Ex Parte HARDIN et al

Patent Trial and Appeal Board

Mar 22, 2016

12644000 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/644,000 12/21/2009 W. JACK HARDIN
58982 7590 03/24/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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.
08-1288 5519
EXAMINER
SMITH, JASON C
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. JACK HARDIN, WALTER E. EARLESON,
and ROY C. FONSECA
Appeal2013-007145
Application 12/644,000
Technology Center 3600
Before KEN B. BARRETT, MICHAEL C. ASTORINO,
and AMANDA F. WIEKER, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
W. Jack Hardin et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the rejection of claims 1-11 and 14--19. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-007145
Application 12/644,000
THE CLAIMED SUBJECT MATTER
Appellant's claimed invention pertains to a locomotive with "two separate
engine systems, including a large engine system and a small engine system."
Abstr. Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of operating a locomotive comprising:
providing a small engine system including a small engine
having a maximum rated power output of 1,000 brake horsepower
(bhp);
providing a large engine system including a large engine having
a minimum rated power output of 3,000 bhp;
commanding low power output of the locomotive for
propulsion;
delivering electrical power to the locomotive for propulsion
from the small engine system while the large engine system is turned
off
'
commanding higher power output of the locomotive for
propulsion;
delivering electrical power to the locomotive for propulsion
from the large engine system while the small engine system is turned
off
'
commanding a highest power output of the locomotive for
propulsion; and
delivering electrical power to the locomotive for propulsion
simultaneously from the large engine system and the small engine
system.
THE REJECTION
Before us for review is the Examiner's rejection of claims 1-11 and 14--19
under 35 U.S.C. § 103(a) as being unpatentable over Donnelly '445
(US 7,304,445 B2, iss. Dec. 4, 2007) in view of Donnelly '347 (US 7,667,347 B2,
iss. Feb. 23, 2010).
2
Appeal2013-007145
Application 12/644,000
ANALYSIS
Independent method claim 1 recites "providing a small engine system
including a small engine" and "providing a large engine system including a large
engine." Independent method claim 11 and independent apparatus claim 15
contain similar recitations.
The Examiner found that Donnelly '445 discloses the method of claims 1
and 11 "but does not disclose providing a small engine and a large engine." Final
Act. 2-3. 1 The Examiner further found that "Donnelly 347 does disclose a small
engine and a large engine (see col. 3, line 50 - col. 4, line 11)." Id. at 3. We agree
with the Appellants' argument (Appeal Br. 11-12) that the Examiner's finding
regarding the cited portion of Donnelly '347 is incorrect. We have reviewed the
Examiner's cited portion of Donnelly '347. We fail to see, and the Examiner has
not adequately explained, how that portion of Donnelly '34 7, which discusses
generally "multi-engine locomotive configurations" (Donnelly '347, col. 3, 11. 50-
51 ), discloses a "small engine" and a "large engine." This finding underlies the
Examiner's ultimate conclusion of obviousness. See Final Act. 3 ("At the time of
the invention, it would have been obvious to a person of ordinary skill in the art to
provide a small engine and a large engine disclosed in Donnelly in view of the
teaching of Donnelly."). Accordingly, we do not sustain the Examiner's rejection
of the appealed claims as obvious over Donnelly '445 and Donnelly '347.
1 Independent claims 1 and 11 also recite a maximum rated power for the small
engine and a minimum rated power for the large engine, and independent claim 15
recites ranges for the rated power of the two engines.
3
Appeal2013-007145
Application 12/644,000
DECISION
The decision of the Examiner to reject claims 1-11 and 14--19 is reversed.
REVERSED
4