Ex Parte Baehrle-Miller et al

Patent Trial and Appeal Board

Oct 26, 2016

13779186 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131779, 186 02/27/2013
24972 7590 10/28/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Frank BAEHRLE-MILLER
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.
BOSC.P7827US/l 1603224 2696
EXAMINER
WILTEY, NICHOLAS K
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK BAEHRLE-MILLER, DIETER BLATTERT,
and HUBERTUS WIENKEN
Appeal2015-000863
Application 13/779,186
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2015-000863
Application 13/779,186
THE INVENTION
Appellants' invention relates to vehicle parking brakes. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method for providing a clamping force generated by a
parking brake and a brake device, the method comprising:
measuring a roadway incline; and
performing, if the roadway incline exceeds a threshold
value, a reengagement process for regenerating the clamping
force after a defined time period has elapsed.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Leiter
Makishima
Jackson
Sano
US 2006/0267402 Al
US 2007 /0029876 Al
US 2009/0198427 Al
US 2010/0051395 Al
Nov. 30, 2006
Feb. 8,2007
Aug. 6,2009
Mar. 4, 2010
The following rejections are before us for review:
1. Claim 7 is rejected under 35 U.S.C. § 112, first paragraph, for lack
of written description support.
2. Claims 1-3, 6, 7, and 11 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Jackson.
3. Claims 4, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jackson and Sano.
4. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jackson and Makishima.
5. Claims 8-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jackson and Leiter.
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Application 13/779,186
OPil-JION
Written Description - Claim 7
Claim 7 depends from claim 1. Claims App. The Examiner finds that
the limitation in claim 7 - "the time period, after which the reengagement
process is performed'' - lacks antecedent basis. Final Action 2 (emphasis
added). Appellants argue that the language "a defined time period" in
claim 1 provides an antecedent basis for claim 7. Appeal Br. 4. We agree
and, therefore, do not sustain the written description rejection of claim 7.
Anticipation of
Claims 1-3, 6, 7, and 11 by Jackson
Appellants argue claims 1, 3, 6, 7, and 11 as a group. Appeal Br. 4.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Jackson discloses all of the elements of
claim 1. Final Action 2-3. In particular, the Examiner finds that Jackson
performs a brake reengagement process after a defined time period. Id.
Appellants traverse the Examiner's rejection by arguing that Jackson
fails to disclose performing brake reengagement if the roadway incline
exceeds a threshold value. Appeal Br. 4---6.
[T]he disclosure of Jackson does not suggest that the renewed
application of the parking brakes is dependent on whether the
roadway incline exceeds a threshold value.
Id. at 6. Appellants further contend that roadway incline threshold value is a
"chosen" value requiring a determination of whether the roadway incline
exceeds the chosen value. Id. Appellants contend that Jackson does not
disclose such an evaluation. Id.
The Examiner responds that Jackson discloses a situation (high load)
where a higher parking force is initially applied to the parking brake and
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Application 13/779,186
where the parking brake control unit may be programmed so that, after a
predetermined period of time, it will signal the parking brakes to again
provide a sufficiently high braking force to hold the vehicle. Ans. 5 (citing
Jackson i-fi-f 12 7, 13 0, 131). According to the Examiner, this process includes
an evaluation of roadway incline. Id. The Examiner concludes that, since
this process includes evaluation of roadway incline, the claim limitation
directed to the roadway incline exceeding a threshold value is satisfied. Id.
Jackson discloses an electromechanical parking brake system.
Jackson i-f 11. Jackson's system includes a module for determining an angle
of incline upon which the vehicle is positioned. Id. i-f 10. Jackson's system
calculates a sufficient brake force to be applied based, among other things,
on the vehicle's angle of incline. Id. i-fi-f 11, 82 ("steeper inclines require
greater holding force from the parking brake"). Jackson's system may be
programmed so that "after a predetermined period of time" parking brakes
168a and 168b are driven to provide a sufficiently high braking force to hold
the vehicle. Id. i-f 131. Thus, the Examiner's findings that Jackson discloses:
(1) measuring a roadway incline, and (2) regenerating a clamping force after
a defined time period are supported by a preponderance of the evidence.
With respect to the claim language- "if the roadway exceeds a
threshold value," we do not agree with Appellants' contention that claim 1
positively requires that an evaluation take place between an actual roadway
incline condition and a "chosen" value to determine whether the roadway
incline exceeds the chosen value. Independent claim 1 merely recites a
conditional limitation in connection with the step of regenerating the
clamping force, namely, the clamping force is regenerated - "if the
roadway incline exceeds a threshold value." Claims App.
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Application 13/779,186
T'I> • • • c 1· • ,..J" 1 • • vunng exammatwn 01 a patent app1icatwn, penumg c1an11s are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"Construing claims broadly during prosecution is not unfair to the applicant
... because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage." Id.
We construe the "performing ... a reengagement process" limitation
as optional since claim 1 does not require the clamping force to be
regenerated if the roadway incline does not satisfy the claimed condition.
See Ex Parte Schulhauser, No. 2013-007847 (PTAB April 28, 2016)
(precedential); see also Cybersettle, Inc. v. Nat 'l Arbitration Forum, Inc.,
243 Fed. Appx. 603, 607 (Fed. Cir. 2007) ("It is of course true that method
steps may be contingent. If the condition for performing a contingent step is
not satisfied, the performance recited by the step need not be carried out in
order for the claimed method to be performed"). 1 Therefore, because the
regeneration of clamping force step is conditional on an event that may not
occur, the step is optional and is not entitled to patentable weight.
Accordingly, Appellants' argument that Jackson fails to disclose this step is
not commensurate in scope with claim 1 and, consequently, does not
persuade us of Examiner error.
We have considered Appellants' remaining arguments, including the
arguments in the Reply Brief and find them to be without merit. Reply
Br. 2--4.
1 MPEP § 2111.04 similarly provides that claim scope is not limited by
claim language that suggests or makes optional but does not require steps to
be performed.
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Application 13/779,186
In view of the foregoing, we sustain the Examiner's anticipation
rejection of claims 1-3, 6, 7, and 11.
Unpatentability of Claims 4, 12, and 13
over Jackson and Sano
Appellants argue claims 4, 12, and 13 as a group and request that we
designate claim 4 as representative. Appeal Br. 7. We will treat claim 4 as
representative.
Claim 4 is an independent claim that is substantially similar in scope
with claim 1 except that it adds the following claim language: "wherein if
the roadway incline does not exceed the threshold value, no reengagement
process takes place. Claims App. The Examiner relies on Sano as teaching
that a re-clamp operation is not performed unless needed. Final Action 4.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Jackson with
Sano to achieve the claimed invention. Id. According to the Examiner, a
person of ordinary skill in the art would have done this to omit the
reengagement process where no additional braking force is needed. Id.
Appellants traverse the rejection by first arguing that Jackson fails to
disclose regenerating the clamping force after a defined period of time - "if
the roadway incline exceeds a threshold value." Appeal Br. 7-9.
Appellants also argue that Sano fails to satisfy the claim language in the
"wherein" clause added to claim 4. Id. at 9-10.
In response, the Examiner reiterates that Jackson discloses that a
reengagement process may be completed after a certain time period has
elapsed. Ans. 6. The Examiner also states that Sano teaches that no
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Application 13/779,186
reengagement takes place if the temperature of the parking brake is high. Id.
at 7.
Sano discloses an electric disk brake system. Sano, Abstract. Sano
includes a control apparatus "C" that receives a plurality of sensory inputs
including inclination of a vehicle. Sano i-f 81. After a certain period of time
has passed after actuating the parking brake, control for re-actuating the
parking brake may be performed, "if necessary." Id. i-f 84; see also i-f 108
("determination whether the re-clamp operation should be performed"). The
procedure for determining whether a re-clamp is necessary is illustrated in a
flow-chart diagram. Id. i-f 109, Fig. 10.
Referring to Sano, Figure 10, at step S 104, a conduction current Im of
electric motor 16 is monitored. Id. If the conduction current Im is less than
a predetermined electric current, then it is determined that the re-clamp
should be performed. Id. However, if the conduction current Im is equal to
or more than the predetermined electric current, then it is determined that the
re-clamp is not necessary. Id.
In this way, since it is possible to detect a load of the electric
motor 16, i.e., the brake force by monitoring the conduction
current Im of the electric motor 16, it can be determined
whether the re-clamp operation should be performed.
Id. Sano explains that the control logic of Figure 10 regarding a
determination of whether a re-clamp operation should be performed is
executed by control apparatus C. Id. i-f 108. Control apparatus C, in tum,
receives input as to the inclination of the vehicle. Id. i-f 81. This evidence is
sufficient to support, by a preponderance of the evidence, the Examiner's
finding that the combination of Jackson and Sano discloses the subject
matter of claim 4.
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Application 13/779,186
\Ve have considered Appellants' other arguments including those
from the Reply Brief and find them to be without merit. Reply Br. 4--5.
Otherwise, we determine that the Examiner's rationale for combining
Jackson and Sano, omitting re-engagement where unnecessary, reflects
sufficient articulated reasoning with a rational underpinning. KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007); Final Action 4.
Accordingly, we sustain the rejection of claims 4, 12, and 13.
Unpatentability of Claims 8-10
over Jackson and Leiter
Appellants do not argue for the separate patentability of claims 8-10
apart from arguments presented with respect to claim 1, which we have
previously considered. We sustain the rejection of claims 8-10. 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Claim 5
Unpatentability of Claims 5 and 14
over Jackson and Makishima
Claim 5 depends from claim 1 and adds the limitation, "wherein the
roadway incline is differentiated between at least three gradient ranges, a
reengagement process being performed in the upper gradient ranges."
Claims App. In traversing the rejection, Appellants rely solely on arguments
that we have fully considered and found unpersuasive with respect to
claim 1. Accordingly, we sustain the rejection of claim 5. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 14
Claim 14 is an independent claim that is similar in scope to claim 1
except that it also requires that the roadway incline is categorized into one of
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Application 13/779,186
three distinct gradient ranges and selectively performs control operations of
the parking brake where a time period for monitoring an unintended
movement of the vehicle varies for the gradient ranges. Claims App.
The Examiner finds that Jackson monitors unintended movement of a
vehicle. Final Action 6 (citing Jackson i-fi-f 131, 13 5-13 7). The Examiner
relies on Makishima as categorizing a roadway incline into one of three
distinct gradient ranges and performing a different braking control operation
based on the gradient range. Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to achieve the claimed invention by combining the teachings of
the prior art. Id. According to the Examiner, a person of ordinary skill in
the art would have done this to determine the specific braking force required
at each incline angle. Id.
Appellants argue that the Examiner's proposed combination fails to
suggest varied time periods for monitoring unintended movement of the
vehicle as claimed. Appeal Br. 11. Appellants argue that Jackson monitors
for a roll-away condition indefinitely. Id. Appellants conclude, therefore,
that the prior art does not suggest varying the respective time periods for
monitoring unintended movement for different incline gradients. Id.
In response, the Examiner states that Jackson discloses a method
where the incline is differentiated between different gradient ranges. Ans. 8.
The Examiner states that Makishima teaches distinguishing between three
distinct gradient ranges. Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to program a reengagement process as disclosed by Jackson with
the three different gradient ranges as taught by Makishima. Id. According
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Application 13/779,186
to the Examiner, a person of ordinary skill in the art would have done this to
achieve finer control over the braking force applied by the parking brake.
Id.
In reply, Appellants argue that the Examiner's Answer fails to address
the claim limitation directed to varying a monitoring time period with
respect to each of three distinct gradient ranges. Reply Br. 6.
Makishima is directed to an electric parking brake system.
Makishima, Abstract. Makishima discloses that it is well known to
incorporate an inclination sensor into a braking system. Id. i-f 7. It further
discloses that it is known to set a braking force dependent on the output
value of an inclination sensor to avoid the creeping of a vehicle parked on an
inclined road. Id. i-f 8. The inclination sensor 44 works as the vehicle
condition detecting section for deciding the braking force of the parking
brake 10. Id. i-f 51. Makishima's system compares the output of inclination
sensors to predetermined values of 10 percent, 15 percent, and 20 percent
respectively. Id. i-fi-166-73. A target braking force is selected from a
plurality of predetermined values in accordance with inclination sensor
value N. Id. i-f 79.
Jackson discloses a safeguard against vehicle rollaway. Jackson
i-f 136. Jackson's EPB-ECU 164 monitors wheel speed sensors mounted on
the wheels of the vehicle to detect unexpected pulses. Id. The system is
configured to detect a single pulse from the wheel sensors to enable the
system to react sufficiently quickly to a roll-away situation. Id. Jackson's
system does this since the vehicle may otherwise have too much momentum
to stop the roll-away by reapplication of the service brake. Id. Jackson's
ABS/EBS system is either kept in operation after parking or is reactivated in
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Application 13/779,186
the critical time for roll away. Id. 11137. The ABS/EBS system is
configured to wake up the EPB-ECU for re-clamping. Id.
After reviewing Jackson and Makishima's respective disclosures, we
agree with Appellants that the prior art, alone or in combination, does not
disclose distinct "monitoring periods" for each of three incline gradient
ranges. Moreover, the Examiner makes no factual findings and offers no
conclusions that it would have been obvious to modify the proposed
combination of Jackson and Makishima to provide for distinct monitoring
periods.
In view of the foregoing, we do not sustain the Examiner's
unpatentability rejection of claim 14.
DECISION
The decision of the Examiner to reject claims 1-13 is affirmed.
The decision of the Examiner to reject claim 14 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)(l )(iv).
AFFIRMED-IN-PART
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