Ex Parte Wright et al

Patent Trial and Appeal BoardApr 5, 2018

14189080 (P.T.A.B. Apr. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/189,080 02/25/2014 46442 7590 04/09/2018 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Robert Wright 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. 83418628; 67186-067 PUSl EXAMINER TUN,NAYL 2409 ART UNIT PAPER NUMBER 2687 NOTIFICATION DATE DELIVERY MODE 04/09/2018 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 ROBERT WRIGHT and WALTER JOSEPH ORTMANN Appeal2017-010702 Application 14/189,080 1 Technology Center 2600 Before ALLEN R. MacDONALD, SHARON PENICK, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1-3, 5-11, and 13-24, all of the pending claims of the application. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 Appellant is the Applicant, Ford Global Technologies, LLC, which, according to the Brief, is the real party in interest. See Appeal Br. 1. 2 Claims 4 and 12 are canceled. See Final Act. 2. Appeal2017-010702 Application 14/189 ,080 STATEMENT OF THE CASE Invention According to Appellant, the invention relates to "communicating an alert to a location remote from a vehicle in response to disabling a Power Generation mode of the vehicle." Spec. ,-r 4. 3 Exemplary Claims Claims 1, 11, and 16 are independent claims. Claims 1 and 16 are exemplary and are reproduced below with limitations at issue italicized: 1. A method, comprising: controlling a vehicle in a Power Generation mode by commanding an engine and an electric machine of the vehicle to generate and supply power to an electrical accessory separate from the vehicle, and controlling the vehicle includes communicating an alert to a location remote from the vehicle in response to disabling the Power Generation mode of the vehicle. 16. A vehicle system, comprising: an engme; an electric machine; a control unit in communication with said engine and said electric machine and configured to control said engine and said electric machine in a Power Generation mode in which power is generated and supplied to an electrical accessory remote from the vehicle system; and 3 This Decision refers to: (1) Appellant's Specification filed February 25, 2014 ("Spec."); (2) the Final Office Action ("Final Act.") mailed August 25, 2016; (3) the Appeal Brief ("Appeal Br.") filed January 23, 2017; (4) the Examiner's Answer ("Ans.") mailed June 14, 2017; and (5) the Reply Brief ("Reply Br.") filed August 14, 2017. 2 Appeal2017-010702 Application 14/189 ,080 an alert system that provides remote notification of shutdown of said Power Generation mode. Appeal Br. 12, 14. REFERENCES The Examiner relies upon the following prior art in rejecting the claims on appeal: Grant et al. ("Grant") Oyobe et al. ("Oyobe") King Inagawa et al. ("Inagawa") US 2007 /0085692 Al US 2009/0058097 Al US 2010/0133900 Al US 2010/0283625 Al REJECTIONS Apr. 19, 2007 Mar. 5, 2009 June 3, 2010 Nov. 11, 2010 Claims 16-20 and 24 stand rejected under 35 U.S.C. Â§ l 12(a), as failing to comply with the written description requirement. Final Act. 2-3. Claims 11, 13-15, 21, and 22 stand rejected under 35 U.S.C. Â§ l 12(b), as being indefinite. Final Act. 3--4. Claims 1-3, 5, 6, 9, 10, 16-20, 23, and 24 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of King and Grant. Final Act. 5-10. Claims 7, 8, 11, 13-15, and 22 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of King, Grant, and Oyobe. Final Act. 10-14. Claim 21 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of King, Grant, Oyobe, and Inagawa. Final Act. 14-- 15. 3 Appeal2017-010702 Application 14/189 ,080 Our review in this appeal is limited only to the above rejections and the issues raised by Appellant. Arguments not made are waived. See Manual of Patent Examining Procedure (MPEP) Â§ 1205.02; 37 C.F.R. Â§Â§ 41.37(c)(l)(iv), 41.39(a)(l). ISSUES ( 1) Whether the Examiner errs in finding Appellant's Specification lacks written support under 35 U.S.C. Â§ 112(a), for the term "remote," as used in the limitation "a Power Generation mode in which power is generated and supplied to an electrical accessory remote from the vehicle system," of claim 16. (2) Whether the Examiner errs in finding King teaches or suggests "controlling a vehicle in a Power Generation mode by commanding an engine and an electric machine of the vehicle to generate and supply power to an electrical accessory," as recited in claim 1. ANALYSIS Issue I-Rejection of Claims 16-20 and 24UnderÂ§l12(a) The Examiner finds Appellant's Specification (or the "Specification") lacks written support for the limitation "a control unit in communication with said engine and said electric machine and configured to control said engine and said electric machine in a Power Generation mode in which power is generated and supplied to an electrical accessory remote from the vehicle system," as recited in claim 16. Specifically, the Examiner finds "there is no support of the accessory being remote." Final Act. 3. 4 Appeal2017-010702 Application 14/189 ,080 Appellant, in tum, argues the Specification provides "at least implicit support for the electrical accessories being 'remote' from the vehicle" because the Specification discloses the accessory is separate from the vehicle and "the term 'remote' is simply being used as another way of stating that the vehicle accessory is separate from the vehicle system." Appeal. Br. 4 (citing Spec. i-fi-1 48, 49 and Fig. 2). Whether a specification complies with the written description requirement of 35 U.S.C. Â§ 112(a), is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). A written-description question often arises when an applicant, after filing a patent application, subsequently adds "new matter" to the claims not present in the original application. Vas-Cath, 935 F.2d at 1560. When an applicant amends a claim to introduce new elements or limitations or adds claims during prosecution, for example, the newly claimed subject matter must find written description support in the original specification. Id.; see also TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001 ). Without written description support, claims containing new matter are properly rejected under 35 U.S.C. Â§ 112. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010). This required compliance with 35 U.S.C. Â§ 112 ensures that the applicant fully possessed the entire scope of the claim as of the original filing date. Turbo Care, 264 F .3d at 1118. While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. Ariad at 1352. 5 Appeal2017-010702 Application 14/189 ,080 We find Appellant's arguments unpersuasive. The limitation at issue was newly added by amendment during prosecution and lacks express support by the original Specification. See Amendment filed May 11, 2016. We agree with Appellant that the Specification discloses "the electrical accessories 99 are 'separate' from the vehicle 100." Appeal Br. 3 (citing Spec. i-fi-148, 49). Appellant, however, fails to demonstrate that the Specification provides implicit or inherent support for the term "remote" as used in claim 16. Appellant's argument relies on the assertion that remote and separate have identical meanings. See Appeal Br. 4. We agree with the Examiner, however, that the terms separate and remote are used differently in the Specification, thus indicating their meanings are not identical. Ans. 3-4 ( citing Spec. Fig. 5 and i-fi-1 6, 49). Also, the dictionary definitions of the terms do not support Appellant's argument that the meaning of the terms is identical. Namely, the definition of "remote" is "1: separated by an interval or space greater than usual" and "2: far removed in space, time, or relation" while the definition of "separate" is "la: set or kept apart." MERRIAM- WEBSTER'S COLLEGIATE DICTIONARY 987, 1064 (10th ed., Merriam-Webster 2002 ). We, therefore, agree with the Examiner that, while the Specification supports supplying power to an electrical accessory separate from the vehicle system, the Specification does not support supplying power to an electrical accessory remote from the vehicle system. Ans. 3-4. Accordingly, we sustain the Examiner's rejection of claims 16-20 and 24 under 35 U.S.C. Â§ 112(a). 6 Appeal2017-010702 Application 14/189 ,080 Issue 2-Rejection of Claim 1 UnderÂ§ 103 The Examiner determines claim 1 is obvious over the combination of King and Grant. Final Act. 4---6; Ans. 4---6. Specifically, the Examiner finds King teaches or suggests "controlling a vehicle in a Power Generation mode by commanding an engine and an electric machine of the vehicle to generate and supply power to an electrical accessory," as in claim 1. See Final Act. 5 (citing King iii! 20-22). Appellant argues King "controls the charging device 14 (i.e., an engine) to generate power but does not also control an electric machine (i.e., electric motor or generator) to generate power during a Power Generation mode." Appeal Br. 5 (citing King if 22 ). Appellant further argues the "Examiner's position appears to be that any electric part of the vehicle of King can be considered as the 'electric machine"' and therefore "the Examiner has relied on the broadest possible interpretation of 'electric machine' rather than one that is reasonable and consistent with the specification." Appeal. Br. 5-6. First, we must construe the term "electric machine," as recited in claim 1. See In re Geerdes, 491 F .2d 1260, 1262 ( CCP A 197 4) ("Before considering the rejections ... , we must first [determine the scope of] the claims"). In this regard, Appellant's Specification discloses that "[ e ]lectrified vehicles, such as hybrid electric vehicles ... , plug-in hybrid electric vehicles ... , battery electric vehicles ... , or fuel cell vehicles, differ from conventional motor vehicles in that they are powered by one or more electric machines (i.e., electric motors/generators) instead of or in addition to an engine." Spec. if 2 (emphasis added). The Specification also discloses "the powertrain 10 is a power split system that employs a first drive system 7 Appeal2017-010702 Application 14/189 ,080 that includes a combination of an engine 14 and a generator 16 (i.e., a first electric machine) and a second drive system that includes at least a motor 36 (i.e., a second electric machine)." Spec. i-f 35. The Specification further discloses that in an electric vehicle ("EV") mode, "vehicle 100 is propelled solely by the electric machine 68." Spec. i-f 47. That is, the Specification consistently discloses that an electric machine is either a generator or a motor, capable of powering a vehicle without assistance from an engine. During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). "The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not ... simply an interpretation that is not inconsistent with the specification." In re Smith Int'! Inc., 871F.3d1375, 1382 (Fed. Cir. 2017). "It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is 'consistent with the specification."' Id. at 1383 (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). In view of our reviewing court's case law, we decline to construe the claim language as broadly as the Examiner. Rather, we construe the phrase "electric machine" as recited in claim 1, as requiring a generator, a motor, or both, because we can find no example from the Specification of the claimed electric machine being other than a generator or a motor. Given our construction, we do not agree with the Examiner's finding that uninterruptable power supply ("UPS") 10 teaches the claimed electric 8 Appeal2017-010702 Application 14/189 ,080 machine. See Ans. 4. Although UPS 10 includes AC motor 22, it also includes many other components including inverter 16, mode switch 28, energy storage system 12, and charging device 14, and therefore is not a motor or generator. See King i-f 22, Fig. 1. Moreover, King's AC motor 22 does not suggest the claimed "electric machine" because, as Appellant argues, King indicates that AC motor 22 is "deactivated during the emergency power mode" relied upon by the Examiner to teach the limitation at issue. Appeal Br. 5 (citing King i-f 22); see also Final Act. 4---6. We also do not agree with the Examiner's finding that charging device 14 teaches the claimed electric machine. See Ans. 5. We agree with Appellant's argument that "[t]here is no support for the Examiner's conclusion that the charging device 14 is inclusive of both an engine and an electric machine" because "the charging device 14 is either an engine or a fuel cell but not both." Reply Br. 3 (citing Spec. i-f 20). Moreover, relying on the charging device to suggest both the engine and the electric machine of claim 1 requires that we interpret these terms to have identical meanings. We do not agree this is a reasonable interpretation in view of the Specification. See Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."). The Examiner's interpretation is, therefore, unsustainable because the broadest reasonable construction of the claimed electric machine does not encompass UPS 10 or charging device 14 as described in King. The Examiner does not rely on Grant with respect to the limitation at issue of claim 1. See Final Action 5; Answer 2---6. Accordingly, on this record, the Examiner has not shown how King, alone or in combination with Grant, 9 Appeal2017-010702 Application 14/189 ,080 teaches or suggests "controlling a vehicle in a Power Generation mode by commanding an engine and an electric machine of the vehicle to generate and supply power to an electrical accessory," within the meaning of claim 1. Because we agree with at least one of the dispositive arguments advanced by Appellant for claim 1, we need not reach the merits of Appellant's other arguments. Because we are persuaded of Examiner error, we do not sustain the Examiner's 35 U.S.C. Â§ 103 rejection of independent claim 1. We also do not sustain the rejection of independent claims 11, and 16, which are argued with claim 1 and recite limitations commensurate in scope to claim 1. We do not sustain the rejections of dependent claims 2, 3, 5-10, and 13-15, and 17-24 for similar reasons. Â§ l 12(b) Rejection Appellant presents no arguments regarding the Examiner's rejection of claims 11, 13-15, 21, and 22 under 35 U.S.C. Â§ 112(b). Final Act. 3--4. Accordingly, we summarily affirm the Examiner's rejection. DECISION We affirm the Examiner's decision rejecting claims 16-20 and 24 under 35 U.S.C. Â§ 112(a). We affirm the Examiner's decision rejecting claims 11, 13-15, 21, and 22 under 35 U.S.C. Â§ 112(b). We reverse the Examiner's decision rejecting claims 1-3, 5-11, and 13-24 under 35 U.S.C. Â§ 103. 10 Appeal2017-010702 Application 14/189 ,080 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-IN-PART 11