Ex Parte Pierik

Patent Trial and Appeal Board

Aug 24, 2017

13564111 (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.
13/564,111 08/01/2012 Ronald J. Pierik P019507-US-NP 1065
74175 7590
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
ESHETE, ZELALEM
ART UNIT PAPER NUMBER
3748
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):
gm-inbox@hdp.com
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD J. PIERIK
Appeal 2016-0021031
Application 13/564,1112
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3—11, and 13—24. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision considers Appellant’s Appeal Brief (“Appeal Br.,” filed
July 2, 2015) and Reply Brief (“Reply Br.,” filed Dec. 7, 2015), as well as
the Examiner’s Final Office Action (“Final Act.,” mailed Jan. 29, 2015),
Advisory Action (“Adv. Act.,” mailed Apr. 2, 2015), and Answer (“Ans.,”
mailed Oct. 6, 2015).
2 Appellant identifies GM Global Technology Operations LLC as the real
party in interest. Appeal Br. 3.
Appeal 2016-002103
Application 13/564,111
CLAIMED SUBJECT MATTER
The invention “relates to a variable valve actuation system including
an accumulator and a method for controlling the variable valve actuation
system.” Spec. 11. Claims 1 and 11 are the independent claims on appeal.
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A method comprising:
actuating at least one of an intake valve and an exhaust
valve of an engine using a valve actuator;
supplying hydraulic fluid to the valve actuator through a
supply line using a pump;
storing hydraulic fluid in an accumulator; and
opening a control valve in response to at least one of a first
pressure of hydraulic fluid in the supply line and a second
pressure of hydraulic fluid in the accumulator, wherein the
control valve is disposed between the accumulator and the valve
actuator.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Aota et al. (“Aota”)
Cornell et al. (“Cornell”)
Gardner et al. (“Gardner”)
Busse
Rosenlund
US 5,209,453
US 2001/0023682 Al
US 2006/0027212 Al
US 2010/0326385 Al
WO 2010/054653 Al
May 11, 1993
Sept. 27, 2001
Feb. 9, 2006
Dec. 30, 2010
May 20, 2010
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1, 3, 4, 6—8, 10, 11, 13, 14, 16—18, 20, 23, and 24 under
35 U.S.C. § 102(b) as anticipated by Rosenlund;
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Appeal 2016-002103
Application 13/564,111
claims 5 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Rosenlund and Aota;
claims 6, 7, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over
Rosenlund and Busse;
claims 9 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Rosenlund and Cornell; and
claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Rosenlund and Gardner.
ANALYSIS
Independent claim 11 and dependent claims 13—20, 22, and 24
Independent claim 11 is directed to a method, and recites “opening a
control valve in response to at least one of a first pressure of hydraulic fluid
in the supply line and a second pressure of hydraulic fluid in the
accumulator.” Appeal Br., Claims App. We agree with Appellant that the
Examiner has not shown Rosenlund discloses this limitation of the claim.
Appeal Br. 7—10; Reply Br. 2—7.
With respect to the limitation at issue, the Examiner relies on
Rosenlund’s control valve 46, 48 being a two-way valve, and on
Rosenlund’s description of period 5 of the timing sequence diagram shown
in Figure 4. Final Act. 3. According to the Examiner, two-way valve 46, 48
has a valve portion 46 that opens upon the closing of a valve portion 48.
Final Act. 10; Ans. 2. During period 5, engine control unit (ECU) 42 closes
valve portion 48 based on the pressure in accumulator, which results in the
opening of valve portion 46 in response to the pressure in the accumulator.
Final Act. 10; Ans. 2.
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Appeal 2016-002103
Application 13/564,111
Rosenlund indeed discloses an embodiment of the invention having
two-way valve 46, 48, as shown in Figure 6. The timing sequence diagram
of Figure 4, however, regards the embodiment having separate electronically
controlled valves 46 and 48 shown in Figure 3. Rosenlund, p. 7,11. 15—17.
There is no disclosure of two-way valve 46, 48 having valve components
that oppositely open and close, and there is no indication that the timing
sequence diagram for the embodiment of having separate electronically
controlled valves 46 and 48 is applicable to the embodiment having two-way
valve 46, 48. Consequently, the Examiner’s reliance on two-way
valve 46, 48 and the description of period 5 in the timing sequence diagram
of Figure 4 improperly combines elements of different embodiments of the
invention, which is insufficient to show that the limitation at issue is
anticipated by Rosenlund. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008) (“it is not enough [in an anticipation rejection]
that the prior art reference discloses part of the claimed invention, which an
ordinary' artisan might supplement to make the whole, or that it includes
multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention.”).
The Examiner further finds that period 2 of the timing sequence
diagram of Figure 4 discloses the limitation at issue. Ans. 3. Although
Figure 4 shows electronically controlled valve 46 open during period 2,
Rosenlund discloses that ECU 42 determines the end of period 1, i.e., the
beginning of period 2, based on the signal from position sensor 33, not on
the pressure in the accumulator. Rosenlund, p. 15,11. 9-16. Accordingly,
Rosenlund’s description of period 2 does not disclose the limitation at issue.
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Appeal 2016-002103
Application 13/564,111
In view of the foregoing, the Examiner has not shown Rosenlund
discloses “opening a control valve in response to at least one of a first
pressure of hydraulic fluid in the supply line and a second pressure of
hydraulic fluid in the accumulator,” as recited in independent claim 11. We,
therefore, do not sustain the Examiner’s rejection under 35 U.S.C. § 102(b)
of independent claim 11 dependent claims 13, 14, 16—18, 20, and 24. The
Examiner’s rejections under § 103(a) of claims 15—17, 19, and 22 suffer
from the same deficiency as the Examiner’s rejection of independent
claim 11 (Final Act. 7—10), and we similarly do not sustain the Examiner’s
rejections of these claims.
Independent claim 1 and dependent claims 3—10, 21, and 23
Appellant relies on the same arguments for independent claim 11 to
traverse the Examiner’s rejection of independent claim 1. Appeal Br. 10;
Reply Br. 7. Independent claim 1 recites “a valve control module
configured to open the control valve in response to at least one of a first
pressure of hydraulic fluid in the supply line and a second pressure of
hydraulic fluid in the accumulator.” Appeal Br., Claims App. Although this
limitation of independent claim 1 recites the same function as discussed
above in regard to independent claim 11, independent claim 1 is directed to a
system, not a method. Id.
The fact that the Examiner has not shown Rosenlund discloses the
recited function does not defeat a finding of anticipation for the system of
independent claim 1. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
According to our reviewing court, in the absence of a disclosure of a claimed
function, an examiner can still make a prima facie case for anticipation of an
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Application 13/564,111
apparatus if the examiner has reason to believe the function is an inherent
characteristic of the prior art. Id. at 1478 (“[Wjhere the Patent Office has
reason to believe that a functional limitation . . . may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic.”) (citation omitted).
Here, the Examiner finds Rosenlund’s valve control module is capable
of performing the recited function, i.e., the recited function is an inherent
characteristic of Rosenlund’s valve control module. Ans. 3^4. This finding
is based on Rosenlund’s disclosure of the accumulator being physically
connected to two-way control valve 46, 48 and ECU 42 using data from the
pressure sensor to control the various control valves. Id. Rosenlund,
however, does not describe the components of two-way valve 46, 48 or how
ECU 42 controls the opening and closing of it. Furthermore, Rosenlund
expressly teaches that ECU 42 closes, not opens, electronically controlled
valve 48 based on the pressure in the accumulator. Rosenlund, p. 16,1. 34—
p. 17,1. 13. Consequently, the Examiner has not provided a reason to
believe that the recited function of “open[ing] the control valve in response
to at least one of a first pressure of hydraulic fluid in the supply line and a
second pressure of hydraulic fluid in the accumulator,” is an inherent
characteristic of Rosenlund’s ECU 42.
In view of the foregoing, the Examiner has not shown Rosenlund
discloses “a valve control module configured to open the control valve in
response to at least one of a first pressure of hydraulic fluid in the supply
line and a second pressure of hydraulic fluid in the accumulator,” as recited
in independent claim 1. Accordingly, we do not sustain the rejection under
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Appeal 2016-002103
Application 13/564,111
35 U.S.C. § 102(b) of independent claim 1 and dependent claims 3, 4, 6—8,
10, and 23. The Examiner’s rejections under § 103(a) of claims 5—7, 9,
and 21 suffer from the same deficiency as the Examiner’s rejection of
independent claim 1 (Final Act. 7—10), and we also do not sustain the
Examiner’s rejections of these claims.
DECISION
The Examiner’s decision to reject claims 1, 3—11, and 13—24 is
reversed.
REVERSED
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