Ex Parte YacoubDownload PDFPatent Trial and Appeal BoardMay 18, 201612853621 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/853,621 08/10/2010 28395 7590 05/20/2016 BROOKS KUSHMAN P,CJFG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Yasser Mohamed sayed Yacoub 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. 83159962 6198 EXAMINER RAEVIS, ROBERT R ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YASSER MOHAMED SAYED YACOUB 1 Appeal2014-006604 Application 12/853,621 Technology Center 2800 Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's maintained rejection of claims 1--4, 6-8, and 21-26. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). BACKGROUND Appellant's invention relates to a method for determining drift in fuel metering or in air metering in an internal combustion engine by estimating 1 Appellant identifies Ford Global Technologies, LLC as the Real Party in Interest. Appeal Brief filed March 6, 2014 ("App. Br."), 1. Appeal2014-006604 Application 12/853,621 NOx (nitrogen oxide) expected in exhaust from the engine based on the measured values for fuel and/or air and comparing that to the actual level of NOx produced. Spec. Abstract, 1: 14-16; claims 1, 21, 24. Independent claims 1 and 21 are illustrative: 1. A method for identifying drift in at least one of fuel metering and air metering in an internal combustion engine, compnsmg: using an electronic control unit to estimate a first NOx value based at least on a measured mass air flow; measuring NOx; and determining a first delta N Ox value based on a difference between the first NOx value and the measured NOx. 21. A method for detecting drift in at least one of air metering and fuel metering in an engine, comprising: estimating NOx using an engine controller based on at least one measured parameter; measuring N Ox using at least one sensor; determining a delta NOx based on the estimated NOx and the measured NOx; and detecting drift in air metering when the delta NOx is less than an associated threshold. App. Br. Claims Appendix 1-2. THE REJECTIONS The Examiner maintains2 rejections of: Claims 1--4, 6-8, and 21-26 under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement; Claim 22 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement; 2 An additional ground of rejection of claims 1 and 4 under 35 U.S.C. § 102(b) over Fisher et al. (US 2008/0202098 Al, published August 28, 2008) has been withdrawn. Ans. 5. 2 Appeal2014-006604 Application 12/853,621 Claims 21 and 23 under 35 U.S.C. § 112, second paragraph as being indefinite; and Claims 1and4 under 35 U.S.C. § 102(e) as anticipated by Fujiti. 3 DISCUSSION4 Upon consideration of the evidence and opposing contentions of Appellant and the Examiner, we are persuaded the Examiner erred reversibly in rejecting the claims as lacking enablement, as lacking written description, and as being anticipated by Fujiti, but are unpersuaded that the Examiner erred in rejecting claims 21 and 23 for indefiniteness. We further conclude claims 1, 4, and 6 are indefinite for the same reasons. It follows we affirm the indefiniteness rejection of claims 21 and 23, enter a new ground of rejection of claims 1, 4, and 6 for indefiniteness, and reverse the rejections on all other grounds. We add the following. 3 5 U.S. C. § 112, first paragraph (Enablement) The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficient to enable a person 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). When rejecting a claim for lack of enablement, the Office bears the initial burden of setting forth a reasonable explanation why the scope of the claim is not adequately enabled by the application's disclosure as filed. In re Wright, 999 F.2d 1557, 1561- 3 Fujiti et al. (US 2011/0041481 Al, published February 24, 2011). 4 We refer to the Office Action (mailed October 9, 2013) ("Office Act."), the Appeal Brief (filed March 6, 2014) ("App. Br."), the Examiner's Answer (mailed April 29, 2014) ("Ans."), and the Reply Brief (mailed May 12, 2014) ("Reply Br."). 3 Appeal2014-006604 Application 12/853,621 62 (Fed. Cir. 1993). Factors that may be considered in determining whether undue experimentation would be required include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737. In rejecting claims 1--4, 6-8, and 21-26 for lack of enablement, the Examiner focuses on the determination ofNOx values based on a NOx model based on various recited factors. Ans. 2-3; 5-6. The Examiner cites the lack of an algorithm and maintains that the five variables that are set forth-fuel mass flow, lambda, MAP, burned mass proportion in the intake gas, and operating state-are non-enabling without an algorithm. Ans. 5-6 (citing Spec. 4, 11. 29-34). The Examiner's conclusory determination, however, is inadequate to establish a prima facie case because it fails to demonstrate, via, for example, application of the Wands factors, that undue experimentation would be required to make and use the claimed invention. We reverse the Examiner's rejection for lack of enablement. 3 5 U.S. C. § 112, first paragraph (Written Description) The critical issue regarding the adequacy of a disclosure to satisfy the written description requirement is whether the originally filed Specification contains a written description of the invention. "The requirement is met if 'the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter."' In re Lampi, 228 F.3d 1365, 1378 (Fed. Cir. 2000) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. 4 Appeal2014-006604 Application 12/853,621 Cir. 1985)). "[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention as defined by the claims." In re Gostelli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). "If ... the specification contains a description of the claimed invention, albeit not in ipsis verb is (in the identical words), then the examiner ... , in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient." In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). In rejecting claim 22 for a lack of written description, the Examiner maintains that Figure 2 of the instant Specification discloses detecting drift in fuel metering based on a NOx value estimated before estimating a NOx value to detect drift in mass air flow. Ans. 3, 6. The Examiner further relies on the decision block 6 as limiting the order to that disclosed in Figure 2. Ans. 6. On this basis, the Examiner reasons there is a lack of support for detecting drift in fuel metering based on a second estimated NOx value. Ans. 3, 6. We do not find the Examiner's position to be well founded. As highlighted by Appellant's arguments (App. Br. 5), the determination of air metering drift and fuel metering drift are separate calculations and designation of estimated NOx values for their calculation as first or second is arbitrary. "As a general rule, ' [ u ]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one."' Mformation Techs., Inc. v. Research in Motion, Ltd., 7 64 F .3d 1392 (Fed. Cir. 2014) (quoting Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). Further, the Examiner has failed to explain why the statement "[b ]y comparing the measured NOx to modeled 5 Appeal2014-006604 Application 12/853,621 NOx, drift can be attributed appropriately to the air flow measurement and/or the fuel flow measurement" (Spec. Abstract) would not be sufficient to reasonably convey possession to one of ordinary skill in the art of a method in which drift in mass air flow was determined based on a first estimated NOx value and drift in fuel metering was determined based on a second estimated NOx value. See In re Alton, 76 F.3d at 1175. For these reasons, we reverse the Examiner's rejection of claim 22 for lack of written description. 35 U.S.C. § 112, second paragraph (Indefiniteness) Section 112 requires that "[t]he specification ... conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, second paragraph. "As the statutory language of 'particular[ity ]' and 'distinct [ ness]' indicates, claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms." Irz re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Our reviewing court has held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirement the claims be definite. Id. at 1313-1314. The court explained a satisfactory response can take the form of modification of the language identified as unclear, a separate definition of the unclear language, or, in appropriate circumstances, "persuasive 6 Appeal2014-006604 Application 12/853,621 explanation for the record of why the language at issue is not actually unclear." Id. at 1311. In rejecting claim 21, and claim 23 dependent therefrom, as indefinite, the Examiner identifies that the preamble's recitation of "detecting drift in at least one of air metering and fuel metering" introduces ambiguity where the body of the claim only recites detecting drift in air metering. Ans. 4, 6-7. We find the Examiner's position well founded where detecting drift in fuel metering would be "detecting drift in at least one of air metering and fuel metering" and nothing in the body of the claim is directed to detecting drift in fuel metering. Claim 21. Appellant sets forth that "[t]he preamble states that the method includes either (or both) of two alternatives, and the steps perform one of the two alternatives" and cites a Board decision that held "A and/or B language in a claim is not indefinite" App. Br. 5-6 (citing Ex Parte Gross (Appeal No. 2011-004811, Decision mailed January 3, 2014) ("Ex parte Gross")). Appellant further argues it is inconsistent to reject claim 21 on this ground, but not claim 1 using similar alternative language in the preamble. Reply Br. 4-5. Appellant's argument is not a satisfactory response because it fails to address the identified ambiguity in claim 21 where one alternative set forth in the preamble-detecting drift in fuel metering-is not set forth in the body of the claim. Appellant's reliance on Ex Parte Gross is misplaced as it merely stands for the undisputed proposition that "A and/or B language" is not in and of itself indefinite; the alternative language at issue in the case was within the body of the claim. On this record, therefore, we do not find Appellant has met their burden to resolve the ambiguity of the claims 7 Appeal2014-006604 Application 12/853,621 identified by the Examiner and so we affirm the Examiner's rejection of claims 21 and 23 under 35 U.S.C. § 112, second paragraph for indefiniteness on this basis. As to independent claim 1, the same discrepancy between the preamble and body of the claim properly leads to the same conclusion that the claim is indefinite where the recited steps relate solely to determination of drift in air metering. Claim 1. Accordingly, we enter a new ground of rejection of indefiniteness as to claim 1 and claims 4 and 6 dependent therefrom. 37 C.F.R. § 4 l.50(b ). 35 U.S.C. § 102(e) Anticipation is established only when a single prior art reference discloses, either expressly or under the principles of inherency, each and every element of the claimed invention. In re Spada, 911 F.2d 705, 707 (Fed. Cir. 1990). "[T]he Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On the record before us, we find the Examiner has failed to meet the initial burden to establish a prima facie case. Claim 1 requires obtaining an estimated NOx value based on at least measured mass air flow and also measuring NOx. Claim 1. The Examiner relies on Fujita's disclosure of a method in which a sensor measures the NOx concentration to obtain a "NOx concentration Cnl" which is used with a "gas flow rate V gt ... calculated from the volume Va of intake air detected by an air mass flow sensor" to obtain a first NOx value (Vnl). Ans. 10 (citing Fujita iii! 110, 111). The Examiner treats the first NOx value (Vnl) as an estimate because"[ m ]easurements are never 8 Appeal2014-006604 Application 12/853,621 100% accurate" (Ans. 4) and because it is a calculated value-"Fujita's first Nox [sic] value (Vnl) is 'calculated' ... and therefore an estimate" (Ans. 10). The Examiner then relies on Fujita's Vn2 for the recited, measured NOx value. Ans. 4. Fujita's Vn2 is, however, also a calculated value. Fujita ,-i 111 ("The volume Vnl ofNOx ... is calculated from the first exhaust gas flow rate Vga and the second NOx concentration Cn2."). The value for Vga, further, is "found from valve lifts ... by referring to a beforehand found relationship among the value lifts ... the exhaust flow rate V gt, and the first exhaust flow rate Vga." Fujita ,-i 110. It follows, therefore, that it cannot reasonably be that Vnl is an estimated NOx value and Vn2 is a measured NOx value within the meaning of the claims. See Bd. Of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) ("Different claim terms are presumed to have different meanings."). The Examiner fails to explain why one is considered, within the meaning of the claims, an estimated value while the other a measured value. Generally, Office Act.; Ans. We will not tum to impermissible speculation or unfounded assumptions or rationales to cure the deficiencies in the rejections before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). On the record before us, we find the Examiner has failed to establish a prima facie case of anticipation by Fujita of claims 1 and 4. For this reason, we reverse the Examiner's maintained anticipation rejection of claims 1 and 4 over Fujita. 9 Appeal2014-006604 Application 12/853,621 CONCLUSION The Examiner's rejection under 35 U.S.C. § 112, second paragraph of claims 21 and 23 is AFFIRMED. The Examiner's rejections under 35 U.S.C. § 112, first paragraph of claims 1--4, 6-8, and 21-26 as lacking enablement and claim 22 as lacking written description are REVERSED. The Examiner's rejection under 35 U.S.C. § 102(e) of claims 1and4 as anticipated is REVERSED. We enter a NEW GROUND OF REJECTION for claims 1, 4, and 6 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that a "new ground of rejection ... shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of proceedings as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . .. (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record .... 10 Appeal2014-006604 Application 12/853,621 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-IN-PART; 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation