Ex Parte Diehl et al

Patent Trial and Appeal Board

Mar 10, 2017

12748332 (P.T.A.B. Mar. 10, 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.
23348-007001 4997
EXAMINER
FLUHART, STACEY A
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
12/748,332 03/26/2010
75589 7590 03/14/2017
Matheson Keys Daffer & Kordzik PLLC
7004 Bee Cave Rd.
Bldg. 1, Suite 110
Austin, TX 78746
Joel Craig Diehl
03/14/2017 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):
kkordzik@ mathesonkeys.com
claney @ mathesonkeys .com
kdaffer @ mathesonkeys. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL CRAIG DIEHL, DAN WARNER HARRIS,
WARNER ALLEN HARRIS, WARNER OLAN HARRIS, and
WAYNE TURNBOW
Appeal 2015-001600
Application 12/748,332
Technology Center 3600
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI,
and NATHAN A. ENGELS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joel Craig Diehl et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting claims 4, 5, 7, 11, and 14—212
under 35 U.S.C. § 103(a) as unpatentable over Harris (US 7,600,595 B2, iss.
Oct. 13, 2009) and Zillmer (US 2007/0137909 Al, pub. June 21, 2007).
Final Act. 3—14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Clean Emissions
Technology, Inc. Appeal Br. 1.
2 Claims 2, 8, and 12 are cancelled, and claims 1, 3, 6, 9, 10, and 13 have
been deemed allowable. Appeal Br. 1; Final Act. 15.
Appeal 2015-001600
Application 12/748,332
THE CLAIMED SUBJECT MATTER
Claims 4, 5, 7, and 11 are independent. Claim 4, reproduced below, is
illustrative of the claimed subject matter on appeal.
4, In a vehicle having a manual transmission coupled to an
internal combustion engine (‘ICE") via a first clutch, the first
clutch configured to respond to movement of a clutch pedal,
wherein in an ICE mode of vehicle operation, the vehicle is
configured so that the ICE propels the vehicle responsive to
movement of an accelerator pedal, a system comprising:
an electric motor coupled to the manual transmission and
configured for propelli ng the vehicle i n an electric traction motor
(“ETM”) mode of vehicle operation;
controls configured for (i) generating an ETM demand
signal responsive to a position of the clutch pedal, and (ii)
modifying the generating of the ETM demand signal responsive
to a position of the clutch pedal, wherein the electric motor is
configured to adjust its output torque as a function of a
magnitude of the ETM demand signal: and
a second clutch interposed between the electric motor and
the manual transmission, wherein the controls are further
configured for (i) disengaging the electric motor from the manual
transmission via the second clutch responsive to detecting an
actuated position of the clu tch pedal when the vehicle is in the
ETM mode of vehicle operation, and (ii) engaging the electric
motor to the manual transmission via the second clutch
responsive to detecting a resting position of the clutch pedal
when the vehicle is in the ETM mode of vehicle operation.
Appeal Br. 18-19 (Claims App).
OPINION
Appellants argue claims 4, 5, 7, 11, and 14—21 as a group. Appeal Br.
14—17. We select claim 4 as the representative claim, and claims 5,7, 11,
and 14—21 stand or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv)(2014).
The Examiner finds that Harris teaches most of the limitations of
independent claim 4, including, inter alia, a vehicle having a manual
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Application 12/748,332
transmission coupled to two different power sources— an internal
combustion engine (“ICE”) and an electric traction motor (“ETM”). Final
Act. 3 (citing Figs. 3A, 5). The Examiner finds Harris teaches propelling the
vehicle in an “ICE mode” in which the ICE provides power to the
transmission via a clutch. Id. The Examiner also finds Harris teaches an
“ETM mode” in which the clutch disengages the ICE from the transmission
and the ETM provides power to the transmission. Id. (citing Harris,
5:63-6:9,7:38-62).
The Examiner further finds that Harris teaches electrically
deenergizing the ETM to prohibit power transmission from the ETM to the
transmission. Id. at 3^4 (citing Harris, 9:36-45); accord Ans. 3 (citing
Harris, 3:42—503) (“Harris already discloses isolating the motor from the
transmission electrically by deenergizing the motor.”). The Examiner finds
Harris does not disclose a second clutch interposed between the ETM and
the transmission. Final Act. 4. In addition to the findings relating to Harris,
the Examiner finds Zillmer teaches using a clutch between an electric motor
and a transmission to isolate the transmission from the electric motor. Id.
(citing Zillmer Fig., 119).
Based on the combination of references, the Examiner concludes that
it would have been obvious to add a second clutch between Harris’ ETM
150 and manual transmission 122 “in order to perform the same function
3 Column 3, lines 42 to 50 of Harris teach that controls 160 are “operable
with, the motor controller to deenergize the electric motor responsive to a
shutdown signal, wherein the shutdown signal indicates ... a precursor to
operation of the ICE [and] . . . may include a clutch position signal.” We
note that Harris’ use of a clutch position signal is similar to Appellants’
disclosure of disengaging a motive force from a transmission responsive to
depressing a clutch pedal. See Spec. 131.
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Application 12/748,332
mechanically which is performed in Harris electrically, i.e., prohibiting any
power from the motor (150) from being input into the transmission (122).”
Id. The Examiner maintains that the “proposed modification merely changes
the electronic actuation of the motor (150) to a mechanical actuation, i.e., a
clutch.” Id. at 5, 15.
The Examiner also finds Harris teaches controls 160. Final Act. 3.
As to controls 160 being configured for “disengaging the electric motor from
the manual transmission via the second clutch responsive to detecting an
actuated position of the clutch pedal when the vehicle is in the ETM mode of
vehicle operation” as recited in claim 4, the Examiner finds that Harris’s
controls 160 would do so “[i]f Harris were modified ... to use a second
clutch to perform the same function which Harris performs electrically.” Id.
at 4 (citing Harris, 9:36—45). As to controls 160 being configured for
“engaging the electric motor to the manual transmission via the second
clutch responsive to detecting a resting position of the clutch pedal when the
vehicle is in the ETM mode of vehicle operation” as recited in claim 4, the
Examiner also finds that Harris’s controls would do so “[i]f Harris were
modified ... to use a second clutch to perform the same function which
Harris performs electrically.” Id. (citing Harris, 9:36-45).
Appellants argue that use of Zillmer’s clutch arrangement, i.e., “a
clutch that separates both the ICE and the ETM from engagement with the
transmission” in Harris “will also prohibit any power from the ICE from
being input into the transmission.” Appeal Br. 15. Appellants further argue
that the Examiner’s proposed modification would, thus, render Harris
unsatisfactory for its intended purpose. Id.', see also Reply Br. 3.
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Application 12/748,332
We are not persuaded by this argument in that it does not address the
rejection as articulated by the Examiner. We understand the Examiner to be
modifying Harris only by “add[ing] a second clutch interposed between the
electric motor (150) and the manual transmission (122)” of Harris for
separating the ETM from engagement with the transmission (Final Act. 4),
not modifying Harris so as separate both the ICE and ETM from
engagement with the transmission as in the arrangement depicted in Zillmer.
See Ans. 3 (“Zillmer is merely used for its disclosure of a mechanical
method of isolating a motor from a transmission [and] ... is not cited for its
physical arrangement with the engine and motor both along the same
path/shaft to the transmission.”). The Examiner’s citation of Zillmer as
evidence only that it was known to use a clutch to isolate an electric motor
from a manual transmission is appropriate because all of the features of the
secondary reference need not be bodily incorporated into the primary
reference (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)) and the skilled
artisan is not required to blindly follow the teachings of one prior art
reference over the other without the exercise of independent judgment {Lear
Siegler Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)).
Appellants additionally argue that because Zillmer “discloses a
different physical arrangement of the electric motor, ICE, [and] transmission
than what is performed in the claimed invention” and “does not operate in
the same manner as the present invention,” “it would take undue
experimentation for one of ordinary skill in the art to arrive at the claimed
invention.” Appeal Br. 15. Appellants further argue that the Examiner
relies on “an oversimplified substitution” and has not sufficiently explained
how the “complicated mechanical arrangement of adding a second clutch
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and all of the accompanying mechanical actuators, clutch pedal, etc. to
replace a shutdown device comprising electronic control logic ... is within
the capability of one of ordinary skill in the art.” Id. at 15—16; see also
Reply Br. 3—5 (asserting that modification of Harris with the teachings of
Zillmer would not give rise to predictable results and a person of ordinary
skill in the art would have to resort to undue experimentation to combine the
teachings).
The Examiner responds that Zillmer “evidences] that one having
ordinary skill in the art would . . . understand how to implement a clutch and
its associated elements” in that Zillmer itself does not describe all the
physical details as to how to implement a clutch. Ans. 4. The Examiner
further responds that the detailed description referenced by Appellants in
support of the level of complexity of its mechanical arrangement is
substantially disclosed identically in Harris. Id.
Although we appreciate the differences between the arrangements of
Harris and Zillmer, Appellants have not persuaded us that the Examiner’s
proposed modification of Harris’s system with a clutch interposed between
the electric motor and transmission as taught by Zillmer would have been
beyond the level of ordinary skill in the art or unpredictable to a person of
ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). As noted by the Examiner, Appellants’
written description does not provide the level of detail allegedly missing
from the combined teachings of the prior art. Moreover, claim 4 is not
limited to, and does not reflect, the “complicated mechanical arrangement of
adding a second clutch and all of the accompanying mechanical actuators,
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Application 12/748,332
clutch pedal, etc.” (Appeal Br. 15) that Appellants contend would have
prevented the Examiner’s combination; claim 4 simply recites a second
clutch interposed between the electric motor and the manual transmission,
along with functional language describing controls configured to engage and
disengage the electric motor and transmission. See Rogers v. Desa Int 7,
Inc., 198 Fed. Appx. 918, 922 (Fed. Cir. July 13, 2006) (rejecting an
argument that physical limitations of the prior art elements would have
prevented a person of ordinary skill from combining the elements because
the claims did not reflect the physical barrier that allegedly would have
prevented the combination) (nonprecedential).
Appellants further argue that the feature of the “first and second
clutches [being] responsive to the clutch pedal, which is referring to the
same clutch pedal” “is not disclosed or suggested by the combination of the
references.” Appeal Br. 16. Appellants’contention is not persuasive in that
it fails to include an explanation as to why the Examiner’s fact finding (Final
Act. 4) is in error. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted the same language in the prior rule under 37 C.F.R.
§ 41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Moreover, the
cited portions of Zillmer (Final Act. 4) teach a driver’s operation of a clutch
pedal to disengage and engage the clutch between an electric motor and a
transmission. Zillmer 119 (“The drive shafts of the internal combustion
engine 12 and/or the electric motor 14 are isolated from the transmission 16
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Application 12/748,332
by a clutch 20, which can be disengaged by the driver by operating a clutch
pedal. . . and can be engaged when the clutch pedal is not being operated.”)
(emphasis omitted).
Appellants further argue that the combined references do not teach
disengaging the ETM from, nor engaging the ETM to, the manual
transmission via the second clutch responsive to detecting a particular
position of the clutch pedal when the vehicle is in the ETM mode of vehicle
operation. Appeal Br. 16. More particularly, Appellants argue that “the
independent claims recite that the engaging and disengaging of the second
clutch occurs during the ETM mode of operation,4. . . [but] Harris is
disclosing the shutdown of the electric motor during the ICE mode of
operation.” Reply Br. 3; see also Appeal Br. 16—17 (citing Harris, 6:13—18)
(Appellants arguing that the function Harris performs electrically “is to shut
down the electric motor.”). Appellants argue that, in contrast, the claimed
invention does not use the clutch to alternatively de-energize (e.g., via
disengagement of the clutch) and energize (e.g., via engagement of the
clutch) the ETM. Appeal Br. 17. Rather, the claimed invention provides the
second clutch “so that the electric motor does not have to be shut down” (id.)
and “to enable the shifting of the gears in the manual transmission when the
electric motor is disengaged using the clutch pedal” (Reply Br. 1—2).
Appellants acknowledge that “the claims do not specifically recite
such a changing of the gears occurring during the disengagement of the
electric motor from the transmission.” Reply Br. 2. Appellants, however,
4 Appellants assert that “the ETM mode of operation is when the electric
motor is powering the drive train of the vehicle with the ICE disengaged.”
Reply Br. 2 (citing Spec. 120).
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Application 12/748,332
rely on the claim’s more broad recitation of providing for the disengaging
and engaging of the ETM from/to the transmission to occur during the ETM
mode of vehicle operation to support their position. Id. Appellants assert
that Harris only de-energizes the ETM during the ICE mode of operation,
not during the ETM mode of vehicle operation. Id. Appellants further assert
that because “the electric motor needed to have been engaged with the
manual transmission to be operating in the ETM mode of operation in the
first place,” “an operator would not then engage the electric motor to the
manual transmission” “when the vehicle is operating in the ETM mode of
operation.” Id.
We are not persuaded that Harris fails to teach the broad recitation of
disengaging and engaging of the ETM from/to the transmission during the
ETM mode of vehicle operation, as currently recited in the claims. In
particular, as to disengagement of the ETM from the transmission in ETM
mode, Harris specifically contemplates interrupting the path for holding
motor control “once it is running,” i.e., already in ETM mode. Harris,
9:37-40. As to engagement of the ETM to the transmission during ETM
mode, Harris also contemplates the ETM for powering the vehicle “in lieu of
the [vehicle’s] ICE,” i.e., for an ETM mode. Harris, 3:7—9. Because Harris
already discloses “electrical” disengagement and engagement of an ETM
from/to a transmission during an ETM mode of vehicle operation, the
Examiner has adequately explained how modifying Harris to include a
second clutch interposed between ETM 150 and transmission 122 would
provide for corresponding “mechanical” disengagement and engagement of
an ETM from/to a transmission during an ETM mode of vehicle operation
(in place of existing “electrical” disengagement and engagement).
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Application 12/748,332
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 4, and claims 5,7, 11, and 14—21 which fall therewith,
under 35 U.S.C. § 103(a) as unpatentable over Harris and Zillmer.
DECISION
The Examiner’s decision to reject claims 4, 5, 7, 11, and 14—21 under
35 U.S.C. § 103(a) 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
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