Ford Global Technologies, LLC

Patent Trials and Appeals Board

Mar 1, 2022

2021003367 (P.T.A.B. Mar. 1, 2022)

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. 15/691,317 08/30/2017 Thomas G. Leone 83849070(65080-2625) 1028 113140 7590 03/01/2022 Bejin Bieneman PLC Ford Global Technologies, LLC 2000 Town Center Suite 800 Southfield, MI 48075 EXAMINER MERCADO, ALEXANDER A ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): docket@b2iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS G. LEONE and KENNETH JAMES MILLER Appeal 2021-003367 Application 15/691,317 Technology Center 2800 Before JEFFREY T. SMITH, BRIAN D. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5-10, 12-15, and 17-20. 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. Appellant identifies the real party in interest as Ford Global Technologies, LLC. (Appeal Br. 3.). Appeal 2021-003367 Application 15/691,317 2 Claim 1 is representative of the subject matter on appeal, we reproduce it reproduce below: 1. A method, comprising: at a vehicle computer: determining a vehicle speed; determining, for a first wheel, a first vibration profile; determining, for a second wheel, a second vibration profile; determining an expected time between a peak vibration at the first wheel and a peak vibration at the second wheel based on the vehicle speed; determining an actual time between the peak vibration at the first wheel and the peak vibration at the second wheel based on comparing the first vibration profile to the second vibration profile; and based on a difference between the expected time and the actual time, determining one of (a) a roadway disturbance input to each of the wheels, or (b) a wheel imbalance at one of the wheels. (Appeal Br. 16, Claim Appendix, emphasis added to identify disputed claim language.) REJECTIONS The Examiner maintains the following rejections. I. Claims 1-3, 5-10, 12-15, and 17-20 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. II. Claims 1-3, 5-10, 12-15, and 17-20 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. III. Claims 5 and 17 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Appeal 2021-003367 Application 15/691,317 3 Appellant only presents arguments for independent claims 1 and 13 together. See generally Appeal Br. Accordingly, we select claim 1 as representative of the claimed subject matter on appeal and limit our discussion thereto. OPINION The written description requirement is separate and distinct from the enablement requirement, and examination of claims with respect to each of these requirements involves a separate and distinct analysis. Written Descriptive Support Rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph Claims 1-3, 5-10, 12-15, and 17-20 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. (Final Act. 4-6.) After review of the respective positions Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims 1- 3, 5-10, 12-15, and 17-20 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement for the reasons the Examiner presents. We add the following. The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) Appeal 2021-003367 Application 15/691,317 4 (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Determining a roadway disturbance input to each of the wheels The Examiner determines the claimed invention is not described in such a way as to reasonably convey to those skilled in the art that the inventor had possession of “based on a difference between the expected time and the actual time, determining . . . a roadway disturbance input to each of the wheels.” (Final Act. 5-6.) The Examiner specifically states: The instant application describes determining a roadway disturbance to a wheel by determining a vibration is greater than a threshold [0061] (Figure 5). There is no disclosure as to how “a difference between the expected time and the actual time” is used to determine a roadway disturbance input to each of the wheels. Note there is no disclosure as to what diagnosis is made when the difference between the actual time and the expected time is less than the threshold. (Final Act. 5) (underlining omitted.) Appeal 2021-003367 Application 15/691,317 5 Appellant argues claim 1 meets the written description requirement with respect to “based on a difference between the expected time and the actual time, determining . . . a roadway disturbance input to each of the wheels.” (Appeal Br. 10-13.) Appellant specifically argues: Appellant’s Specification discloses that the roadway disturbance input causes “a mechanical impulse (or series of impulses) to at least one of the vehicle wheels,” which “may result in a vibration being greater than a predetermined threshold.” (¶ 0065) (emphasis added). Also, the vibration profile for each wheel may include one or more impulses, and the actual time can be determined from the impulse in each vibration profile. (see Figs. 4 and 5). Accordingly, the Appellant respectfully asserts that a person skilled in the art would have understood that the roadway disturbance input is indicated by the impulses in the vibration profiles when the expected time equals the actual time because the expected time delay is a time “between [one wheel] rolling over the roadway disturbance and when [another wheel] should roll over the same disturbance.” (¶ 0065). Accordingly, when the actual time between impulses equals the expected time, the impulses in the vibration profiles indicate the road disturbance input. At least for these reasons, the Specification sufficiently describes how to determine a roadway disturbance input into each wheel based on a difference between the expected time and the actual time, and the present rejections should be reversed. (Appeal Br. 10-11) (emphasis omitted.) Appellant’s arguments do not point to reversible error in the Examiner’s determination that the subject matter of claims 1 and 13 lacks written descriptive support for determining a roadway disturbance input to each of the wheels based on a difference between the expected time and the actual time. The Specification does not explain how the utilization of time difference between the front and rear wheels is sufficient for determining a Appeal 2021-003367 Application 15/691,317 6 roadway disturbance input to each of the wheels. Appellant has provided insufficient factual evidence that demonstrates the relationship between the actual and expected time difference and a roadway disturbance input to each of the wheels. Without such support, there is nothing within the originally filed disclosure that reasonably conveys to those of ordinary skill in the art Appellant had possession of the claimed subject matter as of the filing date. Determining a wheel imbalance at one of the wheels The Examiner finds: The instant application describes determining wheel imbalance by using the difference in the two profiles to determine an actual time between a sensed road disturbance input and the speed of the vehicle to determine an expected difference in time difference in the sensed road disturbance. See [0061 - 0065] of the instant publication. If the time difference[s] are not equal or are greater than a threshold, a wheel imbalance is determined [0065]. The instant specification does not disclose how the comparison between the aforementioned time differences is attributed to wheel imbalance. For example, if the vehicle is turning when it contacts the road disturbance ΔtACT would be larger than ΔtEXP because in actuality the wheels would travel further than the wheelbase in between road disturbance contacts. There is no disclosure as to how other factors are excluded that can cause a difference in time. There is also no disclosure how the difference in time can be attributed only to a wheel imbalance. Furthermore, wheel imbalance is due to asymmetrical mass distribution in the wheel. There is no disclosure as to how an asymmetrical mass distribution causes the disclosed time differences in the context of wheels travelling the distance equal to the wheelbase. In other words, how does an unbalanced wheel cause a difference between ΔtACT and ΔtEXP? (Final Act. 4-5) (underlining omitted.) Appeal 2021-003367 Application 15/691,317 7 Appellant argues the Specification provides sufficient written descriptive support for determining a wheel imbalance at one of the wheels based on a difference between the expected time and the actual time. (Appeal Br. 9-10.) Appellant specifically argues: [T]he present Specification discloses determining “a wheel imbalance in one of the wheels 28FL or 28RL by using the vehicle speed v and the vibration profiles 90, 92 to determine an absence of correlation (e.g., an absence of time correlation).” (¶ 0065; emphasis added). The Specification goes on to explain that “[u]sing the speed v of the vehicle..., computer 18 may determine an expected time delay ΔtEXP between the front wheel 28FL rolling over the roadway disturbance and when rear wheel 28RL should roll over the same disturbance.” (Id.) That is, the expected time delay is determined assuming that the front and rear wheels will roll over the same roadway disturbance. Further, “using the vibration profiles 90, 92, computer 18 may determine an actual time delay or difference (ΔtACT),” (Id.; see also Fig. 5) and “computer 18 may determine wheel imbalance...when ΔtEXP does not equal ΔtACT”” (emphasis added). That is, when the expected time between vibration peaks does not equal the actual time between vibration peaks, the computer can determine a wheel imbalance as the source of the vibration peaks; certainly the Examiner was clearly wrong to read the claims as requiring a wheel imbalance to cause a time difference. (Appeal Br. 9.) We have fully considered Appellant’s evidence and argument and the Examiner’s findings regarding this matter. Appellant’s statement and argument are not supported by evidence and therefore lack persuasive merit. The present record establishes that generally determining an actual time delay or difference can result from various factors. The Examiner has provided an example of a consideration, i.e., a turning vehicle, that could Appeal 2021-003367 Application 15/691,317 8 cause an actual time delay or difference to result. Appellant also suggests that the determining an actual time delay or difference can result from utilization of vibration profiles 90, 92. (Appeal Br. 9.) However, the instant Specification does not describe how the vibration profiles or actual time delay or differences are utilized to determine a wheel imbalance. The fact that a person of ordinary skill in the art may be able to program a computer to utilize a variation in actual to expected time delay to determine a wheel imbalance does not establish that the inventor had possession of the claimed subject matter as of the filing date. A description that renders obvious a claimed invention is not sufficient to satisfy the written description requirement for that invention. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Thus, Appellant has not identified a reversible error in the Examiner’s finding of lack of written description support. Thus, we sustain the Examiner’s rejection of claims 1-3, 5-10, 12-15, and 17-20 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Enablement Rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph After review of the respective positions Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims 1- 3, 5-10, 12-15, and 17-20 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement Appeal 2021-003367 Application 15/691,317 9 requirement for the reasons the Examiner presents. We add the following. It is well settled that “the specification must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed.’” In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (citing In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991)). Enablement is a question of law involving underlying factual inquiries. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Whether undue experimentation is needed is not a single factual determination, but rather is a conclusion reached by weighing many factual considerations. Wands, 858 F.2d at 737. Wands summarizes the factors to be considered in determining whether undue experimentation is required as follows: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claim(s). Id. However, it is not necessary to review all the Wands factors to find a disclosure enabling. Rather, the Wands factors “are illustrative, not mandatory” and what is relevant to an enablement Appeal 2021-003367 Application 15/691,317 10 determination depends upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). We first address whether the Specification adequately enables determining a roadway disturbance input to each of the wheels. The Examiner finds: The instant application describes determining wheel imbalance by using the difference in the two profiles to determine an actual time between a sensed road disturbance input and the speed of the vehicle to determine an expected difference in time difference in the sensed road disturbance. See [0061 - 0065] of the instant publication. If the time difference are not equal or are greater than a threshold, a wheel imbalance is determined [0065]. The instant specification does not disclose how the comparison between the aforementioned time differences is attributed to wheel imbalance. For example, if the vehicle is turning when it contacts the road disturbance ΔtACT would be larger than ΔtEXP because in actuality the wheels would travel further than the wheelbase in between road disturbance contacts. There is no disclosure as to how other factors are excluded that can cause a difference in time. There is also no disclosure how the difference in time can be attributed only to a wheel imbalance. Furthermore, wheel imbalance is due to asymmetrical mass distribution in the wheel. There is no disclosure as to how an asymmetrical mass distribution causes the disclosed time differences in the context of wheels travelling the distance equal to the wheelbase. In other words, how does an unbalanced wheel cause a difference between ΔtACT and ΔtEXP? Turning to the Wand’s factors, there is no guidance provided by the applicant as to how these other factors are excluded so that the time difference can be attributed only to wheel imbalance. Furthermore, there is no guidance provided by the applicant as to how the asymmetrical mass distribution causes the difference in time so that the difference can only be Appeal 2021-003367 Application 15/691,317 11 attributed to wheel imbalance. Also, no working examples in the prior art have been located. (Final Act. 6-7) (underlining omitted.) Appellant argues the Specification sufficiently enables how to determine a roadway disturbance input into each wheel based on a difference between the expected time and the actual time. Appellant specifically argues: [T]he Specification discloses that the roadway disturbance input causes “a mechanical impulse (or series of impulses) to at least one of the vehicle wheels.” (¶0061). Also, the vibration profile for each wheel may include one or more impulses, i.e., vibration peaks (See Figs. 4 and 5). That is, an impulse in the respective vibration profiles 90, 92 indicate the corresponding wheel rolled over a roadway disturbance. Appellant’s Specification further shows that the actual time is a determined from a peak of one vibration profile 90 to a corresponding peak of another vibration profile 92. (See Fig. 5). That is, the actual time is a time between one wheel rolling over the road disturbance and when another wheel actually rolls over the same roadway disturbance, i.e., receives the mechanical impulse from the roadway disturbance. (Appeal Br. 13-14) (emphasis omitted.) [A] person skilled in the art would have understood how to determine the road disturbance from vibration peaks, e.g., impulses, in the vibration profiles when the actual time equals the expected time because the expected time delay is a time “between [one wheel] rolling over the roadway disturbance and when [another wheel] should roll over the same disturbance.” (¶ 0065). Accordingly, when the actual time between impulses equals the expected time, the impulses in the vibration profiles Appeal 2021-003367 Application 15/691,317 12 indicate each respective wheel rolled over the road disturbance input. (Appeal Br. 14.) Appellant’s arguments are not persuasive of reversible error. The Specification does not provide guidance how the time difference between the front and rear wheels is utilized for determining a roadway disturbance input to each of the wheels. The fact that a person of ordinary skill in the art may understand how to determine a road disturbance does not establish that this is the same technique utilized by the present inventors. Figures 4 and 5 describe other methods for determine wheel imbalance based on vibrational profiles. (Spec. ¶¶ 59, 61). Neither disclosure reveals how a roadway disturbance is determined based on the actual and expected time difference. After weighing the evidence relied on by the Examiner and Appellant, we determine that Appellant has not established reversible error in the Examiner’s finding that the Specification does not have an enabling disclosure for determining a roadway disturbance input to each of the wheels based on a difference between the expected time and actual time. We next address whether the Specification adequately enables determining a wheel imbalance at one of the wheels. The Examiner determines the claimed invention is not described in such a way as to enable one skilled in the art based on a difference between the expected time and the actual time determining a wheel imbalance at one Appeal 2021-003367 Application 15/691,317 13 of the wheels. (Final Act. 6-7.) The Examiner’s statement addressing the enablement rejection is reproduced above. Appellant argues the Specification sufficiently enables how to determine a wheel imbalance at one of the wheels based on a difference between the expected time and the actual time. (Appeal Br. 12-13.) Appellant specifically argues: Appellant’s Specification discloses determining “a wheel imbalance in one of the wheels 28FL or 28RL by using the vehicle speed v and the vibration profiles 90, 92 to determine an absence of correlation (e.g., an absence of time correlation).” (¶ 0065; emphasis added). The Specification goes on to explain that: distance s may be a linear measurement between an axle of front wheels 28FL, 28FR and an axle of rear wheels 28RL, 28RR. Using the speed v of the vehicle..., computer 18 may determine an expected time delay ΔtEXP between the front wheel 28FL rolling over the roadway disturbance and when rear wheel 28RL should roll over the same disturbance. For example, , ΔtEXP = v/s. (Id.) That is, the expected time delay is determined understanding that the front and rear wheels will roll over a same roadway disturbance. (Appeal Br. 12) (emphasis omitted.) Appellant’s arguments are not persuasive of reversible error. The Specification does not explain or provide guidance how the absence of correlation (time difference) between the front and rear wheels is utilized to determine a wheel imbalance at one of the wheels. Figures 4 and 5 describe other methods for determine wheel imbalance based on vibrational profiles. (Spec. ¶¶ 59, 61). However, neither disclosure reveals how a wheel Appeal 2021-003367 Application 15/691,317 14 imbalance at one of the wheels is determined based on the actual and expected time difference. After weighing the evidence relied on by the Examiner and Appellant, we determine that Appellant has not established reversible error in the Examiner’s finding that the Specification does not have an enabling disclosure for determining to a wheel imbalance at one of the wheels based on a difference between the expected time and actual time. Indefiniteness Rejection under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph The Examiner finally rejected claims 5 and 17 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. (Final Act. 8.) Appellant does not identify this rejection as being appealed and presents no argument for its reversal.2 Accordingly, we summarily affirm the rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). 2 Appellant acknowledges the Appeal Brief did not contain arguments addressing this rejection. (Reply Br. 6.) Appeal 2021-003367 Application 15/691,317 15 CONCLUSION DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-10, 12-15, 17- 20 112(a)/ 112 Written Description 1-3, 5-10, 12-15, 17- 20 1-3, 5-10, 12-15, 17- 20 112(a)/ 112 Enablement 1-3, 5-10, 12-15, 17- 20 5, 17 112(b)/ 112 Indefiniteness 5, 17 Overall Outcome 1-3, 5-10, 12-15, 17- 20 TIME PERIOD FOR RESPONSE 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