Christopher David. Hilton et al.

Patent Trials and Appeals Board

Jul 19, 2019

14126851 - (D) (P.T.A.B. Jul. 19, 2019)

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.
14/126,851 03/24/2014 Christopher David Hilton 10390P/US 2485
15815 7590 07/19/2019
The Mason Group Patent Specialists LLC
24610 Kingsland Blvd
Katy, TX 77494
EXAMINER
LANE, NICHOLAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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@nolteip.com
twhite@themasongroup.net
vdavis@nolteip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER DAVID HILTON and
ANGUS RUTHERFORD LYON1
____________

Appeal 2019-000478
Application 14/126,851
Technology Center 3600
____________

Before JAMES P. CALVE, MICHAEL L. WOODS, and
FREDERICK C. LANEY, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher David Hilton and Angus Rutherford Lyon (“Appellants”)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1, 3, 9–12, and 14. Appeal Br. 5.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is Protean Electric
Limited. Appeal Br. 3.
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Application 14/126,851

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SUMMARY OF THE DECISION
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ invention relates to regenerative braking, such as used by
electric vehicles. See Spec. 1. Claims 1, 10, and 14 are independent.
Appeal Br. 17–20 (Claims App.). Claim 1 is illustrative and reproduced
below, with emphases added to limitations discussed in this Decision.
1. A brake arrangement for a vehicle, the brake
arrangement comprising:
a brake caliper;
a braking system arranged to vary hydraulic or pneumatic
pressure for varying a pressure to the brake caliper;
an electric motor arranged to generate a drive torque
that is applied to a first wheel when the electric motor is placed
in a drive mode of operation and a braking torque that is
applied to the first wheel when the electric motor is placed in a
braking mode of operation,
wherein the electric motor is arranged to vary brake
torque generated when the electric motor is in the braking mode
dependent upon the amount of hydraulic or pneumatic pressure
that is being provided to the brake caliper,
wherein the brake torque generated by the electric motor
when the electric motor is in the braking mode is arranged to
provide a substantially constant ratio of regenerative braking to
hydraulic pressure or pneumatic pressure provided to the brake
caliper.
Id. at 17 (emphases added).
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THE REJECTIONS
The Examiner rejected:
(a) Claims 1, 9–12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Emmerich (US 2006/0220452 A1, published Oct. 5, 2006)
and Murata (US 2010/0292882 A1, published Nov. 18, 2010).
Final Act. 2.
(b) Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Emmerich,
Murata, and Matsuura (US 2006/0131956 A1, published June 22,
2006). Final Act. 6.

ANALYSIS
I. Claims 1, 9–12, and 14 Rejected Under Emmerich and Murata2
Appellants contest the rejection of claims 1, 9–12, and 14 collectively.
See Appeal Br. 11–16. We select claim 1 as representative, treating claims
9–12 and 14 as standing or falling with representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

A. Examiner’s Rejection
In rejecting claim 1, the Examiner relies on Emmerich for disclosing a
brake arrangement. Final Act. 2 (citing Emmerich Abstr., Fig. 1). To
illustrate Emmerich’s brake arrangement, we reproduce its Figure 1, below:

2 Throughout the Final Office Action, the Examiner refers to Emmerich as
“Emmett.” See, e.g., Final Act. 3. We find that the transposition of
Emmerich with Emmett was an inadvertent and harmless error, and
Appellants understood correctly the rejection in its briefing.
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According to the Examiner, and as shown above in Emmerich’s
Figure 1, Emmerich discloses a brake arrangement comprising, inter alia,
brake caliper 2 and braking system 8 arranged to vary hydraulic or
pneumatic pressure for varying pressure to the brake caliper, and generator 4
arranged to generate a braking torque when the generator is placed in a
braking mode. Id. at 2–3 (citing Emmerich ¶¶ 16, 26, 29).
The Examiner acknowledges, however, that Emmerich “does not
disclose that the generator is arranged to generate a drive torque,” as
required by the claims. Id. at 3. To address this missing limitation, the
Examiner relies on Murata for teaching an electric motor/generator that
generates “a drive torque . . . when the electric motor is placed in a drive
mode . . . and a braking torque . . . when the electric motor is placed in a
braking mode.” Id. (citing Murata ¶ 10).
In combining Emmerich with Murata, the Examiner reasons that a
skilled artisan would have replaced Emmerich’s generator with Murata’s
electric motor/generator and that doing so would “generate a drive torque to
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accelerate the vehicle without the need for separate generators and motors.”
Id. at 3 (citing Murata ¶¶ 7, 10).

B. Analysis
In contesting the rejection of claim 1, Appellants present several
arguments, which we address separately, below. See Appeal Br. 11–16; see
also Reply Br. 2–5.
First, Appellants assert that “it is clear from Emmerich that the only
drive torque applied to the wheels of the vehicle is via an engine, not an
electric motor” (Appeal Br. 12) and that Emmerich fails to describe a motor
that both generates a drive torque and a braking torque (see id. at 11–12).
Appellants’ first argument is not persuasive, as one cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991).
Here, the Examiner acknowledges that Emmerich does not disclose a
generator that both generates a braking torque and drive torque, but proposes
to modify Emmerich to replace its generator with Murata’s singular
motor/generator—based on Murata’s teaching—in order to “generate a drive
torque to accelerate the vehicle without the need for separate generators and
motors.” Final Act. 3 (citing Murata ¶ 10); see also Ans. 7–8. Emmerich
discloses that “[t]he purpose of regenerative brake systems in motor vehicles
involves storing at least part of the energy produced during braking in the
vehicle and re-using it for the drive of the vehicle” (Emmerich ¶ 2 (emphasis
added)), and we are persuaded that a skilled artisan would have recognized a
benefit to be gained by replacing Emmerich’s generator with Murata’s
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motor/generator in order to generate drive torque for acceleration and to
eliminate the need for separate generators and motors, as the Examiner
reasons (Final Act. 3).
Second, Appellants point out that the claims require the electric motor
braking to be “dependent upon the amount of hydraulic or pneumatic
pressure that is being provided to the brake caliper” and that the “braking
mode is arranged to provide a substantially constant ratio of regenerative
braking to hydraulic pressure or pneumatic pressure provided to the brake
caliper.” Appeal Br. 11–12 (citation omitted). Appellants contend that
Emmerich fails to disclose these limitations. See id. Appellants further
contend that “the brake torque for the system described in Emmerich is
based on a travel indicator of a brake pedal.” Id. at 12.
Appellants’ second argument does not apprise us of Examiner error.
Although Appellants may be correct that Emmerich utilizes a travel
indicator on the brake pedal to determine deceleration, Emmerich also
discloses the use of hydraulic brake pressure to determine its generator’s
braking torque. Specifically, Emmerich discloses:
To determine the total nominal deceleration, this
deceleration is suitably determined by means of a travel
indicator of the brake pedal of the brake system. To determine
the brake pressure which prevails at the brake pedal in a
defined brake pedal position and can also be used for
determining the total nominal brake torque, said brake pressure
is determined preferably by way of a pressure sensor that is
positioned at a hydraulic line of the brake system leading to a
friction brake.
Emmerich ¶ 16 (emphasis added); see also id. at ¶ 29 (describing Fig. 2).
We are persuaded by the Examiner’s finding that this disclosure shows the
described electric motor braking system is “dependent upon the amount of
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hydraulic or pneumatic pressure that is being provided to the brake caliper.”
Ans. 4.
As to the claim limitation, “braking mode is arranged to provide a
substantially constant ratio of regenerative braking to hydraulic pressure or
pneumatic pressure provided to the brake caliper,” we reproduce
Emmerich’s Figure 2, below:

As shown in Emmerich’s Figure 2, reproduced above, curve 2 depicts
Emmerich’s brake torque component of its generator 4 and curve 3 depicts
the brake torque of the friction brakes. Emmerich ¶ 29. Figure 2 shows, as
the Examiner found correctly (see Ans. 5–6 (citing Emmerich ¶ 29)), that
Emmerich’s “braking mode is arranged to provide a substantially constant
ratio of regenerative braking to hydraulic pressure or pneumatic pressure
provided to the brake caliper,” as the generator braking torque (curve 2) and
the friction braking torque (curve 3) both increase linearly until the
maximum total deceleration is reached. See Emmerich ¶ 29.
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Third, Appellants argue, “the braking torque shown in [Emmerich’s]
Fig. 2 does not include the effect of ‘engine brake’, which would vary the
linear relationship between [the] brake torque resulting from the electro-
mechanical brakes and the friction brakes.” Reply Br. 4 (citing Murata ¶
28). Appellants further assert that the resulting engine braking “would not
give a constant ratio.” Id.
Appellants’ third argument is not persuasive, as it is not
commensurate with the claim scope.
Emmerich’s paragraph 28, cited by Appellants (id.), indeed discloses
that “[b]efore the braking operation commences, the motor vehicle, in the
absence of acceleration, is already decelerated by the generator 4.”
Emmerich ¶ 28. Also, as pointed out correctly by Appellants (Reply Br. 4),
this same paragraph further discloses that “[t]his deceleration is not shown
[in] FIG. 2.” Emmerich ¶ 28. The claims do not require, however, a
substantially constant ratio of regenerative braking to hydraulic pressure
before braking commences. Appeal Br. 17 (Claims App.) Because
Emmerich’s Figure 2 depicts a constant ratio of regenerative braking once
braking commences, the claim limitation is satisfied.
Fourth, Appellants argue that “the teaching of Murata is completely
contrary to that of Emmerich” (id. at 15), and that a skilled artisan would not
combine Emmerich with Murata, as the Examiner has done (see id. at 13–
15). Appellants assert that “the teaching of Murata can only be relied upon
if the characteristics of [its] electric motors . . . are consistent with the needs
and requirements for the invention disclosed in Emmerich.” Reply Br. 2.
Appellants further assert that “the whole premise behind Murata is that the
braking provided by the motors is determined on criteria that would not
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result in a battery overcharge situation occurring—which would be
completely inconsistent with the requirements of Emmerich.” Id. at 3–4
(citing Murata ¶¶ 8, 10).
Appellants’ fourth argument is not persuasive. The rejection before
us simply relies on Murata for teaching a combined motor/generator, and the
Examiner proposes to replace Emmerich’s generator with a combined
motor/generator to “generate a drive torque to accelerate the vehicle without
the need for separate generators and motors.” Final Act. 3 (citing Murata ¶
10). Appellants cite to nothing in Murata that identifies error in the
Examiner’s findings.
To the extent Appellants’ fourth argument is based on the cited art
teaching away from the proposed combination, Appellants cite nothing, nor
do we find anything, in Emmerich that criticizes, discredits, or otherwise
discourages the use of a combined motor/generator, such as the one taught
by Murata. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed”).
To the extent Appellants’ fourth argument is based on Emmerich or
Murata being non-analogous art, we disagree, as Emmerich and Murata are
both related to the same field of endeavor as Appellants’ claimed invention,
namely, vehicle braking systems. See In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011); see also Emmerich, [54] (“Method for Controlling the
Braking System of a Motor Vehicle”); see also Murata ¶ 2 (“[T]he invention
relates to a device for controlling the behavior of a vehicle which includes
. . . causing the corresponding wheels to generate regenerative braking
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torque”); see also Appeal Br. 17, claim 1 (Claims App.) (“A brake
arrangement for a vehicle . . .”).
For the foregoing reasons, we affirm the rejection of claim 1, and
claims 9–12 and 14, which fall with claim 1, as unpatentable over Emmerich
and Murata. We also adopt as our own the Examiner’s findings and
reasoning as set forth in the Final Office Action and Answer.

II. Claim 3 Rejected Under Emmerich, Murata, and Matsuura
Claim 3 depends directly from claim 1 and the Examiner relies on
Matsuura for satisfying part of claim 3’s additional limitations. See Final
Act. 6 (citations omitted).
In contesting this rejection, Appellants rely on the same arguments
discussed supra with regards to independent claim 1. Appeal Br. 16.
For the same reasons Appellants’ arguments contesting the rejection
based on Emmerich and Murata are unpersuasive, Appellants’ arguments
contesting the rejection of claim 3 based on Emmerich, Murata, and
Matsuura are also unpersuasive. Accordingly, we affirm the rejection of
claim 3 as unpatentable over Emmerich, Murata, and Matsuura.
SUMMARY
We affirm the rejection of claims 1, 9–12, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Emmerich and Murata.
We also affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Emmerich, Murata, and Matsuura.
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