Ex Parte RussDownload PDFPatent Trial and Appeal BoardNov 22, 201612731647 (P.T.A.B. Nov. 22, 2016) Copy Citation 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. 12/731,647 03/25/2010 Stephen George Russ 81167205 1512 28395 7590 11/25/2016 RROOKS KTTSHMAN P C /FfTET EXAMINER 1000 TOWN CENTER TRIEU, THAI BA 22ND FLOOR SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER 3748 NOTIFICATION DATE DELIVERY MODE 11/25/2016 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN GEORGE RUSS Appeal 2014-007934 Application 12/731,647 Technology Center 3700 Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 6—12 and 16—22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection. Appeal 2014-007934 Application 12/731,647 CLAIMED SUBJECT MATTER The claims are directed to a turbocharged engine with naturally aspirated operating mode. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for controlling an engine having a turbocharger, comprising: substantially simultaneously redirecting a portion of intake airflow around a compressor and a portion of exhaust flow around a turbine in response to an operating parameter exceeding a first threshold; and substantially simultaneously redirecting substantially all intake airflow to bypass the compressor and directly enter engine cylinders and substantially all exhaust flow to bypass the turbine in response to the operating parameter exceeding a second threshold different from the first threshold. REJECTIONS1 Claim 18 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 6, 7, and 18-22 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 6—12 and 16—202 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matthews (U.S. PGPub. US 2009/0165458 Al, Jul. 2, 2009). 1 The Examiner withdrew the rejections based entirely, or in part, on Glassey (U.S. 3,651,636). Ans. 3. 2 The Examiner discussed claim 16 but did not include claim 16 in the heading of the rejection. The Examiner included claims 17—20 in the statement of rejection but did not include any discussion of these claims. As Appellant does not separately argue the prior-art rejection of any of claims 16—20 we consider such arguments waived. 37 C.F.R. § 41.37(c)(iv); Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008)(“[T]he applicant can waive 2 Appeal 2014-007934 Application 12/731,647 OPINION § 112, first paragraph; Drawings New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required ‘to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64. When an explicit limitation in a claim is not present in the written description it must be shown that a person of ordinary skill would have understood that the description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353, (Fed. Cir. 1998). The description of a single embodiment of broadly claimed subject matter might not alone be enough to provide a description of that invention for purposes of adequate disclosure. In re Lukach 442 F.2d at 970. If the originally filed disclosure does not provide support for each appeal of a ground of rejection, and can waive the right to demand additional subgrouping of claims within a given appealed ground.”) 3 Appeal 2014-007934 Application 12/731,647 claim limitation, a new or amended claim must be rejected under 35 U.S.C. §112, paragraph 1, as lacking adequate written description. The Examiner correctly found that the written description only discusses an arrangement having a single as opposed to a plurality of turbochargers according to claim 18. Non-Final Act. 4; Ans. 4—5. The first paragraph of § 112 serves to ensure that, as part of the quid pro quo of the patent grant, an applicant does not attempt to claim that which the applicant did not actually invent. This provision may serve to limit the permissible subject matter for which an applicant seeks patent protection. Determining that a claim encompasses subject matter not adequately disclosed in the Specification does not amount to impermissibly importing limitations from the Specification when construing a claim. See Appeal Br. 7. Additionally, the error in the Examiner’s prior-art rejection of claim 8, as discussed below, does not apprise us of error in the Examiner’s rejection of claim 18 under §112, first paragraph. The only portion of the Specification Appellant points to as supporting a claim scope including multiple turbochargers is page 2, lines 20-24. Appeal Br. 7. Based on the statement that “boost [is] applied only for lower engine speeds” Appellant asks us to infer that “no boost from any other turbocharger is provided at higher engine speeds” and thus conclude that this supports the claim 18 limitation of “bypassing all the turbochargers of that engine.” Appeal Br. 7. The problem for Appellant is that the absence of boost at higher speeds also, and perhaps more likely, could reasonably be understood to infer the absence of any additional turbochargers. This is particularly likely in light of the fact that no 4 Appeal 2014-007934 Application 12/731,647 additional turbochargers or their arrangement are illustrated in the figures3 or expressly or implicitly discussed anywhere in the Specification. Ans. 4—5. Accordingly, we agree with the Examiner that Appellant’s disclosure does not demonstrate Appellant had possession of the subject matter now defined by claim 18. § 112, second paragraph With regard to the term “substantially simultaneously” in claim 1, the Examiner did not apply a “per se” rule of indefmiteness, as Appellant suggests. Appeal Br. 8. Rather, the Examiner applied the appropriate standard for a term of degree: It must be determined whether the Specification provides some standard for measuring that degree so that one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification. Seattle Box Co., v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Appellant alleges that one skilled in the art would know how to evaluate the degree in question based on whether the stated goal is achieved: “‘so that the engine is naturally aspirated.’” Appeal Br. 8. However, Appellant does not apprise us as to how the degree of simultaneousness of valve actuation relates to whether or not the engine is naturally aspirated. Natural aspiration relates to the makeup of intake air flow. So, in contrast, as the Examiner points out, one could reasonably ascertain, based on this 3 We normally do not review objections to the Drawings. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967); Appeal Br. 6; Non-Final Act. 2-3. However, as the issue appears to relate to, or be determinative of, the rejection (See, e.g., In re Searles, 422 F. 2d 431, 434-435 (CCPA 1970); Application of Hengehold, 440 F. 2d 1395 (CCPA 1971); MPEP § 608.04(c)), our resolution of the rejection is dispositive as to the objection. 5 Appeal 2014-007934 Application 12/731,647 natural aspiration standard, when “substantially all intake airflow” bypasses the compressor. The fact that the Examiner does not take issue with the use of substantially in the context of the amount of airflow makes it clear that the Examiner is not applying a per se rule regarding the term “substantially.” The Examiner correctly determined that there does not appear to be a standard in the Specification regarding how to interpret this term as it relates to valve actuation timing and Appellant has not apprised us of any such standard. Appellant’s argument that one skilled in the art would understand the term without any explanation as to what exactly one skilled in the art would understand it to mean is of little value. See Appeal Br. 8. The problem, from the standpoint of the potential infringer is well- illustrated by the Application of Matthews. According to the description associated with Figure 3 of Appellant’s Drawings, line 314 represents the point in time where both the turbine and compressor are bypassed. Spec. 12. In comparison, that actuation is represented by line 512 in Figure 4 of Matthews. Matthews para. 47. There is some unknown time associated with line 512. Perhaps if that time is on the order of milliseconds or a small number of seconds the Matthews valves are reasonably regarded as actuated “substantially simultaneously” but for a longer interval they are not. The problem is the Specification does not provide sufficient instruction for figuring out where to place that cutoff. This renders the objective boundaries of the claim uncertain and therefore warrants a rejection under § 112, second paragraph. See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014). As claim 16 presents the same issue but was not included in the Examiner’s rejection we now include claim 16 and its dependent claim 17 in this rejection and designate this as a new ground of rejection under 37 C.F.R. § 41.50(b). Appellant does not argue, 6 Appeal 2014-007934 Application 12/731,647 and therefore has waived any arguments against, the separate basis for the Examiner’s rejection of claim 20 under § 112, second paragraph. Non-Final Act. 6; 37 C.F.R. § 41.37(c)(iv); Hyatt v. Dudas, supra. Turning to the indefmiteness rejection of claim 18, we do not agree with the Examiner that reference to “all turbochargers” renders the claim indefinite. Although a more precise phrase may have been “bypassing each of said at least one turbocharger,” Appellant is free to choose the terms used to define the invention (MPEP §2173.01) so long as there is no lack of clarity as to the metes of bounds of the claim. The issues that the Examiner raises (Non-Final Act. 6; Ans. 5—7) relate to the absence of supporting disclosure teaching one skilled in the art how to make the claimed subject matter or demonstrating that Appellant has possession of that subject matter. These are issues more relevant to the first paragraph of § 112. MPEP § 2174 (citing In re Borkowski, 422 F. 2d 904 (CCPA 1970)). Above, we have affirmed the Examiner’s rejection of claim 18 under § 112, first paragraph. As the Examiner has not set forth sufficient basis for holding claim 18 indefinite, we do not sustain the Examiner’s under § 112, second paragraph. § 103(a) The uncertainty as to the scope of claim 1 and of the actual time associated with valve actuation 506, 508 in Matthews, as discussed above, renders the prior art rejection of claim 1 and those claim depending therefrom unsustainable. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“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 Caveney, 761 F.2d 671, 674, (Fed.Cir.1985) (A 7 Appeal 2014-007934 Application 12/731,647 preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application under § 103.) Regarding the prior-art rejection of claim 8, we agree with Appellant that the rejection cannot be sustained because the Examiner has impermissibly used the open-ended transitional phrase of the claim as justification for reading express limitations out of the claim. Appeal Br. 13; Ans. 13. Claim 8 requires, by its express language “single,” the absence of other turbochargers and turbocharger stages within the engine. An open- ended transitional phrase does not serve to negate that express requirement of the claim. See In re Skvorecz 580 F. 3d 1262, 1263-8 (Fed. Cir. 2009). DECISION The rejection of claim 18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement and the objection to the drawings is affirmed. The rejection of claims 1, 6, 7, and 20 under 35 U.S.C. § 112, second paragraph, is affirmed. Pursuant to 37 C.F.R. § 41.50(b), we add claims 16 and 17 to this rejection for the reasons discussed above. The rejection of claims 18, 19, 21, and 22 under 35 U.S.C. § 112, second paragraph, is reversed. The rejection of claims 1, and 6—12 under 35 U.S.C. § 103(a) as unpatentable over Matthews is reversed. The rejection of claims 16—20 under 35 U.S.C. § 103(a) as unpatentable over Matthews is summarily affirmed. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of 8 Appeal 2014-007934 Application 12/731,647 rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation