Samuel Moser et al.

Patent Trials and Appeals Board

Sep 13, 2019

14342458 - (D) (P.T.A.B. Sep. 13, 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.
14/342,458 03/25/2014 Samuel Moser 160592 3799
92793 7590 09/13/2019
OLIFF PLC (with Nony)
P.O. Box 320850
Alexandria, VA 22320-4850
EXAMINER
GONZALEZ, JULIO CESAR
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
OfficeAction92793@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMUEL MOSER, JEAN-MARIE ANDREJAK,
and PATRICE BETGE1
____________________

Appeal 2018-002320
Application 14/342,458
Technology Center 2800
____________________

Before JENNIFER S. BISK, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1–7, which are all claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
August 13, 2019.
We affirm.

1 According to Appellants, the real party in interest is Moteurs Leroy-
Somer. App. Br. 1.
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STATEMENT OF THE CASE
The Invention
Appellants’ disclosed embodiments and claimed invention relate to
regulating the operation of a generator set. Spec. 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A method for regulating the injection of fuel into a fuel
engine of a generator set comprising an alternator driven by the
fuel engine, the generator set having at least one speed sensor
for sensing the speed of the fuel engine and a speed regulator,
the speed regulator receiving as input at least a signal
originating from the at least one speed sensor, the method
comprising:
detecting an increase in the load at the output of the alternator
based on at least one electrical quantity at the output of the
alternator, and
when an increase in the load is detected, replacing at least one
value delivered by the at least one speed sensor with at least
one predefined value as input for the speed regulator of the
engine, so as to simulate a slowing down of the engine, and
thus cause the engine to accelerate as soon as the increase of
the load is detected and before the engine has dropped in
speed.
Rejections on Appeal
Claims 1–7 stand rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written-description requirement.
Final Act. 4–7.
Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Desai et al. (US 2010/0241283 A1; published Sept. 23, 2010)
(“Desai”).
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Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103(a) as obvious
over Desai.
Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Desai and Eaton et al. (US 2011/0175372 A1;
published July 21, 2011) (“Eaton ’372”).
Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Eaton ’372 and Eaton et al. (US 6,555,929 B1;
issued Apr. 29, 2003) (“Eaton ’929”).
Claims 1–7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Desai, Eaton ’372, Eaton ’929, and Zagranski et al.
(US 2004/0093151 A1; published May 13, 2004).

ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Based on
Appellants’ arguments (App. Br. 5–13; Reply Br. 2–5) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of claims 1–7 on the basis of representative claim 1.
Rejection of Claims 1–7 Under 35 U.S.C. § 112, First Paragraph
The Examiner rejected claims 1–7 for lack of written description
because “[t]he claims disclose the implementation of a regulator, which is
able to detect an increase in the load and replace a value with a predefined
value,” but “the present disclosure does not provide an adequate explanation
of how such value replacement is done.” Final Act. 4. The Examiner also
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found that “the [S]pecification is vague with respect to the simulation
process and how it is done and applied to the present invention.” Id. at 5
(emphasis omitted).
Appellants contend that the Examiner erred because “[t]he present
invention discloses a regulation method and not a simulation process.” App.
Br. 5. Appellants argue that the process for the replacement of the value is
shown in Figures 4A and 4C and described on page 5, line 19, to page 6, line
14, of the Specification. Id.
Compliance with the written-description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification, but the disclosure as
originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir.
1991) (“[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.”).
The Specification describes regulation system 9, which is arranged to
detect a load variation based on the voltage at the output of the alternator.
Spec. 5. In nominal operation, regulation system 9 retransmits a signal from
sensor 5 to speed regulator 4. Id.; Fig. 4B. When a load impact occurs,
however, regulation system 9 sends a replacement signal 102 to speed
regulator 4 before sensor 5 has detected a speed variation. Spec. 6; Fig. 4B.
The replacement signal 102 simulates a slowing down of engine 2, which
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causes speed regulator 4 to increase the power of the engine to accelerate
and counter this slowing down. Id.
In the Answer, the Examiner did not adequately explain why the
disclosure on page 5, line 19, to page 6, line 14, of the Specification is
insufficient to satisfy the written-description requirement. See Ans. 7. Thus,
the original Specification and its attendant drawings (Figs. 3, 4A–4C)
adequately describe the disputed limitation
replacing at least one value delivered by the at least one speed
sensor with at least one predefined value as input for the speed
regulator of the engine, so as to simulate a slowing down of the
engine, and thus cause the engine to accelerate as soon as the
increase of the load is detected and before the engine has
dropped in speed.
We are of the opinion that the originally filed Specification and
drawings demonstrate that Appellants had possession of the claimed subject
matter at the time the application was filed. We, therefore, determine that
the original disclosure satisfies the written-description requirement of
35 U.S.C. § 112, first paragraph, and we reverse the Examiner’s rejection of
claims 1–7.
Objection to Drawings
The Examiner objected to the drawings because an “algorithm with
respect to the controlling aspect of the present invention and structure related
to the controller are not illustrated.” Final Act. 3.
Ordinarily, an objection is reviewable by petition under 37 C.F.R.
§ 1.181, and a rejection is appealable to the Patent Trial and Appeal Board.
When the issue of new matter presented is the subject of both an objection
and a rejection, the issue is appealable. See Manual of Patent Examining
Procedure § 608.04(c) (9th ed., Rev. 07.2015, Nov. 2015) (providing that
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“where the alleged new matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even though that
new matter has been introduced into the specification also”).
In this case, as discussed above, Figures 3 and 4A–4C of the subject
application illustrate
replacing at least one value delivered by the at least one speed
sensor with at least one predefined value as input for the speed
regulator of the engine, so as to simulate a slowing down of the
engine, and thus cause the engine to accelerate as soon as the
increase of the load is detected and before the engine has
dropped in speed.
See Spec. 5–6. As also discussed above, the claimed subject matter need not
be described identically in the Specification. See Kaslow, 707 F.2d at 1375.
To the extent that the objections to the drawings and Specification in the
Final Office Action turn on the same issue(s) as the rejection under
35 U.S.C. § 112, first paragraph, our decision with respect to the § 112
rejection is dispositive as to the corresponding objection(s).
Rejection of Claims 1–7 Under 35 U.S.C. § 103(a)
Appellants argue all of the § 103(a) rejections together. App. Br. 7.
Appellants argue independent claims 1 and 5, and dependent claims 2–4, 6,
and 7, as a group. Id. at 7–12. Based on Appellants’ arguments (id.) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
obviousness rejections of claims 1–7 on the basis of representative claim 1.

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Rejection of Claims 1–7 over Desai, Eaton ’372, Eaton ’929, and Zagranski
We are not persuaded by Appellants’ arguments with respect to the
obviousness rejections of claims 1–7 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this Appeal is
taken (Final Act. 2–17), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 2–11). We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellants address each of the prior-art references individually in the
Appeal Brief. App. Br. 7–12. Nonobviousness, however, cannot be
established by attacking the references individually when, as here, the
rejection is based upon a combination of prior-art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
The Examiner found that the combination of Desai, Eaton ’372, Eaton
’929, and Zagranski teaches the limitation
replacing at least one value delivered by the at least one speed
sensor with at least one predefined value as input for the speed
regulator of the engine, so as to simulate a slowing down of the
engine, and thus cause the engine to accelerate as soon as the
increase of the load is detected and before the engine has
dropped in speed,
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as recited in claim 1. See Final Act. 8–11; Ans. 8–11. Because Appellants
argue the references individually and do not address the Examiner's
combination of the teachings, we are not persuaded by Appellants’ argument
that the Examiner erred in rejecting claims 1–7 over the combination of
Desai, Eaton ’372, Eaton ’929, and Zagranski. See Merck, 800 F.2d at 1097;
Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claims
1–7 over the combination of Desai, Eaton ’372, Eaton ’929, and Zagranski.
Rejection of Claims 1–4 over Eaton ’372 and Eaton ’929
As discussed above with regard to claims 1–7, because Appellants
argue the references individually and do not address the Examiner’s
combination of the teachings (see Final Act. 10–11), we are not persuaded
by Appellants’ argument that the Examiner erred in rejecting claims 1–4
over the combination of Eaton ’372 and Eaton ’929. See Merck, 800 F.2d at
1097; Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claims
1–4 over the combination of Eaton ’372 and Eaton ’929.
Rejection of Claims 1–4 over Desai and Eaton ’372
As discussed above, because Appellants argue the references
individually and do not address the Examiner’s combination of the teachings
(see Final Act. 9–10), we are not persuaded by Appellants’ argument that the
Examiner erred in rejecting claims 1–4 over the combination of Desai and
Eaton ’372. See Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claims
1–4 over the combination of Desai and Eaton ’372.

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Rejection of Claims 1, 2, and 4 over Desai
Appellants argue that the Examiner erred because Desai does not
teach that a value delivered by the speed sensor is replaced with at least one
predefined value as input for the speed regulator of the engine in case of a
load increase, as claim 1 requires. App. Br. 7.
We are not persuaded by Appellants’ argument. The Examiner found
that Desai teaches replacing a value by values stored in computer memories.
Ans. 9 (citing Desai ¶¶ 17–19, 24, 26, 27, 34, 35, 41); Final Act. 8–9 (citing
Desai ¶¶ 8, 17–19, 21, 24–28). The Examiner also found that Desai teaches
replacing value(s) by using feedback control in order to
control/change/replace the engine speeds and/or timing and use a “desired
operating parameter value.” Ans. 9 (citing Desai ¶¶ 24, 39). The Examiner
found that engine 12 in Desai sends feedback signals, such as engine speed,
to engine control module 30. Final Act. 8 (citing Desai ¶¶ 18, 24, Figs. 2,
3). The Examiner found Desai further teaches that Desai’s engine control
module 30 controls operation of engine 12 by generating fueling commands
and/or air intake commands, which control the speed of engine 12. See Ans.
9 (citing Desai ¶ 24). Appellants acknowledge that in Desai, when a change
in the load is detected, operating parameter values are sent to fuel injectors
to change their working operation so as to reduce or avoid the deviation of
the engine caused by the change in load. App. Br. 8. Desai further teaches
that engine control module 30 may store in memory thresholds and/or ranges
of acceptable values for the operational parameters of engine 12. See Ans. 9
(citing Desai ¶¶ 18, 19, 24, 26).
Appellants have not persuasively rebutted the Examiner’s findings.
Instead, Appellants further argue that Desai does not teach that a “speed
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value” is replaced. App. Br. 8. Claim 1, however, does not recite a “speed
value.” Nor have Appellants persuaded us that claim 1 somehow requires a
“speed value.” Rather, the plain language of claim 1 states
replacing at least one value delivered by the at least one speed
sensor with at least one predefined value as input for the speed
regulator of the engine, so as to simulate a slowing down of the
engine, and thus cause the engine to accelerate as soon as the
increase of the load is detected and before the engine has
dropped in speed
(emphasis added). According to Appellants’ Specification, a speed regulator
receives a signal from a sensor and computes the appropriate fuel injection
level. Once a load variation is detected, a regulation system sends the speed
regulator a replacement signal, which causes the speed regulator to increase
the power of the engine by modifying the flow rate of fuel injected into
engine 2. Spec. 6.
Similarly, in Desai, “[i]t is contemplated that some or all operating
parameters of fuel injectors 24 may be electronically controlled.” Desai
¶ 18. Specifically, Desai teaches that
[e]ngine control module 30 may receive feedback signals from
engine 12 such as, for example, engine temperature, engine
speed, fuel injection timing, fuel injection quantity, fuel
pressure, air temperature, air pressure, and/or air-fuel ratio.
Engine control module 30 may be operable to use these
feedback signals to monitor operation of engine 12. Engine
control module 30 may also be configured to control operation
of engine 12 by generating control commands such as, for
example, fueling commands and/or air intake commands.
Id. ¶ 24 (emphasis added). In addition, Desai teaches that the control
commands may be predefined values. Ans. 9 (citing Desai ¶ 27).
Appellants argue that the operating parameter values of Desai are not
“equivalent to” the predefined value of claim 1, “as they are not input from
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the engine control module 30 and do not replace the feedback signals.” App.
Br. 8.
Appellants’ argument is not persuasive. The test for obviousness is
not whether the prior-art element is “equivalent to” a recited claim element,
but rather whether the claimed subject matter would have been obvious to
those of ordinary skill in the art. See Keller, 642 F.2d at 425. Moreover, the
Examiner relied on paragraphs 17, 27, and 28 of Desai as teaching
“replacing at least one value delivered by the speed sensor with at least one
predefined value.” Final Act. 8–9. Paragraph 27 of Desai teaches, for
example, that an automatic voltage regulator may process input signals
received from engine control module 30, generate output signals based on
the input signals, and deliver the output signals to engine control module 30,
as appropriate. Desai ¶ 27. Appellants have not persuaded us that this
disclosure in Desai does not at least suggest “replacing at least one value
delivered by the speed sensor with at least one predefined value,” in light of
the other cited teachings of Desai. In other words, Appellants have not
persuasively rebutted the Examiner’s findings with regard to the disputed
limitation.2
For these reasons, we sustain the Examiner’s § 103(a) rejection of
claims 1, 2, and 4 over Desai.
Rejection of Claims 1, 2, and 4 Under 35 U.S.C. § 102(b)
Because the Examiner made the § 102 and § 103 rejections of claims
1, 2, and 4 over Desai “in the alternative” (Final Act. 8), and because we

2 Appellants were given the opportunity to address paragraphs 27 and 28 of
Desai during the oral hearing held on August 13, 2019, but Appellants did
not persuasively or specifically address those paragraphs. See Hr’g Tr. 7:1–
17.
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have affirmed the § 103(a) rejection of claims 1, 2, and 4 over Desai, we pro
forma reverse the Examiner’s § 102(b) rejection of claims 1, 2, and 4 over
Desai.

DECISION
We affirm the Examiner’s decision rejecting claims 1–7 under
35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 1–7 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision rejecting claims 1, 2, and 4 under
35 U.S.C. § 102(b).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–7 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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