Robert Wright et al.

Patent Trials and Appeals Board

Dec 30, 2020

2019002597 (P.T.A.B. Dec. 30, 2020)

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.
14/160,916 01/22/2014 Robert WRIGHT 83406710; 67186-060PUS1 1068
46442 7590 12/30/2020
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SOOD, ANSHUL
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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 MARVIN PAUL KRASKA
____________________

Appeal 2019-002597
Application 14/160,9161
Technology Center 3600
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–12 and 15–25, which are all of the pending claims.2 Claims 13
and 14 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In a prior Decision (Appeal Number 2017-003018, decided August 2,
2017, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of
claims 1–13 and 15–21 under 35 U.S.C. § 103(a) over King and Kempton.
Prior Dec. 9.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is Ford
Global Technologies, LLC. See Appeal Br. 2.
Appeal 2019-002597
Application 14/160,916

2
A. INVENTION
According to Appellant, the invention relates to “determining costs
associated with operating an electrified vehicle in a Power Generation
mode.” Spec. ¶ 1.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method, comprising:
controlling a vehicle in a Power Generation mode to
supply power to equipment separate from the vehicle, including
estimating a cost of operating the vehicle in the Power
Generation mode, using a control unit onboard the vehicle, by
multiplying a total fuel consumption by a fuel billing rate,
multiplying a total energy consumption by an energy billing rate,
and multiplying a total run time of the vehicle by a time billing
rate.
C. PRIOR ART
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Name Reference Date
King US 7,960,857 B2 June 14, 2011
Dietz US 2002/0171246 A1 Nov. 21, 2002
Kempton US 2007/0282495 A1 Dec. 6, 2007
Kamachi US 2014/0035512 A1 Feb. 6, 2014

C. REJECTIONS
Claims 1–10 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over King and Kempton.
Claims 11, 12, 15–23, and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over King, Kempton, Kamachi and Dietz.
Appeal 2019-002597
Application 14/160,916

3
II. ISSUES
The main issues before us are whether the Examiner erred in finding
the combination of Kim and Kempton teaches or suggests “controlling a
vehicle in a Power Generation mode” which includes “estimating a cost of
operating the vehicle in the Power Generation mode . . . by . . . multiplying
a total run time of the vehicle by a time billing rate.” Claim 1 (emphasis
added).
III. ANALYSIS
Claims 1–10, and 24
With respect to claims 1–10 and 24, Appellant contends that “King
fails to estimate the cost of operating the vehicle by ‘multiplying a total run
time of the vehicle by a time billing rate.’” Appeal Br. 5. Although
Appellant acknowledges that “Kempton is concerned with understanding
whether it is economically feasible, in general, to implement electric drive
vehicles,” Appellant contends “Kempton’s at equations 9–11 does not take
into account a total run time or a time billing rate of the vehicle.” Id.
According to Appellant, although the Examiner finds “a total run time
of the vehicle” encompasses Kempton’s tplug, Appellant contends that “tplug is
the amount of time in hours that the electric vehicle is plugged in.” Id.
(citing Kempton ¶¶ 56, 58). In particular, “Tplug is not a total run time of the
vehicle because, as more reasonably interpreted, a total run time of the
vehicle would encompass events in addition to just on-plug events.” Id.
While Appellant acknowledges that the Examiner finds “tplug corresponds to
a total run time of the vehicle because tplug is the period of time the vehicle is
actually producing energy for the external load,” Appellant contends that
“[t]here is no support” for such finding but instead, according to Kempton,
Appeal 2019-002597
Application 14/160,916

4
“tplug is only an assumed value that does not appear to be specifically
monitored and recorded.” Id. at 6.
However, the Examiner explains that “for an accurate calculation of
the cost of running the vehicle in a power generation mode, it is clear that
the total run time should be the run time of the vehicle while in the power
generation mode.” Ans. 4. According to the Examiner, in Kempton, “the
vehicle is generating power when it is plugged in and available,” wherein
“[w]hen the vehicle is not plugged in, the vehicle cannot be generating
power for use in a power generation mode.” Id. (citing Kempton ¶ 56). The
Examiner then points to Kempton’s Table 3 as “proof that tplug is in fact a
run time of the vehicle in the power generation mode” because “Table 3 lists
the value of tplug as the time that the vehicle is assumed to be plugged in
daily and generating energy.” Id. (citing Kempton ¶¶ 62, 64).
We have considered all of Appellant’s arguments and evidence
presented. However, we find that the preponderance of the evidence on this
record supports the Examiner’s legal conclusion that the claims would have
been obvious over the combination of King and Kempton.
As Appellant acknowledges, like the claimed invention, “Kempton is
concerned with understanding whether it is economically feasible, in
general, to implement electric drive vehicles.” Ans. 5. In particular,
Kempton determines the economic value of implementing an electric vehicle
by comparing the summed calculated costs to the total revenue amount. See
Kempton, Abstract. The Examiner finds that, as part of calculating the
costs, Kempton multiplies the time billing rate “by the total time energy
[that] is being produced/used, which Kempton gives as tplug,” wherein
“Kempton defines tplug as ‘the time in hours the EDV is plugged in and
Appeal 2019-002597
Application 14/160,916

5
available,’” i.e., “the period of time the vehicle is actually producing energy
for the external load (the grid in Kempton’s example), as ‘plugged-in,
enough fuel or charge, and contract for this house has been confirmed.’”
Final Act. 2 (citing Kempton ¶¶ 56, 58).
In Kempton, the revenue is calculated as follows:
r = (pcapPtplug) + (petEdisp)
where pcap is the capacity price, pet is the electricity price, P is the contracted
capacity available, tplug is the time in hours the vehicle is plugged in and
available, and Edisp is the energy dispatched. Kempton ¶ 56.
Kempton’s Table 3 is reproduced below:

Table 3 of Kempton shows the parameters used in calculating the
revenue and cost. Kempton ¶ 62. As shown in Table 3, Kempton discloses
that tplug of 6570 hours is calculated by assuming the vehicle is plugged in 18
hours per day, for 365 days per year. We are persuaded by the Examiner’s
finding that Kempton at least provides a suggestion of estimating the total
run time of the vehicle in the power generating mode since Kempton
discloses tplug of 6570 hours per year, i.e, 18 hours per day for 365 days,
which according to the Examiner, is the estimated total period of time for the
Appeal 2019-002597
Application 14/160,916

6
entire year that “the vehicle is actually producing energy for the external
load.” Final Act. 2 (citing Kempton ¶¶ 56, 58).
Although Appellant contends that “[Kempton’s] tplug is only an
assumed value that does not appear to be specifically monitored and
recorded” (Appeal Br. 6), as the Examiner points out, “the claim language
does not require the total run time of the vehicle to be ‘specifically
monitored and recorded.’” Ans. 4. See Spec. ¶ 31.
In the Reply Brief, Appellant adds that “the specification clearly
contemplates that a total run time of the vehicle during Power Generation
mode includes vehicle off-plug operations.” Reply Br. 3. According to
Appellant, “a person of ordinary skill in the art would understand that a total
run time of the vehicle would indeed encompass events in which the vehicle
is unplugged and operating in the Power Generation Mode,” wherein
Kempton only “contemplates an amount of time that the vehicle is plugged
in” during operation. Id. at 4.
As an initial matter, it is untimely for Appellant to discuss for the first
time in the Reply Brief matters that could have been raised in the Appeal
Brief. “The failure to raise all issues and arguments diligently, in a timely
fashion, has consequences,” and thus, such newly raised arguments are
technically waived. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision) (“[The reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”). Cf. Kaufman Company v.
Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986) and McBride v.
Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
Appeal 2019-002597
Application 14/160,916

7
Nevertheless, we are unpersuaded by Appellant’s contention that a
person of ordinary skill in the art “would understand that a total run time of
the vehicle would indeed encompass events in which the vehicle is
unplugged and operating in the Power Generation Mode.” Reply Br. 4. In
particular, we are unpersuaded by Appellant’s argument that such
interpretation of “total run time” by the Examiner is “not reasonable because
it contradicts . . . the specification.” Id. That is, although we interpret
claims reasonably in light of the Specification, we nonetheless, must not
import limitations from the specification in to the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Here, we find that the skilled artisan, upon reading Kempton’s
determination of the summed calculated costs to compare to the total
revenue amount, would at least have found a suggestion of determining the
cost of the total run time of the vehicle to compare to the total revenue
amount. We find that such determination of the total run time to be no more
than one would expect from such an arrangement. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). That is, the artisan would have
found it obvious that determining the plug in time of 18 hours per day for
365 days would comprise the estimated total period of time for the entire
year that “the vehicle is actually producing energy for the external load” or
comparison with the revenue amount, as the Examiner finds. Final Act. 2.
The skilled artisan is “a person of ordinary creativity, not an automaton.”
See KSR, 550 U.S. at 420–21.
With respect to claim 24, Appellant adds that, in Kempton, “the total
fuel consumption costs and total energy consumption costs are calculated
together rather than separately.” Appeal Br. 6. However, we are not
Appeal 2019-002597
Application 14/160,916

8
persuaded. As the Examiner explains, one of ordinary skill in the art would
have understood that “cpe would therefore be equal to cpe,gas + cpe,elec, where
cpe,gas is the purchase cost of gasoline and cpe,elec is the purchase cost of
electricity,” and thus, “[w]hen cpe is thereby multiplied by Edisp, by the
distributive property the result becomes (cpe,gas*Edisp)+(Cpe,elec*Edisp).”
Ans. 5. We are unpersuaded that the Examiner erred in finding that “it is
clear to those of ordinary skill in the art that . . . for a hybrid electric vehicle,
the multiplying the total fuel consumption by the fuel billing rate is
calculated ‘separately’ from the multiplying the total energy consumption by
the energy billing rate” because “there are two types of fuel costs to take into
account in the power generation.” Id.
On this record, we find no error in the Examiner’s rejection under
§ 103 of claims 1–10 and 24 over the combination of King and Kempton.
Claims 11, 12, 15–23, and 25
As for claim 11, Appellant contends that Kamachi’s adapter 20 is not
“mounted” to an exposed wall of the vehicle, but instead, is “a completely
separate device from the vehicle,” and that “Dietz does not describe how or
where the power consumers are plugged into the vehicle. Appeal Br. 7–8.
Appellant then contends that there is no “reasoned” statements to support the
legal conclusion of obviousness. Id. at 8. However, the Examiner points out
that the Examiner is not relying on adapter 20 in Kamachi, but “rather the
charge port 12,” wherein it “is clear in at least Figure 2 and the Abstract of
Kamachi [that] the charge port 12 is mounted to an exposed wall of the
vehicle and includes a power outlet.” Ans. 6. The Examiner then points out
that “Appellant ignores the clearly articulated rational underpinning found in
the previous Office Action in the rejection of claim 11.” Ans. 6.
Appeal 2019-002597
Application 14/160,916

9
We find no error with the Examiner’s finding with respect to “chart
port 12.” Ans. 6. Further, we find the Examiner has provided an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Here, we find the modification is no more than a simple arrangement
of known elements, with each performing the same function it had been
known to perform, yielding no more than one would expect from such an
arrangement. See KSR, 550 U.S. at 417.
As for independent claim 15 and 21, Appellants contend the
combination of references fails to teach or suggest the additional limitations
recited therein. Appeal Br. 9–10. However, we find no error with the
Examiner’s finding that the combination of King, Kempton, Kamachi and
Dietz discloses and suggests such limitations, wherein it would have been
obvious to apply combine the references which “would yield no unexpected
result and would be no more than a simple arrangement of known elements,
with each performing the same function it had been known to perform.”
Ans. 7–8.
As for the other claims not argued by Appellants, we summarily
affirm the rejection of those claims over King, Kempton, Kamachi and
Dietz.3

3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2019-002597
Application 14/160,916

10
IV. CONCLUSION
We affirm the Examiner’s rejection of claims 1–12 and 15–25 under
35 U.S.C. § 103(a).
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–10, 24 103(a) 1–10, 24
11, 12,
15–13, 25
103(a) 11, 12,
15–23, 25

Overall
Outcome
1–12, 15–
25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED