Bernard D. Nefcy et al.

Patent Trials and Appeals Board

Aug 23, 2019

14220408 - (D) (P.T.A.B. Aug. 23, 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.
14/220,408 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

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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.

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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.
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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.”).
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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.
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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.”)
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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