Floyd Cadwell et al.

Patent Trials and Appeals Board

Aug 2, 2019

15044338 - (D) (P.T.A.B. Aug. 2, 2019)

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.
15/044,338 02/16/2016 Floyd CADWELL 83612764 1083
28395 7590 08/02/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
WERNER, ROBERT A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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 FLOYD CADWELL, SHUNSUKE OKUBO, CAROL LOUISE
OKUBO, AND KIMBERLY LOUISE TRICE
Appeal 2019-000656
Application 15/044,338
Technology Center 3700
Before LINDA E. HORNER, DANIEL S. SONG, AND
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 FORD GLOBAL
TECHNOLOGIES, LLC, appeals from the Examiner’s decision to reject

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford
Global Technologies, LLC ("Assignee"), a corporation organized and
existing under the laws of the state of Michigan, and having a place of
business at Fairlane Plaza South, 330 Town Center Drive, Suite 800,
Dearborn, MI 48126, as set forth in the assignment recorded in the USPTO.
Appeal Br. 2.
Appeal 2019-000656
Application 15/044,338

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claims 1–20, which constitute all the claims pending in this application.
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a hybrid vehicle and method of reducing
engine lugging. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A vehicle comprising:
an electric machine;
an engine;
an engine mount securing the engine to the vehicle; and
a controller configured to, in response to compression of
the engine mount, increase an engine speed to a value that is
greater than a base engine speed corresponding to electric
machine speed and engine power demand to reduce engine
lugging.
REFERENCE
The prior art relied upon by the Examiner is:
KOBAYASHI US 2014/0024491 A1 Jan. 23, 2014

REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 2.
Claims 1–2, 7–8, 13, 15, and 16 are rejected under 35 U.S.C.
§ 102(a)(2) as being anticipated by Kobayashi. Final Act. 5.

Appeal 2019-000656
Application 15/044,338

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OPINION
Written Description
The Examiner rejects the claims as lacking written description. See
Final Act. 2–3. According to the Examiner, “[t]he original disclosure does
not describe how compression of the engine mount is determined in a
manner understandable to a person of ordinary skill in the art.” Final Act. 3.
The Examiner also asserts that this is the case both with the measurement of
the magnitude of the compression based on displacement of the engine
relative to the vehicle and estimation of the compression based on a wheel
torque demand and vehicle speed as recited in various dependent claims. Id.
As Appellant correctly points out, however, “[t]he Examiner’s
admission that the original disclosure specifies that the disclosed sensors
measure displacement and that such sensors are known in the art is in direct
contradiction with” the Examiner’s assertion regarding the knowledge of an
ordinary skill in the art. Reply Br. 3. Although Appellant does not disclose
any specific sensors, we agree that one of ordinary skill in the art would
understand that the disclosed general class of displacement sensors is
sufficient. The Examiner has identified no specific problem associated with
the application at issue such that ordinary displacement sensors would be
unsuitable. As to the claimed estimate of the compression, we agree with
Appellant that “the current application clearly states that compression of the
engine mounts increases as wheel torque increases . . . that wheel torque is a
function of vehicle speed[, and t]herefore, engine mount compression is at
least indirectly a function of vehicle speed.” Appeal Br. 5 (citing Spec.
¶¶ 31, 33). We find this description to be a sufficient disclosure to support
Appeal 2019-000656
Application 15/044,338

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Appellant’s claim language. Accordingly, we do not sustain the § 112
rejection.

Anticipation
The Examiner’s rejection over Kobayashi relies on a disclosure in
Kobayashi that considers potential over-torque, which would result in engine
compression if enacted, thus triggering an increase in engine speed. Final
Act. 5 (citing Kobayashi ¶¶ 40, 46‒48); Ans. 9‒10 (citing Kobayashi ¶¶ 42,
46, Fig. 7). The claims, however, require actual compression of the engine
mount to trigger the speed increase. See Appeal Br. 8 (Appellant arguing
that “[s]imply checking if a desired torque is greater than an engine start
to[r]que threshold (which happens to be less than a value where engine
mounting compression occurs) is not an indicator that engine mount
compression is occurring (which is a trigger condition for adjusting the
engine speed in claims 1 and 15).”). Kobayashi runs a series of calculations
to determine if engine mount compression would occur under the given
parameters and then adjusts the parameters to avoid such engine mount
compression. One could say that Kobayashi provides a superior alternative
to Appellant’s method in that it avoids any compression at all by adjusting
before such compression is experienced, but regardless, Kobayashi’s method
is different from Appellant’s claims.
The Examiner asserts that “[n]owhere is a ‘trigger’ claimed.” Ans. 9.
We do not agree that this is a proper interpretation of the claims. Claim 1,
for example, specifically requires that “in response to compression of the
engine mount,” a controller is configured to “increase an engine speed.”
Thus, actual engine mount compression must occur and then the controller
Appeal 2019-000656
Application 15/044,338

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increases speed to alleviate the compression. Independent claims 8 and 15
recite similar limitations. As noted above, Kobayashi never gets to actual
compression because it runs a calculation to avoid such a condition.
Appellant’s claims require a triggering condition by use of the phrase “in
response to.” Although both Kobayashi and Appellant’s claims seek to
achieve the same basic result, they do so in different ways such that
Appellant’s claims do not read on Kobayashi. Accordingly, we do not
sustain the Examiner’s rejections over Kobayashi.
DECISION
The Examiner’s rejections are REVERSED.
More specifically, we REVERSE the Examiner’s written description
rejection as well as the anticipation rejection over Kobayashi.

REVERSED