Ex Parte Conrad

Patent Trial and Appeal Board

Mar 23, 2016

12774327 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121774,327 05/05/2010
28289 7590 03/25/2016
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Larry J. Conrad
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.
2361-100787 7772
EXAMINER
LEE, BRANDON DONGPA
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY J. CONRAD
Appeal2014-002169
Application 12/774,327 1
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Larry J. Conrad (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-21. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
According to Appellant, the real party in interest is Brookville
Equipment Corporation. Appeal Br. 2 (filed July 8, 2013).
Appeal2014-002169
Application 12/774,327
INVENTION
Appellant's invention relates to "a filter regeneration system and
method for use in facilitating regeneration of filter arrangement in fluid
communication with an exhaust gas system of an internal combustion
engine." Spec. 1, i-f 2.
Claims 1, 13, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A filter regeneration system for use with an internal
combustion engine that includes a gas exhaust system for
fluidly expelling exhaust gas at an exhaust gas temperature and
a filter arrangement in fluid communication with the gas
exhaust system and configured to capture particulate matter in
the exhaust gas, said regeneration system comprising:
a load generating arrangement coupled to the internal
combustion engine for applying a mechanical load to the
internal combustion engine; and
a controller coupled to the load generating arrangement,
said controller operative for controlling the exhaust gas
temperature to be at a desired temperature by controlling the
mechanical load applied to the internal combustion engine by
the load generating arrangement.
App. Br. 19 (Claims App.).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-12, 20, and 21under35 U.S.C.
§ 112, second paragraph, as being indefinite.
II. The Examiner rejected claims 1-8 and 11-21under35 U.S.C.
§ 102(b) as being anticipated by Gomulka (US 6,865,883 B2,
issued March 15, 2005).
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Application 12/774,327
III. The Examiner rejected claims 9 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Gomulka and Appellant's
Admitted Prior Art (AAPA).2
ANALYSIS
Rejection I
The Examiner finds that the limitation of a "controller operative for
controlling" in each of independent claims 1 and 20 is indefinite because it is
not clear whether it is "positively reciting control logic with the controller or
merely reciting the capability of the controller." Final Act. 4 (mailed Jan. 7,
2013). According to the Examiner, "the language is interpreted to describe
the capability of the controller." Id.
Appellant argues that the disputed limitation describes "a capability of
the controller" and cites to paragraph 22 of the Specification as support.
Appeal Br. 4.
In response, the Examiner takes the position that "[a]lthough the
claims 1 and 20 have been interpreted by the office as to only requiring the
general purpose computer (broad interpretation), nonetheless the claims ...
have been reject[ed] under [the] narrower interpretation which requires the
special computer with specific control logic to perform the functions." Ans.
3.
2 The Examiner takes Official Notice that "it is well known to one
skilled in the art at the time of the invention that [catalyzed soot filters
(CSP)] contain[] oxidation catalyst which oxidizes hydrocarbons and carbon
monoxides in the exhaust gas." Final Act. 13.
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Application 12/774,327
In this case, both Appellant and Examiner agree that the limitation of
a "controller operative for controlling" describes "a capability of the
controller." Compare Final Act. 4 with Appeal Br. 4. As correctly noted by
Appellant, the Specification describes controller 22 as "configured, adapted
or programmed to control ... the load generating arrangement 20." Spec. 6,
i-f 22. Thus, "those skilled in the art would understand what is claimed when
the claim is read in light of the [S]pecification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Moreover, by not specifying what type of control logic is required,
but merely stating the capability of the controller, the claim is merely broad,
not ambiguous. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977)
(breadth is not indefiniteness). That is to say, it is clear that the claim
requires a controller capable of performing the claimed function; no further
detail is necessary to know the metes and bounds of the claim.
Accordingly, we do not sustain the rejection of claims 1-12, 20, and
21under35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection II
Claims 1--8, 11, 12, and 14-19
Independent claim 1 requires, inter alia, a "controller operative for
controlling the exhaust gas temperature to be at a desired temperature by
controlling the mechanical load applied to the internal combustion engine."
Appeal Br. 9. Similarly, independent claim 13 recites, "controlling the
exhaust gas temperature to be at a desired temperature by controlling the
mechanical load on the internal combustion engine." Id. at 11.
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Application 12/774,327
The Examiner finds that Gomulka teaches a filter regeneration system
including a load generating arrangement 30, 34 coupled to an internal
combustion engine 10 and a filter arrangement 20, 22, 24. See Final Act. 5.
The Examiner further finds that when the exhaust gas temperature is not
sufficient for regeneration, Gomulka's controller 14 controls the exhaust gas
temperature to be above a specified temperature of 400, 500, or 700 QC by
activating heater load bank 30 to increase the load on engine 10, and thus
increase the exhaust gas temperature. See Ans. 4 (citing Gomulka, col. 1, 11.
12-25 and 55-67; col. 2, 11. 1-8; col. 3, 11. 50-64; Fig. 1 ).
Appellant argues that Gomulka fails to teach, "controlling the exhaust
gas temperature to be at a desired temperature by controlling a mechanical
load applied to an internal combustion engine." Appeal Br. 5. According to
Appellant, Gomulka teaches, "blindly activating the heating elements ...
without regard to the exhaust gas temperature being at a desired
temperature." Reply Br. 3.
We are not persuaded by Appellant's arguments because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671F.2d1344, 1348 (CCPA 1982). Although the claims are
interpreted in light of the Specification, limitations from the Specification
are not read into the claims. We must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In this case, in
contrast to the Specification, which uses the term "adjust" (see Spec. 7, i-f
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Application 12/774,327
24 ), independent claims 1 and 13 recite the broader term of "controlling" 3
the engine load in order to control the desired exhaust gas temperature.
Here, because Gomulka uses controller 14 to achieve an exhaust gas
temperature sufficient for regeneration/desulfation of 400, 500, or 700 QC,
Gomulka's controller 14 controls, that is, influences the exhaust gas
temperature. See Gomulka, col. 1, 11. 12-25. Furthermore, because in
Gomulka the load on engine 10 is influenced by the activation of heater load
bank 30, Gomulka's controller 14 also controls engine load. See id., col. 3,
11. 51---64. As such, we agree with the Examiner that Gomulka teaches all the
limitations of independent claims 1 and 13. See Ans. 4.
In conclusion, for the forgoing reasons, we sustain the rejection of
independent claims 1and13 under 35 U.S.C. § 102(b) as being anticipated
by Gomulka.
With respect to the rejection of dependent claims 2-8, 11, 12 and 14--
19, Appellant relies on the same arguments as presented supra. See Appeal
Br. 5. Accordingly, we likewise sustain the anticipation rejection of
dependent claims 2-8, 11, 12 and 14--19.
Claims 20 and 21
In contrast to independent claims 1 and 13, independent claim 20
recites "controlling at least one operating parameter of the load generating
3 An ordinary and customary meaning of the term "control" is "to
exercise restraining or directing influence over." Merriam Webster's
Collegiate Dictionary (10th ed. 1997).
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Application 12/774,327
arrangement to set the temperature of the exhaust gas temperature at a
desired temperature." Br. 12 (emphasis added).
At the outset, we note that the use of the term "set" 4 in claim 20,
rather than the term "control," as per claims 1 and 13, connotes a different
meaning. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d
1308, 1317 (Fed. Cir. 2000) ("In the absence of any evidence to the contrary,
we must presume that the use of these different terms in the claims connotes
different meanings."). When construing claim terminology in the United
States Patent and Trademark Office, claims are to be given their broadest
reasonable interpretation consistent with the Specification. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case,
Appellant's Specification describes controller 22 as "adjust[ing] the engine
load to emit exhaust gas at the desired exhaust gas temperature." Spec. 7, ,-r
24. Appellant's Specification also describes using controller 22 to control
the engine idle speed or the electric load/torque of generator 24 in order "to
selectively control the emitted exhaust gas temperature." Id. at 7-8, i-fi-126,
27. Hence, in light of the Specification, we agree with Appellant that
independent claim 20 requires a "control relationship between an operating
parameter of the load generating arrangement" and "setting the temperature
of the exhaust gas at a desired temperature." Appeal Br. 6. In other words,
the "control relationship" alluded by Appellant requires more than merely
increasing the exhaust gas temperature until a regeneration level is achieved,
4 An ordinary and customary meaning of the term "set" is "to adjust (a
device and especially a measuring device) to a desired position." Merriam
Webster's Collegiate Dictionary (10th ed. 1997)
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Application 12/774,327
but rather the ability to adjust the exhaust gas temperature to a specific value
based on controlling an operating parameter of the load generating
arrangement. However, in Gomulka, controller 14 merely activates heater
load bank 30, i.e., turns it ON, to increase the exhaust gas temperature to a
level suitable for regeneration/ desulfation. See Gomulka, col. 3, 11. 51---61.
We thus agree with Appellant that, "blindly activating the heating elements
[32]" does not constitute "set[ ting] the temperature of the exhaust gas
temperature at a desired temperature," as called for by independent claim 20.
Reply Br. 3.
Accordingly, for the forgoing reasons, we do not sustain the rejection
of independent claim 20, and its dependent claim 21, under 35 U.S.C.
§ 102(b) as anticipated by Gomulka.
Rejection III
Claims 9 and 10 depend indirectly from independent claim 1. See
Appeal Br. 10. Appellant relies on the same arguments as presented supra
with respect to the rejection of independent claim 1. See Appeal Br. 5.
Accordingly, for the same reasons as discussed above, we sustain the
rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Gomulka and AAP A.
SUMMARY
The Examiner decision to reject claims 1-12, 20, and 21under35
U.S.C. § 112, second paragraph, as being indefinite, is reversed.
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Application 12/774,327
The Examiner's decision to reject claims 1-8 and 11-21under35
U.S.C. § 102(b) as being anticipated by Gomulka is affirmed as to claims 1-
8 and 11-19 and reversed as to claims 20 and 21.
The Examiner's decision to reject claims 9 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Gomulka and AAPA is affirmed.
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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