Ex Parte GEE

Board of Patent Appeals and Interferences

Jun 27, 2012

10906821 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS SCOTT GEE
____________

Appeal 2009-015078
Application 10/906,821
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas Scott Gee (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Kuroda (US 6,504,259 B1, issued Jan. 7, 2003), Hanada
(US 6,886,524 B2, issued May 3, 2005), and Gopp (US 5,555,871, issued
Sep. 17, 1996). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2009-015078
Application 10/906,821

2
The Claimed Subject Matter
The claimed subject matter is directed to a hybrid electric vehicle or
HEV and a “method of allowing an HEV to operate without damage after
the HEV engine cooling system has been compromised . . . by using both the
traction motor and the engine to provide power approximating the power
output of the engine while operating on all cylinders, while in fact operating
the engine with a reduced number of cylinders.” Spec. 1, [para. 4]. Claims
1, 3, and 6 are independent and claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A hybrid electric vehicle (HEV)
comprising:
a multicylinder internal combustion engine
having the capability of operation with either all
the cylinders or with fewer than the total number
of cylinders, with said engine having a cooling
system;
an electric traction motor;
a storage battery for furnishing power to the
traction motor;
an engine temperature sensor;
a battery state of charge indicator;
a vehicle system controller (VSC) which
operates the engine and the traction motor so as to
extract power from both the engine and the traction
motor in the event that the cooling system is
compromised, with the VSC receiving a
temperature signal from the engine temperature
sensor and a state of charge signal from the battery
state of charge indicator; and
an engine control unit operated by the VSC,
with the engine control unit operating the engine
with all of its cylinders in the event that the engine
temperature is less than a predetermined maximum
temperature threshold, so as to maintain the battery
Appeal 2009-015078
Application 10/906,821

3
state of charge within a normal maximum charge
limit and a normal minimum charge limit, and with
the engine control unit operating the engine at a
reduced power level with fewer than all of the
cylinders, so as to maintain the battery state of
charge between a modified maximum charge limit
and a modified minimum charge limit, in the event
that the engine temperature is greater than said
predetermined maximum temperature threshold.

OPINION
The Examiner finds that Kuroda substantially discloses the subject
matter of claim 1, except that Kuroda fails to disclose “deactivating the
engine cylinders in response to the engine temperature values and/or [state
of charge or] SOC values.” Ans. 3. To remedy the deficiencies of Kuroda,
the Examiner turns to Hanada for its teaching of “deactivating engine
cylinders in response to battery SOC limit values, as recited in col. 2, lines
41-50,” and Gopp for its teaching of “an engine controller that deactivates
select cylinders in response to engine temperature threshold signal from an
engine temperature sensor (inherent), as shown in figures 1-10b.” Ans. 3-4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to provide: (1) the hybrid vehicle control system of Kuroda
with the engine cylinder deactivating system of Hanada “in order to decrease
the amount of fuel used by the engine”; and (2) the modified hybrid
controller of Kuroda and Hanada with the cylinder deactivation based on
engine temperature system of Gopp “in order to prevent the engine from
overheating.” Id. With respect to independent claims 3 and 6, the Examiner
determines that “the method is inherently performed in the operation of the
hybrid control of” the combination of Kuroda, Hanada, and Gopp. Ans. 4.
Appeal 2009-015078
Application 10/906,821

4
Independent claims 1 and 3 and dependent claims 2, 4, and 5
Appellant contends that no combination of Kuroda, Hanada, and
Gopp would be capable of functioning in the manner set forth in Appellant’s
claims 1 and 3, because none of Kuroda, Hanada, and Gopp, taken singly or
in combination, teach “using both an engine and a traction motor to power a
vehicle in the event that the cooling system of the engine has been
compromised to the point that it is necessary to operate the engine with
fewer than the normal complement of cylinders. App. Br. 6. Then,
Appellant separately addresses each of Kuroda, Hanada, and Gopp. App.
Br. 6-7.
We are not persuaded by Appellant’s contention for two reasons.
First, none of claims 1 and 3 specifically recite “using both an engine and a
traction motor to power a vehicle in the event that the cooling system of the
engine has been compromised.” Rather, claim 1 recites “a vehicle system
controller (VSC) which operates the engine and the traction motor so as to
extract power from both the engine and the traction motor in the event that
the cooling system is compromised.” See App. Br., Clms. App’x. This
language of claim 1 is not akin to “using both an engine and a traction motor
to power a vehicle.” Similarly, claim 3 recites “providing driving power
from the engine operating at a reduced power level, with fewer than the
maximum number of cylinders, and from the traction motor.” The claim
language of claim 3 does not actually require that the driving power be used
to power a vehicle and says nothing about the cooling system being
compromised.
Second, Appellant has only argued the Kuroda, Hanada, and Gopp
references separately, but has failed to address the Examiner’s combination
Appeal 2009-015078
Application 10/906,821

5
of the references. One cannot show nonobviousness by attacking references
individually where the rejections are based on a combination of references.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 426 (CCPA 1981). Thus, we are not persuaded of
error in the Examiner’s rejection.
Appellant also contends that “[t]he claims at issue, however, teach
operating an engine fractionally and using a battery drive system at the same
time if the engine is overheating, notwithstanding that the battery SOC is
less than the normal minimum charge,” and “[t]his is clearly well beyond the
purview of Kuroda, Hanada, and Gopp.” App. Br. 7. We are not persuaded
by Appellant’s argument because neither independent claim 1 nor
independent claim 3 recite operating the engine with fewer than all
cylinders, i.e., fractionally, and using a battery drive system “at the same
time.” Indeed, claim 1 recites “a vehicle system controller (VSC) which
operates the engine and the traction motor so as to extract power from both
the engine and the traction motor in the event that the cooling system is
compromised.” See App. Br., Clms, App’x. There is nothing in the
language of claim 1 that makes the VSC operate the engine and traction
motor to extract power therefrom at the same time. Indeed, the VSC could
operate the engine to extract power and then operate the traction motor to
extract power and still meet the claim language. Similarly, claim 3 only
recites “providing driving power from the engine operating at a reduced
power level, with fewer than the maximum number of cylinders, and from
the traction motor.” There is no claim language requiring that the provision
of the power from the engine and traction motor has to occur at the same
time.
Appeal 2009-015078
Application 10/906,821

6
In view of the foregoing and since Appellant has not presented any
other substantive arguments for the rejection of dependent claims 2, 4, and 5,
we sustain the Examiner’s rejection of claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Kuroda, Hanada, and Gopp.
Independent claim 6 and claims 7 and 8 dependent thereon
As stated supra, Appellant also argues that independent claim 6
“teach[es] operating an engine fractionally and using a battery drive system
at the same time if the engine is overheating, notwithstanding that the battery
SOC is less than the normal minimum charge,” and “[t]his is clearly well
beyond the purview of Kuroda, Hanada, and Gopp.” App. Br. 7. In
response to Appellant’s argument, the Examiner alleges that “the term ‘at
the same time’ . . . could not be found in the claims.” Ans. 4-5. We
disagree with the Examiner that Appellant’s claim 6 does not recite at the
same time. Indeed, Appellant’s claim 6 recites “providing driving power
simultaneously from the traction motor and the engine during transient
operation . . . while operating the engine at a reduced power level with fewer
than the maximum number of cylinders.” See App. Br., Clms. App’x.
Emphasis added. Thus, we agree with Appellant that claim 6’s providing
step is not taught by the combination of Kuroda, Hanada, and Gopp.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 6, and claims 7 and 8 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Kuroda, Hanada, and Gopp.

DECISION
We reverse the Examiner’s decision to reject claims 6-8.
We affirm the Examiner’s rejection of claims 1-5.
Appeal 2009-015078
Application 10/906,821

7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART

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