrical accessory," as recited in claim 1.
ANALYSIS
Issue I-Rejection of Claims 16-20 and 24Under§l12(a)
The Examiner finds Appellant's Specification (or the "Specification")
lacks written support for the limitation "a control unit in communication
with said engine and said electric machine and configured to control said
engine and said electric machine in a Power Generation mode in which
power is generated and supplied to an electrical accessory remote from the
vehicle system," as recited in claim 16. Specifically, the Examiner finds
"there is no support of the accessory being remote." Final Act. 3.
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Application 14/189 ,080
Appellant, in tum, argues the Specification provides "at least implicit
support for the electrical accessories being 'remote' from the vehicle"
because the Specification discloses the accessory is separate from the
vehicle and "the term 'remote' is simply being used as another way of
stating that the vehicle accessory is separate from the vehicle system."
Appeal. Br. 4 (citing Spec. i-fi-1 48, 49 and Fig. 2).
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112(a), is a question of fact and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Paulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1561 (Fed. Cir. 1991)). A written-description question often
arises when an applicant, after filing a patent application, subsequently adds
"new matter" to the claims not present in the original application. Vas-Cath,
935 F.2d at 1560. When an applicant amends a claim to introduce new
elements or limitations or adds claims during prosecution, for example, the
newly claimed subject matter must find written description support in the
original specification. Id.; see also TurboCare Div. of Demag Delaval
Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir.
2001 ). Without written description support, claims containing new matter
are properly rejected under 35 U.S.C. § 112. Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010). This required compliance
with 35 U.S.C. § 112 ensures that the applicant fully possessed the entire
scope of the claim as of the original filing date. Turbo Care, 264 F .3d at
1118. While there is no in haec verba requirement, newly added claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. Ariad at 1352.
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Application 14/189 ,080
We find Appellant's arguments unpersuasive. The limitation at issue
was newly added by amendment during prosecution and lacks express
support by the original Specification. See Amendment filed May 11, 2016.
We agree with Appellant that the Specification discloses "the electrical
accessories 99 are 'separate' from the vehicle 100." Appeal Br. 3 (citing
Spec. i-fi-148, 49). Appellant, however, fails to demonstrate that the
Specification provides implicit or inherent support for the term "remote" as
used in claim 16.
Appellant's argument relies on the assertion that remote and separate
have identical meanings. See Appeal Br. 4. We agree with the Examiner,
however, that the terms separate and remote are used differently in the
Specification, thus indicating their meanings are not identical. Ans. 3-4
( citing Spec. Fig. 5 and i-fi-1 6, 49). Also, the dictionary definitions of the
terms do not support Appellant's argument that the meaning of the terms is
identical. Namely, the definition of "remote" is "1: separated by an interval
or space greater than usual" and "2: far removed in space, time, or relation"
while the definition of "separate" is "la: set or kept apart." MERRIAM-
WEBSTER'S COLLEGIATE DICTIONARY 987, 1064 (10th ed.,
Merriam-Webster 2002 ). We, therefore, agree with the Examiner that, while
the Specification supports supplying power to an electrical accessory
separate from the vehicle system, the Specification does not support
supplying power to an electrical accessory remote from the vehicle system.
Ans. 3-4.
Accordingly, we sustain the Examiner's rejection of claims 16-20 and
24 under 35 U.S.C. § 112(a).
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Issue 2-Rejection of Claim 1 Under§ 103
The Examiner determines claim 1 is obvious over the combination of
King and Grant. Final Act. 4---6; Ans. 4---6. Specifically, the Examiner finds
King teaches or suggests "controlling a vehicle in a Power Generation mode
by commanding an engine and an electric machine of the vehicle to generate
and supply power to an electrical accessory," as in claim 1. See Final Act. 5
(citing King iii! 20-22).
Appellant argues King "controls the charging device 14 (i.e., an
engine) to generate power but does not also control an electric machine (i.e.,
electric motor or generator) to generate power during a Power Generation
mode." Appeal Br. 5 (citing King if 22 ). Appellant further argues the
"Examiner's position appears to be that any electric part of the vehicle of
King can be considered as the 'electric machine"' and therefore "the
Examiner has relied on the broadest possible interpretation of 'electric
machine' rather than one that is reasonable and consistent with the
specification." Appeal. Br. 5-6.
First, we must construe the term "electric machine," as recited in
claim 1. See In re Geerdes, 491 F .2d 1260, 1262 ( CCP A 197 4) ("Before
considering the rejections ... , we must first [determine the scope of] the
claims"). In this regard, Appellant's Specification discloses that
"[ e ]lectrified vehicles, such as hybrid electric vehicles ... , plug-in hybrid
electric vehicles ... , battery electric vehicles ... , or fuel cell vehicles, differ
from conventional motor vehicles in that they are powered by one or more
electric machines (i.e., electric motors/generators) instead of or in addition
to an engine." Spec. if 2 (emphasis added). The Specification also discloses
"the powertrain 10 is a power split system that employs a first drive system
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that includes a combination of an engine 14 and a generator 16 (i.e., a first
electric machine) and a second drive system that includes at least a motor 36
(i.e., a second electric machine)." Spec. i-f 35. The Specification further
discloses that in an electric vehicle ("EV") mode, "vehicle 100 is propelled
solely by the electric machine 68." Spec. i-f 47. That is, the Specification
consistently discloses that an electric machine is either a generator or a
motor, capable of powering a vehicle without assistance from an engine.
During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). "The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is not ...
simply an interpretation that is not inconsistent with the specification." In re
Smith Int'! Inc., 871F.3d1375, 1382 (Fed. Cir. 2017). "It is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is 'consistent with
the specification."' Id. at 1383 (quoting In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997)).
In view of our reviewing court's case law, we decline to construe the
claim language as broadly as the Examiner. Rather, we construe the phrase
"electric machine" as recited in claim 1, as requiring a generator, a motor, or
both, because we can find no example from the Specification of the claimed
electric machine being other than a generator or a motor.
Given our construction, we do not agree with the Examiner's finding
that uninterruptable power supply ("UPS") 10 teaches the claimed electric
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machine. See Ans. 4. Although UPS 10 includes AC motor 22, it also
includes many other components including inverter 16, mode switch 28,
energy storage system 12, and charging device 14, and therefore is not a
motor or generator. See King i-f 22, Fig. 1. Moreover, King's AC motor 22
does not suggest the claimed "electric machine" because, as Appellant
argues, King indicates that AC motor 22 is "deactivated during the
emergency power mode" relied upon by the Examiner to teach the limitation
at issue. Appeal Br. 5 (citing King i-f 22); see also Final Act. 4---6.
We also do not agree with the Examiner's finding that charging
device 14 teaches the claimed electric machine. See Ans. 5. We agree with
Appellant's argument that "[t]here is no support for the Examiner's
conclusion that the charging device 14 is inclusive of both an engine and an
electric machine" because "the charging device 14 is either an engine or a
fuel cell but not both." Reply Br. 3 (citing Spec. i-f 20). Moreover, relying
on the charging device to suggest both the engine and the electric machine of
claim 1 requires that we interpret these terms to have identical meanings.
We do not agree this is a reasonable interpretation in view of the
Specification. See Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d
1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do so.").
The Examiner's interpretation is, therefore, unsustainable because the
broadest reasonable construction of the claimed electric machine does not
encompass UPS 10 or charging device 14 as described in King. The
Examiner does not rely on Grant with respect to the limitation at issue of
claim 1. See Final Action 5; Answer 2---6. Accordingly, on this record, the
Examiner has not shown how King, alone or in combination with Grant,
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teaches or suggests "controlling a vehicle in a Power Generation mode by
commanding an engine and an electric machine of the vehicle to generate
and supply power to an electrical accessory," within the meaning of claim 1.
Because we agree with at least one of the dispositive arguments advanced by
Appellant for claim 1, we need not reach the merits of Appellant's other
arguments.
Because we are persuaded of Examiner error, we do not sustain the
Examiner's 35 U.S.C. § 103 rejection of independent claim 1. We also do
not sustain the rejection of independent claims 11, and 16, which are argued
with claim 1 and recite limitations commensurate in scope to claim 1. We
do not sustain the rejections of dependent claims 2, 3, 5-10, and 13-15, and
17-24 for similar reasons.
§ l 12(b) Rejection
Appellant presents no arguments regarding the Examiner's rejection
of claims 11, 13-15, 21, and 22 under 35 U.S.C. § 112(b). Final Act. 3--4.
Accordingly, we summarily affirm the Examiner's rejection.
DECISION
We affirm the Examiner's decision rejecting claims 16-20 and 24
under 35 U.S.C. § 112(a).
We affirm the Examiner's decision rejecting claims 11, 13-15, 21,
and 22 under 35 U.S.C. § 112(b).
We reverse the Examiner's decision rejecting claims 1-3, 5-11, and
13-24 under 35 U.S.C. § 103.
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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
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