Ex Parte Fujino

Patent Trial and Appeal Board

Apr 6, 2017

13299589 (P.T.A.B. Apr. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/299,589 11/18/2011 Kenichi FUJINO 90606.948/ku 9109
54071 7590
YAMAHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI FUJINO1
Appeal 2015-001210
Application 13/299,589
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenichi Fujino (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final rejection of claims 1—19. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is Yamaha Hatsudoki
Kabushiki Kaisha. Appeal Br. 2 (filed Apr. 7, 2014).
Appeal 2015-001210
Application 13/299,589
CLAIMED SUBJECT MATTER
The invention concerns “a system for diagnosing a failure that occurs
in an engine component.” Spec. 11. Claim 1, the sole independent claim, is
illustrative of the subject matter on appeal, and recites:
1. An engine control module for controlling an engine
in an outboard motor, the engine control module comprising'.
a plurality of actuating circuits arranged to actuate a
plurality of engine components while the engine is operating;
an actuation command section arranged to output an
actuation command for any of the plurality of engine components
to be actuated while the engine is stopped; and
a failure diagnosis section arranged to diagnose a failure
in any of the plurality of engine components based on a detection
result from any of a plurality of actuated condition detecting
sections provided in the plurality of engine components; wherein
the failure diagnosis section is arranged to perform the
failure diagnosis without the engine control module being
connected to external equipment.
Appeal Br. 12 (Claims App.) (emphasis added).
REJECTIONS
The claims stand rejected as follows:
I. Claims 1—6, 10, 11, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Fujino2 and Pillar.3
II. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Fujino,
Pillar, and Hartke.4
2 US 6,647,769 Bl, iss. Nov. 18, 2003.
3 US 2003/0195680 Al, pub. Oct. 16, 2003.
4 US 6,390,068 Bl, iss. May 21, 2002.
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Appeal 2015-001210
Application 13/299,589
III. Claims 8, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Fujino, Pillar, and Quinnett.5
IV. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Fujino,
Pillar, Hartke, and Katougi.6
V. Claims 12—14 under 35 U.S.C. § 103(a) as unpatentable over
Fujino, Pillar, Quinnett, and Kanno ’232.7
VI. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Fujino, Pillar, Kanno ’232, and Kanno ’952.8
ANALYSIS
The Examiner finds that Fujino discloses an engine control module for
controlling an engine in an outboard motor comprising, inter alia, a failure
diagnosis section. Final Act. 2—3 (citing Fujino, 6:5—22) (mailed Oct. 18,
2013). The Examiner finds that Fujino does not disclose that failure
diagnosis is performed without the engine control module being connected
to external equipment, and relies on Pillar for this teaching. Id. at 3 (citing
Pillar 110). According to the Examiner, “[i]t would have been obvious to
one of ordinary skill to modify Fujino to include a system where a diagnostic
system is onboard the vehicle with the motivation of providing an easy to
use interface to test various components of the vehicle.” Id. The Examiner
also finds that the claim term “‘external’ as defined by the applicant means
external to the system such as a PC.” Ans. 3 (mailed Sept. 2, 2014).
According to the Examiner, Pillar’s display module 14 and engine control
5 US 2003/0182085 Al, pub. Sept. 25, 2003.
6 JP 05263679 A, pub. Oct. 12, 1993.
7 US 2001/0047232 Al, pub. Nov. 29, 2001.
8 US 2003/0060952 Al, pub. Mar. 27, 2003.
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Appeal 2015-001210
Application 13/299,589
module 30 “are internal to the control system of Pillar” because they are
connected to each other by communication link 32. Id. The Examiner
explains that ‘“[ejxtemaT equipment” means “anything that is connected
outside of the diagnostic system 12 in Pillar. Thus all of the components
[e.g.,] engine control system, transmission control system, intelligent display
module, etc. are all inside the diagnostic system 12 and are connected to
each other via a communication bus 32.” Id.
We cannot sustain the Examiner’s rejection. The Examiner’s
interpretation of “external” as “anything that is connected outside of the
diagnostic system 12 in Pillar” conflicts with the plain language of claim 1,
which defines “external” with reference to “the engine control module” only.
Compare Appeal Br. 12 (Claims App.) (“without the engine control module
being connected to external equipment”), with Ans. 3; see also Spec. H 13
(describing that failure diagnosis is “performed without connecting external
equipment... to the control module”), 57 (also describing that failure
diagnosis is “performed without connecting external equipment... to the
ECM 45”); Reply Br. 2-A (filed Oct. 29, 2014).
Pillar discloses diagnostic system 12, which includes, inter alia,
intelligent display module 14, test interface module 21, and engine control
system 30. Pillar 121, Fig. 1. As shown in Figures 1 and 2, Pillar’s engine
control system 30 is connected to equipment external to it, e.g., intelligent
display module 14, test interface module 21, central tire inflation control
system 24, anti-lock braking control system 26, and transmission control
system 28. See id. H 21, 35—37; see also Appeal Br. 4—5; Reply Br. 3^4.
Failure diagnosis is performed with these external modules connected to
engine control system 30. See Pillar || 43—51, Fig. 4 (depicting a flow chart
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Appeal 2015-001210
Application 13/299,589
of the diagnostic process, which includes steps performed by modules
connected to engine control system 30, e.g., steps 102, 104, 106 are
performed by intelligent display module 14). Accordingly, a preponderance
of evidence does not support the Examiner’s finding that failure diagnosis is
performed in Pillar without the engine control module being connected to
external equipment. Final Act. 3.
Accordingly, we reverse the Examiner’s rejection of claims 1—6, 10,
11, and 15 as unpatentable over Fujino and Pillar.
The Examiner’s reliance on Hartke, Quinnett, Katougi, Kanno ’232,
and/or Kanno ’952, with respect to dependent claims 7—9, 12—14, and 16—19,
does not remedy the deficiencies discussed above. See Final Act. 5—9.
Accordingly, we also reverse the Examiner’s rejection of claim 7 as
unpatentable over Fujino, Pillar, and Hartke; the Examiner’s rejection of
claims 8, 18, and 19 as unpatentable over Fujino, Pillar, and Quinnett; the
Examiner’s rejection of claim 9 as unpatentable over Fujino, Pillar, Hartke,
and Katougi; the Examiner’s rejection of claims 12—14 as unpatentable over
Fujino, Pillar, Quinnett, and Kanno ’232; and the Examiner’s rejection of
claims 16 and 17 as unpatentable over Fujino, Pillar, Kanno ’232, and
Kanno ’952.
DECISION
The Examiner’s decision to reject claims 1—19 is REVERSED.
REVERSED
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