Ex Parte Wuerth et al

Patent Trial and Appeal Board

Jan 31, 2018

13820443 (P.T.A.B. Jan. 31, 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.
13/820,443 03/01/2013 Juergen Wuerth 022862-1602-US00 3344
34044 7590 02/02/2018
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
WERNER, ROBERT A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN WUERTH, CARSTEN KLUTH,
WERNER HAEMING, and LI LUO
Appeal 2016-007911
Application 13/820,443
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Juergen Wuerth et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s Final Rejection of claims 1-7, 11-15, 17, and 18.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Robert Bosch GmbH.
Appeal Br. 2.
2 Claims 8-10, 16, 19, and 20 are cancelled. Appeal Br. 12, 14 (Claims
App.).
Appeal 2016-007911
Application 13/820,443
THE CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter on appeal.
1, A method for activating an emergency operational mode in a
system which detects pre-ignition in a combustion engine and
which contains a fault, wherein, in order to detect the fault, the
system, which includes a sensor cable (24), a sensor signal
evaluation device (20), and at least one sensor, is subjected to a
diagnosis, characterized in that, if a fault in a standard path (26)
of the system (17, 24, 20) is detected by the diagnosis, a safety
path (27) is activated as an emergency operational mode:
wherein the diagnosis of pre-ignition in the combustion
engine includes determining; standardized reference levels from
the sensor signal and comparing the sensor signal with an upper
and a lower threshold value in order to detect a fault in the
sensor (17), a fault being detected if the sensor signal lies
outside the signal band formed by the upper and the lower
threshold value, performing a short-circuit test of the sensor
cable (24) where a fault is detected if a short circuit of the
sensor cable (24) to a battery voltage or to an earth is present,
and monitoring the computer hardware with respect to signal
capture and signal evaluation, a fault being detected in the
sensor signal evaluation device (20) if implausibilities have
occurred during the signal capture or signal evaluation.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kashimura
Unland
US 4,425,891
US 5,517,969
US 5,905,193
Jan. 17, 1984
May 21, 1996
May 18, 1999
May 1,2007
Nov. 15,2011
June 29, 2006
Hashizume
Kuzuyama
Masuda
US 7,210,457 B2
US 8,056,396 B2
JP 2006170053 AHirai
2
Appeal 2016-007911
Application 13/820,443
THE REJECTIONS
I. Claims 1-7, 11-15, 17, and 18 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 2-3.
II. Claims 12-15, 17, and 18 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor or a
joint inventor regards as the invention. Id. at 3—4.
III. Claims 1-3, 11-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Masuda (as evidenced by Hirai),
Unland, and Kashimura. Id. at 4-9.
IV. Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Masuda (as evidenced by Hirai), Unland, Kashimura, and
Hashizume. Id. at 10-11.
V. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Masuda (as evidenced by Hirai), Unland, Kashimura, and Kuzuyama.
Id. at 12.
OPINION
Rejection I
The Examiner rejects claims 1-7, 11-15, 17, and 18 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement. Final Act. 2-3. In particular, the Examiner determines that
“diagnosis of pre-ignition in the combustion engine,” as recited in claim 1,
does not appear in the Specification. Id. at 3. Rather, the Examiner
determines the Specification describes only diagnosis of a sensor error, not
3
Appeal 2016-007911
Application 13/820,443
diagnosis of pre-ignition. Id. Appellants respond that “the diagnosis of an
error occurs as part of the diagnosis of pre-ignition.” Appeal Br. 6.
We agree with Appellants that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement. In particular, the Specification describes that “[i]n order to
ensure that the necessary hardware for detecting pre-ignition is always
working reliably, this hardware is subjected to diagnosis” (Spec. ^ 31) and
then describes steps for diagnosing error in knock sensor 17 {id. ^ 32),
diagnosing error in sensor cable 24 {id. ^ 33), and diagnosing error in signal
evaluation device 20 {id. ^ 34). In this regard, the disclosure provided in the
Specification would reasonably convey to one having ordinary skill in the
art, as of the filing date, that Appellants possessed the claimed subject matter
of diagnosing pre-ignition, the diagnosis of pre-ignition including taking the
steps of diagnosing error in the necessary hardware for detecting pre­
ignition, as argued by Appellants. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc).
With respect to claim 12, the Examiner determines that “[t]he
[Specification does not disclose that the diagnosis of the at least one sensors
occurs during the diagnosis of pre-ignition,” as recited in claim 12, but is
instead subject to diagnosis at regular intervals. Final Act. 3. For the same
reasons described above, we find that the disclosure provided in the
Specification would reasonably convey to one having ordinary skill in the
art, as of the filing date, that Appellants possessed the claimed subject matter
of diagnosing error in knock sensor 17, sensor cable 24, and signal
evaluation device 20 as part of a diagnosis of (i.e., detection of) pre-ignition.
4
Appeal 2016-007911
Application 13/820,443
Accordingly, we do not sustain the Examiner’s rejection of claims
1-7, 11-15, 17, and 18 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rejection II
The Examiner rejects claims 12-15, 17, and 18 under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor or a joint
inventor regards as the invention. Final Act. 3—4. In particular, the
Examiner finds that “[i]t is . . . unclear which diagnosis is being referred to
in . . . [the claimed phrase ‘upon detection of a fault in the system by the
diagnosis’] - the diagnosis of pre-ignition or the diagnosis of the at least one
sensor.” Id. at 4. Appellants respond that “upon detection of a fault in the
system (17, 24, 20) by the diagnosis,” as claimed, clearly refers to the
diagnosis of sensor 17, sensor cable 24, and sensor signal evaluation device
20. Appeal Br. 7. We agree with Appellants that the reference to element
numbers 17, 24, and 20 in the claimed phrase clarifies that the claimed
phrase is referring to the diagnosis of sensor 17, sensor cable 24, and sensor
signal evaluation device 20, not the more general diagnosis of pre-ignition.
The Examiner also finds, in particular, that “it is unclear whether the
limitation ‘during diagnosis of pre-ignition’ is intended to convey a time
period during which pre-ignition has been diagnosed or a time period during
which pre-ignition diagnosis is ongoing.” Final Act. 4. Claims, when read
in light of the Specification, must “reasonably apprise those skilled in the art
both of the utilization and scope of the invention” using language “as precise
as the subject matter permits.” In re Packard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014). In determining whether a claim is definite under 35 U.S.C.
5
Appeal 2016-007911
Application 13/820,443
§ 112, “[t]he USPTO, in examining an application, is obliged to test the
claims for reasonable precision according to . . . [this principle].” Id. We do
not view claim 12 as failing to reasonably apprise those of skill in the art of
the scope of the claimed invention, but rather view that “during diagnosis of
pre-ignition” reasonably conveys both a time period during which pre­
ignition has been diagnosed and a time period during which pre-ignition
diagnosis is ongoing.
Accordingly, we do not sustain the Examiner’s rejection of claims
12-15, 17, and 18 under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention.
Rejection III
Appellants argue claims 1-3, 11-15, 17, and 18 as a group. Appeal
Br. 7-9.3 We select claim 1 as the representative claim, and claims 2, 3, 11-
15, 17, and 18 stand or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on Masuda for many of the limitations of
independent claim 1, but acknowledges that Masuda fails to teach
(i) comparing a sensor signal with an upper threshold value in order to detect
a fault in the sensor; (ii) performing a short-circuit test of the sensor cable;
and (iii) monitoring signal capture and signal evaluation and detecting a fault
in the sensor signal evaluation device if implausibilities have occurred
during the signal capture or signal evaluation. Final Act. 4-7. The
Examiner finds that Unland teaches (i) comparing a sensor signal with an
3 Appellants state that “[cjlaims 2-7, 11, 13-15, and 17-18 also include
additional] patentable subject matter not discussed here,” but this does not
amount to a separate argument of the dependent claims. Appeal Br. 9.
6
Appeal 2016-007911
Application 13/820,443
upper threshold in order to detect a fault in a knock sensor (id. at 5 (citing
Unland Abstr.)); that Kashimura teaches (ii) performing a short-circuit test
of a sensor cable (id. at 6 (citing Kashimura 8:29-55, Fig. 1)); and that
Unland teaches (iii) monitoring signal capture and signal evaluation and
detecting a fault in a sensor signal evaluation device if implausibilities have
occurred during the signal capture or signal evaluation (id. at 5-6 (citing
Unland 4:5-6)). The Examiner concludes that it would have been obvious to
one of ordinary skill in the art to modify Masuda to incorporate these
teachings of Unland and Kashimura “for the purpose of preventing hazards
to the internal combustion engine by erroneously shifting the knocking
range” (id. at 6 (citing Unland, 1:9-17)) and “providing] an engine control
apparatus having high reliability” (id. at 7 (citing Kashimura 1:48-50)).
Appellants argue that “detecting knock cannot determine if pre­
ignition occurred, only that one of pre-ignition or post-ignition occurred,”
and consequently, “knock detection is not pre-ignition detection.” Appeal
Br. 7-8. The Examiner responds that “[a] system utilizing a knock sensor
will detect pre-ignition regardless of whether the knock signal alone can be
used to differentiate between pre-ignition and post-ignition,” and
“Appellants] do[] not claim differentiating pre-ignition from post-ignition.”
Ans. 16. We agree with the Examiner. Appellants do not persuade us that
Masuda lacks “[a] method for activing an emergency operational mode in a
system which detects pre-ignition in a combustion engine and which
contains a fault. . . wherein the diagnosis of pre-ignition . . . includes ... [at
least a portion of one of the claimed steps],” as claimed, merely because
Masuda would also detect post-ignition.
7
Appeal 2016-007911
Application 13/820,443
Appellants also argue that “[smarting from the rather complex
algorithm of Masuda [by a Fourier transformation and comparison with a
reference model, a person] skilled in the art had no reason to think into the
direction of the more simple method using multiple steps as claimed [i.e., the
different steps of analyzing the sensor, analyzing the sensor cable, and
monitoring the computer hardware with respect to signal capture and signal
evaluation].” Appeal Br. 8. Appellants further argue that “[t]he [E]xaminer
is simply picking, without any reason, isolated technical features of these
documents and combining them with Masuda.” Id. These arguments are not
persuasive because they do not specifically address the Examiner’s
articulated reasoning to modify Masuda with the teachings of Unland
Kashimura (see Final Act. 6-7 (citing Unland 1:9-17 and Kashimura 1:48-
50)), and do not persuasively explain why the articulated reasoning lacks
rational underpinnings. Moreover, Appellants do not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). As such, we disagree with Appellants’ assertion
that the Examiner relied on improper hindsight (Appeal Br. 8) in reaching
the determination of obviousness of the claimed subject matter.
Appellants also argue that “Kashimura teaches a sensor short circuit
detector 108 for detecting a short circuit of the sensor, not the cable.”
Appeal Br. 9. Appellants assert that in a situation “where a sensor cable is
not short-circuited, but the sensor is, the system of Kashimura would not be
able to determine that the cable was not short circuited.” Id. The Examiner
responds that, “any component of an electrical circuit is short circuited if a
8
Appeal 2016-007911
Application 13/820,443
short circuit exists anywhere in that electrical circuit, unless isolated by a
fuse.” Ans. 19. The Examiner further responds that “[t]he system taught by
Kashimura will detect ‘a short circuit of the sensor cable to a battery voltage
or to an earth is present’ regardless of whether it can identify the location of
the short circuit.” Id. Appellants reply that “the detection of a short circuit
anywhere in a circuit is [not] the same as the claimed detection of a short
circuit in a sensor cable” (Reply Br. 3) and “Kashimura does not teach a
short-circuit test of the sensor cable” {id. at 4). Appellants do not persuade
us that Kashimura lacks “performing a short-circuit test of. . . [a] sensor
cable . . . where a fault is detected if a short circuit of the sensor cable ... to
a battery voltage or to an earth is present,” as claimed, merely because
Kashimura would detect a fault if the short circuit of the sensor cable were
caused by another component in the circuit. Rather, we agree with the
Examiner that a short circuit of one component is properly considered a
short circuit of other components that are not electrically isolated.
Appellants additionally argue that Unland’s teaching of “detecting a
fault in an evaluation circuit” “is not the same as monitoring an evaluation
circuit with respect to signal capture and signal evaluation.” Appeal Br. 9.
The Examiner responds by “maintaining that Unland teaches ‘signal capture
and evaluation’ as Unland teaches reading a signal from a knock sensor and
evaluating that signal to determine whether the sensor or evaluation circuit is
faulty.” Ans. 19. Appellants do not further contest the Examiner’s finding,
and we are not persuaded that the Examiner’s finding regarding Unland’s
teachings are in error.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the combination of Masuda (as evidenced by Hirai), Unland,
9
Appeal 2016-007911
Application 13/820,443
and Kashimura renders obvious the subject matter of independent claim 1.
We sustain the Examiner’s rejection of claim 1, and claims 2, 3, 11-15, 17,
and 18 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over
Masuda (as evidenced by Hirai), Unland, and Kashimura.
Rejections IV and V
Appellants’ arguments in support of the patentability of claims 4-7
solely relate to the perceived deficiencies of Masuda (as evidenced by
Hirai), Unland, and Kashimura. Appeal Br. 9. Because we have found no
such deficiencies, we also sustain the rejections, under 35 U.S.C. § 103(a),
of: claims 4-6 as unpatentable over Masuda (as evidenced by Hirai),
Unland, Kashimura, and Hashizume; and claim 7 as unpatentable over
Masuda (as evidenced by Hirai), Unland, Kashimura, and Kuzuyama.
DECISION
The Examiner’s decision to reject claims 1-7, 11-15, 17, and 18
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject claims 12-15, 17, and 18 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor regards as the invention is reversed.
The Examiner’s decision to reject claims 1-3, 11-15, 17, and 18
under 35 U.S.C. § 103(a) as unpatentable over Masuda (as evidenced by
Hirai), Unland, and Kashimura is affirmed.
10
Appeal 2016-007911
Application 13/820,443
The Examiner’s decision to reject claims 4-6 under 35 U.S.C.
§ 103(a) as unpatentable over Masuda (as evidenced by Hirai), Unland,
Kashimura, and Hashizume is affirmed.
The Examiner’s decision to reject claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Masuda (as evidenced by Hirai), Unland, Kashimura, and
Kuzuyama is affirmed.
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
11