Ex Parte AIDA et al

Patent Trial and Appeal Board

Apr 21, 2016

12506010 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/506,010 0712012009
23373 7590 04/25/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Futoshi AIDA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql 14276 3308
EXAMINER
VILAKAZI, SIZO BINDA
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FUTOSHI AIDA and KIMIHIKO TANA YA
Appeal2014-002147
Application 12/506,010 1
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Futoshi Aida and Kimihiko Tanaya (Appellants) appeal under 35
U.S.C. § 134 from the Examiner's final decision rejecting under 35 U.S.C.
§ 103(a) claims 1, 2, and 7-10 as being unpatentable over Yoshikawa (JP
10-030541, pub. Feb. 3, 1998)2 and Nishimoto (US 2003/0101797 Al, pub.
June 5, 2003). We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellants, the real party in interest is Mitsubishi
Electric Corporation. Appeal Br. 2 (filed March 29, 2013).
2 We derive our understanding of this reference from the English
translation contained in the image file wrapper of this application. All
references to the text of this document are to portions of the translation.
Appeal2014-002147
Application 12/506,010
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to "an ion current detector for detecting
an ion current generated in an internal combustion engine." Spec. 1: 5-7.
Claims 1 and 7 are independent. Claim 1 is representative of the
claimed invention and reads as follows:
1. An ion current detector, comprising:
an ion bias circuit connected to a secondary side of an
ignition coil for causing an ignition plug of an internal
combustion engine to generate spark discharge, for supplying a
bias voltage to an electrode of the ignition plug; and
an ion current detection circuit, coupled to an ignition
signal terminal and to an engine control unit (ECU) via a
connection terminal portion, which receives an ignition signal
from the ignition signal terminal and detects an ion current
generated in a combustion chamber by the spark discharge,
wherein the ion current detection circuit amplifies and
outputs the detected ion current to the ECU via the connection
terminal portion, at an amplification factor of the ion current,
and
the amplification factor of the ion current is switched
between a time when the ignition signal is supplied and a time
when the ignition signal is not supplied, based on the received
ignition signal.
ANALYSIS
Independent claim 1 requires, inter alia, an "ion current detection
circuit [that] amplifies and outputs the detected ion current to the ECU."
Appeal Br. 13. Similarly, independent claim 7 recites an "ion current
2
Appeal2014-002147
Application 12/506,010
detection circuit ... which ... amplifies the detected ion current ... and ...
outputs the ion current to the ECU." Id. at 13-14.
The Examiner finds that Yoshikawa discloses an ion current detector
including an ion current detection circuit that detects an ion current,
amplifies the detected ion current, and outputs the detected ion current.
Final Act. 2-3 (citing Yoshikawa, paras. 19-22, 25-28, and Fig. 2).
Appellants argue that Yoshikawa does not describe "amplifying the
detected ion current and outputting the amplified ion current to the ECU."
See Appeal Br. 5. According to Appellants, "[t]he voltage signal of
Yoshikawa is not detected as an ion current, the voltage signal of
Yoshikawa is not amplified at an amplification factor of the ion current and
not output as the amplified ion current to the ECU." Reply Br. 2.
In response, the Examiner takes the position that,
Yoshikawa discloses detecting the ion current as a function of
the voltage drop across resistor RI (see at least Paragraphs
[0009] and [0019]), as is commonly performed in the art, as
current is simply a function of voltage and resistance (V=I*R).
There is no significant difference in amplifying and outputting
an ion current signal, as opposed to amplifying and outputting a
voltage drop signal, as both signals signify the same process
occurring (presence of an ion current), and are easily
interchangeable using the formula V=I*R.
Ans. 6.
Yoshikawa discloses an ion detector including an ion signal detecting
circuit 4 connected to secondary coil L2 of ignition coil 1 that converts an
ion current signal into a voltage signal that is amplified by operational
amplifier OPI. See Yoshikawa, Abstract, paras. 19, 25, and Fig. 1.
3
Appeal2014-002147
Application 12/506,010
We recognize that the limitations of an ion detection circuit that
"amplifies and outputs the detected ion current" (as per claim 1) and
"amplifies ... and outputs the ion current" (as per claim 7) are functional
limitations. "[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless,
before Appellants are put to this burdensome task, the Examiner must
provide sufficient evidence or scientific reasoning to establish the
reasonableness of the Examiner's position that the functional limitations are
an inherent characteristic of the prior art.
Here, although we appreciate the Examiner's position that there is a
direct relationship between voltage and current, nonetheless, because the
structure of Yoshikawa' s operational amplifier OP 1 amplifies a voltage
signal, it does not constitute an ion current detection circuit, as called for by
each of independent claims 1 and 7. The Examiner has not set forth
sufficient evidence or scientific reasoning to establish that there is no
"significant difference" between the structure of Yoshikawa's operational
amplifier OPl that amplifies and outputs a voltage and the structure of the
claimed ion current detection circuit that amplifies and outputs a current.
Even if a voltage signal and a current signal "are easily interchangeable
using the formula V=I*R" and both signals signify the presence of an ion
current," as the Examiner opines (see Ans. 6), that does not necessarily mean
that a circuit that is structurally built to amplify and output a voltage is the
4
Appeal2014-002147
Application 12/506,010
same as a circuit that is structurally built to amplify and output a current. 3
As such, we agree with Appellants that, "Yoshikawa's disclosure is entirely
different from the claimed 'ion current detection circuit ... which ... detects
an ion current ... , amplifies and outputs the detected ion current to the ECU."
Reply Br. 2.
The Examiner's use of the disclosure of Nishimoto does not remedy
the deficiencies of Yoshikawa as described supra. 4 See Final Act. 3.
Accordingly, for the foregoing reasons, we do not sustain the rejection of
claim 1, 2, and 7-10 under 35 U.S.C. § 103(a) as unpatentable over
Yoshikawa and Nishimoto.
SUMMARY
The Examiner's decision to reject claims 1, 2, and 7-10 under 35 U.S.C.
§ 103(a) as unpatentable over Yoshikawa and Nishimoto is reversed.
REVERSED
3 A "current amplifier" is "[a] device designed to deliver a greater
output current than its input current," whereas in a "voltage amplifier,"
which is "used specifically to increase a voltage," such a device "deliver[ s]
only a small current." Rudolf F. Graf, Modem Dictionary of Electronics
(4th ed. 1972).
4 The Examiner employs Nishimoto to show "outputting an ion current
to the ECU." Final Act. 3 (citing Nishimoto, paras. 9, 10).
5