Derek Kinch

Patent Trials and Appeals Board

Jul 31, 2020

2018008747 (P.T.A.B. Jul. 31, 2020)

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.
14/300,674 06/10/2014 DEREK KINCH 83446371 9339
28395 7590 07/31/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
COMINGS, DANIEL C
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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 DEREK KINCH
Appeal 2018-008747
Application 14/300,674
Technology Center 3700
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.
SONG, 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 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
Appeal 2018-008747
Application 14/300,674
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CLAIMED SUBJECT MATTER
The claims are directed to a dual sump transmission hydraulic control
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hydraulic control system for a transmission comprising:
a primary sump;
an auxiliary sump; and
an oil control valve configured to automatically restrict
flow of fluid from the auxiliary sump to the primary sump,
without a command from an external controller, in response to a
temperature of the fluid exceeding a temperature threshold and
configured to vary the temperature threshold based on whether
an engine is running.
Appeal Br., Claims App. 1.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ward et al. US 3,770,076 Nov. 6, 1973
Briski US 3,927,830 Dec. 23, 1975
Soga et al. US 4,967,621 Nov. 6, 1990
Asayama et al. US 5,113,720 May 19, 1992
Gerstengerger US 5,516,042 May 14, 1996
Nestler et al. US 2007/0194140 A1 Aug. 23, 2007
Jessberger US 2010/0037850 A1 Feb. 18, 2010
Nelson et al. US 2010/0074767 A1 Mar. 25, 2010
Thierfelder UK 926,644 May 22, 1963
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 11–15, 17, and 18 as unpatentable over Ward in view of
Nestler. Final Act. 3.
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2. Claims 16 and 19 as unpatentable over Ward in view of Nestler
and Gerstengerger. Final Act 6.
3. Claims 20 and 21 as unpatentable over Ward in view of
Nestler2 and Briski. Final Act 8.
4. Claim 1–4 as unpatentable over Nelson in view of Soga. Final
Act. 9.
5. Claim 5 as unpatentable over Nelson in view of Soga and
Thierfelder. Final Act. 12.
6. Claim 6 as unpatentable over Nelson in view of Soga and
Asayama. Final Act. 13.
7. Claims 8 and 9 as unpatentable over Nelson in view of Soga,
Ward, and Nestler. Final Act. 15.
8. Claim 7 as unpatentable over Nelson in view of Soga and
Jessberger. Final Act. 17.
9. Claim 10 as unpatentable over Nelson in view of Soga, Ward,
Nestler, and Gerstengerger. Final Act. 18.
OPINION
Rejection 4: Nelson in view of Soga
The Examiner rejects claim 1–4 as unpatentable over Nelson in view
of Soga. Final Act. 9. As to claim 1, the Examiner finds that Nelson
discloses a hydraulic control system for a transmission substantially as
claimed except for “being configured to vary its temperature threshold based

2 The heading in the Final Action omits Nestler. However, this rejection
relies on the rejection of claims 11 and 17 from which claims 20 and 21
respectively depend. Final Act. 8. Accordingly, this omission appears to be
a typographical error.
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on whether the engine is running.” Final Act. 10–11. The Examiner relies
on Soga for disclosing a “control valve having a ‘third pressure receiving
surface which receives a pressure representative of a currently required
output of an engine of the vehicle’ to bias the valve.” Final Act. 11, quoting
Soga, col. 10, ll. 45–56. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to have modified Nelson “with the
engine-based valve biasing of Soga in order to allow the operating
conditions of the engine to be accounted for in the control of oil flow thus
improving the performance and/or efficiency of the system for a plurality of
operating conditions.” Final Act. 11.
The Appellant disagrees and argues, inter alia, that “Soga does not
teach varying a temperature threshold,” and that “[b]iasing a valve is not the
same as varying a temperature threshold.” Appeal Br. 3. In addition, the
Appellant also argues that the Examiner’s articulated reasoning is
insufficient, and that it does not establish that a person of skill in the art,
“prior to Applicant’s disclosure, would have recognized the operating
condition of the engine as impacting the desired temperature threshold.”
Appeal Br. 4. According to the Appellant, “[t]he pressure regulating valve
of Soga performs a completely different function than the check valve of
Nelson. Thus, Soga does not provide any insight into any potential impact
of engine operating condition on the function performed by the valve of
Nelson.” Appeal Br. 4.
We generally agree with the Appellant. The Examiner explains that
no explicit teachings for the combination is required to modify the valve of
Nelson, and that Soga “demonstrate[s] that it is known in the art to provide
additional biasing that must be overcome to actuate the valve.” Ans. 18;
Ans. 19–20. According to the Examiner, “although Soga does not explicitly
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teach changing of a temperature threshold, one of ordinary skill in the art
will appreciate that variable biasing such as is taught by Soga will produce a
variable actuation temperature when applied to the system of Nelson.” Ans.
18. The Examiner further explains that “one or ordinary skill in the art
would have found a more informed control action desirable over a less
informed control action, accounting for more variables of the current
operating condition and thus better matching the control to the instant
condition.” Ans. 20.
However, the fact that providing fluid biasing for actuation of a valve
is known in the art does not establish a reason with rational underpinnings
for modifying the valve of Nelson to include such a feature. KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (“[P]atent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art. . . . [I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”).
The rejection does not explain in any appreciable detail how the valve
of Nelson would have been modified to include biasing disclosed in Soga, or
how providing “variable biasing such as is taught by Soga will produce a
variable actuation temperature when applied to the system of Nelson” as
asserted by the Examiner. Ans. 18. We also find persuasive the Appellant’s
argument that in view of increased “complexity, cost, and potential failure
modes,” a person of ordinary skill “would not [have] add[ed] the additional
features from Soga to the valve of Nelson absent a reason to believe that the
additional input would significantly improve the performance of Nelson for
its intended purpose. The Examiner has not identified such a reason.”
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Reply Br. 2. In that regard, the Examiner does not adequately identify or
explain what the desired “control action” is, which is asserted to serve as
reason for modifying Nelson in the manner suggested.
In summary, we find the rejection of claim 1 to be based on vague
assertions, and lacking in sufficient detail as to how and why a person of
ordinary skill would have modified the valve of Nelson. Accordingly, we
reverse the Examiner’s rejection of independent claim 1, and claims 2–4 that
ultimately depend from claim 1. The remaining issue of whether Soga’s
throttle position is indicative of the engine operating status is moot. Appeal
Br. 3; Ans. 19; Reply Br. 2.

Rejections 5–9: Nelson in view of Soga and Other References
The Examiner’s rejections of dependent claims 5–10 that ultimately
depend from claim 1 are based on the combination of Nelson and Soga,
which is deficient for the reasons discussed above relative to Rejection 4.
Final Act. 12–18. The Examiner’s application of the other references in
these rejections does not remedy these deficiencies. Therefore, we reverse
Rejections 5–9 as well.

Rejection 1: Ward in view of Nestler
The Examiner rejects claims 11–15, 17, and 18 as unpatentable over
Ward in view of Nestler. Final Act. 3. As to independent claims 11 and 17,
the Examiner finds that Ward discloses an oil control valve substantially as
claimed, including the “first, second, third, and fourth ports (21, 12, 13 and
15, respectively),” and “the second spool [(16) being] configured to permit
flow between the second (12) and third (13) ports in a first position towards
the first spool.” Final Act. 3, citing Ward, col. 2, ll. 24–33. The Examiner
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concedes that Ward does not disclose the first spool being biased by an
applied fluid pressure, but relies on Nestler for disclosing a valve with “a
first valve element (234 with pin 232) moved and biased by a pressure
applied by fluid from a port (260) in combination with a spring (248) to
oppose the pressure of a second port (250).” Final Act. 3–4, citing Nestler,
Fig. 2. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have modified Ward with the biasing fluid
pressure of Nestler “in order to allow the operating conditions of fluid at
other points in the system to be applied in controlling the function of the
valve in order to better tailor the valve’s operation to produce the desired
functions for the system.” Final Act. 4.
The Appellant disagrees and argues, inter alia, that the rejection does
not establish a sufficient reason to combine the references in the manner
suggested in that “[t]he Examiner does not show that a person of skill in the
art would recognize a relationship between fluid pressures elsewhere in the
system of Ward and the desired functions of the system of Ward.” Appeal
Br. 5.
We generally agree with the Appellant, and find the Examiner’s
reasoning for modifying Ward is insufficient for reasons substantially
similar to those discussed relative to Rejection 4. In particular, the rejection
does not explain in any appreciable detail how the valve of Ward would
have been modified to provide biasing fluid pressure of Nestler, or how
providing such pressure attains some desired function, which itself, is not
adequately identified or explained. Accordingly, the rejection is based on
vague assertions, and lacks sufficient detail as to how and why a person of
ordinary skill would have modified the valve of Ward.
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We further find persuasive, the Appellant argument that Ward uses
the terms “port” and “bore” to define different structures, and that contrary
to the Examiner’s finding, “element 21 is a bore, not a port.” Appeal Br. 4,
citing Ward, col. 2, ll. 24–34, 38. Appeal Br. 4. The Examiner responds
that the term “port” is being interpreted to mean “an opening formed through
a surface or housing into which something may enter or exit,” and that bore
21 of Ward is a “port” because “the screwed adjuster 23 enters the housing
of the valve.” Ans. 20–21. However, we find persuasive the Appellant’s
argument that “[i]n the context of hydraulic valve design, a POSITA would
not regard a bore as a port just because ‘something’ extends through it. A
POSITA [would] regard it as a port only if fluid flows through it. No fluid
flows through element 21 of Ward.” Reply Br. 3; see also Random House
Webster’s College Dictionary (1992) (“port 2. an aperture in the surface of a
cylinder, as in machinery, for the passage of steam, air, water, etc.”).
Indeed, whereas the Examiner finds that bore 21 of Ward corresponds to the
recited “first port” (Final Act. 3), element 21 does not contain fluid therein.
In contrast, claim 11 specifically recites “fluid pressure in the first port” and
claim 17 specifically recites “fluid pressure in a first port,” thereby requiring
fluid to be at least within the recited “first port.” Thus, the Examiner’s
finding underlying the rejection appears to be based on an unreasonably
broad construction of the term “port.”
Therefore, in view of the above considerations, we reverse this
rejection of independent claims 11 and 17, as well as claims 12–15 and 18
that ultimately depend from claim 11 or 17. The remaining issues regarding
the meaning of the limitation “toward the first spool,” and whether Ward
satisfies this limitation, are moot. Appeal Br. 4; Ans. 24.

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Rejections 2 and 3: Ward in view of Nestler and Other References
The Examiner’s rejections of dependent claims 16 and 19–21 that
ultimately depend from claim 11 or 17 are based on the combination of
Ward in view of Nestler, which is deficient for the reasons discussed above
relative to Rejection 1. Final Act. 6–8. The Examiner’s application of the
other references in these rejections does not remedy these deficiencies.
Therefore, we reverse Rejections 2 and 3 as well. The arguments
specifically directed to dependent claims 20 and 21 are moot. Final Act 8–9;
Appeal Br. 5; Ans. 26; Reply Br. 3–4.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–15, 17,
18
103 Ward, Nestler 11–15, 17,
18
16, 19 103 Ward, Nestler,
Gerstengerger
16, 19
20, 21 103 Ward, Nestler,
Briski
20, 21
1–4 103 Nelson, Soga 1–4
5 103 Nelson, Soga,
Thierfelder
5
6 103 Nelson, Soga,
Asayama
6
8, 9 103 Nelson, Soga,
Ward, Nestler
8, 9
7 103 Nelson, Soga,
Jessberger
7
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10 103 Nelson, Soga,
Ward, Nestler
Gerstengerger
10
Overall
Outcome
1–21

REVERSED