Ex Parte Charles et al

Patent Trial and Appeal Board

Mar 16, 2017

12320426 (P.T.A.B. Mar. 16, 2017)

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.
12/320,426 01/26/2009 Eric J. Charles 08350.0184-00000 1457
58982 7590 03/20/2017
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
BOGUE, JESSE SAMUEL
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
regional-desk @ finnegan. com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC J. CHARLES, JACK A. MERCHANT, and
PAUL F. OLSEN
Appeal 2014-001121
Application 12/320,4261
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 23—29 and 37—39. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to the Appellants, “Caterpillar Inc. is the real party in interest.”
Br. 3.
Appeal 2014-001121
Application 12/320,426
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 23, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
23. A portion of an exhaust system for a power system contained
in an engine compartment, comprising:
an exhaust treatment module including two or more
exhaust treatment devices and a module housing arrangement
conveying exhaust from an inlet of the module to an outlet of the
module;
an enclosure for the exhaust treatment module, the
enclosure being located in the engine compartment and forming
an air gap between the module housing arrangement and the
enclosure; and
an electronic device and a fluid device located on an
exterior of the enclosure.
Rejections
The following Examiner’s rejections are before us for review:
claims 23, 38, and 39 under 35 U.S.C. § 112, second paragraph,
as indefinite;
claims 23—28 and 37—39 under 35 U.S.C. § 103(a) as
unpatentable over Kertz et al. (US 2008/0121451 Al, pub. May 29,
2008) (“Kertz”), Crawley et al. (US 7,025,810 B2, iss. Apr. 11, 2006)
(“Crawley”) and Boeckenhoff (US 8,201,398 B2, iss. June 19, 2012);
and
claim 29 under 35 U.S.C. § 103(a) as unpatentable over Kertz,
Crawley, Boeckenhoff, and Woemer et al. (US 2003/0221424 Al,
pub. Dec. 4, 2003) (“Woemer”).
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ANALYSIS
Indefiniteness
Independent claim 23 and dependent claims 38 and 39, which recite the term
“'fluid device'1'’
The Examiner rejects claims 23, 38, and 39 as indefinite because the
term “fluid device” is recited in each claim, e.g., “a fluid device located on
an exterior of the enclosure,” as recited in claim 23 (Br., Claims App.).
Final Act. 4. The Examiner reasons that the term “fluid device” invokes 35
U.S.C. § 112, sixth paragraph, and “the written description fails to disclose
the corresponding structure, material, or acts for the claimed function” and
“does not provide any structure for said fluid device.” Id.
The Appellants argue that the term “fluid device” does not invoke
35 U.S.C. § 112, sixth paragraph. See Br. 7—8. The Appellants’ argument is
based on the Examiner’s failure to identify functional language associated
with the term “fluid device.” See id. at 7. For example, the Appellants point
out that claim 23 recites “a fluid device located on an exterior of the
enclosure” and assert that describing the location of a device cannot be
considered functional language. See id. at 8.
The Examiner’s position is that the term “fluid device” can be
understood such that the term “‘device’ . . . has a functional relationship
with the term ‘fluid’ and thus ‘fluid’ is the functional association.” Ans. 4.
We disagree with the Examiner. We determine that the Examiner’s
rejection of claims 23, 38, and 39 as indefinite is flawed because the
reasoning supporting this rejection improperly construes the term “fluid
device,” by itself, to invoke 35 U.S.C. § 112, sixth paragraph.
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Thus, we do not sustain the Examiner’s rejection of claims 23, 38, and
39 for the reason provided in the Final Office Action.
Dependent claim 38, which recites “wherein the electronic control device
and the fluid device are configured for sensing and introducing reductants ”
The Examiner rejects claim 38 as indefinite because the claim recites
“wherein the electronic device and the fluid device are configured for
sensing and introducing reductants.” Final Act. 5. The Examiner reasons
that the Specification “only recites in the alternative” “sensing or
introducing reductants.” Id. (citing Spec. 133).
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (approving, for pre-issuance
claims, the standard from MPEP § 2173.05(e), (9th Ed. Rev. 7, Nov. 2015)).
The Examiner’s reasoning does not offer an explanation why the
words or phrases in the above-recited limitation of claim 38 are unclear.
Rather, the Examiner’s only support for the rejection of claim 38 under
35 U.S.C. § 112, second paragraph, is that the limitation is not recited in the
Specification. See Final Act. 5; Ans. 5.
Thus, we do not sustain the Examiner’s rejection of claim 38 for the
reason provided by the Examiner in the Final Office Action.
Obviousness
As will be discussed below, we determine that claims 23—29 and
37—39 are indefinite for reasons different than those provided by the
Examiner in the Final Office Action. It follows that the prior art rejections
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Application 12/320,426
of these claims under 35 U.S.C. § 103(a) must fall because they are
necessarily based on a speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962). It should be
understood, however, that our decision in this regard is pro forma and based
solely on the indefmiteness of the claimed subject matter. As such, our
decision does not reflect on the adequacy of the prior art evidence applied in
support of the rejection.
New Ground of Rejection
Independent claim 23 and dependent claims 38 and 39, which recite the term
“'fluid device, ” and claims 24—28 and 37, which depend from independent
claim 23
Claims 23—28 and 37—39 are newly rejected under 35 U.S.C. § 112,
second paragraph, because the term “fluid device” is indefinite. We
designate this rejection a New Ground of Rejection because our reason
differs significantly from the reason provided by the Examiner in the Final
Office Action.
The claim term “fluid device,” as recited in independent claim 23 and
dependent claims 38 and 39, is indefinite because one of ordinary skill in the
art would not understand what is claimed when the claim is read in light of
the Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565 (Fed. Cir. 1986).
At the outset, we note that the Specification does not define the term
“fluid device” and only uses the term “fluid device” three times: paragraph
5; original claim 1; and the Abstract. See, e.g., Spec. 1 5 (“[i]n yet another
aspect, at least one electronic or fluid device is coupled to the enclosure or
mount and located on an exterior of the enclosure.”). In each instance, the
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Application 12/320,426
term lacks sufficient context to be able to understand the metes and bounds
of the term.
The term “fluid device” relates to the term “electronics and fluids 20”
in the Specification. See, e.g., Spec. 118. Notably, the Specification and
the drawings associated therewith never clearly identify the difference
between “electronics” and “fluids” with regard to reference number “20.”
See, e.g., Spec. Fig. 2. Indeed, reference number 20 — in the drawings —
points to an area of exhaust system 14, which includes multiple structures.
See id. Moreover, we note that the Specification provides insight into the
meaning of the term “electronics” by referring to “electronic devices,” infra,
the Specification does not do the same for the term “fluid.” See Spec. 120.
Indeed, the Specification at paragraph 20 describes, with added emphasis:
Electronics and fluids 20 may be configured to monitor
and/or control operation of exhaust treatment devices 26, 28, 30,
and 32. Electronics 20 may include one or more electronic
devices, such as, for example, sensors, microprocessors, power
supply circuitry, signal conditioning circuitry, actuator driving
circuitry, and/or other types of electronics and circuitry known
in the art. For example, electronics 20 may include a
microprocessor and other data processing hardware configured
to control injection of a reductant into one of exhaust treatment
devices 26, 28, 30, and 32 (e.g., reductant for SCR or LNT).
Electronics 20 may also include a microprocessor and other data
processing hardware configured to control a regeneration process
for one of exhaust treatment devices 26, 28, 30, and 32 (e.g.,
regeneration of DPF). Fluids 20 may include combustion air,
fuel, reductant or other fluid used by the exhaust treatment
devices 26, 28, 30, and 32.
Based on the foregoing, we determine that one of ordinary skill in the art
cannot ascertain the metes and bounds of the term “fluid device.” For
example, it is unclear if the terms “electronic device” and “fluid device”
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refer to structures that are mutually exclusive or overlap; and if they overlap,
to what extent they overlap. To this end, we note that claim 38, which
depends from claim 23, recites “wherein the electronic device and the fluid
device are configured for sensing and introducing reductants.”2 And, one of
ordinary skill in the art may understand from this limitation that the
“electronic device” and “fluid device” both must be “configured for sensing
and introducing reductants.”
Our reasoning is similar to an alternative reason provided by the
Examiner in the Answer, which is based on a premise that the term “fluid
device” does not invoke 35 U.S.C. § 112, sixth paragraph. See Ans. 5.
Here, the Examiner states that the term “fluid device” is indefinite because
“it cannot be reasonably determined what structures are or are not
encompassed” and “[i]t is highly likely that different persons skilled in the
art would have materially different interpretations of what would or would
not be covered by the recitation.” Id. The Examiner’s statement falls short
of providing a complete analysis for the alternative reason. So, in the
interest of fairness to the Appellants, who have not received a complete
analysis for the alternative reason, we designate this rejection of independent
claim 23 and dependent claims 38 and 39, which recite the term “fluid
device,” a new ground of rejection. Dependent claims 24—28 and 37, which
depend from independent claim 23, are also rejected.
2 For reasons provided below, we newly reject claim 38 under 35 U.S.C.
§112, second paragraph, as indefinite.
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Dependent claim 38, which recites “wherein the electronic device and the
fluid device are configured for sensing and introducing reductants ”
Dependent claim 38 is newly rejected under 35U.S.C. § 112, second
paragraph, because of the recitation “wherein the electronic device and the
fluid device are configured for sensing and introducing reductants” is
indefinite. This limitation includes two terms “electronic device” and “fluid
device” and two functions “configured for sensing” and “configured for . . .
introducing reductants.” ft is unclear if the claim requires the “electronic
device” to perform one or both of these functions. Similarly, it is unclear if
the claim requires the “fluid device” to perform one or both of these
functions. Additionally, it is unclear if both “electronic device” and “fluid
device” are claimed as a group for performing both functions. Stated
differently, it is unclear if the broadest reasonable interpretation of the claim
includes a scenario where one of the “electronic device” or the “fluid
device” performs both of the functions and the other does not perform either
function. See, e.g., Spec. 20 (describing “electronics” as having sensors
and configured to control injection of a reductant.) Moreover, we note that
because claim 38 is indefinite for this reason — which is different than the
reason provided in the Examiner’s rejections of claim 38 under 35 U.S.C.
§ 112, second paragraph, in the Final Office Action — we cannot presently
determine if term “fluid device” invokes 35 U.S.C. § 112, sixth paragraph.
DECISION
We REVERSE the Examiner’s rejections of claims 23, 38, and 39
under 35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE pro forma the Examiner’s rejections under 35 U.S.C.
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Application 12/320,426
§ 103(a) of: claims 23—28 and 37—39 as unpatentable over Kertz, Crawley,
and Boeckenhoff; and claim 29 as unpatentable over Kertz, Crawley,
Boeckenhoff, and Woemer.
We enter a NEW GROUND OF REJECTION of claims 23-28 and
37—39 under 35U.S.C. § 112, second paragraph, as indefinite pursuant to
our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceeding will be
remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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).
REVERSED: 37 C.F.R, $ 41,501b)
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