Ex Parte Gibson et al

Patent Trial and Appeal Board

Mar 22, 2017

12348198 (P.T.A.B. Mar. 22, 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.
81182324 2522
EXAMINER
ALSOMIRI, MAJDI A
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
12/348,198 01/02/2009
36865 7590 03/22/2017
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
Alex O'Connor Gibson
03/22/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX O’CONNOR GIBSON, ROGER LYLE HUFFMASTER,
PETER JOHN GRUTTER, FELIX NEDOREZOV, and
RODNEY LEWIS LOPEZ
Appeal 2014-009403
Application 12/348,1981
Technology Center 3600
Before KEVIN W. CHERRY, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BAYAT.
Opinion Concurring filed by Administrative Patent Judge WORTH.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) the decision to reject
claims 1, 4, 6—11, 13—15, 18, and 19 under 35 U.S.C. § 102(b) as anticipated
by Nobumoto.2 Appellants’ counsel presented oral arguments on March 13,
2017. We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify “Ford Global Technologies, LLC.” as the real party in
interest. Appeal Br. 3 (“Appeal Br.,” filed March 10, 2014).
2 Nobumoto et al., US 2007/0078040 Al, pub. Apr. 5, 2007
Appeal 2014-009403
Application 12/348,198
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to methods and systems for
controlling an engine shut-down.” Spec. 1:4—5.
Independent claims 1 and 18, reproduced below, are representative of
the subject matter on appeal.
1. A method of controlling a vehicle system including an engine
that is selectively shut-down during engine idle-stop conditions,
comprising:
during an idle-stop engine shut-down,
adjusting a hydraulic actuation of a torque converter
lock-up clutch to adjust drag torque on the engine to stop the
engine, including adjusting the lock-up clutch’s actuation
responsive to a desired stopping position of the engine.
18. A vehicle system, comprising:
a powertrain including wheels, an engine, a torque
converter having a lock-up clutch, and an automatic
transmission including a forward clutch;
wheel brakes; and
a control system configured to selectively shut-down the
engine during engine idle-stop conditions without receiving a
shut-down request by an operator, where to stop the engine for
the shut-down, the control system increases engagement of at
least the lock-up clutch and the forward clutch to further couple
the wheels to the engine while the wheel brakes are engaged,
and where to restart the engine, the engine is started without
assistance from an auxiliary starter.
2
Appeal 2014-009403
Application 12/348,198
ANALYSIS
As set forth below, pursuant to our authority under 37 C.F.R.
§41.50(b), we enter a New Ground of Rejection of claims 1, 4, 6-11, 13—15,
and 19 under 35U.S.C. § 112, second paragraph, as indefinite.
Anticipation by Nobumoto
Claims 1, 4, 6—11, 13—15, and 19
In light of this new rejection, we do not reach the merits of the
rejection of claims 1, 4, 6-11, 13—15, and 19 under 35 U.S.C. § 102(b) at
this time.
Before a proper review of the rejection under § 102(b) can be made,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements under 35 U.S.C. § 112, second paragraph, we are
constrained to reverse, pro forma, the Examiner’s rejection under 35 U.S.C.
§ 102(b). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language).
It should be understood that our decision to reverse the rejection of
claims 1, 4, 6—11, 13—15, and 19 under 35 U.S.C. § 102(b) is based solely on
the indefiniteness of the claims, and does not reflect on the merits of the
underlying rejection.
3
Appeal 2014-009403
Application 12/348,198
New Ground of Rejection—Indefiniteness
Claims 1, 4, 6—11, 13—15, and 19
The second paragraph of 35 U.S.C. § 112 requires the specification to
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, second paragraph. This section contains two requirements:
first, the claim must set forth what the applicant regards as the invention, and
second, it must do so with sufficient particularity and distinctness, i.e., the
claim must be sufficiently definite. Allen Eng’g Corp. v. BartellIndus., 299
F.3d 1336, 1348 (Fed. Cir. 2002).
“As the statutory language of ‘particularity]’ and ‘distinctness]’
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). The test for determining the question of indefmiteness may be
formulated as whether the claims “set out and circumscribe a particular area
with a reasonable degree of precision and particularity.” In re Moore, 439
F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard,
one must consider the language in the context of the circumstances.
Packard, 751 F.3d at 1313. The claims must notify the public of what they
are excluded from making and using. Id. For this reason, an applicant is
required to use language as precise as the subject matter reasonably
permits. Id.
In order to determine if the claims set out and circumscribe a
particular area with a reasonable degree of precision and particularity, we
analyze the language of the claim “in light of the teachings of the prior art
and of the particular application disclosure as it would be interpreted by one
4
Appeal 2014-009403
Application 12/348,198
possessing the ordinary level of skill in the pertinent art.” Moore, 439 F.2d
at 1235. Precision in claiming is not only dependent on the claim language
itself; it is dependent on the description of the invention in the Specification.
The specification is the single best guide to determining the meaning of the
claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc).
With that in mind, we begin by analyzing the language of the claims
in light of the Specification and the teachings of Nobumoto as it would be
interpreted by an artisan possessing ordinary skill.
desired stovvins position
Independent claim 1 is directed to “a method of controlling a vehicle
system including an engine that is selectively shut-down during engine idle-
stop conditions” requiring, inter alia, “adjusting the lock-up clutch’s
actuation responsive to a desired stopping position of the engine.'1'’
Appellants describe desired stopping position in the Specification as
follows:
Controller 42 may be further configured to adjust the
hydraulic actuation of the transmission component, for e.g., the
transmission clutches, responsive to a desired stopping position
of the engine such that by the end of the engine shutdown
operation, the engine has been brought to the desired stopping
position. In one example, the stopping position may be a
position that may enable a faster restart during a subsequent
restart operation. It will be appreciated that during the engine
shutdown operation, the forward clutch and/or torque converter
clutches may not be fully disengaged. For example, the
controller may keep one or both of them partially engaged. In
other words, a transmission gear may be engaged during the
engine shutdown (e.g., during the adjustment of the torque
converter clutch, forward clutch, or other hydraulic component,
to control the spin-down of the engine from idle speed to
5
Appeal 2014-009403
Application 12/348,198
substantially zero speed). Similarly, a transmission gear may
be engaged (or may remain engaged) during a subsequent
engine restart. That is, neither operation may be performed with
the transmission in a neutral condition.
Spec. 9:17—10:6 (emphasis added).
The Examiner found the limitation “adjusting the lock-up clutch’s
actuation responsive to a desired stopping position of the engine” disclosed
in paragraph 56 of Nobumoto, which provides:
The torque converter 51 is provided with a lockup clutch
64 which is fitted between the pump cover 53 and the turbine
55 to directly connect the turbine 55 to the crankshaft 3 through
the pump cover 53. Linked to the oil pump 61 and the electric
oil pump 62 through the hydraulic pressure control mechanism
63, the lockup clutch 64 is engaged and disengaged as various
solenoid valves provided in the hydraulic pressure control
mechanism 63 are turned on and off in a controlled fashion to
switch the fluid channels of the hydraulic pressure control
mechanism 63 according to the vehicle speed.
See Ans. 2 (quoting Nobumoto | 56). The Examiner determined that
Nobumoto’s disclosure of adjusting the lock-up clutch’s actuation according
to vehicle speed satisfied this claim requirement.
In the Appeal Brief, Appellants argue “whether or not Nobumoto
shows that the lock-up clutch 64 is engaged and disengaged as various
solenoid valves are turned on and off says nothing about the hydraulic
actuation being responsive to a desired stopping position—the actual claim
language. Notably, claim 1 requires adjusting the torque converter lock-up
clutch’s actuation responsive to a desired stopping position of the engine.'1'’
Appeal Br. 10 (emphasis added). But repeating the language of the claim
provides no guidance about what a “desired stopping position of the engine”
6
Appeal 2014-009403
Application 12/348,198
is, how it is defined, or even by whom it is defined. This phrase is highly
subjective, and on its face, provides little guidance to one of skill in the art.
Based on our review of the Specification, the teachings of Nobumoto,
the Examiner’s findings, and Appellants’ arguments, we do not find claim 1
sets out and circumscribes a particular area with a reasonable degree of
precision and particularity. When faced with a presumably subjective phrase
like “a desired stopping position of the engine,” we must determine whether
the Specification supplies some standard for measuring the scope of the
phrase. Appellants’ Specification offers no objective definition or standard
for determining “a desired stopping position of the engine.” The
Specification describes “responsive to a desired stopping position of the
engine such that by the end of the engine shutdown operation, the engine has
been brought to the desired stopping position.” Spec. 9:18—20. This
statement, however, is circular and provides no guidance to a skilled artisan
to understand the term. The only other discussion of the term is not as a
definition, but as a non-limiting example. See Spec. 9:20-21 (“In one
example the stopping position may be a position that may enable a faster
restart during a subsequent restart operation.” (emphases added)); see also
Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015)
(noting that “the use of ‘may’ signifies that the inventors did not intend to
limit [the claims to a particular feature]”). With this lone example, a skilled
artisan is left to wonder what other forms of “stopping position” are
“desired.” “The specification offer no indication, thus leaving the skilled
artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’”
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014)
7
Appeal 2014-009403
Application 12/348,198
(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351
(Fed. Cir. 2005)).
As with the Appeal Brief, Appellants do not define, describe, or
provide any examples of a desired stopping position, or for that matter
explain how it differs from vehicle speed, or how it is determined or
calculated in the Reply Brief. Appellants merely contend that Nobumoto
does not disclose a desired stopping position of the engine, or that
Nobumoto discloses vehicle speed and throttle opening but not a desired
stopping position. See Reply Br. 2—3. Appellants’ counsel at oral argument
also failed to persuade us that “responsive to a desired stopping position of
the engine” can be given any reasonable meaning. Appellants’ counsel did
identify paragraphs 106, 113, and 116—17 of Nobumoto as identifying
controlling a stopping position of the engine, see Appeal Br. 11—13, but
neither the Appellants’ claims nor Appellants’ Specification provides any
guidance as to whether Nobumoto’s discussion in those paragraphs about
controlling piston position in the engine is the same as Appellants’ “desired
stopping position.”
In the absence of any standard or definition, “a desired stopping
position” is reasonably interpreted as reciting a subjective element, such as a
driver’s desired stopping position—which as the Examiner found may be
expressed according to the driver’s speed. This interpretation is plausible
considering Appellants’ disclosure describing the relationship between
engine speed fluctuations and adjusting actuation of the lockup clutch. See
e.g. Spec. 7:12—15 (emphasis added) (“In this example, the level of
engagement of the torque converter lock-up clutch (that is, whether the
clutch is fully engaged, or partially engaged) may be adjusted in response to
8
Appeal 2014-009403
Application 12/348,198
the speed of the engine to thereby adjust the level of the drag torque
responsive to the engine speed and thereby control the spin down of the
engine.”). In other words, a driver’s desired stopping position of the engine
can reasonably be interpreted as a driver’s deceleration of the engine or
reduction in speed. See Nobumoto 1 68 (“the engine stop/restart controller
2a causes the engine to automatically restart with energy produced by
combustion when predefined conditions for engine restart (engine restart
conditions) are satisfied as a result of depression of the accelerator pedal or
the brake pedal during a process of automatic engine stop or upon
completion of automatic engine stop.”).
Alternatively, the limitation “responsive to a desired stopping position
of the engine” can reasonably be interpreted as the desired stopping position
of a particular cylinder in the engine. Appellants’ Specification provides
that “[i]n all cases, engine control may be performed on a cylinder-by­
cylinder basis to control the engine torque output.” Spec. 6:15—16. “In one
example, the stopping position may be a position that may enable a faster
restart during a subsequent restart operation.” Id. 9:20—21. Consistent with
this example, Nobumoto discloses that it is
possible to stop the pistons 13 at desired positions with higher
precision by the engine stop control operation and thereby
achieve improved engine restartability. Since the engine
stop/restart controller 2a of the ECU 2 controls the engi ne to
stop the piston 13 in the expansion stroke cylinder 12A within
the aforementioned appropriate piston stop range R with high
accuracy even when the vehicle is running, it is possible to
execute automatic engine stop more often whenever desired.
This allows more reductions in fuel consumption and CO2
emissions.
9
Appeal 2014-009403
Application 12/348,198
Nobumoto If 117; see also Nobumoto Iff 13, 102, 112, 115, 209.
Therefore, we also find it reasonable to interpret a desired stopping
position of the engine as the desired piston stop position in the
cylinder of the engine.
Having considered this claim language in the context of the
circumstances, we determine the term desired stopping position is indefinite
at least because it is susceptible to two equally reasonable interpretations.
See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential).
The Miyazaki standard for evaluating indefiniteness is justified, at least in
part, because applicants have the opportunity and the obligation to define the
invention precisely during prosecution before the US Patent & Trademark
Office. Id. Section 112 places the burden of precise claim drafting on
applicants. See Packard, 751 F.3d at 1313 (“Given the role of the applicant
in the process, it is a reasonable implementation of the examination
responsibility, as applied to § 112[, second paragraph], for the [Office], upon
providing the applicant a well-grounded identification of clarity problems, to
demand persuasive responses on pain of rejection.”).
Accordingly, we enter a New Ground of Rejection of independent
claim 1 as indefinite under 35U.S.C. § 112, second paragraph, including
claims 4, 6, 7—11, 13—15 dependent thereon. Claim 19 also recites the term
desired stopping position; we reject independent claim 19 as indefinite for
the same reasons.
10
Appeal 2014-009403
Application 12/348,198
Anticipation by Nobumoto
Claim 18
Independent claim 18 requires, inter alia, “a control system
configured to selectively shut-down the engine during engine idle-stop
conditions without receiving a shut-down request by an operator ... the
control system increases engagement of at least the lock-up clutch and the
forward clutch to further couple the wheels to the engine while the wheel
brakes are engaged.”
The Examiner finds this disputed limitation in paragraphs 9—11 and
209 of Nobumoto. See Final Act. 5. The Examiner additionally finds this
limitation in paragraphs 13, 131, and 138 of Nobumoto. See Ans. 3.
We are persuaded by Appellants’ arguments that the cited paragraphs
in Nobumoto fail to describe “the control system increases engagement of at
least the lock-up clutch and the forward clutch to further couple the wheels
to the engine while the wheel brakes are engaged,” as required by claim 18.
See Appeal Br. 18—19; Reply Br. 4—5. Although the relied upon paragraphs
in Nobumoto describe engagement of the forward clutch, claim 18 also
requires the additional engagement of the lock-up clutch to further couple
the wheels while the wheel brakes are engaged; the Examiner’s findings in
Nobumoto do not account for the whole limitation.
Accordingly, we reverse the anticipation rejection of claim 18.
DECISION
The Examiner’s prior art rejection of claims 1, 4, 6—11, 13—15, and 19
are reversed pro forma.
A NEW GROUND OF REJECTION is entered for claims 1, 4, 6-11,
13—15, and 19 as indefinite under 35 U.S.C. § 112, second paragraph.
11
Appeal 2014-009403
Application 12/348,198
The Examiner’s decision to reject independent claim 18 under
35 U.S.C. § 102(b) as anticipated by Nobumoto is reversed.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants 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
newly 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; or
(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)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
12
Appeal 2014-009403
Application 12/348,198
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX O’CONNOR GIBSON, ROGER LYLE HUFFMASTER,
PETER JOHN GRUTTER, FELIX NEDOREZOV, and
RODNEY LEWIS LOPEZ
Appeal 2014-009403
Application 12/348,198
Technology Center 3600
Before KEVIN W. CHERRY, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BAYAT.
Opinion Concurring filed by Administrative Patent Judge WORTH.
WORTH, Administrative Patent Judge, concurring.
I write separately to highlight the sparseness of the disclosure, and to
observe that the Specification does not aid in the interpretation of
independent claim 1.
When asked at oral argument about the issues of enablement and best
mode, counsel for Appellants pointed variously to page 9 of the
Specification and to Figure 6A of the Specification. We note that, although
Appellants claim a relationship between drag torque and desired position in
independent claim 1, i.e., that drag torque varies as a function of a desired
stop position, the Specification does not disclose any equations therefor nor
13
Appeal 2014-009403
Application 12/348,198
does the Specification disclose any examples with numbers as a heuristic in
lieu of a completely described mathematical relationship. Page 9 of the
Specification contains language that tracks the claim language without
providing more in the way of mechanism. Figure 6A of the Specification
contains graphs devoid of numbers on the x or y axis (although, typically,
when engineers reduce an invention to practice, they do so with specific
numbers, e.g., for torque). Further, Figure 6A does not contain the desired
stop position, even though the claims use the desired stop position as an
independent variable.
Counsel for Appellants represents that a person of ordinary skill in the
art would be able to practice the invention, i.e., that the invention is
enabled. Putting aside whether undue experimentation is required, we note
that the Appellants have not provided guidance to a person of ordinary skill.
Mathematics is the language of engineering. Engineers use equations
to communicate concepts to each other. It is therefore unclear who the
intended audience for the Specification is, or whether the Appellants
intended the Specification to provide disclosure above and beyond the
claims. We note that public disclosure is the quid pro quo of the patent
grant.
14