Ex Parte Rogers et al

Patent Trials and Appeals BoardJan 9, 2019

14641540 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/641,540 03/09/2015 46442 7590 01/11/2019 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Craig Brian Rogers 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. 83514043; 67186-167PUS1 9181 EXAMINER KESSIE, DANIEL ART UNIT PAPER NUMBER 2836 NOTIFICATION DATE DELIVERY MODE 01/11/2019 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 CRAIG BRIAN ROGERS and LIHUA CHEN 1 Appeal2018-004253 Application 14/641,540 Technology Center 2800 Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3, 6-12, 14--17, and 20-26. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. BACKGROUND The subject matter on appeal relates to "an inductor for an electrified vehicle and, more particularly, to using a portion of a cable as an inductor." E.g., Spec. ,r 1; Claim 1. Claim 1 is reproduced below from page 15 ( Claims Appendix) of the Appeal Brief: 1 The Appellant is the Applicant, Ford Global Technologies, LLC, which is also identified as the real party in interest. See App. Br. 1. Appeal2018-004253 Application 14/641,540 1. An electrified vehicle assembly, comprising: an inner sheath providing an open area; and a cable connected to an electrified vehicle battery, the cable having a coiled portion providing an inductor, the coiled portion wound around the open area. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 1, 12,2 16, and 24 under 35 U.S.C. Â§ I02(a)(l) as anticipated by Tatematsu (US 7,896,116 B2, issued Mar. 1, 2011 ); 2. Claims 6-8 and 17 under 35 U.S.C. Â§ 103 as unpatentable over Tatematsu and Tahara (US 2009/0114462 Al, published May 7, 2009); 3. Claims 9, 15, and 20 under 35 U.S.C. Â§ 103 as unpatentable over Tatematsu and Yoshinaga (US 2010/0066166 Al, published Mar. 18, 2010); 4. Claims 3, 14, and 26 under 35 U.S.C. Â§ 103 as unpatentable over Tatematsu in view of Areskoug (US 2003/0164245 Al, published Sept. 4, 2003); 5. Claims 10, 11, 22, and 23 under 35 U.S.C. Â§ 103 as unpatentable over Tatematsu; 6. Claims 21 and 25 under 35 U.S.C. Â§ 103 as unpatentable over Tatematsu, Areskoug, and Y oshinaga. 2 The header listing the rejection does not include claim 12. See Final Act. 2. However, the analysis does include claim 12, see id., and the Appellant treats claim 12 as if it is part of the rejection, see App. Br. 3. Accordingly, the header's omission of claim 12 is harmless error, and we consider claim 12 to be subject to the stated rejection. 2 Appeal2018-004253 Application 14/641,540 ANALYSIS Claim 1 requires, inter alia, "an inner sheath providing an open area." In the Final Action, the Examiner disregards the word "inner" because "the claim fails to include an outer sheath," and the Examiner interprets the term "inner sheath" as simply "sheath." Final Act. 8. In view of that interpretation of claim 1, the Examiner determines that sheath 310 of Tatematsu, which is the outermost layer of Tatematsu's cable, see Tatematsu Fig. 13, constitutes an "inner sheath," see Final Act. 2. That rationale is not persuasive. "All words in a claim must be considered in judging the patentability of [a] claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). 3 It was error for the Examiner to ignore the word "inner." See id. The Examiner has not persuasively established that Tatematsu's sheath 310, which is the outermost element of Tatematsu's cable, see Tatematsu Fig. 13, constitutes an "inner sheath." The term "inner" implies that there is some outer component, such as, e.g., a coil or an outer sheath (or both). See, e.g., Spec. ,r 6, Figs. 4, 5. We reverse the Examiner's rejection of claim 1. The Examiner's analysis of the other claims on appeal does not remedy the error identified above by persuasively explaining why sheath 310 of Tatematsu constitutes an "inner sheath." Accordingly, we likewise reverse the Examiner's rejections of claims 3, 6-12, 14--17, and 20-26. 3 We take no position as to whether claim 1 's failure to recite an outer sheath in addition to an inner sheath raises concerns under 35 U.S.C. Â§ 112. 3 Appeal2018-004253 Application 14/641,540 CONCLUSION We REVERSE the Examiner's rejections of claims 1, 3, 6-12, 14--17, and 20-26. REVERSED 4