Wei Liang et al.

Patent Trials and Appeals Board

Dec 31, 2019

14518270 - (D) (P.T.A.B. Dec. 31, 2019)

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.
14/518,270 10/20/2014 Wei LIANG 83468876 7069
28395 7590 12/31/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
ROBERSON, JASON R
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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 WEI LIANG, RAJIT JOHRI, XIAOYONG WANG,
MARK STEVEN YAMAZAKI, MING LANG KUANG,
and JEFFREY ALLEN DOERING
____________

Appeal 2018-000981
Application 14/518,270
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 9–13, 16, and 17.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal. Br. 2.
2 Claims 14, 15, and 21–28 include allowable subject matter. Final Act. 13.
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CLAIMED SUBJECT MATTER
Claim 9 is representative of the subject matter on appeal and is
reproduced below.
9. A hybrid powertrain control method comprising:
issuing commands for an engine to generate and deliver an
estimated torque across a clutch;
issuing a command for an electric machine to output
rotational speed based on the estimated torque delivered across
the clutch;
measuring actual rotational speed of the electric machine;
providing a feedback loop indicating a discrepancy
between the commanded and actual rotational speeds; and
modifying the command for the electric machine to
minimize the discrepancy.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wang et al. (Wang”) US 8,538,643 B1 Sept. 17, 2013
Joe US 2007/0080005 A1 Apr. 12, 2007
Klymenko et al.
(“Klymenko”)
US 2014/0257617 A1 Sept. 11, 2014
Yagyu et al. (“Yagyu”). US 2014/0113766 A1 Apr. 24, 2014
Fattic et al. (“Fattic”). US 5,637,987 June 10, 1997
Suzuki US 6,342,027 B1 Jan. 29, 2002
Takaoka et al. (“Takaoka”) US 2001/0044683 A1 Nov. 22, 2001
Gooden et al. (“Gooden”) US 2009/0020384 A1 Jan. 22, 2009
Nozaki US 2012/0309587 A1 Dec. 6, 2012

REJECTIONS
Claims 10 and 12 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Wang,
Joe, and Klymenko.
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Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Yagyu.
Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Fattic.
Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Suzuki.
Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Takaoka.
Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Gooden.
Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over
Wang, Joe, Klymenko, and Nozaki.

ANALYSIS
Indefiniteness
Claim 10 recites, “[t]he method of claim 9 further comprising, in
response to an imminent vehicle stop, issuing a command for the electric
machine.” Appeal Br., Claims App. 1. Claim 12 recites, “[t]he method of
claim 9 further comprising, in response to an imminent engine start event,
issuing a command for the electric machine.” Id.
The Examiner determines that the term “imminent” in claim 10,
which describes a vehicle stop, and claim 12, which describes an engine start
event, is indefinite because it expresses an undefined time element. See
Final Act. 3; Ans. 21–22. The Appellant argues that the plain meaning of
the term “imminent” is “about to occur” Appeal Br. 6–7 (Exhibit A,
imminent def., American Heritage Dictionary). The Appellant contends that
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“the limitation in claim 10 should be interpreted as ‘a vehicle stop that is
about to occur’ and the limitation in claim 12 should be interpreted as ‘an
engine start event that is about to occur.’” Id. at 7. The Examiner does not
appear to disagree with the Appellant that the plain meaning of the claim
term “imminent” is “about to occur.” Ans. 22. Nonetheless, the Examiner
maintains the rejection and explains that “[o]ne of ordinary skill would be
unable to ascertain any sort of time delineation mark between an event that
will occur sometime in the future, and one that is ‘imminent’, as claimed.”
Id. The Appellant does not offer a response to the Examiner’s explanation
in the Reply Brief.
We determine that the Examiner cogently provides sound reasoning
why one of ordinary skill in the art would understand that the claim term
“imminent” is unclear. See In re Packard, 751 F.3d 1307, 1310–13 (Fed.
Cir. 2014) (“[A] claim is indefinite when it contains words or phrases whose
meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention.”); see
also Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (explaining that the USPTO considers a claim indefinite when
it “contains words or phrases whose meaning is unclear”). As discussed
above, the Appellant offers a plain language definition of the term
“imminent.” However, in this case, the plain language definition does not
explain why the term “imminent” is definite. A proper response would have
explained why one of ordinary skill in the relevant art would understand the
meaning of the term “imminent” as used in the claims and given adequate
support for that explanation. Further, although not dispositive, we note that
claims fail to provide a time range for that which is “imminent” and the
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Specification does not appear to provide a sufficient basis for one of
ordinary skill in the art to understand the time range for an “imminent”
vehicle stop or engine start event. See Spec. ¶¶ 42, 48–50, original claims 2,
4, 10, 12.
Therefore, we sustain the Examiner’s rejection of claims 10 and 12 as
indefinite.

Obviousness
Independent claim 9 recites, “issuing a command for an electric
machine to output rotational speed based on the estimated torque delivered
across the clutch.” Appeal Br., Claims App. 1.
In regards to this recitation, the Examiner finds that Wang –– in the
particular embodiment being relied upon for the rejection –– “does not
specifically disclose a rotational speed control signal.” Final Act. 5.
However, the Examiner finds that “motor speed control is clearly within the
scope of the invention of Wang.” Id. (citing Wang, col. 2, ll. 24–29, col. 5,
ll. 34–37). The Examiner concludes:
it would have been obvious to a person of ordinary skill to
incorporate the control of the motor speed within the raw motor
torque command 36, with predictable results, with the
motivation of absorbing ‘clunks,’ pulsations and vibrations in
the driveline during engine start and clutch engagement, and to
achieve the proper damping and smoothness during the clutch
engagement.
Id. (emphasis added) (citing Wang, col. 1, ll. 27–40).
The Appellant argues that the Examiner’s rejection conflates Wang’s
system of reducing oscillations of a vehicle driveline, which includes an
electric motor, with commanding a desired rotational speed to an electric
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motor. Appeal Br. 3. The Examiner agrees with the Appellant. Ans. 8. In
agreeing with the Appellant we understand the Examiner to have withdrawn
the reason proffered in the Final Office Action for modifying Wang to
incorporate a rotational speed control signal as required by claim 9.
In the Answer, the Examiner appears to offer a different reason why
one of ordinary skill in the art would have modified Wang to include a
rotational speed control signal. See Ans. 7–9. Namely, the Examiner
reasons “that controlling the speed of an electric motor instead of the torque
is an operational design choice between art recognized equivalents that one
of ordinary skill in the art could make, with predictable results, with the
motivation of reducing oscillations of a vehicle driveline.” Id. at 7–8. The
Examiner supports this reasoning by citing to a power equation, i.e., power
equals torque times speed (i.e., angular velocity/rotational speed). Id. at 8–9.
A so-called “design choice” rationale, such as the Examiner relies
upon, has been deemed appropriate where one prior art element or property
is proposed to be substituted for another that achieves the same purpose. See
ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016)
(“The prior art consistently locates the two sensors at issue in the shredder’s
feed, and no party disputes that an ordinary artisan would have found this
the obvious location for the combination of sensors. The ordinary artisan
would then be left with two design choices.”) Cf. In re Gal, 980 F.2d 717,
719 (Fed. Cir. 1992) (“The Board held that Gal had simply made an obvious
design choice. However, the different structures of Gal and Matsumura
achieve different purposes.”). Our reviewing court has cautioned that
“[m]erely stating that a particular [limitation] is a design choice does not
make it obvious.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
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1069 n.4 (Fed. Cir. 2018) (quoting Cutsforth, Inc. v. MotivePower, Inc., 636
F. App’x 575, 578 (Fed. Cir. 2016) (nonprecedential)).
The Appellant argues the Examiner’s design choice rationale does not
apply to the present case because torque and rotational speed are not
functional equivalents for an electric machine or motor. Reply Br. 2. The
Appellant supports this argument by offering the following:
Controlling speed and controlling torque of an electric machine
or motor may serve different purposes and are therefore not
equivalents. For example, in an electric or hybrid automobile
that is starting from a stopped position where a high torque
output may be required to overcome the static friction of the
road, it may be desirable to control torque in order to increase
the torque at high rate. On the other hand, in an electric or
hybrid automobile that is moving at high speeds where a low
torque output may be required, it may be desirable to control
speed as opposed to torque.
Id. The Appellant’s argument persuades us that the Examiner failed –– on
this record –– to adequately support the proffered design choice reasoning.
See also In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995).
Additionally, the Examiner relies on Joe to teach the rotational speed
control signal of claim 9. Final Act. 5 (citing Joe ¶ 132). The Examiner
determines:
[I]t would have been obvious for a person having ordinary skill
in the art to have included the motor speed control of Joe into
the invention of Wang, with the motivation of reducing torque
fluctuations when the engine is started when changing from EV
[electric vehicle] mode to HEV [hybrid electric vehicle] mode.
Id. (emphasis added) (citing Wang, col. 1, lines 51–56). The Examiner
explains that modifying Wang with Joe’s teaching would ensure a proper
start of the engine during the transition between the mode change between
EV to HEV. See Ans. 11–12.
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The Appellant argues that the Examiner’s reasoning fails because
“Wang already includes a system that reduces driveline oscillations.”
Appeal Br. 4. The Appellant points out that Wang “utilizes torque from a
starter motor 92 and torque from the electric motor 88 to increase engine
torque 90 during an engine start” and argues that there is no need to
incorporate a second method. Reply Br. 3. The Appellant’s argument
persuades us that the Examiner failed to adequately support the additional
reasoning.
The Examiner’s additional reasoning would result in two methods of
starting an engine. However, the Examiner does not explain on this record
why Wang’s method, prior to being modified, fails to ensure a proper start.
Further, why the proposed second method of starting an engine is not just a
redundant method of starting an engine; and, assuming the second method of
starting an engine is redundant, why one of ordinary skill in the art would
have understood that the redundant method of starting an engine to be
beneficial. In view of the foregoing, we determine that the Examiner’s
additional reasoning fails to be adequately supported.
Further, the Examiner fails to rely on Klymenko, Yagyu, Fattic,
Suzuki, Takaoka, Gooden, or Nozaki in any manner which would remedy
the deficiency in the Examiner’s rejection. Thus, we do not sustain the
Examiner’s rejections of independent claim 9 and dependent claims 10–13,
16, and 17.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
10, 12 112(b) Indefinite 10, 12

9 103 Wang, Joe, Klymenko 9
10 103 Wang, Joe, Klymenko,
Yagyu
10
11 103 Wang, Joe, Klymenko,
Fattic
11
12 103 Wang, Joe, Klymenko,
Suzuki
12
13 103 Wang, Joe, Klymenko,
Takaoka
13
16 103 Wang, Joe, Klymenko,
Gooden
16
17 103 Wang, Joe, Klymenko,
Nozaki
17
Overall
Outcome
10, 12 9, 11, 13,
16, 17

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)(1)(iv).

AFFIRMED IN PART