Ex Parte Thompson et alDownload PDFPatent Trials and Appeals BoardJul 3, 201913942894 - (D) (P.T.A.B. Jul. 3, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/942,894 07/16/2013 28395 7590 07/08/2019 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Scott James Thompson 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. 83379417 7647 EXAMINER SMITH, ISAAC G ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 07/08/2019 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 SCOTT JAMES THOMPSON, PAUL STEPHEN BRYAN, SHUNSUKE OKUBO, and ELAINE Y. CHEN1 Appeal2017-007791 Application 13/942,894 Technology Center 3600 Before KEN B. BARRETT, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE Scott James Thompson et al. ("Appellants") filed a request for rehearing ("Request") under 37 C.F.R. § 41.52 of our decision ("Decision") dated April 2, 2019. In that Decision, we affirmed the Examiner's rejections of claims 1---6 and 10-18 under 35 U.S.C. § 103. 1 Ford Global Technologies, LLC is also listed as the Applicant and is identified as the real party in interest. Appeal Brief 2. Appeal2017-007791 Application 13/942,894 ANALYSIS The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to § § 41.3 7, 41.41, or 41.4 7 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(4) of this section. 37 C.F.R. § 4I.52(a)(l). Rehearing is not an opportunity to rehash arguments originally made in the Brief, neither is it an opportunity to express merely disagreement with a decision. Appellants contend that "the Board's endorsement of the Examiner's reading of isolated portions of Murata ... ignores with clear error Murata's teachings as a whole." Request 2. In particular, Appellants contend that a skilled artisan "would not have concluded, upon having review[ ed] Murata in its entirety, that Murata stands for the proposition that responsive to a temperature associated with engine being less than a threshold, engine output power should be increased." Id. According to Appellants, the context of Murata "is to minimize engine output at cold temperatures (temperatures less than a threshold). And minimizing engine output at cold temperatures would not have suggested increasing engine output at cold temperatures." Id. Thus, Appellants conclude that "['Jone of ordinary skill would have looked to Murata for the idea of decreasing-not increasing-engine output at cold temperatures."' Id. ( quoting Reply Br. 2). First, claim 1 merely recites "a temperature associated with an engine being less than a threshold." Appeal Br. (Claims App.) 1. There is no requirement in the broadly recited claim or in Appellants' Specification that "temperatures less than a threshold" constitute "cold temperatures." See id.; 2 Appeal2017-007791 Application 13/942,894 see also Appellants' Specification, passim. Second, as made clear by the Board in the Decision, the Examiner relies on the teachings of Bourne, not Murata, for disclosure of the claim limitation "in response to a temperature associated with an engine being less than a threshold, cause power output by the engine to increase by an amount." Decision 4; see also id. at 6; Ans. 6; Final Act. 3. Specifically, the Examiner finds that "[i]fthe control unit 18 [ of Bourne] detects that the temperature of the catalytic converter 22 has dropped below a minimum desirable temperature, the control unit 18 increases the torque output of the engine 10." Final Act. 3 (emphasis omitted) ( citing to Bourne, page 5). The Board also noted the Examiner "correctly points out that 'no arguments are presented [by Appellants,] which are directed to Bourne."' Decision 4; see also id. at 6; Ans. 6; Request 2. In other words, Appellants do not address the Examiner's finding that Bourne discloses the claim limitation "in response to a temperature associated with an engine being less than a threshold, cause power output by the engine to increase by an amount." See Decision 4; see also id. at 6 ("Appellants do not apprise us of error in the Examiner's reliance on the teachings of Bourne for this limitation."); Ans. 6; Final Act. 3; Appeal Br. 3; Reply Br. 2. Here, in the Request (see Request 2), similar to the arguments already presented by Appellants in the Appeal Brief (see Appeal Br. 3) and in the Reply Brief (see Reply Br. 2), Appellants continue to contend that Murata does not disclose the above-cited claim limitation that is, according to the Examiner, disclosed by Bourne. Decision 4; see also id. at 6; Ans. 6; Final Act. 3. The Board also noted that "the Examiner relies on the teachings of Murata merely for disclosure of the limitation 'for battery states of charge 3 Appeal2017-007791 Application 13/942,894 (SOC) less than maximum, the greater the SOC, the lesser the amount' that the engine power output is increased." Decision 6-7; see also id. at 5; Final Act. 3-5; Ans. 2-9. The Board provided a thorough discussion, under the heading "Claim Interpretation," of the phrase "the lesser the amount," as recited in claim 1. Decision 3. In particular, the Board noted that claim 1 is directed to a system including a computer programed to "cause power output by the engine to increase by an amount" and "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount." Id.; see also Appeal Br. (Claims App.) 1. The Board determined that because the term "amount" is only recited in reference to "the engine" in claim 1, the Board agreed with the Examiner's claim interpretation that "the 'amount' refers to an increase in engine power output, and therefore, a decrease of [that] 'amount', or a lesser 'amount', leads to a decrease of power outputted by the engine." Decision 3 ( emphasis added); accord Ans. 9 ( emphasis added). Thus, the Board agreed with the Examiner's claim interpretation that the phrase "the lesser the amount" is interpreted to mean "the lesser the amount that [the] engine power output is increased." Decision 3; see also Final Act. 5; Ans. 2-9; Appeal Br. (Claims App.) 1. Stated differently, in reference to claim 1, the Board interpreted the phrase "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount" to mean "for battery states of charge (SOC) less than maximum, the greater the SOC, the lesser the amount [ that the engine power output is increased]." See Decision 3; see also Appeal Br. (Claims App.) 1. The Board further noted that Appellants do not present evidence or argument to 4 Appeal2017-007791 Application 13/942,894 refute the Examiner's claim interpretation of the phrase "the lesser the amount." Decision 3; see also Appeal Br. 3--4; Reply Br. 2. In this case, the Examiner finds that Bourne discloses the claim limitation "in response to a temperature associated with an engine being less than a threshold, cause power output by the engine to increase by an amount" and that that increase in the amount of engine output in Bourne, as modified by the teachings of Murata, will be a lesser amount (be less/decreased) "for battery states of charge (SOC) less than maximum, the greater the SOC." See Ans. 2-9; see also Final Act. 3-5; Decision 3-5. Under the broadest reasonable interpretation, the Examiner's findings as to the combined teachings of Bourne and Murata read on the above-cited claim limitations of claim 1. To the extent that Appellants argue that Murata's "teachings as a whole ... lead away from the claimed invention" (see Request 2), we are not persuaded that we misapprehended or overlooked anything. At most, Appellants assert that one would not look to Murata for a feature found by the Examiner to be taught by Bourne. See id. Appellants, however, do not explain adequately how Murata teaches away from the Examiner's proposed combination or how there is a flaw in the Examiner's reasoning as to why one would have combined the relied-upon teachings. See id.; see also Decision 6-7. Accordingly, Appellants have not provided persuasive evidence or argument apprising us of error in the Board's Decision. Appellants' Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants' Request, but is denied with respect to modifying the Decision. 5 Appeal2017-007791 Application 13/942,894 DECISION The Examiner's rejections of claims 1-6 and 10-18 under 35 U.S.C. § 103 remain 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)(l )(iv). DENIED 6 Copy with citationCopy as parenthetical citation