Ford Global Technologies, LLCDownload PDFPatent Trials and Appeals BoardMar 30, 202014628754 - (D) (P.T.A.B. Mar. 30, 2020) Copy Citation 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. 14/628,754 02/23/2015 Kenneth James Miller 83477607 1024 28395 7590 03/30/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER SMITH, ISAAC G ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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 KENNETH JAMES MILLER, DOUGLAS RAYMOND MARTIN, WILLIAM PAUL PERKINS, and STEPHEN LI-CHUN SHEN ____________ Appeal 2019-005358 Application 14/628,754 Technology Center 3600 ____________ Before STEFAN STAICOVICI, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 3–9, 11–14, and 18–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Ford Global Technologies, LLC as the Applicant and real party in interest. Appeal Br. 2. Appeal 2019-005358 Application 14/628,754 2 THE INVENTION Appellant’s invention relates to energy management for hybrid vehicles. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. l. A system for a vehicle comprising: a battery; and a controller programmed to set a state of charge (SOC) target for the battery according to an angle of inclination and an expected time duration of electric only operation of the vehicle, and responsive to a SOC of the battery being less than the target and the expected time duration being less than a threshold, increase the target and charge the battery to achieve the target. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Saitou US 2007/0029121 A1 Feb. 8, 2007 Heap US 2009/0118922 A1 May 7, 2009 Tate US 2012/0158227 A1 June 21, 2012 Thai-Tang US 8,548,660 B2 Oct. 1, 2013 Rosen US 8,727,049 B1 May 20, 2014 Tsuchikawa US 2014/0180521 A1 June 26, 2014 Dufford US 2015/0275788 A1 Oct. 1, 2015 Appeal 2019-005358 Application 14/628,754 3 The following rejections are before us for review: 1. Claims 1, 3–9, 11–14, and 18–20 are rejected under 35 U.S.C. § 112(a) for failure to comply with the written description requirement. 2. Claims 11, 14, and 19 are rejected under 35 U.S.C. 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which a joint inventor regards as the invention. 3. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate and Saitou. 4. Claims 3–5, and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Saitou, and Heap. 5. Claims 6 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Saitou, Heap, and Dufford. 6. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Saitou, Heap, and Thai-Tang. 7. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Saitou, and Tsuchikawa. 8. Claims 12 and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over Tate. 9. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate and Tsuchikawa. 10. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Tsuchikawa, and Rosen. 11. Claims 18 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Tate and Heap. 12. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over Tate, Heap, and Tsuchikawa. Appeal 2019-005358 Application 14/628,754 4 OPINION Written Description The Examiner finds that there is a lack of written description in the Specification to support the language in claim 1 directed to an “expected time duration of electric only operation of the vehicle.” Final Act. 5; Clams App. The Examiner states that there does not appear to be any disclosure describing the steps of calculating an expected “time” duration as claimed. Id. The Examiner further determines that disclosure of such calculation steps is required to determine what data is used to complete such calculation. Id. The Examiner further notes that it is unclear whether “time duration” refers to an amount of time that a vehicle can travel using electricity only, or has some other meaning. Id. Appellant argues that the phrase “an expected time duration of electric only operation of the vehicle” should be interpreted as the amount of time that the vehicle is expected to operate with only electric power. Appeal Br. 3. This interpretation strikes us as the broadest reasonable construction of the claim language. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that, during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification). With respect to calculating the expected time duration, Appellant argues that historical data concerning the time duration of electric only operation could be used to calculate an expected time duration of operation. Appeal Br. 3. Appellant directs us to paragraph 44 of the Specification as disclosing the use of historical data. Id. at 4. Appeal 2019-005358 Application 14/628,754 5 In response, the Examiner finds that Appellant’s amendment adding the word “time” to the claim improperly introduces new matter that is not disclosed in the application as originally filed. Ans. 4. The Examiner also explains that, in order to calculate an expected time duration, Appellant should disclose steps to perform such a calculation and what data is used and how it is used to perform the calculation. Id. at 4–5. The Examiner further explains that merely alluding to “historical” data is not sufficient, as Appellant should provide details as to the nature of such data and how it is to be used in any calculation. Id. at 6–7. In reply, Appellant disputes the Examiner’s contention that amending the claim to add the word “time” introduces new matter. Reply Br. 2. Appellant now directs our attention to paragraphs 35–37 and 53 of the Specification as providing additional written description support. Id. at 3–4. The purpose of the written description requirement is 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)). In that regard, 35 U.S.C. § 112(a) provides, in pertinent part, that “[t]he specification shall contain a written description of the invention.” That requirement is satisfied only if the inventor “convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate[s] that by disclosure in the specification of the patent.” Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting Appeal 2019-005358 Application 14/628,754 6 Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)). “The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). We disagree with the Examiner’s position that adding the word “time” to claim 1 introduces new matter. Figures 4A and 4B of Appellant’s disclosure, accompanied by paragraphs 38 and 39 of the Specification, illustrate battery discharge as a function of time. See Spec. ¶¶ 38, 39, Figs. 4A, 4B. Furthermore, the Specification explicitly discloses that charging the battery allows the battery to supply electrical energy for a “longer duration.” Id. ¶ 37. The context of paragraph 37 is controlling the operation time of the internal combustion engine. Id. Thus, taking Appellant’s disclosure as a whole in context, a person of ordinary skill in the art would understand that the invention is concerned, at least in part, with the duration of time that a battery charge would last during “electric only” operation. Id. A person of ordinary skill in the art would understand that, once a vehicle battery is charged to a particular state of charge, and then the vehicle is operated on electric power only, the battery will discharge. Spec. ¶¶ 2–4. A person of ordinary skill would similarly understand that the battery will discharge at a certain rate. A person of ordinary skill would similarly understand that a rate of electrical discharge could be expressed either in terms of the amount of discharge: (1) per unit time; or (2) per unit of distance travelled. A person of ordinary skill in the art would also Appeal 2019-005358 Application 14/628,754 7 understand that a vehicle’s rate of battery discharge could change over time based on a variety of factors. Appellant’s Specification identifies a number of factors that can be taken into account to estimate the rate of battery discharge, such as auxiliary load, vehicle speed, road grade or slope. Spec. ¶ 35. Applying an amount, such as a state of charge, to a rate, such as amount of discharge per unit time, to yield an estimated time duration is a simple straightforward calculation and we are not inclined to fault Appellant for not explicitly reciting the formula for such calculation in the Specification. See Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012) (explaining that a patent need not teach, and preferably omits, what is well known in the art). In our opinion, Appellant’s disclosure contains sufficient disclosure to permit a person of ordinary skill in the art to understand that Appellant had possession of the invention at the time of filing the application. We do not sustain the Examiner’s Section 112(a) written description rejection of claims 1, 3–9, 11–14, and 18–20. Indefiniteness of Claims 11, 14, and 19 Each of claims 11, 14, and 19 is a dependent claim and each claim recites a “wheel speed sensor output” and a “longitudinal accelerometer output.” Claims App. The Examiner takes the position that such limitations lack antecedent basis, thereby rendering the claims indefinite. Final Act. 7–8.2 2 An additional rejection of claims 1, 3–9, 11–14, and 18–20 under 35 U.S.C. § 112(b) has been withdrawn by the Examiner. Final Act. 6–7, Ans. 3. Appeal 2019-005358 Application 14/628,754 8 Appellant takes the position that providing explicit antecedent basis for such limitations is not necessary. Appeal Br. 4, Reply Br. 5. We agree. A claim lacking explicit antecedent basis is not necessarily indefinite when the scope of the claim is reasonably certain to those of ordinary skill in the art. Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370– 71 (Fed. Cir. 2006); see also MPEP § 2173.05(e). We do not sustain the Examiner’s Section 112(b) indefiniteness rejections of claims 11, 14, and 19. Unpatentability of Claim 1 over Tate and Saitou The Examiner finds that Tate discloses the invention substantially as claimed except for increasing a target and charging the battery to achieve the target, for which the Examiner relies on Saitou. Final Act. 8–11. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Tate by the teachings of Saitou to achieve the claimed invention. Id. at 11. According to the Examiner, a person of ordinary skill in the art would have done this to extend electric travel mode distance. Id. Appellant argues that Tate and Saitou are concerned with distance of travel or range of travel. Appeal Br. 3, Reply Br. 5–6. Appellant argues that the references do not suggest time duration of electric only operation of the vehicle. Id. In response, the Examiner directs our attention to paragraph 25 of Tate as expressly contemplating consuming electricity over a specified period of time. Ans. 10. The Examiner considers calculating the difference Appeal 2019-005358 Application 14/628,754 9 between: (1) electric-only driving range; and (2) electric-only driving time duration to be obvious and trivial. Id. at 11. In reply, Appellant argues that the Examiner’s “trivial and obvious” remarks are conclusory. Reply Br. 6. Appellant considers that a vehicle might consume different amounts of electricity at different times. Id. Tate is directed to a system for maximizing an electric-only driving range of a hybrid vehicle. Tate, Abstract, ¶ 13. The electric vehicle 10 includes a system 12 configured to maximize the electric-only driving range 22 of the electric vehicle 10. The system 12 includes a power source 14, an energy storage device 16, an auxiliary power unit (APU 18), and a controller 20. The power source 14 is configured to propel the electric vehicle 10. The energy storage device 16 is configured to supply energy to the power source 14 in the form of electricity. Id. ¶ 14. Tate’s system predicts the amount of electricity that would likely be consumed over a specified period of time and/or distance. Id. ¶ 25. In view of the foregoing, we determine that the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s conclusion of unpatentability is well-founded. Furthermore, given the well-known relationship between distance, speed, and time, we agree with the Examiner that the difference between calculating an estimated range and an estimated time duration is something that would have been obvious to person of ordinary skill in the art. We sustain the Examiner’s unpatentability rejection of claim 1 over Tate and Saitou. Appeal 2019-005358 Application 14/628,754 10 Unpatentability of Claims 3–9, 11–14, and 18–20 over Combinations Based on Tate These claims are rejected over Tate in combination with various other references. Final Action 13–32. Appellant does not argue for the separate patentability of any of these claims apart from arguments presented with respect to claim 1, which we have previously considered. We sustain the Examiner’s unpatentability rejection of claims 3–9, 11–14, and 18–20 over the various combinations based on Tate. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). CONCLUSION Claims Rejected § Reference(s)/Basis Aff’d Rev’d 1, 3-9, 11- 14, 18-20 112 Written Description 1, 3-9, 11- 14, 18-20 11, 14, 19 112 Indefiniteness 11, 14, 19 1 103 Tate, Saitou 1 3-5, 8 103 Tate, Saitou, Heap 3-5, 8 6, 9 103 Tate, Saitou, Heap, Dufford 6, 9 7 103 Tate, Saitou, Heap, Thai-Tang 7 11 103 Tate, Saitou, Tsuchikawa 11 12, 13 103 Tate 12 14 103 Tate, Tsuchikawa 14 15 103 Tate, Tsuchikawa, Rosen 15 18, 20 103 Tate, Heap 18, 20 19 103 Tate, Heap, Tsuchikawa 19 Overall Outcome 1, 3-9, 11- 14, 18-20 Appeal 2019-005358 Application 14/628,754 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation