Ex Parte LEVIJOKI et al

Patent Trial and Appeal Board

Jun 6, 2018

14044141 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/044,141 10/02/2013
74175 7590 06/08/2018
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
FIRST NAMED INVENTOR
STEPHEN PAUL LEVIJOKI
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.
P024727 (8540P-001396) 2880
EXAMINER
MONAH ON, BRIAN P
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
gm-inbox@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN PAUL LEVIJOKI, ERIC E. KLAUSER,
and JOHN W. SIEKKINEN
Appeal2017-008436
Application 14/044, 141
Technology Center 3700
Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
GEORGE R. HOSKINS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008436
Application 14/044, 141
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1 and 11. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
THE INVENTION
The claims are directed to a system for diagnosing low-coolant-
temperature faults in internal combustion engines capable of deactivating
cylinders to save fuel. Spec. i-f 6. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A diagnostic system for an engme of a vehicle,
compnsmg:
a temperature determination module that receives an
indication of whether one or more cylinders within the engine are
deactivated, that sets a first temperature threshold based on a first
predetermined temperature when the indication indicates that
zero cylinders of the engine are deactivated, and that sets the first
temperature threshold based on a second predetermined
temperature when the indication indicates that one or more of the
cylinders of the engine are deactivated, wherein the first
predetermined temperature 1s greater than the second
predetermined temperature;
a comparison module that selectively determines whether
a temperature of engine coolant is less than the first temperature
threshold;
a fault indication module that diagnoses a fault in response
to the comparison module determining that the temperature of
the engine coolant is less than the first temperature threshold; and
a remedial action module that selectively adjusts at least
one engine operating parameter to increase the temperature of the
engine coolant in response to the fault indication module
diagnosing the fault.
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Appeal2017-008436
Application 14/044, 141
REJECTION 1
Claims 1 and 11 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
ANALYSIS
The Examiner finds that the written description does not adequately
describe the limitation in claims 1 and 11 requiring the temperature
determination module to
[S]et[] a first temperature threshold based on a first
predetermined temperature when the indication indicates that
zero cylinders of the engine are deactivated, and ... set[] the first
temperature threshold based on a second predetermined
temperature when the indication indicates that one of more of the
cylinders of the engine are deactivated, wherein the first
predetermined temperature 1s greater than the second
predetermined temperature.
Final Act. 3--4. The Examiner finds that the Specification "does not describe
having a first predetermined temperature, based on zero cylinders
deactivated, be larger than a second predetermined temperature." Id. at 4.
According to the Examiner, the only portion of the Specification that
describes the relationship between the first and second predetermined
temperatures (paragraph 60) only states that "the second predetermined
temperature may be less, the same or greater than the first predetermined
temperature," but "still fails to describe the relationship wherein the first
predetermined threshold is based on zero cylinders and why a fault would be
indicated." Id.; see also Ans. 4 (asserting that "the relationship between the
1 The Examiner withdrew a rejection of claims 1-3, 5-9, 11-13, 15-19, 21,
and 22 under 35 U.S.C. § 101. Ans. 3.
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Appeal2017-008436
Application 14/044, 141
number of cylinders deactivated and the first and second temperature is not
specifically described").
Appellants respond that the Examiner's rejection "is merely the
product of the Examiner ... failing to recognize that the claimed first and
second predetermined temperatures are different than the first and second
predetermined temperatures referenced in the detailed description." Reply 5.
In other words, the terms "first predetermined temperature" and "second
predetermined temperature" are ascribed different meanings in the claims
than they are in the Specification. As Appellants explain, the claim term
"first predetermined temperature" refers to what the Specification calls the
"expected ECT2 temperature" when no cylinders have been deactivated,
such expected ECT temperature being "predetermined" and entered into a
look-up table. Reply 3 (citing Spec. i-f 47). Similarly, the claim term
"second predetermined temperature" refers to the expected ECT temperature
when one or more cylinders have been deactivated. Id. Further, according
to Appellants, the "first predetermined temperature 212" described in the
Specification corresponds to the "first temperature threshold" in claims 1
and 11. Id. at 4. 3
To satisfy the written description requirement of section 112(a), a
disclosure must reasonably convey to one skilled in the art that the applicant
had possession of the subject matter in question when the application was
filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2 "ECT" stands for "engine coolant temperature." Spec. i-f 26.
3 The Specification also describes a "second predetermined temperature"
that is used to determine how long the comparison module is disabled
following a fault determination. See Spec. i-f 60.
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Appeal2017-008436
Application 14/044, 141
2010) (en bane). Determining the adequacy of a written description
"requires an objective inquiry into the four comers of the specification from
the perspective of a person of ordinary skill in the art." Id.
Having reviewed the Specification, and in light of Appellants'
explanation, discussed above, that the meanings of the claim terms "first
predetermined temperature" and "second predetermined temperature" are
different than the meanings given those terms in the Specification, we agree
with Appellants that claims 1 and 11 comply with the written-description
requirement. The Specification teaches that temperature determination
module 216 receives deactivated-cylinders signal 202 indicating how many
cylinders have been deactivated, and determines "first predetermined
temperature 212" by selecting, from a look-up table, the expected ECT
temperature corresponding to the number of cylinders deactivated (with the
number possibly being zero). Spec. i-f 4 7, Fig. 2. The "first predetermined
temperature 212" is then compared with the actual coolant temperature
("ECT 208") to determine if a fault exists (Spec. i-f 52). The Specification
further teaches that the expected ECT temperature decreases when cylinders
are deactivated (id. i-f 48), so the expected ECT temperature when zero
cylinders are deactivated would be greater than the expected ECT
temperature when one or more cylinders are deactivated. The above
description thus matches the claim language at issue, with the understanding
that the claimed "first temperature threshold" corresponds to the
Specification's description of "first predetermined temperature 212;" the
claimed "first predetermined temperature" corresponds to the Specification's
description of the expected ECT temperature when zero cylinders are
deactivated; and the claimed "second predetermined temperature"
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Appeal2017-008436
Application 14/044, 141
corresponds to the Specification's description of the expected ECT
temperature when one or more cylinders are deactivated.
"[!]psis verbis disclosure is not necessary to satisfy the written
description requirement of Section 112." Fujikawa v. Wattanasin, 93 F.3d
1559, 1570 (Fed. Cir. 1996). Thus, the use of terms in claims 1 and 11 in a
way that differs from how the same terms are used in the Specification does
not, by itself, warrant rejection under Section 112(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1 and 11 is
reversed.
REVERSED
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