Yasser Mohamed Sayed. Yacoub et al.

Patent Trials and Appeals Board

Sep 27, 2019

13934150 - (D) (P.T.A.B. Sep. 27, 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.
13/934,150 07/02/2013 Yasser Mohamed sayed Yacoub 83368397 3427
36865 7590 09/27/2019
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
usptomail@mccrus.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 and
CHRISTIAN WINGE VIGILD
__________

Appeal 2017-009884
Application 13/934,1501
Technology Center 3700
____________

Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–3, 6–8, 12–16, 18, 19, 21, and 22,
which are all the claims pending in the Application. We have jurisdiction
under 35 U.S.C. § 6(b). Appellants’ counsel appeared for oral hearing on
September 12, 2019.
We REVERSE.

1 Appellants identify “Ford Global Technologies, LLC” as the real party in
interest. Appeal Br. 3 (filed Jan. 11, 2017).
Appeal 2017-009884
Application 13/934,150

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STATEMENT OF THE CASE
Appellants’ “disclosure relates to a method for the measurement
of relative air humidity in a fresh air induction tube of an internal
combustion engine.” Spec. 1:9–10. Independent claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A method for measurement of relative air humidity in a fresh
air induction tube of an internal combustion engine,
comprising:
measuring a concentration of oxygen in the fresh air
induction tube by an oxygen sensor;
determining a temperature in the fresh air induction tube;
if the temperature in the fresh air induction tube is within
a range, determining the relative air humidity at a controller as a
function of the measured concentration of oxygen and the
determined temperature, without a humidity sensor;
if the temperature in the fresh air induction tube is below
the range, calibrating the oxygen sensor by setting a current
output value of the oxygen sensor equal to a predetermined
concentration of oxygen, heating air in the fresh air induction
tube to bring the temperature in the fresh air induction tube into
the range, and then determining the relative air humidity at the
controller as a function of the measured concentration of
oxygen and the determined temperature, without a humidity
sensor; and
if the temperature in the fresh air induction tube is above
the range, cooling the air in the fresh air induction tube to bring
the temperature in the fresh air induction tube into the range
and then determining the relative air humidity at the controller
as a function of the measured concentration of oxygen and the
determined temperature, without a humidity sensor.

Appeal Br. 33, Claims App. (emphasis added).

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Application 13/934,150

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REJECTIONS2
Claims 1–3 and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Miyake,3 Ishida,4 Zubeck,5 ICT International,6 Hart,7
and Huang.8
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Miyake and Kitahara.9
Claims 8 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Miyake, lshida, IC International, and Xiao.10
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Miyake and Kohno.11
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over
Miyake and Van Nieuwstadt.12

2 “The rejections under 35 U.S.C. 101 and 112 are withdrawn for previously
presented and amended claims, however new claims 21 and 22 would be
rejected under 35 U.S.C. 101 and 112.” Advisory Act. 2 (mailed Dec. 8,
2016). Although Appellants request our review as to claims 21 and 22
(Appeal Br. 9), we note that no new grounds of rejection were entered in the
Examiner’s Answer.
3 US 7,281,368 B2, issued Oct. 16, 2007.
4 US 8,603,310 B2, issued Dec. 10, 2013.
5 US 2008/0276913 A1, published Nov. 13, 2008.
6 Bruce Bugbee and Mark Blonquist, Absolute and Relative Gas
Concentration: Understanding Oxygen in Air, ICT International
7 US 5,402,665, issued Apr. 4, 1995.
8 US 6,832,472 B2, issued Dec. 21, 2004.
9 US 4,658,790, issued April 21,1987
10 US 7,715,976 B1, issued May 11, 2010
11 US 2013/0036806 A1, published Feb. 14, 2013
12 US 8,459,243 B2, issued June 11, 2013
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Application 13/934,150

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Claims 14–16 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Miyake, Ishida, Xiao, ICT International, and Gibson.

ANALYSIS
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 as being unpatentable over Miyake, Ishida,
Zubeck, IC International, Hart, and Huang. Appeal Br. 16–17.
Claim 1 is directed to a method for measurement of relative air
humidity in a fresh air induction tube of an internal combustion engine.
Appeal Br. 33 (Claims App.). According to claim 1, “the relative air
humidity may be determined as a function of the concentration of oxygen
sensed by the oxygen sensor and the temperature in the fresh air induction
tube.” Id. “Thus, advantageously, a humidity sensor for measuring the
relative air humidity in the fresh air induction tube may be omitted.” Id.
The omission of a humidity sensor is expressly recited in claim 1 as “without
a humidity sensor.” Id. at 33 (Claims App.). Central to Appellants’
invention is the omission of a humidity sensor because “the relative air
humidity is relatively difficult to measure accurately and with a small delay
over the great range of the fluctuation of temperatures that can occur in a fresh
air induction tube.” Spec. 2:1–3.
In support of the proposed combination of references to omit a
humidity sensor, the rejection asserts that “the elimination of a step or
element is obvious if not desired,” citing Ex parte Wu.13 Final Act. 6.

13 10 USPQ 2031 (BPAI 1989).
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Appellants argue:
However, in Ex parte Wu, the Board does not indicate that the
elimination of a step or element is obvious if not desired;
instead, the Board indicates that omission of an element and its
function is obvious if the function of the element is not desired.
See MPEP 2144.04(II)(a). In Appellant’s claim 1, sensing
humidity is desired, seeing as determination of relative
humidity is desired. Accordingly, Ex parte Wu is not
applicable, and does not support a finding of obviousness.

Appeal Br. 17. “Examiner respectfully disagrees wherein humidity is
a natural occurrence, wherein water vapor exists in the air, and the
water content of the air is a calculated function that incorporates air
temperature and oxygen content of the air.” Ans. 2. According to the
Examiner:
The removal of the humidity sensor of Miyake does not equate
to the invention of Miyake no longer capable of calculating
humidity, wherein the humidity in the air can be calculated with
the temperature sensor and the oxygen sensor. The
incorporation of the humidity sensor allows a second source of
information, wherein with the speed of calculations happening
in real time with engines, double checking and triple checking
data to make sure sensors are working properly is known in the
art. In the instant case the humidity sensor can be used to check
the calculations derived from the other sensors that are being
used to calculate humidity, wherein this feature if not desired is
obvious. Merely having a plurality of sensors to use data that
can be performed by a single sensor is not deemed to be
inventive.

Id. at 2–3. We are persuaded of Examiner error.
Although we agree that humidity is a natural occurrence and a
function of air temperature and oxygen, we disagree that this fact alone in
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Application 13/934,150

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combination with the Examiner’s reliance on Wu adequately supports a
conclusion of obviousness, as proposed by the Examiner’s rejection. In Wu,
the issue was whether “it would have been obvious to omit Murdock’s
polybasic acid salts when the function attributed to these salts is not desired
or required.” Wu, 10 USPQ2d at 2032. “Murdock [taught] . . . that the[]
salts are beneficial when the composition is employed in contact with fresh
water.” Id. Thus, in Wu, the panel found that the “[o]mission of the salt
component in preparing compositions to be used to provide corrosion
resistance to metals in environment which did not encounter fresh water
would have been obvious.” Id. In contrast to Wu, although a humidity
sensor is explicitly omitted in claim 1, its function of determining relative
humidity is required and retained in the claim. See In re Larson, 340 F.2d
965 (CCPA 1965) (Omission of additional framework and axle which served
to increase the cargo carrying capacity of prior art mobile fluid carrying unit
would have been obvious if this feature was not desired.); see also In re
Kuhle, 526 F.2d 553 (CCPA 1975) (deleting a prior art switch member and
thereby eliminating its function was an obvious expedient). In other words,
we agree with Appellants that modifying the proposed combination of
references to omit the humidity sensor, as advanced by the Examiner, is not
obvious. Appeal Br. 17. To the contrary, “the omission of an element and
retention of its function is an indicia of unobviousness.” Id.; see In re Edge,
359 F.2d 896 (CCPA 1966). Therefore, the Examiner erroneously relied on
Wu to support a conclusion of obviousness.
Accordingly, we do not sustain the rejection of independent claim 1,
and independent claims 7, 8, and 14, which recite the same limitation and
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are similarly rejected based on the misapplication of Wu. See Final Act. 7–
13. We do not sustain the rejection of dependent claims 2, 3, 6, 12, 13, 15,
16, 18, 19, 21, and 22 for the same reasons because the additional cited
references are not relied upon to remedy the above-noted error in the
rejections.
DECISION
The rejections of claims 1–3, 6–8, 12–16, 18, 19 under 35 U.S.C.
§ 103(a) are reversed.

REVERSED