Ex Parte Ramaswamy et al

Board of Patent Appeals and Interferences

Feb 6, 2012

10064894 (B.P.A.I. Feb. 6, 2012)

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.
10/064,894 08/27/2002 Deepa Ramaswamy 81046244 7972
28395 7590 02/07/2012
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3661
MAIL DATE DELIVERY MODE
02/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DEEPA RAMASWAMY and
RYAN ABRAHAM MCGEE
____________________

Appeal 2010-000860
Application 10/064,894
Technology Center 3600
____________________

Before: JOHN C. KERINS, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000860
Application 10/064,894
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 38
and 391. Appellants do not appeal the rejection of claims 19-37 (see Br. 5)
and the Examiner is advised to cancel the non-appealed claims. See MPEP
§ 1215.03; see also Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008). We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The claims are directed to vehicle systems controller with modular
architecture. Claim 39, reproduced below, is illustrative of the claimed
subject matter:
39. A vehicle system controller for a vehicle comprising:
a vehicle mode control portion;
an output torque requestor control portion;
a battery management control portion;
a driver information control portion;
an energy management control portion;
a brake system control portion;
an engine start/stop control portion;
a torque estimation control portion; and
wherein each control portion may be removed from the
controller without disrupting operations of the other control
portions.
REJECTIONS2
Claims 38 and 39 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Ans. 3.
Claims 38 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horsley (US 6,464,026 B1 iss. Oct. 15, 2002) and Colson
(US 6,236,909 B1 iss. May 22, 2001). Ans. 10.

1 Claims 38 and 39 appear to cover the same subject matter. Since they do
not differ substantially from each other, they do not appear to comply with
37 CFR 1.75(b). See MPEP § 706.03(k). The Examiner is advised to take
any further action deemed necessary in any further prosecution.
2 Those rejections not contested by Appellants are omitted.
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Application 10/064,894
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OPINION
The rejection of claims 38 and 39 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is affirmed.
The Examiner rejected newly submitted claims 38 and 39 as failing to
comply with the written description requirement due to the phrase, “wherein
each control portion may be removed from the controller without disrupting
operations of the other control portions.” Ans. 3. Appellants contend
descriptive support for this limitation can be found in paragraphs 2, 26 and
36 of the Specification. Br. 6.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967, 968-69
(CCPA 1971). The written description requirement is designed “to prevent
an applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. The fundamental factual
inquiry is whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935
F.2d at 1563-64. When an explicit limitation in a claim is not present in the
written description it must be shown that a person of ordinary skill would
have understood that the description requires that limitation. Hyatt v. Boone,
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146 F.3d 1348, 1353 (Fed. Cir. 1998). If the original disclosure does not
provide support for each limitation, new or amended claims must be rejected
under 35 U.S.C. § 112, paragraph 1, as lacking adequate written description.
Each of the portions of the Specification cited by Appellants refer to
“replacement” or “replacing” a portion of the controller. See Br. 6. The
Examiner correctly determined that “replacement” or “replacing” in the
original disclosure means both removal and installation of a control portion.
Ans. 3, 11-12. We find no express, implicit, or inherent disclosure which
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, Appellants were in possession of a vehicle system controller
that could operate with a control portion being removed without being
followed by installation of something in its place to complete a
“replacement.”
We recognize that in certain situations, where there is little or no
unpredictability, a specific disclosure may support a broader claim. See In re
Smythe, 480 F.2d 1376, 1382-85 (CCPA 1973). However, that leeway is
afforded because “a person of skill in the art . . . comes to the patent with the
knowledge of what has come before.” LizardTech, Inc. v. Earth Resource
Mapping, Inc., 424 F.3d 1336, 1345-47 (Fed. Cir. 2005) (citation omitted). It
is not appropriate where, as here, Appellants contend that the same feature
would not have been an obvious art-recognized equivalent or variation when
contesting the rejection under 35 U.S.C. § 103(a). See In re Smythe, 480
F.2d at 1384; See Br. 7-8. Accordingly, we affirm the rejection of claims 38
and 39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.

Appeal 2010-000860
Application 10/064,894
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The rejection of claims 38 and 39 under 35 U.S.C. § 103(a) as unpatentable
over Horsley and Colson is affirmed.
The Examiner correctly found that Horsley discloses the basic
controller claimed absent the feature allowing for removal of each control
portion. Ans. 10. The Examiner also correctly found that Colson teaches a
modular system controller and specifically suggests application to
automotive control systems. Ans. 10-11; Colson, col. 2, ll. 7-35. In light of
Colson’s specific suggestion, we agree with the Examiner that modifying
Horsley to include Colson’s modularity would have been obvious to one of
ordinary skill in the art. Ans. 11.
Appellants contend that the Examiner’s proposed combination would
not yield the claimed controller because Colson “fails to teach that the
control portions are removed from the controller without disrupting
operations of the other control portions.” Br. 7. Appellants contend “[t]he
Colson patent discloses a modular approach where components may be
replaced with other components that achieve the ‘same’ task. The
replacement of the components with the same task fails to teach that the
components may be replaced without disrupting operations of the other
components.” Br. 8. The sole portion of Colson cited by Appellants in
support of this contention is column 1, lines 16-27. Id.
First, Appellants’ reading of Colson is inaccurate. The portion of
Colson cited by Appellants is an exemplification – not a limitation. Colson
clearly provides for the removal and absence of control components. For
example, Colson specifically describes a “registration mechanism 204 by
which components can be inserted into, modified, and/or removed from the
database.” Colson, col. 6, ll. 60-62. See also, col. 10, ll. 52-56. Thus, read
as a whole, Colson clearly teaches the disputed limitation. Further, claims 38
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and 39 are open-ended and do not exclude installation from the manner in
which control portions may be removed from the controller without
disrupting operations of the other portions. Thus, even if Appellants’ reading
of Colson were accurate, Colson would teach something more specific than
the disputed limitation which, therefore, would still meet it. There is “a
subtle distinction” between a written description adequate to support a claim
under § 112 and a written description sufficient to teach claimed subject
matter. Vas-Cath Inc., 935 F.2d at 1562 (citations omitted). The description
of a single embodiment of broadly claimed subject matter may constitute a
description of the invention for purposes of an analysis under 35 U.S.C.
§§ 102 or 103, whereas the same information in a specification might not
alone be enough to provide a description of that invention for purposes of
adequate disclosure under §112. Id.

DECISION
The Examiner’s rejections of claims 38 and 39 are affirmed.

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

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