Ex Parte Christen et al

Patent Trial and Appeal Board

Aug 24, 2017

13599939 (P.T.A.B. Aug. 24, 2017)

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.
13/599,939 08/30/2012 Urs Christen 83249266;67186-012PUS1 8087
46442 7590 08/28/2017
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
HILGENDORF, DALE W
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
cgolaw@yahoo.com
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URS CHRISTEN, ENGBERT SPIJKER, and
THOMAS RAMBOW
Appeal 2016-001368
Application 13/599,93 91
Technology Center 3600
Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as Ford
Global Technologies, LLC. App. Br. 1.
Appeal 2016-001368
Application 13/599,939
CLAIMED SUBJECT MATTER
The claims are directed to controlling the output voltage of a
generator in a hybrid vehicle based on the charging acceptance of the vehicle
battery. Spec. 113. Claim 16, reproduced below, is illustrative of the
claimed subject matter:
16. A control device for a hybrid vehicle generator, the control
device is configured to determine a charging acceptance of a
vehicle battery and actuate the generator as a function of the
charging acceptance.
App. Br. 13 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kinoshita US 6,225,784 B1 May 1,2001
Salman US 7,360,615 B2 Apr. 22,2008
Center US 2009/0118877 A1 May 7, 2009
REJECTIONS
Claims 7, 8, 15, and 20 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the enablement requirement. Final
Act. 4.
Claims 10, 14—17, 19, and 20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Kinoshita. Final Act. 5.
Claims 1—9, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Salman and Kinoshita. Final Act. 8.
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Claims 11—13 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita and Salman. Final Act. 15.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Salman, Kinoshita, and Center. Final Act. 15.
ISSUES FOR DECISION
First Issue: Has the Examiner erred in finding Kinoshita discloses
each and every limitation recited in independent claims 10 and 16?
Second Issue: Has the Examiner erred in finding Kinoshita discloses
“restricting the generator to only operate when a charging urgency measure
is higher than a charging opportunity measure,” as recited in claims 15 and
20?
Third Issue'. Has the Examiner erred in finding Kinoshita discloses
“wherein in the second charging mode the control device is configured to
allow the generator to be driven by propulsionless travel,” as recited in claim
19?
Fourth Issue. Has the Examiner erred in finding independent claims 1
and 9 are obvious over Salman and Kinoshita?
Fifth Issue. Has the Examiner erred in finding Salman and Kinoshita
teach or suggest “determining a charging urgency measure,” “determining a
charging opportunity measure,” and “actuating the generator so as to charge
the battery when the charging urgency measure is higher than the charging
opportunity measure,” as recited in claim 7?
Sixth Issue: Has the Examiner erred in finding Salman, Kinoshita, and
Center teach or suggest “wherein the charging acceptance is the amount of
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charging current or maximum charge which can be accepted by the battery
over a time interval,” as recited in claim 21?
Seventh Issue: Has the Examiner erred in finding claims 7, 8, 15, and
20 lack enablement?
ANALYSIS
First Issue
Claim 10 recites the limitation “determining a charge acceptance
level,” and claim 16 recites the limitation of a control device “configured to
determine a charging acceptance of a vehicle battery and actuate the
generator as a function of the charging acceptance.” App. Br. 13 (Claims
Appendix). In rejecting claims 10 and 16, the Examiner finds Kinoshita
discloses a control device for a hybrid vehicle generator as “a battery
controller for monitoring the state of the battery and for controlling the
amount of charge and discharge.” Final Act. 6 (citing Kinoshita col. 3,11.
41—43). The Examiner further finds the battery controller is configured to
“determine a charging acceptance of [the] vehicle battery” because it
determines a “regeneration controlled amount upper limit value” which
limits the current delivered to the battery at a given time. Final Act. 6;
Ans. 2—3. More specifically, the Examiner finds the charging acceptance is
40 amps at those times when the battery charge is below 80 percent and 3
amps at those times when the battery charge is between 80 percent and 90
percent. Final Act. 6; Ans. 3 (citing Kinoshita col. 7,11. 56—65). The
Examiner further finds Kinoshita discloses “actuating] the generator as a
function of the charging acceptance” because it controls the charge current
based on whether the upper limit value is 40 amps or 3 amps. Id.
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Appellants contend the Examiner has erred because Kinoshita does
not disclose determining any “charging acceptance.” App. Br. 6. Appellants
argue that the phrase “charging acceptance” is defined in the specification as
“the maximum charge that can be taken up by the battery in a time interval
At.” App. Br. 7. Appellants further argue the “upper limit value” relied
upon by the Examiner “is not the same as the maximum charge that can be
taken up by the battery in a time interval At.” App. Br. 7. According to
Appellants, the upper limit of regeneration relied upon by the Examiner is
not the same as charging acceptance because it
simply conveys that a first current of 40 amps is used as the
upper limit of regeneration if a remaining battery charge is
between 0 and 80 percent, and a second current of 3 amps is
used as the upper limit of regeneration if the remaining battery
charge is between 80 and 90 percent.
App. Br. 7. Appellants also argue the battery charge in Kinoshita “is a fixed
threshold and not a time interval.” Reply Br. 3. Finally, with respect to
claim 16, Appellants state that “Kinoshita also fails to teach operating or
actuating a generator based on or as a function of the previously determined
charge acceptance level.” App. Br. 8. However, Appellants do not provide
an explanation for why Kinoshita is deficient in this last respect.
Appellants’ argument that Kinoshita’s “regeneration controlled
amount upper limit value” is not the same as “charging acceptance,” does
not persuade us of Examiner error. Appellants contend the upper limit value
does not fall within the scope of “charging acceptance,” as “charging
acceptance” is properly understood to mean the maximum charge which can
be taken up by the battery in a time interval. However, the Specification
makes clear that a “time interval” associated with “charge acceptance” may
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include a particular time. Spec. 1212 (“The charging acceptance AQAt can
be determined, in particular, continuously or at brief time intervals .... [t]he
charging acceptance therefore preferably constitutes the respective charging
acceptance of the battery at a particular time.”) Based on this disclosure, we
conclude the meaning of “charging acceptance” is not limited to an average
current over a defined time interval, but instead may include the maximum
charging current over a time interval, a given time, continuously, and/or a
particular time, as expressly stated in the Specification.3 The Examiner
finds, and we agree, the upper limit value of 40 amps disclosed in Kinoshita
is determined to be the maximum charging current that the battery can
accept at a particular time—namely, when the battery is charged less than 80
percent. As a result, the disclosure in Kinoshita falls within the meaning of
“charging acceptance,” and we are not persuaded the Examiner’s finding is
in error.
We find Appellants’ argument (with respect to claim 16) that
Kinoshita fails to disclose actuating the generator as a function of the charge
acceptance unpersuasive for two reasons. First, it does not sufficiently
2 Appellants and the Examiner each cite to paragraph numbers with respect
to pre-grant publication US 2013/0054072 Al, which is the publication of
this application. Consistent with Board practice, our citations are made to
the Specification as filed. Consequently, the cited paragraph numbers in this
Decision may differ from those provided in the Briefs and Answer.
3 This interpretation is further confirmed by claim 4, which depends from
claim 1 and recites that “the charging acceptance is performed continuously
or in time intervals,” (App. Br. 13), thus not limiting charge acceptance to a
specific time interval. Claim 21 also provides additional support under the
principle of claim differentiation, as it also depends from claim 1, and recites
that “the charging acceptance is the amount of charging current or maximum
charge which can be accepted by the battery over a time interval.” App. Br.
16 (Claims Appendix).
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explain the error in the Examiner’s finding with respect to this limitation. It
amounts to only a generalized statement that the limitation is not present in
the prior art, which is insufficient to demonstrate Examiner error. 37 C.F.R.
§ 41,37(c)(iv) (“A statement which merely points out what a claim recites
will not be a considered an argument for separate patentability of the
claim.”). Second, claim 16 requires only that the generator be actuated as a
“function of’ the determined charging acceptance. Kinoshita’s battery
controller is actuated “as a function of charging acceptance [i.e., the
regeneration controlled 40 amp upper limit value]” because “the
charging/discharging controller” permits regeneration “so that the amount of
regeneration does not exceed the . . . upper limit value.” Col. 7,11. 66
through col. 8,11. 4. Accordingly, we sustain the rejection of claims 10 and
16 under 35 U.S.C. § 102(b).
Second Issue
Appellants separately argue patentability of claims 15 and 20, which
depend from claims 10 and 16, respectively, and which each recite actuating
and/or operating the generator only “when a charging urgency measure is
higher than a charging opportunity measure.” App Br. 15 (Claims
Appendix). In rejecting these claims as anticipated by Kinoshita, the
Examiner first determines that the Specification defines “charging urgency”
as a function of the state of charge and charging acceptance, and it defines
“charging opportunity” as a function of propulsion torque and brake
pressure. Ans. 4 (citing Spec. 124). Applying these definitions, the
Examiner finds Kinoshita discloses a charging urgency measure because it
calculates a remaining battery charge and a battery temperature. Ans. 4.
The remaining battery charge and battery temperature are used to set a
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predetermined value (i.e, a charging urgency) at which charging is permitted
or not permitted. Id. With respect to “charging opportunity,” the Examiner
finds Kinoshita discloses calculating propulsion torque based on the throttle
opening, engine speed and motor assistance, and the brake pressure when
computer regeneration values during vehicle deceleration. Ans. 4—5. The
Examiner further finds propulsion torque and brake pressure are “common
and well-known parameters in the vehicle controls art.” Ans. 5.
Appellants argue Kinoshita is deficient because it does not calculate
any charging urgency value, nor does it calculate a charging opportunity
value. App. Br. 8. Appellants further contend there is no disclosure in
Kinoshita of restricting a generator based on any such values. App. Br. 8
(claim 15), 9 (claim 20). According to Appellants, the “concept of a
‘charging urgency measure’ is not contemplated,” in Kinoshita, and its
novelty is further evidenced by the fact that the Examiner acknowledges
“charging urgency” is an uncommon term, and that “an internet search of the
term yielded no results except for [Appellants’] own application
publication.” Reply Br. 4.
We agree with Appellants that Kinoshita does not disclose each
limitation recited in claims 15 and 20. The Examiner correctly interprets the
phrases “charging urgency” and “charging opportunity” based on the
definitions set forth in the Specification. See Spec. 124 (defining “charging
urgency as a “predetermined function of the state of charge [ ] and of the
charging acceptance [ ];” defining “charging opportunity” as “a
predetermined function of the propulsion torque [ ] and of the brake pressure
[ ]”). However, the Examiner does not adequately explain, nor is it apparent
to us, how Kinoshita discloses calculating or determining any value,
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charging urgency value or otherwise, as a predetermined function of the
state of charge and charging acceptance. Nor do we observe in Kinoshita
any disclosure of calculating or determining any value, charging opportunity
measure or otherwise, as a predetermined function of propulsion torque and
brake pressure. As such, we are persuaded the Examiner has not
demonstrate Kinoshita discloses each and every limitation in claims 15 and
20, and we do not sustain the rejection of these claims under 35 U.S.C.
§ 102(b).
Third Issue
Claim 19 depends from claim 16 and recites “wherein in the second
charging mode the control device is configured to allow the generator to be
driven by propulsionless travel.” App. Br. 15 (Claims Appendix). In
rejecting claim 19, the Examiner looks to Appellants’ Specification to
determine the scope of “propulsionless travel,” and finds that the
Specification teaches that propulsionless travel includes both coasting and
braking. Ans. 5 (citing Spec. 117 (“propulsionless phrases, i.e. during
propulsionless coasting or during braking of the motor vehicle)). From this
description, the Examiner concludes propulsionless travel is any travel
during which the engine is not creating torque. Id. The Examiner further
finds Kinoshita discloses performing regeneration during deceleration (Id.
(citing Kinoshita col. 3,11. 23—25), and that “when the vehicle decelerates, it
is reasonable to assume that the vehicle is either coasting or braking.”
Ans. 5.
Appellants contend Kinoshita fails to teach driving a generator by
propulsionless travel. App. Br. 9. According to Appellants, in Kinoshita
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“[t]he motor 2 may not necessarily be driven as claimed during the
deceleration.” Id.
We are not persuaded by Appellants’ argument. Appellants’
argument seems to be that Kinoshita leaves open the possibility that
regeneration is not performed during deceleration. We disagree. Kinoshita
discloses the motor 2 “acting as a generator when the assisting force is not
required.” Kinoshita col. 2,11. 13—14. In order for the motor to act as a
generator when assisting force is not required (i.e., when braking or
decelerating), the motor must be driven. Thus, contrary to Appellants’
contention, Kinoshita does disclose performing regeneration (i.e., allowing
the generator to be driven) by propulsionless travel (when the vehicle does
not require assisting force). We sustain the rejection of claim 19.
Fourth Issue
Independent claims 1 and 9 are rejected as unpatentable over the
combination of Salman and Kinoshita. These claims recite:
1. A method for operating a motor vehicle driven by
an internal combustion engine having a rechargeable battery and
a generator for charging the battery, comprising:
determining a charging acceptance of the battery;
operating the generator in a first charging mode, in which
the generator is driven by the internal combustion engine in order
to charge the battery, or a second charging mode, in which the
generator is driven by a propulsionless travel movement of the
motor vehicle in order to charge the battery; and
selecting the first or second charging mode as a function
of the charging acceptance.
9. A motor vehicle, comprising:
an internal combustion engine which is arranged so as to
drive the motor vehicle;
a rechargeable battery;
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a generator for charging the battery; and
a control device for actuating the generator to charge the
battery;
wherein the control device is configured to determine a
charging acceptance of the battery and to actuate the generator as
a function of the charging acceptance.
App. Br. 13, 14 (Claims Appendix). In rejecting claims 1 and 9 as obvious,
the Examiner relies primarily on Salman, finding it teaches the recited
limitations except for selecting charging modes as a function of the charging
acceptance (for claim 1) and actuating the generator as a function of the
charging acceptance (for claim 9). Final Act. 8—9 (claim 1), 12—13 (claim
9). The Examiner finds, however, that Kinoshita teaches selecting charging
modes (claim 1) and actuating the generator (claim 9) as a function of
charging acceptance, relying on the same portions relied upon in rejecting
independent claims 10 and 16 discussed supra. Final Act. 9, 13 (citing
Kinoshita col. 7,11. 56—65).
Appellants contend the rejection is erroneous in three respects. First,
Appellants argue neither Salman nor Kinoshita teach “determining a
charging acceptance” or “selecting [the] first [or] second charging modes...
as a function of the charging acceptance.” App. Br. 9. According to
Appellants, Kinoshita does not teach these limitations for the same reasons
as claims 1 and 9, and Salman is limited to using battery charge and
discharge power limits to determine engine and motor power requirements,
and are unrelated to both Kinoshita and the claimed subject matter. Reply
Br. 4. Second, and specific to claim 1, Appellants argue Salman fails to
teach any second “charging mode[,] in which the generator is driven by [a]
propulsionless travel movement of the motor vehicle in order to charge the
battery.” App. Br. 9—10. Third, Appellants argue the Examiner has not
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provided sufficient reasoning to support obviousness because there is no
evidence the combination would provide the benefits of increase battery
capacity and improved fuel economy, and that the currents and voltages used
in Kinoshita are incompatible with Salman. App. Br. 10; Reply 4—5. We
address each argument in turn.
As noted above, Appellants first argue Kinoshita and Salman do not
teach determining a charging acceptance. However, the Examiner does not
rely on Kinoshita for this limitation. Rather, the Examiner finds Salman
teaches determining a charging acceptance. Ans. 6 (“the [EJxaminer cited
Salman [ ] [as] teaching the claimed determining a charging acceptance of
the battery”). Although Appellants contend in their Reply Brief that Salman
does not teach determining a charging acceptance, they do not address a
specific finding made by the Examiner:
The teachings of Salman et al use a maximum value for the
battery state of charge, a power limit, charge and discharge
limits, and the battery SOC threshold to determine the charging
and discharging of the battery. In order to perform any charging
and discharging of a hybrid vehicle battery, a “charging
acceptance” would be determined.
Ans. 7. Appellants do not provide any explanation for why this finding is in
error. Moreover, we agree with the Examiner that Salman teaches, or at
least suggests, determining a charge acceptance for the battery because it
teaches the use of a battery charge power limit (see, e.g., Salman Abstract,
col. 4,11. 56—59), which reflects the maximum amount of power that can be
delivered to the battery at a given time. Accordingly, we are not persuaded
by Appellants’ first argument.
Appellants’ second argument that Salman fails to teach any “second
charging mode, in which the generator is driven by a propulsionless travel
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movement of the motor vehicle in order to charge the battery,” is also
unpersuasive. App. Br. 9—10. The Examiner finds, and we agree, Salman
discloses the recited “second charging mode” because it teaches “the motor
will be able to operate as a generator to charge the battery through
regenerative braking when the vehicle goes down the hill.” Salman col. 1,11.
58—60. Appellants argue this disclosure is insufficient because “[t]here is no
evidence that the motor is not driven by the engine of Salman when the
vehicle goes ‘down the hill.’” App. Br. 10. However, as explained by the
Examiner:
Since the motor performs regeneration for vehicle deceleration,
and it is common and well-known for hybrid vehicle to turn off
their internal combustion engine for coasting or deceleration
phases of travel, then the only means to perform the regeneration
would be the braking when the vehicle goes down a hill (claimed
propulsionless travel). With the engine off, the engine could not
possible drive the motor to charge the battery. Therefore, the
motor would charge the battery from the vehicle braking.
Ans. 8. We agree with the Examiner’s explanation, and find that a providing
the recited “second charging mode” would have been obvious to one of
ordinary skill in light of the Salman’s teachings.4
We find unpersuasive Appellants’ third argument that Salman and
Kinoshita are improperly combined. Appellants argue there is no evidence
4 We further note this argument is not persuasive because operating in the
recited “second charging mode” need not be carried out in order to be within
the scope of the claim. Ex Parte Schulhauser, Appeal No. 2013-007848
(PTAB April 28, 2016) (holding that under broadest reasonable
interpretation conditional steps in process claims need not be carried out to
be within the scope of the claim). As written, the claim requires only that
the generator be operated in “the first charging mode” or “the second
charging mode.” If the prior art teaches operating in one of the modes, it
need not teach operating in the other to be within the scope of the claim.
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the benefits of improved battery life and full economy would result from the
proposed combination. We disagree. As explained by the Examiner, an
explanation with which we agree, Salman teaches the use of a predictive
model which allows for optimizing charging routines in general, while
Kinoshita provides the additional benefit of dealing in real-time with
anomalous situations unaccounted for in Salman’s predictive model.
Ans. 8—9. We also are not persuaded Appellants’ contention that upper limit
currents of 3 amps and 40 amps used in Kinoshita would not be useful
within Salman for meeting its objectives. Appellants do not provide any
evidence in support of this assertion. In re Pearson, 494 F.2d 1399, 1405,
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”) Moreover, we agree with the Examiner that “a person skilled in
the art would recognize that these are suggested or example values that need
not be set to every hybrid vehicle,” (Ans. 9), and that a skilled artisan would
modify them as needed. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”). Accordingly, we sustain
the rejection of claims 1 and 9 under 35 U.S.C. § 103(a).
Fifth Issue
Appellants also argue separately for patentability of dependent
claim 7 which, similar to claims 15 and 20 discussed supra, recites
determining a “charging urgency measure as a function of the SOC and the
charging acceptance of the battery” and a “charging opportunity measure as
a function of a propulsion torque of the internal combustion engine and a
brake pressure in a brake system of the motor vehicle.” App. Br. 14 (Claims
Appendix).
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In rejecting these claims as unpatentable over Salman and Kinoshita,
the Examiner relies on Salman, finding it teaches deriving values through
the use of constraint equations (i.e., charging urgency measure) that which
are expressed as a function of a battery charge power limit (i.e., charging
acceptance) and the battery state of charge. Final Act. 11 (citing Salman
Abstract). The Examiner further finds Salman teaches the recited
“determining a charging opportunity measure” because it teaches
determining an optimal rear motor traction power as a function of motor
power output and engine performance (i.e, engine torque) and front and rear
motor braking power (i.e., braking pressure). Final Act. 11—12 (citing
Salman col. 6,11. 3—10).
In arguing for patentability, Appellants argue “neither Salman nor
Kinoshita teaches or suggests determining a charging urgency or charging
opportunity measure.” App. Br. 11. We are not persuaded by Appellants’
argument because Appellants do not explain with specificity how the cited
portions of Salman are deficient. As such, their argument amounts to only a
generalized statement that the limitation is not present in the prior art, which
is insufficient to demonstrate Examiner error. 37 C.F.R. § 41.37(c)(iv) (“A
statement which merely points out what a claim recites will not be a
considered an argument for separate patentability of the claim.”).
Accordingly, we sustain the rejection of claim 7.
Sixth Issue
Appellants also separately argue for patentability of claim 21, which
recites “wherein the charging acceptance is the amount of charging current
or maximum charge which can be accepted by the battery over a time
interval,” as recited in claim 21. The Examiner concludes claim 21 is
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obvious over Salman and Kinoshita (Final Act. 13—14), and the Examiner
separately concludes claim 21 is obvious over Salman, Kinoshita, and
Center. Final Act. 15—16.
In rejecting claim 21, the Examiner finds both Salman and Kinoshita
teach wherein the “charging acceptance is the amount of charging current or
maximum charge which can be accepted by the battery.” Final Act. 16
(citing Salman Abstract, col. 3,11. 51—60; Kinoshita col. 7,11. 56—65). The
Examiner finds Salman and Kinoshita do not explicitly teach “over a time
interval.” The Examiner relies on Center, finding it teaches that battery
charging from regenerative breaking may be controlled for time periods.
Ans. 9 (citing Center 144). The Examiner explains that the disclosure in
Center “demonstrates that it is not novel to control battery charging for time
periods as long [as] 10 seconds.” Ans. 9.
Appellants contend “[n]one of the asserted prior art ‘determin[es] a
charging acceptance of the battery’ over a given time interval.” App. Br. 11.
According to Appellants, “[performing regenerative braking that requires
discharge or charge rates that exceed maximum discharge and charge rates
for short time periods, such as taught by Center, is different from the
claimed “charging acceptance.” Id.
We are not persuaded by Appellants’ argument because it does not
address the rejection made by the Examiner. The Examiner does not find
that Center teaches the recited “charging acceptance.” Rather, the Examiner
finds Salman and Kinoshita teach charging acceptance, but do not teach
determining it over a specific time period. The Examiner relies on Center
only to show that it was known to control battery charging based on
measurements taken during braking time intervals as long as ten seconds.
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Thus, even if Center’s regenerative braking is different than charging
acceptance does not demonstrate Examiner error because the Examiner does
not find Center teaches charging acceptance. Accordingly, we are not
persuaded the Examiner erred in rejecting claim 21, and we sustain the
rejection.
Seventh Issue
Claims 7, 8, 15, and 20 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. In order
for a claim to be enabled, the specification enable a person skilled in the art
to make and use the invention without undue experimentation. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). Determining enablement is a question
of law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495,
(Fed. Cir. 1991).
The Examiner concludes claims 7, 8, 15, and 20 lack enablement
because they recite a “charging urgency measure” and a “charging
opportunity measure,” but the Specification does not provide any
explanation of how these measures are computed or determined. Final
Act. 4.
Appellants contend the claims are enabled because a person of
ordinary skill in the art could make or use the invention of claims 7, 8, 15,
and 20 without undue experimentation. App Br. 4. In support of this
contention, Appellants argue the specification includes substantial details
about the claimed charging opportunity and charging urgency, details
including the specific parameters from which these values can be derived.
App. Br. 4 (citing Spec. Tflf 24—25). Appellants contend these definitions are
more than sufficient to allow a person of ordinary skill in the art to make or
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use the invention. App. Br. 4—5. Appellants specifically cite Figure 2 as
“one example of how the charging urgency measure . . . [and] charging
opportunity measure can be read.” App. Br. 5. According to Appellants,
based on the graph depicted in Figure 2, “[t]he charging urgency and
opportunity values can be easily derived without undue experimentation by
selecting the value along the Z axis that matches the given values of the X
and Y axes.” Id.
We agree with Appellants that the Examiner has not shown lack of
enablement by a preponderance of evidence. The Specification states that
the “charging urgency measure urg is determined as a function of the state of
charge SOC and the charging acceptance.” Spec. 24. Thus, the
Specification defines the parameters which are used to determine a charging
urgency measure—the charging acceptance and the state of charge. The
Examiner’s main objection is that the Specification does not provide specific
values or operations to define the functional relationship between the
charging urgency measure and the parameters from which it can be derived.
However, we agree with Appellants that the graph depicted in Figure 2
would provide a skilled artisan with sufficient information to implement at
least one embodiment of the charging urgency and charging opportunity.
This disclosure is sufficient. MPEP § 2164.03 (“A single embodiment may
provide broad enablement in cases involving predictable factors, such as
mechanical or electrical elements.”). Accordingly, we do not sustain the
rejection of claims 7, 8, 15, and 20 under 35 U.S.C. § 112, first paragraph.
18
Appeal 2016-001368
Application 13/599,939
Remaining Claims
Appellants do not present separate arguments for the remaining
dependent claims 2—6, 11—14, and 18. As such, they each fall with their
respective base claims.
DECISION
We reverse the rejection of claims 7, 8, 15, and 20 under 35 U.S.C.
§112, first paragraph as failing to comply with the enablement requirement.
We reverse the rejections of claims 15 and 20 under 35 U.S.C.
§ 102(b).
We affirm the rejection of claims 10, 14, 16, 17, and 19 under 35
U.S.C. § 102(b).
We affirm the rejections of claims 1—9, 11—13, 18, and 21—23 under
35 U.S.C. § 103(a).
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)(l)(iv).
AFFIRMED-IN-PART
19