Bernard D. Nefcy et al.Download PDFPatent Trials and Appeals BoardAug 23, 201914220408 - (D) (P.T.A.B. Aug. 23, 2019) Copy Citation 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. 14/220,408 03/20/2014 Bernard D. Nefcy 83367244 2642 28866 7590 08/23/2019 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 EXAMINER HOLMES, JUSTIN ART UNIT PAPER NUMBER 3659 NOTIFICATION DATE DELIVERY MODE 08/23/2019 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): MST@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BERNARD D. NEFCY, MARVIN P. KRASKA, DANIEL S. COLVIN, and DEREK TAYLOR ____________________ Appeal 2018-0089171 Application 14/220,408 Technology Center 3600 ____________________ Before JOHN C. KERINS, MICHAEL L. WOODS, and ARTHUR M. PESLAK, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action dated February 8, 2017 (“Final Act.”), rejecting claims 8–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Ford Global Technologies LLC as the real party in interest in this appeal. Appeal Br. 1. Appeal 2018-008917 Application 14/220,408 2 THE INVENTION Appellants’ invention relates to a method for controlling a gearshift. Claims 8 and 13, reproduced below, are illustrative of the claimed subject matter. 8. A method for controlling a gearshift, comprising: (a) modifying transmission input torque in response to a transmission controller request for slow torque modification during the gearshift using an internal combustion engine having first and second actuators, the first actuator having a slower response to a request for input torque modification, the second actuator having a faster response to said request for input torque modification; (b) fulfilling the slow torque modification request using the first actuator provided the second actuator is unable to fulfill the slow torque modification request; and (c) fulfilling the slow torque modification request using the second actuator instead of the first actuator, provided the second actuator can provide the requested input torque modification. 13. The method of claim 8, wherein step (b) further comprises: controlling a position of an engine throttle to operate as the first actuator; and a controller controlling engine ignition timing to operate as the second actuator. Appeal 2018-008917 Application 14/220,408 3 THE REJECTIONS The Examiner rejects: (i) claims 8–13 under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention; (ii) claims 8–13 under 35 U.S.C. § 102(a)(1)/(a)(2) as being anticipated by Badillo (US 7,300,381 B2, issued Nov. 27, 2007); and (iii) claim 11 under 35 U.S.C. § 103 as being unpatentable over Badillo in view of Bitsche (US 5,498,216, issued Mar. 12, 1996). DISCUSSION Claims 8–13--§ 112(b) The Examiner takes the position that claim 8 and its dependent claims 9–13 are indefinite, in that the language, “a transmission controller request for slow torque modification,” is inconsistent with the remainder of the claim, in that, according to clauses (b) and (c) of the claim, the torque modification could be either a slow torque modification or a fast torque modification. Final Act. 4–5. The Examiner notes that, in step (c), if the torque modification is fulfilled using the second (fast) actuator, then the torque modification request ends up being, in actuality, a request for fast torque modification. Id. at 5. The Examiner suggests that, were the limitation at issue in claim 8 amended to delete the term “slow,” thus reciting “a transmission controller request for torque modification,” the inconsistency and ambiguousness in the claim would be eliminated. Final Act. 4–5; Ans. 4–5. Appeal 2018-008917 Application 14/220,408 4 Appellants maintain that claim 8 is not indefinite, in that, when use of the second (fast) actuator is invoked in step (c), that actuator will operate to provide slow torque modification in response to the request for slow torque modification. Appeal Br. 5. In other words, regardless as to whether the torque modification effected in response to a request for slow torque modification is performed by the first (slow) actuator or the second (fast) actuator, it will be a slow modification of the torque. A claim is indefinite when it contains language that is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014); see also Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *2–6 (PTAB Aug. 25, 2017) (precedential). The essence of that requirement is that the language of the claims must make it clear what subject matter they encompass. In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). This requirement has generally been viewed from the perspective of a potential infringer, “so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance. Hammack, 427 F.2d at 1382. Claims, viewed in light of the specification and prosecution history, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014); see Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (“The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.”). Appeal 2018-008917 Application 14/220,408 5 On its face, the scope of claim 8 appears to correspond to that advocated by Appellants in the Appeal Brief. However, when the language of the claim is viewed and interpreted in light of the Specification, the Examiner appears to have the better position. In this regard, although Appellants argue that the second (fast) actuator will perform slow torque modification in response to a request for the same, the Specification evidences otherwise. The Specification explains, in discussing the flowchart in Figure 3, that “[a] test is performed at step 86 to determine whether powertrain 10 is able to produce fast input torque modification in response to the request for slow input torque modification produced at step 82.” Spec. 5:8–10. The Specification also describes that “step 94 results from the fast modification of input torque,” presumably upon request from step 92, “or the slow to fast torque modification of input torque,” presumably upon request from steps 82–84–86–90. Id. at 5:23–24. It is thus unclear, at best, what the “fulfilling” action of step (c) of claim 8 requires, i.e., execution of slow torque modification or execution of fast torque modification by the second actuator, in response to a slow torque modification request.2 Exacerbating this uncertainty is the fact that, if, as Appellants argue, the second actuator executes a slow torque modification in this situation, the Specification fails to explain how the second actuator can or would do so. The Specification instructs that, when an internal combustion engine is producing input torque, a condition set forth in claim 8, “adjusting the throttle opening is slow actuation, whereas adjusting 2 This ambiguity and lack of clarity is seen as also calling into question exactly what Appellants regard as the invention. Appeal 2018-008917 Application 14/220,408 6 ignition timing or spark is fast actuation.”3 Spec. 5:25–27 (emphases added); see also claim 13. This statement appears to define fast actuation as involving adjusting ignition timing or spark, such that the claimed second actuator functions to control such adjustment. The Specification does not describe in any way how an actuator capable of performing the adjustment to ignition timing or spark would also be capable of adjusting the throttle opening, which is the defined slow actuation. As such, claim 8 is unclear in scope, and fails to readily and accurately apprise persons skilled in the art as to the boundaries of protection involved with the claim. The rejection of claim 8 as being indefinite is therefore sustained. In that claims 9–13 all depend from claim 8, the rejection is sustained as to those claims as well. Claims 8–13--35 U.S.C. § 102(a)(1)/(a)(2)--Badillo Notwithstanding that we agree with the Examiner that the scope of claim 8 and its dependent claims is unclear in scope and, thus, indefinite, we agree with Appellants that the Examiner does not identify any disclosure in Badillo evidencing that a method performed in that reference includes deciding which actuator (slow or fast) to use in response to a slow torque modification request. Reply Br. 6. It appears that, as Appellants argue, that Badillo “uses both fast and slow response actuators at the same time,” or at least in succession, without making a determination as to whether a fast 3 The disclosure in Badillo is to the same effect. Badillo, col. 2, ll. 39–42 (“[U]nlike spark timing, which is a fast actuator . . . the effect of reducing airflow is delayed from the throttle valve actuation.”) Appeal 2018-008917 Application 14/220,408 7 response actuator is capable of responding to a slow torque modification request. Id. (emphasis omitted). Accordingly, we do not sustain the rejection of claims 8–13 as being anticipated by Badillo. Claim 11--35 U.S.C. § 103--Badillo/Bitsche The Examiner does not rely on Bitsche in any manner that remedies the deficiency, noted above, in the Badillo reference. The rejection of claim 11 as being unpatentable over Badillo and Bitsche is not sustained. DECISION The rejection of claims 8–13 under 35 U.S.C. § 112(b) is affirmed. The rejection of claims 8–13 under 35 U.S.C. § 102(a)(1)/(a)(2) is reversed. The rejection of claim 11 under 35 U.S.C. § 103 is reversed. 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). AFFIRMED Copy with citationCopy as parenthetical citation