Ex Parte Kozarekar et al

Patent Trials and Appeals Board

Jun 25, 2019

13198740 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/198,740 08/05/2011
28395 7590 06/27/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Shailesh Shrikant Kozarekar
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.
83178690 8397
EXAMINER
WHALEN, MICHAEL F
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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 SHAILESH SHRINKANT KOZAREKAR and
GREGORY DEAN GARDNER1
Appeal2019-000467
Application 13/198,740
Technology Center 3600
Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shailesh Shrinkant Kozarekar and Gregory Dean Gardner
("Appellants") appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1, 4, 7-13, 15, 17, 19-21, and 23-26. Appeal Br.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. Appeal Br. 1.
Appeal2019-000467
Application 13/198,740
CLAIMED SUBJECT MATTER
Appellants' invention relates to "a hybrid electric vehicle powertrain
having transmission gearing with gearing elements for establishing separate
power flow paths from two power sources to vehicle traction wheels." Spec.
,r 1 (Technical Field). Claims 1, 12, and 15 are independent. Appeal Br.
(Claims Appendix). Claim 1 is illustrative and reproduced below, with
emphases added to two limitations discussed in this Decision.
1. A method of controlling a hybrid-electric vehicle
having a planetary gear coupling an engine, a motor, and a
generator, comprising:
when a vehicle speed is above a threshold speed,
controlling the generator to operate in a motoring-mode to
apply a first torque to the planetary gear while the engine is
maintained off and only the motor propels the vehicle.
Id. at 1 ( emphases added).
THE REJECTIONS
The Examiner rejected:
(a) Claims 1, 4, 7-13, 15, 17, 19-21, and 23-26 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
Final Act. 3.
(b) Claims 1, 4, 7, 8, 12, 15, 17, 21, 23, and 24--26 under 35 U.SC.
§ I02(b) as anticipated by Minagawa (US 2003/0181276 Al,
published Sept. 25, 2003). Final Act. 5.
(c) Claims 9-11, 13, 19, and 20 under 35 U.SC. § I03(a) as
unpatentable over Minagawa. Final Act. 10.
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Application 13/198,740
ANALYSIS
I. Written Description Re;ection
A. Examiner's Rejection
TheExaminerrejectsclaims 1,4, 7-13, 15, 17, 19-21,and23-26
under 35 U.S.C. § 112(a) for failing to comply with the written description
requirement. Final Act. 3. Specifically, the Examiner finds that the
following claim limitations contain subject matter that were not described
adequately in the Specification:
( 1) "when a vehicle speed is above a threshold speed"
(2) "controlling the generator to operate in a motoring-mode" and
"motoring mode"
(3) "operating the generator in a reverse direction"
Id. at 4.
We address each of these limitations separately, below.
B. "when a vehicle speed is above a threshold speed"
The Examiner finds that this limitation lacks support in the original
specification. Final Act. 4. The Examiner acknowledges that while
paragraph 25 of the Specification supports "threshold speed of the planetary
gear unit," the threshold speed of the vehicle is not supported. Id.
In their Appeal, Appellants contend that the "specification repeatedly
discusses the relationship of planetary gear speed and vehicle speed,"
quoting paragraph 23 of the Specification. Appeal Br. 10. The cited portion
of the Specification describes, "the planetary gear unit 30 is running
unloaded at high speeds when the vehicle is being driven in electric-only
operation mode which can cause degradation of the planetary gear unit 30."
Spec. ,r 23. Appellants further cite to the Specification's disclosure at
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Application 13/198,740
paragraph 4, which describes, "highway cruising mode for the vehicle, [] the
vehicle may be powered solely by the electric motor." Appeal Br. 10
( quoting Spec. ,r 4).
We are not persuaded by Appellants' argument that paragraphs 4
and 23 of the Specification provide support for the claimed "threshold
speed" of a "vehicle." The claim recites, "when a vehicle speed is above a
threshold speed," and, as explained correctly by the Examiner, the vehicle
speed is not the same as the planetary gear speed. Ans. 7. Due to the
vehicle's transmission, the vehicle speed will vary with the planetary gear
speed. See id. As such, even though the Specification describes a
"threshold speed" of the "planetary gear unit" (Spec. ,r 25), this is not a
disclosure that supports the claimed "threshold speed" of the "vehicle."
Accordingly, the claim limitation "when a vehicle speed is above a
threshold speed" lacks written description support.
C. "controlling the generator to operate in a motoring-mode" and
"motoring mode"
The Examiner finds that the original specification does not support the
claimed "motoring-mode." Final Act. 4.
During prosecution, Appellants sought to amend paragraph 1 7 of the
Specification to recite, "the generator 40 is controlled to function as a motor,
or operate in a 'motoring-mode."' Amendment (dated April 20, 2017). The
amendment was not entered, however, because the Examiner objected to it
for introducing new matter. Final Act. 3 ("The amendment filed 4/20/2017
is objected to under 35 U.S.C. 132(a) because it introduces new matter into
the disclosure."). The Examiner similarly rejected the claims for reciting
new matter, "motoring-mode." Id. at 4.
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Application 13/198,740
Rather than appeal the objection, Appellants amended the
Specification to delete "motoring-mode." Amendment (dated September 14,
2017). Indeed, Appellants could have appealed the objection to the
Specification, if they believed the original disclosure supported "motoring-
mode." The MPEP provides that
A rejection of claims is reviewable by the Board of
Patent Appeals and Interferences, whereas an objection and
requirement to delete new matter is subject to supervisory
review by petition under 3 7 CPR 1.181. If both the cl aims and
specification contain new matter either directly or indirectly,
and there has been both a rejection and objection by the
examiner, the issue becomes appealable and should not be
decided by petition.
MPEP § 2163 .06(II) ( emphasis added). In this case, the Examiner rejected
the claims for containing new matter ("motoring-mode") (Final Act. 4), and
similarly objected to the Specification for containing new matter ("motoring-
mode") (id. at 3).
Notwithstanding Appellants' withdrawal of its amendment to the
Specification to recite "motoring-mode," Appellants, nevertheless, contend
that the Specification supports the claim limitation. Appeal Br. 10.
Specifically, Appellants cite to the Specification's description of its
generator being controlled to "function as a motor" and contend that a
skilled artisan would understand that "controlling the generator to operate in
motoring-mode" is described by the Specification in the Specification's
description of a generator functioning as a motor. See id. ( citing Spec. ,r 17);
see also Reply Br. 4 ( citing Spec. ,II 7). Paragraph 17 of the Specification
describes, in relevant part, "When the generator 40 is commanded to assist
the engine 26 during a forward drive vehicle launch, it may be controlled to
function as a motor."
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Application 13/198,740
Appellants' argument does not apprise us of Examiner error.
Paragraph 17 of the Specification does not use the term "motoring-mode"
and Appellants do not submit declaration evidence to support its contention
that a skilled artisan would understand "motoring-mode" to mean the
generator operating as a motor. In re Cole, 326 F.2d 769, 773 (CCPA 1964)
( explaining that an argument of counsel cannot take the place of evidence in
the record).
Rather, we agree with the Examiner that the term does not have a
standard meaning. Ans. 8. Although the claim does not stand rejected as
being indefinite, we also agree with the Examiner the term may mean many
different things, such as referring to the motor driving the vehicle (see id.),
and we are unable to discern what "motoring-mode" means in the context of
Appellants' invention
Accordingly, "motoring-mode" lacks written description support.
D. "operating the generator in a reverse direction"
Although the Examiner acknowledges that the Specification describes
operating the engine in a reverse direction, the Examiner finds that the
Specification does not describe operating the generator in reverse direction.
Final Act. 4 ( citing Spec. x,r 24 ).
In response to the rejection, Appellants rely on the same argument
discussed above in connection with "motoring-mode," and contend that a
skilled artisan "would understand that the generator operates in one direction
to generate electricity, and operates in the reverse direction to function as a
motor and apply torque." Appeal Br. 11 (citing Spec. ,r 17).
Appellants' argument is not persuasive.
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Application 13/198,740
Appellants' own interpretation of the term seems at odds with the
plain language of the claim. At first glance, we understand operating the
generator in reverse direction to simply refer to the direction of rotation of
the generator's rotor. We would not understand the term to mean operating
the generator to function as a motor, as Appellants' contend. Appeal Br. 11.
Importantly, Appellants' interpretation and our initial interpretation are not
one in the same. If the vehicle is traveling in the forward direction, we
understand that the rotation of the rotor is in the same direction, regardless
of whether the device (i.e., the motor/generator) is operating as a motor or
generator. Although the claims do not stand rejected as being indefinite, the
lack of written description support for the limitation "operating the generator
in a reverse direction" leaves us guessing as to what the claim requires.
Indeed, the Examiner is as confused as we are. The Examiner explains that
The term "reverse direction" could [have] multiple different
interpretations that contradict each other when read in light of
the specification. For example, "reverse direction" could be
referring to applying torque in the opposite direction the gear is
moving, the opposite direction the motor is running (i.e. when
the motor is spinning clockwise the generator is spinning
counterclockwise), or could be referring to opposing the torque
the motor or engine is applying to the vehicle. These are just
some examples of what the term "reverse direction" could mean
in view of the originally filed specification.
Ans. 9.
Moreover, Appellants' contention that a skilled artisan "would
understand that the generator operates in one direction to generate
electricity, and operates in the reverse direction to function as a motor and
apply torque" is unsupported attorney argument, and given little weight.
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Appeal Br. 11 (citing Spec. ,r 17); see also In re Cole 326 F.2d at 773
( explaining that attorney argument is no substitute for evidence of record).
Accordingly, the claim limitation "operating the generator in a reverse
direction" lacks written description support.
E. Summary
Whether a specification, as filed, contains a written description of
subject matter of a later added claim is a question of fact. In re Alton, 76
F.3d 1168, 1171 (Fed. Cir. 1996).
A question of fact is resolved on the basis of the evidence.
When a written description cannot be found in the specification, as
filed, the only thing the Examiner can reasonably be expected to do is to
point out its non-existence. Hyatt v. Dudas, 492 F.3d 1365, 1377 (Fed. Cir.
2007).
In this case, the Examiner found, correctly, that the claim limitations
are not supported by the Specification.
Furthermore, the Appeal Brief includes multiple references to un-
entered claim language. See Ans. 4 ("throughout the Appellants' arguments
there are references to claim language that was not entered. The claims filed
on 09/14/2017 and 11/14/2017 were not entered and therefore are not the
claims that are being appealed"); compare also Appeal Br. 4 (reciting a
version of claim 1 ), with id. at Claims Appendix (reciting a different version
of claim 1 ). Appellants' failure to recite correctly the claim language in its
principal brief further clouds its arguments as to the scope of the claim
limitations.
For the foregoing reasons, we affirm the rejection of claims 1, 4, 7-
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Application 13/198,740
13, 15, 17, 19-21, and 23-26 as failing to comply with the written
description requirement.
II. Prior Art Reiections Based on Minagawa
We reverse proforma the prior art rejections under 35 U.S.C.
§§ 102(b), 103(a). Here, substantial confusion exists as to the interpretation
of the claims on appeal.
As discussed above, the claims recite multiple limitations ( e.g.,
"motoring-mode," "operating the generator in reverse direction") that are not
supported by the Specification and which we, frankly, do not understand.
Supra Part I.E. Although the Examiner did not reject the claims as being
indefinite, the Examiner expressed the same confusion that we have
regarding several of these terms. See, e.g., Ans. 8 ("the term 'motoring-
mode' could have many different meanings"). Indeed, in contending the
prior art rejections, Appellants disagreed with the Examiner's interpretation
of "motoring-mode," and proposed a different interpretation. See, e.g.,
Reply Br. 3 ("The Examiner's interpretation of 'motoring-mode' to mean
that the vehicle is driven by the motor[] does not make sense.").
Because review of the merits of the appealed prior art rejections of
claims 1, 4, 7-13, 15, 17, 19-21, and 23-26 would require resort to
unsupported speculative assumptions as to the scope of the claimed subject
matter, we must reverse the prior art rejections proforma. See Ex parte
Miyazaki, 89 USPQ2d, 1207, 1217 (precedential) (reversing rejections pro
forma when consideration of merits of rejections requires "speculative
assumption as to the meaning of the claims"); see also Ex parte Smith, 2008
WL 4998624 (BP AI) ( declining to address a prior art rejection after
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Application 13/198,740
determining that all claims on appeal lack written description support); see
also In re Steele, 305 F.2d 859, 863 (CCPA 1962) (reversing obviousness
rejection of indefinite claim where claim interpretation required resort to
"unsupported speculative assumptions" as to scope of claimed subject
matter).
We emphasize, however, that our decision in this regard is based
solely on the confusion surrounding the claimed subject matter, and does not
reflect on the adequacy of Minagawa as applied in the prior art rejections.
SUMMARY
We affirm the rejection of claims 1, 4, 7-13, 15, 17, 19-21, and 23-26
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
We reverse proforma the rejection of claims 1, 4, 7, 8, 12, 15, 17, 21,
23, and 24--26 under 35 U.SC. § 102(b) as anticipated by Minagawa.
We reverse proforma the rejection of claims 9-11, 13, 19, and 20
under 35 U.SC. § 103(a) as unpatentable over Minagawa.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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