Ex Parte Eriksson et al

Patent Trial and Appeal Board

Nov 15, 2018

12739155 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/739, 155
51707 7590
WRB-IPLLP
801 N. Pitt Street
Suite 123
FILING DATE
04/22/2010
11/19/2018
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Anders Eriksson
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.
000009-436 8505
EXAMINER
CASS, JEANPAUL
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
HARRY@WRB-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS ERIKSSON and PETER TEMPLIN
Appeal2017-001529
Application 12/739,155 1
Technology Center 3600
Before MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-14. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on Oct. 23, 2018.
We REVERSE.
1 According to the Appellants, "[ t ]he real party in interest is the assignee
Volvo Lastvagnar AB." Appeal Br. 1.
Appeal2017-001529
Application 12/739,155
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 12-14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for a more efficient use of a combustion engine in
a vehicle during driving of the vehicle, the vehicle comprising an
automatic step geared transmission for automatic gear ratio
adaptation of a gear ratio between an engine rotational speed and
a rotational speed of driving wheels of the vehicle, comprising:
- sensing current engine rotational speed and engine
rotational speed increase,
- estimating necessary minimum upshift engine rotational
speed for a coming gear upshift;
- registering that the engine rotational speed has stopped
increasing without reaching the minimum upshift engine
rotational speed, and where the engine rotational speed stops
increasing at a first engine rotational speed within a
predetermined distance of a maximum engine rotational speed
where engine efficiency at the first engine rotational speed is
below a first predetermined efficiency, and
- automatically controlling engine output torque in order
to limit the engine rotational speed to a first predetermined
engine rotational speed where engine efficiency at the first
predetermined engine rotational speed is above a second
predetermined efficiency that is above the engine efficiency at
the first engine rotational speed.
Rejections
I. Claims 12-14 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
II. Claims 1 and 12-14 are rejected under (pre-AIA) 35 U.S.C.
§ 102(b) as being anticipated by Lorentz2.
2 Lorentz (US 6,616,575 Bl, iss. Sept. 9, 2003).
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Application 12/739,155
III. Claims 1 and 12-14 are rejected under (pre-AIA) 35 U.S.C.
§ 102(b) as being anticipated by Bellinger3•
IV. Claims 1, 2, and 12-14 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as being unpatentable over Klatt4, Hollenbeck5, and Ganoung6.
V. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Klatt, Hollenbeck, Ganoung, and Tokoro 7. 8
VI. Claim 5 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Klatt, Hollenbeck, Ganoung, and Crawford9•
VII. Claims 6 and 7 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Klatt, Hollenbeck, Ganoung, and Bauerle 10 . 11
VIII. Claims 8-11 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Klatt, Hollenbeck, Ganoung, and Brackney12.
3 Bellinger (US 2003/0216847 Al, pub. Nov. 20, 2003).
4 Klatt (US 4,630,508, iss. Dec. 23, 1986).
5 Hollenbeck (US 7,497,201 B2, iss. Mar. 3, 2009).
6 Ganoung (US 4,905,544, iss. Mar. 6, 1990).
7 Tokoro et al. (US 5,136,495, iss. Aug. 4, 1992) ("Tokoro").
8 Although the Examiner sets forth separate statements for the rejection of
claims 3 and 4 (Final Act. 13), we consolidate the statements into a single
ground of rejection because they are each based upon same the combination
of references.
9 Crawford et al. (US 6,278,931 Bl, iss. Aug. 21, 2001) ("Crawford").
10 Bauerle et al. (US 7,263,429 B2, iss. Aug. 28, 2007) ("Bauerle").
11 Although the Examiner sets forth separate statements for the rejection of
claims 6 and 7 (Final Act. 16), we consolidate the statements into a single
ground of rejection because they are each based upon same the combination
of references.
12 Brackney et al. (US 2003/0144788 Al, pub. July 31, 2003) ("Brackney").
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Application 12/739,155
ANALYSIS
Non-Statutory Subject Matter
The Examiner determines that independent claims 12-14 are directed
to "a mathematical relationship between engine rotational speed, torque and
fuel savings." Final Act. 7; Ans. 6-8. The Appellants disagree. See Appeal
Br. 8-9; Reply Br. 1-3.
The Supreme Court acknowledged in Mayo that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012). Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)); see Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1149 (Fed. Cir. 2016) ("The§ 101 inquiry must focus on the
language of the Asserted Claims themselves."); see also Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) ("[T]he important inquiry for a§ 101 analysis is to look to the
claim.").
Claims 12-14, as a whole, are each directed to a vehicle. See Appeal
Br. 31-33. For example, claim 12 recites an apparatus, i.e., a vehicle
comprising a computer and an automatic step geared transmission. See id.
at 31. Claim 12 also requires that the computer is programmed to execute
particular steps including sensing speed( s ), estimating minimum up shift
engine rotational speed, registering that engine rotational speed has stopped
increasing without reaching the minimum upshift engine rotational speed,
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Application 12/739,155
and automatically controlling engine output torque. See id. Although these
programmed steps are directed to the vehicle's computer, the claimed
vehicle also includes another structure, i.e., an automatic step geared
transmission.
The Examiner determines that the term "vehicle" is directed to the
preamble of claims 12-14 and not entitled patentable weight. See Ans. 8.
However, the Examiner fails to account for the additional structure of the
claimed vehicle, i.e., the automatic step geared transmission, which is not
part of the preamble of the claims and limits the structure of the claimed
vehicle.
Thus, we do not sustain the Examiner's rejection of claims 12-14
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Anticipation by Lorentz
Independent claims 1 and 12-14 each recite:
- registering that the engine rotational speed has stopped
increasing without reaching the minimum upshift engine
rotational speed, and where the engine rotational speed stops
increasing at a first engine rotational speed within a
predetermined distance of a maximum engine rotational speed
where engine efficiency at the first engine rotational speed is
below a first predetermined efficiency, and
- automatically controlling engine output torque in order
to limit the engine rotational speed to a first predetermined
engine rotational speed where engine efficiency at the first
predetermined engine rotational speed is above a second
predetermined efficiency that is above the engine efficiency at
the first engine rotational speed.
Appeal Br. 29, 31-33.
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The Appellants argue that the Examiner's rejection of claims 1 and
12-14 fails to adequately explain how Lorentz discloses the foregoing
recitations of independent claims 1 and 12-14. Id. at 10-13.
In the Final Office Action, the Examiner rejects all of the limitations
of claims 1 and 12-14 by citing solely to Lorentz's claim 1. Final Act. 8-9.
We cannot ascertain how Lorentz's claim 1, by itself, provides adequate
support for all of the limitations of the claims. See Appeal Br. 11-13. In the
Answer, the Examiner provides significantly more explanation concerning
the application of Lorentz to the subject matter of claim 1. See Ans. 8-13.
Here, the Examiner relies primarily on a comparison between Figure 1 of the
Appellants' Application with Figure 2 of Lorentz. See id. at 10-13. The
Examiner also points to Lorentz's Figure 3 for showing "shift points 71-73
for power for different speeds with lower efficiency." Id. at 13.
The Appellants point out that the "[t]he U-shaped items in F[igure] 2
of Lorentz are manifestly not shift points." Reply Br. 4. The Appellants
also point out that Lorentz's Figure 3 includes shift points (e.g., 76, 78, 82,
86), but argue that Lorentz "does not illustrate or refer to any location on a
graph where engine rotational speed has stopped increasing without reaching
a minimum upshift engine rotational speed." Id. at 5; see Appeal Br. 12.
The Appellants' points are persuasive. At least because we cannot
determine how the Examiner adequately supports the finding that the
registering step of claim 1 reads on Lorentz's disclosure, we determine that
the Appellants' argument is persuasive.
Thus, we do not sustain the Examiner's rejection of independent
claim 1 as anticipated by Lorentz. For similar reasons, we likewise do not
sustain the Examiner's rejection of claims 12-14 as anticipated by Lorentz.
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Anticipation by Bellinger
The Appellants argue that the Examiner's rejection of independent
claims 1 and 12-14 fails to adequately explain how Bellinger discloses the
"registering" and "automatically controlling" recitations of independent
claims 1 and 12-14. Appeal Br. 14--16.
In the Final Office Action, the Examiner rejects all of the limitations
of claims 1 and 12-14 by citing solely to Bellinger's paragraphs 143-163.
Final Act. 9. The Examiner does not explain how the disclosure in these
paragraphs corresponds to the steps of the claims. In the Answer, the
Examiner provides significantly more explanation concerning the
application of Bellinger to the subject matter of claim 1. See Ans. 13-17
(citing Bellinger, Figs. 13, 14).
The Appellants argue that similar to the Examiner's reliance on
Lorentz's Figure 2 as a comparison to Figure 1 of the application, the
Examiner appears to rely on the U-shaped curves of Bellinger' s Figure 13 to
correspond to the registering step of claim 1. Reply Br. 8-11. However, as
discussed above, the Appellants persuasively point out that these U-shaped
curves do not show shift points. At least because we cannot determine how
the Examiner adequately supports the finding that the registering step of
claim 1 reads on Bellinger's disclosure, we determine that the Appellants'
argument is persuasive.
Thus, we do not sustain the Examiner's rejection of independent
claim 1 as anticipated by Bellinger. For similar reasons, we likewise do not
sustain the Examiner's rejection of claims 12-14 as anticipated by Bellinger.
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Obviousness based on Klatt, Hollenbeck, and Ganoung
The Appellants argue that the Examiner's rejection of claims 1, 2,
and 12-14 fails to adequately explain how the combined teachings of Klatt,
Hollenbeck, and Ganoung disclose the "registering" and "automatically
controlling" recitations of independent claims 1 and 12-14. Appeal Br. 21-
23; Reply Br. 12-16.
The Examiner's rejection relies on Ganoung to teach the "registering"
step of claim 1 and "controlling the engine torque to limit to a first
predetermined rotational speed above a second efficiency above the
efficiency at the first engine rotational speed." Final Act. 11-12 (emphasis
omitted). The Examiner appears to rely on Ganoung's Figure 2, which
shows dynamo meter data describing the performance of Ganoung's engine,
to show a relationship between torque and engine speed which relates to the
claimed "registering" recitation of claims 1 and 12-14. See Ans. 20;
Ganoung, col. 2, 11. 48--49.
In the Reply Brief, the Appellants point out Ganoung's Figure 2 "is
merely a graph [ofJ engine performance (power versus speed) where line 30
represents the highest practical level of power output for the engine but has
no relationship to when or whether engine output speed stops increasing
without reaching a minimum up shift engine rotational speed." Reply Br. 16;
see Appeal Br. 19-21. And, Ganoung's disclosure, including Figure 2, does
not "ha[ ve] anything to do with illustrating or describing a situation where
'engine output speed stops increasing without reaching the minimum upshift
engine rotational speed ... ' as recited in the claims." Reply Br. 16. The
Appellants' points are persuasive. At least because we cannot determine
how the Examiner adequately supports the finding that the registering step of
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Application 12/739,155
claim 1 reads on Ganoung' s disclosure, we determine that the Appellants'
argument is persuasive.
Thus, we do not sustain the Examiner's rejection of claims 1 and 2 as
unpatentable over Klatt, Hollenbeck, and Ganoung. For similar reasons, we
likewise do not sustain the Examiner's rejection of claims 12-14 as
unpatentable over Klatt, Hollenbeck, and Ganoung.
Obviousness based on Klatt, Hollenbeck, Ganoung in combination with
Tokoro, Crawford, Bauerle, or Brackney
The remaining rejections based on Klatt, Hollenbeck, and Ganoung in
combination with Tokoro, Crawford, Bauerle, or Brackney rely on the same
inadequately supported finding discussed above. And, each of the remaining
rejections is not cured by additional findings and/or reasoning associated
therewith. As such, we do not sustain the Examiner's rejections of claims 3-
11 under 35 U.S.C. § 103(a) as being unpatentable over Klatt, Hollenbeck,
and Ganoung in combination with Tokoro, Crawford, Bauerle, or Brackney.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-14.
REVERSED
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