Ex Parte Russ

Patent Trial and Appeal Board

Nov 22, 2016

12731647 (P.T.A.B. Nov. 22, 2016)

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
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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.”)
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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
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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.
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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,
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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
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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
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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)
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