Ex Parte Labataille et al

Patent Trial and Appeal Board

Dec 31, 2015

12373845 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/373,845 01114/2009 Joseph Labataille
68945 7590 12/31/2015
WARN, HOFFMANN, P,C
P.O. BOX 70098
ROCHESTER HILLS, MI 48307
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.
DKT06069A
(BWI-00224-US2)
3242
EXAMINER
FUREMAN, JARED
ART UNIT PAPER NUMBER
2836
MAILDATE DELIVERY MODE
12/31/2015 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 JOSEPH LABATAILLE,
ROBERT D. KEEFOVER, DAVID KAITSCHUCK,
and MURRAY BUSA TO
Appeal2014-002255
Application 12/373,845
Technology Center 2800
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 10-16, 23-28, and 31 of
Application 12/373,845 under 35 U.S.C. § 102(b) as anticipated and claims
2-9 and 17-22 under 35 U.S.C. § 103(a) as obvious. Final Act. (December
6, 2012). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 BorgWarner Inc. is identified as the real party in interest. App. Br. 5
Appeal2014-002255
Application 12/373,845
BACKGROUND
The '845 Application describes a valve control algorithm for freeing a
stuck valve. Spec. 1. In particular, the Specification describes an algorithm
for freeing an exhaust gas recirculation valve in a vehicle engine from
contamination adhesion. Id. at 1-2.
Claim 1 is representative of the '845 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of controlling an electromechanical device
comprising the steps of:
providing an electromechanical device for controlling
motion;
providing a controller for controlling said
electromechanical device and detecting when said
electromechanical device is not controlling motion, wherein
said controller includes a forcing control signal having a
plurality of pulses having at least two intensity levels;
detecting when the electromechanical device is not
controlling motion; and
applying said forcing control signal to said
electromechanical device for a period of time, wherein said
forcing signal[2J applies said plurality of pulses that are applied
for a period of time.
App. Br. 16.
2 For the purpose of this opinion, we are interpreting the reference to "said
forcing signal" as if it read "said forcing control signal" and, thus, has proper
antecedent basis. If prosecution of the '845 Application continues,
Appellants should consider amending claim 1.
2
Appeal2014-002255
Application 12/373,845
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 10-16, 23-28, and 31 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Matsuzaki. 3 Final Act. 2.
2. Claims 2-9 and 17-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Matsuzaki and Mallarino. 4
Final Act. 6.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 10-16, 23-28, and 31
as anticipated by Matsuzaki. Final Act. 2. Appellants argue for reversal of
this rejection based upon the limitations in independent claims 1 and 31. See
App. Br. 7-11. Thus, we select claim 1 as representative of the group of
claims consisting of claims 1, 10-16, and 23-28. Dependent claims 10-16
and 23-28 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
Appellants argue that the rejections of claims 1 and 31 should be
reversed because Matsuzaki does not describe every limitation of either of
these claims. See App. Br. 7-11. With respect to claim 1, Appellants argue
that Matsuzaki does not describe either (1) the step of "providing a
controller for ... detecting when said electromechanical device is not
controlling motion," id. at 8-9, or (2) a forcing control signal that has a
plurality of pulses of at least two intensity levels that are applied to the
3 US 2007/0087896 81, published April 19, 2007.
4 EP 1271419 A2, published January 2, 2003.
3
Appeal2014-002255
Application 12/373,845
electromechanical device for a period of time, id. at 9--10. Because
Appellant's arguments with respect to claim 31 are based upon similar
limitations in claim 31, we shall limit our discussion to claim 1 with the
understanding that our analysis applies with equal force to claim 31.
First, Appellants argue that the controller described in Matsuzaki does
not detect when the electromechanical device is not controlling motion. Id.
at 9. Rather, Appellants argue that Matsuzaki's controller detects sensor
malfunction. Id.
In rejecting claim 1, the Examiner found that Matsuzaki describes a
controller for detecting when the electromechanical device is not controlling
motion. Final Act. 2-3 (citing Matsuzaki i-fi-f 17-57; Figures 1, 2, 4, 6); see
also Advisory Act. 2; Ans. 2-7. In particular, the Examiner points to
controller 25 depicted in Matsuzaki's Figure 2 as corresponding to the
controller recited in claim 1. Id. at 2. The Examiner also found that i-fi-130-
54 of Matsuzaki describe Matsuzaki's device as using controller 25 to detect
whether a valve on the automatic transm1ss10n is stuck. Advisory Act. 2.
These findings are erroneous. We begin by noting that although the
Examiner identified Matsuzaki's controller 25 as corresponding to the
claimed controller, the portions of Matsuzaki's specification that the
Examiner relies upon describe the operation of Matsuzaki's shift-by-wire
controller 40. See Matsuzaki Figure 2; i-fi-130-54. Even if we were to
assume that the Examiner's erroneous identification of controller 25 rather
than controller 40 is harmless, we would still be compelled to find that the
Examiner reversibly erred. Matsuzaki states that the process shown in
Figure 1 describes the operation of the shift-by-wire controller 40 in the
event of shift range sensor failure. Matsuzaki i144. Thus, it is clear that
4
Appeal2014-002255
Application 12/373,845
Matsuzaki' s controller responds to sensor failure rather than to inability of
the electromechanical device to control motion.
Second, Appellants argue that Matsuzaki fails to describe a forcing
control signal that applies a plurality of pulses to the electromechanical
device. App. Br. 9-10. Appellants' argument is correct.
The Examiner cites step S235 in Matsuzaki's Figure 1 as describing
the application of a pulsed signal to the electromechanical device. Advisory
Act. 2. This is erroneous. Step S235 in Matsuzaki's Figure 1 refers to
detection of a pulse from the rotational angle sensor 34 and not application
of a pulse, let alone a series of pulses, to the electromechanical device.
Matsuzaki i-f 48.
In view of these errors, we reverse the rejection of claim one as
anticipated by Matsuzaki. Thus, we also reverse the rejection of claims 10-
16, 23-28, and 31 as anticipated by Matsuzaki.
Rejection 2. The Examiner rejected claims 2-9 and 17-22 as
unpatentable over the combination of iviatsuzaki and iviallarino. Final
Act. 6. The claims subject to this rejection all depend, directly or indirectly,
from claim 1. As discussed above, we find that the Examiner erred by
finding that Matsuzaki describes every limitation of independent claim 1.
Because Mallarino does not remedy these errors, we also reverse the
rejection of claims 2-9 and 17-22.
5
Appeal2014-002255
Application 12/373,845
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1-
28 and 31 of the '845 Application.
REVERSED
sl
6