Ex Parte Bidner et al

Patent Trial and Appeal Board

May 26, 2016

12873156 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/873, 156 08/31/2010 David Karl Bidner
36865 7590 05/27/2016
ALLEMAN HALL MCCOY RUSSELL & TUTTLE, LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
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.
83155500 4767
EXAMINER
LAGUARDA,GONZALO
ART UNIT PAPER NUMBER
3747
MAILDATE DELIVERY MODE
05/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KARL BINDER, BRAD ALAN VANDERWEGE,
JOHN ERIC ROLLINGER, and JOHN SMILEY
Appeal2014-003827
Application 12/873, 156
Technology Center 3700
Before JAMES A. WORTH, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Binder et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the
decision rejecting claims 1-6, 9-14, 16, and 17. 1, 2 Appellants'
representative presented oral arguments on May 23, 2016. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as "Ford Global Technologies,
LLC." Appeal Brief 3 ("Appeal Br.," filed Oct. 9, 2013).
2 Claims 18-20 are withdrawn. Id. at 28-29, Claims Appendix.
Appeal2014-003827
Application 12/873, 156
Appellants' claimed invention relates to methods for implementing
piston cooling jets or oil injectors in an engine to provide engine cylinder
cooling. Specification 1 :4--5 ("Spec.," filed Aug. 31, 2010). Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for operating an engine including an oil
injector injecting oil onto a piston of the engine, comprising,
adjusting oil injection by a first amount in response to an
indication of pre-ignition from engine vibration occurring
before spark in an engine cycle, and
adjusting oil injection by a second, different, amount in
response to an indication of engine knock occurring after spark
in the engine cycle.
Appeal Br. 25, Claims Appendix.
REJECTIONS
The following rejections are before us for review:
I. Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite;
II. Claims 1--4 and 11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Takao (JP 2005-273572, pub. Oct. 6, 2005);
III. Claims 5, 6, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takao;
IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takao and Hashimoto (US 4,913,117, iss. Apr. 3,
1990); and
V. Claims 13, 14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takao and Hernandez (US 7,222,607 B2, iss.
May 29, 2007);
Non-Final Action 2-9 (mailed May 9, 2013).
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Appeal2014-003827
Application 12/873, 156
ANALYSIS
Claim Construction
We begin our analysis by first considering the meaning of the terms
"pre-ignition" and "engine knock" as used in independent claims 1 and 13.
Appellants' disagreement with the Examiner focuses considerably on the
meaning of these terms.
There is a heavy presumption that claim terms take on their "plain,
ordinary, and accustomed meaning to one of ordinary skill in the relevant
art." See Prima TekII, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148
(Fed. Cir. 2003). Appellants may overcome that presumption by acting as
their own lexicographer to assign a special definition to each claim term, but
any such definition must be "clearly set forth" and "explicit." Id.
Although Appellants' embodiments in the Specification describe the
term "pre-ignition" as occurring prior to spark, and "engine knock" as
occurring after spark in an engine cycle (see, e.g., Spec. 15:5-8), we find
that Appellants have not acted as their own lexicographer by providing a
clear and explicit definition for these terms. Thus, Appellants have the
burden of showing that the Examiner's interpretation of the disputed claim
terms is unreasonable.
Appellants contend that the Examiner's interpretation of these
disputed claim terms is not reasonable, because the dictionary definitions
proffered by the Examiner support Appellants' position. Appeal Br. 15.
The Examiner finds that "Preignition" is "the combustion of the air-fuel
mixture that is not a result of the spark plug's firing, but by high pressure, a
flame, or a hot surface," and "Engine knock" is an audible noise heard when
fuel in the cylinders ignite spontaneously "resulting in colliding flame
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Application 12/873, 156
fronts."3 Final Action 10 (mailed Jan. 22, 2013). The Examiner concludes,
based on "these definitions the broadest reasonable interpretation would be
to understand engine knock and preignition as interchangeable terms." Id.
Appellants argue that knock and pre-ignition are distinct phenomena because
pre-ignition occurs before spark and engine knock occurs after spark in an
engine cycle, as evidenced by the Examiner's dictionary definitions and in
light of the Specification. Appeal Br. 12-16. We agree.
It is indisputable that the term "pre-ignition," as its prefix specifies,
occurs before or prior to ignition. The definition proffered by the Examiner
supports this meaning because air-fuel mixture does not ignite as a result of
the spark plug's firing, but rather, it necessarily ignites prior to the spark
event (before spark) in an engine cycle. On the other hand, "engine knock"
is defined as the audible sound that results from the collision of flame fronts,
and, therefore, the spark plug must fire (after spark) to generate the intended
flame front in an engine cycle for a collision to occur with an unintended
flame front. In our view, a person of ordinary skill in the art, given the
ordinary and customary meaning of the terms "pre-ignition" and "engine
knock" on reviewing the Specification would understand these to be distinct
phenomena and not interchangeable.
With this understanding in mind, we tum to the merits of the
Examiner's rejections.
3 The Examiner cites to "motoera.com an online dictionary for automotive
terms."
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Appeal2014-003827
Application 12/873, 156
Rejection l
Independent claim 1
We are persuaded by Appellants' arguments that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite.
Appeal Br. 8-10; Reply Brief 2--4 ("Reply Br.," filed Feb. 18, 2014).
The Examiner concludes that claim 1 is indefinite because
in claiming an engine cycle and not a cylinder cycle, has added
to the overly broad interpretation that could be understood by the
claims. The engine cycle applies to all cylinders in an engine. So
if one is concerned about whether cylinder(A) is having knock
or preignition any of the other engine's cylinders spark event
could be the one being referred to by the appellant as the spark
that distinguishes between knock and preignition in cylinder(A).
Answer 4 ("Ans.," mailed Dec. 18, 2013). However, we agree with
Appellants that the plain language of the claim "is not so broad as to read on
two sequential engine cycles having a single event occurring therewithin"
(Reply Br. 3), thus rendering the claim indefinite. In other \vords, the first
adjusting step in claim 1 may be performed "before spark in an engine
cycle" and the second adjusting step may be performed "after spark in the
engine cycle," providing antecedent basis and clarity that both steps
reference the same engine cycle. Thus, claim 1 excludes the overlapping
possibility proffered by the Examiner, because one of ordinary skill in the art
would understand that the claimed engine cycle involves only one spark
event.
Therefore, we do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph, as indefinite.
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Appeal2014-003827
Application 12/873, 156
Rejections 11-1 V
Claims 1-6 and 9-12
Appellants argue that the Examiner erred in rejecting independent
claim 1 as anticipated by Takao because
nothing in Takao distinguish[es] knock/pre-ignition occurring
before spark in the cycle from knock/pre-ignition occurring after
spark in the cycle, let alone adjusting oil injection dependent on
such differences. Appellant has reviewed Paragraph [0021] of
Takao, as well as the figures, and finds nothing regarding
phenomena before and after spark in an engine cycle. Rather,
the description relates to avoiding knock depending on the torque
sensitivity over fixed oil injection capacities.
Appeal Br. 12.
Responding in the Answer to Appellants' argument, the Examiner
asserts:
Takao does address the spark event and avoiding knock
around the point of ignition in claim 2. But it should be noted
that the spark event is a fairly instantaneous moment in time, and
due to the understanding that the 112 rejection is using to
interpret the claims, the appellants claim is identifying all
moments except the instantaneous moment of the spark, but
considering the amount of time this excludes the two are seen to
be equivalently addressing knock and preignition.
Ans. 5---6.
In view of our construction of the claim terms identified above and the
Examiner's flawed interpretation of the claim language as indefinite, we find
that the Examiner erred in finding that Takao describes the steps set forth in
claim 1. While Takao does describe knock avoidance by increasing the
quantity of oil injection capacity, the relied-upon paragraphs in Takeo fail to
describe adjusting oil injection by different amounts in response to an
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Application 12/873, 156
indication of pre-ignition and engine knock as related to the spark event in
an engine cycle. Therefore, we do not sustain the Examiner's rejection of
independent claim 1 as anticipated by Takao. Claims 2---6 and 9-12, depend
directly from independent claim 1. The Examiner's use of the disclosure of
Hashimoto does not remedy the deficiencies of Takao. Thus, for the same
reasons discussed above, we do not sustain the rejections of dependent
claims 2---6 and 9-12.
Rejection V
Claims 13, 14, 16, and 17
The Examiner relies on the same erroneous findings in Takao for
rejecting independent claim 13, which also requires "adjusting oil injection"
in response to an indication of "preignition" and "engine knock." The
Examiner's use of the disclosure of Hernandez does not remedy the
deficiencies of Takao, as discussed supra. See Non-Final Act. 7-9. Thus,
for the reasons discussed above, we also do not sustain the rejection of
independent claim 13, and claims 14, 16, and 17, dependent thereon.
DECISION
The Examiner's decision to reject claims 1-6, 9-14, 16, and 17 is
reversed.
REVERSED
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