Ex Parte STRAUSS

Patent Trial and Appeal BoardFeb 22, 2019

13458778 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/458,778 04/27/2012 24972 7590 02/26/2019 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas NEW YORK, NY 10019-6022 FIRST NAMED INVENTOR Steffen STRAUSS 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. BOSC.P7427US/l 1603074 9702 EXAMINER WIBLIN, MATTHEW ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 02/26/2019 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFFEN STRAUSS Appeal2017-006412 Application 13/458,778 1 Technology Center 3700 Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steffen Strauss ("Appellant") seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's decision, as set forth in the Final Office Action dated March 4, 2016, and as further explained in the Advisory Action dated July 14, 2016, rejecting claims 18-28. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant identifies ROBERT BOSCH GmbH as the real party in interest. Appeal Br. 1. Appeal2017-006412 Application 13/458,778 BACKGROUND The disclosed subject matter "relates to an automatic transmission for a motor vehicle and a method for controlling such a motor vehicle transmission." Spec., 1:3-5. Claim 18, the sole independent claim on appeal, is reproduced below, with emphasis added: 18. A method for supplying a transmission of a motor vehicle with oil, the motor vehicle having an input shaft and an output shaft, the transmission including a first hydraulic pump which is one of directly and indirectly driven by the input shaft, the transmission having a second hydraulic pump that is one of directly and indirectly driven by the output shaft, and a hydraulic system supplied by the first and the second hydraulic pumps includes at least one pressure sensor which is used for the control of the transmission, the method compnsmg: controlling an actual pressure in the hydraulic system, by a closed loop pressure control including the pressure sensor, to a first setpoint value when the first hydraulic pump delivers; and controlling the actual pressure in the hydraulic system to a second setpoint value, by the closed loop pressure control including the pressure sensor, when only the second hydraulic pump delivers during a coasting operation of the motor vehicle, the first setpoint value being greater than the second setpoint value. 2 Appeal2017-006412 Application 13/458,778 REJECTION2 Claims 18-28 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Holdeman (US 2,895,344, issued July 21, 1959) and Gloge (US 2010/0018808 Al, published Jan. 28, 2010). DISCUSSION Claim 18 recites, among other limitations, the step of "controlling the actual pressure in the hydraulic system to a second setpoint value ... when only the second hydraulic pump delivers during a coasting operation of the motor vehicle .... " 3 Appeal Br., Claims App. 1 (emphasis added). The Examiner relied on Holdeman for this step, citing column 16, lines 7 to 8 as to the "when only" limitation. Final Act. 6. The Examiner identified front pump 43 in Holdeman as the "first hydraulic pump" in claim 18 (not in the limitation above) and identified rear pump 115 as the "second hydraulic pump." Id. at 5. Appellant argues that, "on account of the presence of the word 'only' in this clause, the front pump is necessarily not operating during coasting." Appeal Br. 4. According to Appellant, "no support exists in Holdeman[] for reading the coasting operation [see Holdeman, 16:7-8] as involving a front pump made inoperative." Id. at 5. Appellant highlights that Holdeman 2 The Examiner rejected claims 18-28 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. See Final Act. 3--4. In the Advisory Action, the Examiner withdrew this rejection. See Adv. Act. 2. 3 We will refer to the claim language "when only the second hydraulic pump delivers during a coasting operation of the motor vehicle" as the "when only" limitation. 3 Appeal2017-006412 Application 13/458,778 expressly "describes the coasting as 'the front pump ... operating at a substantially reduced capacity .... '" Id. ( quoting, with emphasis added by Appellant, Holdeman, 16:5---6). We agree with Appellant's positions as to both the proper construction of the "when only" limitation and as to the relevant teachings of Holdeman. As to claim construction, the Specification supports Appellant's position, describing how "during coasting operation of the vehicle, when only second hydraulic pump 44 is pumping," ''first hydraulic pump 42 is not operated and does not deliver any hydraulic oil." Spec., 15:3-16 (emphasis added). We tum now to the teachings of Holdeman. The relevant passage discussed by both Appellant and the Examiner provides: The spring 400 is of sufficient strength so that the valve is closed when both pumps are operating unless the front pump is operating at a substantially reduced capacity such as when the vehicle engine is idling with the vehicle coasting at a substantial speed. Holdeman, 16:3-8. Because the "front pump is operating" ( even if at a "reduced capacity") during the "coasting" relied on by the Examiner, the relied-on aspects of Holdeman do not satisfy the "when only" limitation, which expressly requires that "only the second hydraulic rear pump"-i.e., the rear pump in Holdeman-is operating. In the Answer, the Examiner focuses on the definition of "coasting" in the Specification. See Ans. 3 ( discussing Spec., 2:22-25). The Examiner states that column 16, lines 11 to 13 of Holdeman disclose "an operation of the vehicle by which the second pump delivers fluid pressure maintained as detailed above while the vehicle's internal combustion engine is shut off/ decoupled to push/tow the vehicle, which meets the terms of the above 4 Appeal2017-006412 Application 13/458,778 'coasting operation' definition [in the Specification] of the motor vehicle." Id. at 3--4. The Examiner's discussion, however, does not address Appellant's argument. Appellant did not argue that Holdeman fails to disclose a "coasting operation" as defined in the Specification; rather, Appellant argues (correctly) that, in the relied-on "coasting" in Holdeman, the "front pump" is operating, thereby falling outside of the scope of the "when only" limitation. For this reason, we do not sustain the rejection of claim 18, or the rejection of claims 19-28, which depend from claim 18. DECISION We reverse the decision to reject claims 18-28 under 35 U.S.C. Â§ 103(a). REVERSED 5