Ex Parte Leone et al

Patent Trial and Appeal BoardJan 29, 2019

13735980 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/735,980 01/07/2013 36865 7590 01/29/2019 MCCOY RUSSELL LLP 806 S.W. BROADWAY, SUITE 600 PORTLAND, OR 97205 FIRST NAMED INVENTOR Thomas G. Leone 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. 83335117 5757 EXAMINER HAMAOUI, DAVIDE ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 01/29/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS G. LEONE and GOPICHANDRA SURNILLA Appeal2017-0009961 Application 13/735,9802 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 Our Decision references Appellants' Appeal Brief ("App. Br." filed Jan. 4, 2016), Reply Brief ("Reply Br." filed Oct. 24, 2016), the Examiner's Answer ("Ans." mailed Aug. 24, 2016), and the Final Office Action ("Final Act." mailed May 1, 2015). 2 Appellants identify the real party in interest as "Ford Global Technologies, LLC." App. Br. 3. Appeal2017-000996 Application 13/735,980 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ I34(a) from the decision rejecting claims 1-10 and 21-26 as unpatentable under 35 U.S.C. Â§ I03(a) over Winsor, 3 Stein, 4 Kosaka, 5 and Crower, 6 which are the only claims pending in the application. 7 Appellants elected to waive attendance at an oral hearing scheduled for January 15, 2019. 8 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Claimed Invention Appellants' claimed invention relates to a method "for controlling use of various fuels in an internal combustion engine." Spec. 1:4--5. Claim 1, the sole independent claim, is representative of the subject matter on appeal and recites: 1. A method of operating an engine including an [Exhaust Gas Recirculation] EGR passage coupled between an engine intake and an engine exhaust, comprising: adjusting, via an electronic controller, an engine load at which water is direct injected into an engine cylinder based on an amount of flowing EGR. (App. Br. 32, Claims Appendix). 3 Winsor et al., US 8,371,278 B2, iss. Feb. 12, 2013 ("Winsor"). 4 Stein et al., US 2007/0215110 Al, pub. Sept. 20, 2007 ("Stein"). 5 Kosaka et al., US 3,963,000, iss. June 15, 1976 ("Kosaka"). 6 Crower, US 2007/0022977 Al, pub. Feb. 1, 2007. 7 Claims 11-20 are cancelled. App. Br. 34, Claims Appendix. 8 Waiver filed January 11, 2019. 2 Appeal2017-000996 Application 13/735,980 ANALYSIS In rejecting claim 1 over Winsor, Stein, Kosaka, and Crower, the Examiner finds Winsor discloses the whole claim at column 3, lines 39-51. Final Act. 4 ("Winsor discloses that the three parameters of load, water injection, and EGR are coordinated in an engine system"). The Examiner asserts: By virtue of the fact that these parameters are coordinated, that it is known to make other considerations in EGR control (for example, turbocharger control, or a malfunctioning valve), and that the reasons for employing EGR and water injection are well understood, it would have been obvious to adjust an engine load at which water is direct injected based on EGR flow. Essentially, one of ordinary skill would readily appreciate that since water injection and EGR influence at least one common parameter ( e.g. knocking), the control algorithm should consider the status of the EGR subsystem when deciding whether or not to inject water (for example, so as to not alter the temperature too much). In other words, at any given load, it would be obvious to decide whether or not to inject water based on EGR flow. Accordingly, the load at which water is injected is based on EGR flow. (It should be noted that knocking is typically a function of load.) Id. at 4--5. "As additional evidence," the rejection cites paragraph 91 of Stein and column 3 lines 16-33 of Kosaka, and states "it would have been obvious to provide the method of the claimed invention since it naturally follows from the teachings of the provided art." Id. at 5. Finally, the rejection cites paragraph 21 of Crower and paragraph 69 of Stein for disclosing "direct water injection," and concludes that "it would have been obvious to employ direct water injection in the proposed system as it [is a] 3 Appeal2017-000996 Application 13/735,980 known technique at least for a more finely controllable feature, and thus within the realm of one of ordinary skill." Id. Alleging error in the rejection, Appellants argue "there is insufficient articulated reasoning with rational underpinnings based on evidence of record as to why one of ordinary skill in the art would have taken Winsor and modified it to include the missing claimed elements." App. Br. 14 ("absent is an explanation of how the teachings of Winsor lead to the missing claimed invention, e.g., by combining and applying specific teachings of Winsor and another reference"). A claim is unpatentable underÂ§ 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,406 (2007). An invention "composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Id. at 418. Instead, a determination ofunpatentability on a ground of obviousness must include "'articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."' Id. (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). The obviousness evaluation "should be made explicit" and it "can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id. We find the rejection and rationale to combine the teachings of the references is unclear and predicated upon conclusory statements. It is 4 Appeal2017-000996 Application 13/735,980 unclear whether the rejection is based on Winsor alone, or the modification of Winsor with Stein, Kosaka, and Crower. Although the statement of the rejection bases unpatentability over Winsor in view of Stein, Kosaka, and Crower, "the standing rejection asserts that Winsor actually shows the elements of claim 1." App. Br. 10. For instance, after finding that "Winsor discloses that the three parameters of load, water injection, and EGR are coordinated in an engine system," the Examiner summarily concludes that it would have been obvious to adjust an engine load at which water is directed injected based on EGR flow "[b ]y virtue of the fact that these parameters are coordinated" and knowledge of one skilled in the art. See Final Act. 4. In support of this rationale, the Examiner asserts that because both water injection and EGR influence engine knocking, "the control algorithm should consider the status of the EGR subsystem when deciding whether or not to inject water." See id. (emphasis added). But as Appellants observe, Winsor in not concerned with engine knocking. App. Br. 13 ("Winsor discusses the situation where the engine is of the compression ignition or diesel type, an engine type not disclosed as having any concern with knock because there is no spark ignition in the first place."); see also Reply Br. 10. Winsor is concerned with the random collection of water droplets swept into the intake of the engine "that cause excess oxides of nitrogen in some cylinders and increased smoke and hydrocarbons in other cylinders." Winsor 1 :25-31. Winsor addresses this concern by implementing "an EGR system that recirculates high percentages of exhaust gas but avoids the uncontrolled ingestion of water droplets into the engine." Id. 1 :32-35. As such, we agree that Winsor does not support the Examiner's proffered rationale, "but rather undercuts it since there is no 5 Appeal2017-000996 Application 13/735,980 issue with regard to knocking in the compression ignition engine of Winsor." App. Br. 13. We also agree the rejection does not provide a motivation to modify Winsor, or adequately explain how any of the references individually or collectively lead to the claimed invention. Id. at 14. It is well settled that obviousness cannot be sustained by mere conclusory statements. Kahn, 441 F.3d at 988; accord KSR, 550 U.S. at 418. As such, a prima facie case of obviousness has not established as to independent claim 1. Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. Â§ 103(a), as well as dependent claims 2-10 and 21-26. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious."). DECISION The Office's decision to reject claims 1-10 and 21-26 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 6