Ex Parte Thompson et al

Patent Trials and Appeals BoardMar 29, 2019

13942894 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/942,894 07/16/2013 28395 7590 04/02/2019 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Scott James Thompson 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. 83379417 7647 EXAMINER SMITH, ISAAC G ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT JAMES THOMPSON, PAUL STEPHEN BRYAN, SHUNSUKE OKUBO, and ELAINE Y. CHEN1 Appeal2017-007791 Application 13/942,894 Technology Center 3600 Before KEN B. BARRETT, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Scott James Thompson et al. ("Appellants") appeal under 35 U.S.C. Â§ 13 4( a) from the Examiner's decision to reject claims 1---6 and 10-18. Claims 7-9 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Ford Global Technologies, LLC is also listed as the Applicant and is identified as the real party in interest. Appeal Brief 2 ("Appeal Br."), filed Nov. 7, 2016. Appeal2017-007791 Application 13/942,894 CLAIMED SUBJECT MATTER The claimed subject matter "relates to controlling engine warm-up in a hybrid vehicle." Spec ,r 1, Figs. 1, 4, 8. Claims 1, 10, and 14 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A system comprising: a controller programed to, in response to a temperature associated with an engine being less than a threshold, cause power output by the engine to increase by an amount and cause power output by an electric machine to decrease such that driver power demand remains satisfied, the temperature increases, and for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount. REJECTIONS I. Claims 1-3, 6, 10, 13, 14, 17, and 18 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Bourne (GB 2326857 A, published Jan. 6, 1999) and Murata (JP 2005-299469, published Oct. 27, 2005). 2 II. Claims 4, 11, and 15 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Bourne, Murata, and Ervin (US 2013/0269315 A 1, published Oct. 17, 2013). III. Claims 5, 12, and 16 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Bourne, Murata, and Saito (US 2012/0059569 Al, published Mar. 8, 2012). 2 We derive our understanding of the Murata reference from a machine translation, which is available in the electronic file wrapper of the underlying application. All references to the text of Murata are to portions of the translation. 2 Appeal2017-007791 Application 13/942,894 ANALYSIS Claim Interpretation Independent claim 1 is directed to a system including a computer programed to "cause power output by the engine to increase by an amount" and "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount." Appeal Br., Claims App. 1. The Examiner interprets the phrase "the lesser the amount" to mean "the lesser the amount that [the] engine power output is increased." See Final Act. 5; see also Ans. 2-3, 4, 9. 3 Because the term "amount" is only recited in reference to "the engine" in claim 1, we agree with the Examiner's claim interpretation that "the 'amount' refers to an increase in engine power output, and therefore, a decrease of this 'amount', or a lesser 'amount', leads to a decrease of power outputted by the engine." Ans. 9. Thus, we agree with the Examiner's claim interpretation that the phrase "the lesser the amount" is interpreted to mean "the lesser the amount that [the] engine power output is increased." See Final Act. 5; see also Ans. 2-3, 4, 9; Appeal Br., Claims App. 1. Appellants do not present evidence or argument to refute the Examiner's claim interpretation of the phrase "the lesser the amount." See Appeal Br. 3--4; see also Reply Br. 2. 4 3 Final Office Action ("Final Act."), dated June 3, 2016; Examiner's Answer ("Ans."), dated Feb. 27, 2017. 4 Reply Brief ("Reply Br."), filed Apr. 27, 2017. 3 Appeal2017-007791 Application 13/942,894 Obviousness over Bourne and Murata Claims 1-3, 6, 10, 13, 14, 17, and 18 Appellants do not offer arguments in favor of independent claims 10 and 14 or dependent claims 2, 3, 6, 13, 17, and 18 separate from those presented for independent claim 1. See Appeal Br. 3--4. We select claim 1 as the representative claim, and claims 2, 3, 6, 10, 13, 14, 17, and 18 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants contend "[ t ]he point of Murata is to minimize engine output at cold temperatures to avoid inefficient engine operation. That is, one of ordinary skill would have looked to Murata for the idea of decreasing-not increasing----engine output at cold temperatures." Reply Br. 2; see also Appeal Br. 3. Thus, according to Appellants, "one of ordinary skill would have concluded that within the context of Bourne, power output of an engine should decrease-not increase-responsive to a temperature associated with the engine being less than a threshold." Reply Br. 2; see also Appeal Br. 3. Appellants' arguments are not directed to the rejection as set forth by the Examiner and are against Murata individually, whereas the rejection is based on the combined teachings of Bourne and Murata. See Final Act. 3-5. In the Answer, the Examiner clarifies that Bourne is relied on for "the limitation 'in response to a temperature associated with an engine being less than a threshold, causing power output by the engine to increase by an amount."' Ans. 6; see also Final Act. 3; Appeal Br., Claims App. 1. The Examiner also correctly points out that "no arguments are presented [by Appellants,] which are directed to Bourne." Ans. 6; see also Final Act. 3. 4 Appeal2017-007791 Application 13/942,894 In other words, Appellants do not apprise us of error in the Examiner's reliance on the teachings of Bourne for the above cited limitation. See Appeal Br. 3; see also Reply Br. 2. In this case, the Examiner finds that Bourne discloses the system of claim 1 except "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount" that the engine power output is increased. See Final Act. 3. The Examiner relies on the teachings of Murata for this limitation. See Final Act. 4--5; see also Ans. 4--9. Both the Examiner and Appellants acknowledge that for battery states of charge (SOC) between 45% and 50% (i.e., SOC is less than maximum), Murata discloses increases in motor output and SOC, and decreases in engine output. See Ans. 6-9; see also Appeal Br. 3; Murata ,r 39, Fig. 4. Based on the claim interpretation discussed above, where the phrase "the lesser the amount" in claim 1 is interpreted to mean "the lesser the amount that [the] engine power output is increased," a preponderance of the evidence supports the Examiner's finding that Murata discloses the limitation "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount" that the engine power output is increased. See Final Act. 4--5; see also Ans. 2-9; Murata ,r,r 38, 39, Fig. 4. Stated differently, Murata discloses that "if the battery is not fully charged [i.e., SOC is less than maximum], as the battery SOC increases, the engine output will decrease, because, using the language of the claim, the amount by which engine power output is increased becomes 'lesser' as the SOC becomes 'greater'." See Ans. 3; see also id. at 4; Murata ,r,r 38, 39, Fig. 4. 5 Appeal2017-007791 Application 13/942,894 In addition, the Examiner concludes it would have been obvious to modify Bourne "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount that [the] engine power output is increased," as taught by Murata, "to provide for 'improving warmup ability during engine cold time and suppressing deterioration in fuel efficiency."' Final Act. 5 (citing Murata, Abstract). The Examiner's findings are sound and the conclusions therefrom are based on rational underpinnings. Appellants do not apprise us of error in the Examiner's reasoning for the combined teachings of Bourne and Murata. See Appeal Br. 3; see also Reply Br. 2. To the extent Appellants are arguing the references must be capable of bodily incorporation in order to combine their teachings, the test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 ( CCP A 1981 ). That Bourne and Murata may teach additional structure does not prevent the Examiner from relying on each reference for particular purposes. As discussed above, the Examiner relies on the teachings of Bourne for "the limitation 'in response to a temperature associated with an engine being less than a threshold, causing power output by the engine to increase by an amount."' Ans. 6; see also Final Act. 3; Appeal Br., Claims App. 1. Appellants do not apprise us of error in the Examiner's reliance on the teachings of Bourne for this limitation. See Appeal Br. 3; see also Reply Br. 2; Ans. 6. In addition, the Examiner relies on the teachings of Murata 6 Appeal2017-007791 Application 13/942,894 merely for disclosure of the limitation "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount" that the engine power output is increased. See Final Act. 3-5; see also Ans. 2-9. Moreover, the Examiner provides a reason with rational underpinnings to modify Bourne with the teachings of Murata "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount that [the] engine power output is increased," namely, "to provide for 'improving warmup ability during engine cold time and suppressing deterioration in fuel efficiency."' See Final Act. 5 ( citing Murata, Abstract). Appellants do not provide persuasive evidence or argument apprising us of error in the Examiner's proposed reasoning for the combined teachings of Bourne and Murata. We also are not persuaded that the Examiner engages in impermissible hindsight in combining the teachings of Bourne and Murata. See Reply Br. 2. The Examiner cites specific teachings in the references themselves, not Appellants' disclosure, in support of the Examiner's articulated reasoning for combining the references as proposed in the rejection. See Final Act. 3-5; see also Ans. 2-9; In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an argument regarding "impermissible hindsight" as "essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references" and holding that this argument was addressed by showing that a proper motivation to combine the references in fact existed). In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as unpatentable over Bourne and Murata. Accordingly, we sustain the Examiner's rejection of 7 Appeal2017-007791 Application 13/942,894 claim 1. We further sustain the rejection of claims 2, 3, 6, 10, 13, 14, 17, and 18, which fall with claim 1. Obviousness over Bourne, Murata, and either Ervin or Saito Claims 4, 5, 11, 12, 15, and 16 Appellants do not offer arguments in favor of dependent claims 4, 5, 11, 12, 15, and 16 separate from those presented for independent claim 1. See Appeal Br. 3--4. As we find no deficiencies in the Examiner's obviousness rejection with respect to claims 1, 10, and 14 over Bourne and Murata for the reasons discussed above, we likewise sustain the Examiner's obviousness rejections of claims 4, 5, 11, 12, 15, and 16. DECISION We AFFIRM the decision of the Examiner to reject claims 1-3, 6, 10, 13, 14, 17, and 18 as unpatentable over Bourne and Murata. We AFFIRM the decision of the Examiner to reject claims 4, 11, and 15 as unpatentable over Bourne, Murata, and Ervin. We AFFIRM the decision of the Examiner to reject claims 5, 12, and 16 as unpatentable over Bourne, Murata, and Saito. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8