CASTROL LIMITED et al.

Patent Trials and Appeals Board

Feb 14, 2022

2021003415 (P.T.A.B. Feb. 14, 2022)

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. 14/443,608 05/18/2015 Andrew Philip Barnes 16-1025-WO- US (BP500297) 3761 160348 7590 02/14/2022 MBHB/BP Corporation North America Inc. 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER BACON, ANTHONY L ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 02/14/2022 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): docketing@mbhb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW PHILIP BARNES, PETER STUART BRETT, STEVEN PAUL GOODIER, and MARK O’MALLEY Appeal 2021-003415 Application 14/443,608 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and JEREMY M. PLENZLER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-10, 12-16, 18, 19, 24, and 26-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Castrol Limited. Appeal Br. 2. Appeal 2021-003415 Application 14/443,608 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “a container, method and control system and in particular to a fluid container for an engine, a method of facilitating control of an engine and/or vehicle comprising a fluid circulation system[,] and to a control system, as well as to an apparatus and a vehicle.” Spec. 1:3-6. Of the pending claims, claims 1, 13, and 24 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A replaceable fluid container comprising: a reservoir for holding a fluid; a fluid coupling adapted to provide fluidic communication between the reservoir and a fluid circulation system of an engine; and a data provider positioned within the replaceable fluid container and arranged such that positioning the container to permit fluidic communication between the reservoir and the fluid circulation system of the engine arranges the data provider for data communication with an engine control device of the engine, wherein the data provider comprises a memory for storing data including an identifier of the fluid based on at least one property of the fluid, wherein the engine control device enables operation of the engine in a first mode if the data provider indicates that the fluid has a first identity, and wherein the engine control device enables operation of the engine in a second mode if the data provider indicates that the fluid has a second identity. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Adams US 2005/0118468 A1 June 2, 2005 Vestrini US 2010/0036583 A1 Feb. 11, 2010 Nishibu US 2010/0043755 A1 Feb. 25, 2010 Appeal 2021-003415 Application 14/443,608 3 REJECTIONS Claims 1-10, 12-16, 18, 19, 24, 26, and 27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Adams. Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Adams and Nishibu. Claims 1-10, 12-16, 18, 19, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) being unpatentable over Adams and Vestrini.2 Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Adams, Vestrini, and Nishibu.3 OPINION Anticipation-Adams Independent claims 1 and 24 recite, in pertinent part, an engine control device that “enables operation of the engine in a first mode if the data provider indicates that the fluid has a first identity, and wherein the engine control device enables operation of the engine in a second mode if the data provider indicates that the fluid has a second identity.” Appeal Br. 15, 19 (Claims App.). Independent claim 13 is directed to a method and recites a substantially similar limitation. Id. at 17. The dispositive issue raised by Appellant in contesting the anticipation rejection is whether the Examiner errs in construing “enables [or enabling] operation of the engine” in claims 1, 13, and 24 as including “shutting down the engine.” See Final Act. 3; Appeal Br. 5-6; Ans. 10-12; Reply Br. 3-5. Relying on this 2 This rejection is an alternative to the rejection of these claims as being anticipated by Adams. See Final Act. 2. 3 This rejection is an alternative to the rejection of these claims as being unpatentable over Adams and Nishibu. See Final Act. 7. Appeal 2021-003415 Application 14/443,608 4 interpretation, the Examiner finds that Adams’s disclosure of a controller that powers down if the incorrect fuel or cartridge is present, and instructs the pump to pump fuel if the correct cartridge or fuel is present, satisfies the aforementioned limitations of claims 1, 13, and 24. Final Act. 3 (citing Adams ¶ 138; Spec. 9:19-24; see also Ans. 10-12 (citing Spec. 8:14-30, 9:19-24, 12:17-27, 23:28-24:5 in support of the Examiner’s claim construction). Appellant argues that Adams’s disclosure of powering down the engine prevents, rather than enables, operation of the engine. Appeal Br. 5. Further, Appellant acknowledges that Appellant’s Specification discloses “that providing certain data to the engine control device ‘may enable the control device to adjust or stop operation of the engine,’” but submits that “nothing in the [S]pecification suggests that a recitation of ‘enabl[ing] operation of the engine’ in a certain mode, as recited in claims 1 and 24, should be interpreted to include stopping operation of the engine.” Id. at 6. Rather, Appellant contends that “a person of ordinary skill in the art would understand that this description of stopping or disabling operation of the engine is distinct from ‘enabling operation of the engine,’ as recited in claims 1 and 24.” Id. Appellant makes similar arguments with respect to independent claim 13. Id. at 11-12. In interpreting claim language, the United States Patent and Trademark Office (USPTO) applies the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Am. Acad. of Appeal 2021-003415 Application 14/443,608 5 Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Statements in an applicant’s specification that do not provide an express definition of a claim term can nevertheless help determine the meaning of that term. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011) (affirming the Board’s construction of a claim term as “reasonable in view of the written description and how the written description would be interpreted by one of ordinary skill in the art”). We begin our analysis of independent claims 1, 13, and 24 by looking at the claim language itself. The plain meaning of “enabl[ing] operation of the engine” in either a first mode or a second mode conveys that the engine is enabled, or permitted, to operate in the first mode and is enabled, or permitted, to operate in the second mode. Absent some indication to the contrary in the Specification, as by a special definition of what is meant by enabling operation of an engine that differs from the ordinary and customary understanding of this language, one of ordinary skill in the art reading this language would not ordinarily understand the act of shutting/powering down an engine, or stopping operation of an engine, to constitute enabling operation of the engine (in any mode). Further, in this case, the Examiner does not identify any disclosure in the Specification that sets forth or implies a special definition for “enabl[ing] operation of the engine” or otherwise suggests that this language is used differently than its ordinary and customary meaning. As for the passages that the Examiner cites to support the interpretation of “enabl[ing] operation of the engine” as including shutting down the engine, the Specification discloses that, in at least some embodiments, the engine control device may be configured “not to operate” the engine, to “stop operation of the engine,” Appeal 2021-003415 Application 14/443,608 6 or to “prevent operation of the engine” in response to sensed properties of the fluid. See Spec. 8:16-18, 9:23-24, 12:19-22, 23:31-24:1. However, the claim language reciting an engine control device that “enables operation of the engine in a first mode if the data provider indicates that the fluid has a first identity, and wherein the engine control device enables operation of the engine in a second mode if the data provider indicates that the fluid has a second identity,” or substantially similar, in claims 1, 13, and 24 is not directed to this aspect or embodiment of Appellant’s invention. In a discussion distinct from the discussion of the control device being configured not to operate, to stop operation of, or to prevent operation of the engine, Appellant’s Specification also discloses that, “[a]ccording to at least some embodiments, the engine control device is configured to operate the engine in one of two modes depending upon the communicated data.” Spec. 8:19-21; see id. at 12:22-24. In other words, the configuration of the engine control device to operate the engine in a first mode and to operate the engine in a second mode, depending on the communicated data, is an aspect or feature of the invention that is distinct from the engine control device being configured to stop or prevent operation of the engine. In fact, the feature of the engine control device being configured to stop or prevent operation of the engine and the feature of the engine control device being configured to operate in one of two modes, depending on the data communicated, may be present in different embodiments of Appellant’s invention. We therefore agree with Appellant that a person having ordinary skill in the art would understand that the “description of stopping or disabling Appeal 2021-003415 Application 14/443,608 7 operation of the engine is distinct from ‘enabling operation of the engine,’ as recited in” independent claims 1, 13, and 24. See Appeal Br. 6. The Examiner’s finding that Adams anticipates the subject matter of independent claims 1, 13, and 24 is predicated on an improper construction of the claim language. Accordingly, we do not sustain the rejection of claims 1, 13, and 24, or of their dependent claims 2-10, 12, 14-16, 18, 19, 26, and 27 as being anticipated by Adams. Obviousness-Adams and Nishibu In rejecting claims 28 and 29, which depend from claim 1, the Examiner relies on Nishibu for other features not directed to enabling operation of the engine in one of two modes. See Final Act. 7-8. Accordingly, we do not sustain the Examiner’s rejection of claims 28 and 29 as being unpatentable over Adams and Nishibu because it suffers from the same deficiency as the rejection of claim 1 as being anticipated by Adams. Obviousness-Adams and Vestrini Appellant presents arguments for independent claims 1 and 24, and relies on these same arguments in addressing independent claim 13. Appeal Br. 6-9, 12-13. Appellant does not present any separate arguments for dependent claims 2-6, 14-16, 18, 19, 26, and 27, aside from their dependence from one of claims 1, 13, or 24. Id. at 9, 13. Appellant presents a separate argument for dependent claim 7. Appeal Br. 9-10. We review this rejection on the basis of claims 1 and 7, with claims 2-6, 13-16, 18, 19, 24, 26, and 27 standing or falling with claim 1, and claims 8-10 and 12 standing or falling with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the appeal as to a single ground of rejection of a group of claims argued together). Appeal 2021-003415 Application 14/443,608 8 Claims 1-6, 13-16, 18, 19, 24, 26, and 27 Apparently recognizing the possibility that the Examiner’s construction of the claim language “enables operation of the engine” as including shutting down the engine might be determined to be improper, the Examiner also rejects claim 1 (along with independent claims 13, and 24, as well as dependent claims 2-10, 12, 14-16, 18, 19, 26, and 27) as being unpatentable over the combination of Adams and Vestrini. See Final Act. 3-4. The Examiner finds that “Vestrini discloses a method and apparatus for controlling an engine capable of operating on more than one type of fuel and notes that engines can operate on multiple fuels or blends of multiple fuels (such as gasoline and ethanol),” and that “[c]ontrol of the engine is altered depending on the fuel blend and is based on the appropriate selection of an algorithm for the type or composition of the fuel.” Id. (citing Vestrini ¶ 4). The Examiner determines it would have been obvious to modify Adams’s engine control device to operate the engine in a first mode when a first fuel identity (e.g., gasoline) is determined and to operate the engine in a second mode when a second fuel identity (e.g., E85) is determined, as taught by Vestrini, in order to optimize the engine’s emissions performance, thereby improving Vestrini’s generic engine without unexpected results. Id. at 4. Appellant argues that “Adams does not describe anything related to the operation of an engine.” Appeal Br. 7 (emphasis omitted). This argument is not persuasive. Adams discloses a fuel cartridge for connection to a device to be powered, wherein the device to be powered includes a means for generating power from fuel pumped from the fuel cartridge and a controller for controlling functions of the device. Adams ¶¶ 89-90, 138. Appeal 2021-003415 Application 14/443,608 9 Although the embodiments illustrated and described in detail are directed to a fuel cell, Adams discloses that “[o]ther applications include storing traditional fuels for internal combustion engines.” Id. ¶ 44. Appellant also argues that “Vestrini describes modifying the engine control during operation of the engine based on measured parameters rather than operating the engine in a particular mode based on predefined information about the fuel.” Appeal Br. 8. In particular, Appellant notes that Vestrini discusses known control systems that select an engine control algorithm based on anticipated fuel composition, but then goes on to point out shortcomings of these known engine control systems and describe an engine control approach using sensors to determine a fuel correction factor to adjust the default fuel volume in a subsequent fuel injection cycle. Id. at 7-8 (citing Vestrini ¶¶ 4-6). Appellant contends that the Examiner’s proposed combination lacks a rational underpinning because Vestrini describes shortcomings of using predetermined algorithms based on fuel type and, thus, “a person of ordinary skill in the art would have been discouraged from the Examiner’s proposed modification that enables engine operation in specific modes.” Id. at 9. Appellant asserts that the Examiner’s rationale is grounded improperly on a single sentence in Adams and ignores the teachings in Vestrini about methods of controlling an engine. Reply Br. 6. Appellant contends that it is only with impermissible hindsight that a person of ordinary skill in the art would combine Adams and Vestrini in the manner proposed by the Examiner. Id. Appellant’s arguments are inapposite and unpersuasive. Vestrini’s discussion, in the background section of its disclosure, of known engine control systems that select an engine control algorithm based on anticipated Appeal 2021-003415 Application 14/443,608 10 fuel composition evidences, what was known in the art at the time of Appellant’s invention. In other words, the Examiner relies on Vestrini to show that it was known in the art at the time of Appellant’s invention to configure an engine control system to select one of a plurality of engine control algorithms (i.e., enable operation of the engine in a first mode or operate the engine in a second mode) depending on the type of fuel. This is a proper use of Vestrini. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). “A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“the teaching of [a reference] is not limited to the specific invention disclosed”). The fact that Vestrini’s invention takes a different approach to controlling the engine does not negate its disclosure of the known prior art engine control systems that select an engine control algorithm from a plurality of available engine control algorithms depending on the type of fuel being supplied. A reference teaches away from a claimed invention if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 Appeal 2021-003415 Application 14/443,608 11 (Fed. Cir. 1994)). The proposed modification need not be the best solution to be an obvious solution. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014) (“Par also argues that there were better methods available to address the viscosity and interpatient variability concerns with Megace OS. Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.”). Moreover, “there is no rule that a single reference that teaches away will mandate a finding of nonobviousness.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“Rigid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.”). Additionally, just because “better alternatives” may exist in the prior art “does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation omitted). In this case, the fact that Vestrini identifies perceived shortcomings in the prior art engine control systems and expresses a preference for a different approach would not have discouraged a person having ordinary skill in the art from using the prior art engine control system configured to select an engine control algorithm based on fuel type in Adams’s engine control device. Moreover, even assuming that Vestrini’s characterization of Appeal 2021-003415 Application 14/443,608 12 the known engine control systems might be viewed as a teaching away from following the prior art approach, as discussed above, our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Medichem, S.A., 437 F.3d at 1165; Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Moreover, although this is not the teaching of Vestrini relied on by the Examiner, Appellant does not persuasively explain why Vestrini’s preferred approach of adjusting or modifying the engine control during operation to optimize performance of an engine capable of operating on more than one type of fuel, based on the composition of the fuel being used at a given time, would not also satisfy the limitation in claim 1 of an engine control device that “enables operation of the engine in a first mode if the data provider indicates that the fluid has a first identity, and wherein the engine control device enables operation of the engine in a second mode if the data provider indicates that the fluid has a second identity.” See Spec. 24: 6-13 (disclosing, while the engine is running, adjusting configuration of the engine in response to changes in characteristics of the fluid being indicated by the data provider). Appellant’s assertion of impermissible hindsight is unsound because the Examiner’s stated reason (optimizing the engine’s emission performance) for making the combination comes from the prior art itself, Appeal 2021-003415 Application 14/443,608 13 and not from Appellant’s disclosure. See Final Act. 4. More specifically, Vestrini discloses that “the motivation behind [the prior art] systems[, such as the known control systems that select an engine control algorithm based on an anticipated fuel composition,] is to optimize the engine’s emissions performance.” Vestrini ¶ 4. For the above reasons, Appellant fails to apprise us of error in the Examiner’s conclusion that the combined teachings of Adams and Vestrini render obvious the subject matter of claim 1. Accordingly, we sustain the rejection of claim 1, and of claims 2-6, 13-16, 18, 19, 24, 26, and 27, which fall with claim 1, as being unpatentable over Adams and Vestrini. Claims 7-10 and 12 Claim 7 depends from claim 1 and further recites “a sensor adapted to sense at least one property of a fluid in the reservoir of the container.” Appeal Br. 16 (Claims App.). The Examiner cites, in relevant part, paragraphs 76, 77, 79, 81, 87, and 123 of Adams as disclosing this limitation. See Ans. 14-15. Adams discloses that information storage devices on the fuel cartridge can store protectable information, which cannot be erased, and rewritable information. Adams ¶ 50. Adams lists examples of protectable information in paragraphs 51-75. See id. ¶ 50. Adams lists examples of rewritable information in paragraphs 77-88. See id. ¶ 76. Adams’s list of rewritable information includes, for example, current fuel level and/or ion level in the fuel. Id. ¶ 77. Adams discloses that rewritable information including electronically readable fuel gage information or ion level can be obtained from fuel gages or from ion gages. Id. ¶ 123. Further, Adams discloses electrically readable fuel gage 264 positioned in or on the fuel cartridge for Appeal 2021-003415 Application 14/443,608 14 measuring the amount of remaining fuel. Id. ¶ 135. Thus, Adams discloses a sensor, in or on the fuel cartridge (i.e., the container) adapted to sense at least one property of a fluid in the reservoir of the container, as called for in claim 7. See Spec. 13:29-30 (stating that an example of a suitable property of the fluid that is sensed is “the amount of fluid”). Appellant erroneously asserts that the fluid sensor information discussed by Adams is part of the protectable information, rather than the rewritable information, and thus is not sensed by a sensor within the cartridge. Reply Br. 7. As discussed above, Adams discloses a fuel gage positioned in or on the fuel cartridge for sensing the amount of remaining fuel (current fuel level) (Adams ¶¶ 123, 135), which Adams identifies as rewritable information (Adams ¶¶ 76-77) and which is a property of the fluid consistent with Appellant’s Specification (Spec. 13:29-30). Appellant’s contention on page 7 of the Reply Brief that Adams does not disclose that the “fluid sensor information” discussed in paragraph 75 “is provided by a sensor that is part of the cartridge,” although factually correct, is of no consequence, as it does not negate Adams’s disclosure of a fuel gage in or on the fuel cartridge for sensing the amount of remaining fuel. For the above reasons, Appellant fails to apprise us of error in the Examiner’s conclusion that the combined teachings of Adams and Vestrini render obvious the subject matter of claim 7. Accordingly, we sustain the rejection of claim 7, and of claims 8-10 and 12, which fall with claim 7, as being unpatentable over Adams and Vestrini. Obviousness-Adams, Vestrini, and Nishibu In contesting the rejection of claims 28 and 29, Appellant argues only that Nishibu does not “cure the deficiencies of Adams and Vestrini with Appeal 2021-003415 Application 14/443,608 15 respect to claim 1.” Appeal Br. 13. For the reasons set forth above, Appellant fails to apprise us of error in the rejection of claim 1 as being unpatentable over Adams and Vestrini and, likewise, fails to apprise us of error in the rejection of claims 28 and 29 as being unpatentable over Adams, Vestrini, and Nishibu. Accordingly, we sustain the rejection of claims 28 and 29 as being unpatentable over Adams, Vestrini, and Nishibu. CONCLUSION The Examiner’s rejection of claims 1-10, 12-16, 18, 19, 24, 26, and 27 as being anticipated by Adams and rejection of claims 28 and 29 as being unpatentable over Adams and Nishibu are REVERSED. The Examiner’s rejection of claims 1-10, 12-16, 18, 19, 24, 26, and 27 as being unpatentable over Adams and Vestrini and rejection of claims 28 and 29 as being unpatentable over Adams, Vestrini, and Nishibu are AFFIRMED. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10, 12- 16, 18, 19, 24, 26, 27 102(b) Adams 1-10, 12- 16, 18, 19, 24, 26, 27 28, 29 103(a) Adams, Nishibu 28, 29 1-10, 12- 16, 18, 19, 24, 26, 27 103(a) Adams, Vestrini 1-10, 12- 16, 18, 19, 24, 26, 27 28, 29 103(a) Adams, Vestrini, Nishibu 28, 29 Overall Outcome 1-10, 12- 16, 18, 19, 24, 26-29 Appeal 2021-003415 Application 14/443,608 16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED